W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 1 of 40 IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 29th April and 3rd June, 2010 Decision on: 15th July, 2010 W.P. (C) No. 3516 of 2007 DR. (Miss) SNEHLATA C. GUPTE ..... Petitioner Through: Mr. Pravin Anand and Mr. J. Sagar with Mr. Sagar Chandra, Advocates. versus UNION OF INDIA & ORS. ..... Respondents Through: Mr. Ruchir Mishra with Mr. Rahul Jain, Advocates for R-1 to R-4. Ms. Pratibha M. Singh, Advocate for R-5. W.P. (C) No. 3517 of 2007 DR. (Miss) SNEHLATA C. GUPTE ..... Petitioner Through: Mr. Pravin Anand and Mr. J. Sagar with Mr. Sagar Chandra, Advocates. versus UNION OF INDIA & ORS. ..... Respondents Through: Mr. Ruchir Mishra with Mr. Rahul Jain, Advocates for R-1 to R-4. Ms. Pratibha M. Singh, Advocate for R-5. W.P. (C) No. 5422 of 2007 DR. GIRISH J. RINDANI ..... Petitioner Through: Mr. Pravin Anand and Mr. J. Sagar with Mr. Sagar Chandra, Advocates. versus UNION OF INDIA & ORS. ..... Respondents Through: Mr. Ruchir Mishra with Mr. Rahul Jain, Advocates for R-1 to R-4. Ms. Pratibha M. Singh, Advocate for R-5. W.P. (C) No. 5423 of 2007 DR. (Miss) SNEHLATA C. GUPTE ..... Petitioner Through: Mr. Pravin Anand and Mr. J. Sagar with Mr. Sagar Chandra, Advocates. W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 2 of 40 versus UNION OF INDIA & ORS. ..... Respondents Through: Mr. Ruchir Mishra with Mr. Rahul Jain, Advocates for R-1 to R-4. Ms. Pratibha M. Singh, Advocate for R-5. W.P. (C) No. 10399 of 2009 ZEPHYR BIOMEDICALS ..... Petitioner Through: Mr. Sanjeev Kumar Tiwari, Advocate. versus LALIT MAHAJAN & ANR. ..... Respondents Through: Mr. Maninder Singh, Senior Advocate with Ms. Saya Chaudhary and Mr. Jaspreet Singh, Advocate for R-1. Mr. A.S. Chandhiok, ASG with Mr. Jatan Singh, CGSC for R-2. W.P. (C) No. 10400 of 2009 ZEPHYR BIOMEDICALS ..... Petitioner Through: Mr. Sanjeev Kumar Tiwari, Advocate. versus LALIT MAHAJAN & ANR. ..... Respondents Through: Ms. Saya Chaudhary and Mr. Jaspreet Singh, Advocate for R-1. Mr. A.S. Chandhiok, ASG with Mr. Jatan Singh, CGSC for R-2. W.P. (C) No. 10450 of 2009 ZEPHYR BIOMEDICALS ..... Petitioner Through: Mr. Sanjeev Kumar Tiwari, Advocate. versus LALIT MAHAJAN & ANR. ..... Respondents Through: Mr. Maninder Singh, Senior Advocate with Ms. Saya Chaudhary and Mr. W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 3 of 40 Jaspreet Singh, Advocate for R-1. Mr. A.S. Chandhiok, ASG with Mr. Jatan Singh, Advocate for R-2. AND W.P. (C) No. 1020 of 2010 TIBOTEC PHARMACEUTICALS ..... Petitioner Through: Mr. Rajiv Nayyar and Mr. Sudhir Nandrajog, Senior Advocates with Mr. Pragyan Pradip Sharma and Mr. Rupesh Gupta, Advocates. versus THE ASSISTANT CONTROLLER OF PATENTS, DESIGNS & TRADE MARKS & ORS. ..... Respondents Through: Mr. A.K. Bhardwaj with Ms. Jagrati Singh, Advocates for R-1 & R-2. Mr. S. Majumdar with Mr. Saurabh Banerjee, Advocate for R-3. CORAM: JUSTICE S. MURALIDHAR 1. Whether reporters of local paper may be allowed to see the judgment? Yes 2. To be referred to the reporter or not? Yes 3. Whether the judgment should be referred in the digest? Yes J U D G M E N T 1. The short but interesting question of law common to all these petitions: When can a patent be said to be granted under the Patents Act, 1970 („Act‟)? The question arises in the context of the dismissal of pre- grant oppositions by the Controller of Patents („Controller‟) on the ground that they were time-barred under Section 21 of the Act. 2. The factual background in each set of petitions is necessary to be set out in order to appreciate how the question arises for determination in W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 4 of 40 each of them. Writ Petition (C) Nos. 3516, 3517, 5422 and 5423 of 2007 (1st Set of Petitions) 3. J. Mitra & Company Respondent No.5 in W.P. (C) No. 3516 of 2007 filed two patent Application Nos. 590/Del/2000 and 593/Del/2000 in the Office of the Controller on 14th June 2000. The patent specifications involved in the two applications were published in the official gazette on 20th November 2004 in terms of Section 11A of the Act. At that stage, Section 25 of the Act had not been amended. Under Section 25 of the pre-amended Act, an opposition to the grant of patent had to be filed within four months from that day i.e., the date of advertisement (publication) which period could be extended by one month upon the Controller being satisfied by the reasons given for such delay. 