GLAXO SMITH KLINE PLC AND ORS.versusCONTROLLER OF PATENTS & DESIGNS AND ORS.

                       [2008] 13 S.C.R. 312                        ··+-.p

A            GLAXO SMITH KLINE PLC AND ORS.
                                v.
      CONTROLLER OF PATENTS & DESIGNS AND ORS.
              (Civil Appeal No. 5588 of 2008)
                     SEPTEMBER 10, 2008
B
       [DR. ARIJIT PASAYAT AND LOKESHWAR SINGH
                        PANTA, JJ.)

         Patents Act, !970 with Patent (Amendment) Act, 2005;
c   Ss. 21 and 781 General Clauses Act, 1897; Ss. 6 & 24(8):
        Patent - Exclusive Marketing Rights - Grant of, after
  fepeal of relevant provisions thereof - Held: Effect of repeal
  of Chapter IV-A of 1970 Act has to be ascertained in the
  background of s.6of1897 Act- Single Judge of High Court
D rightly held that provisions under s. 78 of Amended Act have
  no application to the proceeding concluded before the
  appointed day- Under the circumstances, order of the Division
  Bench of the High Gour! cannot be sustained and that of the
  Single Judge has to operate.
E       Appellant filed applications for grant of patent and
  Exclusive Marketing Right in the year 2000. The Controller
  of Patent refused the prayer for grant of EMR. Aggrieved
  by the order, appellants filed writ petitions. Single Judge
  of the High Court remitted the matter to the Controller for
F decision afresh. However, the Controller rejected the
  application. In the meantime, the Patent (Amendment) Act,
                                                                     -
  2005 came into force whereby Chapter IV, which contains
  the provision relating to adjudication of tile claim of EMR,
  was deleted. Appellants filed the writ petition, which was
G allowed by the Single Judge of the High Court remanding
  the matter to the Controller for decision afresh. Appeal
  filed thereagainst by respondents raising preliminary              ~
  objections as regards maintainability of the writ petition
  in view of the amendments made in the 1897 Act, was
H                              312
                      GLAXO SMITH KLINE PLC & ORS. v. CONTROLLER 313
    ,   ~ ~.
                            OF PATENTS & DESIGNS & ORS.

                 allowed by the Division Bench of the High Court. Hence A
                 the present appeal.
                      Allowing the appeal, the Court
                       HELD: The view of the Single Judge of the High
                 Court that the provisions of Section 78 of the Amendment B
                 Act have no application to the proceedings which stood
                 concluded before the appointed day appears to be the
                 correct view governing the issue. Since the Chapter IV-A
                 in question was merely repealed, the situation has to be
                 dealt with in line with Section 6 of the General Clauses c
                 Act. The provisions of Section 78 of the Act are conditional
                 provisions and are not intended to cover cases where
                 the application for Exclusive Marketing Rights had been
                 rejected with reference to Section 21 of the Amended Act
                 The effect of the repeal has to be ascertained in .the
          ~.                                                                  D
                 background of Section 6 of the General Clauses Act. That
                 being so, the order of the Division Bench of the High
•
I                Court cannot_ be sustained and that of the Single Judge
~
..
f
                 of ttie High Court has to operate. (Para - 9) [319-C-E]
 t                     Mis. Hoosain Kasam Dada (India) Ltd. v. The State of E
                  Madhya Pradesh and Ors. AIR (1953) SC 221 and Mis
                  Gurcharan Singh Baldev Singh v. Yashwant Singh and Ors.
                  (1992) 1 sec 428 - referred to.
~       ....._        ·Chief Adjudication Officer v. Maguire (Simon Brown
                  LJ) (1999 (2) All ER 859) - referred to.                    F

                         CIVILAPPELLATE JURISDICTION: Civil Appeal No. 5588
                 . .of 2008
                       From the final Judgment and Order dated 2.8.2006 of the
                  High Court of Calcutta in MAT No. 1002 & 1003 of 2006        G

           .,.         R.F. Nariman, Hari Shankar K, Sweta Shree Majumdar
                  and Vikas Singh Jangra for the Appellants.
                       T.S. Doadia, Alka Sharma, V.K. Verma and Manpreet
                  Singh Doadia for the Respondents.                      H
    314      SUPREME COURT REPORTS                  [2008] 13 S.C.R.     .,._ 1 .



