Holding

Appeals filed under the pre‑amendment law (Section 116) before the Appellate Board's jurisdiction came into force must remain before the High Court and cannot be transferred to the Appellate Board.

Summary

J. Mitra & Co. Pvt. Ltd. applied for a patent which was opposed by Span Diagnostics Ltd. (respondent No.3). The opposition was initially a pre‑grant opposition under Section 25(1) of the Patents Act, 1970. The Controller rejected the pre‑grant opposition on 23‑Aug‑2006 and the respondent filed appeals (FAO Nos. 292/06 and 293/06) in the High Court under Section 116, which at that time provided for High Court appeals. Subsequent amendments (Patents Amendment Act, 2005) introduced a dichotomy between pre‑grant and post‑grant opposition and shifted the statutory appeal to the Appellate Board, but the relevant sections (116 and 117A) only came into force on 2‑Apr‑2007. The Supreme Court examined whether the pending appeals should be transferred to the Appellate Board. It held that because the amendments creating the Appellate Board jurisdiction were not in force when the appeals were filed, the High Court retained jurisdiction and the appeals could not be transferred. Consequently, the appeals were to be heard and disposed of by the High Court, and the Supreme Court disposed of the civil appeals without costs.

Issues considered

Whether appeals filed under Section 116 of the Patents Act before the commencement of the amended Sections 116 and 117A can be transferred to the Appellate Board under the Patents (Amendment) Act, 2005.
Whether the legislative intent to create a single statutory appeal for post‑grant opposition overrides the jurisdiction of the High Court for appeals filed during the interregnum.
Whether Section 117G, which provides for transfer of pending proceedings, applies to the appeals filed prior to its commencement.

Legislation cited

Patents Act, 1970s. 116, s. 117A, s. 117G, s. 25
Patents (Amendment) Act, 2005s. 116, s. 117A, s. 117G, s. 25, s. 61
Trade Marks Act, 1999s. 83

Subjects

Patent lawPre‑grant oppositionPost‑grant oppositionAppellate jurisdictionStatutory appealSection 116Section 117AAppellate BoardHigh CourtLegislative commencementInterregnum

Judgment

• [2008] 12 S.C.R. 419

-t
J. MITRA & CO. PVT. LTD. A
v.
ASST. CONTROLLER OF PATENTS & DESIG. & ORS.
(Civil Appeal No. 5183 of 2008)
AUGUST ·21, 2008
8
~ [S.H. KAPADIA AND B. Sl:JDERSHAN REDDY, JJ.]

Indian Patents Act, 1970; Ss. 25, 116 and 117 as
amended by Patents (Amendment) Acts 1999, 2002 and
2005: c
Grant of patent - Opposition to - Pre-grant opposition
as introduced in s.25 by 1999 amendment Act and post-
grant opposition as introduced by the Amendment Act of
2005 - In terms of amended provisions of the Act appeal
could be filed before the Board instead of High Court - D
Disposal of appeal pending before High Court in terms of
amended provisions - Held: Dichotomy between opposition
~ to 'pre-grant' and 'post-grant' of patent introduced in terms of
Patents (Amendment) Act, 2005 for the first time and right to
appeal restricted to against the post-grant opposition order E
a.nd the appeal could be filed before Appellate Board and
not before the High Court - However, amended provision
enforced with effect frofT} 3. 4. 2007 - Therefore, appeal filed
during interregnum cannot be transferred to the appellate
Board as jurisdiction to deal such appeal conferred on the F
+- Board only on April 3, 2007 - In view of hiatus created by
reason of law not being brought into force in time, High Coljrt
directed to hear and decide the appeal pending before it
afresh in accordance with law as it stood then - Practice and
procedure - Appeal - Disposal of
G
..,, ~ Appellant filed an application for grant of patent in
respect of certain product manufactured by it. The
application stood notified by the Patent Office and
proceedings· commenced before the Controller of
419 H
420 SUPREME COURT REPORTS [2008] 12 S.C.R.

A Patents in the year 2000, which was opposed by
respondent no.3. In the meantime, the Patents Act, 1970
was amended by Patents (Amendment) Act, 1999. In
terms of amended provision under s.25 of the Act,
opposition to a patent and appeals against decisions
B made by the Controller pertaining to "pre-grant
oppositions" has been dealt with and vide Section 116
(2) of the Act a right of appeal was made available to the
aggrieved party against orders passed by the authority
by way of an appeal to the High Court. In 2002, with the
c intention to create an appellate forum to hear appeals
against orders passed by the Controller, the Legislature
promulgated the Patents (Amendment) Act, 2002.
However, it was not brought into force immediately.
However, Section 25 was brought into force only on
20.5.2003. Even as on 20.5.2003 vide Section 25 only
D one right to oppose a patent at the pre-grant stage was
available and appeal against an order passed by the
authority, lay before the High Court under the then
existing Section 116 of the Patents Act, 1970. The
provision pertaining to "post-grant opposition" came to
E be introduced under under the Patents (Amendment)
Act, 2005. Vide Section 47 of the Patents (Amendment)
Act, 2002 entire Chapter XIX stood substituted and Ss.
116 and 117A were not brought into force. On 19.10.2006
when FAO No.293/06 was filed by respondent No. 3 in
F the High Court, Chapter XIX of the parent Act as amended
vide Patents (Amendment) Act, 1999 continued to be in
operation notwithstanding the enactment of the Patents
(Amendment) Act, 2002 and the Patents (Amendment)
Act, 2005 as the amended Sections 116 and 117A
G providing for filing of appeal before the appellate Board
in place of the High Court were brought into force only
vide Notificati-on dated 2.4.07.
The question which arose for determination before
this Court in this batch of civil appeals was as to whether
H r
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 421
OF PATENTS & DESIG. & ORS.
--t
FAQ No.292/06 and FAQ No.293/06 filed by respondent A
no.3 in the High Court were liable to be dismissed/
transferred to appellate Board in view of amendments
in the relevant provisions under the Indian patents Act,
1970.

