Controller of Patents and Designs and Others vs Glaxo Smithkline Plc. Ors.

Bhaskar Bhattacharya, J.—All these four mandamus-appeals were heard together as all these appeals are directed against the selfsame order dated 10th February, 2006 passed by a learned single Judge of this Court thereby disposing of a writ-application filed by the Respondent Nos. 1 to 4 herein by setting aside the order dated December 28, 2004 passed by the Controller of Patents and Designs and remanding the matter back to him for arriving at a fresh decision on the application of the Petitioner for exclusive marketing right according to law that existed on May 3, 2002. His Lordship further directed the Controller to take into consideration the report of the examiner dated July 28, 2000 and to appreciate the significance of silence of the examiners regarding claim which the Respondent Nos. 1 to 4 presssed in the proceedings.

His Lordship further directed the Controller to give a reasonable opportunity of hearing to the parties who participated in the proceedings culminating in the decision dated December 28, 2004.

The facts giving rise to filing of these four mandamus-appeals may be summed up thus:

(a) The Writ-Petitioners filed an application for grant of patent u/s 5 (2) of the Patents Act, 1970 on 28th August, 1998. Subsequently, on 30th June, 2000 the writ-Petitioner further filed an application-for grant of exclusive marking right (EIVIR)-Oh July 28, 2000 the examiner filed examination report as regards, the claim of the writ-Petitioner for grant of E.M.R.

(b) The Controller of patent, however, by order dated 3rd May, 2002 refused the prayer of the writ-Petitioners for E.M.R.

(c) Being dissatisfied, two different writ-applications were filed before this Court being W. P. No. 20469 (W) of 2004 and W. P. No. 20407 (W) of 2004 and a learned Single Judge of this Court set aside the said order dated 3rd may, 2002 and directed the Joint Controller of Patent to consider and give order on the application for grant of E.M.R. afresh keeping all points open.

(d) Pursuant to the aforesaid order dated 16th December, 2004, the Controller of patent again rejected the application filed by the writ-Petitioners on Decembers 28, 2004.

(e) On January 1, 2005, the Patent (Amendment Act) 2005, came into operation by which various amendments of 1970 Act was made and the Chapter IV-A which provided the mode of adjudication of the claim of EMR was totally deleted.

(f) On June 9, 2005, the writ-Petitioner filed the present writ-application thereby challenging the order dated 28th December, 2004 passed by the Controller of Patent by which the prayer of the E.M.R. of the writ-Petitioners was rejected for the second time.

The learned Single Judge by the order impugned herein has set aside the order passed by the Controller principally on the ground that the Controller while deciding the matter totally ignored the report of the examiner, According to His Lordship, the controller was bound to consider the effect of silence on the part of the examiner regarding the claim for which the Petitioner ultimately prayed for exclusive marketing right. His Lordship, accordingly, directed the Controller to give fresh decision on the application of the writ-Petitioners according to law, after considering the examiner''s report.

Being dissatisfied, the Controller of Patent and the Union of India have preferred two of these appeals while other two appeals have been preferred by two third parties to the proceedings who wanted to be added as party-Respondent in the writ-application.

We, however, first, propose to take up the two mandamus appeals preferred by the Controller of Patent and the Union of India respectively.

Mr. Mukherjee, the learned senior advocate appearing on behalf of the Appellants has at the very outset taken a preliminary objection as regards the maintainability of the writ-application after the coming into operation of the amendment of Patents Act with effect from 1st January, 2005.

Mr. Mukherjee contends that with effect from 1st January, 2005, there is no scope of further considering the question of E.M.R. as would appear from the fact that Chapter IV-A of the Act has been totally deleted and in Section 78 of the Amending Act, it has been made specially clear that all pending application for grant of E.M.R. filed under Chapter IV-A of the Principal Act which were pending on 1st January, 2005 should 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 Principal Act. Mr. Mukherjee contends that there was no scope of considering any pending cases of grant of E.M.R. after 1st January, 2005 nor can any case of grant of E.M.R. disposed of earlier be revived for consideration.

