Summary: What happens when a pre-grant opposition is filed after the Controller signs a patent application to grant? This knotty question was answered by the Delhi High Court in a recent case. But it takes a stand contrary to the Madras High Court, and thus, may have created more uncertainty than before.
Introduction
Under the Indian Patents Act, 1970, some actions can only be taken while the patent application is pending. These include the filing of a divisional application, and the filing of a pre-grant opposition against the application. Of these, the former is an action taken by the applicant, while the latter is taken by a third party against the application.
A critical factor impacting these actions is timing and consequent uncertainty for applicants and opponents (where relevant) alike. No provision under India law presently requires the Indian Patent Office (IPO) to notify in advance as to when a final decision of grant or rejection will be issued. So, a question naturally arises: what happens if a divisional application or a pre-grant opposition is filed on the same day the patent application is granted?
The first scenario was considered by the Madras High Court in BASF SE Vs. The Deputy Controller of Patents and Designs (C.M.A.(PT) No.38 of 2024, Order dated 28 November 2024), which we have discussed previously here.
The second scenario, discussed in the present note, came up before the Delhi High Court recently, in Vertex Pharmaceuticals Inc. v. Controller General of Patents, Designs, Trademarks and Geographical Indications & Ors. (decision dated 30 April 2025 in W.P.(C)-IPD 10/2024, CM 21/2024), where a pre-grant opposition was filed on the same date as the signing of the grant order.
Statutory framework
A brief recap of the relevant law is useful:
- Any person may oppose a patent application after its publication but before the grant of the patent under Section 25(1) of the Patents Act, 1970 (the “Act”).
- Separately, under Section 43(1) of the Act, where an application is found to be in order, a patent shall be granted and a certificate issued.
Background
The application in question was filed in June 2020, and after going through the rigours of responding to a First Examination Report (January 2022), and a subsequent hearing (November 2023), the applicant filed written submissions on 24 November 2023. Four days later, i.e., on 28 November 2023, the Controller signed the order granting the patent, noting that all objections had been addressed and no pre-grant opposition was pending. At this stage, although the order had been signed, the grant certificate had not as yet been issued nor uploaded on the IPO’s website.
Later, that same day, Respondent No. 3 filed a pre-grant opposition. The opposition was accepted by the IPO, and a notice was issued on 8 December 2023. Vertex challenged this acceptance, and approached the Delhi High Court.
The case before the Court
The question to be addressed by the Court was as follows: What was the effect of filing a pre-grant opposition after the patent application has been allowed and the patent has been granted by the Controller, duly signed and acknowledged, but not yet uploaded on the official website of the IPO.
Vertex argued that the signing of the order by the Controller constituted the grant of the patent; and uploading the order or generating the certificate were ministerial acts, and do not play any role in the date of grant. They also argued that once the patent was granted, the Controller became functus officio and could not entertain any further pre-grant oppositions.
The IPO acknowledged that the Controller had allowed the patent application, but since the opposition was filed before the system-generated certificate and order were uploaded, it was processed as a valid opposition.
Respondent No. 3, the opponent, also contended that the pre-grant opposition had been validly filed. According to the opponent, a patent can be considered granted only after the order is uploaded on the IPO website, and not when the order is signed by the Controller. The opponent also argued that both Sections 25(1) and 43(1) mention only the ‘date of grant’; there is no reference to the ‘time of grant’ as the cut off for filing a pre-grant opposition. In the present case, as the opposition was filed on the same date as the order, it was valid. The opponent also emphasized that the public would not know of the Controller’s decision until its publication, and systemic delays should not prejudice opponents.
The decision
The Court was clear that a patent is deemed granted on the date the Controller signs the order, not when it is uploaded or the certificate generated. According to the Court, uploading is merely a ministerial act. In this regard, the Court followed the principles laid down in Dr. (Miss) Snehlata C. Gupte v. Union of India & Ors. (2010 SCC OnLine Del 2374) and Dr. Snehlata C. Gupte v. Union of India & Ors. (2012 SCC OnLine Del 2259).
The Court was also aligned with the applicant/petitioner in that, once the Controller signs the grant order, he becomes functus officio and cannot entertain any further pre-grant opposition. Accepting a pre-grant opposition after the grant would be contrary to the scheme of the Act and an abuse of process. The Court also referred to Dhaval Diyora v. Union of India (2020 SCC OnLine Bom 2550), which similarly held that once the Controller has granted a patent, no opposition can be entertained.
The Court was satisfied that at the time of the Controller’s order being signed, no pre-grant opposition had been filed. Thus, the patent was deemed granted. The Court also ruled, as a consequence, that the opposition filed by Respondent No. 3 was not maintainable, and the IPO’s subsequent notice was illegal, arbitrary, and contrary to law.
Conclusion
Of particular note is that the Delhi High Court has taken a stand contrary to that of the Madras High Court in BASF. The Madras High Court had decided that a divisional application could be filed even on the date of grant of a patent. It had noted that it was impossible for the filing party to have known the exact timing as to when the patent was granted, and so the divisional application ought to be entertained. In contrast, the Delhi High Court granted no such leeway to the opposing party, and held the patent deemed to be granted as soon as the Controller issued the order of grant, regardless of whether it was uploaded or made available on the website or not.
It is entirely likely that these two decisions have not presented a conclusive end to this matter of timing and uncertainty, and that this question will be kept alive until a more definitive, clear and consistent answer is provided by the powers that be.
Until then, as a practitioner or an applicant or an opponent, if you intend to file an application (a divisional application or a pre-grant opposition, as the case might be), it is recommended to file it as soon as a decision in this regard is made; ruminating on such a decision might end up being more costly than you imagined.
English
Chinese (Simplified)
Japanese