2008 (8) TMI 998 - SC - Indian Laws

Summary

Issues Involved:
1. Postponement of the commencement of the Patents (Amendment) Act, 2005.
2. Confusion regarding pending FAO No. 293/06 filed under Section 116 of the Indian Patents Act, 1970.
3. Dichotomy between "pre-grant opposition" and "post-grant opposition."
4. Maintainability of appeals under the amended Sections 116 and 117A.
5. Transfer of pending proceedings to the Appellate Board.

Detailed Analysis:

1. Postponement of the commencement of the Patents (Amendment) Act, 2005:
The judgment highlights the confusion caused by the postponement of the in-part commencement of the Patents (Amendment) Act, 2005. The Act's commencement was delayed to a future date or such date as the Appropriate Government may appoint, resulting in confusion regarding pending appeals under the amended Act.

2. Confusion regarding pending FAO No. 293/06 filed under Section 116 of the Indian Patents Act, 1970:
The case revolves around the pending FAO No. 293/06 filed by respondent No. 3 in the High Court under Section 116 of the Indian Patents Act, 1970, as amended by the Patents (Amendment) Act, 1999. The appellant filed an application for a patent on 14.06.2000, which was opposed by respondent No. 3. The Patents (Amendment) Act, 1999 amended Section 25, dealing with opposition to a patent, and Section 116(2), providing for appeals to the High Court.

3. Dichotomy between "pre-grant opposition" and "post-grant opposition":
The Patents (Amendment) Act, 2005 introduced a dichotomy between "pre-grant opposition" and "post-grant opposition." This structural change allowed for opposition to a patent both before and after its grant. Section 25(1) dealt with pre-grant opposition, while Section 25(2) dealt with post-grant opposition. However, the amended Sections 116 and 117A, which provided for appeals to the Appellate Board, were not brought into force until 02.04.2007.

4. Maintainability of appeals under the amended Sections 116 and 117A:
The appellant argued that with the restructuring of Section 25 by the Patents (Amendment) Act, 2005, only one statutory appeal was allowed against post-grant opposition orders to the Appellate Board. However, respondent No. 3 filed its appeal in the High Court under the unamended Section 116 on 19.10.2006, when the old law prevailed, allowing appeals to the High Court. The Court noted that the legislative intent was defeated during the interregnum period when the amended Sections 116 and 117A were not in force.

5. Transfer of pending proceedings to the Appellate Board:
Section 117G, substituted by the Patents (Amendment) Act, 2005, provided for the transfer of pending appeals to the Appellate Board. However, this section was also brought into force only on 03.04.2007. The Court decided that the pending appeals, FAO No. 292/06 and FAO No. 293/06, filed by respondent No. 3, should remain in the High Court and be heard and disposed of under Section 116 of the Patents Act, 1970, as it stood on 19.10.2006. The Court emphasized that the Appellate Board could only hear appeals arising from post-grant opposition orders passed by the Controller under Section 25(4).

Conclusion:
The Supreme Court concluded that the appeals filed by respondent No. 3 in the High Court should be heard and decided under the old law, as they were filed before the amended Sections 116 and 117A were brought into force. The two civil appeals filed by the appellant were disposed of with no order as to costs. The High Court was directed to hear and decide the appeals in accordance with the law as it stood on 19.10.2006.