Patents Act | Non-Consideration Of Grounds In Rejecting Pre-Grant Opposition Constitutes Violation Of Principles Of Natural Justice: Delhi High Court

In reference to the Patents Act, 1970, the Delhi High Court has held that non-consideration of grounds raised in a pre-grant opposition by the Deputy Controller of Patents and Designs, per se constitutes violation of principles of natural justice. 

The observation was made by a single judge bench of Justice Jyoti Singh, more particularly in reference to Section 3(d) of the Patents Act, which provides that mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus is not an invention, unless such known process results in a new product or employs at least one new reactant.

Briefly, the facts of the case are that the Respondent filed a patent application for 'A synergistic suspo-emulsion formulation of Pyriproxyfen and Diafenthiuron' which was published under Section 11A of the Patents Act.

The Deputy Controller of Patents and Designs issued a First Examination Report, objecting to the claims of the Respondent on grounds of lack of novelty, inventive step etc. A reply was filed by the Respondent who subsequently amended the claims. Later, the petitioner filed a pre-grant opposition under Section 25(1) of the Act, opposing the grant of patent on several grounds including lack of novelty under Section 25(1)(b) and non-patentability under Section 25(1)(f) read with Section 3(d) and 3(e) of the Act as well as objecting to the scope of the amended claims. In addition to the Petitioner, six other persons also filed pre-grant oppositions against the patent application.

The respondent made certain modifications in the claims, however, Petitioner was not given any notice or opportunity to respond to the proposed amendments. The Deputy Controller of Patents and Designs dismissed Petitioner's pre-grant opposition and allowed the grant of patent in favour of the Respondent. This Writ Petition was filed by the Petitioner seeking to quash the aforesaid order.

The Petitioner argued that the pre-grant opposition was filed on several grounds, viz. (a) lack of novelty under Section 25(1)(b); (b) prior use/knowledge in India under Section 25(1)(d); (c) lack of inventive step under Section 2(1)(ja); (d) non-patentable under Section 25(1)(f) read with Section 3(d) and (e); and (e) insufficiency of disclosure under Section 25(1)(g) of the Act. It was argued that while granting the subject patent, the Deputy Controller had not only passed a non-speaking and unreasoned order but had 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. 

The first issue that the court dealt with was maintainability of the petition. The objection raised by the Respondents was that the Petitioner had an alternative remedy in terms of a post-grant opposition under Section 25(2) of the Act as well as revocation petition under Section 64. The court held that if the Petitioner was able to substantiate the pleas that the Deputy Controller had committed a manifest error leading to violation of principles of natural justice, had failed to exercise a jurisdiction vested in it or there is non-consideration of vital grounds or documents, Petitioner cannot be non-suited in the present petition. The court opined that–

"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. 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...Thus, if the Petitioner is able to substantiate its pleas, there would be a violation of principles of natural justice and in those circumstances, the present writ petition would be maintainable."

The second question that the court dealt with was whether there was violation of principles of natural justice while passing the impugned order. The court found that–

"A plain reading of the scheme of the Patents Act, 1970 shows that Section 25(1) provides a remedy for pre-grant opposition when a patent application is made and published. It needs no emphasis that if the Act provides a remedy, the Authority competent to take a decision must consider the representation in consonance with and by scrupulously applying the principles of natural justice, albeit at the stage of pre-grant opposition only a summary enquiry is envisaged. Reading of the impugned order leaves no scintilla of doubt that Respondent No. 1 has not even adverted to Section 3(d) and the opposition raised on the ground provided under the said provision albeit it would have been a different matter if the ground urged under the said provision was rejected on merits. Non-consideration of the ground per se, in my view constitutes violation of principles of natural justice."

The impugned order, in this case, shows that the pre-grant opposition was rejected on a finding that the data provided by the Deputy Controller regarding stability and bio-efficacy of composition shows synergistic effects and the composition claimed has reduced toxicity in comparison to toxicity exhibited by individual components of the composition. In the court's view, none of these factors were relevant to answer the real question of opposition raised under Section 3(d). The court held that the Deputy Controller should have examined whether the data and other factors brought forth by the Applicant had the effect of enhancement of efficacy from a known substance, which was the legislative intent of amendment of Section 3(d). 

The third question that the court examined was the contention of the Petitioner that the Respondent had sought to amend the claim two days prior to passing of the impugned order and the amendment was allowed without notifying the Petitioner and granting the Petitioner an opportunity to respond to the amendment. Here, the respondents contended that the first amendment was a mere deletion of repetition of few words in the claim, i.e., a typographical error, while the second amendment was only to incorporate the exact range of thickener to bring it within the scope of the specifications. Thus, the nature of amendments was so trivial that this objection of the Petitioner was untenable in law. Insofar as the first amendment is concerned, this Court found force in the contention of the Respondents as what was sought to be amended was a mere typographical error. However, with respect to the second amendment the court did not accept the plea of Respondents. The court opined that–

"Patents Act is a complete Code which provides a mechanism and a procedure for carrying out amendment of an application, specifications, etc., before the Deputy Controller of Patents under Sections 57 and 59 thereof. Admittedly, the procedure, as mandated under the Act, was not followed by Respondent No. 1 before permitting Respondent No. 2 to carry out the amendment. In fact, the amendment was allowed two days prior to the passing of the impugned order, without even notifying the Petitioner of the same, leave alone giving an opportunity to respond. Assuming that the amendment was trivial or insignificant in the perception of the Respondents, which is the case being set up at this stage, it may not have been so for the Petitioner and given an opportunity it may have been able to justify the opposition. It is pertinent to note that strangely and significantly the order impugned herein does not even mention that an amendment was made to the original claims and specifications by Respondent No. 2, which were allowed. Therefore, holistically read, the impugned order suffers from legal infirmities, as aforementioned, being a non-speaking and unreasoned order, besides there being violations of principles of natural justice."

Thus, the court directed the Deputy Controller of Patents and Designs to reconsider the issues and pass a reasoned and speaking order within 8 weeks.

CASE TITLE: BEST AGROLIFE LIMITED v. DEPUTY CONTROLLER OF PATENTS & ANR.

Citation: 2022 LiveLaw (Del) 633

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