[This post is authored by SpicyIP intern Hruthika Addlagatta. Hruthika is a 1st year law student from NALSAR University of Law, Hyderabad.]
Can your patent suddenly have a pre-grant opposition if the patent office’s database had a delay in uploading the patent grant? Should your trademark expire if the IP offices didn’t remind you to renew it? The Delhi High Court recently responded to these two questions. The two decisions passed on April 22, 2025 and April 30, 2025, highlight how crucial procedures are in IP administration and showcase how applicants suffer due to procedural lapses on the part of the IP offices.
In the first case- Vertex Pharmaceuticals Inc. v. Controller General of Patents, the Controller of Patents signed a grant order on November 28, 2023, that granted Vertex a patent on solid forms of Tezacaftor and processes for their preparation, used in the treatment of cystic fibrosis. Owing to some technical difficulties, the order wasn’t uploaded until 5:25 PM that day. In a surprising twist of timing, a different party filed a pre-grant opposition at 5:18 PM, only 7 minutes before the upload, but after the Controller had signed the order granting the patent. The IPO subsequently issued a notice and ordered the reopening of the examination that effectively cancelled Vertex’s patent grant.
Justice Saurabh Banerjee, in his judgment delivered on April 30, 2025, emphatically clarified that ‘the date of order can only be the actual date of passing of the said order and not the date of uploading.’ The Court further held that ‘uploading of order and certificate issuance are ministerial formality which is immaterial’ to the legal effect of the decision. For this, the Court relied on the decision of Dr. Snehlata C. Gupte v. Union of India (DHC). Importantly, the Court introduced the principle of functus officio – meaning once the Controller signed the grant order, they no longer had jurisdiction over the matter and couldn’t reopen it. On this, the Court relied on Dhaval Diyora v. Union of India and Ors. (BHC). The Court noted that ‘delay in uploading of the order was due to technical/systemic limitations of the IPO and not at the end of the petitioner’ and therefore Vertex could not be ‘made liable to suffer for the delay or faulted or blamed therefor.’ Importantly, the Court held that applicants should not bear the consequences of errors caused by the IPO’s technical limitations.
Previously, on April 22 the Delhi High Court overturned an Intellectual Property Appellate Board (IPAB) order that cancelled the “Davidoff” trademark. The Court decided that trademark proprietors do not have the onus of bearing the repercussions of the Registry’s failure to issue important notifications, especially reminders about imminent trademark expiration. In this case, the proprietor had not received the statutory renewal notice from the Trademark Registry, which led to the missed deadline. The Court observed that such lapses by the authorities cannot prejudice the rights of compliant proprietors. This decision reinforces that slip-ups by the authorities in a technical capacity shouldn’t penalise IP owners who have kept everything in order.
These cases, along with some other previous instances discussed here, here, and here, highlight a broader issue within India’s IP administration. They reveal a pattern in which procedural lapses threaten substantial IP rights. The Vertex pharma case exposes concerns about the reliability of the Indian Patent Office’s (IPO) digital infrastructure, alongside the lack of clarity regarding when a grant order legally takes effect — is it upon signing, uploading, or some undefined intermediary stage? When a pre-grant opposition is filed just seven minutes before the grant order is uploaded, leading to the reopening of examination, it raises a critical question: if a decision made after a careful technical examination can be overturned in a mere seven minutes, what does that say about the quality and thoroughness of the original examination? Although the Court focused on the issue of when an order attains finality- when it is signed or when it is uploaded, the above instance suggests that the real issue may lie in presumably inefficient reviews being hidden behind a technicality. The absence of clear, transparent protocols only adds to the uncertainty for applicants who have already navigated the often complex and time-consuming examination process in good faith..
On the other hand, the Davidoff trademark case necessitates more dependable notification systems at the registry. The Registry’s notification system seems to function more as a formality than as a robust mechanism to uphold trademark rights. This raises serious questions about the Registry’s resource allocation, technological capabilities, and internal accountability frameworks.
On the face of it, such procedural obstructions may seem trivial, but demand attention as India’s prominence as a global IP hub rises. These are systemic barriers to effective IP protections by creating unnecessary litigation battles and increasing costs for stakeholders. The Court’s take on both cases mirrors a recognition that procedural rules ought to serve, not subvert, substantial IP rights. Clearer rules, updating technological infrastructure, and a substance-based approach that prevents minor technicalities from determining pertinent outcomes pave a better way forward for IP administration in India.
These cases are stark reminders of the need for caution. Although courts have shown willingness to correct administrative mishaps, concerned parties would benefit from implementing their own safeguards like monitoring application statuses more often, maintaining a comprehensive record of all communications, and perhaps most crucially, not relying exclusively on official notifications for critical deadlines.