~
Appellant contended that the change in Section 25 B
brought about by Patents (Amendment) Act, 2005, a
dichotomy between "pre-grant opposition" and "post-
grant opposition" was introduced in the Patents Act,
1970; that on 23.8.06 the Controller rejected "pre-grant
opposition" and on that day "post-grant opposition" c
avenue was open to respondent no.3 in terms of Section
25(2) of the amended Act; that it was open to respondent
no.3 to challenge the grant of patent by making "post-
grant opposition" under Section 25(2) from which an
appeal was maintainable to the Appellate Board. This 0
was not done; that "pre-grant opposition" was filed by
respondent no.3 under s·ection 25(1) on 21.3.05,
""" ~ however, amendment under s. 25 of the Act was brought
into force w.e.f. 1.1.2005 and, therefore, it was open to
respondent no.3 to challenge the grant of patent by E
invoking Section 25{2) of the Patents Act, 1970; that with
the change in the structure of the Act providing for only
one statutory appeal and that too only against the order
granting patent under Section 25(4), the appeal filed by
respondent no.3 against pre-grant opposition order was F
.,._ not maintainable on 19.10.06 by which time Section 25
stood restructured providing for a dichotomy between
"pre-grant opposition" and "post-grant opposition".
Respondent no.3 submitted that on 19.10.06 it had
filed an appeal in the High Court in terms of unamended G
~ .·
.~
Section 116 of the parent Act; that, even though Section
25 stood restructured w.e.f. 1.1.05 on account of absence
of notification bringing the amended law into force,
Sections 116 and 117A (as amended) providing appeal
to the Appellate Board came into force only with effect H
._
I

I
'
422 SUPREME COURT REPORTS - [2008] 12 S.C.R. .!

A from 2.4.07 and, therefore, the appeal being FAQ No.293/
os__continued to be governed by the law" as it stood on
19.10.06 (on which date appeal to the High Court was
maintainable); that, on 23.8.06 when the "pre-grant
opposition" filed by him stood rejected, the appeal
s against pre-grant opposition order was maintainable
under Section 116, to the High Court; that, it is true that
Section 25 got restructured w.e.f. 1.1.2005, however, such
restructuring did not obliterate the first appeal filed by
respondent no.3 on 19.10.2006; and that "pre-.grant
c opposition" under Section 25(1) of the Act was filed on
21.3.05 when the Patents (Amendment) Act, 2005 was
not promulgated and, therefore, its "pre-grant
opposition" so filed was valid and proper as he could
not have invoked Section 25(2) proceedings on that day,
as the law stood enacted bringing in Section 25(2) only
0
on 4.4.05.
Disposing of the appeals, the Court
HELD: 1.1 By the Patents (Amendment) Act, 2005,
for the first time a dichotomy was introduced in the Patent
E Law between "opposition to the pre-grant" and
"opposition to the post-grant of patent". This was the
major stm.ctural change in the Patent Law and also an
appeal was restricted to the post-grant opposition orders
and that appeal lay before the Appellate Board and not
F to the High Court. However, Section 25 O·f the Patents
Act, 1970 as amended by Patents (Amendment) Act, 2005
was brought into force on and from 1.1.2005 whereas
amended Section 117A by which appeal was provided
for against post-grant opposition order was not brought
G into force till 2.4.2007. The· result is that although the
Legislature intended to provide for only one statutory
appeal to the Appellate Board, by reason of Section 61
of the Patents (Amendment) Act, 2005 not being brought
into force till 2.4.07. (Para - 15) [437,A-D; 437,E]
H
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 423
OF PATENTS & DESIG. & ORS .

. 1.2 An Act cannot be said to commence or to be in A
force unless it is brought into operation by legislative
enactment or by the exercise of authority by a delegate
empowered to bring it into operation. Applying the said
tests to the present case, it is found that by Patents
(Amendment) Act, 2005 for the first time a dichotomy s
was inserted in the Patent Law by providing vide Section
• 25(1) for "opposition to pre-grant" and vide Section 25(2)
for "opposition to post-grant" of patent. By reason of
., Patents (Amendment) Act, ·2005, the kind of· opposition
available under the said 1970 Act is different from what c
. existed earlier. Previously, there was no "post-grant
opposition". (Para - 22) [441,A-C]
1.3 There is a radical shift due to incorporation of
Section, 25(2) of the Act where an interested party is
granted the right to challenge the patent after its grant. D
t
The ground of challenge under Section 25(1) is identical
t to Section 25(2) .of the 1970 Act. However, Section 25(1)
is .~ider than Section 25(2) as the latter is available only
to a -"person aggrieved". The main difference between
, Section 25(1) and Section 25(2), as brought about by E
Patents (Amendment) Act, 2005, is that even after a patent
is granted, "post-grant opposition" can be filed under
~ection 25(2) for a period of-0ne year. The reason is
obvious. In relation to patents that aJe of recent origin,
a higher scrutiny is necessary. This is the main rationale F
underlying Section 25(2) of the 1970 Act. Therefore, the
Legislature intended an appeal under Section· 117A(2)
to the Appellate Board from any decision, order or.
direction of the Controller, inter a/ia, under Section 25(4)
of the Act. (Para - 22) [441,D-G]
G
2.1 The Legislature inte.nded to have a dichotomy
between "pre-grant opposition" and '"post-grant
opposition". However, the Legislature intended that
there shall be only one statutory appeal against grant of
patent. The Legislature intended to obliterate appeal from H
~
~~

424 SUPREME COURT REPORTS [2008] 12 S.C.R.

~
A "pre-grant proceedings", which existed e~rlier. However,
it was left to the Executive to bring the enacted law into ....
force vide notification. For some unknown reasons, the -
amended Sections 116 and 117A(2) were not brought
into force till 2.4.07 whereas the concept of "pre-grant"
B and "post-grant" oppositions were brought into force
w.e.f.1.1.2005. This is where the legislative intent got ..,_
defeated during the interregnum. It is during this . )...

interregnum that respondent no.3 filed its FAQ Nos. 292/ r
06 and 293/06 in the High Court under Section 116, as I-

c it stood on 19.10.06 under the Patents (Amendment) Act, )0

1999. On that date, the amended Section 117A, suggested I

by Patents (Amendment) Act, 2005, was not brought into l-
~

force. On 19.10.06 the old law prevailed under which an
appeal lay before the High Court. Respondent no.3, in
both the cases, preferred first appeals to the High Court
D
under Section 116 as it then stood. (Para - 23) [442,A-D] \.

