Full Judgment Text
REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 5588 OF 2008
(Arising out of SLP (C) No.21010 of 2006)
Glaxo Smith Kline PLC and Ors. ...Appellants
Versus
Controller of Patents & Designs and Ors. ...Respondents
J U D G M E N T
Dr. ARIJIT PASAYAT, J.
1. Leave granted.
2. Order passed in four appeals filed by the respondents
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questioning correctness of order dated 10 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
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exclusive marketing right according to law that existed on 3
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:
The writ petitioners filed an application for grant of
patent under Section 5(2) of the Patents Act, 1970 (in short
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the ‘Act’) on 28 August, 1998. Subsequently, on 30 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.
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The Controller of Patent, however, by order dated 3
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
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the High Court set aside the order dated 3 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
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16 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.
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On June 9, 2005 the writ petitioners filed another writ
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application thereby challenging the order dated 28
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
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Act w.e.f. 1 January, 2005. According to the appellants
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before the High Court, with effect from 1 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-
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A of the Principal Act which were pending on 1 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
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EMR after 1 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.
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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).
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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
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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
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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.
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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
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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
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