In a recent judgment by a single bench of the Delhi High Court, it has been held that non-consideration of grounds of pre-grant opposition by the Deputy Controller of Patents and Designs constitutes a violation of the principles of natural justice.   

In this particular case, Respondent No. 2- GSP Crop Science Pvt. Ltd., had filed a patent application titled “A Synergistic Suspo-Emulsion Formulation of Pyriproxyfen and Diafenthiuron” in the Indian Patent Office on January 27, 2014, which was published on September 11, 2015. A First Examination Report was issued on May 31, 2018, by the Respondent No. 1- the Deputy Controller of Patents, comprising objections such as lack of novelty, inventive step, etc. A reply to the First Examination Report along with amended claims was filed by Respondent No. 2 on July 19, 2018. Thereafter, on March 04, 2021, the Petitioner- Best Agrolife Limited, filed a pre-grant opposition under Section 25(1) of the Indian Patents Act on grounds such as lack of novelty under Section 25(1)(b), non-patentability under Section 25(1)(f) read with Section 3(d) and 3(e) of the Act among others. The respective parties filed their pleadings along with the requisite documents and also filed the post-hearing written submissions.

It is pertinent to mention that Respondent No. 2 made claim revisions on April 06, 2022,  notice of which was not given to the Petitioner. Subsequently, the impugned patent application was granted by Respondent No. 1 on April 08, 2022. Aggrieved by the decision, the Petitioner filed a writ petition before the Delhi High Court.

Pursuant to hearing the submissions and arguments of both parties, the Court was of the opinion that the objection raised by the Respondents that the Petitioner had an alternative remedy in the form of post-grant opposition under Section 25(2) or revocation petition under Section 64 as well as an appeal thereafter under Section 117A of the Indian Patents Act was not maintainable. The Court held that if the Petitioner was able to substantiate the pleas that the Respondent No. 1 had committed a grave error leading to violation of principles of natural justice or had failed to exercise a jurisdiction vested in it or there was non-consideration of vital grounds or documents, the Petitioner could not be non-suited in the present application.

In the pre-grant opposition representation, the Petitioner had raised the ground of non-patentability of the impugned patent application under Section 25(1)(f) read with Section 3(d) of the Indian Patents Act. The Petitioner had submitted that from the prior art documents cited therein, the formulation/ composition of the patent application in question was already known. Further, Respondent No. 2 had not furnished any technical data/ experimental proof of any enhancement in the therapeutic efficacy.

The Court was of the clear opinion that Respondent No. 1 had not dealt with the submissions made in respect of Section 3(d) while pronouncing the grant order, which in the view of the Court constituted a violation of the principles of natural justice. The Court also noted that the crucial and relevant documents placed on record by the Petitioner were not considered and appraised by Respondent No. 1.

Another issue that the Court dealt with was Respondent No. 2 amending the claims two days before the issuance of the grant order of the impugned application with no notification to the Petitioner, thus depriving the Petitioner of the opportunity to respond to the amendments. The Court held that even if it was assumed that the amendments made were minor and insignificant in nature as per the perception of the Respondents, it might not have been the case for the Petitioner, and had an opportunity been given to respond, the Petitioner may have been able to successfully justify the opposition.

In view of the above, the Court was of the opinion that the Petitioner was able to make out a case for remanding the matter to Respondent No. 1 for reconsideration of the pre-grant opposition, in the context of Section 25(1)(f) read with Section 3(d) of the Indian Patents Act and the amendment to claims made two days prior to issuance of the grant order by the Respondent No. 2 without intimation to the Petitioner.

Thus, the Court directed Respondent No. 1 to re-examine the issues as discussed and accordingly pass a reasoned and speaking order within 8 weeks from the pronouncement of the instant judgment.     

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