"No Mandate to Amend Laws": Calcutta High Court Upholds Section 53 as Constitutionally Sound: Declines to Extend Patent Term for Delay, Citing “Statutory Limits Must Prevail”
Isabella Mariam
In a recent judgment delivered by the Division Bench of the Calcutta High Court, comprising Chief Justice T.S. Sivagnanam and Justice Chaitali Chatterjee Das, the Court dismissed an intra-Court appeal challenging the constitutional validity of Section 53 of the Patents Act, 1970. The Bench, sitting in its civil revisional appellate jurisdiction, upheld the earlier decision of the Single Judge that had declared Section 53 intra vires the Constitution of India.
The appeal arose from the order dated May 7, 2024, which had dismissed WPA No. 8691 of 2023. The petitioners, appearing in person, sought a declaration that Section 53 of the Patents Act was unconstitutional and sought an extension of their patent term beyond the statutory 20 years, citing alleged administrative delay in the patent grant process. The Court, however, maintained that legislative discretion in defining the term of patent rights could not be judicially amended.
The matter stems from a patent application originally filed on May 2, 2005. The patent was granted on December 28, 2012, with effect from the application date. The appellants contended that the delay in the grant caused them prejudice, as Section 11A (7) of the Patents Act allowed only provisional rights during the pendency of a patent application but prohibited infringement suits until the formal grant. They argued that Section 53, which fixes the term of the patent from the application date, was incompatible with Section 11A (7) and should be struck down.
Following an initial writ petition (WPA 1963 of 2022), which was dismissed by a Single Judge on June 17, 2022, the appellant filed a series of appeals and a review petition, all of which were dismissed. The present appeal, MAT 903 of 2024, arose from the final dismissal of WPA 8691 of 2023.
The appellants argued that they were entitled to a patent extension as compensation for the delayed grant. They also contended that the demand for renewal fees during a period when the patent was allegedly not exploitable amounted to double jeopardy. They relied on decisions including Ferid Allani v. Union of India, Proctor and Gamble Company v. Controller of Patents and Designs, and Nittoo Denko Corporation v. Union of India, asserting that delays in the patent process warranted judicial intervention.
The Union of India, represented by a Senior Advocate, contested the maintainability of the claims, citing res judicata and suppression of material facts. It was asserted that the petitioners had already pursued similar claims in previous litigation and had been granted liberty only to challenge the vires of Section 53, which did not extend to legislative amendments or extensions.
The Bench recorded that the essence of the petitioner's grievance was the incompatibility of Section 11A (7) and Section 53 of the Patents Act. The Court quoted the statutory text: "On and from the date of publication of the application for patent and until the date of grant of a patent... the applicant shall have the like privileges and rights as if a patent... had been granted on the date of publication." However, "the applicant shall not be entitled to institute any proceeding for infringement until the patent has been granted."
In contrast, Section 53 determines that the term of a patent begins from the date of filing the application and ends after 20 years. The Court stated: "Unless the right of an applicant is crystallised, Section 53... will not come into play." The judges concluded that the two provisions operate in different domains and serve distinct purposes. Section 11A (7) provides interim rights while Section 53 defines the patent term.
The Court stated that, "To legislate or to recommend the Government to legislate in a particular manner... is not within the domain of a Court exercising jurisdiction under Article 226 of the Constitution of India." The judges further observed: "Patent rights are statutory rights and no common law rights are available in patents. Hence, an action for infringement would be maintainable only if the patent is granted and the patent is live."
On the broader issue of legislative policy, the Bench referred to the findings of a committee constituted in compliance with a Delhi High Court order in the Nittoo Denko case. The Committee had opined against adopting U.S.-style Patent Term Adjustment (PTA) mechanisms in India, noting that technological obsolescence and anti-competitive concerns outweighed the need for term extensions.
Upholding the Single Judge’s observations, the Division Bench stated: "There is no conflict between the two sections [11A (7) and 53] ... The amended Section 53 is an improvement inasmuch as the term of patent has been increased substantially in tune with TRIPS Agreement."
The appeal was dismissed in its entirety. The Division Bench concluded: "This Court finds no merit in the instant appeal to interfere with the judgment and order passed by the Learned Single Judge." No costs were awarded.
Advocates Representing the Parties
For Respondents: Sukumar Bhattacharyaa, Senior Advocate; Avinash Kankani, Advocate
Case Title: Gunjan Sinha @ Kanishk Sinha and Anr. vs Union of India and Ors.
Case Number: MAT 903 of 2024 with CAN/2/2024
Bench: Chief Justice T.S. Sivagnanam, Justice Chaitali Chatterjee Das
[Read/Download order]
