Reportable  

IN THE SUPREME COURT OF INDIA CIVIL APPELLATE JURISDICTION CIVIL APPEAL NO.            OF 2008

(Arising out of S.L.P. (C) No.15727 of 2008)

J. Mitra & Co. Pvt. Ltd. … Appellant (s)

versus

Asst. Controller of Patents & Desig. & Ors.   .... Respondent (s)

WITH

Civil Appeal No. ………of 2008 arising out of S.L.P. (C) No.15729 of 2008

J U D G M E N T

S.H. KAPADIA, J.

1. Leave granted.

2. For  the  sake  of  convenience  we  refer  to  the  facts

mentioned in Civil Appeal No……………. 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.,

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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:

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(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.  

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Explanation – For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or  publicly used in  India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;  

b.  that  the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;  

c. that the subject of any claim of the complete specification is not an invention within the  meaning of  this  Act,  or  is  not patentable under this Act;  

d.  that  the  complete specification  does not  sufficiently and clearly describe the invention or the method by which it is to be performed;  

e. that the applicant has failed to disclose to the Controller the information  required  by  Section  8 or  has  furnished  the information which in any material particular was false to his knowledge;  

f. that in the case of a convention application, the application was not made within twelve months from the date of the first application  for  protection  for  the  invention  made  in  a convention country by the applicant or a person from whom he derives title;  

but on no other ground.

(2) Where any such notice of opposition is duly given, the Controller shall  notify the  applicant  and  shall  give  to  the  applicant  and  the opponent an opportunity to be heard before deciding the case.

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(3) The grant of a patent shall not be refused on the ground stated in Clause  (c)  of  Sub-section  (1)  if  no  patent  has  been  granted  in pursuance of the application mentioned in that clause; and for the purpose of any inquiry under clause (d) or clause (e) of that sub- section, no account shall be taken of any secret use.

Section 116. Appeals

(1) No appeal shall lie from any decision, order or correction made of issued under this Act by the Central Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.

(2)  Save  as  otherwise  expressly  provided  in  Sub-section  (1),  an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that is to say, Section 15, Section 16, Section17, Section 18, Section 19, Section 20,  Section  25,  Section  27,  Section  28,  Section  51,  Section  54, Section 57, Section 60, Section 61, Section 63, Sub-section (3) of Section  69,  Section  78,  Section  84,  Section  86,  Section  88(3), Section 89, Section 93, Section 96 and Section 97.”

(3) Every appeal under this section shall be in writing and shall be made within three months from the date of the decision, order or direction,  as  the  case  may  be,  of  the  Controller,  or  within  such further  time as  the  High Court  may in  accordance  with  the  rules made by it under Section 158 allow.”

(emphasis supplied by us)

8. Suffice it to note that under Patents (Amendment)  Act,

1999 there was only one right given to a person interested to

oppose the grant of patent by filing objections at the pre-grant

stage.  Under the said Amendment Act, 1999, as stated above,

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vide  Section  116 (2)  a  right  of  appeal  was available  to  the

aggrieved party against orders passed under Section 25.  The

said appellate remedy was available by way of an appeal to the

High Court.

9. In  2002, the Legislature desired  an amendment to the

law and intended to create an appellate forum to hear appeals

against orders passed by the Controller consequently Patents

(Amendment)  Act,  2002  was  promulgated  on  25.6.2002.

However, it was not brought into force immediately.  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.

10. Vide Section 47 of the Patents (Amendment)  Act,  2002

entire Chapter XIX stood substituted.  Sections 116 and 117A

were reworded which read as under:

“Section 116. (1) Subject to the provisions of this Act, the Appellate Board established under Section 83 of the Trade Marks Act, 1999 shall be the Appellate Board for the purposes of this Act and the said

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Appellate Board shall exercise the jurisdiction, power and authority conferred on it by or under this Act:

Provided that the Technical Member of the Appellate Board for the purposes of this Act shall have the qualifications specified in Sub- section (2).  

(2) A person shall not be qualified for appointment as a Technical Member for the purposes of this Act unless he-

(a) has, at least five years, hold the post of Controller under this Act or has exercised the functions of the Controller under this Act for at least five years; or  

(b)  has,  for  at  least  ten  years,  functioned  as  a  Registered Patent  Agent  and  possesses  a  degree  in  engineering  or technology or a masters degree in science from any University established  under  law  for  the  time  being  in  force  or equivalent; or  

(c) has, for at least ten years, been an advocate of a proven specialized  experience  in  practicing  law relating  to  patents and designs.  

Section  117A. (1)  Save  as  otherwise  expressly provided  in  Sub- section (2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.  