Mr. Mukherjee, therefore, contends that the learned Single Judge erred in law in asking the Controller of Patents to exercise the jurisdiction which he was not possessing on the date of passing of such direction. He, accordingly, prays for setting aside the order passed by the learned Single Judge on that ground alone. Mr. Mukherjee also argued on merit but since a pure question of law was raised as regards the authority of the learned Single Judge to pass direction for considering the case of E.M.R. at a point of time when law prohibits grant of new E.M.R, we have heard the appeal on that ground alone as preliminary issue.

Mr Pal, the learned senior advocate appearing on behalf of the writ-Petitioners has, however, opposed the aforesaid contention of Mr. Mukherjee and has contended that on the first day fo January, 2005, as there was no pending application filed by his client for grant of E.M.R., the transitional provision mentioned in Section 78 of the Amending Act has no application to the fact of the present case.

Mr. Pal further contends that his client''s prayer for E.M.R. was disposed of at a point of time when the new amendment did not come into force and as such, his client has a vested right to challenge such order before the appropriate fourm in accordance with law and if the Writ-Court finds that the order was erroneously passed, the Court should grant relief to his clients which ought to have been given by the Director of Patents before the amendment came into force. Mr. Pal, in this connection, relies upon the provision contained in Section 6 of the General Clauses Act and submits that his client''s right should be adjudicated on the basis of law as it stood prior to January 1, 2005.

Therefore, the preliminary question that arises for determination in these appeals in whether the learned Single Judge erred in law in passing a direction upon the Controller of Patents to reconsider the application for E.M.R. after 1st January, 2005.

To appreciate the aforesaid question, Section 78 the Amending Act as well as Section 6 of the General Clauses Act are quoted hereunder:

Transitional provision.-(1) Notwithstanding the omission of Chapter IVA of the principal Act by 21 of this Act, every application for the.grant of exclusive marketing rights filed under that Chapter before the 1st day of January, 2005, in respect of a claim for a patent covered under Sub-section (2) of Section 5 of the principal Act, such application shall be deemed to be treated as a request for examination for grant of patent under Sub-section (3) of sention UB of the principal Act, as amended by this act.

(2) Every exclusive right to sell or distribute any article or substance in India granted before the 1st day of January, 2005 shall continue to be affective with the same terms and conditions on which it was granted.

(3) Without prejudice to any of the provisions of the principal Act, the applications in respect of which exclusive rights have been granted before the 1st day fo January, 2005 shall be examined for the grant of patent immediately on the commencement of this Act.

(4) All suits relating to infringement of the exclusive right granted before 1st day of January, 2005 shall be dealt with in the same manner as if they were suits concerning infingement of patents under Chapter XVIII of the principal Act.

(5) The examination and investigation required as carried out for the grant of exclusive right shall not be deemed in any way to warrant the validity of any grant of exclusive right to sell or distribute, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.

Effect of repeal. - Where thia Act, or any Central Act or Regulation made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be-made, then, unless a different intention appears, the repeal shall not -

(a) revive anything not in force or existing at the time at which the repeal takes effect; or

(b) affect the previous operation of any enactment so repealed or anything duly done or suffered thereunder; or

(c) affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or

(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, liability, penalty, forfeiture or punishment as aforesaid;

and any such investigation, legal proceeding or remedy may be instituted, continued or enforced, and any such penalty, forfeiture or punishment may be imposed as if the repealing Act or Regulation had not been passed.

We must also take note of the fact that with effect from 1st January, 2O05, all the pending application for grant of Patents would be taken into consideration which were kept in a "black box" for the last ten years.

