Delhi High Court| Non-consideration of the grounds raised in a pre-grant opposition while granting patent per se constitutes violation of principles of natural justice

Delhi High Court

Delhi High Court: Jyoti Singh, J. in a case where patent was granted without delving and dealing with the grounds raised in the pre-grant opposition stage remanded it back to the Deputy Controller of Patent for reconsideration of the pre-grant opposition as the impugned order violates principles of natural justice.

GSP Crop Science Pvt. Ltd. (‘Respondent 2′) filed patent application for ‘A synergistic suspo-emulsion formulation of Pyriproxyfen and Diafenthiuron’ which was published under Section 11-A of the Patents Act, 1970. The Deputy Controller of Patents (‘Respondent 1′) issued the First Examination Report objecting to the claims inter alia on grounds of lack of novelty, inventive step etc. Reply was filed by Respondent 2 and claims were thereby amended. Best Agro Life Limited ‘Petitioner’ however filed a pre-grant opposition under Section 25(1) Patents Act, 1970, 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) Patents Act, 1970 as well as objecting to the scope of the amended claims. Six other persons along with petitioner filed opposition which were amended without providing the petitioner(s) any notice to respond to the amendments and the patent was eventually granted. Aggrieved by this, the present petition was filed.

The question under consideration was whether there was violation of principles of natural justice while passing the impugned order, requiring judicial interference in a writ jurisdiction under Article 226 of the Constitution of India.

The Court noted that on a plain reading of the two provisions i.e., Section 3(d) and 3(e) of Patents Act, 1970, Section 3(d) entails an assessment of ‘enhanced efficacy’ of the claimed composition in comparison to the efficacy of the known substance while the assessment under Section 3(e) is with a view to determine the synergistic effect of claimed composition with the individual properties of each component comprising the composition.

The Court categorically noted that none of the factors mentioned in the impugned order are germane to answer the real question of opposition raised under Section 3(d) as Respondent 1 ought to 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 is the legislative intent of amendment of Section 3(d).

Thus, the Court observed that a number of crucial and relevant documents placed on record by the Petitioner were not even considered by Respondent 1 under the grounds of lack of novelty and lack of inventive step. Perusal of the impugned order clearly shows that the Authority comes to a conclusion that the documents are irrelevant, without recording a reasoned finding to that effect. Thus, the impugned order being non-speaking and unreasoned is violative of principles of natural justice.

Secondly, Respondent 2 sought to amend the claim two days prior to passing of the impugned order which was allowed without notifying the Petitioner and granting the Petitioner an opportunity to respond to the amendment. It was observed that the 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 Patents Act, 1970.

Thus, the procedure, as mandated under the Act, was not followed by Respondent 1 before permitting Respondent 2 to carry out the amendment. 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. 2, which were allowed.

Thus, the Court held that the impugned order suffers from legal infirmities and is a non-speaking and unreasoned order and results in violations of principles of natural justice.

[Best Agrolife Limited v Deputy Controller of Patents, 2022 SCC OnLine Del 1982, decided on 07-07-2022]


Advocates who appeared in this case :

Mr. Chander M. Lall, Senior Advocate with Dr. Shilpa Arora, Mr. Ashutosh Kumar, Mr. Vivek Ranjan, Mr. Vinod Chauhan, Mr. Munesh Kumar Sharma, Ms. Shreya Chaudhary and Ms. Ananya Chugh, Advocates, for the petitioner;

Mr. Harish Vaidyanathan Shankar, Central Government Standing Counsel with Ms. S. Bushra Kazim, Mr. Srish Kumar Mishra and Mr. Sagar Mehlawat, Advocates for R-1. Mr. Guruswamy Nataraj, Mr. Ankur Vyas, Mr. Shashikant Yadav and Mr. Shahid Khan, Advocates for R-2.


*Arunima Bose, Editorial Assistant has reported this brief.

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