This post was first published on 27th April, 2012.
J. Mitra & Co. (Respondent No. 5) filed two patent applications 590/Del/2000 and 593/Del/2000 before the Controller in 2000 for which the patent specifications were published in the Gazette on 20th November 2004 in terms of Section 11A of the Act. The un-amended Section 25 of the Act stated that opposition to the grant of the patent had to be filed within four months from the date of publication, which could be extended by one month at the discretion of the Controller. Span Diagnostics Ltd. (“SDL”) filed a pre-grant opposition which was rejected by the Controller on 23rd August 2006 and the Controller passed an order granting Patent No. 194639 on the patent application 590/Del/2000 on the condition that the applicants give cross reference to the patent application no. 593/Del/2000 on page 2 of the complete specification. Under Rule 55 (6) of the Patents Rules 2003 (“Rules”), the Controller after considering the pre-grant opposition can “proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within one month from the completion of the above proceedings”. Therefore, since the Controller rejected the pre-grant opposition filed by SDL and used the words “I hereby order to grant patent…” in the order, which was simultaneous with the rejection of the pre-grant opposition, in terms of Rule 55(6) of the Rules, thereby granting the patent to J. Mitra & Company on 23rd August 2006. However, on the next day, i.e., 24th August 2006, Dr. Snehlata Gupte, Petitioner, filed a similar pre-grant opposition contending that as per the amended Section 25(1) of the Act, the time period for filing a pre-grant opposition stood extended till the grant of the patent and such a patent was not granted till the time it was not sealed and entered in the Register and therefore since the current patent had not been granted or sealed and entered in the Register, the pre-grant was not time-barred. Similarly on 5th September 2006, Dr. Girish Rindani, also filed a pre-grant opposition.
On 22nd May 2007 both pre-grant oppositions were rejected by the Controller on the ground that the oppositions were time-barred. Ms. Pratibha Singh, Counsel for J. Mitra & Co. submitted that both Dr. Snehlata Gupte and Dr. Rindani were connected with SDL and were aware of SDL’s opposition to J. Mitra & Co’s patents. However, to continue the serial oppositions, both Dr.Gupte and Dr. Rindani filed pre-grant oppositions one after the other. Referring to the decisions in Bhagwanji Vishavji Thakkar v. Pravinchandra Jivanbhai Patadia (1995) 2 GLR 1438 and Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd. (2008) 13 SCC 30, it is submitted that a purposive construction would have to be adopted and it has to be held that according to Rule 55 (6) of the Rules read with Section 43 (1) of the Act, the patent is granted once an order to that effect is passed by the Controller simultaneous with the rejection of the first set of pre-grant oppositions which are decided by the Controller. Similarly, Respondent No. 1, Lalit Mahajan, filed three patent applications for grant of patents being Application Nos. 1688/Del/2007, 1689/Del/2007 and also filed two other applications being 74/Del/2005 and 75/Del/2005 and the patents for which were granted by the Controller and also sealed prior to the pre-grant opposition filed by Petitioner Zephyr Biomedicals (“Zephyr”). The said pre-grant opposition was rejected by the Controller, and this order is challenged by Zephyr. Mr. Maninder Singh, counsel appearing for Lalit Mahajan submitted that it was necessary to read a reasonable time limit for filing a pre-grant opposition. Petitioner No. 3, Tibotec Pharmaceuticals (“Tibotec”) filed its application for grant of patent on 11th June 2004, which was published on 30th November 2007. The Controller issued a letter to the Petitioner on 28th March 2008 to the following effect: “Your above Application for patent has been found in order for grant. However, the Patent Certificate will be issued only after processing of the Application under Section 11(a) and completion of the statutory limit and disposal of pre-grant opposition, if any, under Section 25(1) of the Act.” The petitioner’s submitted that on 30th May 2008, six months as prescribed in Rule 55(1-A) and the three conditions in letter stood satisfied and therefore, the patent was deemed to have been granted from such date. On 26th June 2008, Cipla Ltd. filed a pre-grant opposition. The petitioner pointed out to the Controller that the pre-grant opposition was time-barred. By an order dated 30th March 2009, the Controller allowed the pre-grant opposition and refused to the Petitioner the grant of the patent on the ground of lack of inventive step. Mr. Majumdar, learned counsel appearing for Cipla Ltd. submitted that if the patent is refused, the order is relatable to Section 15 of the Act and the intimation that the patent is in order is not by itself a grant of patent. Further, the stage of Section 43 for grant of patent is reached only after completion of the processes envisaged by Section 15 of the Act and further without the completion of the procedure envisaged under Section 25(1) and Section 11A, there can be no grant of a patent. It is therefore submitted that as on the date of the filing of pre-grant opposition, no grant of the patent had taken place as envisaged by the Act.