After hearing the Learned Counsel for the parties and after going through the materials on record we are of the view that unless there is clear intention on the part of the legislature specifically taking away the vested right of the parties, the case should be governed by the old law as it stood prior to arriendment. Therefore, the first question is whether it appears by necessary implications that the legislature intended to take away the right of an Applicant for E.MR., who had earlier filed such application and whose application had been rejected prior to January 1, 2005 to challenge such order passed earlier as erroneous,

We should also take note of the fact that in this case, the writ application was filed at a point of time when there was no existing right of the writ-Petitioners to apply for E.M.R. and at the same time, even if, his application was pending, the same could not be considered or granted. Therefore, the further question is whether a rejected application can be revived and the Director of Patents can be asked to reconsider an application rejected prior to January i, 2005 in accordance with law as it stood prior to January 1, 2005, in exercise of power conferred under Article 226 of the Constitution of India.

On a plain reading of Section 78 mentioned above along with the other provisions of the Act as it stands, it appears that if any exclusive right of marketing was given prior to 1st January, 2005, the same should continue to be effective till five years from that date of grant or till the disposal of the application for grant of Patent whichever is earlier. At the same time, we find that the legislature made it clear that if any application had not been finally disposed of before the Controller for any reason, the same cannot be any further considered and in such a situation, those pending applications should be treated as pending applications for Patent. In the case before us, the writ-Petitioner having filed separate application for Patent, no question of converting the present application to one for grant of Patent arose. Sub-Section 4 of Section 78further indicates that ail suits relating to infringement of exclusive right granted before first day of January, 2005 should be dealt with in the same manner as if they were suits relating to "infringement of Patent" under Chapter XVIII of the Principal Act. Therefore, even if there is any infringement of exclusive right of marketing granted before 1st January, 2005, and a suit is pending alleging infringement of such right, the same should be dealt with as if the same was one for infringement, of Patent and not of exclusive marketing right.

From the aforesaid fact, the intention of the legislature was clear that exclusive marketing right (E.M.R.) which was given for a temporary period so long the applications for Patent were not considered by the authority due to prohibition created by law, from 1st January, 2005, such embargo has been lifted and those applications are being taken up for consideration. Further, the deletion of Chapter IV-A, itself suggests that the machineryfor considering the question of grant of E.M.R. has been withdrawn as there is no necessity of fresh consideration of E.M.R. Moreover, it appears from the Act itself that E.M.R. is valid so long the application for grant of Patent is not considered or till five years from the date of grant whichever is earlier. Since, the application for grant of Patent filed by the writ-Petitioner is pending, there is no necessity of considerng his application for E.M.R; even if, the E.M.R. was earlier granted, the same would have been valid till the disposal of the application for grant of Patent.

We, therefore, find that after the amendment of the Patents Act with effect from 1st January, 2005, there is no scope of taking fresh decision in the matter of grant of E.M.R. when the application for grant of Patent can now be disposed of on merit.

Moreover, in order to maintain a writ-application, the writ-Petitioner must show that on the date of filing of the writ-application he has an existing legal right which has been infringed by the action or inaction of the State within the meaning of Article 12 of the Constitution of India. In the case before us, the writ-application has been filed in the month of June 2005 when the writ-Petitioners had no existing right to have an E.M.R. either by filing a fresh application or even if, such application was pending on 1st January, 2005, on consideration of the same on merit. In such a situation, in our view, it is preposterous to suggest that an application of E.M^R., rejected prior to 2005, could be reopened by giving a fresh direction for consideration in exercise of the power conferred under Article 226 of the Constitution of India after the coming in to operation of the Amended Act.

We thus, find that the learned Single, Judge ought not to have entertained the writ-application in the month of June 2005 when the writ-Petitioners had at that time no existing right to have any E.M.R. and instead of that, a fresh right of getting Patent has on consideration of his pending application accrued in his favour. We cannot lose sight of the fact that the concept of grant of E.M.R. was an interim arrangement as the right to get patent was kept in abeyance till December 31, 2004.

We now propose to deal with the decisions cited by Mr. Pal.

