Strict adherence to procedural timelines under the Patents Act and Rules is essential
Brief Facts of the Case:
The petitioner, UPL Limited, filed a patent application, which was duly published under Section 14 of the Patents Act, 1970. A pre-grant opposition was filed by respondent no.5, and the hearing was concluded on 13 October 2023, with written submissions filed on 28 November 2023. Subsequently, on 30 November 2023, respondent no.6 filed a second pre-grant opposition on similar grounds, citing largely the same prior arts as respondent no.5. The Controller issued a notice on 1 August 2024, adjourning the hearing scheduled for 22 August 2024, without providing prima facie reasons as required under Rule 55 of the Patents Rules, 2003 (as amended).The petitioner contended that the second pre-grant opposition was a delay tactic and that the Controller failed to follow procedural mandates under the Act and Rules. The respondents argued that the petitioner had sought repeated adjournments, contributing to unnecessary delays. The Controller’s office assured the court that the proceedings would be concluded expeditiously.
Brief Issue:
The primary issue before the court was whether the adjournment of the hearing for the second pre-grant opposition was lawful and whether the Controller followed the procedural requirements under Rule 55 of the Patents Rules, 2003.
Reasoning of the Court:
The court noted that the Patents Act and the Rules prescribe strict timelines for hearing and disposing of patent applications. The adjournment granted by the Controller without assigning reasons violated the legislative intent of preventing unnecessary delays. The first pre-grant opposition had been concluded in November 2023, and delaying the final decision on account of a second opposition was unjustified. The second pre-grant opposition raised largely the same issues as the first, yet the Controller failed to record prima facie reasons for allowing or rejecting it, as required under Rule 55(3). The multiple adjournments granted in a mechanical manner violated the principles of natural justice and fairness, affecting the integrity of the decision-making process. The Controller’s inaction in providing prima facie reasons demonstrated an infraction of procedural mandates under the Patents Act.
Decision of the Court:
The court directed the respondent authorities to assign the matter to a different Controller, ensuring impartiality in decision-making. The first pre-grant opposition, filed by respondent no.5, would be reconsidered afresh from the hearing stage, without applying Rule 55(3). The second pre-grant opposition, filed by respondent no.6, must be examined strictly under Rule 55(3), requiring prima facie reasons for its acceptance or rejection. The entire exercise must be concluded within eight weeks without granting unnecessary adjournments. The court clarified that it did not adjudicate on the merits of the case, leaving all substantive issues open for consideration by the Controller. The writ petition was accordingly allowed.
Law Points Settled:
Strict adherence to procedural timelines under the Patents Act and Rules is essential to prevent undue delays in patent applications. Adjournments cannot be granted mechanically, as they defeat the legislative intent of expeditious disposal. Under Rule 55(3), the Controller must record specific reasons for accepting or rejecting a pre-grant opposition. Repeated adjournments without justification can violate the principles of natural justice and procedural fairness, warranting judicial intervention. If procedural lapses are found, courts can direct reassignment to another Controller to ensure fairness and impartiality. This decision reinforces the principle that patent opposition proceedings must be conducted fairly and expeditiously, without undue procedural delays.
Case Title: UPL Limited Vs. Union of India & Ors.
Date of Order: 25 February 2025
Case Number: WPA-IPD 2 of 2024 (Old No. WPA 28484 of 2024)
Court: High Court at Calcutta
Judge: Hon’ble Justice Ravi Krishan Kapur
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
