IPO Upload Delay: Impact on Pre-Grant? DHC Answers

This article delves into a critical judgment by the Hon’ble Delhi High Court concerning the validity of a Pre-Grant Opposition filed after a patent grant order is signed by the Learned Controller but before its official upload on the IPO website. Understand the implications of procedural delays, the concept of ‘functus officio,’ and how the Hon’ble Court’s decision in the Vertex Pharmaceuticals case clarifies the definitive moment of patent grant. This analysis provides key insights for patent applicants and opponents regarding timelines and the legal standing of Pre-Grant Oppositions under the Indian Patents Act.

To help you better understand the nuances of this case and its implications, we’ve prepared an audio-visual presentation. Click on our YouTube video to get a comprehensive overview and detailed explanation of the Hon’ble Delhi High Court’s ruling.

1. Introduction: The Core Issue of Pre-Grant Opposition Timing

A significant question recently came before the Hon’ble Delhi High Court: what happens if a Pre-Grant Opposition under Section 25(1) of the Patents Act, 1970 (hereinafter “the Act”) is filed after the Learned Controller has decided to grant a patent and signed the order, but before this grant is officially uploaded on the Indian Patent Office’s (IPO) website, “ipindia.gov.in”?. The central issue explored was, “Whether the Pre-Grant Opposition is maintainable after the grant of the Patent by the Controller under such circumstances?”.

2. Brief Facts of the Case: Vertex Pharmaceuticals Inc. vs. Controller General & Ors.

The case involved Vertex Pharmaceuticals Incorporated (the petitioner), the Controller General of Patents, Design, Trademark and Geographical Indications & an Assistant Controller (respondent nos. 1 and 2), and an opponent (respondent no. 3).

2.1. Time of Grant of Patent

After considering the petitioner’s response and submissions during a hearing on November 13, 2023 (under Section 14 of the Act), the Learned Controller issued an order on November 28, 2023. This order, uploaded the same day at approximately 17:25 hours, granted the patent to the petitioner. The Learned Controller noted: “……Based on the above facts, submission and observations in the case, all objections have been met. No further objection is pending with this application. The application is published under section 11A. No pre-grant opposition is filed. I, therefore, hereby proceed with grant of patent for the instant patent application no. 202017026584 with six (1-6) claims given in the written submission filed on 24/11/2023 with heading “202017026584-Written submissions and relevant documents [24-11-2023(online)].pdf”.”

2.2. Filing of Pre-Grant Opposition by Respondent No. 3

Interestingly, on the same day, November 28, 2023, but after the Learned Controller had passed the order granting the patent, respondent no. 3 filed a Pre-Grant Opposition against the subject Patent Application at approximately 17:18 hours. This was approximately 7 minutes before the grant order was uploaded. This led to the IPO issuing an impugned notice dated December 8, 2023, which the petitioner challenged in W.P.(C)-IPD 10/2024.

2.3. Petitioner's Challenge to the Pre-Grant Opposition

Aggrieved by the acceptance of the late Pre-Grant Opposition, the petitioner filed a Miscellaneous Petition before the Learned Controller under Section 80 of the Act read with Rules 128 and 129 of the Patents Rules, 2003 (hereinafter “the Rules”). After hearing both parties, the Learned Controller passed an order on April 5, 2024, upholding the maintainability of the Pre-Grant Opposition filed by respondent no. 3 and deciding that the subject Patent Application required re-examination. This order dated April 5, 2024, was challenged by the petitioner in W.P.(C)-IPD 12/2024.

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3. Submissions by the Parties

3.1. Petitioner's Arguments (Vertex Pharmaceuticals Inc.)

The Learned Controller’s order dated November 28, 2023, granting the patent was final and binding, especially since the Learned Controller had noted that all objections were satisfied and no Pre-Grant Opposition was pending at that time.
once the Learned Controller signed the order, the patent stood granted, and any subsequent acts like entering it into the Register of Patents or uploading it to the IPO website were merely ministerial. Reliance was placed on (Miss) Snehlata C. Gupte v. Union of India & Ors., 2010 SCC OnLine Del 2374 and Dr. Snehlata C. Gupte v. Union of India & Ors., 2012 SCC OnLine Del 2259 to support this.
After passing the grant order, the Learned Controller became functus officio (having discharged their duty and lacking further authority) and could not have taken note of the subsequent Pre-Grant Opposition or issued the impugned notice. Thus, the pre-grant opposition notice was illegal and contravened Rule 55(3) of the Rules, citing Dhaval Diyora v. Union of India and Ors., 2020 SCC OnLine Bom 2550.

3.2. Respondent Nos. 1 & 2's Arguments

The IPO did not dispute that the Learned Controller had allowed the petitioner’s subject Patent Application and granted the patent.
The systemic restrictions prevented the immediate generation of the patent certificate following the November 28, 2023 order. As a result, Respondent No. 3 filed the Pre-Grant Opposition. The IPO left with no other option but to accept the Pre-Grant Opposition and issue the notice therein.

