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Petitioner: PFIZER PRODUCTS INC. through Authorized Signatory and 2 otherss VS Respondent: HILTON PHARMA (PRIVATE) LIMITED through Chief Executive/Director/Secretary/Principal Officer
Court Name: Sindh High Court Judge(s): Munib Akhtar Title:PFIZER PRODUCTS INC. through Authorized Signatory and 2 otherss vs
HILTON PHARMA (PRIVATE) LIMITED through Chief Executive/Director/Secretary/Principal Officer Case No.: Suit No,647 of 2008 Date of Judgment:2015-01-27 Reported As: 2015 CLD 1384 Result: Plaint rejected Judgment ORDER MUNIB AKHTAR, J.---This suit arises under the Patents Ordinance, 2000 ("2000 Ordinance"). The plaintiffs, who claim interim injunctive relief under section 22 of the said Ordinance, filed C.M.A. 3937/2008 on which ad interim orders were made on 30-4-2008. Thereafter, the defendant filed C.M.As. Nos. 4300/2008 and 4301/2008. The latter seeks recall of the ad interim orders, while the former is under Order VII, Rule 11, C.P.C. Ultimately the three applications were heard by me in terms as explained in the order of 12-11-2014, which was as follows: "I have heard learned counsel for the respective parties on the C.M.As. Mentioned in the order of the previous date. In respect of these C.M.As. a preliminary question has arisen with regard to the proper, interpretation and application of section 22 of the Patents Ordinance, 2000. The nature of issue with regard to the interpretation of the said section is such that it is in fact in the nature of a jurisdictional objection. 1 have heard learned counsel on this basis only and at my direction, learned counsel have not addressed their respective cases on the merits of these applications. Order in these C.M.As. Is, therefore, being reserved accordingly by treating the issue that has been raised and on which submissions have been made as being in the nature of a jurisdictional objection." 2. Thus, the entire matter turns on a consideration of the proper meaning and application of section 22. In order to set the stage, it will be necessary to state a few facts. The plaintiffs are part of the well known Pfizer group, a giant pharmaceutical multinational. They (it is not necessary for present purposes to distinguish among them) hold two foreign patents (one US and the other
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registered in Japan) for a pharmaceutical drug known by the generic name pregabalin (and sold by Pfizer under the trade name Lyrica). On the basis of these patents the plaintiffs applied for registration of patents in Pakistan. The two applications were examined by the Patent Office and accepted (sometime in 2007) for advertisement in the official Gazette as required by section 21 of the 2000 Ordinance. The defendant filed objections to both applications. The applications and the opposition remain pending although several years have passed. Of course, it is only on a successful resolution of those matters that the plaintiffs will be entitled to the grant of the patents (i,e, their sealing). The present suit has been brought during the pendency of the aforesaid proceedings by relying on section 22. The plaintiffs seek injunctive relief restraining the defendant from acting in any manner as would infringe the patents yet to be granted. The defendant on the other hand, while also relying on section 22 contends that until and unless the patents are sealed, the plaintiffs are not entitled to any such relief. Indeed, the defendant submits that the plaint ought to be rejected. I may note that the defendant also filed two suits in this Court against the plaintiffs in 2008, which are pending adjudication. However, it is not necessary to advert to that litigation for present purposes. 3. Section 22 is not new. It had its equivalent in section 7 of the predecessor legislation, the Patents and Designs Act, 1911 ("1911 Act"). It is however a somewhat obscure provision. It appears to have lain undisturbed all these decades, at least in the sub-continent, in the sense that despite diligent efforts by learned counsel no reported case was found where the court had to deal with it and consider its meaning and scope. That moment, it appears, has now arrived. It will be convenient to set out the provision at the outset. I may note that section 22 as originally enacted was in form rather different from the shape it now has. The section was substituted in its entirety by the Patents (Amendment) Ordinance, 2002 ("Amending Ordinance"). I begin with section 7 of the 1911 Act: "7. Effect of acceptance of complete specification.---After the acceptance of an application and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application: Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed." Section 22, as originally enacted and as in force from 2002 onwards, was, and is, as follows: As original enacted As in force since 2002 22. Effect of acceptance of complete specification.---On and from the date of advertisement of the complete specification and until the date of sealing of a patent in respect thereof, the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement of the acceptance of the complete specification: Provided that the applicant may institute any proceedings for infringement without waiting for its acceptance and sealing, and a court may grant such relief by way of an injunction restraining the infringement, if the court is satisfied that the applicant is the true proprietor of the22. Effect of acceptance of complete specification.---After the acceptance of an application and until the date of sealing a patent in respect thereof, or the expiration of the time for sealing, the applicant shalt have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the application:
Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed.
