[Cites 15, Cited by 0]
Bombay High Court
Aic246 Ag And Co Kg vs The Patent Office Of India Through ... on 27 February, 2026
2026:BHC-OS:5637
5-COMMP-72-2025
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMM. MISCELLANEOUS PETITION NO. 72 OF 2025
AIC246 AG & Co. KG .... Petitioner
Versus
The Patent Office of India and Ors. .... Respondents
_______
Adv. Amey Nargolkar a/w Arkadeep Kundu i/b. Khaitan and Co. for Petitioner.
Adv. Vinit Jain a/w. Gaurav Mhatre and Shazia Ansari for Respondent No. 1.
Adv. Rashmin Khandekar a/w. Vandika Malhotra Hegde, Rishi Mody, Sanjana
Krishnasarma, and Lavnish Kumar Sharma i/b. VMH and Associates for
Respondent No. 3.
_______
CORAM : ARIF S. DOCTOR, J.
RESERVED ON : 20th FEBRUARY 2026
PRONOUNCED ON : 27th FEBRUARY 2026
JUDGEMENT
1. The captioned Petition impugns an Order dated 26th June 2023 ("the
impugned order") passed by Respondent No. 2, i.e., Controller of
Patents, by which the Petitioner's Patent Application No.
201627001750 for "Combinations Comprising a Triazole Fungicide
and a Biological Control Agent" was rejected solely under the
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provisions of Section 25(1) of the Patents Act, 1970 ("Patents Act")
on account of a pre-grant opposition filed by Respondent No. 3.
Admittedly, the Petitioner was not given a hearing under Section 14 of
the Patents Act before the patent was refused nor after the order
passed under Section 15 of the Patents Act.
2. Mr. Nargolkar, Learned Counsel appearing on behalf of the Petitioner,
at the outset submitted that the though impugned order suffers from
several substantive infirmities, which include failure to consider
expert evidence, absence of adequate reasoning, and failure to
properly assess novelty, inventive step and the applicability of Section
3(d) of the Patents Act, the challenge was confined only with regard
to the admitted and limited fact that the Petitioner was not granted a
hearing under Section 14 of the Patents Act prior to rejection of the
Petitioner's Patent application.
3. Before considering the rival contentions, it is useful for context to set
out the following facts which are not in dispute:
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i. The Petitioner on 21st March 2016 filed Patent Application No.
201627001750, which was subsequently published on 7th October
2016.
ii. A First Examination Report ("FER") under Section 12 of the
Patents Act was then issued by the Controller on 4th December
2020.
iii. The Controller subsequently issued a hearing notice to the
Petitioner under Section 14 of the Patents Act, scheduling a hearing
on 5th January 2021.
vi. On 5th January 2021, less than one hour prior to the scheduled
hearing under Section 14, the Controller adjourned/cancelled the
hearing, expressly recording that a fresh hearing under Section 14
would be granted to the Petitioner "in due course".
v. Thereafter, Respondent No. 3 filed a pre-grant opposition under
Section 25(1) of the Act on, subsequent to the Petitioner's reply to
the FER dated 4th June 2021.
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vi. Subsequently, on 19th April 2023, the Controller conducted a
hearing in the pre-grant opposition proceedings, at which both the
Petitioner and the Opponent made oral submissions and thereafter
filed written submissions.
vii. Thereafter, without granting the earlier-promised hearing under
Section 14 and without passing any order under Section 15 of the
Act, the Controller passed the impugned order, rejecting the
Petitioner's application solely under Section 25(1) of the Patents
Act.
viii. Thus the present Petition.
Petitioner's Submissions:
4. Mr. Nargolkar, learned counsel appearing on behalf of the Petitioner,
at the outset submitted that the statutory framework governing the
'examination of a patent application' and any 'opposition to a patent'
was clearly delineated in the Patents Act, particularly in Chapters IV
and V. He pointed out that Chapter IV was titled "Publication and
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Examination of Applications", whereas Chapter V was titled
"Opposition to Grant of Patents", thereby making it evident that the
proceedings contemplated under Chapter IV and those under Chapter
V are distinct in nature and operate independently within their
respective statutory domains.
Chapter IV - Publication and Examination of Applications
5. Elaborating on the scheme under Chapter IV, Mr. Nargolkar submitted
that once a patent application is filed, it is published in terms of
Section 11A of the Patents Act, after which a Request for Examination
is required to be filed under Section 11B. He pointed out that upon
such a request, the Patent application is examined under Sections 12
and 13, and a First Examination Report ("FER") is issued, setting out
the objections of the Controller, if any.