A         The Judgment of the Court was delivered by
          Dr. ARIJIT PASAYAT, J. 1. Leave granted.
       2. Order passed in four appeals filed by the respondents
  questioning correctness of order dated 1oth February, 2006
B passed by a learned Single Judge of. Calcutta High Court form
  the subject matter of challenge in this appeal. A learned Single
  Judge had set aside the order dated 28.12.2004 passed by
  the Controller of Patents and Designs (in short the 'Controller')
  and remanded the matter to him for arriving at a fresh decision
c on the application of the writ petitioners for exclusive marketing
  right according to law that existed on 3rd May, 2002. The
  Controller was also asked to consider the report of the examiner
  dated 28.7.2000.
         3. Background facts giving rise to the filing of the writ
D petition were as follows:
         The writ petitioners filed an application for grant of patent
   under Section 5(2) of the Patents Act, 1970 (in short the 'Act')
  ·on 28 1hAugust, 1998. Subsequently, on 30th June, 2000 the writ
   petitioners further filed an application for grant of "Exclusive
E Marketing Right" (in short the 'EMR'). On July 28, 2000 the
   examiner filed examination report as regards the claim of the
   writ petitioners for grant of EMR.
        The Controller of Patent, however, by order dated 3rd May,
F 2002 refused the prayer of the writ petitioners for EMR.
        Being dissatisfied, two different writ applications were
  filed before the High Court being W.P.No.20469(W) of 2004
  and W.P.No.20407(W) of 2004 and a learned Single Judge of
  the High Court set aside the order dated 3rd May, 2002 and
G directed the Joint Controller of Patent to consider and give
  order on the application for grant of EMR afresh keeping all
  points open.                                                              -.
         Pursuant to the order of the learned Single Jude, dated
    15th December, 2004, the Controller of Patent again rejected .
H
               GLAXO SMITH KLINE PLC & ORS. v. CONTROLLER 315
,> , '1
            OF PATENTS & DESIGNS & ORS. [DR. ARIJIT PASAYAT, J.]

            the application filed by the writ petitioners on December 28,     A
            2004.
                 On January 1, 2005 the Patent (Amendment Act), 2005
            came into operation by which various amendments to the Act
            were made and the Chapter IV-A which provided the mode of
            adjudication of the claim of EMR was totally deleted.             B
    "'"
                  On June 9, 2005 the writ petitioners filed another writ
            application thereby challenging the order dated 28th December,
            2004 passed by the Controller of Patent by which the prayer for
            the EMR of the writ petitioners was rejected for the second       c
            time.
                  Challenging the correctness of order passed by the learned
            Single Judge, the Controller of Patent and the Union of India
            filed two appeals, while two others were preferred by a third
            party to the proceedings who wanted to be added as party- D
     ""\"   respondent in the writ application. The appellants raised a
            preliminary objection as regards maintainability of the writ
            petition after coming into operation of amendments into the Act
            w.e.f. 1st January, 2005. According to the appellants before the
            High Court, with effect from 1st January, 2005 there was no E
            scope for further considering the question of EMR as Chapter
            IVA of the Act has been deleted and in Section 78 of the
            Amending Act, it has been specifically made clear that all pending
            applications for grant of EMR filed under Chapter IV-A of the
            Principal Act which were pending on 1st January, 2005 should F
    ....    be treated to be a claim for patents .covered under sub-section
            (2) of Section 5 of the Principal Act and such application should
            be deemed to be treated as a request for examination of grant
            of patents under sub-section (3) of Section 11 (B) of the Act.
            The stand essentially was that there was no scope for
                                                                               G
            considering any pending cases for grant of EMR after 1st
            January, 2005 and in any case the applications relating to grant
      .,.   of EMR disposed of earlier cannot be revived for consideration .
                 Stand of the present appellants was that on the first day
            of January, 2005 there was no pending application filed by the    H
    316         SUPRE.ME COURT REPORTS               [2008] 13 S.C.R.
                                                                          ·t- '   <.,

A writ petitioner for grant of EMR and tl)e transitional provision in
  Section 78 of the Act has no application to the facts of the case.
  It was pointed out that since the prayer for EMR was' disposed
  of at a point of time when the amendment had not come into
  operation, therefore, there was a vested right to challenge the
8 order before an appropriate forum in accordance with law.                 ~



          The High Court was of the view that the preliminary
    objection regarding maintainability (?f the writ petition was to
    be accepted and therefore appeals were allowed. So far as
    the third parties are concerned, the'merits were not gone into.
c
       4. Learned counsel for the appellants in support of the
  appeal submitted that a crystalised right had accrued because
  of Section 24A and 248 and the original orders dated 3.5.2002
  and 16.12.2004 were under challenge. The order dated
  28.12.2004 was passed on remand and the learned Single
D
  Judge by order dated 10.2.2006 set aside the order. The                   'r
  impugned order speaks of repeal. Reference is made to Section
  248(1) about the right having accrued.
       5. Learned counsel for the respondents on the other hand
E submitted that the intention of the statute appears to be to the
  contrary. Therefore, the transitional provision clearly applies
  even if it is treated to be pending under Section 118(3).
        6. To the present case, Section 6 of the General Clauses
  Act, 1897 (in short the 'General Clauses Act') applies. It reads
F as follows:                                                                ....
          "6. Effect of repeal:- Where this Act, or any Central Act
          or Regulation made after the commencement of this Act,
          repeals any enactment hitherto made or hereafter to be
G         made, then unless a different intention appears, the repeal
          shall not-
          (a)    revive anything not in fore or existing at the time at
                 which the repeal takes effect; or                           "
          (b)    affect the previous operation of any enactment so
H
                GLAX.O SMITH KLINE PLC & ORS. v. CONTROLLER 317
' • --t
             OF PATENiS· & DESIGNS & ORS. [DR. ARIJIT PASAYAT, J.]