4. Span Diagnostics Ltd. („SDL‟) filed a pre-grant opposition which came to be rejected by the Controller on 23rd August 2006. The operative portion of the order passed by the Controller reads as under: “In view of the above discussion and in consideration of the submissions of both the parties. I hereby order to grant [Patent No. 194639] on Patent Application No. 590/Del/2000 with the following condition: The Applicants shall give cross reference to the patent application no. 593/Del/2000 on page 2 of the complete specification and submit the amended/retyped page(s) within a week from the date of these order. The Opposition on Patent Application No. 590/Del/2000 (194639) is disposed of in above W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 5 of 40 terms. No order to cost.” 5. In terms of Section 43 of the Act, where the application for a patent has been found to be in order for grant of patent and if the application has either not been refused by the Controller or has not been found in contravention of the Act, the patent shall be granted as expeditiously as possible “with the seal of the patent office and the date on which the patent is granted shall be entered in the Register”. Under Section 43(2), upon the grant of patent, the Controller “shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection”. Under Rule 55(5) of the Patents Rules 2003 („Rules‟), the Controller will examine the statement and evidence filed by the applicant (for the grant of patent) and may either refuse to grant the patent or require the complete specification to be amended to his satisfaction before the patent is granted. Under Rule 55 (6), the Controller shall, after considering the representation (i.e. the pre-grant opposition, if any) and submissions made during the hearing if so requested, “proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within one month from the completion of the above proceedings”. 6. It is the case of the Respondent No.5 J. Mitra & Co. that when on 23rd August 2006 the Controller rejected the pre-grant opposition filed by W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 6 of 40 SDL and in fact in the order used the words “I hereby order to grant patent…”, this was simultaneous with the rejection of the pre-grant opposition in terms of Rule 55(6) of the Rules and, therefore, 23rd August 2006 was the date on which the patent was granted to J. Mitra & Company. 7. On the very next day, i.e. 24th August 2006 Dr. Snehlata Gupte, the Petitioner in W.P. (C) No. 3516 of 2007, filed a pre-grant opposition vis- a-vis Patent No. 194639 filed by J. Mitra & Co. According to Dr. Gupte, in terms of the amendments introduced in Section 25(1) of the Act by way of the Patents (Amendment) Act, 2005 with effect from 1st January 2005, the time period for filing a pre-grant opposition stood extended till the grant of the patent. According to the Petitioner, the patent was not granted till such time it was not sealed and entered in the Register in terms of Section 43(1) of the Act. It is stated that as on the date of the filing of the pre-grant opposition by Dr. Gupte, i.e. 24th August 2006, the patent in favour of J. Mitra & Company had not been granted since it had not yet been sealed and entered in the Register. 8. On 5th September 2006, Dr. Girish Rindani, the Petitioner in Writ Petition (C) No. 5422 of 2007 filed a pre-grant opposition vis-à-vis the patent application of J.Mitra & Co.. 9. It is not in dispute that the Patent No. 194638 granted to J. Mitra & Company was entered in the Register on 22nd September 2006. Patent W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 7 of 40 No. 194639 granted to it was entered in the Register on 27th September 2006. Certified copies of the relevant entries in the Register have been placed on record. In terms of Section 43(2) of the Act, the said two petitions of J. Mitra & Company were published in the Journal of the Patent Office dated 17th November 2006. 10. On 16th October 2006, the pre-grant opposition of both Petitioners were rejected by the Controller on the ground of maintainability. This was done, however, without affording the two Petitioners an opportunity of being heard. On 31st October 2006, both Petitioners wrote to the Controller seeking a hearing before rejection of the pre-grant oppositions. On 23rd January 2007, the Controller granted the Petitioners a hearing. Thereafter on 30th April 2007 and 3rd May 2007, written statements were filed and submissions were advanced by both the Petitioners before the Controller. 