LexJ. MITRA & CO. PVT. LTD. versus ASST. CONTROLLER OF PATENTS & DESIG. & ORS.
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• [2008] 12 S.C.R. 419 -t J. MITRA & CO. PVT. LTD. A v. ASST. CONTROLLER OF PATENTS & DESIG. & ORS. (Civil Appeal No. 5183 of 2008) AUGUST ·21, 2008 8 ~ [S.H. KAPADIA AND B. Sl:JDERSHAN REDDY, JJ.] Indian Patents Act, 1970; Ss. 25, 116 and 117 as amended by Patents (Amendment) Acts 1999, 2002 and 2005: c Grant of patent - Opposition to - Pre-grant opposition as introduced in s.25 by 1999 amendment Act and post- grant opposition as introduced by the Amendment Act of 2005 - In terms of amended provisions of the Act appeal could be filed before the Board instead of High Court - D Disposal of appeal pending before High Court in terms of amended provisions - Held: Dichotomy between opposition ~ to 'pre-grant' and 'post-grant' of patent introduced in terms of Patents (Amendment) Act, 2005 for the first time and right to appeal restricted to against the post-grant opposition order E a.nd the appeal could be filed before Appellate Board and not before the High Court - However, amended provision enforced with effect frofT} 3. 4. 2007 - Therefore, appeal filed during interregnum cannot be transferred to the appellate Board as jurisdiction to deal such appeal conferred on the F +- Board only on April 3, 2007 - In view of hiatus created by reason of law not being brought into force in time, High Coljrt directed to hear and decide the appeal pending before it afresh in accordance with law as it stood then - Practice and procedure - Appeal - Disposal of G ..,, ~ Appellant filed an application for grant of patent in respect of certain product manufactured by it. The application stood notified by the Patent Office and proceedings· commenced before the Controller of 419 H 420 SUPREME COURT REPORTS [2008] 12 S.C.R. A Patents in the year 2000, which was opposed by respondent no.3. In the meantime, the Patents Act, 1970 was amended by Patents (Amendment) Act, 1999. In terms of amended provision under s.25 of the Act, opposition to a patent and appeals against decisions B made by the Controller pertaining to "pre-grant oppositions" has been dealt with and vide Section 116 (2) of the Act a right of appeal was made available to the aggrieved party against orders passed by the authority by way of an appeal to the High Court. In 2002, with the c intention to create an appellate forum to hear appeals against orders passed by the Controller, the Legislature promulgated the Patents (Amendment) Act, 2002. However, it was not brought into force immediately. However, Section 25 was brought into force only on 20.5.2003. Even as on 20.5.2003 vide Section 25 only D one right to oppose a patent at the pre-grant stage was available and appeal against an order passed by the authority, lay before the High Court under the then existing Section 116 of the Patents Act, 1970. The provision pertaining to "post-grant opposition" came to E be introduced under under the Patents (Amendment) Act, 2005. Vide Section 47 of the Patents (Amendment) Act, 2002 entire Chapter XIX stood substituted and Ss. 116 and 117A were not brought into force. On 19.10.2006 when FAO No.293/06 was filed by respondent No. 3 in F the High Court, Chapter XIX of the parent Act as amended vide Patents (Amendment) Act, 1999 continued to be in operation notwithstanding the enactment of the Patents (Amendment) Act, 2002 and the Patents (Amendment) Act, 2005 as the amended Sections 116 and 117A G providing for filing of appeal before the appellate Board in place of the High Court were brought into force only vide Notificati-on dated 2.4.07. The question which arose for determination before this Court in this batch of civil appeals was as to whether H r J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 421 OF PATENTS & DESIG. & ORS. --t FAQ No.292/06 and FAQ No.293/06 filed by respondent A no.3 in the High Court were liable to be dismissed/ transferred to appellate Board in view of amendments in the relevant provisions under the Indian patents Act, 1970. Appellant contended that the change in Section 25 B ~ brought about by Patents (Amendment) Act, 2005, a dichotomy between "pre-grant opposition" and "post- grant opposition" was introduced in the Patents Act, 1970; that on 23.8.06 the Controller rejected "pre-grant opposition" and on that day "post-grant opposition" c avenue was open to respondent no.3 in terms of Section 25(2) of the amended Act; that it was open to respondent no.3 to challenge the
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