Introduction
This case involves two writ petitions filed by Vertex Pharmaceuticals Inc. challenging the issuance of a notice and a subsequent order by the Controller General of Patents that allowed a pre-grant opposition to proceed, despite the fact that the patent had already been granted. The core legal question before the Delhi High Court was whether a pre-grant opposition is maintainable after the patent has been granted by the Controller but before the grant order is uploaded on the official patent office website.
Factual Background
Vertex Pharmaceuticals, a biotechnology company focusing on therapies for cystic fibrosis, filed Indian Patent Application No. 202017026584 on June 23, 2020, through the national phase of a PCT application. The application was examined, and after objections were addressed, the Controller passed an order on November 28, 2023, granting the patent. This order was signed and finalized at around 17:25 hours.
However, before the patent grant order was uploaded on the Indian Patent Office website, a third party (respondent no. 3) filed a pre-grant opposition at around 17:18 hours on the same day. Citing this opposition, the Controller later issued a notice on December 8, 2023, and an order on April 5, 2024, stating that the patent would be re-examined in light of newly cited prior art references submitted in the opposition.
Petitioner’s Arguments
Vertex argued that the Controller, having signed and finalized the grant order, had already exercised his statutory authority and become functus officio. Therefore, any opposition filed after that moment was not maintainable. The company emphasized that uploading the order and issuance of the certificate were merely ministerial acts and should not affect the legal finality of the grant.
It was also argued that entertaining the pre-grant opposition after the patent was granted was not only contrary to the Patents Act but also prejudicial, particularly since no opposition was pending at the time of the grant order.
Respondents’ Submissions
The Patent Office and respondent no. 3 countered that the grant of the patent only becomes effective upon the uploading of the Controller’s order on the IPO website. Since the opposition was filed before the upload occurred—even if after the order was signed—it should be deemed valid. They argued that systemic delays in uploading grant orders should not deprive opponents of their rights to file pre-grant oppositions.
Court’s Analysis
The Delhi High Court ruled in favor of Vertex, holding that the date of signing the order by the Controller is the legal date of grant, not the date of upload. It concluded that once the Controller signs the grant order, he becomes functus officio and cannot subsequently entertain a pre-grant opposition. The Court observed that the uploading of the order or issuance of a certificate is purely procedural and does not determine the validity of the grant.
Citing earlier decisions including Dr. Snehlata C. Gupte and Dhaval Diyora, the Court reaffirmed that the act of granting a patent is complete once the Controller exercises his discretion and passes a signed order to that effect. Any action thereafter, including online publication, is merely evidentiary or administrative.
Final Decision
The Delhi High Court allowed both writ petitions, quashing the impugned notice dated December 8, 2023, and the order dated April 5, 2024. The Court held that the Controller acted beyond his jurisdiction by entertaining the opposition and reopening the case. It confirmed that the patent had been validly granted in favor of Vertex, and no further opposition under Section 25(1) could be entertained thereafter.
Case Title: Vertex Pharmaceuticals Inc. Vs Controller General of Patents
Date of Order: 30 April 2025
Case No.: W.P.(C)-IPD 10/2024
Neutral Citation: 2025:DHC:3096
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Justice Saurabh Banerjee
