Delhi High Court - Orders
Astrazeneca Ab & Anr vs Union Of India & Ors on 23 July, 2020
Author: Jayant Nath
Bench: Jayant Nath
$~A-5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ W.P.(C) 4431/2020
ASTRAZENECA AB & ANR. ..... Petitioners
Through Mr.Pravin Anand, Ms.Vaishali Mittal
and Mr.Siddhant Chamola, Advs.
versus
UNION OF INDIA & ORS. ..... Respondents
Through Mr.Jasmeet Singh, CGSC with
Mr.Srivats Kaushal, Advocate for R-1
& R-2.
Mr.Sandeep Sethi, Sr.Adv. with
Mr.Subhatosh Mazumdar, Mrs.S.
Mazumdar, Mr.Dominic Alvares,
Mr.Afzal B.Khan and Mr.Samik
Mukherjee, Advs. for R-3.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
ORDER
% 23.07.2020 This hearing is conducted through Video Conferencing. CM APPL. No.15959/2020(exemption) For the reasons stated in the application, the same is allowed, subject to all just exemption.
W.P.(C) 4431/2020 & CM APPL. No.15958/2020(stay)
1. This Writ Petition is filed by the petitioner seeking an appropriate Writ to quash paragraph 10 of the impugned order dated 13.07.2020. The case of the petitioner is that the petitioner No.1 is a company incorporated in Sweden, and is the holder of the patent IN 235625 which discloses the compound DAPAGLIFLOZIN. The said compound is used for treatment of W.P.(C)4431/2020 Page 1 diabetes and has been extremely successful commercially. Petitioner No.2 is a subsidiary of petitioner No.1 and is said to be responsible for the marketing distribution in India for the drug in question.
2. The petitioner applied for the patent in November 2004 before the Indian Patent Office/Respondent No.2. The patent was published in the Patent Journal under section 11A of The Patents Act, 1970. The patent was granted registration on 09.07.2009. No pre-grant opposition was filed against the Patent.
3. It is pleaded that the Patents office, namely, respondent No.2 made an inadvertent mistake by not formally publishing the factum of grant of the petitioner's patent. It is pleaded that this is no fault of the petitioner who has taken all steps in law to ensure that the patent was duly prosecuted, granted and renewed from time to time.
4. In 2015 the petitioner also secured a regulatory approval from the Drugs Controller General of India and commenced commercial sale of the drug comprising of DAPAGLIFLOZIN. Hence, the registered patent began to be worked by the petitioner in India. It is pleaded that the petitioner's patent IN 235625 is an old and established patent which expires on 15.05.2023.
5. On 25.02.2020 respondent No.3 filed a revocation petition under section 64 of the Patents Act before the Intellectual Property Appellate Board (IPAB) against the petitioner's said patent IN 235625.
6. Subsequently, on 15.05.2020 respondent No.3 filed a representation before the Indian Patents Office/respondent No.2 for seeking striking off the petitioner's patent from the Register of Patents. As the representation was not disposed of, respondent No.3 on 08.06.2020 filed a Writ Petition in this W.P.(C)4431/2020 Page 2 court being Torrent Pharmaceuticals vs. Union of India & Ors. being W.P.(C)3470/2020 which was allowed on 11.6.2020. A direction was passed to respondent No.2 that the representation be heard and disposed of within one month. It is consequently thereafter that the impugned order dated 13.06.2020 has been passed by respondent No.2. It is the case of the petitioner that other than paragraph 10 of the order, the order is legal and valid.
7. Para 10 of the said order reads as follows;-
"10.With respect to the contention of the representor wherein that there been no publication of the grant of patent u/s 43(2) in Office Journal dated 31/07/2009, I submit that there appears to be an inadvertent error wherein the grant of the said patent was not published. I hereby order that this may be rectified immediately. The concerned division in the Patent Office to publish the grant of the patent u/s 43(2) within 15 days from the date of this order. And all rights and contention of any party pursuant to grant and notification of grant will be governed under the law."
8. Hence, essentially, what the impugned paragraph of the said order directs is that Patent Office may publish grant of the patent under section 43(2) within 15 days of this order.
9. I have heard learned counsel for the parties. Learned counsel for the petitioner has vehemently urged as follows:-
(i) He relies upon order of this court dated 11.06.2020 passed in W.P.(C)3470/2020 titled Torrent Pharmaceuticals Limited vs. Union of India to contend that before this Court the learned ASG had taken a stand that the representation filed by respondent No.3 has no statutory basis. It is pleaded that in the light of the same the action of W.P.(C)4431/2020 Page 3 respondent No.2 in directing publication of grant of patent is wholly illegal.
