Shamnad recently carried a post on Justice Murlidhar’s judgment in the case of Dr. Snehalata v. UoI. The controversy in that case was as to the ‘date of grant’ of patent. In his order, Justice Murlidhar clarified that a patent is deemed to have been granted on the date when the patent office signed the order granting the patent and not on the date of issuance of the patent certificate. He also mandated that such an order be published on the internet immediately.Image from here.
A. Section 45(3): This provision of the Patents Act, 1970 states that “Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before [the date of publication of the application].” The portion in the brackets was inserted by an amendment in the year 2005 in order to replace the phrase “the date of advertisement of the acceptance of the complete specification”.
(i) A literal interpretation: A literal interpretation of this provision may suggest that the phrase ‘publication of the application’ be interpreted as the publication of the application that occurs under Section 11A of the Patents Act, 1970. A Section 11A publication is the very first publication that occurs and is mainly aimed at giving public notice for the purpose of inviting pre-grant opposition. This publication occurs even before the stage of the ‘First-Examination-Report’ (FER). At this stage there is absolutely no right that has crystallized in favour of the patentee and therefore to suggest that the patentee would have a right to sue for infringement from the date of a Section 11A publication would be absurd. When the literal interpretation of a statute results in an absurd result the principles of statutory interpretation require us to give the statute a purposive interpretation which would cure the absurdity.
(ii) A purposive interpretation: A purposive interpretation of this provision would require us to examine the purpose and context of the amendment inserting the term ‘publication of the application’ and also the general purpose of Section 45(3) of the Patent Act, 1970. Coming to the purpose and context of the amendment inserting the phrase ‘publication of the application’ it would be pertinent to point out that the phrase which was sought to be replaced, i.e. “the date of advertisement of the acceptance of the complete specification”, was in itself being deleted throughout the Patents Act, 1970. The only other provision in which this phrase was found was the erstwhile Section 23, which itself was deleted in 2005. Section 23 was being deleted because the entire scheme of the Act was being modified to provide for two levels of oppositions i.e. pre & post grant. The amendment was introduced to bring about consistency in the language of the statute while at the same time maintaining the equivalent purpose i.e. date of advertisement of accepted patent.
The purpose of Section 45(3) is very simple. Any governmental action can be valid only through public notice. To bestow a monopoly right on a person will be valid only if the general public has notice that such a right has been granted. This is necessary because such a monopoly places reasonable restrictions on the rights of other persons to manufacture the same product. Therfore to grant such a right without public notice would be arbitrary and against the principles of natural justice. A patent certificate or a letter to the patentee intimating them about the grant of a patent is of no relevance since both are essentially private communication between the government and the patentee. The ‘patent certificate’ for example is not even a requirement under the Act, it is a creation of the Rules. The publication of the grant of a patent is however a statutory requirement under Section 43(2) of the Patent Act. As per this provision it is only after a publication under Section 43(2) that the entire file is open for public inspection. The purpose therefore behind Section 45(3) is to allow for a suit for infringement only after the general public has been given notice about the existence of the patent right.
B. The Bajaj v. TVS dispute: I’m assuming all our readers are familiar with the Bajaj v. TVS case, especially with the fact that the Division Bench decided the case on the basis of a post by our very own Sai Deepak Iyer. For our previous posts on this dispute please do click here.
As per the information available to us on the patent office website the patent at suit in the Bajaj case i.e. 195904 was published under section 11A on the 30th of April, 2004. The Patent Certificate was granted on the 30th of August, 2005. The publication in the official gazette of the Patent Office under Section 43(2) occured only on the 1st of January, 2010. However the suit for patent infringement by Bajaj before the Madras High Court was filed in early 2007 i.e. 3 years before the publication of the fact of grant of patent. In fact TVS had to suffer an interim injunction for a considerable length of time until the Division Bench vacated the interim injunction. The matter is currently stuck at trial. There are two consequences of the patent having been published only on the 1st of January, 2010:
(i) The patent is still vulnerable to a post-grant opposition – Contrary to common perception, under Section 25(2) of the Patents Act, 1970 the post grant opposition runs for a period of one year from the date of publication of the grant of a patent and not one year from the date of issuance of the patent certificate. Therefore the Bajaj patent is open to post-grant challenge until December 31 of this year.
in my humble opinion, the entire discussion is over a non-issue.
(1)the analysis is patently flawed. there is no need of resorting to the literal vs purposive interpretation tool; the statutory provisions {esp. 11A(7) n 45(3)} themselves r very clear on this issue;
(2)your interpretation seems to ve totally discounted the impact of the phrase “in respect of an infringement committed” in 45(3). what this seb-section means is that a patent applicant/patentee cannot initiate any infringement proceedings for any infringement committed before the date of publication;
(3)n this date of publication is without doubt what is contemplated u/s 11A;
(4)by virtue of the the deeming fiction created by 11A(7) entitles a patent applicant to initiate any infringement proceeding from the date of publication u/s 11A.