2.2 Taking into account the complexities involved
in this case, on account of a hiatus created by reason ,.._ "'
of the law not being brought into force in time, this Court
E is of the view that the appeals filed by respondent no.3
in the High Court being FAO No.292/06 and FAO No.293/
06, would remain in the High Court. The said appeals
would be heard and· disposed of by the High Court in
accordance with law under Section 116 of the said 1970
F Act as it stood on 19.10.06. The High Court will hear and
decide the validity of the Order passed by the Controller _J_
dated 23.8.06 rejecting "pre-grant opposition" filed by
respondent no.3. (Para - 24) [442,G-H; 443,A]
2.3 In the special circumstances of this case,
G particularly when after 2.4.07 appeals against orders
rejecting "pre-grant opposition" are not maintainable and
·A-:..
particularly when FAQ No.292/06 and FAO No.293/06
were filed by respondent no.3 prior to 2.4.07 under the "
old law, this Court is of the view that these two appeals
H shall be heard and decided by the High Court in
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 425
OF PATENTS & DESIG. & ORS.
-t'
accordance with law. The Appellate Board .is entitled to A
hear appeals filed on or after 2.4.2007 arising from orders
passed by the Controller under Section 25(4), i.e., in
cases of order~ passed in "post-grant opposition".
Therefore, there is no point in transferring the pending
}r-
FAQ No.292/06 and FAO No.293/06 to the Appellate Board 8
which has no authority to decide matters concerning
• "pre-grant opposition". (Para - 24) [443,B-D]
CIVIL APPELLATE JURISDICTION : Civil Appeal No.
5183 of 2008
c
From the final Judgment and Order dated 1.04.2008 of
· the High Court of Delhi at New Delhi in FAO No. 292 of 2006
WITH
C.A. No. 5184 of 2008
D
Harish N. Salve, Prathibha M. Singh, Saya Choudhary,
I
Chetna Sai, Sumeet Bhatia and Maninder Singh for the
'4('
Appellant.
T.R. Andhyarujina, Pravin Anand, Sagar Chandra, Hari
E
Shankar K. and Vikas Singh Jangra for the Respondents.
The Judgment of the Court was delivered by
S.H. KAPADIA, J. 1. Leave granted.
2. For the.sake of convenience we refer to the facts F
-+ mentioned in Civil Appeal No. 5184 of 2008 (arising out of
S.L.P. (C) No.15729 of 2008) filed by J. Mitra & Co. Pvt. Ltd.
3. This matter is a classic illustration of the confusion
which has emerged on account of the postponement of in-
part commencement of Patents (Amendment) Act, 2005. G
~ "'f,.

4. Quite often the commencement of an Act is postponed
to some specified future date or to such date as the
Appropriate Government may, by Notification in the Official
Gazette, appoint. Provision is also at times made for
H
~-

426 SUPR.EME COURT REPORTS [2008] 12 S.C.R.

A appointment of different dates for coming into force of different
parts of the same AGt. This is what has exactly happened in
this case resulting into utter confusion with regard to pending
FAQ No.293/06 filed. by respondent No.3 in the High Court
under Section 116 of the Indian Patents Act, 1970 as amended
B by the Patents (Amendment) .Act, 1999 w.e.f. 26.3.99. ~

5. Span Diagnostics Limited, respondent No.3 herein, is
a p·ublic limited company esta_blished in 1972 to indigenousty
develop and manufacture a comprehensive range of ready-
made diagnostic reagents made by clinical pathology
C laboratories. On 14.6.2000 J.Mitra & Company Pvt. Ltd.,
appellant herein, filed its application for grant of patent. After
scrutiny, the said application stood notified by the ·Patent. Office t
on 20.11.2004.
6. Thus, proceeding~ commenced before the Controller
0
of Patents in the year 2000 when the appellant herein sought
a patent of their device which was opposed by respondent \
I
I-
I
no.3 in the year 2QOO. By then, the Patents (Amendment) Act,
1999 had amended the Patents Act, 1970 w.e.f. 26.3.99.
)'--

.•.·-'1
t
Section 25 of the Patents Act,' 1970· as amended by Patents
E (Amendment) Act,' 1999 dealt with opposition to a patent vide
Section 25. At that time appeals pgainst decisions made by
the Controller pertaining to "pre-grant oppositions''. under
· Section 25 were mainta.inable before the High Court under
Section 116(2) of the Indian Patents Act, 1970.
F .
7. We quote· hereinbelow Sections 25 and 116 as it
stood in the year 2000 under the Patents (Amendment) Act,
199~ which read as under: ·
"Section 25. Opp@sition to grant of patent:
G
(1) At any time within four months from the date of ·>:· "'
adve:tisement ·of the. ac~eptance of a. complete specification
under this Act (or within such further period not exceeding
one month in- the aggregate as the Controller may a\low on
application r.iade to him in the prescribed manner before the
H expir/ of the four months aforesaid) any person interested
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 427
.4f. ., oF·:.pATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]
_.....
may give notice to the Controller of opposition to the grant of- A
the patent on any of the following grounds, namely:
a. that the applicant for the patent or the person under or
through whom he claims, wrongfully obtained the
invention or any part thereof from him or from a person
under or through whom he claims; B
_).,_
b. that the invention so far as claimed in any claim of the
complete specification has been published before the
priority date of the claim -
i. in any specification filed in P.Ursuance of an c
applicatiorl>foi:.a -P.atent made in India on or after
t~e fst day of January, 1912; or

