By Jigyasa Pareek

Under the Patents Act, 1970, when a patent application is under process for grant and a pre-grant opposition is filed under Section 25(1), the Act sets into motion two distinct and parallel proceedings:

1. The original examination of the patent application, which is conducted under Sections 12, 14, and 15. This process is initiated once a request for examination is made, leading to the issuance of a First Examination Report (FER). Where objections persist after the applicant has filed the response to the FER, a hearing under Section 14 is held, after which the Controller may grant or refuse the application by a reasoned order under Section 15.
2. The pre-grant opposition proceedings which may be initiated by a third party’s representation under Section 25(1). Once the Controller finds the representation prima facie valid, the proceeding becomes adversarial between the applicant and the opponent, in accordance with Rule 55 of the Patents Rules, 2003.

These two proceedings are distinct, although they may run concurrently. The scheme of the Act envisages that:

• The Controller must hold separate hearings; one under Section 14 and another under Section 25(1).
• The Controller must pass distinct and reasoned orders in each proceeding, addressing the respective issues raised therein.

This bifurcated procedure is not merely an administrative convenience; it is a procedural safeguard that upholds the principles of natural justice. A failure to hold distinct hearings deprives the applicant of the opportunity to respond to objections arising in separate statutory contexts and vitiates the entire decision-making process.

In practice, there have been several instances where

• after the Controller had completed examination proceedings and found the invention fit for grant under Section 14,
• the same application was subsequently rejected on the strength of objections sustained in a pre-grant opposition under Section 25(1).

This demonstrates that the two proceedings can lead to different outcomes and must, therefore, be adjudicated separately.

The recent judgment of the Calcutta High Court in UPL Ltd. vs Union of India & Ors. [WPA-IPD 3 of 2024] exemplifies this distinction and reaffirms that collapsing these two tracks into a single proceeding constitutes a violation of natural justice.

The Petitioner, UPL Limited, filed patent application number 201631037704, relating to a fungicidal combination comprising ternary or quaternary mixtures of fungicides designed to reduce fungal diseases and enhance crop yield.

An FER was issued in April 2019, to which UPL filed a detailed reply in October 2019. While the examination was pending, a pre-grant opposition was filed by a third party in July 2020 under Section 25(1).

The Controller conducted a single hearing on the opposition on 2 May 2023. No separate Section 14 hearing was granted to the applicant in respect of the FER objections. Subsequently, by an order dated 3 November 2023, the Controller rejected the application, holding that the invention lacked novelty and inventive step, and was not patentable under Section 3(e).

UPL assailed the impugned order on the following grounds:

• Procedural irregularity: The Controller failed to conduct a separate hearing under Section 14 and collapsed the examination and opposition proceedings into one. This, UPL argued, was contrary to the statutory framework that mandates distinct adjudication under Sections 14 and 25(1).
• Violation of natural justice: The Controller disregarded an expert affidavit filed by UPL that substantiated synergistic efficacy and technical advancement. Additionally, the Controller introduced his own (suo moto) independent scientific analysis, which was never disclosed to the Petitioner. The Petitioner had no opportunity to respond to or contest this analysis.
• Erroneous factual conclusions: The finding that the applicant was unaware of the synergistic effect of the claimed combination was contrary to the disclosure in the specification and unsupported by the record.

The Court, in its judgment, first rejected the Respondents’ preliminary objection on maintainability of the writ petition, reiterating that a writ petition, under certain circumstances, is maintainable where there is a breach of natural justice, even when a statutory remedy exists.

On the substantive issue, the Court conducted a meticulous analysis of the statutory framework and held as follows:

(i) Distinct compartments under the Act

The Court affirmed that the examination proceedings under Section 14 and the pre-grant opposition proceedings under Section 25(1) are distinct compartments asenvisaged by the Act. They are to be conducted separately because the nature of objections differs fundamentally:

• FER objections arise from the Patent Office’s examination, and
• Opposition grounds arise from a third party’s representation.

Consequently, the Controller is obliged to provide two separate hearings and to pass separate orders addressing both sets of issues.

The Court expressly observed that the Respondent no. 4 (opponent) is not to be impleaded as a party in the original examination proceeding. The merger of these distinct processes into a single hearing, as had occurred in this case, was contrary to the scheme of Sections 14, 15, and 25(1) read with Rule 55(5) of the Patents Rules.

(ii) Violation of natural justice

The Court found that the Controller’s failure to consider the expert affidavit, coupled with his reliance on an undisclosed scientific analysis, amounted to a serious infirmity in the impugned order. Such conduct deprived the applicant of a fair opportunity to respond and thus violated the principles of natural justice.

The Court further noted that while the Controller has authority under Section 77 to seek expert assistance, that power must be exercised transparently and cannot be substituted by personal experimentation or undisclosed technical evaluations.

Having found that the statutory procedure was breached, the Court set aside the impugned order and remanded the matter to the Patent Office for reconsideration.