3.3. Respondent No. 3's Arguments (The Opponent)

The Learned Controller’s order dated November 28, 2023, to “proceed with grant of patent” was not final until it was published or uploaded on the IPO website.
The grant of a patent effectuates only upon such uploading or publication, not merely when the order is signed, especially since it was a digital order without a physical signature of the Learned Controller.
Consequently, the Pre-Grant Opposition filed by respondent no. 3 was claimed to be valid as it was submitted before the grant was effectuated, evidenced by its acceptance by the IPO’s e-filing portal.
Section 25(1) and Section 43(1) of the Act disclose the ‘date of grant’ and not the ‘time of grant’ as the cut-off for filing a Pre-Grant Opposition. Since the opposition was filed on the same date as the grant order (November 28, 2023) before its uploading, the pre-grant opposition is a valid opposition.
Any systemic lapse by the IPO should not render a filed opposition non-maintainable.

4. Analysis and Findings of the Hon'ble Delhi High Court

After hearing all parties and reviewing the documents and cited case law, the Hon’ble Mr. Justice Saurabh Banerjee delivered the judgment.

4.1. Primacy of the Signed Grant Order

The Hon’ble Court noted that it was undisputed that at the time the Learned Controller signed the order on November 28, 2023, no Pre-Grant Opposition from respondent no. 3 was pending. The subsequent impugned order dated April 5, 2024, also recorded that respondent no. 3 had filed no Pre-Grant Opposition “… …during the period between the decision upload and certificate generation……”. The Hon’ble Court found that the petitioner’s subject Patent Application had already been allowed, and the patent was deemed granted in favour of the petitioner for all purposes once the order was signed.

4.2. Irrelevance of Upload Delay

The Hon’ble Court opined that the act of uploading the order to the IPO website was a “mere act of ministerial formality” and immaterial to determining the date of grant. The ‘date of order’ is the actual date the order is passed and signed, not the date of its uploading, and this remains unaffected by any subsequent uploading.

The Hon’ble Court referred to a Division Bench decision of the Hon’ble Delhi High Court in Dr. Snehlata C. Gupte (supra), which held:

“… …17. Prima facie we agree with the aforesaid submissions of Mr. Maninder Singh. Be as it may, we are at pains to reiterate that 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. Certificate is in the nature of execution of that order and is proof of fact that the patent has been granted which is the date on which the Controller passed the order. It is the date on which the decision is taken by the Controller on file in respect of a pre-grant opposition (either rejecting or accepting the representation) which is the determining event ascertaining the date of grant of patent. The sealing of patent and entering of the same in the register are ministerial acts which follow the Controller’s act of grant of patent. The onus is on the person instituting the pre-grant opposition to be vigilant about the date of publication of the application under Section 11A of the Act and take appropriate steps for filing the representation……”

Therefore, since the order dated November 28, 2023, was signed by the Learned Controller before respondent no. 3 filed the Pre-Grant Opposition, the order took precedence. The non-uploading of the order could not diminish the petitioner’s statutory right accruing from the signed grant order. The Hon’ble Court emphasized that the petitioner could not be made to suffer for delays or technical glitches at the IPO’s end in uploading the order or generating the patent certificate. The fact that the Pre-Grant Opposition was filed on the same day as the grant order was deemed immaterial.

4.3. Learned Controller as 'Functus Officio'

The Hon’ble Court found that after signing the grant order on November 28, 2023, the Learned Controller had become functus officio and was no longer seized of the petitioner’s subject Patent Application. Consequently, the impugned notice taking cognizance of the late Pre-Grant Opposition was deemed ex facie illegal and arbitrary. Thus, the IPO should not have accepted the Pre-Grant Opposition filed by respondent no. 3, as doing so would be contrary to the Act’s spirit and letter. The wrongful acceptance of such an opposition does not confer any right upon the opponent and would amount to an abuse of the legal process.

5. Conclusion

Based on the afore-going reasonings and analysis, the Hon’ble Delhi High Court allowed both writ petitions.

Thus, potential opponents must be diligent and file any Pre-Grant Opposition well before the Learned Controller makes a final decision and signs a grant order. The window for filing a Pre-Grant Opposition effectively closes once the Learned Controller has formally decided to grant the patent by signing the order, irrespective of when that decision is publicly announced via the IPO website. Relying on the website upload status to determine the filing deadline for a Pre-Grant Opposition is risky if the grant order has already been signed. The judgment emphasizes that the opponent cannot benefit from a late filing, even if accepted by the IPO portal due to a lag in system updates.

Disclaimer: In compliance with the Bar Council of India guidelines, this article is intended for informational purposes only and does not constitute legal advice or a solicitation for legal services.