(ii) It is further pleaded that in the representation sent by respondent No.3 dated 15.05.2020 there is no prayer made for carrying out the publication. It is pleaded that in the absence of a prayer no opportunity was granted to the petitioner to make his submissions that a publication is not warranted. It is further pleaded that the term publication is not defined in the statutory provision. In any case in 2011 the grant of the patent was clearly put on the website by the Patent Office. Similarly, the concerned statutory authority granted a drug license in 2015. The petitioner has also filed a large number of suits for infringement of the said patent where counter-claims for revocation of the patent have also been filed by the parties in two of the suits. Hence, it is pleaded that it is clearly a case where publication has already been done.
(iii) It is further strongly urged that the publication, at this stage, 11 years after the grant of the patent to the petitioner on 09.07.2009 will open a floodgate of post-grant opposition to the patent now under section 25(2) of the Patents Act. It is pleaded that grave prejudice would be caused to the petitioner.
(iv) It is also pointed out that in any case the respondent No.3 has already filed a revocation petition under section 64 before the IPAB on 25.02.2020 and the same is pending. Respondent No.3 has also filed a post-grant opposition on 16.05.2020.
10. Learned counsel appearing for respondent No.1 relies upon section 43(2) of the Patents Act to submit that the Controller was obliged to publish W.P.(C)4431/2020 Page 4 the fact that the patent has been granted. Inadvertently as there was an omission, the said statutory requirement is sought to be complied with by the impugned order. It is insisted that there can be no equity or estoppel against the statutory provision.
11. Learned senior counsel appearing for respondent No.3 has urged as follows:-
(i) He has strongly reiterated that it is a statutory requirement under section 43(2) of the Act which is sought to be fulfilled by the impugned order.
(ii) He further pleads that under section 25(2) of the Patents Act at any time after grant of a patent but before expiry of the period of one year from the date of publication of grant of a patent any person may file an opposition to the Controller under the grounds specified therein.
This is a remedy which is available to the petitioner and the public at large which the statute provides. It is pleaded that the statutory remedy cannot be withered away merely because there is a delay in publication by respondent No.1.
(iii) It is further pleaded relying upon section 145 of the Patents Act that the publication has to be carried out in the official journal of the Patents Office and hence any content put on the website by the patents office would not be in compliance of section 43(2) of the Patents Act.
12. I may look at the relevant statutory provisions.
"43. Grant of patents.--
....
(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open W.P.(C)4431/2020 Page 5 for public inspection."
"25. Opposition to the patent.--
....
(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 a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:--
.......
(4) On receipt of the recommendation of the Opposition Board 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."
"145 Publication of official journal.--The Controller shall publish periodically an official journal which shall contain such information as may be required to be published by or under the provisions of this Act or any rule made thereunder."
13. It is quite clear that under section 43(2) of the Patents Act on grant of a patent the Controller has to publish the fact that the patent has been granted and the application specifications and other documents are open for public inspection. Under section 25 (2) of the Act a post grant opposition can be filed after grant of a patent but before the expiry of a period of one year from the date of publication of grant of the patent.
14. For consideration of the present stay application, I cannot help noticing that the patent was granted way back on 09.07.2009. The statutory provisions noted above do not specify the time within which publication had to be carried out. This would necessarily have to be done within a reasonable time period. The said statutory provision i.e. Section 45(2) of the Act is now sought to be complied with 11 years after the grant of the patent.
W.P.(C)4431/2020 Page 6 Prima facie, it appears that the said direction has the effect of extending the limitation for post-grant opposition beyond a period of 11 years; whereas section 25(2) of the Act envisages a limitation of only one year after the publication for filing post grant opposition. To that extent there is prima facie merit in the contention of learned counsel for the petitioner that grave prejudice is being caused to the petitioner by the said delay and the belated direction to now do the publication without any fault of the petitioner. The issue would have to be gone into in greater detail also keeping in view various facts especially the fact that the grant of patent was put on the website by respondent No.1 in 2011 and in 2015, the drug of the petitioner was launched. Hence, the public was prima facie aware of the grant of the Patent in question.
15. Issue notice to the respondents. Learned counsel appearing for respondents No.1 and 2 and, learned counsel appearing for respondent No.3 respectively accept notice.
16. Counter-Affidavit be filed within three weeks. Rejoinder thereto if any be filed within one week thereafter.
17. List for final arguments on 07.09.2020 at the end of the Board. Till the next date of hearing, there will be stay of the operation of paragraph 10 of the impugned order dated 13.07.2020.
JAYANT NATH, J
JULY 23, 2020/n
W.P.(C)4431/2020 Page 7