High Court: Writ not an option, if alternative remedy availed by the pre-grant Patent Opponent

Introduction

A writ petition was filed in the matter of Haryana Pesticides Manufactures Association Vs Willowood Chemicals Private Limited seeking quashing of the impugned order passed by the Deputy Controller of Patents and Designs in a pre-grant opposition under Section 25(1) of the Indian Patents Act, 1970. Noticeably, the originally filed writ petition did not include any plea with respect to contravention of principles of natural justice. However, when the writ petition was contested by the Respondents on the ground of maintainability, the writ petition was amended to include the ground of violation of principles of natural justice. It was the grievance of the Petitioner in the writ petition that the Respondent’s amended patent application was granted without providing an opportunity to the Petitioner of being heard. Meanwhile, prior to filing the writ petition, the Petitioner had also filed a post-grant opposition.

Background

The present writ was filed by Haryana Pesticides Manufactures Association (hereinafter the “Petitioner”) challenging the impugned order by Deputy Controller of Patents and Designs allowing grant of patent titled as “Novel Fungicidal Composition”, filed on December 31, 2013, by Willowood Chemicals Private Limited (hereinafter the “Respondent”).

It was the case of the Petitioner that in the initial application filed by the Respondent with respect to its invention viz. “Novel Fungicidal Composition”, the total claims were from 1-27. Subsequently, Form-13 was filed by the Respondent amending its claims from 1-27 to 1-25. A pre-grant opposition hearing Under Section 25 (1) of the Indian Patents Act and a separate hearing under Section 14 of the Indian Patent Act was granted to the Petitioner qua these amended claims 1-25. Accordingly, both the parties were directed to file written submissions and the Respondent sent a copy of their written submissions to the Controller with a copy to the Petitioner.

However, without the knowledge of the Petitioner, the Respondent again sought to amend its claims from 1-25 to 1-19, to meet the objections raised against the patent application. It was alleged by the Petitioner that a copy of the amendment application and/or the subsequent written submissions were neither served upon the Petitioner nor any Form-13 was filed. The Petitioner contended that the Controller granted a patent in favour of the Respondent, without providing the Petitioner an opportunity to be heard with respect to the amended set of claims i.e. claims 1-19. On the other hand, the Respondent (patent applicant) argued that the amendments were made on account of the objections raised by the Controller, and it was at the Controller’s behest that the claims were amended to restrict the scope of the invention.

Apart from other significant decisions, the Petitioner placed reliance on the recent decision of the Delhi High Court in Best Agrolife Limited vs. Deputy Controller of Patents and Anr.wherein the Controller had allowed the amendment to the claims two days prior to passing of impugned order without notifying the Petitioner, which was held to be in complete violation of the principles of natural justice.

The Petitioner also relied on Section 57(4) of the Patents Act to argue that it was mandatory under the Indian Patents Act, 1970 to give notice of the amendment to the opposite party. The relevant portion of the said Section is reproduced as follows:

“57 Amendment of application and specification 132 [or any document related thereto] before Controller. – (1) to (3) xxxx (4) Where an application is published under sub-section (3), any person interested may, within the prescribed period after the [publication] thereof, give notice to the Controller of opposition thereto; and where such a notice is given within the period aforesaid, the Controller shall notify the person by whom the application under this section is made and shall give to that person and to the opponent an opportunity to be heard before he decides the case.”

On the other hand, it was argued by the Respondent that the amendment was carried out to meet an objection raised by the Controller so as to restrict its scope. It was contended by the Responded that owing to the several notices sent by the Controller, the Respondent redrafted its claims from 1-27 to 1-25 and then 1-19.

Findings of the Court

The Court, while placing reliance on the impugned order charted the following questions:

a) if the notice qua amendment of the claims from 1-25 to 1-19 ought to have been given by the Controller;

b) if any prejudice is caused to the Petitioner;

c) if there exist an alternative remedy with the Petitioner.

As per the findings of the Hon’ble Court, the reduction in the number of claim from 1-25 to 1- 19 were made combining several independent claims in order to make the claims concise. The Court further went on to conclude that Claims 1-19 were only a reconstructed version of claims 1-25, hence there was no violation of natural justice and no prejudice was caused to the petitioner.

Since the amendments were made at the behest of the Controller and in the course of examination of application under Section 14, hence no notice was required to be issued by the Patent Office to the Petitioner.

With respect to the Petitioner’s submissions regarding non-filing of Form-13, the Court noted that there is no requirement to submit Form-13 as amendment was made pursuant to the directions of the Controller in exercise of his power and discretion under Section 15 read with Rule 55(5).

Finally, upon the question of whether there exists an alternate remedy with the Petitioner, the Court observed that the present petition has been filed by the Petitioner after filing of its post grant opposition. The Court held that the Petitioner had already availed of its alternative remedy of filing a post-grant opposition and hence the writ petition was not maintainable. Moreover, the Court was also influenced by the fact that the originally filed writ petition did not take a plea qua violation of natural justice and the same was introduced as an afterthought in reply to the objections qua the maintainability of the petition.

Accordingly, the writ petition was dismissed by the Court.