In the case of The The Brihan Maharashtra Sugar Syndicate Ltd. Vs. Janardan Ramchandra Kulkarni and Others, The Supreme Court was considering the fate of the proceedings u/s 153C of the Companies Act, 1913, in view of enactment of Companies Act, 1956. According to the Supreme Court, Section 658 of the Companies Act, 1956 might have been enacted ex abundanti cautela, but by virtue of it, Section 6 of the General Clauses Act of 1913 remains applicable with respect to the effect of the repeal of the Act of 1913. According to the Supreme Court, the latter Section preserves the rights and liabilities created by Section 153C of the Act of 1913 and a continuance of the proceeding in respect thereof would be competent in spite of the repeal of the Act of 1913, inasmuch as, a contrary intention is not indicated in the latter Act. The Supreme Court further held that there was nothing in Section 647 of the Companies Act of 1956 which could be understood as indicating an intention that Section 6 of the General Clauses Act should not apply; on the other hand, the Supreme Court proceeded, the provisions of Section 153Cof the Act of 1913 have been substantially re enacted by the Act of 1956 and this would indicate an intention not to destroy the rights created by Section 153C. The Supreme C6urt further pointed out the Section 24 of the general Clauses Act does not cancel the notification empowering exercise of jurisdiction under the Act of 1913 and as u/s 6 of the General Clauses Act, the proceeding in respect of the application u/s 153C Act of 1913 was continued after the repeal of that Act; it followed that the District Judge continued to have jurisdiction to entertain it.

In our view, the said decision cannot have any application to the fact of the present case where the intention of the legislature that there would be no new EJM.R. after 1st January, 2005 was apparent as pointed out earlier by us. The said decision; thus, cannot have any application to the fact of !the present case;

In the case of National Planners Ltd. Vs. Contributories etc., the Full Bench of the Punjab High Court was considering the effect of Sections 647 and 648 of the Companies Act, 1956 on the question of pending proceedings for liquidation under the 1913 Act and took the similar view as taken in the case of the Brihan Maharashtra Sugar Syndicate Limited v. Janardan Ramchandra Kulkarni S Ors.(Supra). The said decision is also, therefore, unable to help Mr. Pal''s client in any way.

In the case of Hoosein Kasam Dada (India) Ltd. Vs. The State of Madhya Pradesh and Others, the Supreme Court was considering the provision of C.P. and Berar Sales Tax Act, particularly, the Section 22(1) proviso by the amendment of Act 17 of 1949. In that context, the Supreme Court held that a right of appeal is not merely a matter of procedure but is a matter of substantive right and this right of appeal from the decision of a inferior Tribunal to a superior Tribunal becomes vested in a party when the proceedings are first initiated and before a decision is given by the inferior Court. According to the Supreme Court, such a vested right would be taken away except by express enactment or necessary intendment. The amendment of Section 32 proviso had placed a restriction of the assessess''s right of appeal, for, the amendment of Section required the payment of the entire assessed amount as a condition precedent to the admission of the appeal. According to the Supreme Court, the imposition of such a restriction by amendment of the Section would affect the Assessee''s right of appeal from a decision in the proceedings which commenced prior to such amendment when the right of appeal was free from such restriction under the Section as it stood at the time of commencement of the proceedings.

We have already pointed out that in the case before us by enactment of Section 78 of the amended Act and byi totally deleting Chapter IVA of the Original Act, the legislature has clearly intended that after 1st January, 2005, there is no scope of considering the case of grant of E.M.R. afesh and even pending applications cannot be taken into consideration. We, thus, find that the said decision of the Supreme Court cannot help the Appellant in any way.

In the case of J.K.K. Angappan v. income tax Officer, Central Circle VII, Madras 1997 (94) ITR 397 reported in 1997 (94) ITR 397, the question was whether the mere use of the word "omitted" instead of "repealed" by legislature could be taken to show the intention to exclude the application of Section 6 of the General Clauses Act According to the Madras High Court, repealing of a provision is the same as omitting it and the liability to pay annuity deposit was a present liability which existend on April 1, 1967, the date on which the provisions relating to annuity deposit were omitted from the income tax Act, 1961 by the Finance act, 1966. The Bench was, therefore, of the view that Section 6 of the General Clauses Act would stand attracted and notwithstanding the omission, the annuity deposit payable before April 1, 1967 could be assessed and recovered even after that date.