(5)in the bajaj vs tvs example, there is nothin wrong, in this respect, since date of publication u/s 11A is 30-04-2004, while the date of filing of the suit is early 2007. s11A(7) entitled the ‘then’ patent-applicant (but a ‘patentee’ since 01-01-2020 only) to file such a proceeding.
thus, i feel that the discussion is totally misplaced.
-aditya kant
Dear Mr. Kant,
Thank you for your comment.
I appreciate the fact that you disagree with me. I have only one observation to make. The logical conclusion of your comment is that a patent applicant can file a suit for patent infringement even before he has been granted a patent and in fact even before the patent office has conducted the ‘First Examination Report’.
Don’t you think that’s pushing the law a bit too far and pretty much against the entire aim of the Patents Act???
Prashant
author,
please delete my last comment posted just a few minutes ago, as the point nos.(4)&(5) ve mistakenly been made without taking into account the 1st proviso of 11A(7). unqualified apologies therefor. hereinbelow, my revised comments r as follows:
(1)the discussion partly involves a non-issue. there is no need of resorting to the literal vs purposive interpretation tool; the statutory provisions {esp. 11A(7) n 45(3)} themselves r very clear on this issue;
(2)author’s interpretation seems to ve discounted the impact of the phrase “in respect of an infringement committed” in 45(3). what this sub-section means is that a patent applicant/patentee cannot initiate any infringement proceedings for any infringement committed before the date of publication;
(3)n this date of publication is without doubt what is contemplated u/s 11A. so where is the need for purposive interpretation?
(4)however, the author is right on the issue that by virtue of the deeming fiction created by 11A(7), a patent applicant is entitled (from the date of publication u/s 11A) to the rights/privileges like that of a patentee. but this privilege/right one can exercise only after the publication of the factum of grant of patent u/s 43(2).
(5)in the bajaj vs tvs example, the suit was ‘certainly’ premature. but even then, where is the scope for using the ‘purposive interpretation’ tool? the provisions themselves r clear on this issue n, hence, there seems to be no need for application.
-aditya kant
I respectfully disagree with your purposive interpretation. The literal interpretation seems to be much more relevant to the purpose of inclusion of sec 45(3) read in light with 11 A(7).
Moreover, till Dr. Snehalata V. UOI, ‘issue of a patent certificate ‘ to a patentee signified commencement of his/her patent rights. Therefore, the patentee should not be made liable for bureaucratic delays (beyond his control) in publishing the grant of patent by rescinding his suit brought on valid grounds and in a proper way.
This somehow increases the relevance of the recent judgment in Dr. Snehalata v. UoI. The court’s order to publish the order of grant of patent on the patent office website will smear ambiguities arising in the patent system regarding date of grant of a patent.
However, I am curious why the order of the Honorable HC is still not implemented by the patent office? Till last week I did not see such orders uploaded online.
PS: The last line of your post should read: “However as per Section 11A(7) of the Patents Act, 1970 Bajaj has the right to claim damages from the date of publishing of the patent application.”
Prashant,
In a pre-grant proceeding, there is no scope for an interim injunction. Section 11 is clear on that issue.
Because of the provisions of section 11, no infringement suit and consequently no prayer for an injunction can be made for an application that is pending. The most that an applicant may get is a rendition of accounts.
Once a patent is granted, a post grant opposition proceeding may be initiated against the patentee.
As you have correctly mentioned that a post grant opposition proceeding may still be filed.
Your second point regarding the suit may, however, not be correct. The suit was filed because an applicant has a right to a rendition of accounts ‘assuming that the court believes that a patent may result from the application.’
The first suit was filed in lieu of rights accrued to an applicant. The second, if filed, acrrues to a patentee. There is nothing frivolous in the first suit.
Rajiv,
The focus of this entire discussion should be Section 45 and not Section 11. Obviously I’ve not a good job in conveying my position to either Mr. Kant or you.
Bajaj filed its suit for patent infringement in 2007 and an interim injunction was granted in the year 2008. However under the scheme of the Act, Section 45(3) states that a patentee has the right to sue only when the grant of patent has been published. This publication happened only on the 1st of January, 2010. My point therefore being that Bajaj had a right to sue for an injunction only after this date and not in 2007. Your point on filing a suit for rendition of accounts is well-taken and I agree that such a suit may survive. However in this case the suit was for an injunction.
