The scheme of the Patents Act, 1970 draws a procedural distinction between the examination of a patent application and the pre-grant opposition mechanism. The examination process under Sections 12-15 and the pre-grant opposition mechanism under Section 25(1) operate as parallel yet independent statutory stages. While a pre-grant opposition aids the Controller by placing additional material and objections on record, it does not merge with, substitute, or override the Controller’s independent statutory obligation to examine the application on merits. Importantly, the examination stage remains a bilateral proceeding between the applicant and the Patent Office, whereas the pre-grant opposition permits third-party participation only within the statutory contours of Section 25(1). The distinction is structural, deliberate, and central to maintaining the integrity of patent adjudication.

Against this backdrop, the Calcutta High Court, in UPL Limited vs Haryana Pesticides Manufacturers Association & Anr. [IPDPTA No.116 of 2023], considered whether the Controller was justified in disposing of both the examination process and the pre-grant opposition by way of a single consolidated order, without granting distinct hearings and without clearly demarcating the statutory basis of refusal.

The appeal arose from the refusal of patent application number 201831011137, entitled “Herbicidal Combinations”, relating to a herbicidal compositions comprising three classes of herbicides. The application was refused on the basis of the grounds urged in the pre-grant opposition filed under Section 25(1), viz., lack of novelty under Section 25(1)(b), lack of inventive steps in view of prior art documents D1-D5 under Section 25(1)(e) and non-patentability under section 25(1)(f) (mere admixture under Section 3(e)).

The objections raised in the First Examination Report (FER) inter alia related to lack of novelty, lack of inventive step supported by multiple prior art references, and insufficiency of disclosure. Of  the prior art documents, two documents (D1 and D2) were common to both the FER and the pre-grant opposition. Four prior art documents relied upon in the opposition were not part of the FER.

It was the case of the Appellant that:

• Despite specifically requesting a hearing in the hearing response, no opportunity of hearing under Sections 14 or 15 was granted.
• The impugned order was passed only under Section 25(1) disposing the entire proceedings.
• The impugned order mechanically reproduced the opponent’s submissions without demonstrating independent reasoning.
• Document D1 and D2 cited in the FER were verbatim copies of the documents cited in the International Search Report.
• The prior arts relied upon by the opponents were not deal with in the impugned order and the application was erroneously rejected on the ground of lack of inventive step.

The Court reaffirmed the structural distinction embedded in the Act and observed that:

• Examination under Sections 14-15 and pre-grant opposition under Section 25(1) are both required to be heard separately as they are distinct and independent stages.
• A pre-grant opponent does not acquire the status of a party in the examination proceedings and cannot claim a right of participation at that stage.
• Rule 55(5) of the Patents Rules contemplates that a speaking order deciding the pre-grant opposition should be passed alongwith the proceedings under section 14 and 15.
• Where objections in the FER differ from those raised in the opposition, separate consideration and opportunity of hearing are necessary. Separate orders ought to be passed dealing with both the proceedings.
• If a composite order is passed, it must clearly indicate which portion pertains to Sections 14-15 examination and which pertains to Section 25(1).

The Court relied on Novartis AG vs Natco Pharma Ltd. [2024 SCC OnLine Del 152] to reiterate that although the processes may proceed parallelly, they cannot converge or collapse into each other.

On the facts, the Court identified the following procedural lapses:

• The Appellant’s express request for a hearing under Section 14 was not acceded to.
• At the examination stage, prior arts cited in the FER were verbatim copies of the documents in the ISR.
• While D1 and D2 were common to both stages, additional documents (D3-D5) were introduced at the opposition stage. The appellant had been denied an opportunity to address the prior art documents relied upon in the opposition.
• The impugned order did not demarcate findings under Section 15 and Section 25(1).
• The Appellant had informed the Controller that one cited document in the FER was untraceable, however, this submission was not addressed in the impugned order.