In the said case the legislature by mere omitting the provision did not express its intention of taking away the application of Section 6 of the general Glauses Act and as such, the said decision cannot be of any held to the writ-Petitioner.

In the case of the State v. Judhabir Chetri AIR 1953 Ass 35 the full Bench of Assam High Court was of the view that the Constitution in the matter of its interpretation is not placed on any higher pedestal than that of any other Act of the Legislature of the Dominion. According to the said Bench, like all other Acts, the General Clauses Act applied for the purpose of interpretation of the Constitution of India and the provisions contained in it would, there, govern the interpretation, unless the context otherwise requires. The Full Bench was considering whether Article 227 had the retrospective effect and could be applied to a proceeding which was pending immediately before the date on which the Constitution came into force and the rights of the parties in regards to that proceeding should be guided by the law which was in force on the date immediately preceding 26th January, 1950. The question was answered in negative holding that the appellate order became final u/s 17 (3) of the relevant statute and it was not open to challenge under Article 227 of the constitution of India because the remedy that the said Article gave was a new one and it did not exist u/s 224 of the Government of India Act, 1935 and it partook the character of an appeal or revision though the power of the High "Courts under the Article is described as One of superintendence. Even Accepting the aforesaid position, we do not find how the aforesaid decision can be of any help to Mr. Pal''s client for the purpose of praying for a right under the repealed provision which cannot be granted afresh after January 1, 2005.''

In the case of Babu Dhirendra Nath Roy Vs. Ijjetali Miah and Others, a Division Bench of this Court was considering the question whether right accruing to landlord u/s 26J of the Bengal Tenancy Act before its repeal could be enforced by an application u/s 26 (J) read with Section 188(1) (i) even after the repeal of the Section by the amending Act of 1938 and in that context, it was held that the right acquired by the landlord u/s 26J of the Act to recover the balance of landlord''s fees and compensation before its repeal could be enforced by an application u/s 26-J read with Section 188-1 (i) even after the repeal of the Sections by the Act of 1938.

In arriving at such a conclusion, the Division Bench relied upon Section 8 of the Bengal General Glauses Act which is similar to Section 6 of the General Clauses Act which itself makes it clear that application of the repeal stature will depend upon the intention of the legislature and if there is no clear intention, either explicit or by necessary implications, the old right will be preserved and the remedy would also be application accordingly. We have already pointed out that in this case the intention of the legislature not to confer further right of E.M.R. after 1st January, 2005 is explicit and therefore, the Appellant cannot get the benefit of Section 6 of the General Clauses Act.

We, therefore, find that those decisions are of no assistance to the Writ-Petitioner in the fact of the present case.

We, thus, find substance in the preliminary objection taken by Mr. Mukherjee, as regards the maintainability of the writ-application filed after 1st January, 2005 for the purpose fo enforcing a repealed right of the writ-Petitioners when the legislature made it clear that there would not be grant of any such right afresh after the aforesaid day.

The order impugned is, thus, set aside. Both the appeals are, thus, allowed.

In the other two appeals, the third-parties who wanted to intervene and oppose the prayer of the writ petititioners have come up challenging the order of the learned Single Judge by which the controller of patent had been asked to reconsider the application of the writ Petitioner. Since, we have set aside the order passed by the learned Single Judge in the two appeals preferred by the Director of Patent and the Union of India respectively, these two appeals have become infrustuous as the Appellants therein cannot have any further grievance. These two appeals are disposed of accordingly. We have, however, not gone in to the merit of the claim of the apeallants in these two appeals at the instance of the third parties in the proceedings.

In the facts and circumstances, there will be, however, no order as to costs.

Prabuddha Sankar Banerjee, J.

I agree.