Introduction:
Pre-grant opposition mechanism under Section 25(1) of the Patents Act, 1970, represents a crucial procedural juncture within a strategic framework of India’s intellectual property landscape. It stands as a final, proactive opportunity for a third party to oppose the granting of a patent before exclusive rights are formally conferred upon the applicant. Since the time of enactment, there has always been a fundamental and significant ambiguity regarding when that opportunity closes. Specifically, does one’s opportunity to oppose ended the moment the Patent Controller digitally signs the order to grant patent rights, or does the opportunity to oppose remain until the order is available to the public through the online portal of the Indian Patent office (IPO)?
On April 30, 2025, the Delhi High Court dealt with and resolved this ambiguity in Vertex Pharmaceuticals Incorporated v. Controller General of Patents & Ors. The Court has articulated a clear and unequivocal legal rule: the right to pursue a pre-grant opposition is irrevocably extinguished the moment the Controller digitally signs the decision for grant of the patent. That moment is a legally conclusive moment, notwithstanding any unrelated, ministerial functions (involving uploading the order to the IPO website or creating the patent certificate) which might be delayed by institutional inefficiencies.
The Factual Matrix of the Vertex Case
The legal dispute emerged from Vertex Pharmaceuticals’ Indian National Phase Application concerning a process for preparing a compound to treat cystic fibrosis. In the prosecution of this application, the timeline of events on November 28, 2023, was not only critical but also starkly illustrative of the legal conflict:
- The Final Grant Order: The Controller of Patents, after a hearing and review of written submissions, issued a formal order stating, “…all objections have been met. No pre-grant opposition is filed. I, therefore, hereby proceed with the grant of patent…” This order was signed, constituting the Controller’s final and conclusive decision on the application.
- The Opposition: Then an opponent filed a pre-grant opposition. Importantly, according to the IPO’s own affidavit, this was filed after the Controller signed the grant order but before it was uploaded to the website.
- The Administrative delay and IPO’s Stance: The digitally signed grant order was uploaded to the IPO website several minutes after the pre-grant opposition was filed. Citing “system limitations” that prevented the immediate generation of the patent certificate, the IPO accepted the opposition as valid. The IPO subsequently issued a notice to Vertex, compelling them to respond, and later, via an order on a miscellaneous petition. Also, the IPO maintain its stance that the pre-grant opposition is valid asserting that the grant was not “effective” until it is publicly reflected via online portals.
These sequence of events forced Vertex to file writ petitions before the Delhi High Court, challenging both the notice for opposition and the order upholding its maintainability.
Legal Rationale: Distilling Legal Principle from Procedural Chaos
Hon’ble Mr. Justice Saurabh Banerjee, at Delhi High Court, delivered a tightly reasoned judgment that cut through the procedural complexities to reaffirm foundational legal doctrines. The judgment was based on three pivotal pillars:
1. The Judicial Act vs. The Ministerial Act:
The Court drew a fundamental distinction between a judicial (or quasi-judicial) act and a subsequent ministerial act. The Controller’s decision to grant a patent, following examination and hearing, is a definitive judicial function. The act of signing the order is the formal culmination and legal expression of this function. All subsequent steps, including data entry into the “Register of Patents”, uploading the order on the website, and issuing the certificate, are merely “ministerial acts”. These acts provide evidence of the grant but are not constitutive of the grant itself. The judgment unequivocally held, “the ‘date of order’ can only be the actual date of passing of the said order and not the date of uploading. The ‘date of order’ being the relevant date, remains unchanged and unaffected by the subsequent date/act of uploading.” Consequently, for Vertex, the patent was legally granted at the moment of signing, and the opponent’s window for a pre-grant opposition had closed at that very instant.
2. Reliance on Established Precedent:
The Court bolstered its analysis by relying on the Division Bench decision of Dr. Snehlata C. Gupte v. Union of India. That decision had already established that the date of grant is the date on which the Controller passed the order on the file and that sealing the patent is a ministerial act that occurs after the grant. Crucially, the Division Bench had placed the burden of vigilance squarely on the opponent, stating, “The onus is on the person instituting the pre-grant opposition to be vigilant… and take appropriate steps for filing the representation.” The Vertex judgment reinforced this principle, making it clear that opponents cannot rely on the IPO’s administrative delays to extend their statutory deadlines.
3. The Application of the Functus Officio Doctrine
The Court affirmed a core tenet of administrative law: the doctrine of functus officio (meaning “having performed one’s office”). This doctrine dictates that once a decision-maker has made a final decision in a matter, their authority over that matter ceases. The Court agreed with Vertex’s contention that after signing the grant order on 28 November 2023, the Controller was functus officio and was no longer seized of the patent application. Therefore, he lacked the jurisdictional authority to accept or allow a pre-grant opposition filed after signing of the grant order. Citing the Bombay High Court’s ruling in Dhaval Diyora v. Union of India, the Court observed that upon a patent being granted, the ‘application for grant’ has been disposed of and a pre-grant opposition has no cognizance as it is a legal nullity.
Strategic Implications of the Verdict
The Vertex judgment has profound and immediate implications for all stakeholders in the Indian patent ecosystem:
- For Patent Applicants: This ruling is a significant protective shield. It provides much-needed legal clarity that when a hard-earned announcement is published in the “digital gap,” it is protected from last-minute oppositions (as signed by the Controller). It eliminates the risk of applicants being penalized for systemic inefficiencies entirely outside their control. Strategically, it underscores the importance of vigorously pursuing a final, signed order from the Controller. Upon obtaining the signature, practitioners can advise clients with greater confidence that the pre-grant phase is conclusively over.
- For Potential Opponents: This judgment is an unequivocal and serious message. The deadline for making pre-grant opposition is fixed and unyielding. The time for uncertain, last-minute filings, presuming a delay in the IPO’s online system, is over. The decision requires exceptional care and action. Opponents have a duty to track applications and file their submissions far ahead of any facing potential grant decisions. The defense of “non-upload” is no longer available legally, which substantively changes the opposition strategy.
- For the Indian Patent Office (IPO): The judgment is a strong, if indirect, order to the IPO to upgrade its internal processes and electronic infrastructure. The “system limitations” cited by the IPO can no longer give rise to legal uncertainties that erode the finality of the orders of the Controller. The Indian Patent Office now faces increased pressure to ensure that its ministerial acts, in particular the online publication of grant orders, are aligned as closely as possible with the judicial act of signing. This is necessary to preserve the integrity and predictability of the patent regime.
Conclusion:
The Delhi High Court’s judgment in the Vertex case is a landmark ruling that restores finality, predictability, and doctrinal purity to the patent grant process. By decisively anchoring the moment of grant to the Controller’s signature, the Court has drawn a bright legal line that prevents abuse of process and upholds the sanctity of a final administrative order. The judgment is a robust affirmation that in our digital age, the substance of a legal decision must triumph over the latency of its publication. For patent applicants, opponents, and practitioners alike, this judgment is now the definitive compass for navigating the critical, and now clearly defined, close of the pre-grant opposition window.
