Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2008 Supreme(SC) 1257

2008(6) Supreme 480
Supreme Court of india
S.H. Kapadia and B. Sudershan Reddy, JJ.
J. Mitra & Co. Pvt. Ltd. — Appellant (s)
versus
Asst. Controller of Patents & Desig. & Ors. — Respondent (s)
Civil Appeal No. 5183 of 2008
(Arising out of S.L.P. (C) No.15727 of 2008)
With
Civil Appeal No. 5184 of 2008 arising out of S.L.P. (C) No.15729 of 2008
Decided on : 21-08-2008

Advocates appeared:
For the Appellant :Harish N. Salve, Sr. Adv., Mrs. Prathiba M. Singh, Ms. Saya Choudhary, Ms. Chetna Sai, Sumeet Bhatia and Maninder Singh, Advocates.
For the Respondents:T.R. Andhyarajina, Sr. Adv., Pravin Anand, Sagar Chandra, Hari Shankar K. and Vikas Singhm Jangra, Advocates.

Important Point
Until the amended provisions are brought into force by prescribed manner, the subsisting law applies.

Headnote:(a)Interpretation of statute – An Act does not come into force automatically – It has to be brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation. (Para 21)
       (b)Patents Act, 1999 – Sections 25(1) and 25(2) – “Opposition to pre-grant” and “opposition to post-grant” of patent – Even after a patent is granted, “post-grant opposition” can be filed under Section 25 (2) for a period of one year because in relation to patents of recent origin, a higher scrutiny is necessary. (Para 22)
       (c)Patents Act, 1999 – Sections 16 and 117G – The amended provisions not brought into force for quite some time – Therefore in the interregnum period the law as subsisting at the time, that is appeal lying to the High Court, would apply – High Court shall hear and decide the appeal. (Para 24)
       Facts of the case :
       1. This is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005.
       2. Span Diagnostics Limited, respondent No.3 herein, is a public limited company established in 1972 to indigenously develop and manufacture a comprehensive range of ready-made diagnostic reagents made by clinical pathology laboratories. On 14.6.2000 J.Mitra & Company Pvt. Ltd., appellant herein, filed its application for grant of patent. After scrutiny, the said application stood notified by the Patent Office on 20.11.2004.
       3. This was opposed by respondent no.3 in the year 2000.
       4.At that time appeals against decisions made by the Controller pertaining to “pre-grant oppositions” under Section 25 were maintainable before the High Court under Section 116(2) of the Indian Patents Act, 1970. It may be noted that in the said Amendment Act, 2002, no provision was made pertaining to “post-grant opposition”. That provision came to be made only under the Patents (Amendment) Act, 2005 which was promulgated on 4.4.2005 w.e.f. 1.1.2005. Sections 116 and 117A were not brought into force. However, Section 25 was brought into force vide Notification dated 20.5.2003.
       5. In short, by the Patents (Amendment) Act, 2005, for the first time a dichotomy was introduced in the Patent Law between “opposition to the pre-grant” and “opposition to the post-grant of patent”. This was the major structural change in the Patent Law. Similarly, under the Patents (Amendment) Act, 2005, appeal was restricted to the post-grant opposition orders and that appeal lay before the Appellate Board and not to the High Court. Here also, Section 25 of the Patents Act, 1970 as amended by Patents (Amendment) Act, 2005 (which refers to “pre-grant opposition” and “post-grant opposition”) was brought into force on and from 1.1.2005 whereas amended Section 117A by which appeal was provided for against post-grant opposition order was not brought into force till 2.4.2007. Further, vide Patents (Amendment) Act, 2005, a dichotomy was brought in between pre-grant and post-grant opposition orders w.e.f. 1.1.2005. But when it came to filing of first appeal for some unknown reasons, the amended Section 117A (which provided for only one statutory appeal and that too against post-grant orders passed by the Controller) was not brought into force.
       6.The result is that although the Legislature intended to provide for only one statutory appeal to the Appellate Board, by reason of Section 61 of the Patents (Amendment) Act, 2005 not being brought into force till 2.4.07 a strange situation developed. The Legislature intended to provide for only one statutory appeal to the Appellate Board but by not bringing Section 61 into force till 2.4.07, appeals filed during the interregnum, as in this case, became vulnerable and liable to be dismissed as misconceived as is contended by the appellant. This is the controversy which needs to be resolved in this case.
       Findings of the Court :
       Until the amended provisions are brought into force by prescribed manner, the subsisting law applies.
       Result : Appeals disposed of.

Judgment

S.H. Kapadia, J. —

1.Leave granted.

2.For the sake of convenience we refer to the facts mentioned in Civil Appeal No. 5184 of 2008 (arising out of S.L.P. (C) No.15729 of 2008) filed by J. Mitra & Co. Pvt. Ltd.

3.This matter is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005.

4.Quite often the commencement of an Act is postponed to some specified future date or to such date as the Appropriate Government may, by Notification in the Official Gazette, appoint. Provision is also at times made for appointment of different dates for coming into force of different parts of the same Act. This is what has exactly happened in this case resulting into utter confusion with regard to pending FAO No.293/06 filed by respondent No.3 in the High Court under Section 116 of the Indian Patents Act, 1970 as amended by the Patents (Amendment) Act, 1999 w.e.f. 26.3.99.

5.Span Diagnostics Limited, respondent No.3 herein, is a public limited company established in 1972 to indigenously develop and manufacture a comprehensive range of ready-made diagnostic reagents made by clinical pathology laboratories. On 14.6.2000 J.Mitra & Company Pvt. Ltd., appellant herein, filed its application for grant of patent. After scrutiny, the said application stood notified by the Patent Office on 20.11.2004.

6.Thus, proceedings commenced before the Controller of Patents in the year 2000 when the appellant herein sought a patent of their device which was opposed by respondent no.3 in the year 2000. By then, the Patents (Amendment) Act, 1999 had amended the Patents Act, 1970 w.e.f. 26.3.99. Section 25 of the Patents Act, 1970 as amended by Patents (Amendment) Act, 1999 dealt with opposition to a patent vide Section 25. At that time appeals against decisions made by the Controller pertaining to “pre-grant oppositions” under Section 25 were maintainable before the High Court under Section 116(2) of the Indian Patents Act, 1970.

7.We quote hereinbelow Sections 25 and 116 as it stood in the year 2000 under the Patents (Amendment) Act, 1999 which read as under :

“Section 25. Opposition to grant of patent :

(1)At any time within four months from the date of advertisement of the acceptance of a complete specification under this Act (or within such further period not exceeding one month in the aggregate as the Controller may allow on application made to him in the prescribed manner before the expiry of the four months aforesaid) any person interested may give notice to the Controller of opposition to the grant of the patent on any of the following grounds, namely:

a.that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;

b.that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim –

i.in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or

ii.in India or elsewhere, in any other document :

Provided that the ground specified in Sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of Sub-section (2) or Sub-section (3) of Section 29;

that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant’s claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant’s claim;

a.that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.

Explanation - For the purposes of this clause, an invention relating to a process for which a patent i

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Judicial Analysis

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2008 Supreme(SC) 1257

Important PointUntil the amended provisions are brought into force by prescribed manner, the subsisting law applies.

Judicial Analysis

Important Point
Until the amended provisions are brought into force by prescribed manner, the subsisting law applies.