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invention and shalt be properly registered as a patentee and shall suffer irreparable loss if infringement of its patent is not stopped: Provided further that the applicant shall not be able to recover any damages against the infringer for any infringement of its invention taking place before the sealing of the patent. It will be seen that, at first appearance at any rate, the provision now in force is significantly different from that as originally enacted. It is now in form exactly as was section 7 of the 1911 Act. The plaintiffs contend that notwithstanding this, the present suit is maintainable and they are entitled to interim injunctive relief. The defendant on the other hand contends that by reason of the provision as actually in force, the suit is not maintainable and the plaint ought to be rejected. (For convenience, I will hereinafter refer to section 22 as originally enacted as the "original section 22" and to the section as in force since 2002 as the "present section 22".) 4. Learned counsel for the plaintiffs referred to section 22 and also to section 67(4) of the 2000 Ordinance (reproduced below). Learned counsel submitted that the first proviso of the original section 22 was balanced by section 67(4) and put the person referred to in the latter section in the same position as a person dealing with a sealed patent. Referring to the present section 22 learned counsel submitted that the proviso could not take away what was granted by the main provision itself, which gave to the applicant the same ("like") rights and privileges as would be a patentee's entitlement under a sealed patent, and from the date of the acceptance of the specification. It was contended that the remedy so made available by law had to be preserved and not destroyed and the proviso had to be construed accordingly. Learned counsel also referred to section 30 of the 2000 Ordinance, which sets out the rights conferred by a patent. It was submitted that those rights had to be read into the main part of section 22. Reliance was also placed on section 61(2). Section 61 relates to the remedies available on a patent and subsection (2) provides for provisional measures. Learned counsel also referred to a number of judgments with regard to the proper interpretation of provisos. Learned counsel further submitted that the 1911 Act had no equivalent to section 67 of the 2000, Ordinance. It was pointed out that section 67 had remained the same throughout; the Amending Ordinance had not touched this provision. Thus, subsection (4) continued to be in force. It was submitted that the interpretation put forward for the defendant for the present section 22 would rob section 67(4) of all meaning and effect. Referring to the second proviso to the original section 22 learned counsel submitted that it had only a limited effect and scope. The "damages" therein referred meant only that loss as was over and above the actual loss, and it was this that could not be recovered. The remedy of the applicant was barred to that extent alone. However, on the interpretation canvassed for the present section 22 the applicant was denuded of all remedy and hence the purpose and effect of the section was wholly destroyed. This could not be the true meaning of the provision. The plaintiffs were entitled to their rights and privileges in terms thereof and to the remedy of interim injunctive relief. Both the suit and the application for such relief were maintainable. 5. Learned counsel for the defendant submitted that the present section 22 had to be interpreted as it stood, and as so applied, the plaintiffs had no case. The provision was clear on the face of it Learned counsel submitted that sections 61 and 67 had nothing to do with section 22, which had to be applied on its own. The proviso created a complete bar to any suit for infringement and that was all that there was to it Learned counsel submitted that since an application being opposed (as was the situation at hand) could ultimately be rejected the interpretation put forward by the
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plaintiffs would put an unsuccessful applicant in an advantageous position and give him a right that ultimately, he could be found not to have. Sections 61 and 67 would come in play once, and only if, the patent was seated. In the intervening period, the proviso ensured that no proceedings could be launched. Learned counsel however, accepted that if the application ultimately proved successful and the patent was sealed, then the applicant (now patentee) could be entitled to damages even for the prior period. But, it was emphasized, no suit and certainly no relief by way of an injunction, final or interim, could be granted before the a sealing of the patent. Learned counsel also referred to certain case-law on the interpretation of provisos. As regards subsection (4) of section 67 it was contended that the proviso could not be interpreted by reading backwards from subsection (4), which had been rendered redundant by reason of the substitution made in section 22 in 2002. 6. I have heard learned counsel as above, seen the record and considered the case-law. Reference has been made to subsection (4) of section 67. As presently relevant section 67 is as follows: 67. Power of Court to made declaration as to non-infringement.---(1) A declaration that the use by any person of any process, or the making or use or sale by any person of any article, does not or would not constitute an infringement of a claim of a patent may be made by the Court in proceedings between that person and the patentee or the holder of an exclusive license under the patent, notwithstanding that no assertion to the contrary has been made by the patentee or licensee.... (3) The validity of a claim of the specification of a patent shall not be called in question in proceedings for a declaration brought by virtue of this section, and accordingly the making or refusal of such a declaration in the case of a patent shall not be deemed to imply that the patent is valid. (4) Proceedings for a declaration may be brought by virtue of this section at any time after the date of the publication of the complete specification in pursuance of an application for a patent, and references in this section to the patentee shall be construed according. 