(2)  An appeal shall  lie to the Appellate Board from any decision, order  or  direction of  the Controller  or  Central  Government  under Section 15, Section 16, Section 17, Section 18, Section 19, Section 20,  Section  25,  Section  27,  Section  28,  Section  51,  Section  54, Section  57,  Section  60,  Section 61,  Section  63,  Section 66,  Sub- section  (3)  of  Section  69,  Section  78,  Sub-sections  (1)  to  (5)  of Section  84,  Section  85,  Section  88,  Section  91,  Section  92  and Section 94.  

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(3) Every appeal under this section shall be in prescribed form and shall be verified in such manner as may be prescribed and shall be accompanied by a copy of the decision, order or direction appealed against any by such fees as may be prescribed.  

(4) Every appeal shall be made within three months from the date of the decision, order or direction, as the case may be, of the Controller or  the  Central  Government  or  within  such  further  time  as  the Appellate  Board  may,  in  accordance  with  the  rules  made  by  it, allow.”

(emphasis supplied by us)

11. The  provisions  of  the  said  Amendment  Act,  2002,

however, were not simultaneously brought into force.  Suffice

it to note that Sections 116 and 117A were not brought into

force.   However,  Section  25  was  brought  into  force  vide

Notification  dated  20.5.2003.   Even  as  on  20.5.2003  vide

Section 25 only one right to oppose a patent at the pre-grant

stage was available and appeal  against an order,  passed by

the earlier, lay before the High Court under the then existing

Section 116 of the Patents Act, 1970 for the reason that the

amended Sections 116 and 117A were not brought into force.

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12. Without giving effect to the amendments to Sections 116

and  117A  suggested  by  Section  47  of  the  Patents

(Amendment) Act, 2002, on 4.4.2005 the Legislature enacted

the  Patents  (Amendment)  Act,  2005.   Even  here,  not  all

provisions  were  simultaneously  brought  into  force.   Only

certain sections of the Patents (Amendment) Act, 2005 were

brought into force.

13. Vide Section 23 of the Patents (Amendment) Act, 2005,

the then existing Section 25 was substituted.  The substituted

Section 25 reads as under:

“25. Opposition to the patent.-  (1) Where an application for a patent has been published  but a patent has not been granted,  any person  may,  in  writing,  represent  by  way  of  opposition to  the Controller against the grant of patent on the ground-  

(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-  

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(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;  

(c) 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;  

(d) 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 is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if  a product made by that process had already been  imported  into  India  before  that  date  except  where  such importation  has  been  for  the  purpose  of  reasonable  trial  or experiment only;  

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim;

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(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;  

(g) that the complete specification does not sufficiently and clearly describe  the  invention  or  the  method  by  which  it  is  to  be performed;  

(h) that the applicant has failed to disclose to the Controller the information required by Section 8 or has furnished the information which in any material particular was false to his knowledge;  

(i) that in the case of convention application, the application was not  made  within  twelve  months  from  the  date  of  the  first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;  

(j)  that  the  complete  specification  does  not  disclose  or  wrongly mentions the source or geographical origin of biological material used for the invention;  

(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground and the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed.  

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any  person  interested may  give  notice  of  opposition  to  the Controller  in  the  prescribed  manner  on  any  of  the  following grounds, namely:

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(a)  that  the  patentee  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;  

(c) 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 claim of the patentee 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 claim of the patentee;  

(d) 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 is granted shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if  a product made by that process had already been  imported  into  India  before  that  date  except  where  such importation  has  been  for  the  purpose  of  reasonable  trial  or experiment only;  

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(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;  

(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;  

(g) that the complete specification does not sufficiently and clearly describe  the  invention  or  the  method  by  which  it  is  to  be performed;  

(h)  that  the  patentee  has failed to  disclose to  the Controller  the information required by Section 8 or has furnished the information which in any material particular was false to his knowledge;  

(i) that in the case of a patent granted on convention application, the application for patent was not made within twelve months from the  date  of  the  first  application  for  protection  for  the  invention made  in  a  convention  country or  in  India  by the  patentee  or  a person from whom he derives title;  

(j)  that  the  complete  specification  does  not  disclose  or  wrongly mentions the source and geographical origin of biological material used for the invention;  

(k) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere,  

but on no other ground.  

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(3) (a) Where any such notice of opposition is duly given under Sub-section (2), the Controller shall notify the patentee.  

(b) On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for  examination  and  submission  of  its  recommendations  to  the Controller.  

(c)  Every  Opposition  Board  constituted  under  clause  (b)  shall conduct the examination in accordance with such procedure as may be prescribed.  

(4) On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent.  