6. Mr. Nargolkar then submitted that the Applicant is thereafter required
to respond to the FER, and if the Controller is satisfied with the
response and the application is found to comply with the provisions of
the Act, the patent is granted under Section 15.
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7. He, however, pointed out that if the Controller remains unsatisfied or
considers that amendments are necessary to bring the application into
compliance with the Act, the Patents Act mandates the Controller to
give the Applicant an opportunity of being heard under Section 14. He
submitted that the opportunity enables the Applicant to address the
outstanding objections of the Controller and make appropriate
amendments, etc., to the patent application which has been denied to
the Petitioner in the present case.
8. Mr. Nargolkar submitted that it is only after affording the Applicant an
opportunity of hearing under Section 14 that the Controller can
proceed to pass an order under Section 15, either granting or refusing
the patent application. He submitted that any order refusing a patent
must therefore be made under Section 15 of the Patents Act and only
after strict compliance with the procedure prescribed under Chapter IV
of the Act, which would include a hearing to the Applicant under
Section 14 of the Patents Act, which he reiterated was not granted to
the Petitioner in the present case.
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Chapter V - Opposition to Grant of Patents
9. Mr. Nargolkar then, with regard to Chapter V, submitted that Section
25(1) enables "any person" to file a pre-grant opposition at any time
after publication of the application. He submitted that on such
opposition being filed, the Controller is required to decide the same in
accordance with the procedure prescribed under Rule 55 of the Patent
Rules after hearing the Applicant and the Opponent.
10. He pointed out that a hearing under Section 25(1) is adversarial and
bilateral in nature, involving both the Applicant and the Opponent. He
submitted that the opposition proceedings under Chapter V of the
Patents Act serve only as an aid to the examination process under
Chapter IV but do not supplant or form part of the examination stage
contemplated under Chapter IV.
11. Mr. Nargolkar submitted that even where a pre-grant opposition is
filed, the Controller typically proceeds to grant the Applicant a
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hearing under Section 14, to which the Opponent is not a party, and
only thereafter proceeds to pass a composite speaking order under
Sections 15 and 25(1), simultaneously deciding the opposition and the
application filed for the grant of a patent. He thus submitted that a
separate hearing under Section 14 is mandatory before the Controller
exercises the power of grant or refusal under Section 15.
12. Mr. Nargolkar submitted that the fact that a hearing under Section 14
of the Patents Act must be afforded to the Applicant before rejection
of a Patent was also clear from the Manual of Patent Office Practice
and Procedure ("Patents Manual"), 09.04(12), which clearly provides
that "No patent is refused without giving an opportunity of being
heard under Section 14 of the Act." He also referred to Rule 55(5) of
the Patent Rules and paragraph 09.06(10) of the Patent Manual to
point out that after the conclusion of the Section 25(1) proceedings,
the Controller may either reject the opposition or, if not satisfied,
refuse the patent by passing a speaking order under Section 15,
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thereby deciding both the opposition and the application by a
composite order.
13. Basis the above, he submitted that the scheme under Chapters IV and
V of the Patents Act was distinct and independent inasmuch as the
same contemplates two distinct but parallel processes, both
culminating in a speaking order under Section 15 and that the same
cannot be merged or eclipsed into one proceeding even though they
may proceed in parallel.
14.Mr. Nargolkar further submitted that it is no longer res integra that the
proceedings contemplated under Chapters IV and V of the Patents Act
are distinct in character and operate independently. In support of his
contention, he placed reliance upon the decision of the division bench
of the Delhi High Court in Novartis AG v. Natco Pharma & Anr.
from which he pointed out that the Delhi High Court had, after a
detailed analysis of the statutory framework under the Patents Act and
Rules, held that the examination process under Chapter IV involves an
independent and substantive determination of patentability by the
[Delhi High Court] Order dated 9th January 2024 in LPA No. 50 of 2023.
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Examiner and/or the Controller, whereas the opposition mechanism
under Chapter V is intended to assist that process by enabling third
parties to place relevant material and objections on record. He pointed
out that the Court had specifically cautioned against conflating the two
processes, observing that any merger or convergence would dilute the
rigour and discipline inherent in the examination process and would be
contrary to the legislative design and intent. He also pointed out that
the said decision specifically laid down that the Controller's power
under Section 15 to grant or refuse a patent flows from Chapter IV and
is an independent statutory power, not controlled or circumscribed by
opposition proceedings under Section 25(1), and that while both
processes may run simultaneously, they remain distinct and
independent, and the Patents Act does not envisage their merger into a
single composite proceeding.
