Dr. Snehlata C. Gupte v. Union of India & Ors (W.P. (C) No 3516 and 3517 of 2007) Delhi HC)

 

Introduction

This is another landmark judgment in the history of Intellectual Property Rights litigation in India where the court made an attempt to answer a very interesting though short question that when shall a patent be considered to be granted.

In this case, the court had compiled various petitions that involved the same question and heard them through this judgment.

Facts-

All the petitions involved in this case had different facts but the question involved in each of them was the same. The facts of all the cases involved are as follows:

• The respondent no. 5 in this case, J. Mitra and Co. had filed two patent applications namely 590/Del/2000 and 593/Del/2000 with the Controller of Patent which was published subsequently in the official gazette on Nov, 2011.

 

• The pre-grant opposition according to the law at that time had to be filed within 4 months from publication. But such period of opposition could further be extended to a period of one month.

 

• Span Diagnostics Ltd. filed a pre-grant opposition against the alleged patents of the Respondent no. 5 which was rejected on August 2006 by the controller thereby stating “I hereby order to grant patent….”

 

• Next day, Dr. Snehlata Gupte filed an opposition contending that according to the new amendment to S. 25(1) the period of opposition stood extended till the time when the patent is actually entered on the register and thereby sealed.

 

• Subsequently, Mr. Girish Randhani filed a similar pre-grant opposition.

 

• The Controller rejected the two pre-grant oppositions stating that they were time-barred as they were filed after the order granting the patent was made by the Controller himself.

 

• Similar were the facts in another case where patent applications made by Respondent No. 1, Lalit Mahajan were granted by the Controller and sealed as well before the pre-grant opposition was made by Petitioner Zephyr Bio-medicals.

 

• The pre-grant opposition was denied by the Controller due to the fact that such opposition was time-barred. The Petitioner thereafter challenged such decision of Controller contending that such opposition was made during the statutory time limit prescribed by the Act and therefore should not have been rejected on this ground.

 

• Similarly, Cipla Ltd. filed a pre-grant opposition which was also rejected by Controller on the same ground of being time-barred. But later, the Controller allowed the pre-grant opposition thereby refusing the grant of the patent to the applicant on the ground of lack of inventive step.

 

• It was contended by Cipla Ltd. that a mere order of Controller shall not be considered grant of Patent according to the provisions of S. 15 and S. 43 the Act thereby stating that unless the procedure laid down under S. 25(1) and 11A have been complied with, the patent shall not be considered to be granted.

 

• Hence the court compiled all these similar cases to answer the common question involved in them.

Issues raised-

• The only issue involved in this case was when it shall be considered that the patent has been granted.

Judgment and decision-

The court analyzed and laid down its decision in this case as follows:

• The court had, in this case, decided on two relevant points namely that when shall the patent be considered to be granted and the timeline within which pre-grant oppositions can be made.

 

• It was held that the date of grant of a patent is the important factor in determining the timeline for allowing pre-grant opposition under section 25(1) of the Act.

 

• According to the Act and Rule 24 thereunder publication of the patent application shall be made only after 18 months from the date of application of the patent.

 

• Also, according to Rule 55(1-A), no patent shall be granted before the expiry of six months from the date of publication of the patent as it is presumed that no one can have knowledge of supplication being made unless it is published in the official gazette.

 

• Hence, a patent cannot be granted before the expiry of the period of 24 months i.e. 2 years from the date of application of patent made before the Controller. Therefore pre-grant opposition can be made only within this period of 24 months from the date of application of patent.

 

• A patent can be granted by the Controller on grounds that i) it is not opposed and the opposition is not valid according to the Controller and ii) Such patent is not in violation of any of the provisions of the Act.

 

• Hence patent is considered to be granted on the date when the Controller passes an order to that effect. So, as soon as the final order for grant of the patent is passed and noted on the file by the Controller it is supposed to be the date on which patent was granted. After such date of grant of patent, no pre grant opposition can be filed by anyone.

 

• However, the Act makes provision for post-grant opposition which is still available for the person willing to oppose the grant of patent.