(5) While passing an order under Sub-section (4) in respect of the ground mentioned in clause (d) or clause (e) of Sub-section (2), the Controller  shall  not  take into account any personal document or secret trial or secret use.  

(6) In case the Controller issues an order under Sub-section (4) that the  patent  shall  be  maintained  subject  to  amendment  of  the specification  or  any  other  document,  the  patent  shall  stand amended accordingly.”

(emphasis supplied by us)

14. We also  quote  Section 61 of  the  Patents  (Amendment)

Act, 2005 which reads as under:

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“Section 61. In Section 117A of the principal Act [as inserted by Section 47 of the Patents (Amendment) Act, 2002, in Sub-section (2), for the words and figures “section 20, Section 25, Section 27, Section  28,”,  the  words,  figures  and  brackets  “section  20,  Sub- section (4) of Section 25, Section 28” shall be substituted.”*  

*(this section was not brought into force till 2.4.2007)” (emphasis supplied by us)

15. 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.  One more aspect needs to be mentioned.  As

stated, vide Patents (Amendment) Act, 2005, a dichotomy was

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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.  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.

16. On 19.10.2006  when  FAO No.293/06  was  filed  in  the

High Court, Chapter XIX of the parent Act as amended vide

Patents (Amendment) Act, 1999 continued to be in operation

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notwithstanding  the  enactment  of  the  Patents  (Amendment)

Act,  2002  and  the  Patents  (Amendment)  Act,  2005  as  the

amended Sections 116 and 117A were brought into force only

vide Notification dated 2.4.07.  One more point needs to be

noted.  Section 117G of the principal Act was substituted vide

Patents (Amendment) Act, 2005.  It reads as under:

“Section 117G. Transfer of pending proceedings to Appellate Board.-  All cases of  appeals against any order or decision of  the Controller and all cases pertaining to revocation of patent other than on a  counter-claim in  a suit  for  infringement  and rectification  of register pending before any High Court, shall be transferred to the Appellate Board from such date as may be notified by the Central Government in  the Official  Gazette  and the Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.”  

17. On reading amended Section 117G it becomes clear that

all appeals against any order or decision of the Controller had

to be  transferred to the Appellate  Board from such date  as

may  be  notified  by  the  Central  Government  in  the  Official

Gazette.  This amended Section 117G was also brought into

force  vide  Notification  dated  3.4.2007.   Under  Notes  on

Clauses attached to the Statement of Objects and Reasons, it

has been clarified, vide clause 62, that amended Section 117G

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is consequential to the enforcement of the jurisdiction of the

Appellate Board under Section 64 which results to revocation

of patent.  Vide clause 47 of Notes on Clauses attached to the

Statement of Objects and Reasons, it has been clarified that

Section 64 is  also  amended  vide  Patents  (Amendment)  Act,

2005 to confer  wider jurisdiction on the Appellate  Board in

matters  of  revocation of  patent,  therefore,  amended  Section

117G which is  brought  into  force  only  from 3.4.2007  dealt

with transfer of pending proceedings from the High Court to

the Appellate Board.

18. The question which arises for determination in this batch

of  civil  appeals  is  :  whether  FAO  No.292/06  and  FAO

No.293/06 filed by respondent no.3 herein in the High Court

were liable to be dismissed.  According to the appellant, with

the  change  in  Section  25  brought  about  by  Patents

(Amendment) Act,  2005, a dichotomy was introduced in the

Patents Act, 1970.  According to the appellant, that dichotomy

was  between  “pre-grant  opposition”  and  “post-grant

opposition”.  According to the appellant, this was a structural

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change in the principal Act.  According to the appellant, on

23.8.06 the Controller rejected its “pre-grant opposition” and

on  that  day  “post-grant  opposition”  avenue  was  open  to

respondent  no.3  vide  Section  25(2).   According  to  the

appellant, under the amended Section 25 on rejection of “pre-

grant opposition” it was open to respondent no.3 to move an

application opposing grant of patent under Section 25(2).  The

patent was granted to the appellant on 22.9.06.  According to

the appellant, it was open to respondent no.3 to challenge the

grant  of  patent  by  making  “post-grant  opposition”  under

Section 25(2) from which an appeal was maintainable to the

Appellate Board.  This was not done.  Further, according to

the appellant, “pre-grant opposition” was filed by respondent

no.3  under  Section  25(1)  on  21.3.05.   According  to  the

appellant,  though  the  Patents  (Amendment)  Act,  2005,

amended Section 25 by enacting the amendment  on 4.4.05

the said amendment  was brought into force  w.e.f.  1.1.2005

and, therefore, it was open to respondent no.3 to challenge the

grant of patent by invoking Section 25(2) of the Patents Act,

1970.   According  to  the  appellant,  with  the  change  in  the

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structure of  the Act providing for only one statutory appeal

and  that  too  only  against  the  order  granting  patent  under

Section 25(4), the appeal filed by respondent no.3 against pre-

grant opposition order was not maintainable on 19.10.06 by

which time,  as  stated  above,  Section  25  stood  restructured

providing for a dichotomy between “pre-grant opposition” and

“post-grant opposition”.   