15. Mr. Nargolkar also placed reliance upon the decision of the Delhi
High Court in Abraxis Bioscience LLC v. Union of India2 to point out
that the opportunity of hearing under Section 14 of the Patents Act
2014 SCC OnLine IPAB 37.
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was held to be mandatory and constitutes a valuable statutory right of
an Applicant. He pointed out that the Court categorically held that an
order passed without affording such a hearing would stand vitiated on
the ground that the same was in breach of both the principles of
natural justice.
16. He further also placed reliance upon the decision in UPL Limited v.
Union of India & Ors.3, to point out that the Calcutta High Court had
set aside the order of the Controller on the ground that the statutory
scheme under the Patents Act had not been properly adhered to. He
submitted that the Court, in that case, held that opposition proceedings
under Section 25(1) and examination proceedings under Chapter IV
must be heard separately, though they may ultimately be disposed of
by a common, reasoned order. He submitted that the decision clearly
reinforced the statutory distinction between the processes to be
adopted for examination of a patent and for opposition and that any
final determination must culminate in an order passed under Section
15 of the Act. Placing reliance upon the decision in the case of Trex
2025 SCC OnLine Cal 7944.
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India Private Limited v. CDE Asia Ltd. & Anr.4, he submitted that
since the impugned order was procedurally flawed, the same would
have to be set aside on that ground alone and heard afresh by a
different Controller to obviate any allegation of bias.
17. Mr. Nargolkar then invited my attention to several instances where
the Patent Office had followed the procedure contemplated under Rule
55(5) by conducting separate hearings under Section 25(1) and
Section 14 of the Patents Act and thereafter disposed of both the
opposition and the patent application simultaneously by a composite
order passed under Section 15 and Section 25(1) of the Patents Act.
He submitted that this consistent practice reflected the correct
understanding of the statutory scheme. According to him, in the
present case, Respondent Nos. 1 and 2 had, for reasons best known to
them, deviated from this established procedure and denied the
Petitioner a hearing under Section 14 and rejected the Petitioners
application without passing an order under Section 15 of the Patents
Act.
2023 SCC OnLine Del 2388.
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18.Mr. Nargolkar further submitted that the Affidavit in Reply filed on
behalf of the Respondents was plainly untenable since the
Respondents had taken a stand therein which was contrary to the
provisions of the Patents Act, the Patents Rules and, in fact,
completely disregarded the provisions of the Patent Manual. First, he
pointed out that the Respondents' assertion that once a hearing has
been granted under Section 25(1), there is no requirement to grant a
separate hearing under Sections 14 and 15 was plainly contrary to the
statutory scheme of the Act, the procedure contemplated in the Patent
Manual, and the binding judicial precedents relied upon by the
Petitioner. Second, he submitted that the Respondents' contention that
there was no obligation upon the Controller to invoke Sections 14 and
15 during the pendency of a pre-grant opposition was contrary to the
Patent Manual itself, which envisages that, after consideration of the
opposition, both the opposition and the patent application must
culminate in a reasoned order under Section 15. Third, he submitted
that the Respondents' reasoning that granting separate hearings would
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amount to duplication and that Parliament did not contemplate two
consecutive hearings was misconceived and directly contrary to both
the provisions of the Patents Act, Rules, and Manual and the law laid
down in Novartis and Abraxis Bioscience LLC.
19.He further submitted that the contention that granting a Section 14
hearing without the Opponent would amount to an infraction of the
principles of natural justice was contrary both to the statute and to the
decision of the Delhi High Court in Novartis and in Abraxis
Bioscience LLC which clearly held that examination proceedings
under Chapter IV, including hearings under Section 14, do not
contemplate the participation of the Opponent and that a hearing under
Section 14 of the Patents Act was mandatory.
Respondents' Submissions:
20. Mr. Vinit Jain, learned counsel appearing on behalf of Respondent
No. 1, submitted that the impugned order was passed strictly in
accordance with the Patents Act and does not suffer from any
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procedural infirmity. He submitted that the Petitioner's contention that
the Controller could not refuse the patent under Section 25(1) without
first granting a hearing under Sections 14 and 15 was based on a
fundamental misreading of the Patents Act and the relevant Rules.
21. Mr. Jain submitted that Sections 14 and 15 of the Patents Act fall
under Chapter IV of the Act and govern the examination stage of a
patent application. He submitted that these provisions only operate
during the internal scrutiny of the application prior to its grant and are
confined to that stage. In contrast, Section 25(1), which falls under
Chapter V, provides for pre-grant opposition and constitutes a distinct
quasi-judicial proceeding governed by a self-contained mechanism
under Rule 55 of the Patent Rules.
