Tuesday, April 24, 2012

Delhi High Court rules on Grant of a Patent: Snehlata Gupte v. UoI

In a decision that was delivered on 20th  April 2012, the then acting Chief Justice of the Delhi High Court  ruled that upon rejection of a pre-grant opposition, a patent is deemed to have been granted. In other words, a patent grant is not contingent on the formal sealing and grant of the patent/ entry into the register, since these are but mere formalities. 

In this case, an application for a patent of J.Mitra was opposed by Span Diagnostics Limited under section 25 the pre-2005 Act, when there did not exist a provision for pre-grant opposition like the one under the current framework. The said opposition was decided in favour of the patent applicant; however, before the patent was formally sealed, the applicant had to undertake a minor amendment to the patent specification under the direction of the Controller.

The said direction was issued as part of the Opposition order. Around the same period, the 2005 amendment to the Patents Act was set to come into force before the formal sealing of the patent. Upon the amended Act coming into force, but before the sealing of the patent, Span Diagnostics filed yet another opposition, this time under Section 25(1) of the amended Act - A pre-grant opposition.

The logic of the opponent was, since the patent had not been formally sealed, it had not been granted yet, and therefore a pre-grant opposition was perfectly justified. The Chief Justice of the Delhi high Court held the following: 

1. Upon the rejection of an opposition under Rule 55(6) of the Patent Rules, it must be deemed that the patent has been granted since a contrary conclusion would result in an endless cycle of oppositions.

2. In the specific facts of the case, the direction of the controller in the pre-grant order to include a reference to another patent application in J.Mitra's patent specification was a routine order which did not affect or take anything away from the factum of grant of the patent to J.Mitra.

3. Simply put, (read para 17 of the judgement) according to the Delhi High Court, the date on which the patent is granted cannot be the date of issuance of certificate, but has to be the date on which order of grant is passed by the Controller. Issuance of certificate of grant is a mere formality which is contingent on the grant of the patent.

What if the patent applicant had failed to comply with the direction issued by the controller as part of the pre-grant order, however minor or formal the direction may be? In other words, if the patent applicant had NOT effected the revision of/ amendment to the patent specification as directed by the controller in the pre-grant order, would the process of grant be complete? If no, how can the direction be a mere formality?  

That said, the logic of the Delhi High Court is, for a refreshing change, pro-patentee. What is to be critically noted is that the High Court has touched upon, in an obscure way, the potency of the pre-grant opposition mechanism to thwart the grant of the patent to the utter frustration of the patent applicant. Hopefully, some day the High Court will also have the opportunity to comment on responsible use of the pre-grant opposition mechanism.

There are certain other aspects of the Patents Act which the High Court has touched upon, or alluded to in passing. The relevant observations of the High Court on these aspects shall be discussed in the posts to come.

We thank "Frequently Anon." for bringing this decision to our attention!

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