ii. in India or elsewhere, in any other document:
Provided that the ground specified in Sub-clause (ii) shall not
be available where such publicatfon does not constitute an D
anticipation of the invention by virtue of Sub-section (2) or
f . Sub-section (3) of Section 29;
-'"'(' that the invention so far as claimed in any claim of the complete
specification is claimed in a claim of a complete specification
published on or after the_ priority date of the applicant's claim E
--4 and filed in pursuance of an application for a patent in India,
being a claim of which the priority date is earlier than that of
the applicant's claim;

a. that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly F
...... used in India before the priority date of that claim.
Explanation - For the purposes of this clause, an invention
relating to a process for which a patent is claimed shall be
deemed to have been publicly known or publicly used in India
G
before the priority date of the claim if a product made by that
~
-j:.· process had already been imported into India before that date
except where such importation has been for the purpose of
reasonable trial or experiment only;
b. that the invention so far as claimed in any claim of the
H
SUPREME COURT REPORTS [2008] 12 S.C.R.

A complete specification is obvious and clearly does not
involve any inventive step, having regard to the matter'
published as mentioned in clause (b) or having regard
to what was used . in ·1ndia before the priority date of
.
the
applicant's claim;
B c. that the subject of any claim of the complete specification
is not an invention within the meaning of this Act, or is ~
not patentable under this Act;
d. that the complete specification does not sufficiently and
clearly describe the invention or the method by which it
c is to be performed;
e. that the applicant has failed to disclose to the Controller
the information required by Section §. or has furnished
the information which in any material particular was false
to his knowledge;
D
f. that in the case of a convention application, the
application was not made within twelve months from
the date of the first application for protection for the
invention made in a convention country by the applicant ~-

or a person from whom he derives title;
E
but on no other ground.
(2) Where any such notice of opposition is duly given, the
Controller shall notify the applicant and shall give to the
. applicant and the opponent an opportunity fo be heard before
F deciding the case.
(3) The grant of a patent shall not be refused on the ground
stated in Clause (c) of Sub-section (1) if no patent has been
granted in pursuance of the application mentioned in that
clause; and for the purpose of any inquiry under clause (d) or
G clause (e) of that sub-section, no account shall be taken of
any secret use.
·).-

Section 116. Appeals
(1) No appeal shall lie from any decision, order or correction
made of issued under this Act by the Central
H
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 429
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]

Government, or from any act or order of the Controller A
for the purpose of giving effect to any such decision,
order or direction.
(2) Save as otherwise expressly provided in Sub-section
(1), an appeal shall lie to a High Court from any decision,
order or direction of the Controller under any of the B
)..
following provisions, that is to say, Section 15, Section
16, Section17, Sectiol"I 18, Section 19, Section 20,
Section 25, Section 27, Section 28, Section 51, Section
54, Section 57, Section 60, Section 61, Section 63, Sub-
section (3) of Section 69, Section 78, Section 84, Section
86, Section 88(3), Section 89, Section 93, Section 96
c
and Section 97."
(3) Every appeal under this section shall be in writing and
shall be made within three months from the date of the
decision, order or direction, as the case may be, of the D
Controller, or within such further time as the High Court
may in accordance with the rules made by it under
Section 158 allow."
(emphasis supplied by us)

8. Suffice it to note that under Patents (Amendment) Act, E
1999 th.ere was only one right given to a person interested to
" oppose the grant of patent by filing objections at the pre..:grant
stage. Under the said Amendment Act, 1999, as stated above,
vide Section 116 (2) a right of appeal was available to the
aggrieved party against orders passed under Section 25. The F
said appellate remedy was available by way of an appeal to
the High Court.

9. In 2002, the Legislature desired an amendment to the
law and intended to create an appellate forum to hear appeals
G
against orders passed by the Controller consequently Patents
-f·
(Amendment) Act, 2002 was promulgated on 25.6.2002.
However, it was not brought into force immediately. It may be
noted that in the ~aid Amendment Act, 2002, no provision
was made pertaining to "post-grant opposition". That provision
H
,._

430 SUPREME COURT REPORTS [2008) 12 S. C.R.

A came to be made only under the Patents (Amendment) Act,
2005 which was promulgated on 4.4.2005 w.e.f. 1.1.2005.
. .
10. Vide Section 47 of the Patents (Amendment) Act,
2002 entire Chapter XIX stood substituted. Sections 116 and
117A were reworded which read as under:
B
-~
"Section 116. (1) Subject to the provisions of this Act, the
Appellate Board established under Section 83 of the Trade
Marks Act, 1999 shall be the Appellate Board for the purposes
of this Act and the said. Appellate Board shall exercise the
jurisdiction, power and authority conferre<;I on' it by or under
c this Act: ·
Provided thcit the Technical Member of the Appellate Board for
the purposes of this Act shall have the qualifications specified
in Sub-section (2).
D (2) A person shall not be qualified for appointment as a
Technical Me~b~r for the purposes of this Act unless he-
(a) has, at least five years, hold the post of Controller under
this Act or has exercised the functions of the Controller
under this· Act for at least five years; or
E
(b) has, for at least ten years, functioned as a Registered
PatentAgent and possesses a degreein engineering·or
technology. or a masters degree in science from any
University established under law for the time being in
force o'r eguivalent; or
F
(c) has, for.:.at least ten years, been an advocate of a proven
specialized experience in practicing law relating to
patents and designs.
Section 117A. (1) Save as otherwise expressly provided in
G Sub-section (2), no appeal shall lie from any decision, order
or direction made· or issued under this Act by the Central
Government, or from any act or order of the Controller for the
purpose of giving effect to any such decision, order or
direction.
H (2) An appeal shall lie to the Appellate Board from any
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 431
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]