7. When the main part of section 22, both as originally enacted and as now in force, is considered, it appears that it seeks to place the applicant in the same position as the patentee. This is clear from the words "like privileges and rights", which of course also appeared in section 7 of the 1911, Act. However, an applicant is not the patentee and, as correctly submitted by learned counsel for the defendant, it could be that in the end the application is defeated and the patent refused, either in whale or in part. Therefore, the provision had and has, a proviso, the purpose of which is clear. It is to highlight that notwithstanding that the applicant is being granted "like privileges and rights" he is not yet the patentee. However, does this mean that the section allows the taking away with one hand (by the proviso) what has been granted by the other (the main provision)? This was the point emphasized by learned counsel for the plaintiffs. He would answer the question posed in the negative. In my view, it is important to keep in mind the stage that is reached by the time section 22 is to be applied to an application. In order to appreciate that, the purpose served by the patent system has to be kept in mind. Broadly speaking, it is as follows. As is well known, a patent is a monopoly granted for a stated term to an inventor for his invention. Why would the state grant such a monopoly? It is to encourage innovation and foster inventiveness. But the quid pro quo for such a grant is that the inventor must make such disclosure of his invention as would enable a person skilled in the art to reproduce it and use it. A patent is put in the public domain. The disclosure of the invention adds to the sum of public knowledge. Once the period of the patent has expired, any person can make use of the invention. Even prior to that the knowledge and information made available may be used by anyone if the patent is not thereby infringed. Thus, the inventor, rather than keeping his invention secret is encouraged to make it public by giving him a limited monopoly. However, for the public purpose to be effectively served, the disclosure of the
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invention must be meaningful and proper. This disclosure is made in the specification, and what a complete specification must contain is, broadly speaking, stated in subsections (3) and (4) of section 15. As will be readily apparent, the specification is the crucial aspect of the application. It is (or at least ought to be) therefore scrutinized with great care by the Patent Office (section 16), and it is only if it meets the statutory and legal requirements that it is accepted and advertised in the official Gazette in terms of section 21. 8. It is at this stage of course that section 22 becomes applicable. The applicant has made substantial progress. The invention set out in the specification has, at least up to that stage, been found worthy of being regarded as patentable. Perhaps even more importantly, the invention has now been made public. What may, prior to the application, have been a closely guarded secret is now in the public domain. Anyone (and certainly a person skilled in the art) has access to it and can even use it. However, this is not the end of the matter. The application could be opposed and that opposition may succeed, and the specification rejected in whole or in part (i,e, in relation to one or more of the claims). But again, the opposition may fail. The law therefore contemplates that some legal recognition ought to be given to the applicant once his application has reached the stage of section 21. But such recognition must be tampered by keeping in mind the stage yet to come and the possibility of the invention falling by the way. How is the balance to be struck? The approach taken by the law is what is set out in section 22. The section first puts the applicant in the same position as a patentee, a position towards which he has by then made substantial progress. But, this is modulated by the proviso, which regulates what it is that the applicant can actually do while his position remains as such. A right is undoubtedly created but the remedy to which the right-holder (i,e, the applicant) would be entitled is regulated and controlled. 9. Viewed from this perspective, the purpose of the proviso to the present section 22 is clear. But what is the effect of barring the applicant from instituting any suit for infringement until the patent has been sealed? This does not destroy the rights and privileges accorded to him under the main provision. He has those rights. But, for the time being, he does not have the remedies. What happens is that the remedies are deferred till the stated event, the sealing of the patent. If that event does not come about (the application is dismissed), then of course the applicant gets nothing at all. But that is as it should be. After all, in such a situation, his application has in the end been found not to be a patentable invention. The position is otherwise if the patent is sealed. Once that happens, what was deferred becomes available. Of course, it is true that the remedies available to the applicant, once he becomes the patentee, for a grievance arising during the period covered by section 22 may not be exactly the same as would be available for a grievance that arises subsequently, once he has attained that position. The most obvious difference is the remedy by way of an injunction. Once he has become the patentee, he is immediately entitled to such a remedy in respect of a grievance that may then arise. But, for a grievance that arose in the period already elapsed, i,e,, the period covered by section 22, such remedy is not available by reason of the proviso. Of course, he would be entitled to sue for damages (howsoever described or computed). That remedy, once available, would be applicable even for the period covered by section 22. The proviso does not therefore render the applicant remediless and take away what is granted by the main part. It simply defers the remedies. Once (and if) the applicant has become the patentee he is entitled to the remedies as are then available in respect of any grievance that arose during the earlier period. 10. It follows that in my view, the proviso to section 7 of the 1911 Act was, and the present section 22 is, a "true" proviso inasmuch as it carves out an exception from the main provision. The nature of the exception is such that it affects the remedies but not the rights. It must be remembered that there is a distinction between a right and a remedy. Thus, to take the example usually cited, it is well established that the law of limitation bars the remedy but does not extinguish the right. Even
