Facts of the Case
Applicant: GlaxoSmithKline (GSK)
Date of Filing of the Patent Application: 28-08-1998
Date of Filing of EMR Application: 30-07-2000
Filing of First Examination Report: 28-07-2000
First Rejection of EMR Application: 03-05-2002
Six days after the tsunami hit us, the Patent (Amendment Act) 2005 came into operation, which among other things, deleted/repealed Chapter IVA (ss.24A-24F) under s.21 of the Amendment Act. More than six months after the second rejection of their EMR application and the coming into force of the Patent Amendment Act, GSK filed another writ on 09-06-2005 challenging the rejection (dated 28-12-2004) of the Controller. To this, the Controller filed an appeal which not only questioned the correctness of the earlier order passed by the Single judge, but also objected to the maintainability of GSK’s writ in the light of the 2005 Amendment Act.
The objection was raised on the ground that the Amendment Act left no scope for further consideration of the EMR application since Chapter IVA of the Act had been deleted and that in Section 78 of the Amending Act, it has been specifically stated that all pending applications for grant of EMR filed under Chapter IV-A of the unamended Act which were pending on 1st January, 2005 should be treated to be a claim for patents covered under sub-section (2) of Section 5 of the unamended Act. Consequently, such application should be deemed to be treated as a request for examination of grant of patents under sub-section (3) of Section 11(B) of the Act.
Simply put, according to the Controller, there was no scope for considering any pending cases for grant of EMR after 1st January, 2005 and in any case the applications relating to grant of EMR, disposed of earlier, could not be revived for consideration. However, according to GSK, as on January 1st, 2005 there was no pending application filed by the writ petitioner for grant of EMR and so the transitional provision in Section 78 of the Amending Act had no application to the facts of the case. It was pointed out that since the application for EMR was disposed of at a point of time when the amendment had not come into operation, therefore, there was a vested right to challenge the order before an appropriate forum in accordance with law. The High Court accepted the Controller’s arguments and so GSK filed an SLP before the Supreme Court.
The issue before the Supreme Court was:
“In the light of the Amendment Act which repealed provisions relating to EMR, was the petition filed by GSK regarding an EMR application, maintainable?”
S.78 of the 2005 Amendment reads thus:
(2) Every exclusive right to sell or distribute any article or substance in India granted before the 1st day of January, 2005 shall continue to be effective with the same terms and conditions on which it was granted.
(3) Without prejudice to any of the provisions of the principal Act, the applications in respect of which exclusive rights have been granted before the 1 st day of January, 2005 shall be examined for the grant of patent immediately on the commencement of this Act.
(4) All suits relating to infringement of the exclusive right granted before 1st day of January, 2005 shall be dealt with in the same manner as if they were suits concerning infringement of patents under Chapter XVIII of the principal Act.
(5) The examination and investigation required as carried out for the grant of exclusive right shall not be deemed in any way to warrant the validity of any grant of exclusive right to sell or distribute, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.
s.78 (1) speaks of an application filed under Chapter IVA before 01-01-2005; though it doesn’t state so explicitly, it refers to applications which are pending i.e. those which are under examination and those which have not been rejected or abandoned. This can be inferred from the rest of the sub-sections which deal with the treatment of such applications once the amendment comes into force; accordingly, an application which has been rejected by the office and has moved on from an administrative forum to a judicial forum cannot be brought within the aforesaid provision since this is not in line with the concept of pendency. Consequent to the rejection of the application, there are two possible situations:
2. A petition lies before the High Court after the coming into force of the 2005 amendment
The issue of maintainability does not arise under the first situation. Clearly, GSK’s petition falls under the second category. Can such a petition be maintained? To answer this, one would first of all need to look into the repealing Act. If the repealing Act is silent on the issue of pending proceedings initiated under the repealed Act, then one has to fall back on the General Clauses Act of 1897. Section 6 of the General Clauses Act reads:
a. revive anything not in force or existing at the time at which the repeal takes effect; or
b. affect the previous operation of any enactment so repealed or anything duly done or suffered thereunder; or
c. affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or
d. affect any penalty, forfeiture or punishment incurred in respect of any offence committed against any enactment so repealed; or
e. affect any investigation, legal proceeding or remedy in respect of any such right, privilege, obligation, liability, penalty, forfeiture or punishment as aforesaid;
f. and any such investigation, legal proceedings or remedy may be instituted, continued or enforced, and any such penalty, forfeiture or punishment may be imposed as if the repealing Act had not been passed.
It is clear from a plain reading of the above provision that whenever there is a repeal of an enactment, the consequences of section 6 of the General Clauses Act would follow unless, as the section itself says , a different intention appears. In this case, the 2005 Act is silent about the effect of repeal on the pending proceedings. In such a situation section 6 of the General Clauses Act would apply.
Further even in cases where appeals have not been filed, the same may be filed even after the repeal because the right to appeal is accrued and vested in the affected person the moment the proceedings were first initiated under the repealed Act. The vested right of appeal would not be dislodged by the repeal of the enactment unless the repealing Act expressly or by necessary implication takes away that right.
Thus it follows, that neither would the impugned rejection passed under the repealed Act become inoperative on repeal of the enactment nor would the right of appeal against the same be affected in any manner by the repeal. Also, the right of appeal is a matter of substantive right and not merely a matter of procedure, and this right becomes vested in a party when the proceedings are first initiated in, and before a decision is given by a lower forum, and such a right cannot be taken away except by express enactment. Accordingly, GSK’s petition was held maintainable.