The Court after examining the petitions, observed that the common question in all the above petitions was when could it be said that a patent has been granted?
Analysis of provisions
With the help of the relevant sections in the Act and the Rules, the Court decided when a patent is granted and also provided the timeline to file a pre-grant opposition. In determining the timeline to file a pre-grant opposition the Court was of the opinion that the date of grant of patent is critical for determining the time within which a pre-grant opposition has to be filed in terms of Section 25(1) of the Act. Under Rule 24, the publication happens not earlier than 18 months from the date of filing of the application and therefore, it would not be possible for a person seeking to object to the grant of a patent to make an opposition earlier than a period of 18 months. Further, Under Rule 55(1-A), no patent shall be granted before the expiry of a period of six months from the date of publication of the application. As a result, at least for a period of 2 years after the filing of the application for grant of the patent, no patent can be granted. It is during this time that the pre-grant opposition is expected to be filed. The mere grant of a patent does not ensure its validity. Under Section 25 (2) of the Act, a post-grant opposition can also be filed by any person interested. In deciding when a patent is granted, according to Section 43 of the Act, an application for patent has to be found “to be in order for grant”, which includes the acceptance of the complete specification and any refusal to accept the application at that stage is governed by Section 15 of the Act and the patent is not yet granted. If the patent is not refused at that stage and no pre-grant opposition has been filed, the patent should be granted. According to Rule 55 (6), once the pre-grant opposition is decided, the Controller simultaneously proceeds to either reject such representation. Therefore, as per Section 43 (1), “a patent shall be granted as expeditiously as possible” and the patent has to be granted once it is found that either the application has not been refused in terms of Section 25(1) read with Rule 55 (6) or it has not been found in contravention of any provision of the Act. The act of publication clearly follows the grant of patent. Therefore, the Court holds that the date of grant of patent is the date on which the Controller passes an order to that effect on the file. Once a final order granting the patent is passed by the Controller on the file, there is no question of thereafter entertaining a pre-grant opposition as it is barred under Section 25 (1) with no discretion given to the Controller.
While determining the above petitions, the Court in the petition of Mitra & Co. observed that if this Court were to hold that the date of the grant of patent is only the date on which the factum of such grant is entered in the Register, then there would be no end to filing of pre-grant oppositions as long as on account of some delay on the administrative side the factum of grant of patent is not entered in the Register. Therefore, the Court holds that the order dated 23rd August 2006 passed by Controller, while dismissing the pre-grant opposition, must be taken to be the date on which the patent was granted. Consequently, any pre-grant opposition filed after 23rd August 2006 is clearly barred. Since the patent was already granted in favour of Lalit Mahajan and was sealed prior to the pre- grant opposition that was filed by Zephyr, the court held that there can be no manner of doubt that the filing of such pre-grant opposition was subsequent to the grant of patent and was barred under Section 25(1) of the Act and therefore, passed the order in favour of Lalit Mahajan. However, in the case of Tibotec, since the mere communication by the Controller to the applicant for grant of patent that the application has been found in order subject of course to the decision on pre-grant opposition if any filed, cannot be construed as the official decision of the Controller granting the patent. The court held that there had to be an order passed by the Controller holding that the patent has been found in order and that patent is granted. Therefore, when the pre-grant opposition was filed by Cipla Ltd on 26th June 2008 there was no grant of patent by that date and, therefore, such application was maintainable in terms of Section 25(1) of the Act. Therefore, since there was a lack of clarity as to when a patent is granted, the Court after examining in detail the relevant provisions of the Act and the Rules has come to the conclusion that the date of grant of patent is the date on which the Controller passes an order to that effect on the file. Therefore, a patent should be granted as expeditiously as possible. Also, the patent has to be granted once it is found that either the application has not been refused in terms of Section 25(1) read with Rule 55 (6) or it has not been found in contravention of any provision of the Act.
Contributed by Sripriya Padmanabhan
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