The pith and substance of my entire post is that it is unfair to give the patentee a right to sue at such a time before the patent office has even given public notice that it has even granted a patent. This is the rationale behind the Section 45(3) and the concept of ‘public notice’ is a fundamental principle of all governmental action under the Indian Constitution.
Prashant
Prashant:
The section only states that:
“no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before [the date of publication of the application].””
In other word, the infringement cannot be “prior” to the date of publication….(“infringement committed before….”). The clause does not really speak about when the suit itself can be instituted.
For this, we need to go back to section 11 (7) which states that “PROVIDED that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted”
The date of grant is the actual date of grant. And now under the J Muralidhar judgment and even under current patent office practice, the grant is made “public” on the patent office website immediately. We dont need to wait for publication in the official gazette.
As for notice to the public, don’t you think the publication of the patent application itself serves adequate public notice. which is why section 11(7) etc give the right to claim like rights and privileges. At most, the patent scope could be curtailed during prosecution from what was initially applied for…but if you’re on notice of “x”, surely you’re on notice of “x minus” once granted!
Secondly, section 25(2) states that “at any time after the grant of the patent…”. Here again, it does not speak about the grant as published in te official gazette. Which means the current patent office practice of real time uploading of grant status and teh corresponding date on which this grant is made and published on the website should be the date of grant, no?
Hi Shamnad,
I mentioned in the beginning of the post that this discussion was only in regards the suits filed prior to Justice Murlidhar’s order in the Snehalata case.
The focus of my post was therefore limited to those cases, pre-2010, where there was a considerable time-gap between the grant of a patent and publication of the fact of grant of a patent. An example of these facts lies in the Bajaj case.
Coming to Section 45(3) – I disagree with your reading of the section. In my opinion the section when it states that, “no suit or other proceeding shall be commenced or prosecuted in respect of infringement committed before [the date of publication of the application]”, is quite clear that there can be no valid cause of action until after the publication of the grant of the patent. This is the reason that the provision uses the words ‘shall be commenced’. This means that no suit maybe instituted before the publication of the application (which I have read as ‘publication of grant of [accepted] application’.
I disagree with your ‘public notice’ argument. A Section 11A publication occurs even before the FER. The magnitude of difference between the claims of a patent application and the final patent can be enormous and therefore only a publication under Section 45(3) can constitute a valid public notice.
In regards your Section 25(2) argument I completely agree with you. I only stated that the deadline for a post-grant ends one year after the date of publication of the grant of the patent.
Cheers,
Prashant
Dear Prashant:
section 45(3): i don’t think i ever stated that the suit could be instituted prior to the publication of application….the simple point was that the “rights and privileges” begin from the date of publication of the application …though one can only sue after grant and then retrospectively assert the claim…
Secondly, on notice, “granted” claims may certainly vary from applied for claims. However, as I mentioned earlier, there is prohibition under the patents act that one cannot amend an application to claim wider than what one originally purported. Therefore any difference will only result in a narrowing of scope of claims. Clearly, if X had notice of wide published claims, X will also be expected to not infringe upon a narrower version (which is but a sub-set of the wider version).
More importantly however, is it not likely that someone aware of the published application, would before releasing a product check to see what came of the published application?
For all the above reasons, I just don’t think that this notice argument is going to hold up strongly in a court of law.
This comment has been removed by the author.
Dear Kshitij,
You’re comment was already up earlier. Kindly go through the thread of comments again..
Secondly, Prashant is not to blame. If at all there is a fault, it has to be pinned on me…as I am the moderator. In any case, as i mentioned earlier, your comment was already up..so i see no cause for complaint. Thank you for your understanding.
Hi Kshitij,
Thank you for pointing out the mistake in the last line. I’ve corrected it to ‘publishing’.
I think there is an apparent conflict between Section 45(3) and the proviso to Section 11A(7).
Section 45(3) states no suit maybe commenced for infringement committed before date of publication of application.
The proviso to Section 11(A)(7) states that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted.
So while one section states that a suit cannot be commenced until the application has been published, the other states that the suit cannot be instituted until the patent has been granted.
Which according to you is the date on which a suit can be instituted especially since there is still a gap between the date of grant of patent and publication of grant of patent???
Cheers,
Prashant
Hi Shamnad,
I must have misread your comment because even I agree that the patentee may retrospectively claim damages. I think Section 11A is quite clear on that point.
On the ‘notice’ issue, I think it will stand the test in court because there is no objective standard to test whether an application will translate into a valid patent. Therefore although the patentee has a retrospective right to claim damages, a patent office notice is still a requirement for the patentee to institute a suit. The time gap between grant and publication does not disadvantage the patentee since he anyway asserts a right to retrospective damages from date of publication under Section 11(A).
