Written Submissions Under Rule 28(7) Cannot Be Used To Reopen Entire Debate In Patent Application: Delhi High Court

The Delhi High Court has observed that the written submissions and filing of relevant documents under Rule 28(7) of the Patent Rules, 2003 cannot be used as a tool to reopen the entire debate in a patent application.

Justice Pratibha M Singh said the purpose of Rule 28(7) is to capture the submissions made during the course of the hearing and to take any steps which the Controller may have directed in terms of filing of forms and amendments.

"The written submissions and filing of relevant documents under Rule 28(7) of the Rules cannot be used as a tool to reopen the entire debate. It is meant as a sort of primer of the submissions made and discussions agreed upon during the course of hearing. The purpose of Rule 28(7) is to bring the matter to a closure rather than to reopen the consideration of the patent application," the court said.

Rule 28(7) of the Patent Rules states that written submissions and the relevant documents in all cases of hearing, if any, shall be filed within 15 days from the date of hearing.

The observations were made by Justice Singh in her decision on an appeal filed by FMC Corporation against the order dated 10th May, 2022 passed by the Assistant Controller of Patents & Designs in respect of its patent application titled "HERBICIDAL MIXTURES".

The patent application had a total of 13 claims covering a large number of compositions. The First Examination Report (FER) issued by the Patent Office in March 2021 raised objections relating to lack of inventive step and non-patentability under the Patents Act as also lack of clarity and definitiveness. It also raised objections relating to efficacy of the claimed compositions over the prior art as having not been established.

The applicant filed a reply to the FER in September 2021 and along with it, an amended set of claims, restricting the number of claims to five, was also filed.

A hearing notice was issued by the Patent Office fixing the hearing on March 11, 2022 for which adjournment was sought by the appellant. Thereafter, the hearing was rescheduled to March 23. However, since written submissions were not filed within the stipulated time, the hearing on that day was "completely derailed" .

Thereafter, the appellant sought extension of time under Rule 138 for filing written submissions under Rule 28(7) of the Rules, which was granted. Another extension was sought on May 3 for obviating irregularities in filing written submissions. However, the same was refused.

The Patent Office on May 10 passed an order rejecting the application. The appellant then preferred a review petition. It also filed an application for change in its name in whose favour the patent application was assigned - the same was allowed.

Thereafter, submissions were filed by the appellant in support of the review on August 8 along with an amended set of claims consisting of only one claim. However, since the review was not considered and the patent application was rejected, FMC Corporation approached High Court challenging the order rejecting the patent application and also praying for consideration of the review application.

Observing the case is clearly a reflection of how patent applications are being delayed by applicants themselves, Justice Singh said all the relevant objections were raised by the Patent Office way back in March, 2021 in the FER itself. It also noted that data relating to efficacy must have been submitted by the appellant in response to the FER itself.

"The Applicant, however, chose to amend the claims. Despite the hearing being held almost one year post the issuance of the FER, efficacy data appears to have not been submitted. In the opinion of the Court, there was sufficient time for furnishing of efficacy or synergistic data by the Applicant," the court said.

The court further noted that repeated adjournments were sought by the appellant and no written submissions were filed within the prescribed period and that a review application and amended claim was filed when the patent application itself was rejected.

It also observed that even if the appellant wished to restrict the claims during the course of hearing, the action and the forms for filing the amended claims should be usually done within the time prescribed in law.

"The same cannot be extended indefinitely leading to further delays in finality being arrived at in respect of the patent applications, thereby resulting in pendency in the Patent Office. Be that as it may, if the Applicant failed to file the written submissions in time and the request for extension was rejected by the ld. Asst. Controller, there was also a duty on the ld. Asst. Controller to consider the objections in the FER and the Reply, as also the submissions made orally during the course of hearing and pass a reasoned order," the court said.

Observing that the appellant was to be blamed substantially for the delay in consideration of its patent application, the court, however, said since patent rights are valuable and rejection of the application can have serious consequences, it is of the opinion that this is a fit case for remanding the matter back to the Controller for fresh consideration.

"The Controller shall now take into consideration the pleas of the Applicant made in the written submissions dated 8th August, 2022 as also in the review application. The application shall now be examined and a decision shall be passed on merits on the basis of the amended one claim which has been now filed by the Applicant along with the written submissions. No fresh hearing shall be given in the application," the court directed.

It added "It must be clarified that this indulgence is being given to the Applicant in view of the fact that the impugned order is unreasoned, however, the same shall be subject to payment of costs of Rs.1,00,000/- to the office of the CGPDTM within four weeks. The order shall be passed within two months".

Title: FMC CORPORATION v. THE CONTROLLER OF PATENTS

Citation: 2022 LiveLaw (Del) 1021

Click Here To Read Order