                      repealed or anything duly done or suffered A
                      thereunder; or
                (c)   affect any right, privilege, obligation or liability
                      acquired, accrued or incurred under any enactment
                      so repealed; or
    -i-                                                                            B
                (d)   affect any penalty, forfeiture or punishment incurred
                      in respect of any offence .committed against any
                      enactment so repealed; or
                (e)   affect any investigation, legal proceedings or remedy
                      in respect of any such right, privilege, obligation,         c
                      liability, penalty, forfeiture or punishment as aforesaid;
                      and any such investigation, legal proceeding or
                      remedy may be instituted, continued or er:if9rced,
                      and any such penalty, forfeiture or punishment may
                                                                         D
                      be imposed as if the repealing Act of Regulation
                      had not been passed."
                Section 248(1) of the Act reads as follows:
                "24(8). Grant of exclusive of rights - (1) Where a claim
                for patent covered under sub-section 2 of section 5 has E
                been made and the applicant has -
                (a)   where an invention has been made whether in India
~
                      or a country other than 1ndia and before filing search
                      a claim, filed an application for the same invention F
    ...-'.
                      claiming identical article or substance in a convention
                      country on or after the 1st day of January, 1995 and
                      the patent and the approval to sell or distribute the
                      article or substance on the basis of appropriate tests
                      conducted on or after the 1st day of January, 1995 in G
                      that country has been granted or after the date of
                      making claim for patent covered under sub-section
                      2 of section 5; or
       ~

                (b)   where an invention has been made in India and
                      before filing search a claim, made a claim for patent H
    318       SUPREME COURT REPORTS                    [2008] 13 S.C.R.
                                                                              f" '
A              on or after the 1st day of January, 1995 for method or
               a process of manufacture for that invention relating
               to identical article or substance and has been granted
               in India the patent therefor on or after the making the
               claim for patent covered under sub-section 2 of
B              section 5, and has been received the approval to                ~

               sell or distribute the article or substance from the
               authority specify in this behalf by the Central
               Government, then, we shall have the exclusive right
               by himself, his agents or licencee to sell or distribute
c              in India the article or the substance on or from the
               date of approval granted by the Controller in this
               behalf till a period of five years or till the date of grant
               of patent or the date of rejection of application for the
               grant of patent, whichever is earlier."
D       7. As was observed by this Court in Mis Hoosain Kasam
  Dada (India) Ltd. v. The State of Madhya Pradesh and Ors.                   .,..
  (AIR 1953 SC 221) when pre existing right of appeal continues
  to exist, by necessary implication the old law which created the
  right of appeal also exists to support the continuation of that
E right and hence the old right must govern the exercise and
  enforcement of that right. In the absence of contrary intention in
  repealing the enactment, rights under tha old statute are not
  destroyed. In M/s Gurcharan Singh Ba/dev Singh v. Yashwant
  Singh and Ors. (1992 (1) sec 428), it was observed that right
F to proper consideration of an application by statutory authority             .......
  remains alive even after repeal of the enactment under which
  the consideration had been sought.
          8. In Chief Adjudication Officer v. Maguire (Simon Brown
    J) (1999 (2) All ER 859) it was observed as follows:
G
          "Inchoate rights, obligations and liabilities are covered by
          (c). This was established by Free Lanka Insurance Co.
          Ltd. v. Ranasinghe (1964 (1) All ER 457). In that case the
          Privy Council had no difficulty in construing the Ceylon
                                                                               ..
          Interpretation Ordinance 1900 as including an inchoate or
H
                      GLAXO SMITH KLINE PLC &'ORS. v. CONTROLLER 319
.,. ' 1            OF PATENTS & DESIGNS & ORS. [DR. ARIJIT PASAYAT, J.]

                       contingent right and the same approach should be adopted A
                       to the interpretation of "right", "obligation" or "liability" in
                       section 16 of the 1978 Act. The section clearly
                       contempJates that there will be situations where an
                       investigation, legal proceeding or remedy may have to be
       ...             instituted before the right or liability can be enforced and B
                       this supports this approach.''.
                        9. The learned Single Judge's view that the provisions of
                  Section 78 of the Amendment Act have no application to the
                  proceedings which stood concluded before the appointed day
                  appears to be the correct·view governing the issue. Since the      c
                  Chapter IV-A in question was merely repealed, the situation
                  has to be dealt with in line with Section 6 of the General Clauses
                  Act. The provisions of Section 78 are conditional provisions
                  and are not intended to cover cases where the application for
        ~
                  EMR had been rejected with reference to Section 21 of the D
                  Amending enactment. As noted above, Chapter IV A was
                  repealed. The effect of the repeal has to be ascertained in the
                  background of Section 6 of the General Clauses Act. That being
  '
--l'              so, the order of the Division Bench cannot be sustained and
 t
  !
                  that of the learned Single Judge has to operate. The appeal is E
                  allowed but in the circumstances without any order as to costs.
                  S.K.S.                                         Appeal allowed .

       . ....._