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that hoary legal maxim drilled into all law students, ubi jus ibi remedium, does not mean or require that the remedy should be such as the right-holder deems most expedient or desirable or is to be available at the time of his choice and choosing. It all depends on what the law says. The proviso to the present section 22 is clear on the point: the right is granted but the remedy is deferred. It may also be noted that this position is the same as in the law relating to trademarks. There, if an application to register a trademark is successful the trademark is deemed registered as of the date of the application (section 33(3) of the Trade Marks Ordinance, 2001). Section 39(5) provides that the rights of a proprietor in the registered trademark shall have effect from the date of registration (i,e,, the date of the application) but the proviso to the subsection categorically states that "no infringement proceedings shall begin before the date on which the trade mark is in fact registered". 11. I intend no disrespect in not considering in detail all the case-law cited by learned counsel for the parties since that was only in relation to the rules judicially evolved for the interpretation of provisos. The rules are well understood and no purpose will be served by burdening this decision with a detailed examination of the same. However, reference may be made to some of the cases cited by learned counsel for the plaintiffs. Learned counsel referred to two Supreme Court decisions, reported as Ibrar Hussain and others v. Government of N.-W.F.P. And others 2001 PLC (C.S.) 856 and Enmey Zed Publications (Pvt.) Ltd. v. Sindh Labor Appellate Tribunal and others 2001 PLC (C. S.) 368. In the first mentioned case, at pp. 862-3, the Supreme Court concisely set out the principles applicable to the interpretation of provisos. It was inter alia observed that a proviso or an exception to the main provision is to be construed strictly and any repugnancy between the two ought to be avoided, the proviso being governed ordinarily by the operative portion of the section. In the latter decision, there were observations to similar effect at pp. 2385-6. In my respectful view, the conclusions that I have arrived at in respect of the proviso to the present section 22 accord with these observations. As explained above, the exception that is carved out by the proviso is to defer the remedies that are available to the applicant to the stage when (and of course, if) he becomes a patentee. This is neither repugnant to the main provision nor destructive of it in the sense of eliminating that what was granted by it in terms of the "like rights and privileges". The other cited decision that requires consideration is of the Privy Council reported as Dyal Singh v. Kenyan Insurance Ltd. PLD 1955 PC 4. The appeal involved, inter alia, consideration of the proviso to section 45(3) of the Kenyan Bankruptcy Ordinance. The Board observed as follows (pg. 9) in a passage strongly relied upon by learned counsel: "A proviso may limit, and severely limit, the application of an enactment to which it is a proviso, but it could only be held in the most exceptional circumstances that the proviso nullifies the enactment". In my view the proviso to the present section 22 does not nullify the main provision. It only limits the main provision in the sense noted above, that the remedies are deferred. It may be that from the perspective of the applicant hoping to become (and eventually becoming) the patentee, there is a severe limitation inasmuch as injunctive relief is not available for the period to which section 22 applies. This may be severe but is not the same as nullifying the provision. 12. The position, insofar as the remedies were concerned, was different under the original section 22. As noted above the rights and privileges were the same. However, the first proviso expressly enabled the applicant to institute "any proceedings", and expressly provided that the court could grant an injunction subject to fulfillment of the conditions therein specified (i,e, that (a) the applicant was the "true proprietor" of the invention, (b) would be properly registered as a patentee, and (c) would suffer irreparable loss). The second proviso however disallowed any remedy by way of damages for the period before the sealing of the patent. In my view, the first proviso, by allowing "any proceedings" to be filed, expressly sought to enable immediate enforcement of the "like rights and privileges" granted by the main provision. It highlighted one
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particular remedy namely the grant of an injunction. This was tempered by imposing three conditions. The third, namely that irreparable loss would be caused, is unexceptionable. The first two, in effect, required the court (presumably on a provisional basis) to come to a conclusion that the application would eventually succeed. The second proviso disallowed any remedy by way of damages. It was therefore a "true" proviso, inasmuch it carved out an exception not merely from the main part but also the first proviso. 13. As is readily apparent, there were significant differences between the original section 22, and as presently in force. I of course have to apply the section as it stands. In my view, whatever was the position under the original section 22, the Amending, Ordinance clearly intended to bring about a change in the law. Since the present section 22 is identical to section 7 of the 1911 Act, the intent is clear: the law was being reverted to how it had stood before the promulgation of the 2000, Ordinance. In my view, this change must be given due effect and the present section 22 applied on its own footing uninfluenced by what was contained in the original section 22. 14. It follows that in my view the plaintiffs, being applicants, are not at present entitled…
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