India: Significance Of Date Of Grant Of Patent: Under Indian Patent Act

Introduction

What is the date of grant of patent or in other words on which date the patent is deemed to be granted. This seems to be a simple question with the simple answer, but that is not the case. In this regard, Hon'ble Delhi High Court heard a bunch of petitions where all of the petitions had this common question of ascertaining date of grant of patent. In general sense patent is said to be granted when it is approved by the Controller of Patents and no further objections are in its way. The said petitions raised the question of date of Patent in context to validity of a pre-grant opposition as introduced by the Patent Amendment Act, 2005.

First Set of Petitions1, Facts

In Dr. (Miss) Snehlata C. Gupte Vs. Union of India (UOI) and Ors2. J. Mitra & Company who was the respondent no. 5 in this writ petition filed two patent applications Nos. 590/Del/2000 and 593/ Del/2000 on 14th June 2000 and the both were published on 20/11/2004 under section 11A of the Patents Act ("Act"). At that time as per preamended section 25 the time period for filing pregrant opposition was 4 months from the date of publication of the Application.

Span Diagnostics Ltd. (hereinafter SDL) filed a pre-grant opposition against the grant of J. Mitra's applications and the same was rejected by the Controller on 23/08/2006. The order passed by the Controller reads as "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 as per respondent the date for the grant of patent was 23/08/2006 as per the Controller's order.

On the very next day i.e. 24/08/2006 Dr. Snehlata Gupte, the Petitioner in W.P. (C) No. 3516 of 2007, filed a pre-grant opposition to application filed by J. Mitra & Co stating that according to the amended Section 25 which is effected from 01/01/2005, the time period for filing pre grant opposition extends till grant of the patent. Further it was contended by Dr. Gupte that the patent was not considered as granted till such time it was sealed and entered in the Register of Patents. Further on 5/09/2006, Dr. Girish Rindani, who also was a Petitioner in Writ Petition (C) No. 5422 of 2007 filed a pre-grant opposition vis-à-vis same patent application. The Controller on 22/05/2007 passed an order of rejecting the pre grant oppositions of both the petitioners on the ground that the oppositions were time barred.

It was submitted by J. Mitra & Co. that the SDL, Dr. Gupte and Dr. Rindhani are connected to each other and the serial oppositions filed by these persons connected to SDL after the rejection of opposition by SDL itself is mala fide, and if such oppositions were entertained, then there will be no end to filing of such pre-grant oppositions. It was further submitted by J. Mitra & Co. that there shall be time limit for filing pre-grant oppositions and the same, in any case, cannot be beyond the date of the Controller's passing an order of grant of patent. J. Mitra & Co. contended that the sealing and entering into the register are not more than ministerial acts which make no difference to the date of the grant of the patent.

In response to above the petitioners submitted that the patents issued to J. Mitra & Co. were just imitations to patents obtained by an US Company EY Laboratories in 1991 and further the claims on which patent was issued were different form the published ones. Therefore it is duty of the Patent Office to publish those amended claims and not to grant 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 grant of patent by the Patent Office was done in a quick and clandestine manner.

Writ petition (C) No. 1020 of 2010, Facts

In Tibotec Pharmaceuticals Vs. The Assistant Controller of Patents, Designs and Trade Marks and Ors3. the petitioner (hereinafter Tibotec) filed its application for grant of patent on 11th June 2004 which was published on 30th November 2007 in terms of Section 11A of the Act. After considering the petitioners reply to the First Examiner Report (FER) the Ld. Controller on 28/03/2008 issued a letter stating that the application for patent has been found in order for grant.

On 26th June 2008, Cipla Ltd. filed a pre-grant opposition against the grant. Tibotec opposed the pre-grant opposition pointing out that the same is time barred and prayed for the issuance of patent certificate in its favour while rejecting the pre grant opposition filed by Cipla Ltd. The Assistant Controller of Patents on pre-grant opposition heard both the parties and allowed the pregrant opposition and rejected the patent on the grounds of lack of inventive steps. The order of the Controller was challenged by the Tibotec in this petition.

It was submitted by Tibotec that there was a difference between the "issuance" of a patent certificate under Rule 74 and the "grant" of patent for the purposes of Section 43. Referring to the Controller's order the petitioner submitted that it was observed that there is no impediment to the grant of patent and the letter patent shall be issued within seven days of six months i.e. 30/05/2008 from the date of publication of application. So for all practical purposes the date of grant shall be 30/05/2008 or the very next day.

Cipla Ltd. submitted that at the stage of examination of application the controller was the only fact finding authority. The intimation that the patent is in order is not by itself grant of patent, this is only an informal intimation to the applicant which is not required to be made in law. It is only a long standing practise of the Office but not a guarantee to the grant of the patent. Further it was submitted that the patent was not granted however good it is without completion of the procedure envisaged under Section 25(1) of the Act.

It was also submitted that the date of grant of the patent is the date on which the Controller of Patents pass the order of grant afterwards no matter when the letter of patents was issued or notified or registered. Accordingly as on the date of filing of pre-grant opposition no grant of patent had taken place under the Act.

The Court citing several provisions of the Act stated that there are several hurdles to cross before the grant of patent is said to be final. The term for every patent is 20 years and according to Section 43 of the Act this term shall be counted from the date of filing of application for patent irrespective of the date of grant. In cases of pregrant opposition there are larger chances that the patent holder is not able to work out his patent till the time the patent application remain challenged, or the grant is stayed, or when the patent holder is not confident enough to exploit it commercially till he attains the Letter Patent.

As there is this considerable loss of time in working of a Patent and given the limited life of patents, the time period for filing pre grant opposition under Section 25(1) cannot possibly be construed, notwithstanding that there is no specific time period mentioned, to be the farthest / outermost date in this process of grant.

The Court was of the view 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 order stating that the Patent is granted.

The Court observes that when an application is found "to be in order for grant" under Section 43 of the Act includes the time during which application is published and followed by the examination. If the patent is not refused at that stage and no pre grant opposition is filed then the patent will proceed for grant. Where any pre grant opposition is filed then it has to be examined as per procedure outlined in Rule 55(1). After submission of documents from both the parties the Controller under rule 55(6) either refuse to grant a patent or require the complete specification to be amended before the patent is granted.

Rule: 55(6) 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 very clear that once the opposition is decided, the controller at the same time proceeds to either reject such opposition and grant the patent or accept the opposition and refuse the patent and that date shall be considered as the date of grant of patent. In case there are more than one pre grant oppositions, the Controller should bunch all of them together, hear them sequentially and express a final opinion on each of them as far as practicable, on the same date. It is like a Court hearing batch of petitions seeking similar relief.

The Court referring to Section 43 of the Act where the language used in that "a patent shall be granted as expeditiously as possible" stated that the patent has to 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 it is the date of grant of patent shall be the date on which the Controller decides the question and grants the patent. The sealing and entry in the register follows the act of the Controller passing an order are intended to be ministerial acts evidencing the grant of patent.

Conclusion

The outcome of this case definitely clarifies the situation and answers very specifically as to what date shall be taken as date of grant of Patent. Determination of date of grant of patent will certainly cut down the volume of serial pre-grant oppositions filed with malicious intent. Also, the Court suggested to the Controller that all the notifications as of acceptance of application for the grant of patent shall be placed online (in public domain) at the date of decision itself.

Footnotes

1 Writ Petition (C) Nos. 3516, 3517, 5422 and 5423 of 2007

2 W.P. (C) No. 3516 of 2007

3 Writ Petition (C) No. 1020 of 2010

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