Snehlata Gupte Vs. UOI & Others: : A Brave Attempt

While dismissing a batch of writ petitions, the Hon'ble High Court of Delhi has held that a patent is granted on the day on which the Controller of Patents passes an order to that effect on the file.

The Court has sought to protect interests of a patentee by virtualling curtailing the practice of filing sequential pre grant representations by opponents or their aliases by exploiting the intervening time period between the so called grant of patent and subsequent but related acts like issue of patent certificate.

The Court has also sought to make a balance by holding that the date of communication by Controller of patents that "application has been found to be in order for grant.." cannot be held to be the date of the grant of the patent and it cannot be seen as an order to grant a patent.

Interestingly the Hon'ble Court has held the very crucial and decisive acts/provsions viz. the sealing of the patent (now repealed), recordal of patent in the Register of Patents and issue of patent certificate to be not more than ministerial acts evidencing the grant of patent despite the fact that they significantly affect the entire patent practice.

In the backdrop of some recent cases where the observance was that the time gap between the grant of patent and subsequent acts like recordal of entry in the register and issuance of patent certificate on account of administrative delay on part of Patent Office opened flood gates for pre grant opposers to file more and more representations, it became highly necessary for the Court to plug this loophole.

There have been several fallouts of this ambiguity time and again. One of the fallouts involves the so called serial oppositions, now, held as not being maintainable in law and an abuse of the process of the law, filed by opponents and their aliases in some cases.

One of the examples of this very critical problem can be seen in the Gilead case where one of the representations was filed by a company related to another opponent. There are other instances as well for ex. the case of Roche's patent grant for Tarceva. There was a big time gap between the date of grant of patent and issue of patent certificate. It created some problems in determininng the nature of opposition proceedings against the said patent.

Though Court has sought to take a significant move in deciding the date of grant of patent, it seems as if the Court has sidelined the issue of subsequent but integral acts of prosecution viz. recordal of entry in the Register of Patents which significantly affect the maintainability of patents and nature of other legal proceedings as per the relevant provisions of the Patents Act.

Moreover the direction that every final order granting the patent passed by the Controller should be digitally signed and placed on the website of the Controller on the very same day without any unnecessary delay leaves much to be desired and seen considering the fact that publication of grant of patent is 'once a week' affair i.e. on every friday.

Interestingly the Court has sought to place the pre grant representation proceedings (or patent proceedings) on the same pedestal as the court hearing despite the fact that patent being techno-legal in nature and involving complexities more due to varied anticipations in terms of different citations require attention in a different manner.

Still the outcome of this decision is that it has curbed the practice of filing the so called serial oppositions time and again. It will surely come as a much needed relief to innovators.

Finally, we can say that the Court has made a brave attempt to bring clarity on such a critical issue of actual date of grant of patent by ironing out the creases tpically observed because of vague provisions of the statute. However, it still remains to be seen how actually the directions/instructions of the Hon'ble Court will be implemented.

The  author can be reached at: davidbhatt@legalserviceindia.com