REPORTABLE

IN THE SUPREME COURT OF INDIA

CIVIL APPELLATE JURISDICTION

CIVIL APPEAL NO.   5588       OF 2008 (Arising out of SLP (C) No.21010 of 2006)

Glaxo Smith Kline PLC and Ors. ...Appellants

Versus

Controller of Patents & Designs and Ors. ...Respondents

J U D G M E N T

Dr. ARIJIT PASAYAT, J.

1. Leave granted.  

2. Order  passed in  four appeals  filed  by  the  respondents

questioning  correctness  of  order  dated  10th February,  2006

passed by a learned Single Judge of Calcutta High Court form

the  subject  matter  of  challenge  in  this  appeal.    A  learned

Single Judge had set aside the order dated 28.12.2004 passed

by  the  Controller  of  Patents  and  Designs   (in  short  the

‘Controller’) and remanded the matter to him for arriving at a

fresh  decision  on the  application  of  the  writ  petitioners  for

exclusive marketing right according to law that existed on 3rd

May, 2002.   The  Controller  was also  asked  to consider  the

report of the examiner dated 28.7.2000.  

3. Background  facts  giving  rise  to  the  filing  of  the  writ

petition were as follows:

The  writ  petitioners  filed  an  application  for  grant  of

patent under Section 5(2) of the Patents Act, 1970 (in short

the ‘Act’)  on 28th August, 1998. Subsequently, on 30th June,

2000 the writ petitioners further filed an application for grant

of “Exclusive Marketing Right” (in short the ‘EMR’).  On July

28, 2000 the examiner filed examination report as regards the

claim of the writ petitioners for grant of EMR.

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The  Controller  of  Patent,  however,  by  order  dated  3rd

May, 2002 refused the prayer of the writ petitioners for EMR.

Being  dissatisfied,  two  different  writ  applications  were

filed  before  the  High Court  being  W.P.No.20469(W)  of  2004

and W.P.No.20407(W) of 2004 and a learned Single Judge of

the High Court set aside the order dated 3rd May, 2002 and

directed the  Joint Controller  of  Patent  to  consider  and give

order on the application for grant of EMR afresh keeping all

points open.

Pursuant to the order of the learned Single Jude, dated

16th December, 2004, the Controller of Patent again rejected

the application filed by the writ petitioners on December 28,

2004.  

On January 1, 2005 the Patent (Amendment Act), 2005

came into operation by which various amendments to the Act

were made and the Chapter IV-A which provided the mode of

adjudication of the claim of EMR was totally deleted.

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On June 9, 2005 the writ petitioners filed another writ

application  thereby  challenging  the  order  dated  28th

December, 2004 passed by the Controller of Patent by which

the prayer for the EMR of the writ petitioners was rejected for

the second time.

Challenging  the  correctness  of  order  passed  by  the

learned Single Judge, the Controller of Patent and the Union

of India filed two appeals, while two others were preferred by a

third  party  to  the  proceedings  who wanted  to  be  added  as

party-respondent in the writ application. The appellants raised

a preliminary objection as regards maintainability of the writ

petition after coming into operation of amendments into the

Act  w.e.f.  1st January,  2005.  According  to  the  appellants

before the High Court, with effect from 1st January, 2005 there

was no scope for further considering the question of EMR as

Chapter IVA of the Act has been deleted and in Section 78 of

the Amending Act, it has been specifically made clear that all

pending applications for grant of EMR filed under Chapter IV-

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A of  the Principal  Act  which were pending on 1st January,

2005  should  be  treated  to  be  a  claim  for  patents  covered

under  sub-section  (2)  of  Section 5 of  the  Principal  Act  and

such application should be deemed to be treated as a request

for examination of grant of patents under sub-section (3)  of

Section 11(B) of the Act. The stand essentially was that there

was no scope for considering any pending cases for grant of

EMR after 1st January, 2005 and in any case the applications

relating to grant of EMR disposed of earlier cannot be revived

for consideration.  

Stand of the present appellants was that on the first day

of January, 2005 there was no pending application filed by the

writ petitioner for grant of EMR and the transitional provision

in Section 78 of the Act has no application to the facts of the

case. It  was pointed out that since the prayer for EMR was

disposed of at a point of time when the amendment had not

come  into  operation,  therefore,  there  was  a  vested  right  to

challenge the order before an appropriate forum in accordance

with law.  

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The  High  Court  was  of  the  view  that  the  preliminary

objection regarding maintainability of the writ petition was to

be accepted and therefore appeals were allowed.  So far as the

third parties are concerned, the merits were not gone into.  

4. Learned  counsel  for  the  appellants  in  support  of  the

appeal submitted that a crystalised right had accrued because

of Section 24A and 24B and the original orders dated 3.5.2002

and  16.12.2004  were  under  challenge.  The  order  dated

28.12.2004  was  passed  on  remand  and  the  learned  Single

Judge  by  order  dated  10.2.2006  set  aside  the  order.  The

impugned order speaks of repeal. Reference is made to Section

24B(1) about the right having accrued.  

5. Learned counsel for the respondents on the other hand

submitted that the intention of the statute appears to be to

the  contrary.   Therefore,  the  transitional  provision  clearly

applies even if it is treated to be pending under Section 11B

(3).  

