By Jigyasa Pareek

The 2002 amendment of the Patents Act, 1970 marked a significant overhaul of India’s patent framework. One of the key changes introduced by the amendment was the establishment of a uniform patent term of twenty years. This provision was introduced to comply with Article 33 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which stipulates that the protection for an invention should last for a minimum of twenty years from the date of filing the application.

Prior to the amendment, the term of a patent was significantly shorter and varied depending on the type of invention. For inventions relating to a method or process of manufacturing a substance intended for use as food, medicine, or drug, the term was five years from the date of sealing of the patent, or seven years from the date of the patent, whichever was shorter (Section 53(1)(a) of the Principal Act). For all other inventions, the term was fourteen years from the date of the patent (Section 53(1)(b) of the Principal Act).

The 2002 amendment eliminated this differential treatment and established a single standard. Section 53(1) of the Patents Act, 1970 (as amended in 2002) states that “the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent”.

The 2005 amendment introduced Section 11-A, which, under sub-section (7), provides that from the date of publication of a patent application until the date of grant, the applicant will have certain rights and privileges as if the patent had been granted on the date of publication of the application, provided the applicant shall not be entitled to institute any proceeding for infringement until the patent has been granted.

The Calcutta High Court recently reaffirmed the constitutional validity of Section 53 of the Patents Act in an intra Court appeal in Gunjan Sinha @ Kanishk Sinha and Anr. vs Union of India & Ors. [MAT 903 of 2025; decision dated April 22, 2025].

Previously, in the writ petition titled Gunjan Sinha @ Kanishk Sinha and Anr. vs The Union of India & Anr. [WPA No. 8691 of 2023; decision dated May 7, 2024], the Calcutta High Court had affirmed the validity of Section 53. The petition challenged the vires of Section 53, citing it to be inherently inconsistent with Section 11-A(7) of the Act. The Petitioners’ primary contention was that Section 53 unreasonably shortens the effective protection period of a patent, as full patent rights are only conferred upon grant, while certain limited rights are conferred on the date of publication. The period between the application and grant is not of any practical benefit to a patentee insofar as the assertion of rights on the basis of the patent is concerned. They posited that the twenty-year tenure of a patent should commence from the date of its grant, or at the very least, from its publication, rather than from the date of filing the application.

The Calcutta High Court remarked that while Section 53 may not seem mutually exclusive with Section 11-A(7), they are not in conflict. The insights provided by the Court into the constitutional validity of Section 53 are as follows:

• Compliance with TRIPS Agreement: The Court reaffirmed that Section 53 is in line with Article 33 of the TRIPS Agreement, which mandates that the term of patent protection “shall not end before” the expiration of a period of twenty years from the date of filing of the application. Emphasising that the Legislation’s choice to provide patent protection for twenty years from the date of filing was within the legislative competence of the Parliament, the Court clarified that it cannot interfere with such policy choices.
• Legislative Discretion: The Court elaborated that patent rights have three distinct stages:
• Pre-Publication Stage (from the date of filing to the date of publication): During this stage, the applicant has no enforceable rights.  However, the filing date establishes a priority date which gives the applicant precedence over any subsequent applicant who may file for similar inventions.
• Publication to Grant Stage (between publication and grant): The applicant enjoys certain privileges akin to patent rights such as taking steps for regulatory approvals and commercialization of the claimed invention, except for initiating infringement proceedings.
• Post-Grant Stage (from the date of grant to the expiry of the patent term): The patentee enjoys full rights, including the right to institute proceedings for infringement.

The Court highlighted that the conferment of additional rights on publication is a matter of legislative wisdom and discretion. Noting that the Parliament’s approach to gradation of rights at each stage is not arbitrary, the Court clarified that general law can be eclipsed by according protection to a particular class of persons under any statute. The Court opined that differing perspectives alone do not justify judicial interference with Parliament’s discretion. The Court stressed that the wisdom of Parliament holds primacy in legislative matters and cannot be supplanted by the Court’s viewpoint.

Furthermore, the Court clarified that the gradation of stages and the associated rights for each stage are not unreasonably discriminatory, thereby meeting the requirements of Article 14 and overall Constitutional viability.