decision, order or direction of the Controller or Central A
Government under Section 15, Section 16, Section
17, Section 18, Section 19, Section 20, 1Section 25,
Sectio'n 27, Section 28, Section 51, Section 54,
Section 57, Section 60, Section 61, Section 63,
Section 66, Sub-section (3) of Section 69, Section B
78, .Sub-sections (1) to (5) of Secti~n 84, Section
as; Section 88, Section 91, Section 92 ·and Section
94.
.
(3) Every appeal under this section shall be in prescribed
for111 and shall be verified in such manner as may be C
prescribed and shall be accompanied by a copy of the
decision, 0rder or dir~ction appealed against any by
such fees as may be prescribed.
(4) Every appeal shall be made within three months from
the date of the decision, order or direction, as the case D
may be, of the Controller or the Central Government or
within such further time as the Appellate Board may, in
·accordance with the rules made by it, allow."
(emphasis supplied by us)
E
11. The provisions of the said Amendment Act, 2002,
however, were not simultaneously brought into force. Suffice it
to note that Sections 116 and 117A were no.t brought into
force. However, Section 25 was brought into force vide
Notification dated 20.5.2003. Even as on 20.5.2003 vide F
Section 25 only one right to oppose a patent at the pre-grant
stage was available and appeal against an order, pass.ed by
the. earlier, lay before the High Court under the then existing
Section 116 of the Patents Act, 1970 for the reason that the
amended Sections 116 and 117A Were not brought into force. G
12. Without giving effect to the amendments to Sections
· 116 and 117A suggested by Section 4 7 of the Patents
(Amendment) Act, 2002, on 4.4.2005.lhe Legislature enacted
the Patents (Amendment) Act, 2005. Even here, not all
provisions were simultaneously brought into force. Only certain H
'
432 SUPREME COURT REPORTS [2008] 12 S.C.R.
'

A sections of the Patents (Amendment) Act, 2005 were brought .......
into force.
13. Vide Section 23 of the Patents (Amendment) Act,
2005, the then existing Section 25 was substituted. The
substituted Section 25 reads as. under:
B
"25. Opposition to the patent.- (1) Where an application for a
pa.tent has been published but a patent has not been granted, -+
any person may, in writing, represent by way of opposition to
the Controller against the grant of patent on the ground-

c (a) that the applicant for the patent or the person under or
through whom he claims, wrongfully obtained the
invention or any part thereof from him or from a person
under or through whom he claims;
.
(b) · that the invention so far as claimed in any claim of the
D complete specification has been published before the
priority date of the claim-
(i) in any specification filed in pursuance of an
application for a patent made in India on or after ·'
the 1st day of January, 1912; or ._.,.
E
(ii) in India or elsewhere, in any other document:
Provided that the ground specified in Sub-clause (ii)
shall not be available where such publication does not
constitute an anticipation of the invention by virtue of
F Sub-section (2) or Sub-section (3) of Section 29; .
(c) that the invention so far as claimed in any claim of the
complete specification is claimed in a claim of a complete
specification published on or after tlie priority date of the
applicant's claim and filed in pursuance of an application
G for a patent in India, being a claim of which the priority
date is earlier than that of the applicant's claim;
(d) that the invention so far as claimed in any claim of the ·_,;-. •
complete specification was publicly known or publicly
used in India before the priority date of that claim.
H
J. MITRA & Cb. PVT. LTD. v. ASST. CONTROLLER 433
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]
,...,. Explanation.-Forthe purposes of this clause, an invention A
relating to a process for which a patent is··claimed shall
be deemed to have been publicly known or publicly used
in India before the priority date of the claim if a product
made by that process had already been imported into
India before that date except where such importation
has been for the purpose of reasonable trial or
B
+. experiment only;

(e) that the invention so far as Claimed in any claim of the
complete specification is obvious and clearly does not
involve any inventive step, having regard to the matter
published as mentioned in clause (b) or having regard
c
to what was used in India before the priority date of the
applicant's claim;

(f) that the subject of any claim of the complete specification
.. is not an invention within the meaning of this Act, or is D
not patentable under this Act;
(g) that the complete specification does not Eufficiently and
clearly describe the invention or the method by which it
'?( is to be performed;
(h) that the applicant has failed to disclose to the Controller E
the information required by Section 8 or has furnished
the information which in any material particular was false
_, to his knowledge;

(i). that-in the case of convention application, the application
was not made within twelve months from the date of the F

.'I>- first application for protection for the invention made ln
a convention country by the applicant or a person from
whom he derives title;

U) that the complete specification does not disclose or
wrongly mentions the source or geographical origin of G
biological material used for the invention;

(k) that the invention so far as claimed in any claim of the
complete specification is anticipated having regard to
the knowledge, oral or otherwise, available within any
H
434 SUPREME COURT REPORTS [2008] 12 S.C.R. ·

local or indigenous community in India or elsewhere,
,,...
A
but on no other ground and the Controller shall, if
requested by such person for being· heard, hear him
and dispose of such representation- in. such n=ianner
and within such period a·s may be prescribed.
B (2) At any time .after the grant of patent but before the expiry
of a period of one year from the date of publication of grant of
-4.
a patent, any person interestea may give notice of opposition I

