Kiran Raj

The Calcutta High Court, Original Side (Intellectual Property Rights Division), presided over by Justice Ravi Krishan Kapur, has set aside the rejection of a patent application on account of excessive delay in its disposal. The case involved an appeal filed under Section 117A of the Indian Patents Act, 1970, challenging an order dated March 4, 2024, which had rejected Patent Application No. 4842/KOLNP/2007 related to crystalline modifications of pyraclostrobin.

The subject of the dispute was a new polymorphic form (Form IV modification) of pyraclostrobin, along with the process for its preparation. The appellant, BASF SE, contended that the rejection of its patent application was invalid due to the inordinate and unexplained delay in its disposal. The application, filed on December 12, 2007, had been pending for approximately 18 years and was rejected in 2024, just two years before the patent’s expiry on June 19, 2026. The appellant argued that this delay negated the purpose of the patent regime and violated principles of natural justice.

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Following the filing of the application, three pre-grant oppositions were submitted under Section 25(1) of the Act by Respondent Nos. 2, 3, and 4, with the most recent opposition being filed on March 1, 2024, by Respondent No. 4. The appellant asserted that the rejection order misapplied the test for obviousness and failed to consider the technical advantages of the invention. The appellant also pointed out that an expert affidavit supporting their claims had been disregarded.

The respondents admitted that there was no valid justification for the delay in the application’s disposal. Respondent No. 4, though not appealing the rejection, argued that its objections were not properly considered as mandated under the Act.

The court took cognizance of the timeline of the case and expressed concern over the significant delays at various stages of the proceedings.

“The respondent authorities have been sitting over the application till the 18th year of its term. The delay is so obvious that the same can only be described as deliberate and intentional.”

The judgment stated the prolonged gaps, including the four-year delay in disposing of the First Examination Report response and the one-year delay in passing an order after the hearing concluded in March 2017. The court noted that the hearing notice under Section 14 of the Act was not issued until April 2023, despite the pre-grant opposition concluding in June 2022.

Additionally, the court found substantive errors in the assessment of the invention’s patentability. It noted that the rejection order had inconsistencies regarding obviousness and lack of inventive step, which should be distinct legal concepts. Citing the precedent Avery Dennison Corporation Vs. Controller Of Patents and Designs (2022/DHC/004697), the court reiterated that inventive step analysis must be conducted holistically rather than relying on isolated prior art references.

“In determining inventive steps, the invention should be considered as a whole. It is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious.”

The judgment also referenced Oyster Point Pharma Inc. vs. Controller of Patents and Designs and Another, 2023 SCC OnLine Cal 2141, wherein the court had held that technical data submitted during the patent process must be duly considered, particularly in pharmaceutical patents where additional testing may be necessary over time.

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In light of its findings, the court issued the following directives to ensure a timely and impartial reassessment of the patent application:

1. Expedited Reassessment: The respondent authorities must issue a fresh hearing notice within two weeks from the date of this order and dispose of the subject application, along with all objections, within four weeks of communication of this order.

2. Waiver of Redundant Notices: Since Respondent No. 4 relied on the same documents as Respondent No. 2 in their objection, the requirement for issuing notice under Rule 55(3) and the filing of a Reply Statement is waived to prevent further delays.

3. Comprehensive Review: The appellant must address the opposition filed by Respondent No. 4 during the rehearing to ensure all objections are considered in one comprehensive process.

4. Reallocation to a New Decision-Maker: To eliminate any apprehension of bias or pre-determination, the matter must be assigned to a different Controller or an Appropriate Officer who was not involved in the previous rejection order.

Advocates Representing the Parties

The appellant, BASF SE, was represented by Ms. Archana Shankar, Mr. Devindra Rawat, and Ms. Mini Agarwal, Advocates. Respondent No. 3 was represented by Mr. Arkaprava Sen and Mr. Sayantan Kar, Advocates. Respondent No. 4 was represented by Mr. Subhatosh Majumdar, Mr. K.K. Pandey, Ms. Mitul Dasgupta, Ms. Amrita Majumdar, and Ms. Pooja Sett, Advocates.

Case Title: BASF SE vs. Joint Controller of Patents and Designs and Ors.

Case Number: IPDPTA/5/2024

Bench: Justice Ravi Krishan Kapur

[Read/Download order]