• Safeguarding Patentee’s Interests: The Court noted that the current statutory framework effectively protects patentees’ interests. The Court highlighted that a patentee’s rights, as defined under Section 48 of the Patents Act, become effective from the date of application. Upon grant, these rights relate back to the date of application in terms of Section 53, allowing the patentee to sue for infringement even for the period between the date of application and grant. Additionally, the Court observed that the standardized twenty-year tenure under the amended Section 53 is a significant improvement over the previous regime, which had varying patent terms of five, seven, and fourteen years from different points of commencement. The Court also emphasized that the conferment of additional rights and privileges by Section 11-A(7) is an essential improvement because before Section 11-A(7) was introduced, applicants had no specific rights for the period between publication and grant. These additional rights provide applicants with some level of protection and recognition for their inventions while they await the grant.
• Assessment of Section 53’s Legislative Framework:  The Court reasoned that Sections 45 and 53 are not contradictory as they both specify the effective date of a patent as the date of application filing. This alignment, the Court explained, underscores the coherence in legislation regarding the commencement of patent rights.

In assessing the relationship between Sections 53 and 11-A, the Court determined that these provisions serve different functions. While Section 11-A(7) provides additional rights during the interim period between publication and grant, it does not affect the commencement of the patent term under Section 53. The Court found that these provisions operate in different spheres and do not conflict. The Court also reasoned that the conferment of limited rights prior to the grant of a patent does not justify demanding additional rights from the application date.

Following the dismissal of the writ petition, the Petitioners preferred the intra Court appeal. Notably, the aforementioned writ petition was preceded by an earlier writ petition [WPA No. 1963 of 2022], wherein the Petitioners had sought an extension of their patent term by fifteen years, contending that the undue delay in the grant of the patent constituted harassment, warranting compensatory extension of the patent term. The patent was granted after seven years from the date of application. The said writ petition was dismissed; however, the Petitioners were granted liberty to pursue a claim for damages against the authorities for the delay. Subsequently, the Petitioners filed an appeal before the Division Bench wherein they raised the issue of constitutional validity of Section 53. This appeal too was dismissed, though the Court granted them liberty to seek review before the Writ Court. Pursuant thereto, the Petitioners filed a review application [RVW 224 of 2022], which was likewise dismissed. It was thereafter that they filed the aforementioned writ petition [WPA No. 8691 of 2023], seeking to quash Section 53 as ultra vires to the Constitution of India.

The intra Court appeal sought withdrawal/amendment of Section 53 to bring it in conformity with Section 11-A(7). It was contended that, since a patent is granted for a fixed period, the Act should prescribe a specific timeline for grant to prevent undue delays. Furthermore, it was argued that the obligation to pay renewal fees even for the period prior to grant, during which the patentee cannot enforce full rights, amounts to double jeopardy.

The Division Bench upheld the Single Judge’s reasoning and clarified that Section 53 and Section 11-A(7) serve distinct purposes and the rights arising out of these provisions cannot be superimposed or read together to give a different meaning than what is intended by the statute. The Court clarified that Section 53 becomes applicable only once the applicant’s rights are crystallised upon grant of the patent.

In response to the appellant’s contention that Section 11A(7) bars the institution of infringement proceedings during the pre-grant period, the Court observed that the petition neither pleaded any specific instance of infringement nor demonstrated that the petitioner had suffered any prejudice due to the operation of the said provision. Since the Appellant/Petitioner primarily challenged the constitutional validity of Section 53, the Court underscored that such a challenge ought to have been supported by definite grounds, which were lacking.

The Court further noted that the power to legislate in a particular manner or otherwise lies with the legislature, not with a Court exercising writ jurisdiction under Article 226 of the Constitution. The Court remarked that its duty is to interpret the law, not enact the law.

The Court also reinforced the principle that patent rights are not common law rights. They are created and limited by the Patents Act, and so an action for infringement is maintainable only if the patent is granted. The Court referred to Section 62(2) to reinforce this point. Section 62(2) stipulates that when a lapsed patent is restored, no infringement proceedings can be commenced or prosecuted for the period between its lapse and its restoration publication.

The Court also noted that unlike in the United States, where a mechanism for Patent Term Adjustment (PTA) compensates patentees for procedural delays in grant, no such framework exists in Indian law. It referred to the report of the expert committee constituted by the Delhi High Court in Nittoo Denko Corporation v. Union of India, which concluded that a PTA-like provision may not be suitable for India where the twenty-year patent term is already considered too lengthy to block genuine competition.

In view of the foregoing, the Court dismissed the appeal.