A division bench of the Delhi High Court has brought a definite end to the practice of mischievous serial pre-grant oppositions and affirmed the single judge ruling in the matter of Dr. Snehlata Gupte and Others V. Union of India. Shamnad had, in a previous post while discussing the single judge order had said that more Indian party specific cases would lead to greater objectivity in the patent system. It is now certain that all inventors, whether Indian or non-Indian, now stand at an equal footing after this decision-at least in respect of patent opposition cases.
Quotable quote: “We ……reiterate that the date on which the patent is granted cannot be the date of issuance of certificate but has to be the date on which orders are passed by the Controller.“
The appellants, represented by Mr. Sudhir Chandra, Senior Advocate, and others referred to the definition of a patentee (Sections 2(p)), 21, and 25(1)) and Rules 14, 31 to discuss that the date of a patent would be the date it is formally entered into the register. Great emphasis was laid at the fact that the Controller had while dismissing the patent opposition filed by one of the appellants had included the words …”With the following conditions……..” after ordering the patent to be granted.
The respondents, represented by Mr. Maninder Singh, Senior Advocate, for the patent office (Union of India), and Ms. Pratibha Singh, for respondent 5, countered this assertion (grant coupled with conditions) by discussing the process an application filed at the patent goes through to become a patent.
“[A]n application is filed under Section 5 of the Act and after 18 months, there is a publication of patent application under Section 11A of the Act and it takes 48 months to examine the request under Section 17B of the Act. Examination takes place as per Section 12(1) of the Act. It is thereafter stage of filing of application takes place in terms of Section 25(1) of the Act. Thus, by that time, opposition is received, Controller has examined the feasibility of grant of the application at that level and the same is found to be in order. Otherwise, the Controller could reject the application at that stage also. Once the opposition is filed, hearing on the said opposition is in terms of Rule 55 of the Rules. Therefore, the moment the pre-grant opposition is rejected, the Controller is empowered to pass the order of grant of patent which in fact, happened in the present case. It was not a conditional order as contended by the appellant.”
The judgment discusses the relevant provisions including the sections and the applicable rules in greater detail to conclude that the important date is the day an order of grant is issued.
The Bench also agreed with the single judge decision as regards capability of misuse re filing serial oppositions through aliases and stated: “We command the Patent Office to issue directions/instructions in terms of Paras 55 to 58 of the order of the learned Single Judge;” and imposed costs to the tune of Rs. 25000/ per appeal (~approximately USD 500 per appeal).
Thank you for posting the important judgement.
I am bit confused with the first highlighted portion. It says “the date of grant…. has to be the date on which orders are passed by the controller”. Can you elaborate, if it is also applicable for normal prosecution, i.e. when there is no opposition?
I believe in normal prosecution you interact with the examiner and when agreement is reached with the examiner regarding allowable claims, will that date will be considered as date of grant?
Moreover, will it effect the labeling of granted patents? For, example if i am labeling a product with a granted patent, what should be date of grant for the patent to be published on product?
What will be the date of grant for infringement damage calculation purpose?
thanks
KKA
A thoughtful question put by KKA. This definitely requires discussion.
@ KKA – After an agreement is reached on allowable claims, a grant letter (also called as “letter of intention of grant”) is issued by the patent office. The letter mentions the date on which the examiner has cleared the claims and granted the patent.
Considering the order of the divisional bench, patent marking can be done from the date this letter is issued, even though by then, the patentee does not have the certificate or the publication of grant is not made.
Infringement damages are from the date the patent application gets published.
Regards,
Kshitij