Kiran Raj

The Calcutta High Court has issued a directive mandating the expeditious resolution of a pending patent dispute after finding procedural irregularities in the handling of pre-grant opposition proceedings. The court ordered reassignment of the matter to a different Controller and instructed that no unnecessary adjournments be granted.

The dispute arose following the postponement of a hearing related to a patent application that had been pending before the Controller of Patents. The petitioner, UPL Limited, had filed an application for a patent, which was duly published under Section 14 of the Patents Act, 1970. Following the publication, an examination process commenced, and the petitioner engaged in correspondence with the Patent Office, addressing various objections raised by the examiner.

On May 21, 2021, a hearing was held where the petitioner presented its case, followed by the submission of written arguments. Subsequently, respondent no.5 filed a pre-grant opposition, challenging the patent application. The opposition hearing was conducted on October 13, 2023, with final written submissions filed on November 28, 2023. Despite the completion of the hearing, no decision was issued by the Controller.

A second pre-grant opposition was lodged by respondent no.6 on November 30, 2023. This opposition cited grounds largely overlapping with the objections raised by respondent no.5, relying on similar prior art references. While considering the second opposition, the Controller issued an email notifying the parties that the hearing scheduled for August 22, 2024, had been adjourned. The official communication, dated August 1, 2024, referenced the redundancy of grounds raised in the second opposition and directed the applicant to submit statements and evidence within two months.

The petitioner contended that the adjournment was unjustified and in violation of Rule 55 of the Patents Rules, 2003, which requires a prima facie determination before proceeding with a pre-grant opposition. Additionally, the petitioner argued that the delays and procedural lapses had resulted in an unfair prolongation of the patent application process, adversely impacting its rights.

Respondent no.5 opposed the petitioner’s stance, arguing that the proceedings had been delayed due to repeated adjournments sought by the petitioner. While not contesting procedural irregularities, respondent no.5 asserted that the matter should remain with the same Controller and not be transferred. Respondent no.6 remained unrepresented in the proceedings.

The court identified significant procedural lapses and delays in handling the pre-grant opposition proceedings. It noted that "the grant of unnecessary adjournments mechanically passed defeats the very intention of the Legislature as reflected on a combined reading of sections 14 and 21 of the Act read with Rule 24B of the Rules." The court stated that the hearing for the first opposition had concluded in November 2023, yet no decision had been rendered, and the matter had been repeatedly postponed without any justification.

Further, the court examined the handling of the second pre-grant opposition, stating that Rule 55(3) mandates a prima facie assessment before entertaining such opposition. The judgment recorded that "there has been an infraction of Rule 55(3)," as no such assessment had been conducted in relation to the second opposition filed by respondent no.6. The court held that the Controller’s actions failed to align with procedural mandates and disrupted the legislative framework governing patent applications.

The court held the importance of statutory timelines, stating that "keeping in view the purpose and object of the Act, it is imperative that the prescribed time limits be strictly adhered to." It noted that prolonged pendency of opposition proceedings, coupled with the absence of prima facie findings, led to avoidable delays in the patent examination process. The court criticized the administrative inefficiencies and procedural deviations, concluding that the approach adopted by the Controller contravened the principles of natural justice and fairness.

Addressing the issue of transfer, the court took note of the petitioner’s concerns regarding the delays caused by the current Hearing Officer. Given the prolonged pendency and the lack of decisive action, the court deemed it necessary to reassign the matter to another Controller to ensure an impartial and time-bound adjudication.

To rectify the procedural shortcomings and expedite the resolution of the dispute, the court issued the following directives:

1. The matter shall be reassigned to a Controller other than those who have previously handled the case under Section 14 or Section 25(1)(a) of the Patents Act, 1970.

2. The pending patent application and the pre-grant opposition filed by respondent no.5 shall be reconsidered from the hearing stage. The court clarified that Rule 55(iii) of the Patents Rules, 2003 (as amended), shall not be applicable to respondent no.5’s opposition.

3. Regarding the second pre-grant opposition filed by respondent no.6 under Section 25(1) of the Act, the newly assigned Controller must strictly comply with Rule 55(3) and record prima facie reasons before deciding whether to proceed with the opposition.

4. The proceedings shall be concluded within eight weeks from the date of communication of this order. No unnecessary adjournments shall be permitted during the process.

Case Title: UPL Limited v. Union of India & Ors.
Case Number: WPA-IPD 2 of 2024 (Old No. WPA 28484 of 2024)
Bench: Justice Ravi Krishan Kapur

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