TaxTMI 
TaxTMI 
2008 (8) TMI 998
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....r 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 A....
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.... 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; ....
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.... 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 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 ....
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....e 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. 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; ....
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....on 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: (a) that the patentee or the person under or through whom he claims, wrongfully obtained....
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.... 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. (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 examin....
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....ion 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 notwithstanding the enactment of the Patents (Amendment) Act, 2002 and the Patents (Amendment) Act, 2005 as the amended Sections 116 and 117A were brought....
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....e-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 structure of the Act providing for only one statutory appeal and that too only against the order granting patent unde....
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....ation 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 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 inte....
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....g 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. 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 ....