Introduction:
As per the doctrine of audi alteram partem, the Controllers of the Indian Patent Office are bound to pass a speaking order while disposing off a patent application i.e., the Controllers shall provide detailed reason for granting or rejecting the patent application. However, in recent past, it has been observed that the orders from the Controllers are non-speaking orders, which lead to the violation of principles of the natural justice leaving parties aggrieved. The subject article discusses the latest judgment pronounced on
Brief facts of the case:
A writ petition was filed by
Key issued addressed by the Court:
1. Maintainability of the Writ petition before the Court:
Contentions made by the Respondents
The very first contention put forth by the Respondents was on the maintainability of the writ petition. The Respondents relied on the previous judgements of the Court in
The Respondents further made a statement that the Writ Courts seldom interfere with the orders passed by the Quasi-Judicial Authorities unless there is a serious illegality or irregularity or the Authority acts in excess of its jurisdiction.
In conclusion, the Respondents have contended that the petitioner should not have approached the Court without exhausting the alternative remedies available under Section 25(2) or Section 64 of the Indian Patents Act. The Respondents further argued that present petition was filed to avoid an infringement action, given that the Petitioners has suppressed the fact that it had a patent granted for a "synergistic insecticidal composition comprising bio active amount of Difenthiuron and Pyriproxyfen" (Patent No. 372736) with a filing date after the filing of the patent in question (394568).
The Observation of the Court on the above-mentioned issue
The Court opined that if the petitioner is able to substantiate that the Respondent 1 has committed a manifest error leading to violation of principles of natural justice or failed to exercise a jurisdiction vested in it or there is non-consideration of vital grounds or documents, the petitioner is suited for the petition.
In this regard, the Court emphasized on previous judicial precedents that Article 226 of the
The Court held the
The Court has emphasized the following:
- as a matter of self-imposed restraint, the
High Court could refrain from exercising the writ jurisdiction, where the aggrieved party has an alternative efficacious remedy; -
alternate remedy would not, however, operate as a bar in three eventualities carried out by the
Supreme Court ; and - it is a matter of prudence and discretion as to whether the writ Court would entertain the writ petition in the given facts and circumstances.
The Court drew the following conclusions in the present case in ascertaining that there is violation of principles of natural justice, which shall be elaborated in details in the following paragraphs of this article:
- non consideration of pre-grant opposition under Section 25(1)(f) read with Section 3(d) of the Act;
- non-consideration of crucial and relevant documents placed on record by the Petitioner, including prior art references;
- taking into account additional documents and evidence without informing the Petitioner of the filing of the said documents/evidence; and
- taking into account the amended claims. two days prior to the impugned order, without notifying the Petitioner of such amendments and seeking its response.
The Court held that the fact that an aggrieved party has an adequate remedy in law, which in a given case may persuade the Court not to intervene in the matter and relegate the party to the remedy available under the Statute, is a rule of policy, convenience and/or discretion rather than a rule of law.
2. Issuance of an Un-Reasoned, Non Speaking Order:
As briefed in the preceding paragraph, the Court analysed whether the present case encompassed a violation on principle of natural justice focussing on non-reasoned and a non-speaking order issued by the Controller, taking into account the following grounds:
2.1 Overcoming Section 3(e) is not sufficient for addressing Section 3(d)
It is noted that the pre-grant opposition was filed before Respondent No. 1 on several grounds, viz. (a) lack of novelty under Section 25(1)(b); (b) prior use/knowledge in
Contentions raised by the Counsels on behalf of the Petitioner and Respondents
The petitioner submitted that while granting the subject patent, Respondent No. 1 has not only passed a non-speaking and unreasoned order but has not even dealt with the substantive grounds raised by the Petitioner, more particularly the ground of non-patentability under Section 3(d) of the Act. However, the Counsel on behalf of the Respondent 2 argued the following:
- Petitioner did not press its ground with any degree of seriousness on Section 3(d) during the pre-grant opposition.
- The substance of the challenge under Section 3(d) was identical to a challenge under Section 3(e).
