India: SC Clarifies On Pre-Amendment Appeal Jurisdiction

Last Updated: 29 September 2008

The postponement of some provisions being brought to force of the Patents (Amendment) Act, 2005, led to confusion which was elucidated in the case of J. Mitra & Co. Pvt. Ltd. v. Asst. Controller of Patents & Designs & Ors. [Civil Appeal arising out of S.L.P. (C) No.15727 of 2008] The date of commencement of an Act at times is left to a specified future date or to such date as may have been appointed, with different dates being employed for different provisions in some instances. Taking stock of such a dilemma, induced by a variance in the dates on which various provisions took force is the following date- wise scheme of events:



26th March 1999

Section 116 of the Indian Patents Act, 1970 to file an appeal to High Court takes effect

14th June 2000

J. Mitra & Co. Pvt. Ltd. filed a Patent Application

25th June 2002

Patents (Amendment) Act promulgated

20th May 2003

Section 25 of Patents (Amendment) Act, 2002 brought to force

20th November 2004

Patent Application notified

21st March 2005

"pre-grant opposition" was filed by Span Diagnostics under Section 25(1)

4th April 2005

Patents (Amendment) Act, 2005 brought to force w.e.f. 1.1.2005.

22nd September 2006

Patent granted to J. Mitra the appellant

23rd August 2006

The appeal filed by Span diagnostics against pre- grant opposition order stated not maintainable

19th October 2006

Appeal filed at High Court by Span Diagnostics

2nd April 2007

Section 117A by which appeal was provided for against post-grant opposition order brought to forced

3rd April 2007

117G was also brought into force vide Notification dated 3.4.2007.

Span Diagnostics Ltd. is a public limited company involved in indigenous development and manufacture of a comprehensive range of ready-made diagnostic reagents made by clinical pathology laboratories. J.Mitra & Company Pvt. Ltd. filed an application for grant of patent. After scrutiny, the said application stood notified by the Patent Office and pre-grant opposition proceedings initiated by Span commenced before the Controller of Patents in the year 2004. The Patents (Amendment) Act, 1999 had undergone amendment by then.

The Court noted that under the Patents (Amendment) Act, 1999 there was only one right given to a person interested to oppose the grant of patent by filing objections at the pre-grant stage. Under the said Amendment Act, 1999, vide Section 116 (2) a right of appeal was available to the aggrieved party against orders passed under Section 25. The said appellate remedy was available by way of an appeal to the High Court. Further, in 2002, the Legislature desired an amendment to the law and intended to create an appellate forum to hear appeals against orders passed by the Controller and consequently Patents (Amendment) Act, 2002 was promulgated on 25.6.2002. The Court noting that the provisions of the said Amendment Act, 2002, not being simultaneously brought into force, Sections 116 and 117A did not have the force of law. Section 25 came into force vide a Notification dated 20.5.2003.Even as on that day, only one right to oppose a patent at the pre-grant stage was available and appeal against an order, passed by the earlier, lay before the High Court under the then existing Section 116 of the Patents Act, 1970 since the amended Sections 116 and 117A had not been enacted.

It was observed by the Supreme Court that a dichotomy had been introduced into the Patent Law "opposition to the pre-grant" vis-a- vis "opposition to the post-grant of patent" in as much as an appeal to the post-grant opposition lay before the Appellate Board and not to the High Court. The amended Section 117A by which an appeal was provided for against post-grant opposition order was not brought into force till 2.4.2007. Further, the Court stated that the Legislature intended to provide for only one statutory appeal to the Appellate Board, but by reason of Section 61 of the Patents (Amendment) Act, 2005 not being brought into force till 2.4.07 a strange situation developed making appeals filed during the interregnum, vulnerable and liable to be dismissed as misconceived as is contended. The Court stated that the same scenario was subsisting in the present case.

The Court also observed that when an appeal was filed in the High Court, Chapter XIX of the Patent Act as amended vide Patents (Amendment) Act, 1999 continued to be in operation notwithstanding the enactment of the Patents (Amendment) Act, 2002 and the Patents (Amendment) Act, 2005

As regards Section 117G of the principal Act was substituted vide Patents (Amendment) Act, 2005. Section 117G provides that all appeals against any decision of the Controller had to be transferred to the Appellate Board. Section 62, clarifies that the amended Section 117G is consequential to the enforcement of the jurisdiction of the Appellate Board under Section 64 which results to revocation of patent. The Act also clarified that Section 64 is also amended vide Patents (Amendment) Act, 2005 to confer wider jurisdiction on the Appellate Board in matters of revocation of patent and therefore, amended Section 117G which is brought into force only from 3.4.2007 dealt with transfer of pending proceedings from the High Court to the Appellate Board.

J. Mitra also contended of a dichotomy having been introduced as a result of the amendment and that there had been a structural change in the principal Act. They stated that while the Controller had rejected the "pre-grant opposition" and on that day "post-grant opposition" was open as an option to Span, furthering which an appeal to the Appellate Board could have been filed. According to the appellant, under the amended Section 25 on rejection of "pre-grant opposition. Further, Mitra stated that with the change in the structure of the Act, the appeal filed by Span against pre-grant opposition order was not maintainable on 19.10.06 by which time, since Section 25 stood restructured on that date.

Span urged that on 19.10.06 it had filed an appeal in the High Court under the unamended Section 116 and though Section 25 stood restructured w.e.f. 1.1.05 on account of absence of notification bringing the amended law into force, the same was maintainable. They pointed out the "pre-grant opposition" was filed on 21.3.05 and Section 25(2) could not have been invoked as the law stood enacted bringing in Section 25(2) only on 4.4.05. In this pursuance, they urged that no interference was called for by this Court in the present batch of civil appeals.

The Court lamenting on the enactment of the amendments, stated that the legislative intent behind the amendment got defeated during the interregnum. The Court also observed that under the Patents (Amendment) Act, 2005, appeal provided to the Appellate Board was against the order of the Controller under Section 25(4), but that the appeal is maintainable only in "post-grant opposition" proceedings whereas Span had instituted first appeals under the law then prevailing challenging the Order rejecting "pre-grant opposition".

Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time, the Court held that the appeals would remain in the High Court to be heard and disposed off in accordance with Section 116 of the said 1970 Act as it stood on 19.10.06.

© Lex Orbis 2008

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