to the Controller in the prescrib.ed manner on any of· the
following grounds, namely:
c (a) that the patentee or the person under or through whom
he claims, wrongfully obtained the invention or any part
thereof from him or from a person under or through
whom he claims;
(b) that the invention so far as claimed in any claim of the
D complete specification has been published before the
priority date of the claim-
(i) in any specification filed in pursuance of an
. application for a patent made in India on or after '1c--
the 1st day of January, 1912; or
E
~
(ii) .in India or elsewhere, in any other'document:
J
Provided that the ground specified in Sub-clause (ii) shall not ~
be available where such publication does not constitute an '
;;
anticipation of the invention by virtue of Sub-section (2) or
F Sub-section (3) of Section 29;
(c) that the Invention so far as claimed in any Claim of the ..<I(
complete specification is claimed in a claim of a complete
specification published on or after the priority date of the
claim of the patentee and filed in pursuance of an
G . ·--·. '"-~· application for a patent in India, being a claim of which
the priority date is earlier than that of the claim of the .
patentee; .. ,r- .
(d) that the invention so far as claimed in any claim of the
complete specification was publicly known or publicly
H used in India before the priority date of that claim.
J. MITRA & CO. PVT. LTD, v. ASST. CONTROLLER 435
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.] .
.,.,
Explanation.-For the purposes of this clause, an invenfion A·
relating to a process for ~hich a patent is granted shall be
deemed to have been publicly known or publicly used in India
before the priority date of the claim if a product made by that
process had already been imported into India before that date
except where such importation has beeri for the purpose of ··
8
reasonable trial or experiment only; .
.+-
(e) that the invention so far as claimed in .any claim of the
complete specification is obvious and clearly does not
involve any inventive step, having regard to the matter
published as mentioned in clause (b) or having regard to
what was used in India before the priority date of the claim;
c
(f) that the subject of any claim of the complete specification
is not an invention within the meaning of this Act, or is
not patentable under this Act;

(g) that the complete specification does not sufficiently and ·o
clearly describe the invention or the method by which it
is to be performed;
~ (h) that the patentee has failed to disclose to the Controller
the information required by Section 8 cit has furnished
the information which in any material particular was false E
to his knowledge;

(i) that in the case of a patent granted on convention
application, the application for patent was not made
within twelve months from the date of the first application
for protection for the invention made in a convention F
-;..
country or in India by the patentee or a person from
whom he derives title;

U) that the complete specification does not disclose or
wrongly mentions the source and geographical origin of
biological material used for the invention; G
.. -!.
(k) that the invention so far as claimed in any claim of the
complete specification was anticipated having regard to
the knowledge, oral or otherwise, available within any local
or indige~ous community in India or elsewhere,
H
·-436 SUPREME COURT REPORTS [2008] 12 S.C.R.

A but on no other ground.
(3) (a) Where any such notice of opposition is duly given under
Sub-section (2), the Controller shall notify the patentee.
(b) On receipt of such notice of opposition, the Controller
shall, by order in writing, constitute a Board to be known
.B
as the Opposition Board consisting of such officers as --+
he may determine and refer such notice of opposition
along with the documents to that Board for.examination
and submission of its recommendations to the
Controller.
c
(c) Every Opposition Board constituted und~r clause (b)
shall conduct the examination in accordance with such
procedure as may be prescribed.
(4) On receipt of the recommendation of the Opposition Board
o and after giving the patentee and the opponent an opportunity
of being heard, the Controller shall order either to maintain or
to amend or to revoke the patent.
(5) While passing an order under Sub-section (4) in respe~t
of the ground mentioned in clause (d) or clause (e) of Sub-
E section (2), the Controller shall not take into account any
personal document or secret trial or secret use.
(6) In case the Controller issues an order under Sub-section
(4) that the patent shall be maintained subject to amendment
of the specification or any other document, the patent shall
F stand amended accordingly."
(emphasis ~upplied by us)
14. We also quote Section 61 of the Patents
(Amendment) Act, 2005 which reads as under:
G "Section 61. In Section 117A of the principal Act [as inserted
by Section 4 7 of the Patents (Amendment) Act, 2002, in Sub-
section (2), for the words and figures "section 20, Section 25,
Section 27, Section 28,", the words, figures and brackets
"section 20, Sub-section (4) of Section 25, Section 28" shall
H be substituted."*
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 437
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]
--+'
*(this section was not brought into force till 2.4.2007)" A
(emphasis supplied by us)

15. In short, by the Patents (Amendment) Act, 2005, for
the first time a dichotomy was introduced in the Patent Law
between "opposition to the pre-grant" and "opposition to the
post-grant of patent". This was the major structural change in 8
+ the Patent Law. Similarly, under the Patents (Amendment) Act,
~
2005, appeal was restricted to the post-grant opposition
orders and that appeal lay before the Appellate Board and
not to the High Court. Here also, Section 25 of the Patents
Act, 1970 as amended by Patents (Amendment) Act, 2005 c
-I
(which refers to "pre-grant opp·osition" and "post-grant
~
opposition") was brought into force on and from 1.1.2005
whereas amended Section 117A by which appeal was
---(
provided for against post-grant opposition order was not
•(
·brought into force till 2.4.2007. One more aspect needs to be D
mentioned. As stated: vide Patents (Amendment) Act, 2005,
• a dichotomy was brought in between pre-grant and post-grant ·
I
~
opposition orders w.e. f. 1.1.2005. But when it came to filing
of first appeal for some unknown reasons, the amended
Section 117A (which provided for only one statutory appeal E
_j and that too against post-grant orders passed by the Controller)
' was not brought into force. The result is that although the
Legislature intended to provide for only one statutory appeal
to the Appellate Board, by reason of Section 61 of the Patents
(Amendment) Act, 2005 not being brought into force till 2.4.07
F
~
a strange situation developed. The Legislature intended to
provide for only one statutory appeal to the Appellate Board
~
but by not bringing Section 61 into force till 2.4.07, appea's .
filed during the interregnum, as in this case, qecame vulnerable
and liable to be dismissed as misconceived as is contended
G

- --.i
by the appellant. This is the controversy which needs to be
resolved in this case.
16. On 19.10.2006 when FAO No.293/06 was filed in
-4
the High Court, Chapter XIX of the parent Act as amended
vide Patents (Amendment) Act, 1999 continued to be in H
438 SUPREME COURT REPORTS [2008].12 S.C.R.

