September 27 2010
The Delhi High Court recently heard a batch of petitions which all shared the common aim of ascertaining the date of patent grant. In general, a patent is said to be granted when it is approved by the controller of patents and no further objections remain. The recent petitions raised the question of the date of patent grant within the context of the validity of a pre-grant opposition introduced by the Patent Amendment Act 2005.
In the first set of petitions,(1) in Dr (Miss) Snehlata C Gupte v Union of India(2) the fifth respondent in the writ petition, J Mitra & Company, filed two patent applications (Numbers 590/Del/2000 and 593/Del/2000) on June 14 2000 and both were published on November 20 2004 under Section 11A of the Patents Act. According to the pre-amended Section 25, the timeframe for filing a pre-grant opposition was four months from the date of publication of the application.
Span Diagnostics Ltd filed a pre-grant opposition against the grant of J Mitra's applications, which the controller of patents rejected on August 23 2006. The order passed by the controller read as follows:
"In view of the above discussion and in consideration of the submissions of both the parties, I hereby order to grant [Patent No. 194639] on Patent Application No. 590/Del/2000."
Thus, according to the respondent, the date of patent grant was August 23 2006 as per the controller's order.
On August 24 2006 Dr Snehlata Gupte, the petitioner in Writ Petition (C) 3516/2007, filed a pre-grant opposition against the application filed by J Mitra, stating that according to the amended Section 25, which was effective from January 1 2005, the timeframe for filing a pre-grant opposition extended until the grant of the patent. Gupte further contended that the patent was not considered as granted until such time as it was sealed and entered in the Register of Patents. Furthermore, on September 5 2006 Dr Girish Rindhani, who was also a petitioner in Writ Petition (C) N5422/2007, filed a pre-grant opposition against the same patent application. On May 22 2007 the controller passed an order rejecting the pre-grant oppositions of both petitioners on the grounds that the oppositions were time-barred.
J Mitra submitted that Span Diagnostics, Gupte and Rindhani were all connected to one another, and that the serial oppositions filed by these persons were connected to Span Diagnostics and the fact that its opposition had been rejected on the grounds of bad faith. According to J Mitra, if such oppositions were entertained, there would be no end to the filing of such pre-grant oppositions. J Mitra further submitted that there should be a time limit for filing pre-grant oppositions, and that such time limit should not exceed the date on which the controller passes a patent grant order. J Mitra contended that the patent's sealing and entry in the register were no more than ministerial acts which made no difference to the date of patent grant.
In response, the petitioners submitted that the patents issued to J Mitra were simply imitations of patents obtained by US company EY Laboratories in 1991, and that the claims on which the patent was issued were different from those published. Therefore, it was the duty of the Patent Office to publish the amended claims and not to grant a patent within three months of the statutory period of appeal so that an aggrieved party could file an appeal. It was alleged that the entire process of patent grants was carried out by the Patent Office in a quick and clandestine manner.
In Tibotec Pharmaceuticals v The Assistant Controller of Patents, Designs and Trademarks(3) Tibotec filed its application for grant of patent on June 11 2004, which was published on November 30 2007 in terms of Section 11A of the act. After considering the petitioners' reply to the first examiner's report, on March 28 2008 the controller issued a letter stating that the application for patent had been found in order for grant.
On June 26 2008 Cipla Ltd filed a pre-grant opposition against the grant. Tibotec opposed the pre-grant opposition, pointing out that it was time-barred, and sought the issuance of a patent certificate in its favour and the rejection of the pre-grant opposition filed by Cipla. On hearing both parties' arguments, the assistant controller of patents allowed the pre-grant opposition and rejected the patent on the grounds of lack of inventive step. Tibotec challenged the controller's order in this petition.
Tibotec submitted that there was a difference between the issuance of a patent certificate under Rule 74 and the grant of a patent for the purposes of Section 43. Referring to the controller's order, Tibotec submitted that it was observed that there was no impediment to the grant of patent, and that the letter of patent was to be issued within seven days of six months from the date of publication of the application (ie, May 30 2008). Therefore, for all practical purposes the date of grant should have been May 30 2008 or the following day.
Counsel for Cipla submitted that at the stage of examination of the application, the controller was the only fact-finding authority. The intimation that the patent was in order was not by itself a grant of patent, but rather was an informal intimation to the applicant which was not required to be made in law. Although this is a longstanding practice of the office, it is not a guarantee of patent grant. Furthermore, it was submitted that a patent is never granted - no matter how good it is - without completion of the procedure envisaged under Section 25(1) of the act. It was also submitted that the date of patent grant is the date on which the controller of patents passes the order of grant, no matter when the letter of patent was issued, notified or registered. Accordingly, on the date of filing the pre-grant opposition, no patent grant had taken place under the act.
Citing several provisions of the act, the court stated that there are several hurdles to clear before the patent grant is said to be final. The term for every patent is 20 years, and according to Section 43 of the act, this term must be counted from the date of filing the application, irrespective of the date of grant. In cases of pre-grant opposition, there are higher chances that the patent holder will be unable to work out its patent before the patent application is challenged or the grant is stayed, or that the patent holder will not be confident enough to exploit the patent commercially until the letter of patent is issued.
Given this considerable loss of time in the working0out of a patent and given the limited life of patents, the timeframe for filing pre-grant oppositions under Section 25(1) cannot possibly be construed - notwithstanding that no specific timeframe is mentioned - to be the farthest or outermost date in this grant process. The court held that the grant shall be deemed to have taken place (or the patent shall be deemed to be sealed) on the date on which the controller pronounces his or her order stating that the patent is granted.
The court observed that when an application is found to be "in order for grant" under Section 43 of the act, this includes the time during which the application is published and followed by the examination. If the patent is not refused at that stage and no pre-grant opposition is filed, the patent will proceed for grant. Where a pre-grant opposition is filed, it must be examined according to the procedure outlined in Rule 55(1). After the submission of documents from both parties, under Rule 55(6), the controller must either refuse to grant a patent or require the complete specification to be amended before the patent is granted:
"After considering the representation and submission made during the hearing if so requested, the Controller shall 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 above proceedings."
The court held that in terms of Rule 55(6) it is clear that once the opposition is decided, the controller at the same time proceeds either to reject such opposition and grant the patent or to accept the opposition and refuse the patent, and that such date shall be considered as the patent grant date. If there is more than one pre-grant opposition, the controller should bundle them together, hear them sequentially and express a final opinion on each of them as far as practicable on the same date. This approach is similar to a court hearing a batch of petitions seeking similar relief.
Referring to Section 43 of the act, which states that "a patent shall be granted as expeditiously as possible", the court stated that the patent must be granted once it is found to be in order of grant and not refused in terms of Section 25(1). In other words, the controller should not delay the grant of the patent. The court held that the date of patent grant shall be the date on which the controller decides the question and grants the patent. The sealing and entry in the register which follow the controller's passing of an order are intended to be ministerial acts which evidence the grant of patent.
The outcome of this case clarifies the situation and specifically answers the question of which date shall be taken as the date of patent grant. Determination of this date will certainly reduce the volume of serial pre-grant oppositions filed with malicious intent. In addition, the court suggested to the controller that all notifications of acceptance of the application for the grant of patent be placed online (in the public domain) on the date of the decision.
For further information on this topic please contact Shrimant Singh or Kailash Choudhary at Singh & Associates by telephone (+91 11 4666 5000), fax (+91 11 4666 5001) or email (firstname.lastname@example.org or email@example.com).
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Shrimant Kumar Singh