11. Writ Petition (C) Nos. 3516 and 3517 of 2007 were filed by Dr. Snehlata Gupte challenging the order dated 16th October 2006 with reference to the Patent No. 194639 and 194638 respectively. On 22nd May 2007, the Controller passed fresh orders rejecting the pre-grant oppositions of the Petitioners on the ground that the oppositions were time-barred. Both Petitioners i.e. Dr. Rindani and Dr. Gupte challenged the said order dated 22nd May 2007 by filing Writ Petition (C) Nos. 5422 and 5423 of 2007 respectively. W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 8 of 40 12. The above petitions have been resisted by Respondent No. 5 J. Mitra & Co. It is contended that the order of the Controller was consistent with the correct position in law. According to Respondent No.5, the filing of the two pre-grant oppositions by Dr. Gupte and Dr. Rindani was also an abuse of the process of law. It is alleged by J. Mitra & Co. that SDL, which is in the business of sale and purchase of various pharmaceuticals products, is a habitual infringer and is deliberately and consciously violating various intellectual properties of J. Mitra & Co. SDL is alleged to be continuing to infringe the rights of Respondent No.5 with impunity. It is contended that each and every product in respect of which J. Mitra & Co. has applied for and/or has been granted a patent is either being opposed or infringed by SDL. 13. Patent No. 194368 is for an invention titled “A Device for the detection of antibodies of Hepatitis C virus in human serum and plasma”. Patent No. 194639 is for an invention titled “A device for the detection of Hepatitis C virus”. After the grant of the aforementioned patents in its favour, J. Mitra & Co. filed Civil Suit (OS) No. 22020 of 2006 in this Court against Kesar Mendicaments (KM) and SDL for patent infringement. By a judgment dated 22nd February 2008, this Court granted an injunction restraining KM and SDL from manufacturing, selling, offering for sale their HCV Signal or any other product which was in infringement of J. Mitra & Co‟s Patent No. 194638. It is stated that in the said suit SDL has filed a counter claim for revocation of the patent. W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 9 of 40 Submissions of Counsel in the 1st Set of petitions [W.P. (C) No. 3516 of 2007 etc.] 14. Appearing for J. Mitra & Co., Ms.Pratibha Singh, learned counsel, submitted that both Dr. Snehlata Gupte and Dr. Rindani are connected to SDL. Dr. Gupte is stated to be running the Surat Raktadan Kendra, the Chairman of which is Mr. Pradeep K. Desai who is the Chairman/Managing Director of SDL. It is stated that Dr. Gupte was aware of SDL‟s opposition to J. Mitra & Co‟s patents. Ms. Singh pointed out that upon the said pre-grant opposition being rejected on 23rd August 2006 the patent had to proceed for registration. However, to continue the serial oppositions, first Dr.Gupte filed a pre-grant opposition on the very next day i.e. 24th August 2006. Dr. Rindani, who is also stated to be connected to SDL, filed a separate pre-grant opposition on 5th September 2006. It is submitted that the filing of serial oppositions by persons connected to SDL after its pre-grant opposition had been rejected was malafide and if such applications were permitted to be entertained, there would be no end to the filing of such pre-grant oppositions particularly since after the amendment to Section 25(1) in 2005, a pre-grant opposition can be filed by „any person‟. It is submitted that if the stand of the Petitioners is accepted, it would defeat the objective of the Act which is to grant a patent rather than refusing it. 15. Ms. Singh pointed out that in the rejoinder to its counter affidavit, the Petitioners do not deny that Dr. Gupte is connected to SDL. It is only stated that such averments are misleading “and that they have no bearing on the present case”. It is further pointed out that the petitioners contend W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 10 of 40 in the rejoinder that “it is immaterial for the purposes of the present writ petition whether a person who files a pre-grant opposition is recorded to or not recorded who is interested in the concerned patent being opposed”. 