Procedural Lapses In Indian IP Administration: Vertex Pharmaceuticals And Davidoff

Introduction

The Delhi High Court has recently delivered two judgments underscoring how the procedural failures by the patent and trademark offices can unjustly prejudice rights. In Vertex Pharmaceuticals Inc v Controller General of Patents on 30 April,2025, the court held that a patent is "granted" in the moment the controller signed the grant order and that any following pre-grant opposition was therefore untimely. Same with the case of Zine Davidoff S.A. v. Union of India, 22 April 2025, the court state that the registrar has failed to send mandatory renewal notice (form O-3), depriving Davidoff of its right and restoring its trademark. This decision of court stresses notice compliance with statutory procedure; applicant should not have to suffer from the administrative lapses once the formal step of the grant or notification is complete

Patent Grant Timing and Functus Officio (Vertex)

The Vertex case disquieted a patent for Cystic fibrosis treatment. On November 28, 2023, the controller digitally signed the grant order (finding the application in order under the Patent Act 43). Still, due to a technical delay, the order was uploaded to the patent office database several hours later. Meanwhile, 7 minutes before unloading the third party have filed a pre-grant opposition. The controller noted this, issued a notice in April 2024 and reopened the examination. the Vertex have challenged this and argued that the patent had already been "Granted" when the controller signed the order

Statutory framework:

Section 25(1) of the Patents Act, 1970 allows oppositions only before the patent has been granted. Conversely, once "an application has to be granted," section 43(1) mandates that the "the patent shall be granted." As promptly as possible, the date the patent is granted shall be entered into the register. The Act does not clearly define the moment of grant, but it uses the term "date of grant" (e.g., §25(1), §43). In the case of Vertex, the Delhi High Court held that the date of the Controller's order on November 28, 2023, was the operative date of the grant, irrespective of the later upload. As Justice Banerjee put it, "the date of order only can be the actual date of passing of the said order and not the date of uploading." Since uploading is a ministerial formality. In simple words, once the controller has signed the order, the patent stands granted "for all purposes" on that date.

Functus officio:

A key legal rule is effective from the time of the patent grant. Once the controller signs the order to grant a patent, that becomes Functus officio, which states they no longer have the authority to deal with the application again. In the case of Vertex, the court has made it clear that after the signing, there is no longer any pending application, which means that the controller cannot accept any late opposition. The court also referred to the case of "Dhaval Diyora v Union of India" where it was held that once a patent is granted and the order is signed, the controller's job is over. Reopening the file would have been a misuse in the legal process. The court stressed that section 25(1) of the Patents Act only allows for the opposition before the grant. The grant date is when the controller has signed the order. Any opposition filed after that date goes against the law and the act's purpose.

Implications:

This decision has made it clear that the IPO must recognize a patent as granted when the controller signs the order, not when the website is updated has been occurs. The court held that applications should not have suffered from the IPO's technical or systemic limitations, as they cannot prejudice the patentee. In sum, once a patent is deemed granted and entered in the register, the controller has no further say. Any post-grant opposition or notice is invalid and "ministerial." Steps like uploading can be reversed only when the status is explicitly allowed. This enforces administrative accountability, and procedural lapses (e.g., late notice issuance) cannot be invoked to override a final grant under the statute.

Renewal Notices under Trademark Law (Davidoff)

In the case of Zine Davidoff S.A. v Union of India, the issue is removing a long-standing trademark ("DAVIDOFF") for failure to renew. Under the Trade Mark Act,1999, registrations last ten years and after that have to be renewed on payment of a fee. Critically, section 25(3) imposes a duty on the registration to "send notice in the prescribed manner to the registered proprietor of the date of expiration" and renewal conditions before the registration lapses. The rule prescribes form O-3 for this notice.

Statutory duties:

In practice, before removing a trademark for non-renewal, the trademark registry is legally required to have to giving the owner a chance to renew it by sending a notice in the form O-3, as which is mandated by section 25(3) of the Trademark Act,1999 and Rule 64(2) of the Trade Mark Rule,2017. In case of Davidoff case the proprietor had applied for renewal within the allowed grace period and the registry failed to serve the required notice O-3. Both parties agreed that no such notice had been issuing. the Delhi High Court ruled that this negligence was the serious legal error and court highlighting the issuing the O-3 Notice is a mandatory duty of the registry. In that case the registry had no record of sending notice, the court stated that removing the trademark was invalid

From Error to Enforcement: Judicial Outcomes and Procedural Duties in IP Cases

The Delhi High Court in the case of Davidoff ordered to restoration of the "DAVIDOFF" trademark, holding that the proprietor not have to suffer due to the failure of the Trademark Registry to send the mandatory form O-3 notice before removal of trademark. The court highlighted under section 25(3) of the Trade Mark Act and Rule 64 of the Trade Marks rules that notice is a statutory requirement, and a vigilant trademark owner cannot lose rights only because of an administrative error. Similarly in the vertex case concerning patent law, the court stated that once the controller sign the grant order, he become functus officio, meaning he has no further authority over the application and late opposition is invalid these ruling underlines a strict interpretation of statutory provision in intellectual property (IP) law, making clear that administrative office like the patent and trademark registry must strictly adhere to procedural requirement. What we can understand from judgements like this is that Patent and trademark Offices are entrusted with certain administrative duties, which they have to fulfil without any errors on their part. Duties like publishing orders or sending notices if not served or uploaded as per the process laid down in the statutes can adversely affect the substantive rights of the proprietors. Delays or errors on the part of Patent and trademark Offices should not be the reason that these proprietors lose on their rights to get their marks or patent registered. This will automatically improve the administrative accountability of these offices and will increase efficiency and transparency. Thus, statutory process must be followed whether it is entering the date of grant in the Register or issuing a statutory notice. The cases Vertex and Davidoff strengthen this rule highlighting that Patent and Trademark Offices are to be governed by the statute's provisions and not merely by their whims and fancies.

This piece highlights the importance of procedural compliance in intellectual property administration from the Vertex and Davidoff cases. The Delhi High Court rule that once legal formalities have done such as signing the patent grant or fulfilling renewals conditions, trademark holder right cannot be refused due to administrative lapse. These ruling reinforces that the intellectual property authority must strictly follow the statutory procedures and application should not suffer from errors by the patent or trademarks office. Holding due process is essential to protecting intellectual property right and ensuring fairness in the system.

References

1. Patents Act, 1970, Sections 25(1) & 43(1)
2. Trade Marks Act, 1999, Section 25(3)
3. Trade Marks Rules, 2017, Rule 64(2)
4. Vertex Pharmaceuticals Inc. v. Controller General of Patents,
5. Zine Davidoff S.A. v. Union of India,
6. Indian Patent Office (IPO) official updates and notifications: ipindia.gov.in
7. Indian Trademark Registry database and filings: ipindia.gov.in

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