Prashant
Dear Prashant:
You state: “So while one section states that a suit cannot be commenced until the application has been published,”
Section 45 does not state that you can institute a suit soon after publication. It only states that “no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before [the date of publication of the application].””
In other word, the infringement cannot be “prior” to the date of publication….(“infringement committed before….”). The clause does not really speak about when the suit itself can be instituted. For this you have to look to 11. And 11 is clear that you can only do so after the grant.
So i really don’t think there is a conflict. Or even if there is a perceived one, section 11 ought to prevail.
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Hi Shamnad,
So we’ve come down to the most fundamental semantic differences. 🙂
I think the word ‘commence’ is supposed to be read as the date on which a suit can be filed.
I think the interpretation you offered is in any case covered by Section 11(A)(7) i.e. damages can be recovered only after publication of the application because infringement can occur only after the publication of the application itself.
Section 45(3) should be read in context of the 2005 amendment.
kindly observe this fact that all the confusion has been created because of the patent office’s repeat publication of the same patent grant. The bajaj patent has already been published in 2005 june (or may be july) for the same patent number. i was amazed seeing these type of errors by the indian patent office which is causing confusion for the enmasse.
Hi Siddharath,
Thanks for that piece of information. Could you please give me the journal number in which it was published.
I was going by the IPAIRS system in regards the 2010 publication. But you are right I’ve noticed that the Patent Office has been duplicating publication under Section 43(2). This is a dangerous trend because it means that the patent office is opening them up for post-grant opposition once again.
Prashant
Dear Prashant,
In my opinion, the intention of sec 45 (3) is to absolve an alleged infringer from any ‘infringement activity’ he/she may have carried before publication of a patent application. The premise of the section may be based on the concept of ‘public notice’, which is served once the patent office publishes a patent application.
Support of the aforementioned contention may also be derived from patent jurisprudence of countries, such as U.S and U.K, where like sec 45 (3), there are provisions to absolve an alleged infringer from any infringement activity commenced before publication of a patent application. I can provide relevant references for this.
Moreover, I tried searching patent journals of 2005. Since, the certificate of patent grant is 30/08/2010, the publication of grant should be in journals published before the month August. I searched the journals published in months of May, June and July without any luck. Will let you know if I find anything.
Regards,
Kshitij Malhotra
Dear Kshitij,
Thank you for doing a search of the 2005 journals. Please do keep us updated.
Coming to your point on Sec. 45(3). Don’t you think that Section 11A(7) covers the very same point that you are making i.e. damages can be claimed from date of publication of application under Section 11A(7).
Why have two provisions on the same point?
Prashant
Hi all,
The grant notification of said patent published on July 29, 2005 journal
Dear Prashant,
I would like to respectfully disagree with you. Sections 11 A (7) and 45 (3) cover two different points.
Section 11A(7) clarifies rights and privilege of a patentee [Retrospective effect of enforcement or Provisional rights]. Also section 11A(7) clarifies that suit of infringement can only be brought after grant of patent. Whereas, section 45 (3) absolves an infringer from the infringement activities that he/ she carried before a patent application is published [Absolving infringement without any public notice].
Both these concepts are distinct. I don’t think I am missing anything in interpreting, however, if I am please feel free to point out?
Moreover, as I said, both these concepts are also available in patent jurisprudence of countries, such as US, and UK. May be a review of similar provisions in these jurisdiction will help us understanding things in perspective.
For example, in US, the “Provisional Rights” entitles a patentee to receive a reasonable royalty from infringers during the period between the publication date of the non-provisional utility application (or the PCT application) and the issue date of the ensuing patent provided that (a) the claims of the patent are substantially identical to the claims of the published application, and (b) the infringer had actual notice of the published application.
However, in all this discussion, I feel we need to revisit the actual point of your post: Whether a suit of patent infringement brought without a publication u/s 43 (2) maintainable?
There is still a grey area in this. However, I believe that sec 11A (7) creates rights and privileges for a patentee after his patent application is published (public notice), and such rights may only be discontinued if the patent application is rejected as provided in the proviso clause of sec 11A(7).
Regards,
Kshitij Malhotra
Dear Anon (11:25 PM)
Congrats on finding the date of publication!!!! You’re right it seems to have been published for the first time on July 29th, 2005. I’m not quite sure why exactly the patent office has gone ahead to publish this again and in effect re-open it for a post-grant opposition.
Cheers,
Prashant
Dear Kshitij,
When Section 11A states that rights and privileges are in effect from only the date of publication of the patent it automatically absolves an alleged infringer from paying royalties before the date of publication under Section 11A.
You don’t need a Section 45(3) to make the same point again. Therefore the only reading you can give the word ‘application’ in Section 45(3) is ‘application as accepted’.
best,
Prashant