Powers Of Patent Examiner To Raise New Objections During The Course Of Hearing

18th January, 2023 - 11:01 am Categories: Patent Act 0 Comments

Introduction

The Indian Patent law provides that prior to the grant of any patent each application for patent has to undergo a thorough process of examination once its published. According to Section 11B and Rule 24B (1) (i) the said process of examination begins by filing a request for examination within the timeframe of 48 months from the date of filing or the date of priority whichever is earlier by means of Form 18. As per Section 12 and Rule 28 (2) (ii) once the request for examination is received by the controller the controller further has to refer the said application along with the specifications and other related documents to the examiner. After receipt of such application the examiner has to prepare a report pertaining to that application within one month but not exceeding three months from the date of receipt of such application from Controller. After receiving the report, the controller has to dispose of the report within one month from the date of receipt. Later within one month from the date of disposal of report the controller has to raise first set of objections if any by means of first examination report and the same has to be intimated to the applicant.

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The applicant later has to provide a response clarifying those objections within the time frame of 6 months from the date of receipt of such objections which may extend by 3 months, delaying which may result in abandoning of application. However, when those objections raised are contested by the applicant or in case after submission of reply to such objections by the applicant if the examiner is dissatisfied and raises further objections then those objections need to be communicated to the respondent and a notice of hearing giving reasonable time needs to be issued where the minimum time prescribed for preparation of such hearing is 10 days. But there is still an ambiguity on whether during the course of such hearing can the examiner directly raise further or additional objections. A detailed evaluation on this issue is expressed and anatomized further via a detailed analysis on decision of Delhi high court in matter of PerkinElmer Health Sciences Inc. v. Controller of Patents, MANU/DEOR/147922/2022.

Issue

1. Whether during the course of hearing an examiner can raise further or additional objections?
2. Whether without giving any prior notice for a hearing on an objection the controller can refuse the grant of patents?
3. Whether its mandatory for the controller to give prior notice for the objections raised for hearing?

Rule

1. Section 15 of the Patents Act 1970.
2. Section 3(f) of the Patents Act 1970.
3. Rule 30 of the Patents Rule 2003
4. Rule 129 of the Patents Rule 2003.
5. Clause l (i) Circular on “Examination of Patent Applications and Consideration of Report of Examiner by Controller” dated 21^st September 2011.

Analysis

The issue of raising further or additional objections while the hearing is already in progress was not been cleared upon until the Delhi High Court brought some perspicuity on it vide its judgment in PerkinElmer Health Sciences Inc. v. Controller of Patents, MANU/DEOR/147922/2022. In the instant case the patent application of the appellants was refused on the grounds provided under Section 15 of the Patents Act, 1970, (Herein after referred as “the Act”) and the same was subjected to a hearing. However, later during the time of hearing the examiner raised additional objections on the grounds provided under Section 3(f) of the Act without any prior notice. The appellants raised contentions on the same as the same was not only against the basic tenets of the principle of natural justice but also against the circular released by the Indian Patent Office on 21^st September 2011 named “Examination of Patent Applications and Consideration of Report of Examiner by Controller”. Under the said circular the clause l (i) provides that during the time of hearing the examiner may stay present, however, such examiner shall not communicate with the applicant directly nor shall the examiner raise any additional or further grounds for refusal. In the current case, the rejection of the application was based on the collectively grounds of Section 15 and Section 3(f) and for the grounds raised under Section 3(f) any prior notice or intimation was not even provided which is totally in breach of the said circular. Apart from that it does not even stands true on the basic principle of natural justice that is Audi Alteram Partem which simply implies that the other party needs to be given an opportunity to be heard and a reasonable time shall be given to that party to prepare a defence for himself.

The primary ingredient of Audi Alteram Partem is Serving of Notice which will contain grounds of charge or objections according to which the opposite party will prepare their defence. In the instant the case the notice was served only pertaining to refusal on grounds of Section 15 and hence the party only prepared for defence for the said grounds and the grounds related to Section 3(f) which were raised in the hearing itself, the parties didn’t received any notice pertaining to the same nor did they got any time to defend themselves against the same, as a result their application was subjected to an outright rejection without following the due procedure prescribed by the law. As per Co-operative Society v. Andhra Pradesh Government, AIR 1977 SC 313 basically, a notice is a primary object that contains charge against which the opposite party has to prepare their defence, any hearing without providing a prior notice would lead violation of laws of natural justice. In addition, the court in Public Prosecutor v. K.P. Chandrashekaran, 1957 8 S.T.C. 6 (Mad) provided that the notice time shall give sufficient time to the person to prepare his defence and shall not be arbitrary in nature. In the instant case the parties not only were not provided with the prior notice on grounds for refusal under Section 3(f) but also were deprived of sufficient time required to file a reply to the additional objections raised, and hence the order of the patent office rejecting the application of the appellant was contrary to principle of natural justice.

Furthermore, if we look at the Patent rules of 2003, under the Rule 30 it clears provides that the controller needs to serve the applicant with atleast ten days prior notice before the hearing, and similarly the Rule 129 provides that the Controller before exercising any discretionary power that is likely to affect the patent application of the applicant has to provide a hearing chance to the applicant, and the same needs to be served with ten days’ notice period to which the applicant need to affirm if he will be able to attend on the said time and date or not. In the instant case all such due process and procedure prescribed in these rules were bypassed and the controller passed an order arbitrarily refusing the grant to the application. Also, if we see the decision of Delhi High Court in cases of Chemtura Corporation v. Union of India, (2009) 41 PTC 260 and Nippon Steel Corporation v. Union of India, 2011 SCC OnLine Del 669, the court clearly mandated a strict adherence to administrative requirements and procedures prescribed by the Patents Act, 1970 which in the instant case was clearly disregarded by the patent authorities.

The Delhi High Court in the case in hand referring to all such grounds, and without going into the merits of the case set aside the impugned order stating it to be vitiating the principles of natural justice and the norms provided in the circular and remanded the respondent authorities to go for a fresh consideration.

Conclusion

All in All, the judgment in the instant case can be considered as a watershed moment, as in numerous case it has been observed that the administrative authorities especially the patent office shrugs off the procedure established by law while deciding the competency of the patent applications. Such disregard of rules and procedure by the patent office not only makes the process for getting one’s inventions under patent regime cumbersome and clunky but it also discourages the inventors of this nation from approaching the patent office for protecting their invention. The decision of the Delhi High Court in the instant case will have a significant impact on rights of the patent applicants and will also act as a touchstone mandating the patent authorities to follow the due process prescribed by the law.

Author: Bhardwajsinh Raulji, a Student of Symbiosis Law School Pune,  in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFRENCES

1. Patents Act, 1970
2. Patents Rules, 2003
3. Patents Office Circular on Examination of Patent Applications and Consideration of Report of Examiner by Controller, on 21^st September 2011.
4. PerkinElmer Health Sciences Inc. v. Controller of Patents, MANU/DEOR/147922/2022.

5. Co-operative Society v. Andhra Pradesh Government, AIR 1977 SC 313.
6. Chemtura Corporation v. Union of India, (2009) 41 PTC 260.
7. Nippon Steel Corporation v. Union of India, 2011 SCC OnLine Del 669.