- Respondent No. 1 has considered the data provided in Respondent No. 2's application as well as additional data provided in its reply on the pre-grant and has arrived at a considered decision that Respondent No. 2's composition has stability, bio-efficacy and reduced toxicity.
- Section 3(d) may not be specifically mentioned in the impugned order but the relevant parameters for assessment and the reasoning can be deciphered from the reasons given for Section 3(e).
- Further, when an order comprehensively rules on 'novelty' in favour of Respondent No. 2, the very premise of Section 3(d), i.e., combination being a non-substance is inapplicable.
The Observation of the Court on the above-mentioned issue
The Court opined that Respondent No. 1 has not even taken note of Section 3(d) in the entire order and consequently not dealt with the submissions made in respect thereof. Therefore, non-consideration of ground is violation of principles of natural justice. It is further opined that the Section 3(d) entails an assessment of 'enhanced efficacy' of the claimed composition in comparison to the efficacy of the known substance while the assessment of under Section 3(e) is with a view to determine the synergistic effect of the claimed composition with the individual properties of each component comprising the composition. Legislature in its wisdom has enacted two different provisions and the tests for both are different. Thus, the Respondents may not be wholly correct in arguing that reasons given for Section 3(e) for novelty of a product or for not being a mere admixture would be applicable for addressing Section 3(d) objection as well. Therefore, the Court held that, "[t]here is merit in the contention of the Petitioner that the patent applicant has claimed a suspo-emulsion of admixture/combination of Diafenthiuron and Pyriproxyfen and therefore, the applicant would have to pass the test under both Section 3(d) and 3(e), albeit on different aspects by showing enhanced efficacy over known combination of a suspo-emulsion qua Section 3(d) and synergistic effect over the mere additive effect of individual components of suspo-emulsion composition."
2.2 Amendments in claims
Contentions raised by the Counsels on behalf of the Petitions and the Respondents: The Petitioner asserted that the Respondent allowed amendment to claims two days prior to the issuance of impugned order without notifying the petitioner. Further, out of the two amendments made in claims, while one of the amendments was assumed to be typographical error, the second amendment to restrict the range of the thickener was, in fact, enlarging the scope of protection, without giving opportunity for the petitioner to be heard.
The Respondents contended that, given the fact that, amendment to one claim was typographical and the second claim was to incorporate the range of thickener to bring it within the scope of specification, the nature of amendments were trivial and not changing the scope of the original claims and hence it was not required to notify the petitioner.
The Opinion of the Court: The Court although agreed with the Respondent's contention that the first amendment was typographical in nature, it held that, with respect to the second amendment, though may be assumed trivial by the Respondent, it may not have been the case for the petitioner and given an opportunity to be heard the petitioner might have been able to justify the opposition. Further, the Court criticized that the impugned order did not mention the amendments that were made and that was eventually allowed.
2.3 Novelty and Inventive step
Another factor on which the Court based its conclusion that the present case entails a breach of principles of natural justice is that the Respondent did not even consider all the prior art documents placed on record by the petitioner, while granting the patent in question. The Court opined that the impugned order by the Respondent is a non-speaking un-reasoned order as the Respondent has not clearly elucidated as to why the documents are considered irrelevant to the novelty and inventive step of the patent in question.
2.4 Decision
It was noted that the Court partially allowed the writ petition in favour of petitioner as the petitioner has been able to make out a case for remanding the matter to the Respondent 1 for reconsideration of the pre-grant opposition in the context of Section 25(1)(f) read with Section 3(d) of the Act, non-consideration of the documents as referred to above and the amendment to claim No. 7 by the Respondent 2. Accordingly, the Respondent 1 was directed to reconsider the issues, encapsulated above and pass a reasoned and speaking order within 8 weeks from the date of present order, in accordance with law and uninfluenced by the observations in the present judgment or the impugned order. Further, the Court did not express any opinion on the validity of the subject patent.
Conclusion
It has been a common practice in the Indian Patent Office to refuse orders without any elaborate reasoning. The instant order of the
Reference:
Author: Mrs.
Mrs. Krishnaja Saseendran (Attorney & IP Specialist)
Co-Author: Dr. Joshita Davar Khemani (Managing Partner & Principal Attorney at Law)
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