The judgment in this case revolves around the determination of the date on which a patent can be

considered as granted under the Indian Patents Act, 1970. The central issue is whether the date of
grant is the date on which the Controller passes the order granting the patent or the date when the
patent certificate is issued.
To provide context, the case involves respondent No. 5, J. Mitra & Co. Ltd, which filed two patent
applications on June 14, 2001, for its products related to HCV TRI-DOT (Third Generation and
Fourth Generation). These patent applications went through the various stages of examination and
publication as required by the Patents Act.
Under the unamended provisions of Section 25 of the Patents Act, an interested party could file a
pre-grant opposition within four months from the date of publication of the patent application, with
the possibility of a one-month extension granted by the Controller for valid reasons. In this case, M/
s. Span Diagnostics Ltd. (SDL) filed a pre-grant opposition. The Controller considered the
opposition and, on August 23, 2006, issued a detailed order rejecting the opposition and ordering
the grant of the patent to J. Mitra & Co. Ltd. This order included certain conditions related to the
filing of amended specification pages.
Subsequently, the appellant, Dr. Snehlata Gupte, sent a pre-grant opposition by courier on August
22, 2006, which was received by the Patent Office on August 24, 2006. At that time, Section 25(1)
of the Act had been amended by the Patents (Amendment) Act, 2005, effective from January 1,
2005. The amended provision extended the time for filing a pre-grant opposition until the actual
grant of the patent.
The primary question before the court was whether the opposition filed by the appellant was within
time according to the amended provision. The appellant argued that her opposition, received on
August 24, 2006, was within time since, as per the amended Section 25(1), no patent had been
granted by that date. She contended that a patent could not be considered granted until it was sealed
and entered into the Register as per Section 43(1) of the Act, which occurred on September 22,
2006.
On the other hand, the respondent No. 5 argued that when the Controller rejected the objections on
August 23, 2006, in accordance with Rule 55(6) of the Rules, no pre-grant opposition application
was maintainable. The Controller accepted this plea and rejected the pre-grant opposition of the
appellant on October 16, 2006, without hearing the appellant.
The appellant challenged this rejection by filing Writ Petition (C) Nos. 3516/2007 and 3517/2007.
Subsequently, the Controller conducted a hearing for the appellant and passed an order on May 22,
2007, rejecting the pre-grant opposition as time-barred. The appellant filed writ petitions under
similar circumstances, challenging the rejection of her pre-grant opposition but before the patent
was entered into the Register.
The key issue before the court was the determination of the date on which a patent can be
considered granted and whether the appellant's pre-grant opposition was within the permissible
timeframe according to the amended provisions.
The court considered the nature and effect of the order passed by the Controller on August 23, 2006.
It noted that this order rejected the pre-grant opposition filed by SDL and ordered the grant of the
patent. While the order mentioned certain conditions related to the amended specification pages,
these conditions were viewed as procedural formalities and not substantial requirements for the
grant of the patent. The court concluded that the order was not conditional but amounted to the
grant of the patent.
The court further examined the date of grant and found that it could not be equated with the date of
issuance of the patent certificate. Instead, the date of grant should be the date on which the
Controller passes the order granting the patent, as this is the decisive event. The sealing of the
patent and its entry into the Register were considered ministerial acts that followed the Controller's
grant.
The court also emphasized that the timeframes for pre-grant opposition provided by the amended
Section 25(1) were designed to ensure that the opposition process did not lead to indefinite delays in
the grant of patents. Allowing oppositions to be filed even after the rejection of earlier oppositions
and before the issuance of the patent certificate could lead to misuse and unnecessary delays in the
patent grant process.
To support its interpretation, the court referred to the sequence of events and the provisions of the
Patents Act, emphasizing that the patent grant process involved various stages, including
examination, publication, and opposition. Once the pre-grant opposition is rejected, and no other
opposition is pending, the Controller can grant the patent. The court noted that the onus was on the
person opposing the grant to be vigilant about the date of publication and to file a representation in
a timely manner.
The court also highlighted that the government had implemented directions issued by the learned
Single Judge to discourage frivolous petitions and check misuse of the patent opposition process.
In conclusion, the court upheld the view that the date of grant of a patent is the date on which the
Controller passes the order granting the patent and not the date of issuance of the patent certificate.
It dismissed the appeals filed by the appellant, Dr. Snehlata Gupte, and quantified the costs to be
paid by the appellant. The court's judgment provided clarity on the process of patent grant in India
and emphasized the importance of timely pre-grant opposition in the patent application process.