Patent Rules, 2003, saw a significant change on March 15, 2024, when the Patents (Amendment) Rules, 2024 came into effect. One of the notable changes was to Rule 55, which governs how pre-grant oppositions are handled. Under the new Rule 55(3), the Controller is obligated to provide a reasoned order for either prima facie acceptance or refusal of a pre-grant opposition representation and notify the applicant accordingly. Prior to this amendment, there was no provision that allowed the Controller to refuse to take a pre-grant opposition on record. There was no prima facie filter or discretionary gatekeeping power vested in the Controller. Every filed opposition, regardless of merit, triggered a procedural chain involving notice to the applicant, opportunity to respond, and possible hearing. While this ensured procedural fairness, it also caused delays and clogged the system. The 2024 amendment to Rule 55 fundamentally altered this framework by introducing a prima facie review mechanism to weed out meritless oppositions at the outset. Now, upon receiving a pre-grant opposition, the Controller is required to first assess whether the representation discloses a prima facie case for opposition. Only if this threshold is met does the Controller initiate the subsequent stages under Rule 55(4).

But what happens if a pre-grant opposition was filed before this new rule came into effect, and the Patent Office didn’t act on it until after the amendment?

This situation came up in a recent case before the Calcutta High Court in UPL Ltd. vs Union of India & Ors. [WPA-IPD 2 of 2024], where the Petitioner challenged the procedural lapses in the handling of their patent application number 201731001199. While the Court’s primary focus was on the repeated and unjustified adjournments granted during prosecution, the Court’s directions on how oppositions should be handled shed light on how the 2024 amendments may apply to pending matters.

The writ petition was filed in response to the procedural irregularities committed by the Controller in prosecuting UPL’s patent application. Notably, the examination of the subject application under Section 14 of the Patents Act was concluded in May 2021, and the proceedings in relation to the first pre-grant opposition were concluded in October 2023. Subsequently, in November 2023, a second pre-grant opposition was filed which relied on the same grounds and cited the same prior art references as those in the first opposition. In a communication dated January 5, 2024, the Petitioner informed the Controller that the second opposition was based on identical grounds and prior art, and accordingly requested that the representation not be forwarded to them.

However, on July 29, 2024, without issuing any order under Rule 55(3) of the Patent (Amendment) Rules, 2024, the Controller informed the parties via email that the hearing scheduled in relation to the second pre-grant opposition had been adjourned. On August 1, 2024, the Controller issued another email, acknowledging the overlap in cited prior art documents, but nevertheless took on record the representation for the second opposition (i.e. accepted the representation) without assigning any prima facie reasons and invited the Petitioner to file a written statement under Rule 55(4), if so desired. The hearing scheduled for August 22, 2024, was also cancelled by the same communication.

UPL challenged this, arguing that under Rule 55(3) as amended, the Controller was first required to assess and record reasons for prima facie accepting the opposition. It was further argued that the cancellation of the scheduled hearing was unjustified and in violation of the statutory mandate under the Patents Act and Rules.

Noting that the matter had been left pending by the concerned Hearing Officer for an unreasonably long period, without any justification for the delay, the Court provided the following observations:

• Unnecessary Adjournments Contradict Legislative Intent: The Court emphasized that the Patents Act, 1970, along with the Rules, prescribes fixed timelines for hearing and disposing of patent applications. The legislative intent before these timelines is to prevent unnecessary delays. Therefore, grant of unnecessary adjournments without assigning a valid reason, in a mechanical manner, undermines the legislative purpose enshrined in Sections 14 and 21 of the Act, read with Rule 24B of the Rules.
• Patent Rules do not justify repetitive Adjournments: The Court clarified that an adjournment should not be granted merely because a party requests it. While the Patent Rules allow for two adjournments, this provision does not justify the repetitive grant of adjournments. Grant of repeated adjournments violates the principles of natural justice.

Turning to the second pre-grant opposition, although it was filed on November 30, 2023, prior to the enforcement of the Patents (Amendment) Rules, 2024, the Court held that the Controller had failed to comply with the mandate under Rule 55(3). The Court specifically noted that, “It is true that the second pre-objection was filed on November 30, 2023. However, the matter was repeatedly adjourned without assigning any reasons whatsoever. There has also been an infraction of Rule 55 (3).”.

This observation may suggest that, despite the opposition being filed before the 2024 amendment came into effect, the delayed handling of the matter meant that the amended Rules were applicable when the matter was eventually taken up. This signals that where no substantive step had been taken before the amendment, the amended Rule 55(3) would apply.

This position gains further support from the Court’s final directions: the matter was ordered to be assigned to a different Controller, and the first pre-grant opposition was to be considered afresh from the stage of hearing, however, the Court clarified that the amended Rule 55(3) would not apply to the first opposition. In contrast, with respect to the second pre-grant opposition, the Court expressly directed that the Controller must follow the extant provision of Rule 55(3) and record prima facie reasons for either accepting or rejecting the representation.

This decision underscores two key procedural imperatives: the importance of maintaining procedural discipline, particularly regarding adjournments, and the evolving role of the Controller under the amended Rule 55(3). While the Court’s observations were directed at the repeated and unjustified grant of adjournments, the Court’s treatment of the second pre-grant opposition reflects a subtle recognition of the Patents (Amendment) Rules, 2024, and their application to matters still pending or not substantively acted upon before the amendment came into effect.