Patent Term Travel: The 20-Year Term from the Date of Filing is Constitutionally Valid
The Calcutta High Court recently decided on an interesting question pertaining to the constitutional validity of Section 53 of the Patents Act. As many of our readers will be aware, Section 53 deals with the term of a patent. It provides that the term of a patent shall be 20 years from the date of filing of the patent application. The petitioner in the case, Gunjan Sinha, challenged the constitutional validity of this provision as being arbitrary and unreasonable. As per the petitioner, the term of the patent has to be calculated from the date of grant in order to do justice to the patent holder.
The argument put forth by the petitioner in the case is not unique, and most students of patent law raise this question when they learn about how the term of a patent is to be calculated. As per the Patents Act, the patent applicant does not get any rights until the application is published. During this period, the patent applicant only gets priority over subsequent applications. Once it is published, the patent applicant gets exclusive rights, but these rights cannot be used to file a case until the patent is granted (Section 11A(7)). All patent rights along with the right to sue accrue to the patent holder only after the patent is granted. The petitioner in the case argued that the lack of rights until publication and limited patent rights until granted under Section 11A(7) make the calculation of the patent term from the date of filing under Section 53 unreasonable and contradictory to the scheme of the statute.
Disagreeing, the Court outlined that there are three stages to the grant of patent rights:
- Patent filing to publication – when no rights subsist except the right to claim priority over subsequent applications;
- Publication to patent grant – when rights subsist, but no suit for infringement can be filed; and
- Grant of the patent – after which patent rights are granted, and the right to sue begins.
Following the 2002 amendment of the Patents Act, the Court stated that the legislature chose to grant rights for 20 years from the date of filing, which is consistent with Article 33 of the Agreement on TRIPS (Trade related aspects of Intellectual Property Rights). The fact that it decided to not grant any rights until publication, limited rights after publication, and full rights only after grant is a matter of legislative wisdom and discretion. The Court stated that it did not find any inconsistency in the legislature’s approach and the provisions of the Patents Act. As there is no inconsistency or arbitrariness, the Court found the petitioner’s plea devoid of any merit and upheld the constitutional validity of Section 53 vis-à-vis Section 11A(7).
Relevant Paragraphs
The relevant paragraphs of the Judgment read as follows:
“42. The three stages of a patent operate in different spheres. The first stage is that between the date of filing of the application and the date of publication. At best, the applicant gets a preference in consideration of the application over subsequent applicants during the stage between filing of the application and publication of the same. Moreover, upon the grant of probate, the rights of the petitioner relate back to the date of the application in terms of Section 53 of the Patents Act, thus entitling the patentee to sue for infringement even for the period between the application and the grant.
43. An analogy can be drawn to registration of documents under the Registration Act, where after the registration of a document, the document takes effect retrospectively from the date of its execution.Similarly patents, when granted, relate back to the date of the application.
44. The second stage is that between publication and the actual grant of patent, during which period, pursuant to Section 11-A(7) of the Patents Act, 1970, the applicant enjoys like rights and privileges as a patentee except for the right to institute any proceedings for infringement, for which the patentee still has to wait till the grant of patent, after which it relates back to the second stage as well.
45. The third stage is from grant of patent to the expiry of its term. During such period, the patentee enjoys full rights and privileges as conferred under the Patents Act, 1970, including the right to sue for infringement.
46. The said gradation was intended by the Parliament and there being no patent arbitrariness in the same, such discretion cannot be interfered with in judicial review.
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53. We also have to keep in mind that patent is not a fundamental right guaranteed by the Constitution of India but one conferred by statute. As such, the Legislature, in its wisdom, can selectively confer certain rights from different points of time, at different stages of the process of grant of patent. The gradation of the stages and the associated rights for each stage is not unreasonably discriminatory, thus fulfilling the test of Article 14 and Constitutional viability in general.
54. Over and above, the amended provisions of Section 53 are not entirely unreasonable as the right of an applicant freezes from the date of the application and he gets priority of consideration over subsequent applicants even before the patent is published or granted. Moreover, the petitioner has a right under sub-section (2) of Section 11-A to request the Controller to publish his/her application at any time before the expiry of the period prescribed under sub-section (1) and subject to the provisions of sub-section (3) of the said Section upon which the Controller shall publish such application as soon as possible. Even otherwise, the outerlimit of publication and grant of patent has also been stipulated under Chapter IV of the Patent Rules, 2003.
55. In the scheme of things discussed above, this Court does not find any discrepancy or inherent contradiction in Section 53 vis-à-vis Section 11-A of the Patents Act.
56. Thus, no ground has been made out by the petitioner to strike down Section 53 or any part thereof on the ground of ultra vires. The constitutionality of the said Section, as discussed above, is itself the protection of the said provision from being so struck down.
57. In such view of the matter, the present writ petition fails.”
Citation: Gunjan Sinha @ Kanishk Sinha and Another vs The Union Of India And Another, decided by the Calcutta High Court on 7 May, 2024, WPA No. 8691 of 2023, available at: http://indiankanoon.org/doc/195938980/, visited on 8th May, 2024.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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