Glaxo Smith Kline Plc & Ors vs Controller Of Patents & Designs & Ors

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.

2 The Controller of Patent, however, by order dated 3rd

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

Being dissatisfied, two different writ applications were

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.

Pursuant to the order of the learned Single Jude, dated

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

the application filed by the writ petitioners on December 28,

2004.

On January 1, 2005 the Patent (Amendment Act), 2005

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.

3 On June 9, 2005 the writ petitioners filed another writ

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.

Challenging the correctness of order passed by the

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-

4 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.

Stand of the present appellants was that on the first day

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.

5 The High Court was of the view that the preliminary

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

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

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

as follows:

"6. Effect of repeal:- Where this 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 fore 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

7 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

8 the substance on or from the date of approval granted by the Controller in this behalf till a period of five years or till the date of grant of patent or the date of rejection of application for the grant of patent, whichever is earlier."

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. 9

8. In Chief Adjudication Officer v. Maguire (Simon Brown

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

"Inchoate rights, obligations and liabilities are covered by (c). This was established by Free Lanka Insurance Co. Ltd. v. Ranasinghe (1964 (1) All ER

457). In that case the Privy Council had no difficulty in construing the Ceylon Interpretation Ordinance 1900 as including an inchoate or contingent right and the same approach should be adopted to the interpretation of "right", "obligation"

or "liability" in section 16 of the 1978 Act. The section clearly contemplates that there will be situations where an investigation, legal proceeding or remedy may have to be instituted before the right or liability can be enforced and this supports this approach."

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

10 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.

........................................J. (Dr. ARIJIT PASAYAT)

.........................................J. (LOKESHWAR SINGH PANTA)

New Delhi, September 10, 2008

11