In any patent proceeding before the Controller of Patents, providing a reasonable opportunity to contest any objection adverse to the grant of a patent is the sine qua non of fairness. Surprisingly, the patent applicant, who raises new objections not previously raised in FER, raises a question of denial of a fair opportunity. The courts in India have time and again reminded Controllers in patent cases that raising new grounds in a hearing notice is not permissible. The courts have also expressed concerns about the tendency in the Office of Controller of Patents and Designs to reject patent applications by relying on objections issued to the applicant without considering the submissions of the applicant filed in response thereto, for example, the Ruling of the Court in Huhtamaki OYJ and Anr vs Controller of Patents [2023 SCC OnLine Del 3272].
Hearing the appeal in Proprietect L P vs The Controller of Patents [C.A.(COMM.IPD-PAT) 168/2022], against the refusal of patent application filed by Proprietect L P for ‘Foam Laminate Product and Process for Production Thereof”, the Delhi High Court categorically raised the issue of whether the learned Controller can raise any new ground in the final order if they are not raised earlier? Additionally, the Court questioned the refusal of patent applications by relying on the new objections raised in the hearing notice without considering the submissions of the applicant filed in response thereto. The Court in this case ruled that:
“25. By raising a new ground i.e., objection under Section 10(5) of the Act, in the final order, the Respondent has not given sufficient opportunity to the appellant to present its case. Additionally, by passing the Impugned Order without considering the explanations / justifications offered by the applicant, it vitiates the process followed by the Respondent. Accordingly, the Impugned Order is liable to be set aside, and the matter is required to be remanded back to the learned Controller for a de-novo consideration.”
Factual Matrix
Proprietect L P filed an application for patent (5706/DELNP/2011) relating to the invention “Foam Laminate Product and Process for Production Thereof” and claimed a foam laminate product for use in the interior of a vehicle, such as a headliner. After examination and hearing of the case, the patent was refused under Sections 2(l)(j), 2(l)(ja), 10(4)(c) and 10(5) of the Patents Act, 1970. Proprietect L P appealed against this refusal.
Case of the Appellant
The appellant submitted that the Controller raised an objection under Section 10(5) of the Act only in the hearing notice, and as this objection was not raised by the respondent at any earlier stage of the proceedings, and, therefore, considering this objection for rejecting the application contravenes the principles of natural justice. The appellant further submitted that the impugned order is a non-speaking order as the respondent has failed to address the oral submissions and WS presented by the appellant, and the respondent has passed a cryptic order without considering the submissions made by the appellant.
Respondent’s Reply
The respondent submitted that the objections under Sections 10(4)(c) & 10(5), the independently amended Claim No.1 is broad and does not particularly and sufficiently define the invention with respect to which specific polymers are used, their composition percentages and other technical features.
Court’s Analysis and Decision
The Court found that in the FER, the objection on the ground of lack of definiteness, clarity, and conciseness was raised under Section 10(4)(c) of the Act. However, the objections under Section 10(5) of the Act were not raised. The appellant filed the amended claims. In the hearing notice, the objection raised under Section 10(4)(c) in the FER was maintained, but no new objections were raised under Section 10(5). The Court found that in the impugned order, the refusal of the patent was based on the new objection (among other objections).
Citing the ruling of the Coordinate Bench of Delhi High Court in Perkinelmer Health Sciences Inc. and Ors vs Controller Of Patents [2023 SCC OnLine Del 8590] wherein, it was held that the learned Controller cannot raise new grounds during the hearing as it does not provide sufficient opportunity to the applicant to contest the same, the Court ruled that in the present case “raising new grounds in the Hearing Notice or, as in this case, in the final Order is not permissible as it does not provide a reasonable opportunity to the applicant to be heard.”
Additionally, the Court found that the respondent had neither considered the claims filed in the reply to FER nor considered the amended claims filed in WS by the appellant after the hearing. The Court cited the ruling of the Coordinate Bench of the Delhi Court in Boehringer Ingelheim Vetmedica Gmbh vs The Controller of Patents [2024 SCC OnLine Del 8578], where it was held that the Controller had passed the impugned order without going into the explanations/justifications offered by the applicant, and the impugned order has also substantially reproduced the contents of the hearing notice. Thus, the Court ruled that the impugned order in the present case was also passed without going into the explanations/justifications offered by the appellant.
The Court also found that the impugned order substantially reproduced the contents of the hearing notice. The Court cited the ruling in Huhtamaki OYJ and Anr. vs Controller of Patents, [2023 SCC OnLine Del 3272] wherein, the Court had expressed concerns about the tendency in the Office of Controller of Patents and Designs to reject patent applications by relying on the objections issued to the applicant without considering the submissions of the applicant filed in response thereto.
Decision
The Court set aside the impugned order, and the matter was remanded to the Patent Office. The Court directed that the respondent shall afford a fresh opportunity of hearing to the appellant before deciding the application after giving a hearing notice to the appellant and considering all the oral and written submissions of the appellant, and decide the case within six months from the issue of this order.
Takeaways
The Court in this case reiterated that raising new grounds in the hearing notice is not permissible. The Court also questioned the tendency of the patent office to refuse patent applications by simply relying on the objections issued to the applicant without considering the submissions filed by the applicants. It is hoped that CGPDTM would issue fresh directives to the Controllers to take note of the issues raised by the Court in this case and to strictly comply with the requirement of the principle of natural justice in all proceedings before them.
Author: DPS Parmar
First Published by: Mondaq here