Patent examination under Chapter IV (mandatory Section 14 hearing) and pre-grant opposition under Section 25(1) (Chapter V) are distinct parallel processes; refusal requires Section 14 hearing and Section 15 order, not solely under Section 25(1).

JUDGEMENT :

ARIF S. DOCTOR, J.

1. The captioned Petition impugns an Order dated 26^th June 2023 (“the impugned order”) passed by Respondent No. 2, i.e., Controller of Patents, by which the Petitioner’s Patent Application No. 201627001750 for “Combinations Comprising a Triazole Fungicide and a Biological Control Agent" was rejected solely under the provisions of Section 25(1) of the Patents Act, 1970 (“Patents Act”) on account of a pre-grant opposition filed by Respondent No. 3. Admittedly, the Petitioner was not given a hearing under Section 14 of the Patents Act before the patent was refused nor after the order passed under Section 15 of the Patents Act.

2. Mr. Nargolkar, Learned Counsel appearing on behalf of the Petitioner, at the outset submitted that the though impugned order suffers from several substantive infirmities, which include failure to consider expert evidence, absence of adequate reasoning, and failure to properly assess novelty, inventive step and the applicability of Section 3(d) of the Patents Act, the challenge was confined only with regard to the admitted and limited fact that the Petitioner was not granted a hearing under Section 14 of the Patents Act prior to rejection of the Petitioner’s Patent application.

3. Before considering the rival contentions, it is useful for context to set out the following facts which are not in dispute:

i. The Petitioner on 21^st March 2016 filed Patent Application No. 201627001750, which was subsequently published on 7^th October 2016.

ii. A First Examination Report (“FER”) under Section 12 of the Patents Act was then issued by the Controller on 4^th December 2020.

iii. The Controller subsequently issued a hearing notice to the Petitioner under Section 14 of the Patents Act, scheduling a hearing on 5^th January 2021.

vi. On 5^th January 2021, less than one hour prior to the scheduled hearing under Section 14, the Controller adjourned/cancelled the hearing, expressly recording that a fresh hearing under Section 14 would be granted to the Petitioner “in due course".

v. Thereafter, Respondent No. 3 filed a pre-grant opposition under Section 25(1) of the Act on, subsequent to the Petitioner’s reply to the FER dated 4^th June 2021.

vi. Subsequently, on 19^th April 2023, the Controller conducted a hearing in the pre-grant opposition proceedings, at which both the Petitioner and the Opponent made oral submissions and thereafter filed written submissions.

vii. Thereafter, without granting the earlier-promised hearing under Section 14 and without passing any order under Section 15 of the Act, the Controller passed the impugned order, rejecting the Petitioner’s application solely under Section 25(1) of the Patents Act.

viii. Thus the present Petition.

Petitioner’s Submissions:

4. Mr. Nargolkar, learned counsel appearing on behalf of the Petitioner, at the outset submitted that the statutory framework governing the ‘examination of a patent application’ and any ‘opposition to a patent’ was clearly delineated in the Patents Act, particularly in Chapters IV and V. He pointed out that Chapter IV was titled “Publication and Examination of Applications”, whereas Chapter V was titled “Opposition to Grant of Patents”, thereby making it evident that the proceedings contemplated under Chapter IV and those under Chapter V are distinct in nature and operate independently within their respective statutory domains.

Chapter IV – Publication and Examination of Applications

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