Sanchayita Lahkar

The High Court of Delhi Single Bench of Justice Saurabh Banerjee allowed two writ petitions filed by Vertex Pharmaceuticals Incorporated, quashing the issuance of a pre-grant opposition notice and a subsequent re-examination order passed by the Controller General of Patents. The Court held that the Pre-Grant Opposition filed by a third party after the signing of the order granting the patent, but before uploading it on the official website, was not legally sustainable. The Court stated that the Controller became functus officio once the order granting the patent was signed.

The petitioner, Vertex Pharmaceuticals Incorporated, a biotechnology company involved in developing treatments for cystic fibrosis, filed National Phase Patent Application No. 202017026584 on June 23, 2020, based on a PCT application dated November 30, 2019, with a priority date of December 1, 2017. The application was published under Section 11A of the Patents Act on October 2, 2020. On November 29, 2021, the petitioner requested examination, following which a First Examination Report was issued on January 4, 2022.

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After hearing on November 13, 2023, the Controller, vide order dated November 28, 2023, decided to grant the patent, observing: "All objections have been met. No further objection is pending with this application... No pre-grant opposition is filed. I, therefore, hereby proceed with grant of patent for the instant patent application no. 202017026584."

However, on the same day, November 28, 2023, respondent no.3 filed a Pre-Grant Opposition at 17:18:17.813 hours. The Controller's order was uploaded later the same day at 17:25:16.423 hours. Subsequently, on December 8, 2023, the Assistant Controller issued a notice initiating proceedings on the opposition. The petitioner challenged this notice in W.P.(C)-IPD 10/2024. A second petition, W.P.(C)-IPD 12/2024, challenged the Controller's order dated April 5, 2024, which upheld the maintainability of the opposition and called for re-examination of the patent application.

Petitioner contended that once the Controller had signed the order granting the patent, the matter was concluded and the Controller became functus officio. Counsel for the petitioner relied on decisions in Dr. (Miss) Snehlata C. Gupte v. Union of India and Dhaval Diyora v. Union of India, arguing that uploading the order was a ministerial act and did not affect the date of grant.

The Union of India (respondent nos.1 and 2) acknowledged the grant order but argued that due to technical delays in uploading and certificate generation, the opposition was validly accepted within the operational window.

Respondent no.3, represented by senior counsel, argued that the effective date of grant is the date of uploading of the grant order, not merely signing, and that the opposition was filed before the public had access to the order.

The Court extensively analysed the timeline and legal position. It recorded that at the time of signing the grant order, no opposition was pending. It stated in reference to the subsequent April 5, 2024 order: "...during the period between the decision upload and certificate generation, an opposition was filed..."

The Court observed: "The subject Patent Application of the petitioner already stood allowed and the Patent was deemed to have already been granted in favour of the petitioner for all purposes."

Addressing the argument on uploading versus signing, the Court held: "What was left was a mere act of ministerial formality for uploading it on the IPO website, which, in the opinion of this Court, is immaterial..."

Citing Dr. Snehlata C. Gupte, the Court stated: "...the date on which the patent is granted cannot be the date of issuance of certificate but has to be the date on which orders are passed by the Controller... The sealing of patent and entering of the same in the register are ministerial acts..."

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On the Controller's jurisdiction post grant order, the Court stated: "...after signing of the order dated 28.11.2023, the Controller had become functus officio..."

Further, the Court held that the petitioner could not be made to suffer due to delays in uploading caused by systemic restrictions: "...the same was due to some delay on the part of respondent nos.1 and 2... and not at the end of the petitioner..."

The Court issued the following directions:

"The present writ petitions are allowed and both, the impugned notice dated 08.12.2023 and order dated 05.04.2024, issued/ passed by the Assistant Controller General of Patents, Designs, Trademark and Geographical Indications are quashed, leaving all the parties involved herein to bear their respective costs."

Advocates Representing the Parties

For the Petitioner: Mr. Pravin Anand, Ms. Tusha Malhotra, Ms. Archana Shanker, and Ms. Sugandha Yadav

For the Respondents: Ms. Radhika Biswajit Dubey, CGSC, with Ms. Gurleen Kaur Waraich, Mr. Kritarth Upadhyay, and Mr. Prakhar Dixit, Mr. J. Sai Deepak, Senior Advocate with Dr. Shilpa Arora

Case Title: Vertex Pharmaceuticals Incorporated v. Controller General of Patents, Design, Trademark and Geographical Indications & Ors.

Neutral Citation: 2025: DHC:3096

Case Numbers: W.P.(C)-IPD 10/2024 and W.P.(C)-IPD 12/2024

Bench: Justice Saurabh Banerjee

[Read/Download order]