High Court: Patent Office not at liberty to raise new objections without notice at the hearing stage

In yet another decision rendered by the Hon’ble High Court of Delhi in the case of Perkinelmer Health Sciences Inc. Vs Controller Of Patents[1], the Court disposed off the appeal by setting aside the impugned order as new grounds of objection were raised at the time of the hearing without prior notice to the patent applicant of the same.

Background

The present appeal was instituted by Perkinelmer Health Sciences Inc. (hereinafter the “Appellant”) challenging the impugned order dated 08th February 2019 by the Controller of Patents (hereinafter the “Respondent”) through which the Appellant’s patent application was refused by the Indian Patent Office, inter alia on the ground of Section 3(f) of the Act.

The Court noted that the hearing notice dated 12th February, 2018 made no mention of the objection under Section 3(f). The impugned order, in fact, acknowledged that the objection under Section 3(f) of the Act was raised for the first time only at the time of hearing held on 08th March 2018.

Brief Facts

The counsel for the Appellant argued that raising a new objection without prior notice constitutes a jurisdictional error in view of a gross violation of the principles of natural justice. Reliance was placed by the counsel upon circular on "Examination of Patent Applications and Consideration of Report of Examiner by Controller" (hereinafter referred as “Circular”) dated 21st September, 2011 and the judgement of Otsuka Pharmaceutical Co. Ltd v. The Controller of Patents[2] to contend that raising new grounds at the time of hearing is impermissible and is against the tenets of the principles of natural justice.

On the Contrary, the Respondent contended that the Appellant had sufficient opportunity to deal with the objection raised under Section 3(f). The Respondent argued that the appellant did not present any rebuttal with respect to Section 3 (f) even though an opportunity to respond was provided to the patent applicant both at the time of the oral hearing and subsequently, while filing written submissions under Rule 28 (7) of the Patents Rules.

Findings of the Court

The Court considered the submissions and the Circular which lists out obligations of Controller on receipt of objections from Examiner and held that Controller/ Examiner is not permitted to raise new grounds of objection at the time of hearing.

The Court held that the Appellant ought to have been made aware of all grounds of objection before the hearing and should be given sufficient opportunity to contest the same at the time of hearing. In the opinion of the Court, raising the objection for the first time at the hearing stage without providing reasonable opportunity to the Applicant is in violation of the principles of natural justice and vitiates the impugned order.

The Court set aside the impugned order and sent it back to Respondent for fresh consideration. The Respondent is directed to issue a fresh notice of hearing raising all objections with a hearing date within a period of four months from the date of issuance of notice of hearing.