16. Referring to the decision in K.D. Sharma (2008) 12 SCC 481, Ms.Singh submitted that the Petitioners have, by not disclosing their relationship with SDL, not come to the Court with clean hands and, therefore are disentitled to the reliefs prayed for in the writ petitions. Referring to the decisions in Bhagwanji Vishavji Thakkar v. Pravinchandra Jivanbhai Patadia (1995) 2 GLR 1438 and Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd. (2008) 13 SCC 30 it is submitted that a purposive construction would have to be adopted and it has to be held that in terms of Rule 55 (6) of the Rules read with Section 43 (1) of the Act the patent is granted once an order to that effect is passed by the Controller simultaneous with the rejection of the first set of pre-grant oppositions which are decided by the Controller. It is submitted that there has to be an outer time limit for filing a pre-grant opposition which in any event cannot be beyond the date of the Controller passing an order on file granting the patent. The sealing and entering of the patent in the Register are mere ministerial acts which make no difference to the date of the grant of the patent. 17. Ms. Singh refers to an order dated 2nd March 2009 passed by the Supreme Court in SLP (Civil) No. 3522 of 2009 (Indian Network For People with HIV/Aids v. F. Hoffmann-La Roche AG) which arose from W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 11 of 40 an order dated 30th January 2009 passed by the Assistant Controller of Patents. This was heard with SLP (Civil) No. 29857 of 2008 filed against the judgment dated 2nd December 2008 of the Madras High Court reported as Indian Network For People with HIV/Aids v. F. Hoffmann- La Roche AG MIPR 2009 (2) 0036. By the said judgment the Madras High Court set aside an order granting Roche a patent without disposing of the pre-grant oppositions filed by the Indian Network for People with HIV/Aids under Section 25(1) of the Act. Thereafter by an order dated 30th January 2009, the Assistant Controller rejected the pre-grant opposition. The Supreme Court, without going into the merits of the contentions that the Petitioners were deprived of an opportunity of raising before the Controller numerous contentions on merits, observed that they could be given permission to file an affidavit and raise all contentions at the stage of post-grant oppositions which had already been filed and were pending before the Controller. On the strength of the above order, it is submitted by learned counsel for J. Mitra & Co. that SDL itself could file post-grant opposition before the Controller and, therefore, no prejudice was caused by the grant of patent to the Respondent No. 5 by the order dated 23rd August 2006. In any event, SDL has also filed a counter-claim in the suit seeking revocation of the patent. 18. Mr. Pravin Anand and Mr. J. Sagar, learned counsel for Dr. Gupte and Dr. Rindani, on the other hand, pointed out to the plea raised in the plaint in C.S. (OS) No.2020 of 2006 filed by the Respondent No.5 J. W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 12 of 40 Mitra & Co. there is a clear admission to the effect that the patent had been granted on 22nd September 2006. This was therefore the understanding of J.Mitra & Co. itself. 19. Learned counsel for the Petitioners also attacked the bonafides of J. Mitra & Co. alleging that it was an infringer which had applied for and obtained a plethora of patents which were in fact copies of patents and products available worldwide and in India. It is submitted that the two patents in question relate to a third and fourth generation device for the detection of HCV antibodies in the human serum and plasma. Both the patents were imitations of a patent obtained by a US company, EY Laboratories, in 1991. However, since EY Laboratories did not have a patent in India, proceedings could not be instituted against J. Mitra & Co. for infringement. 