Date of grant of a patent is date order passed on file

By Abhai Pandey, Lex Orbis IP Practice
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What is the date of grant of a patent?

In Dr Snehlata C Gupte v Union of India & Ors, a single judge in Delhi High Court answered this question, which arose in a batch of writ petitions, by holding that the date of grant of a patent is the date on which the controller passes an order to that effect on the file. The judge also directed the controller to disclose patent awards immediately and to electronically circulate the dates of patent grant hearings a day before.

Aggrieved by this order, the petitioners appealed before a division bench, which upheld the order.

Summary of facts

J Mitra & Co had filed two patent applications in 2001, which were published in 2004. Span Diagnostics Ltd (SDL) filed pre-grant oppositions. In August 2006, the controller rejected the oppositions and ordered the patents to be granted after J Mitra fulfilled a condition. The Patents Act, 1970, by that time was amended by the Patents (Amendment) Act, 2005, under which the time for filing a pre-grant opposition was extended until the grant of patent.

Gupte, the appellant, contended that her pre-grant opposition was well within the time as prescribed under the amended law as it was received before a patent had been granted. She contended that under the Patents Act, a patent is not granted until it is sealed and entered in the register.

Abhai Pandey Lex Orbis IP Practice
Abhai Pandey
Lex Orbis IP Practice

The patents granted to J Mitra were entered in the register in September 2006.

In October 2006, the pre-grant opposition of the appellant was rejected on grounds of maintainability, without giving the appellant an opportunity to be heard. In January 2007, a hearing was granted followed by filing of written statements and advancing of submissions before the controller. In May 2007, the controller passed fresh orders rejecting the pre-grant opposition on the ground of it being time-barred.

The appellant filed writ petitions challenging the orders of the controller passed in October 2006 and May 2007. The question that arose for consideration was: when is a patent granted.

The judgment

The two-judge division bench approached the question by examining the nature and effect of the controller’s order rejecting the opposition of SDL. Refuting Gupte’s contention that the controller’s order of August 2006 was conditional, the court emphasized that the condition – to add a cross-reference to the patent application on page 2 of the complete specification – had no substantial bearing on the decision on the pre-grant opposition.

Concurring with the view of the single judge in determining whether the date of grant of a patent is the date on which the controller passes an order or the date when a patent certificate is issued, the court noted that if a patent application is not refused following examination, and no pre-grant opposition is filed, the patent proceeds for registration.

If a pre-grant opposition is filed, the controller either rejects the opposition and grants the patent or accepts the opposition and refuses the grant of patent. Thus the two actions – considering the opposition and deciding on the application for grant of patent – take place simultaneously.

Provisions examined

The court noted that section 43 of the act states that “a patent shall be granted as expeditiously as possible”. Therefore the patent must be granted either when it is found that the application does not contravene any provision of the act or when any pre-grant opposition is rejected. In other words, at this stage the controller is not expected to delay the pronouncement of the final decision.

The court held that a proper reading of section 43(1) indicates that it is the decision taken by the controller on file which is the determining event for ascertaining the date of grant of a patent.

The sealing of the patent and the entering of the patent in the register follow the act of the controller passing an order granting the patent. In other words, the sealing of the patent and the entering of the patent in the register are intended to be ministerial acts evidencing the grant of patent.

Reinforcing the above, the court said that section 43(2) refers to publishing by the controller of “the fact that the patent has been granted”. The act of publication clearly follows the grant of patent. The grant of patent is anterior to the publication and necessarily has to be at a point prior to the publication.

Given that the interpretation of the provision has to be contextual, the court held that the date of grant of a patent is the date on which the controller passes an order to that effect on the file.

Abhai Pandey is an attorney-at-law with extensive experience in civil and criminal enforcement of intellectual property rights. He has over 16 years of experience in practice in this domain.

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