Patent

Case study on Dr. Snehlata C. Gupte v. Union of India & Ors (W.P. (C) No
3516 and 3517 of 2007) Delhi HC)
Facts of the case

• The respondent no. 5 in this case, J. Mitra and Co. had filed two patent applications namely 590/Del/2000 and 593/Del/2000 with the
Controller of Patent on 14 June 2000 which was published subsequently in the official gazette on 20 Nov, 2004 in terms Section 11A
{Publication of applications} of the Act.

• The pre-grant opposition according to the law at that time ( Unamended Act section 25) had to be filed within 4 months from publicatio
But such period of opposition could further be extended to a period of one month upon the Controller being satisfied by the reasons given
such delay. After amendment it is 6 month according to section 25(1).

• Span Diagnostics Ltd. filed a pre-grant opposition against the alleged patents of the Respondent no. 5 which was rejected on 23 August 20
by the controller thereby stating “I hereby order to grant patent....”this was simultaneous with the rejection of the pre-grant opposition i
terms of Rule 55(6) of the Rules and, therefore, 23 rd August 2006 was the date on which the patent was granted to J. Mitra & Company.
Under Rule 55 (6), the Controller shall, after considering the representation (i.e. the pre-grant opposition, if any) and submissions made
during the hearing if so requested, "proceed further simultaneously either rejecting the representation and granting the patent or accepting
representation and refusing the grant of patent on that application, ordinarily within one month from the completion of the above
proceedings".
• Next day ie on 24 August 2006, Dr. Snehlata Gupte filed an opposition contending that according to the new
amendment to S. 25(1) the period of opposition stood extended till the time when the patent is actually entered on
the register and thereby sealed.According to the Petitioner, the patent was not granted till such time it was not sealed
and entered in the Register in terms of Section 43(1) {where the application for a patent has been found to be in
order for grant of patent and if the application has either not been refused by the Controller or has not been found in
contravention of the Act, 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" of the Act}

• It is stated that as on the date of the filing of the pre-grant opposition by Dr. Gupte, i.e. 24th August 2006, the patent
in favour of J. Mitra & Company had not been granted since it had not yet been sealed and entered in the Register.
The said two petitions of J. Mitra & Company were published in the Journal of the Patent Office dated 17th
November 2006.
• Subsequently, on 5 September 2006 Mr. Girish Randhani filed a similar pre- grant opposition.

• The Controller rejected the two pre-grant oppositions on 10 October 2006 stating that they were time-barred
as they were filed after the order granting the patent ( But entered into register on 27 September 2006) was
made by the Controller himself on 23 August 2006 while rejecting pre grant opposition of span diagonsitic
against J Mitra and Co ie. Respondent 5.

• Similar were the facts in another case where patent applications made by Respondent No. 1, Lalit Mahajan
were granted by the Controller and sealed as well before the pre-grant opposition was made by Petitioner
Zephyr Bio-medicals {violation of sec 43(2) of patent Act and of being heard}.
•The pre-grant opposition was denied by the Controller due to the fact that such opposition was time-
barred. The Petitioner thereafter challenged such decision of Controller contending that such opposition
was made during the statutory time limit prescribed by the Act and therefore should not have been rejected
on this ground.In terms of Section 43(2) of the Act{ upon the grant of patent, the Controller "shall publish
the fact that the patent has been granted and thereupon the application, specification and other documents
related thereto shall be open for public inspection".}
• Similarly, Cipla Ltd. filed a pre-grant opposition against Respondent No. 1, Lalit Mahajan which was also rejected by
Controller on the same ground of being time-barred. But later, the Controller allowed the pre-grant opposition thereby
refusing the grant of the patent to the applicant on the ground of lack of inventive step.

• It was contended by Cipla Ltd. that a mere order of Controller shall not be considered grant of Patent according to the
provisions of S. 15( Power of Controller to refuse or require amended applications, etc., in certain case) and S. 43(Grant of
patents) the Act thereby stating that unless the procedure laid down under S. 25(1) (allows any person to oppose by way of
representation, the grant of a patent to the application) and 11A (Publication of applications) have been complied with, the
patent shall not be considered to be granted . In a nutshell Power of controller must be in consonance of Rules mention
under Act.
• On 31st October 2006, both Petitioners ie Dr. Snehlata Gupte and Dr. Rindani wrote to the Controller seeking a hearing
(Opportunity of Being Heard) before rejection of the pre-grant oppositions. On 23rd January 2007, the Controller granted
the Petitioners a hearing. Thereafter on 30th April 2007 and 3rd May 2007, written statements were filed and submissions
were advanced by both the Petitioners before the Controller.

• Writ Petition (C) Nos. 3516 and 3517 of 2007 were filed by Dr. Snehlata Gupte challenging the order dated 16th October
2006 with reference to the Patent No. 194639 and 194638 respectively. On 22 nd May 2007, the Controller passed fresh
orders rejecting the pre-grant oppositions of the Petitioners on the ground that the oppositions were time-barred. Both
Petitioners i.e. Dr. Rindani and Dr. Gupte challenged the said order dated 22nd May 2007 by filing Writ Petition (C) Nos.
5422 and 5423 of 2007 respectively

• Hence the court compiled all these similar cases to answer the common question involved in them.
Issues raised

• The only issue involved in this case was when it shall be considered that the patent has been granted.
Judgment and decision

• The court had, in this case, decided on two relevant points namely that .

• when shall the patent be considered to be granted

• the timeline within which pre-grant oppositions can be made.

• It was held that the date of grant of a patent is the important factor in determining the timeline for
allowing pre-grant opposition under section 25(1) of the Act.

• According to the Act and Rule 24 thereunder publication of the patent application shall be made only
after 18 months from the date of application of the patent [ APPLICATION …….18 MONTH FROM
THE DATE OF FILING OR PRIORITY DATE WHICHEVER IS EARLIER ( RULE 24)……
PUBLICATION ( OFFICIAL JOURNAL)……..6 Month ( RULE 55 1 A)…………GRANT ( SEALED
AND DATE REGISTERED IN REGISTER )]

• Also, according to Rule 55(1-A), no patent shall be granted before the expiry of six months from the
date of publication of the patent as it is presumed that no one can have knowledge of supplication being
made unless it is published in the official gazette.
• Hence, a patent cannot be granted before the expiry of the period of 24 months i.e. 2 years from the date of
application of patent made before the Controller. Therefore pre-grant opposition can be made only within this
period of 24 months from the date of application of patent.

• A patent can be granted by the Controller on grounds that i) it is not opposed and the opposition is not valid
according to the Controller and ii) Such patent is not in violation of any of the provisions of the Act.

• Hence patent is considered to be granted sec 43(1) on the date when the Controller passes an order to that
effect. So, as soon as the final order for grant of the patent is passed and noted on the file by the Controller
it is supposed to be the date on which patent was granted. After such date of grant of patent, no pre grant
opposition can be filed by anyone
• However the Act makes provision for post grant opposition( form 7 ) which is still available for the
person willing to oppose the grant of patent( EXCEPTION)