Unravelling ambiguities in the date of a patent grant

By Abhai Pandey, Lex Orbis IP Practice
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The date a patent is granted determines when a pre-grant opposition can be filed. Section 25 (1) of the Patents Act, 1970, provides a window – starting from the date of publication of the application till the date of grant – within which a pre-grant opposition can be filed. Accordingly, the date of grant of patent becomes sacrosanct for pre-grant opposition.

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

Section 43 of the act mandates that if an application for a patent is found to be in order “the patent shall be granted as expeditiously as possible with the seal of the patent office and the date on which the patent is granted shall be entered in the register”. After grant of patent the controller is required to publish the grant along with the application, specification and other documents.

Rules governing the opposition proceedings, particularly rule 55(5) of Patent Rules 2003, authorize the controller to refuse or grant a patent or set conditions for compliance by the applicant. Under rule 55(6), while considering pre-grant opposition, the controller may either reject it and grant a patent or accept it and reject a patent within a month of the date of completion of the proceedings. The legislative intent is that as soon as the decision regarding the grant of a patent is made it needs to be granted under the seal of patent office.

Ambiguities revealed

The judgment in Snehalata C Gupte v Union of India & Ors contained interesting interpretations of the law and drew attention to ambiguities in patent laws.

This case involved two patent applications (590/DEL/2000 and 593/DEL/2000) filed by J Mitra & Company (JM&C) that were published in the official gazette of 20 November 2004. A pre-grant opposition to the application filed by Span Diagnostics (SD) was dismissed on 23 August 2006. On the same day the controller issued an order, with certain conditions, granting a patent (number 194639) on the application number 590/Del/2000. On 24 August 2006, i.e. a day after this order, Dr Snehalata Gupte filed a pre-grant opposition to this application. This was followed on 5 September 2006 by another opposition filed by a Dr Girish Rindani.

JM&C contended that the 23 August order, rejecting the pre-grant opposition of SD, implied they had been granted the patent and the opposition filed by Dr Gupte and Dr Rindani were not maintainable as they were time barred. On 16 October 2006 the controller rejected the pre-grant opposition of Dr Rindani on the ground of maintainability. On 17 November 2006 patent number 194639 was entered in the register.

Question resolved

The question before the court was whether the order passed on 23 August, which set aside SD’s opposition, amounted to grant of patent. This involved an interpretation of section of 25(1) of the act.

Dr Gupte and others argued this provision was in the Patents (Amendment) Act, 2005, to give more time to file opposition. This suggests a distinction between the laws that existed before the enactment of the Patent (Amendment) Act, 2005, and after. Before amendment, pre-grant opposition had to be filed within four months of the advertisement of the acceptance of complete specification. But after amendment, under section 11A of the act and as per rule 24, the publication of complete specification does not happen before 18 months after the date of filing of the application. In addition rule 55(1-A) states that no patent shall be granted until six months after the publication of the application under section 11A. All of this suggests the amendment intended to extend the time for filing opposition.

In resolving the question, the court delved into the hurdles that applicants face. As stated in section 45, a patent’s life begins on the date on which the application for patent was filed, but that is not usually when the patentee begins its commercial exploitation. Also, as per section 43, once pre-grant opposition is decided, the controller accepts the objection and invokes the provisions of section 15 or grants the patent. Considering all of this the court concluded that after examining the opposition, the controller’s order would amount to grant of patent and that can be confirmed as the date of grant of patent.

New communication routes

This interpretation of the date of a patent grant prompted the court to issue directions to streamline the working of the Indian Patent Office. Given that it is now important to communicate an order granting patent and that ensuring the applicant or his agent is present at the relevant time can be tricky, the court directed that the controller make and publish a list of cases for hearing – similar to the “cause lists” published daily by the court. The court also mandated that digitally signed orders be made available on the website of the Patent Office on the same day. This judgment clears some ambiguities in existing laws and highlights the need to discourage filing a series of oppositions. Some petitioners in this batch of writs have filed an appeal to the division bench of Delhi High Court. Their appeal is pending.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a New Delhi-based firm.

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