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The purpose of filing pre-grant representation before the grant of a patent is to allow a third party to challenge the grant of a patent in a simple procedural manner. This means the challenger can seek the consideration of the documents or evidence (prior art) submitted by him before the patent is granted. Section 25(1) reads as:
"25. Opposition to the patent- (1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground— ............"
This means that this option is available to the third party till the patent is granted by the Controller. Once the Controller digitally signs the order to grant the patent and the patent number corresponding to the application number is generated, this option stands exhausted. While this is true, a practical difficulty is faced by the Controller where there is a time gap between the signing of the grant and the issue of the certificate of grant and its uploading on the IPO website. What happens if a pre-grant opposition is received during this interval?
In Vertex Pharmaceuticals Inc. vs Controller General of Patents, Designs, Trademarks and Geographical Indications & Ors (decision dated April 30, 2025 in W.P.(C)-IPD 10/2024, CM 21/2024), the Delhi High Court examined the legal position of the validity of pre-grant opposition during this period when two writ petitions were filed by Vertex Pharmaceuticals Inc. challenging the issue of notice on December 8, 2023 relating to filing of pre-grant representation by Respondent 3 and the order of maintainability of pre-grant opposition dated April 5, 2024 issued by the Assistant Controller of Patent and Design (Respondent 2).
This case revolves around the timing of the filing of the pre-grant representation under Section 25(1) and the order of the Assistant Controller dated April 5, 2024, that "pre-grant opposition is valid, and it should be acknowledged". The main issue before the High Court in this case was the timing of filing the pre-grant representation and whether the pre-grant opposition was maintainable after the grant of the patent, as ordered by the Assistant Controller.
Facts of the Case
The patent application filed by Vertex was duly examined and found to be in order for grant, and on November 28, 2023, the Controller signed the order granting the patent, noting that all objections had been addressed and no pre-grant opposition was pending. At this stage, although the order had been signed, the grant certificate had not yet been issued nor uploaded on the IPO's website. Respondent 3, using e-filing, sent a pre-grant representation on the same date at around 17:18:17.813 hours. This resulted in the issuance of the notice dated December 8, 2023, by the IPO, which the applicant challenged by filing a writ in the High Court.
Timing of filing the pre-grant opposition
Prior thereto, and aggrieved by the issue of notice of opposition, Vertex filed a Miscellaneous Petition under Section 80 of the Act, read with Rules 128 and 129 of the Rules, before the Controller, contesting the validity of a pre-grant opposition being filed at the time after signing the order of the grant of the patent. The Controller heard the applicant and passed an order on April 5, 2023, that "pre-grant opposition is valid, and it should be acknowledged." Vertex challenged this acceptance and the issue of notice, and approached the Delhi High Court by way of W.P.(C)-IPD 10/2024 and W.P.(C)-IPD 12/2024.
Case of the Petitioner
Vertex argued that the signing of the order by the Controller constituted the grant of the patent, and uploading the order or generating the certificate were ministerial acts, and did not play any role in the date of grant. According to the petitioner, once the patent was granted, the Controller became functus officio (citing Bombay High Court in the Dhaval Diyora case) and could not entertain any further pre-grant oppositions. Vertex submitted that the Controller was no longer holding such an application, as it would automatically proceed to the next stage, which was the publication of the grant.
In effect, the subject patent application had already been allowed, and the patent was deemed to have already been granted in favour of the petitioner for all purposes. The counsel for Vertex placed reliance upon Dr. (Miss) Snehlata C. Gupte v. Union of India & Ors. and Dr Snehlata C. Gupte v. Union of India & Ors. and contended that the Pre-Grant Opposition of respondent no. 3 was ex facie illegal and an abuse of the process of law.
Respondent 2's Reply
The standing counsel of IPO acknowledged that the Controller had signed the order granting the patent and agreed that the pre-grant opposition was filed before the system-generated certificate and grant order were uploaded to the IPO website. According to the counsel, the Miscellaneous Petition filed under Section 80 of the Act, read with Rules 128 and 129, filed by Vertex was heard, and an order was passed to proceed with the pre-grant opposition as a valid opposition.
Respondent 3's Argument
The counsel for the pre-grant opponent (respondent 3) contended that the pre-grant opposition had been validly filed, as a patent could be considered granted only after the order was uploaded on the IPO website, not when it was signed by the Controller. Respondent 3 argued that both Sections 25(1) and 43(1) mention only the 'date of grant'. Accordingly, there was no reference to the 'time of grant' as the cut-off for filing a pre-grant opposition. The counsel submitted that, since the opposition was filed on the same day as the order of grant, it was valid. The counsel for respondent 3 submitted that the public would not know of the Controller's decision until its publication, and systemic delays should not prejudice opponents.