19. On the other hand, on behalf of respondent no.3, it has

been urged that on 19.10.06 it had filed an appeal in the High

Court under unamended Section 116 of the parent Act; that,

even  though Section 25 stood  restructured  w.e.f.  1.1.05 on

account of absence of notification bringing the amended law

into  force,  Sections  116  and  117A  (as  amended)  providing

appeal to the Appellate Board came into force only with effect

from 2.4.07 and, therefore, according to the said respondent,

its first appeal being FAO No.293/06 continued to be governed

by the law as it stood on 19.10.06 (on which date appeal to

the High Court was maintainable); that, on 23.8.06 the “pre-

grant  opposition”,  filed  by  respondent  no.3,  stood  rejected,

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however,  on  that  date  appeal  against  pre-grant  opposition

order was maintainable, under Section 116, to the High Court

and, therefore, there is no merit in the argument advanced on

behalf of the appellant that the first appeal filed by respondent

no.3  was  misconceived;  that,  it  is  true  that  Section 25  got

restructured w.e.f. 1.1.2005, however, such restructuring did

not  obliterate  the  first  appeal  filed  by  respondent  no.3  on

19.10.2006;  and  lastly  it  was  argued  on  behalf  respondent

no.3 that the appellant had filed its application for grant of

patent  on  14.6.2000,  it  was  notified  on  20.11.04,  however,

respondent  no.3  had  filed  its  “pre-grant  opposition”  under

Section 25(1) on 21.3.05 when the Patents (Amendment) Act,

2005  was  not  promulgated  (it  was  promulgated  on  4.4.05)

and,  therefore,  according  to  respondent  no.3  its  “pre-grant

opposition”  filed  on  21.3.05  was  valid  and  proper  as

respondent  no.3  could  not  have  invoked  Section  25(2)

proceedings  on that  day,  namely,  21.3.05  as the  law stood

enacted  bringing  in  Section  25(2)  only  on  4.4.05.   In  the

peculiar circumstances of this case it was urged on behalf of

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respondent no.3 that no interference is called for by this Court

in this batch of civil appeals.  

20. As stated above, quite often the commencement of an Act

is postponed to some specific future date or to such date as

the  Appropriate  Government  may,  by  notification  in  the

Official  Gazette,  appoint.   At  times  provision  is  made  for

appointment of different dates for coming into force of different

parts of the same Act.

21. An Act  cannot  be  said  to  commence  or  to  be  in  force

unless it is brought into operation by legislative enactment or

by the exercise of authority by a delegate empowered to bring

it into operation.

22. Applying the above tests to the present case, we find that

by  Patents  (Amendment)  Act,  2005  for  the  first  time  a

dichotomy was inserted in the Patent Law by providing vide

Section 25(1) for “opposition to pre-grant” and vide Section 25

(2)  for  “opposition  to  post-grant”  of  patent.   By  reason  of

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Patents  (Amendment)  Act,  2005,  the  kind  of  opposition

available  under  the  said  1970  Act  is  different  from  what

existed  earlier.   Previously,  there  was  no  “post-grant

opposition”.  Previously, the only provision of challenge by an

interested party was a “pre-grant” challenge under Section 25

(1)  as it  then stood.  Therefore,  the Courts had evolved the

‘rule of caution’ as the patent had not faced any challenge at

the hands of interested parties.  There is, however, a radical

shift due to incorporation of Section 25(2) where an interested

party  is  granted  the  right  to  challenge  the  patent  after  its

grant.   The  ground  of  challenge  under  Section  25(1)  is

identical  to  Section  25(2)  of  the  said  1970  Act.   However,

Section  25(1)  is  wider  than  Section  25(2)  as  the  latter  is

available only to a “person aggrieved”.   The main difference

between Section 25(1) and Section 25(2), as brought about by

Patents (Amendment) Act, 2005, is that even after a patent is

granted, “post-grant opposition” can be filed under Section 25

(2) for a period of one year.  The reason is obvious.  In relation

to  patents  that  are  of  recent  origin,  a  higher  scrutiny  is

necessary.  This is the main rationale underlying Section 25(2)

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of the said 1970 Act.  Therefore, the Legislature intended an

appeal under Section 117A(2) to the Appellate Board from any

decision, order or direction of the Controller,  inter alia, under

Section 25(4) [which refers to the power of the Controller to

maintain, amend or revoke the patent].