__,._.
A operation notwithstanding the enactment of the Patents
(Amendment) Ad, 2002 and ·the Patents (Amendment) Act,
2005 as the amended Sections 116 and 117A were brought
into force only vide .Notification dated 2.4.07. One more point
needs to be noted. Sectio"n 117G of the principal Act was I
'
B substituted vide Patents (Amendment) Act, 2005. It reads as ~
under:
.. . ' ,• -+
to
-~

"Section 117G. Transfer of pending proceedings Appellate
Board.-All cases of appeals against any order or decision of . I-
the Controller and all cases pertaining to revocation of patent
c other than 6n a counter-cla.im in a suit for infringement and
rectification of register pending before any High Court, shall
be transferred to the Appellate Board from such date as may !
I
be notified by the Central Government in the Official Gazette
and the Appellate Board may proceed with the matter either ~
de novo or from the stage it was so transferred."
D
17. On reading amended Section 117G it becomes clear
that all appeals against any order or decision of the Controller .
h~d to be transferred to the Appellat~ Board from sll~h date 'i:
)lo
as may be notified by the Central Government in the Official
E Gazette. This amended Section 117G was also brought into
force vide Notification dated 3.4.2007. Under Notes on
Clauses attached to the Statement of Objects and Reasons,
it has been clarified, vide clause 62, that amended Section
117G is consequential to the enforcement of the jurisdiction of
F · the Appellate Board tinder Section 64 which results to
revocation of patent. Vide clause 47 of Notes. on Clauses ~- •'
attached to the Statement of Objects and Reasons, it has
been clarified that Section 64 is also amended vide Patents
(Amendment) Act, 2005 to confer wider jurisdiction on the
Appellate Board in matters of revocation of patent, therefore,
G
amended Section 117G which is brou_ght into force only from
3.4.2007 dealt with transfer of pending proceedings from the ~
High Court to the Appellate Board.
18. The question which arises for determination in this
H batch of civil appeals is : whether FAO No.292/06 and FAQ
. . J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER . 439
OF PAIENTS & DESIG. & ORS. [S.H. KAPADIA, J.]

No.293/06 filed by respondent no.3 herein in the High Court A
were liable to be dismissed. According to the appellant, with
the change in Section 25 brought about by Patents
(Amendment) Act, 2005, a dichotomy was introduced in the
Patents Act, 1970. According to the appellant, that dichotomy
was between "pre-grant opposition" and "post-grant 8
+ opposition".,According to the appellant, this "'fas a structural
change in the principal Act. According to the appellant, on
23.8.06 the Controller rejected its "pre-grant opposition" and
on that day "post-grant opposition" avenue was open to
respondent no.3 vide Section 25(2). According to the appellant, c
under. the amended Section 25 on rejection of "pre-grant
opposition" it was open to respondent no.3 to move an
application opposing grant of patent under Section 25(2). The
patent was granted to the appellant on 22.9.06. According to
the appellant, it was open to respondent no.3 to challenge the
D
grant of patent by making "post-grant opposition" u.nder Section
~ 25(2) from which an appeal was maintainable to the Appellate
~
Board. This was not done. Further, according to the appellant,
"pre-grant opposition" was filed by respondent no.3 under
Section 25(1) on 21.3.05. According to the appellant, though
the Patents (Amendment) Act, 2005, amended Section 25 by E
enacting the amendment on 4.4.05 the said amendment was
brought into force w.e.f. 1.1.2005 and, therefore, it was open
to .respondent no.3 to challenge the grant of patent by invoking
Section 25(2) of the Patents Act, 1970. According to the
appellant, with the change in the structure of the Act providing F
~
for only one statutory appeal and that too only against the
4
. order granting patent under Section 25(4), the appeal filed by
_,
' respondent no.3 against pre.-:-grant opposition order was not
maintainable on 19.10.06 by which time, as stated above,
Section 25 stood restructured providing for a dichotomy G
......_ between "pre-grant opposition" and "post-grant opposition" .
19. On the other hand, on behalf of respondent no.3, it
has been urged that on 19.10.06 it had filed an appeal in the
High Court under unamended Section 116 of the parent Act;
H
440 SUPREME COURT REPORTS [2008] 12 S.C.R.
~
A that, even though Se~tion 2? stood restructured w.e.f. 1.1.05
on account of absence of notification bringing the amended
law into force, Sections 116 and 117A (as amended) providing
appeal to the Appellate Board came into force only with ~.ffect
from 2.4.07 and, therefore, according to the said respondent,
8 its first appeal being FAO No.293/06 continued to be governed
by the law as it stood on 19.10.06 (on which date appeal to -+
the High Court was maintainable); that, on 23.8.06 the "pre-
grant opposition", filed by respondent no.3, stood rejected,
however, on that date appeal against pre-grant opposition
c order was maintainable, under Section 1.16, to the High Court
and, therefore, there is no merit in the argument advanced on
behalf of the appellant that the first appeal filed by respondent
.no.3 was misconceived; that, it is true that Section 25 got
restructured w.e.f. 1.1.2005, however, such restructuring did
.Ir
not obliterate the first appeal filed by respondent no.3 on
D
19.10.2006; and lastly it was argued on behalf respondent
no.3 that the appellant had filed its application for grant of .
;;-

