The Calcutta High Court, in the appeal of BASF SE vs Joint Controller of Patents and Designs & Ors. [IPDPTA/5/2024], noted that delay in the patent prosecution constitutes violation of the principles of natural justice. The Court remarked that the delay in the instant case was so obvious “that the same can only be described as deliberate and intentional”, highlighting that the delay was caused by a particular hearing officer at every stage of the proceeding. The Court emphasized that such delays undermine the very purpose of patent law, rendering patent rights ineffective and making a mockery of the procedural framework established to protect the interests of the applicants.

In this case, BASF filed an appeal under Section 117A of the Indian Patents Act, 1970, challenging the refusal of their PCT national phase application number 4842/KOLNP/2007, entitled “Crystalline Modifications to Pyraclostrobin”. The invention pertained to a new polymorphic form (Form IV) of pyraclostrobin, characterized by unique X-ray powder diffraction properties and a process for its preparation. Filed on December 12, 2007, the application was refused on March 4, 2024, nearly 18 years later. The refusal was based on the grounds of insufficiency of disclosure, lack of inventive step and non-patentability under section 3(d) of the Patents Act, 1970.

The appellant challenged the impugned order and argued that the inordinate delay violated natural justice, as patents have a fixed 20-year term, and excessive prosecution timelines deprive patentees of their rights. It further contended that the Controller failed to properly assess inventive step of the subject invention, incorrectly applying the test to determine obviousness. Additionally, the appellant challenged the erroneous application of Section 3(d), asserting that the Controller disregarded the expert affidavit filed by the appellant that demonstrated the enhanced therapeutic efficacy in the subject invention.

The Court found the delay excessive and deliberate, as the records revealed a consistent pattern of inaction and unexplained delays by the Patent Office at multiple stages of the proceedings.  Given the lack of any valid justification from the respondents, the Court held that the impugned order was liable to be set aside for violating the principles of natural justice.

Further, the Court noted that the Controller failed in applying the tests to determine inventive step as laid down in Avery Dennison Corporation vs Controller of Patents and Designs (2022/DHC/004697). The Court also referred to the decision in Groz-Beckert KG vs Union of India and Ors. (2023 SCC OnLine Cal 111), highlighting that when determining inventive step, the invention should be considered as a whole and obviousness should be judged strictly and objectively.

The Court also noted that the grounds for refusal were inherently contradictory, as the Controller held the invention to be both obvious and insufficiently disclosed—two findings that are fundamentally inconsistent. Relying on Terrell on the Law of Patents (Sweet & Maxwell), the Court highlighted that an insufficiently disclosed invention requiring substantial effort to implement cannot be obvious, as an obvious invention should be easily reproducible. Thus, rejecting a patent on both obviousness and insufficiency was logically irreconcilable.

The Court further examined the rejection under Section 3(d), which excludes from patentability mere new forms of known substances unless such new form results in enhancement of efficacy of that known substance. The Court found that the impugned order failed to assess the technical advancements claimed by the appellant and disregarded the data submitted by the appellant to demonstrate improved fungicidal activity of Crystalline Modification IV of Pyraclostrobin. The Court found that the Controller’s decision lacked proper reasoning and was arbitrary to the established precedents, such as Oyester Point Pharma Inc. vs Controller of Patents and Designs & Anr., where it was emphasized that efficacy data may not always be available at the time of filing and should be duly considered if submitted later.

In light of these findings, the Court set aside the impugned order and directed that a hearing notice be issued within two weeks from the date of the order, with the application and objections to be disposed of within four weeks from the date of communication of the order. Recognizing that objections of two pre-grant opponents, Respondent No. 2 and 4, were based on the same documents, the Court waived the requirement for issuing notice under Rule 55(3) and the filing of the Reply Statement. Further, to avoid any perception of bias or predetermination, the Court ordered that the application be considered by a different Controller.