23. In the present case, the Legislature intended to provide

for two types of scrutiny followed by one statutory appeal to

the  Appellate  Board  against  “post-grant  proceedings”.   The

Legislature intended to have a dichotomy between “pre-grant

opposition”  and  “post-grant  opposition”.   However,  the

Legislature  intended  that  there  shall  be  only  one  statutory

appeal  against grant of patent.  The Legislature intended to

obliterate appeal from “pre-grant proceedings”, which existed

earlier.   However,  it  was  left  to  the  Executive  to  bring  the

enacted law into force vide notification.  For some unknown

reasons,  the  amended  Sections  116  and  117A(2)  were  not

brought  into  force  till  2.4.07  whereas  the  concept  of  “pre-

grant”  and “post-grant”  oppositions  were  brought  into  force

w.e.f.1.1.2005.   This  is  where  the  legislative  intent  got

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defeated  during  the  interregnum.   It  is  during  this

interregnum that respondent no.3 filed its FAO No.293/06 in

the High Court  under Section 116,  as it  stood on 19.10.06

under the Patents (Amendment) Act, 1999.  On that date, the

amended  Section  117A,  suggested  by  Patents  (Amendment)

Act, 2005, was not brought into force.  On 19.10.06 the old

law  prevailed  under  which  an  appeal  lay  before  the  High

Court.   Respondent  no.3,  in  both  the  cases,  preferred  first

appeals to the High Court under Section 116 as it then stood.

They are FAO No.292/06 and FAO No.293/06.  We have to

decide the fate of these pending appeals.   One more aspect

needs to be mentioned.  Under the Patents (Amendment) Act,

2005, appeal is provided to the Appellate Board against the

order  of  the  Controller  under  Section  25(4).   However,  that

statutory  appeal  is  maintainable  only  in  “post-grant

opposition” proceedings whereas respondent no.3 herein has

instituted  first  appeals  under  the  law  then  prevailing,

challenging  the  Order  rejecting  “pre-grant  opposition”  dated

23.8.06.

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24. Taking  into  account  the  complexities  involved  in  this

case, on account of a hiatus created by reason of the law not

being brought into force in time, we are of the view that the

first appeals, filed by respondent no.3 in the High Court being

FAO No.292/06 and FAO No.293/06,   would remain in the

High Court.  The said appeals would be heard and disposed of

by the High Court in accordance with law under Section 116

of the said 1970 Act as it stood on 19.10.06.  The High Court

will hear and decide the validity of the Order passed by the

Controller dated 23.8.06 rejecting “pre-grant opposition” filed

by respondent no.3.  We are informed that there are hardly

one  or  two  matters  of  this  nature  which  are  pending.

Therefore, we are of the view that respondent no.3 cannot be

let without remedy.  In the special circumstances of this case,

particularly when after 2.4.07 appeals against orders rejecting

“pre-grant opposition” are not maintainable  and particularly

when  FAO  No.292/06  and  FAO  No.293/06  were  filed  by

respondent no.3 prior to 2.4.07 under the old law, we are of

the view that these two appeals shall be heard and decided by

the High Court in accordance with law.  The Appellate Board

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after 2.4.07 is entitled to hear appeals only arising from orders

passed by the Controller under Section 25(4), i.e., in cases of

orders passed in “post-grant opposition”.  Therefore, there is

no point in transferring the pending FAO No.292/06 and FAO

No.293/06 to the Appellate Board which has no authority to

decide matters concerning “pre-grant opposition”.  Moreover,

it  may  be  noted  that  even  Section  117G,  which  refers  to

transfer of pending proceedings to the Appellate Board, is also

brought into force vide Notification dated 3.4.07.  Keeping in

mind the peculiar nature of the problem in hand, we are of the

view that ends of justice would be subserved if the High Court

is  directed  to  hear  and  decide  the  appeals  bearing  FAO

No.292/06 and FAO No.293/06 in accordance with law as it

then  stood,  i.e.,  under  Section  116  under  Patents

(Amendment)  Act,  1999  against  Orders  passed  by  the

Controller in “pre-grant opposition” proceedings.

25. Accordingly, the two Civil Appeals, filed by the appellant

herein, stand disposed of with no order as to costs.

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……………………………J.                                    (S.H. Kapadia)

……………………………J.                                               (B. Sudershan Reddy)

New Delhi; August 21, 2008.

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