22. He submitted that Rule 55 of the Patents Rules prescribes a complete
procedure for the adjudication of a pre-grant opposition. He pointed
out that Rule 55 required the Controller to furnish notice of opposition
to the Applicant, permit the Applicant to file a reply, allow both
parties to place their respective statements and evidence on record,
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and grant a hearing if requested, before ultimately passing a reasoned
order. Mr. Jain therefore submitted that Rule 55 constitutes the sole
procedural framework governing proceedings under Section 25(1) of
the Patents Act and that there was no statutory provision requiring the
Controller to additionally invoke Sections 14 or 15 once pre-grant
opposition proceedings have been initiated. He contended that
accepting the Petitioner's interpretation would lead to an unnecessary
duplication of hearings and procedural steps, resulting in an outcome
that was neither contemplated nor intended by Parliament.
23. Mr. Jain submitted that full compliance with Rule 55 would satisfy all
procedural requirements, as well as natural justice. He pointed out that
in the present case, the Petitioner was served with the notice of
opposition and supporting documents, had filed a reply statement and
evidence, participated in an oral hearing conducted on 19th April 2023,
and filed written submissions. He submitted that natural justice
requires a fair and meaningful opportunity to be heard, not multiple or
repetitive hearings. He thus submitted that since both the Applicant
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and the Opponent were heard, there was no procedural violation or
violation of the principles of natural justice.
24. He further submitted that once proceedings under Section 25(1) were
initiated, Section 14 cannot operate in parallel. He submitted that a
Section 14 hearing was Applicant-centric, whereas a Rule 55 hearing
was bilateral and adversarial. He thus submitted that granting an
additional hearing under Section 14 after the conclusion of the
opposition hearing would effectively afford the Applicant a second
opportunity while excluding the Opponent, thereby disturbing the
procedural balance. Such duplication, according to him, would itself
be inconsistent with the statutory framework as well as the
requirements of natural justice.
25. Mr. Jain then did not dispute that the impugned order was passed
expressly under Section 25(1), which, according to him, was a
self-contained provision empowering the Controller to grant or refuse
the patent once a pre-grant opposition was filed. He submitted that the
impugned order specifically adjudicated upon the statutory grounds
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under Section 25(1)(b), (e), and (f) read with Section 3(d) of the
Patents Act, and therefore, neither Section 15 nor a hearing under
Section 14 was a precondition to such refusal.
26. Mr. Jain then placed reliance upon the decisions in Snehlata Gupte v.
Union of India5 and Merck v. Glenmark6 to point out that the
expression "separate" in this context denotes procedural independence
and distinct statutory streams and not duplication or repetition of
hearings. He submitted that the statutory framework consciously
segregates examination and opposition, and the impugned order
faithfully adheres to that structure by simply avoiding duplication.
27. He thus concluded by submitting that there was absolutely no
infirmity with the impugned order or the procedure adopted by the
Controller in passing the impugned order. He thus submitted that the
Petition deserved to be dismissed.
2012 SCC OnLine Del 2259.
2015 SCC OnLine Del 8227.
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Reasons and Conclusions:
28. After having heard learned counsel for the parties and having
considered the case law upon which reliance has been placed, I have
no hesitation in holding that the Petition deserves to be allowed. I say
so for the following reasons:
A.The Division Bench of the Delhi High Court in Novartis AG v.
Natco Pharma & Anr. has in clear terms held that the examination
process under Chapter IV and the opposition process under Section
25 constitute two distinct statutory pathways which may proceed in
parallel but do not merge. It was further clarified that the power
under Section 15 is independent and is neither guided nor controlled
by the opposition proceedings. It was also expressly held that an
opponent has no right to participate in the examination hearing
contemplated under Section 14. The examination hearing is a
bilateral proceeding between the applicant and the Controller. The
exclusion of the opponent at that stage is by statutory design and
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does not amount to any infraction of the principles of natural
justice.
B. In the case of Abraxis Bioscience LLC v. Union of India, it was
specifically held that the opportunity of hearing contemplated under
Section 14 is mandatory and constitutes a statutory right of an
Applicant and that the denial of such a hearing vitiates the order as
being contrary to the principles of natural justice. The Calcutta High
Court in UPL Limited v. Union of India & Ors., also held that
opposition proceedings under Section 25(1) and examination
proceedings under Chapter IV are distinct statutory processes and
must be heard separately, though they may ultimately be disposed of
by a composite, reasoned order under Section 15. The Respondents'
reliance upon Snehlata Gupte v. Union of India and Merck v.
