In its recent decision in the case of UPL Ltd. vs Astec Lifeciences Limited & Anr. [IPDPTA/2/2024], the Calcutta High Court made some key observations regarding the handling of proceedings under Sections 14, 15, and 25(1) of the Patents Act, 1970.

In the instant case, the Appellant challenged the refusal of its patent application, alleging violation of the principles of natural justice. It was argued that the impugned order passed by the Controller was a mere verbatim reproduction of portions from the submissions filed by the pre-grant opponent. Notably, even the typographical errors and page numbers from the opponent’s submissions were identical in the order.

The Court held that the impugned order was unsustainable and remanded the matter to the Patent Office for fresh consideration.

In its decision, the Court remarked that patent registration involves a series of formal procedures, and decisions to grant or refuse a patent application have significant implications on the parties involved. Following are the key observations made by the Court:

• An order which mechanically reproduces a party’s submissions, and is passed without conducting an independent analysis of the application, is non est in the eyes of the law.
• Under Section 14, the First Examination Report (FER) must specify all the objections in an unambiguous manner. If there arises a need to cite new objections and/or prior arts, a Second Examination Report (SER) should be issued.
• Applicants must be given an opportunity to effectively address objections. If any objection persists, the same should be communicated to the applicant, and a hearing should be scheduled if necessary. 
• Under Section 25(1), after an applicant submits a statement and evidence under Rule 55(4), any further reply or document taken on record by the Controller must be communicated to the applicant to ensure fair opportunity.
• Orders issued under Sections 14, 15, and 25(1) must provide a clear reasoning, demonstrate application of mind, and address all issues and contentions raised by the parties. “There must be a ‘why’ to justify the ‘what’. Reasons form the soul of any decision making process and reflects the basis on which the Controller has arrived at a conclusion”.
• Reproduction of the submissions from either party must be clearly distinguished (through italics, quotation marks, or highlights) to differentiate them from the Controller’s observations.
• Timelines prescribed under the Patents Act and Rules must be strictly adhered to. Delays in processing patent applications undermine the objective and purpose of the Act.