The present case deals with a writ petition filed by Haryana Pesticides Manufactures Association against Willowood Chemicals Private Limited where the writ is filed for quashing the impugned order passed by Deputy Controller of Patents and Designs in pre grant opposition under Section 25(1) of Indian Patents Act, 1970 for the grant of Patent titled as “Novel Fungicidal Composition”.
The initial Patent application was filed with 27 claims which was later amended to 25 claims and further amended to 19 claims. The grievance of petitioner is that the copy of amended application was never served to petitioner and the patent was granted without giving the petitioner the opportunity of being heard.
The Learned Counsels for petitioner relied on several judgements such as Best Agrolife Limited v. Deputy Controller of Patents and Anr. where amendment to claims without notifying the petitioner has been considered a complete violation of principles of natural justice. In the case of Indian Network for People living with HIV/AIDS vs. Union of India & Ors.[1], it was held that remedy at pre grant opposition cannot be equated with post grant opposition. The statute has provided remedy at both stages and thus these remedies must be available at both the stages. One remedy cannot substitute for another. An unfair trial cannot be cured by a fair appeal.
Additionally, as per Section 57(4) of the Patents Act, Controller shall notify the opponent and an opportunity to be heard is given to the opponent. However, it is pertinent to note that Section 57(1) and Section 57(2) deals with the procedure of voluntary amendment which involve filing of application in the manner prescribed in Rule 81 and 82 of the Rules of Form-13 with payment of prescribed fee vide entry no.20 of Table-1 of the first schedule of the Patents Rules 2003. Such procedure does not apply to the amendment made in the specification to comply with the direction of the Controller issued before the grant of Patent under Section 14, 15 and Rule 55(5).
The Hon’ble Court led by Justice Khanna found that there are three major questions which has been arisen in the present case were- First if the notice of amendment of claims from 25 to 19 ought to have been given by the Controller. Second if any prejudice has been caused to the petitioner. Third is if there exist an alternative remedy with the petitioner.
The learned Counsel for the respondents argued that these claims were amended pursuant to the directions of the Controller in the course of the examination under Section 14, thus no notice was issued by the Controller to the petitioner.
Additionally, claim 1 being the independent claim was not amended. Rather the amendment of claims was done to make these claims more concise and narrower. Thus, no new claim has been added and hence there was no violation of natural justice and no prejudice has been caused to the petitioner.
It was shown that there was never any addition nor expansion to the scope of the claims while reducing it from 25 to 19. Hence no violation of principle of natural justice can be proved.
Additionally, these amendments were done at the behest of Controller during the course of examination. It is pertinent to note that amendment made during opposition stand on different footing than the amendment required at the instance of controller.
Thus, no prejudice has been caused to the petitioner.
Coming to the last question of whether there exists any alternative remedy with petitioner. The petitioner before filing the writ has already filed post grant opposition. Moreso, the petitioner did not take plea qua violation of natural justice at the initial stage of writ petition but added ait as a new ground when an objection was taken by the respondent qua the maintainability of this petition.
Therefore, Writ petition is not maintainable since the petitioner has already availed the alternative remedy of filing post grant opposition
Reliance was taken from the case of UCB Farchim SA vs. Cipla Limited and Ors.[2], where it was held that “the remedy against the rejection of their pre-grant opposition is to file a post-grant opposition under Section 25(2)”.
The above petition was dismissed.
[1] 2009 (39) PTC 468 (Madras) (DB)
[2] 2010 (42) PTC 425 (Del.)
DISCLAIMER-
The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.
AUTHOR:
Pallavi Bhatia,
Student of Rajiv Gandhi School of Intellectual Property Law,
IIT Kharagpur
