It is rare to witness a writ petition challenging a statute. The case under discussion challenged a statue under the Patents Act, 1970.
Recently, the Calcutta High Court, in matter between the Gunjan Sinha @ Kanishk Sinha, the petitioners appeared in person in a writ appeal and challenged the constitutional validity of Section 53 of the Patents Act, 1970, [Gunjan Sinha @ Kanishk Sinha and another Vs. The Union of India and another, WPA No. 8691 of 2023]. In its order, the court reassessed our statutes and the legislative competence of the Parliament.
Section 53 of the Patents Act, 1970, [the Act] specifically outlines that the term of the granted patent will be twenty years from the date of filing of the application for the patent.
Submissions of the Petitioners:
The petitioners inter alia, challenged the vires of Section 53 of the Act and presented the following arguments :
The term of the patent should not be counted from the date of application but from the date of grant or publication. The patent confers full rights on the patentee only from the date of grant, while limited rights are conferred between the application and publication of the patent. Therefore, it is contradictory to count the term of the patent from the date of application.
Section 11-A, introduced by the 2002 Amendment, provides certain privileges and rights to the applicant from the date of publication until the grant of the patent. However, these limited rights do not justify counting the term of the patent from the date of application and it was unreasonable for the patentee to lose valuable time between the application and the grant of the patent, as the patentee does not enjoy the full rights during that period.
In a previous writ petition, the petitioners challenge to the expiry of the patent was turned down on the grounds that as per the existing law, the term had to be counted from the date of application, hence the vires of the statute was not decided in that case. As the Petitioners have been granted leave by the court to challenge the vires of Section 53, the present challenge was not barred by the principle of res judicata.
Arguments of the Respondents:
The Respondents inter alia, challenged the arguments of the Petitioners:
The challenge to Section 53 of the Patents Act was baseless as the term of a patent starts from the date of application and the same was not contradictory to the rest of the statute.
Section 11-A of the Act provided certain privileges and rights to the applicant from the date of publication of the application until the grant of the patent and full rights of a patentee are granted upon the actual grant of the patent. Hence, the term of the patent starting from the date of application is reasonable.
The inter-play between Section 53 and Section 11-A ensured that the patentee does not lose valuable time between the application and the grant and this time is to be counted within the term of the patent, as it is not of any practical benefit to the patentee regarding the assertion of rights based on the patent.
The present challenge assails the vires of the relevant provision of the statute itself and thus, cannot be said to be confined to the Section.
Section 11-A and Section 53 are independent provisions that operate at different stages. Section 11-A(7) confers limited additional rights to the applicant during the interregnum before the grant of the patent, which cannot be a ground for challenging the validity of Section 53.
India is a signatory to the TRIPS Agreement. Article 33 of the agreement states that the term of protection for a patent shall not end before the expiration of twenty years counted from the filing date. The respondent argues that the implementation of a twenty-year term from the date of application is in line with the TRIPS Agreement, and therefore, there is no scope for interference by the courts.
The amended provisions of Section 53 are not unreasonable and that the twenty-year term is an improvement over the previous term provided in the unamended Section 53. The legislature has the discretion to confer rights at different stages of the patent process, and such discretion should not be interfered with by the courts.
Judgement:
The court considered the arguments presented by both the petitioner and the respondent and made the following observations and conclusions:
The court acknowledged that the petitioner’s challenge to Section 53 of the Patents Act is based on the contention that the term of a patent should commence from the date of grant, rather than the date of application.
The court noted that Section 11-A of the Patents Act confers certain additional rights on an applicant from the date of publication until the grant of the patent. These rights are limited in nature and do not include the right to institute proceedings for infringement. The court determined that Section 11-A and Section 53 operate at different stages and are not contradictory.
The court recognized that the petitioner’s argument regarding the interplay between Section 53 and Section 11-A is that the patentee loses valuable time between the application and the grant. However, the court concluded that the period between the application and the grant should be counted within the term of the patent, as it is not of practical benefit to the patentee in terms of asserting their rights based on the patent.
The court rejected the respondent’s argument that the challenge to Section 53 is barred by delay. The court stated that the challenge is not barred as long as the term of the patent has not yet expired.
The court also rejected the respondent’s claim of res judicata. The court determined that the previous dismissal of the petitioner’s challenge to the expiry of the patent was based on different grounds, and the present challenge is to the vires of Section 53 itself.
The court considered the TRIPS Agreement, to which India is a signatory. The court noted that Article 33 of the agreement provides that the term of protection for a patent shall not end before the expiration of twenty years counted from the filing date. The court concluded that the implementation of a twenty-year term from the date of application is in line with the TRIPS Agreement and does not warrant interference by the courts.
The court emphasized that the legislature has the discretion to confer rights at different stages of the patent process, and this discretion should not be interfered with by the courts. The court found no inherent contradiction or discrepancy in Section 53 of the Patents Act.
The court is dismissed the writ appeal by holding that Section 53 of the Patents Act, 1970 is intra vires the Constitution.
Extension to 20-year patent term:
Meanwhile, it should be noted that patent terms in several countries can be extended beyond the standard 20 years to compensate for time lost during regulatory approval processes, particularly for pharmaceuticals and agrochemicals. The European Union offers Supplementary Protection Certificates (SPCs) for up to five additional years. The United States allows extensions of up to five years, with the total term not exceeding 14 years from FDA approval. Japan, South Korea, and Australia also provide similar extensions of up to five years for regulated products. These extensions ensure that inventors have sufficient time to benefit from their patents after lengthy regulatory delays
Conclusion:
The Gunjan Sinha case underscores that, unlike in several other jurisdictions, India strictly adheres to the 20-year patent term from the date of application without provisions for extensions to account for regulatory delays. While this approach complies with international agreements like TRIPS, it may not offer the same level of protection for patentees in industries with long approval processes, potentially impacting their ability to fully capitalize on their inventions compared to their counterparts in countries with patent term extension mechanisms.
In the High Court at Calcutta
Constitutional Writ Jurisdiction
Appellate Side
The Hon’ble Justice Sabyasachi Bhattacharyya
WPA No. 8691 of 2023
Gunjan Sinha @ Kanishk Sinha and another
Vs.
The Union of India and another
Judgment dated 07.05.2024
Authors:
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