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Glaxo Smith Kline PLC and Ors.                ...Appellants

 

 

 

 

Controller of Patents & Designs and Ors.      ...Respondents

 

 

 

 

 

Dr. ARIJIT PASAYAT, J.

 

 

1.   Leave granted.

 

 

 

2.   Order passed in four appeals filed by the respondents

 

questioning correctness of order dated 10th February, 2006

 

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 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

 

petition were as follows:

 

 

patent under Section 5(2) of the Patents Act, 1970 (in short

 

the `Act') on 28th August, 1998. Subsequently, on 30th June,

 

2000 the writ petitioners further filed an application for grant

 

of "Exclusive 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.

  

 

May, 2002 refused the prayer of the writ petitioners for EMR.

  

 

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

 

directed the Joint Controller of Patent to consider and give

 

order on the application for grant of EMR afresh keeping all

 

points open.

 

 

 

 

16th December, 2004, the Controller of Patent again rejected

 

the application filed by the writ petitioners on December 28,

 

2004.

 

 

 

 

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.

 

 

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 time.

 

 

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-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 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 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 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.

 

 

 

 

of January, 2005 there was no pending application filed by the

 

writ petitioner for grant of EMR and the 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 order before an appropriate forum in accordance

 

with law.

 

 

 

objection regarding maintainability of 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.

 

 

 

4.     Learned counsel for the appellants in support of the

 

appeal submitted that a crystalised right had accrued because

 

of Section 24A and 24B 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

 

Judge by order dated 10.2.2006 set aside the order. The

 

impugned order speaks of repeal. Reference is made to Section

 

24B(1) about the right having accrued.

 

 

 

5.     Learned counsel for the respondents on the other hand

 

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 11B

 

(3).

 

6.   To the present case, Section 6 of the General Clauses

 

Act, 1897 (in short the `General Clauses Act') applies. It reads

 

as follows:

 

 

 

 

 

 

 

 

(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   of

Regulation had not been passed."

 

 Section 24B(1) of the Act reads as follows:

 

 

"24(B). Grant of exclusive of rights - (1) Where a

claim for patent covered under sub-section 2 of

section 5 has been made and the applicant has -

 

 

(a) where an invention has been made whether in

India or a country other than India and before filing

search a claim, filed an application for the same

invention claiming identical article or substance in

a convention country on or after the Ist 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

Ist day of January, 1995 in 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 on or after the Ist 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 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 in India the article or

 the substance on or from the date of approval

  

7.   As was observed by this Court in M/s 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 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 the old

 

statute are not destroyed. In M/s Gurcharan Singh Baldev

 

Singh v. Yashwant Singh and Ors. (1992 (1) SCC 428), it was

 

observed that right 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

 

LJ) (1999 (2) All ER 859) it was observed as follows:

 

 

  

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

 

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 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 so, the order of the Division Bench

 

cannot be sustained and that of the learned Single Judge has

 

to operate.   The appeal is allowed but in the circumstances

 

without any order as to costs.

 

 

 

 

 

 

 

 

New Delhi,

September 10, 2008