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Sunday, September 20, 2009


Supreme Court of India in a landmark judgement as to interpretation of Indian Patents Act and to the maintainability of challenge to a provision after it is repealed, held that challenge to Controller’s refusal to application for Exclusive Marketing Rights of GSK is maintainable even though the Act under which EMR application could be granted was repealed on January 1, 2005.
GSK has filed a black box application in respect of product patents in 1998, as before 2005 product patent application were neither examined not Granted, GSK in the year 2000 filed an EMR application for grant of exclusive license to market the product in India for 5 year. The application was rejected in 2002 against which GSK preferred a writ petition before High Court. In 2004 the matter was decided in favour of GSK by the High Court and Ld. Single Judge was pleased to allow re-examination of the EMR application of GSK. However, pursuant to order of the High Court, the application for EMR was re-examined and was again rejected on 28-12-2004 just 3 days before the provision relating to EMR was repealed by the Indian Patents Act, 2005.
GSK again preferred a writ petition against the order of the Controller rejecting the EMR application, the said writ was objected in view of repealing of provision relating to EMR as India started examining as well as Granting product patent applications in the Patents (Amendment) 2005 Act. It was contended by the Patent office that 2005 Amendment has repealed the provision for granting EMR, therefore leaving no scope for further consideration of the EMR application and in view of Section 78 of the Patent (Amendment) Act 2005, the pending applications for grant of EMR filed before January 01, 2005 i.e. GSK’s application for EMR shall be deemed to be as a request for Examination for grant of patent.
Section 78 of the Amending Act reads as follow:

78. Transitional Provision- (1) Notwithstanding the omission of Chapter IVA of the principal Act by section 21 of this Act, every application for the grant of exclusive marketing rights filed under that Chapter before the 1st day of January, 2005, in respect of a claim for a patent covered under sub-section (2) of section 5 of the principal Act, such application shall be deemed to be treated as a request for examination for grant of patent under sub-section (3) of section 11B of the principal Act, as amended by this Act.
This was contested by GSK, saying that on January 01, 2005 no such application for Grant of EMR was pending, in fact the application was disposed off even before the amending provision came into effect. Therefore right to challenge the impugned order rejecting the EMR application before any appropriate forum vested in Petitioner before the amending provision of Act came into effect, hence said Section 78 of the Amending Act has no application to the facts of the case. But the High court differed and decided the matter in favour of the Controller of Patents.

GSK filed a Special Leave Petition under Article 136 of the Constitution of India before the Supreme Court of India against the said order of the High Court. The Supreme Court observed that the Amending Act is silent on the issue of maintainability of pending proceedings initiated under the repealed Act, therefore provision of the General Clauses Act of 1897 shall apply.

Section 6 of the General Clauses Act 1897 reads as follows:
6. Effect of repeal.- Where this Act , or any Act 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—
c). affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or
The above provision makes it amply clear that where any enactment is repealed, it shall not affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed, unless, a different intention appears. Accordingly the Supreme Court held the GSK’s petition was maintainable.

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