A writ petition filed for quashing of the impugned order dated 20^th July 2020 passed by the Deputy Controller of Patents and Designs in Pre-Grant Opposition filed by the petitioner, HARYANA PESTICIDES MANUFACTURES ASSOCIATION against application for grant of patent titled “Novel Fungicidal Composition”, filed by respondent, WILLOWOOD CHEMICALS PRIVATE LIMITED, has been held to be not-maintainable by the Delhi High Court (DHC).

The Petitioner argued that :-

• An application for grant of patent was made by the respondent with claims 1-27;
• The first examination report (FER) was issued and it required to file a response to the examination report.
• The petitioner filed objections to the same;
• Form-13 dated 18.09.2019 was filed by the respondents thereby amending their claims from 1-27 to 1-25;
• The hearing was granted to the petitioner qua these amended claims and it concluded on 13.01.2020;
• Both the parties were directed to file written submissions;
• The respondents sent a copy of their written submissions to the Controller with a copy to the petitioner herein;
• However, on 27.01.2020, the respondents yet again sought to amend their claims from 1-25 to 1-19 but the copy of such amendment application/written submissions were never served upon the petitioner herein and neither any Form-13 was filed;
• The impugned order was then passed.

The questions involved in this petition that the Court had to decide were:-

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.

The Court held that;

• A bare perusal of claim nos.1-19 would show some of the claims, independently made were infact added/joined in earlier claims thus making the list concise. Some claims independently made were thus deleted. No additional claim was ever made and only re-adjustment of claim nos.1- 25 was done and were brought down to claims no.1 to 19.
• In its impugned order dated 20.07.2020 the Controller has dealt with all the issues raised by the petitioner after giving a hearing under Section 14 and 25 of the Patents Act i.e., on examination as well as on objections/oppositions to claims nos.1-27; hence there was no violation of natural justice and no prejudice is caused to the petitioner
• Admittedly no new constituent was brought in claim nos.1-19.
• Moreso, alleged amendment was never sought by the petitioner but was per directions of the Controller to concise its claims, its number was reduced from 1-25 to 1-19.
• Thus, amended claim were submitted pursuant to the directions of the Controller under Section 15 read with Rule 55(5) of Patents Act.
• 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).

In view of the above, the Court held that there appears to be no violation of principles of natural justice. Further, the Court also noted that the petition was filed by the petitioner after filing of its post grant opposition. The DHC also noted that at an initial stage of this Writ Petition, the petitioner did not take a plea qua violation of natural justice but when an objection was taken by the respondent qua the maintainability of this petition, it was added as a new ground in the amended Writ Petition.

Thus, the DHC held that the Writ petition is not maintainable, since, the petitioner, has already availed of an alternative remedy of filing post-grant opposition and that there is no merit in the Writ.