Analysis of the Court and findings
The Court found that it was evident from the order dated November 28, 2023, and as admitted by respondent 2, that at the time of the Controller appending signatures on the order of grant, there was/were also no pre-grant oppositions by respondent 3 pending till then. It was found and admitted that the respondent 3 had filed no Pre-Grant Opposition, "... ...during the period between the decision upload and certificate generation... ...". The Court observed that, in effect, the subject Patent Application of the petitioner already stood allowed and the patent was deemed to have already been granted in favour of the petitioner for all purposes. According to the Court, what was left was a mere act of ministerial formality for uploading it on the IPO website. The Court ruled that this "is immaterial, as the 'date of order' can only be the actual date of passing of the said order and not the date of uploading. The 'date of order', being therelevant date, remains unchanged and unaffected by the subsequent date/ act of uploading."
The Court placed reliance on the judgment of the Division Bench inDr. Snehlata C. Gupte, wherein, while dealing with a similar situation, it was held as under:
"... ...17. Prima facie we agree with the aforesaid submissions of Mr. Maninder Singh. Be as it may, we are at pains to reiterate that the date on which the patent is granted cannot be the date of issuance of certificate but has to be the date on which orders are passed by the Controller. Certificate is in the nature of execution of that order and is proof of fact that the patent has been granted, which is the date on which the Controller passed the order. It is the date on which the decision is taken by the Controller on file in respect of a pre-grant opposition (either rejecting or accepting the representation) which is the determining event ascertaining the date of grant of patent. The sealing of patent and entering of the same in the register are ministerial acts which follow the Controller's act of grant of patent. The onus is on the person instituting the pre-grant opposition to be vigilant about the date of publication of the application under Section 11A of the Act and take appropriate steps for filing the representation... ..."
[Emphasis supplied]
The Court observed that in the present case, it was only to be seen if the order dated November 28, 2023, had actually been signed by the Controller prior to filing pre-grant opposition by respondent no.3, i.e., which was/ is prior in point of time. Since it was undisputed, as per the respondents 1 and 2 themselves, that the order dated November 28, 2023, had already been signed by the Controller prior to the filing of pre-grant opposition by the respondent no. 3, and the only case made out by them was qua the uploading thereof, the same has to take precedence.
The Court held that the order dated November 28, 2023, passed and also signed by the Controller prior in point of time to the filing of the Pre-Grant Opposition by the respondent no.3, was final, and the non-uploading thereof could not take away the statutory right of the petitioner by a subsequent filing of a pre-grant opposition by respondent 3. In any event, the same and/or the non-generation of the patent certificate in favour of the petitioner could not alter the position and negate the grant of the patent in favour of the petitioner or take away its rights therein. The Court noted that after signing the order dated November 28, 2023, the Controller had become functus officio and thus was not seized of the subject patent application filed by the petitioner anymore. Resultantly, the impugned notice was ex facie illegal and arbitrary.
Controller becomes functus officio after the grant
The Court agreed with the petitioner that the Controller had become 'functus officio' after signing the order of grant of a patent, while placing reliance on the judgment of the Bombay High Court inDhaval Diyoracited by the counsel of the petitioner, wherein it was held
"... ...In the present case admittedly when the petitioner filed his pre- grant opposition, there was no application pending before the Controller Therefore the Controller could not have entertained the pre- grant opposition as there was no application for grant of a patent before it. The respondents are right in contending that the Controller had become functus officio..."
The Delhi High Court ruled that after signing the order dated November 28, 2023, the Controller had become functus officio and thus was not seized of the subject patent application filed by the petitioner anymore. Resultantly, the impugned notice was ex facie illegal and arbitrary. According to the Court, the filing of a pre-grant opposition on the very same day of the passing of the grant order dated November 28, 2023, was thus immaterial.
Decision of the Court
The Court observed that IPO could not have accepted the pre-grant opposition filed by the respondent 3 and/or issued the impugned notice to the petitioner since it was against the order dated November 28, 2023, passed by the Controller itself and ruled that doing so would be against the very letter and spirit of the Act.
The Court held that accepting the pre-grant opposition filed by respondent 3, in view of the aforesaid, was/is not statutorily permissible and the wrongful acceptance thereof against the provisions of the Statute cannot give any right in favour of respondent 3. Allowing so would result in an abuse of the process of law. The Court allowed both the writs and quashed the impugned notice dated December 8, 2023, and the order dated April 5, 2024, issued/passed by the Controller.
Leason Learnt
Filing of the pre-grant opposition during the period between the grant of a patent and the issue of a certificate of grant /its uploading on the website, was not statutorily permissible. Its wrongful acceptance by the Controller was against the provisions of the Statute and cannot give any right in favour of the pre-grant opponent. Allowing such pre-grant opposition would result in an abuse of the process of law. This case highlights the system glitches that need to be rectified to avoid such a situation from occurring in future. The pre-grant opponent should be vigilant to know that the time of filing the opposition is before the patent is granted. It cannot be stretched beyond that time by any argument or reason. The Controller should be more vigilant and apply restraint to prevent such abuse of the process of law.
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