IPAB Does not "Grant" but "Orders to Grant" a Patent

In my article "The Fate of a Pre-Grant Opposition Filed after Refusal of Patent Application and During the Pendency of an Appeal at IPAB" published on SpicyIP, discussing, amongst other things, When is a Patent is deem ‘Granted’ in normal course and in case where the Board orders the ‘grant’ of the patent (by reversing the refusal of the Controller), I presented a view that, under the Patents Act, a patent may not be 'granted' by the IPAB, the Board can only 'direct' the Controller to grant a patent. The Board’s "order" to grant a patent is actually not the “Patent Grant Order” but a mandamus from the Board, for the Controller to act in accordance with the order (and grant the patent, when it is ordered so). Accordingly a patent is not deemed granted untill the Controller gives effect to such order of the Board. Relevant excerpt from the article is reproduced herein -

“... On combined reading of the above, it can be inferred that even upon reversal of the Controller’s order by the IPAB, the patent shall not be deemed granted immediately.

The Board may order the Controller to act in accordance with their order or the judgement,

but it is the Controller, who ‘shall give effect’ to the order and amend or rectify the register accordingly.

The order of the Board to ‘grant’ the patent is, therefore, a mandamus for the Controller... and is not an ‘order of grant’.

The patent would not be deemed granted until the Controller gives ‘effect’ to the order. ”

Now, this interpretation of the provision, seems to have found a reasonable endorsement from the IPAB board itself. The same is imperative from the language used by the board in their orders while directing the grant of patent by reversing the Controller's Refusal orders. Albeit, the exact language used by the board is specific to the composition of the board. While the board has been Chaired by Hon. Shri Justice Manmohan Singh throughout the period under consideration (i.e. since the new IPAB website is functioning and providing online access to the Board's orders), there has been two Technical Members on board during this period. Though as per this post, the Technical Member (Patents) was appointed on 21st July 2020, the orders issued until August 2020 were issued from the Board comprising Hon. Dr. Onkar Nath Singh - Technical Member (PVPAT) [the "1st Board"] and those issued after September 2002 were issued from the Board comprising Hon. Dr. B.P. Singh - Technical member (Patents) [the "2nd Board"].

The language or the expressions used by the two boards on this issue is apparently different. The orders from the Board-1 are not consistent and clear in their expression on the 'Grant' aspect - some of those orders either granted the patent (directly, without reference to the Controller) while others 'directed' the Controllers to grant the patent (forthwith or at the earliest). But the orders from the Board-2 are very much clear and expressly endorses the proposed interpretation of the 'grant' and 'order to grant'. The orders from Board-2 directed the Controller to Grant the Patent strictly within 2 or 3 weeks from issuance of the Board’s orders. [Specific instances and excerpts from the order are reproduced herein after the discussion.]

The Express language used by the Board-2 in their orders wherein the Board directed the Controller to Grant the patent within specified timeline, supports the inference that, under the Scheme of the Patent Act - i) IPAB does not 'grant' a patent but it is the Controller who has been vested with the powers to do so; ii) the IPAB board can only direct the Controller to grant a Patent; and iii) the order of the IPAB board is a mandamus for the Controller to act in accordance; (and hence, a patent is still pending and 'not granted' till the Controller gives effect to the order of the Board and a ‘pre-Grant’ opposition can be filed till that time before the Controller).

The specific expressions used by both the boards are as reproduced hereinafter. The Chairman of the board, as discussed, has been constant, so the decision from both the Boards have been identified by the Technical Member thereon.

•  “45. We allow the application of patent in hand on Indian Patent Application No. IN/PCT/2002/705/DEL in favour of the appellant.” - OA/17/2020/PT/DEL – Order dated 20/07/2020 - Dr. Onkar Nath Singh
• “42. The Assistant Controller, Patents & Designs, New Delhi, is hereby directed to grant Patent as claimed by the appellant and proceed with the application as per rules.” - OA/03/2017/PT/CHN – Order dated 07/08/2020 - Dr. Onkar Nath Singh
•  “59. In the light of above, the impugned order is set-aside. The appeal is accordingly allowed. It shall be proceeded further for grant of Patent.” - OA/2/2016/PT/MUM – Order dated 21/08/2020 - Dr. Onkar Nath Singh
•  “29. In the light of above the impugned order dated 12 August, 2014 is set by allowing the appeal and we direct the Respondent to grant a patent on the subject divisional application.” - OA/6/2015/PT/MUM – Order dated 25/08/2020 - Dr. Onkar Nath Singh
•  “36. In view of the impugned order dated 27th February 2015 passed by the Respondent No. 1 is set aside. The patent be granted forthwith. The appeal is allowed.” - OA/33/2015/PT/KOL – Order dated 25/08/2020 - Dr. Onkar Nath Singh
• “22. The Respondent no. 1 be directed to grant patent in the application no. 2745/KOLNP/2009 dated 28th July 2009 and to publish such grant under Section 43(2) of the Act at the earliest.” OA/25/2015/PT/KOL – Order dated 25/08/2020 - Dr. Onkar Nath Singh
•  “46. In the light above, the impugned order set aside by allowing appeal. The patent be granted forthwith.” - OA/40/2015/PT/KOL – Order dated 25/08/2020 - Dr. Onkar Nath Singh
• “37. The Controller of Patents, Patent office Mumbai, is hereby directed to grant the patent as claimed by the appellant and proceed further with the case in accordance with law.” OA/7/2016/PT/MUM – Order dated 12/10/ 2020 - Dr. B.P. Singh:
• “19. Keeping in view the above facts, we set aside the impugned order of respondent no 2 and direct respondent no. 2 to grant the patent in respect of the invention described and claimed in claims 1-3 of the instant application no. 8094/DELNP/2008; strictly within 2 weeks from issuance of this orders.” OA/66/2020/PT/DEL – Order dated 27/10/2020 - Dr. B.P. Singh:
•  “12. The respondent is directed to grant the patent on claims 1-6 strictly within two weeks from the date of filing of the amended set of claims by the appellant.” OA/26/2014/PT/MUM – Order dated 09/11/2020 - Dr. B.P. Singh
•  “11. We, therefore, set aside the impugned of the respondent dated 27/08/2019 and direct the respondent to grant the patent on the basis of the claims on record to the appellant, strictly within 2 weeks from the issuance of this order.” OA/1/2020/PT/CHN – Order dated 08TH DAY OF DECEMBER, 2020 - Dr. B.P. Singh
•  “17. We, therefore, set aside the impugned order dated 03/01/2020 issued by the respondent, and direct the respondent to grant the patent within 3 weeks from the issuance of this order.” OA/9/2020/PT/CHN – Order dated 21/12/2020 - Dr. B.P. Singh
•  “11. We, therefore, set aside the order of respondent no.2 and direct him to grant the patent on the amended set of claims 1-7 within 3 weeks from the issuance of this order” OA/10/2020/PT/KOL – Order dated 21/12/2020 - Dr. B.P. Singh