Glenmark is misplaced since the issue that is dealt with in these
decisions is completely distinct to the dispute at hand and these
decisions do not, in any manner, observe that the examination and
opposition proceedings are only procedurally separate.
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C. In the present case, it is undisputed that prior to the filing of the
pre-grant opposition, the Controller had issued notice to the
Petitioner and scheduled a hearing under Section 14 of the Patents
Act, 1970. Upon receipt of the pre-grant opposition, however, the
Controller cancelled the scheduled hearing while expressly assuring
the Petitioner that a fresh hearing under Section 14 would be
granted "in due course". Despite this assurance, the Controller
proceeded to reject the Petitioner's patent application solely under
Section 25(1), without affording the Petitioner a hearing under
Section 14 and without passing any order under Section 15 of the
Act. In doing so, the Controller has therefore not only acted
contrary to the express assurance given to the Petitioner but also in
clear disregard of the legal position laid down by the Delhi High
Court in Novartis and Abraxis Bioscience LLC and the Patent
Manual [09.04(12) and 09.06(10)], which clearly provide that no
patent shall be refused without affording the applicant an
opportunity of being heard under Section 14, and that after a
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Section 25(1) hearing, the Controller shall pass a speaking order
under Section 15 simultaneously deciding both the application and
the opposition.
D.The stand taken by the Respondents in the Affidavit in Reply that (i)
upon the filing of a pre-grant opposition the provisions of Chapter V
would apply and the requirement of a hearing under Section 14 of
the Patents Act ceases to apply; (ii) Section 14 of the Patents Act
does not mandate an independent hearing if a hearing has already
been granted under Section 25(1); and (iii) separate hearings for
examination and opposition would result in duplication of
proceedings, is not only wholly untenable but in fact befuddling
since such a stand is in the teeth of the law laid down in Novartis,
UPL Limited, Abraxis Bioscience LLC, and the provisions of the
Patents Act and Manual.
E. Furthermore, the Petitioner has placed on record several orders
which demonstrate that, in several other matters, the Controller has
treated proceedings under Chapters IV and V of the Patents Act as
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separate and distinct. In all those cases, separate hearings were
granted under Sections 14 and 25(1), and thereafter both the patent
application and the opposition were disposed of simultaneously by a
composite and reasoned order passed under Sections 15 and 25(1)
of the Patents Act. In light of this consistent practice adopted by the
Controller, the manner in which the Controller has proceeded in the
present case is plainly arbitrary, unexplained, and contrary to the
statutory scheme of the Act and the Rules framed thereunder. To
condone such a course of action would, in effect, permit the
Controller to bypass the mandatory provisions of Chapter IV and
the procedure for examination prescribed in the Patent Manual,
thereby allowing the Controller to act in a manner wholly
inconsistent with the statutory framework. This would result in the
Applicant not only being deprived of the statutory right to a hearing
under Section 14 but also would enable the Controller to reject a
patent without passing an order under Section 15, which is the only
provision that governs the grant or refusal of a patent. Thus it would
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permit the Controller to act in a completely arbitrary manner and
adopt a different procedure for different matters.
F. It is also necessary to note that, despite having been afforded several
opportunities, the Controller initially failed to file any Affidavit in
Reply. It was only after this Court, by its order dated 25th November
2025, observed that the Controller's omission to file a reply was
inexplicable and that the Court was taking a serious view of such
non-compliance that a Reply Affidavit eventually came to be filed.
Even thereafter, as noted earlier, the Controller has sought to justify
the impugned order on grounds which are wholly untenable in law.
As already discussed in paragraphs (D) and (E) above, if I were to
accept the stand sought to be advanced by the Controller, it would in
effect permit the Controller to bypass the mandatory statutory
requirements of the Patents Act and act as a law unto himself and in
utter disregard to the provisions of the Patents Act. Such an
approach cannot be countenanced.
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29. Hence, for the aforesaid reasons, I pass the following order:
ORDER
i. The Impugned Order dated 26th June 2023 is set aside.
ii. The Petitioner's Patent Application No. 201627001750 is
remanded back for fresh consideration before a different
Controller who shall adjudicate the application in accordance
with law. This would include compliance with hearing
procedures under Sections 14 & 15 as well as Section 25 of
the Act.
iii. There shall be no order as to costs.
[ARIF S. DOCTOR, J.]
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