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6. To the present  case,  Section 6 of  the  General  Clauses

Act, 1897 (in short the ‘General Clauses Act’) applies. It reads

as follows:

“6.  Effect  of  repeal:-  Where  this  Act,  or  any Central  Act  or  Regulation  made  after  the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then unless a different intention appears, the repeal shall not-

(a) revive  anything not in fore or existing at the time at which the repeal takes effect; or  

(b) affect the previous operation of any enactment so  repealed  or  anything  duly  done  or  suffered thereunder; or

(c) affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or

(d) affect  any  penalty,  forfeiture  or  punishment incurred  in  respect  of  any  offence  committed against any enactment so repealed; or

(e) affect  any  investigation,  legal  proceedings  or remedy  in  respect  of  any  such  right,  privilege, obligation,  liability,  penalty,  forfeiture  or punishment as aforesaid;   and  any  such  investigation,  legal  proceeding  or remedy  may be  instituted,  continued  or  enforced, and  any  such  penalty,  forfeiture  or  punishment

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may  be  imposed  as  if  the  repealing  Act  of Regulation had not been passed.”  

Section 24B(1) of the Act reads as follows:

“24(B). Grant of exclusive of rights – (1) Where a claim  for  patent  covered  under  sub-section  2  of section 5 has been made and the applicant has –

(a) where an invention has been made whether in India or a country other than India and before filing search a  claim,  filed  an application  for  the  same invention claiming identical article or substance in a  convention  country  on  or  after  the  Ist  day  of January, 1995 and the patent and the approval to sell  or  distribute  the  article  or  substance  on  the basis of appropriate tests conducted on or after the Ist day of January, 1995 in that country has been granted or after the date of making claim for patent covered under sub-section 2 of section 5; or  

(b) where  an invention  has  been  made  in  India and before filing search a claim, made a claim for patent on or after the Ist day of January, 1995 for method  or  a  process  of  manufacture  for  that invention relating to identical  article  or substance and has been granted in India the patent therefor on or after the making the claim for patent covered under  sub-section  2  of  section  5,  and  has  been received the approval to sell or distribute the article or  substance  from  the  authority  specify  in  this behalf  by the Central  Government,  then, we shall have the exclusive  right by himself,  his agents  or licencee to sell or distribute in India the article or

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the  substance  on  or  from  the  date  of  approval granted by the Controller in this behalf till a period of five years or till the date of grant of patent or the date  of  rejection  of  application  for  the  grant  of patent, whichever is earlier.”  

7. As was observed by this Court in  M/s Hoosain Kasam

Dada (India)  Ltd.  v.  The State of  Madhya Pradesh and Ors.

(AIR 1953 SC 221) when pre existing right of appeal continues

to exist,  by necessary implication the old law which created

the right of appeal also exists to support the continuation of

that right and hence the old right must govern the exercise

and  enforcement  of  that  right.  In  the  absence  of  contrary

intention in  repealing  the  enactment,   rights  under  the  old

statute  are  not  destroyed.  In  M/s  Gurcharan Singh Baldev

Singh v. Yashwant Singh and Ors. (1992 (1) SCC 428),  it was

observed that right to proper consideration of an application

by statutory authority remains alive even after repeal of the

enactment under which the consideration had been sought.  

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8. In  Chief  Adjudication Officer v.  Maguire (Simon Brown

LJ) (1999 (2) All ER 859) it was observed as follows:

“Inchoate  rights,  obligations  and  liabilities  are covered by (c). This was established by Free Lanka Insurance Co. Ltd. v. Ranasinghe (1964 (1) All ER 457).  In  that  case  the  Privy  Council   had  no difficulty  in  construing  the  Ceylon  Interpretation Ordinance  1900  as  including  an  inchoate  or contingent right and the same approach should be adopted to the interpretation of “right”, “obligation” or  “liability”  in  section  16  of  the  1978  Act.  The section  clearly  contemplates  that  there  will  be situations where an investigation, legal proceeding or remedy may have to be instituted before the right or liability can be enforced and this supports this approach.”  

9. The  learned  Single  Judge’s  view that  the provisions  of

Section 78 of the Amendment Act have no application to the

proceedings which stood concluded before the appointed day

appears to be the correct view governing the issue. Since the

Chapter IV-A in question was merely repealed, the situation

has  to  be  dealt  with  in  line  with  Section  6  of  the  General

Clauses  Act.   The  provisions  of  Section  78  are  conditional

provisions  and  are  not  intended  to  cover  cases  where  the

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application  for  EMR  had  been  rejected  with  reference  to

Section  21  of  the  Amending  enactment.   As  noted  above,

Chapter IV A was repealed. The effect of the repeal has to be

ascertained  in  the  background  of  Section  6  of  the  General

Clauses Act. That being so, the order of the Division Bench

cannot be sustained and that of the learned Single Judge has

to operate.  The appeal is allowed but in the circumstances

without any order as to costs.     

………………………………….J. (Dr. ARIJIT PASAYAT)

………………..…………………J. (LOKESHWAR SINGH PANTA)

New Delhi, September 10, 2008

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