20. It is submitted by learned counsel for the petitioners that all claims of J. Mitra & Co. filed in the United States Patent Office had been rejected on the grounds of obviousness and insufficiency. It is pointed out by Mr. Anand that Respondent No. 5 had originally applied for the patents in question with 14 claims followed by reduction of claims to 7 after which the patent was published for opposition with the said 7 claims. When the patent was granted on 22nd September 2006, it was granted for 4 claims. Claim 1 of the 4 claims is stated to be different from the published Claim 1. Even after acknowledging this to be a mistake in its order dated 23rd August 2006, the Patent Office has not published the claims for W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 13 of 40 opposition. It is stated that after the order dated 23rd August 2006, the patent office was under obligation not to grant the patent within three months of the statutory period of appeal so that an aggrieved party could file an appeal. It is alleged that the entire process of grant of patent was done in a quick and clandestine manner so that no one would know about the same. 21. It is submitted by Mr. Anand that the diagnostics kit industry is a very small and close knit and “everyone knows everyone in this field”. Claiming to be among the leading scientists in their field, the Petitioners state that “it is not only their duty but also their responsibility to ensure that no unscrupulous trader usurps rights of other parties or malafidely stops other parties involved in this field.” It is submitted that the intention of the Petitioners is “not to stall the grant of patents but to try and ensure that no wrongful patents are granted to unscrupulous traders in the interest of the public”. It is submitted that a patent is a complete monopolistic right and should be granted only after due consideration. It is for this reason that the legislature has built in various safeguards like pre-grant opposition, post-grant opposition, revocations, counter-claim for revocations and defences of revocation in a suit for infringement. It is stated that the words of the statute are clear and till such time the grant of the patent is made known by the publication in the official gazette, it cannot be said to have been granted in law. It is also pointed out that the interpretation canvassed by counsel for respondent No.5 was contrary to the current practice of the Controller‟s office and would lead to a great W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 14 of 40 deal of avoidable confusion. Writ Petition (C) Nos. 10399, 10400 and 10450 of 2009 [2nd set of petitions] 22. The relevant facts are that Lalit Mahajan Respondent No.1 in all the above writ petitions filed three patent applications for grant of patents being Application Nos. 1688/Del/2007, 1689/Del/2007 on 8th August 2007. In Application No. 1688 of 2007, the invention related to a device for analysing the presence of Dengue IgG antibodies in human serum and plasma. Application No. 1689 of 2007 related to the invention of a kit for analysing the presence of dengue IgM antibodies in the human serum or plasma. Lalit Mahajan also filed two other applications being 74/Del/2005 and 75/Del/2005 on 12th January 2005 in relation to a Pan Malaria Stix and a Tetra Malaria Stix respectively for testing of malaria. 23. Lalit Mahajan‟s Application No. 1688/Del/2007 was published in the Journal on 31st August 2007. The patent was granted and was also sealed on 16th October 2008. A pre-grant opposition was filed by the petitioner Zephyr Biomedicals („Zephyr‟) on 12th December 2008. The pre-grant opposition was rejected on 4th March 2009. This order was challenged by Zephyr in Writ Petition (C) No. 10399 of 2009. 24. Lalit Mahajan‟s Application No. 1689/Del/2007 was published on 7th September 2007. The patent was granted and sealed on 16th October 2008. The pre-grant opposition was filed by Zephyr on 12th December 2008. It was rejected on 4th March 2009. This order was challenged by W.P.(C) Nos. 3516, 3517,5422, 5423 of 2007 & 10399, 10400 & 10450 of 2009 & 1020 of 2010 page 15 of 40 Zephyr in Writ Petition (C) No. 10400 of 2009. 25. Lalit Mahajan‟s Applications No. 74/Del/2005 and 75/Del/2005 were published on 2nd June 2006. The patent was granted and sealed on 16th October 2008. The pre-grant opposition was filed by Zephyr on 28th November 2008. It was rejected by the Controller on 16th March 2009. This order was challenged by Zephyr by filing Writ Petition (C) No. 10450 of 2009. Submissions in the 2nd Set of petitions (by Zephyr) 26. The arguments advanced by Mr. Sanjeev Kumar Tiwari, learned counsel appearing for Zephyr against the orders of the Controller rejecting its pre-grant application on the ground of limitation were more or less similar to the arguments advanced by counsel appearing for Dr. Snehlata Gupte