patent on 14.6.2000, it was notified on 20.11.04, however, -,,...
respondent no.3 had filed its "pre-grant opposition" under
~ection 25(1) on 21.3.05 when the Patents (Amendment) Act,
E 2005 was not promulgated (it was promulgated on 4.4.05)
and, therefore, according to respondent no.3 its "pre-graht
opposition" filed on 21.3.05 was valid and proper as ~
I
respondent no.3 could not have invoked Section 25(2)
proceedings on that day, namely, 21.3.05 as the law stood
F enacted bringing in Section 25(2) only on 4.4.05. In tbe p~_culiar _..
circumstances of this case it was urged on behalf of
respondent no.3 that no interference is called for by this Court
in this batch of civil appeals.
20. As stated above, quite often the commencement of ~
G
an Act is postponed--to some.. specific future date or to such
~
date as the Appropriate Government may, by notification in
the Official Gazette, appoint. At times provision is made for
appointment of different dates for coming into force of different
parts of the same Act.
H
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 441 -
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]
-f ..
21. An Act cannot be said to commence or to be in force A
unless it is brought ·into operation by legislative enactment or
by the ~xercise of authority by a delegate empowered to bring
it into operation.
22. Applying the ~bOVE? tests to the present case, we find
that by Patents (Amendment) Act, 2005 for the firsf time a 8
dichotomy was inserted in the P_atent Law by pr.oviding vide
Section 25(1) for "opposition to pre-grant" and vide Section
25(2) for "opposition to post-grant" of patent. By reason of·
Patents (Am~ndment) Act. 2005, the kind of opposition
available under the sa)d 1970 Act ts different from· what existed C
earlier. Previously, there was· no "post-grant opposition".
Previously, the only provision of challenge by an interested
party was a "pre-grant" challenge under Section 25(1) as it
then stood. Therefore, the Courts had evolved the 'rule of
·caution' as the patent had oot faced any challenge at the D
hands of interested parti~s. There is, however,· a radical shift
due to incorporation of Section 25(2) where an interested
party is granted the right to challenge the patent after its grant.
·.The .ground of chal]finge under Section 25(1) is identical to
Section 25(2) of the said 1970 Act. Howeve·r, Section 25(1) E
is wider th.an Section 25(2) as. the latter is available only to a
"person aggrieved". The main difference between .Section
25(1) and -Section 25(2), as brought about by P~tents
(Ame11dment) Act, 2005, is that even after a patent is granted,·
"post-grant opposition" can be filed under Section ~5(2) for a F
period of one year. The reason is obvious. In relation to paterits
that are of recent origin, a higher scrutiny is necessary. This
is the main ration.ale underlying Section 25(2) of the said 1970
Act. Therefore,· the Legislature intended an appeal under
·Section 117A(2) to !he Appellate Soard from --any decision, G
order or direction of the Controller, inter alia, ·under Section ·
25(4) [which refers to the power of the Controller to maintain,
amend or revoke the patent]. · •
23. ·in the present case, the Legislature intended to
provide ·for two typE?S of scrutiny followed by one statutory H
~r.

442 SUPREME COURT REPORTS [2008] 12 S.C.R.

A appeal to the Appellate Board against "post-grant
proceedings". The Legislature intended to have a dichotomy
between "pre-grant opposition" and "post-grant opposition".
However, the Legislature intended that there shall be only one
statutory appeal against grant of patent. The Legislature
B intended to obliterate appeal from "pre-grant proceedings",
which· existed earlier. However, it was left to the Executive to
(
bring the enacted law into force vide notification. For some
unknown reasons, the amended Sections.116 and 117A(2)
were not brought into force till 2.4.07 whereas the concept of
C "pre-grant" and "post-grant" oppositions were brought into force
w.e.f.1.1.2005. This is where the legislative intent got defeated,
during the interregnum. It is during this interregnum that
respondent no.3 filed its FAO No.293/06 in the High Court
under Section 116, as it stood on 19.10.06 under the Patents
(Amendment) Act, 1999. On that date, the amended Section
0
117A, suggested by Patents (Amendment) Act, 2005, was
not brought into force. On 19.10.06 the old law prevailed under
which an appeal lay before the High Court. Respondent no.3,
)•
r;
in both the cases, preferred first appeals to the High Court ).
under Section 116 as it then stood. They are FAO No.292/06
E and FAO No.293/06. We have to decide the fate of these
pending appeals. One more aspect needs to be mentioned.
Under the Patents (Amendment) Act, 2005, appeal is provided
to the Appellate Board against the order of the Controller
under Section 25(4). However, that statutory appeal is
F maintainable only in "post-grant opposition" proceedings
whereas respondent no.3 herein has instituted first appeals
under the law then prevailing, challenging the Order rejecting
"pre-grant opposition" dated 23.8.06.
G 24. Taking into account the complexities involved in this
case, on account of a hiatus created by reason of the law not
being brought into force in time, we are of the view that the
first appeals, filed by respondent no.3 in the High Court being
FAO No.292/06 and FAO No.293/06, would remain in the
H High Court. The said appeals would be heard and disposed
J. MITRA & CO. PVT. LTD. v. ASST. CONTROLLER 443
OF PATENTS & DESIG. & ORS. [S.H. KAPADIA, J.]

of by the High Court in accordance with law under Section A
116 of the said 1970 Act as it stood on 19.10.06. The High
Court will hear and decide the validity of the Order passed by
the Controller dated 23.8.06 rejecting "pre-grant opposition"
filed by respondent no.3. We are informed that there are hardly
one or two matters of this nature which are pending. Therefore, B
we are of the view that respondent no.3 cannot be let without
remedy. In the -special circumstances of this case, particularly
when after 2.4.07 appeals against orders rejecting "pre-grant
opposition" are not maintainable and particularly when FAO
No.292/06 and FAO No.293/06 were filed by respondent no.3 c
prior to 2.4.07 under the old law, we are of the view that these
two appeals shall be heard and decided by the High Court in
accordance with law. The Appellate Board after 2.4.07 is
entitled to hear appeals only arising from orders passed by
the Controller under Section 25(4), i.e., in cases of orders
passed in "post-grant opposition". Therefore, there is no point P
in transferring tile pending FAO No.292/06 and FAO No.293/
06 to the Appellate Board which has no authority to decide
matters concerning "pre-grant opposition". Moreover, it may
be noted that even Section 117G, which refers to transfer of
pending proceedings to the Appellate Board, is also brought E
into force vide Notification dated 3.4.07. Keeping in mind the
peculiar nature of the problem in hand, we are of the view that
ends of justice would be subserved if the High Court is directed
to hear and decide the appeals bearing FAO No.292/06 and
FAO No.293/06 in accordance with law as it then stood, i.e., F
under Section 116 under Patents (Amendment) Act, 1999
against Orders passed by the Controller in "pre-grant
opposition" proceedings.
25. Accordingly, the two Civil Appeals, filed by the G
appellant herein, stand disposed of with no order as to costs .
. S.K.S. Appeals disposed of.