In 𝘝𝘦𝘳𝘵𝘦𝘹 𝘗𝘩𝘢𝘳𝘮𝘢𝘤𝘦𝘶𝘵𝘪𝘤𝘢𝘭𝘴 𝘷. 𝘊𝘰𝘯𝘵𝘳𝘰𝘭𝘭𝘦𝘳 𝘰𝘧 𝘗𝘢𝘵𝘦𝘯𝘵𝘴 (Delhi High Court, April 2025), a pre-grant opposition was filed after the Controller had signed the patent grant order, but before this order was uploaded to the IPO website.
On November 28, 2023, 𝘁𝗵𝗲 𝗖𝗼𝗻𝘁𝗿𝗼𝗹𝗹𝗲𝗿 𝘀𝗶𝗴𝗻𝗲𝗱 𝘁𝗵𝗲 𝗼𝗿𝗱𝗲𝗿 𝗴𝗿𝗮𝗻𝘁𝗶𝗻𝗴 𝘁𝗵𝗲 𝗽𝗮𝘁𝗲𝗻𝘁. After this signing but before the order was uploaded, the opposition was filed at 17:18:17.813 hours. The order was subsequently uploaded at 17:25:16.423 hours. As the court noted, it was “undisputed” by all parties that the signing occurred before the opposition filing.
The legal question was straightforward: 𝗗𝗼𝗲𝘀 𝗴𝗿𝗮𝗻𝘁 𝗵𝗮𝗽𝗽𝗲𝗻 𝘄𝗵𝗲𝗻 𝘁𝗵𝗲 𝗖𝗼𝗻𝘁𝗿𝗼𝗹𝗹𝗲𝗿 𝘀𝗶𝗴𝗻𝘀 𝘁𝗵𝗲 𝗼𝗿𝗱𝗲𝗿? 𝗢𝗿 𝘄𝗵𝗲𝗻 𝗶𝘁’𝘀 𝘂𝗽𝗹𝗼𝗮𝗱𝗲𝗱 𝗼𝗻𝗹𝗶𝗻𝗲?
𝗧𝗵𝗲 𝗖𝗼𝘂𝗿𝘁 𝗵𝗲𝗹𝗱: 𝘁𝗵𝗲 𝗱𝗮𝘁𝗲 𝗼𝗳 𝘁𝗵𝗲 𝗴𝗿𝗮𝗻𝘁 𝗶𝘀 𝘁𝗵𝗲 𝗮𝗰𝘁𝘂𝗮𝗹 𝗱𝗮𝘁𝗲 𝘁𝗵𝗲 𝗖𝗼𝗻𝘁𝗿𝗼𝗹𝗹𝗲𝗿 𝘀𝗶𝗴𝗻𝗲𝗱 𝘁𝗵𝗲 𝗼𝗿𝗱𝗲𝗿, not the later date of its upload. Uploading was characterized as a ministerial act.
The Court rejected the opposition, holding that the patent was already granted when the order was signed—even though the opposition was filed before the order was uploaded.
This ruling exposes a procedural gap at Indian Patent Office’s end: a critical period when a 𝗱𝗲𝗰𝗶𝘀𝗶𝗼𝗻 𝗵𝗮𝘀 𝗯𝗲𝗲𝗻 𝗺𝗮𝗱𝗲 𝗶𝗻𝘁𝗲𝗿𝗻𝗮𝗹𝗹𝘆 𝗯𝘂𝘁 𝗶𝘀𝗻’𝘁 𝘆𝗲𝘁 𝘃𝗶𝘀𝗶𝗯𝗹𝗲 𝘁𝗼 𝘁𝗵𝗲 𝗽𝘂𝗯𝗹𝗶𝗰.
Looking at the 𝗨𝗦𝗣𝗧𝗢 system for potential solutions, we see an interesting parallel. When a US patent application is allowed internally but the formal notification hasn’t been sent, the system shows a specific status: “𝗔𝗹𝗹𝗼𝘄𝗲𝗱 – 𝗡𝗼𝘁𝗶𝗰𝗲 𝗼𝗳 𝗔𝗹𝗹𝗼𝘄𝗮𝗻𝗰𝗲 𝗡𝗼𝘁 𝗬𝗲𝘁 𝗠𝗮𝗶𝗹𝗲𝗱.”
This status serves an important function—it signals to all stakeholders that a decision has been made internally, even if it hasn’t been formalized yet.
The 𝗰𝗼𝗺𝗽𝗮𝗿𝗶𝘀𝗼𝗻 𝗵𝗶𝗴𝗵𝗹𝗶𝗴𝗵𝘁𝘀 𝗮𝗻 𝗼𝗽𝗽𝗼𝗿𝘁𝘂𝗻𝗶𝘁𝘆:
· At the USPTO, the period between decision (Allowed) and publication (Notice of Allowance mailed) is named and visible
· At the IPO, this same period exists (between signing and uploading) but remains invisible to external parties
The Vertex case demonstrates how this invisibility can lead to confusion and litigation. A similar status update showing “Grant Order Signed – Awaiting Upload” could provide much-needed transparency.
While India’s patent system has its own unique structure and requirements, this specific feature could be adapted to prevent similar situations in the future, benefiting applicants, potential opponents, and the general public alike.
Read more at: https://www.linkedin.com/posts/rahuladey_vertex-pharmaceuticals-v-controller-of-patents-ugcPost-7324362247890251776-RB1s?
