Delhi High Court
Best Agrolife Limited vs Deputy Controller Of Patents & ... on 7 July, 2022
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Pronounced on: 7th July, 2022
+ W.P.(C)-IPD 11/2022 & CM 32/2022, 54/2022, 55/2022
BEST AGROLIFE LIMITED ..... Petitioner
Through: Mr. Chander M. Lall, Senior
Advocate with Dr. Shilpa Arora, Mr. Ashutosh
Kumar, Mr. Vivek Ranjan, Mr. Vinod Chauhan,
Mr. Munesh Kumar Sharma, Ms. Shreya
Chaudhary and Ms. Ananya Chugh, Advocates.
versus
DEPUTY CONTROLLER OF PATENTS
& ANR. ..... Respondents
Through: Mr. Harish Vaidyanathan Shankar,
Central Government Standing Counsel with Ms. S.
Bushra Kazim, Mr. Srish Kumar Mishra and
Mr. Sagar Mehlawat, Advocates for R-1.
Mr. Guruswamy Nataraj, Mr. Ankur Vyas,
Mr. Shashikant Yadav and Mr. Shahid Khan,
Advocates for R-2.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J.
1. Present writ petition has been preferred by the Petitioner seeking
quashing of the order dated 08.04.2022, passed by Respondent No. 1/
Deputy Controller of Patents and Designs, dismissing the pre-grant
opposition and allowing the grant of patent No. IN 394568 (hereinafter
referred to as the 'subject patent'), in favour of Respondent No. 2/GSP Crop
Science Pvt. Ltd.
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Signed By:KAMAL KUMAR
Signing Date:09.07.2022
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2. Before examining the rival contentions raised by the parties, I may
note the factual score as set out in the petition, to the extent relevant to the
controversy involved in the present petition. Respondent No. 2 filed patent
application No.284/MUM/2014 for 'A synergistic suspo-emulsion
formulation of Pyriproxyfen and Diafenthiuron' on 27.01.2014. Patent
application was published under Section 11A of the Patents Act, 1970
(hereinafter referred to as the 'Act') on 11.09.2015. Respondent No. 1 issued
First Examination Report on 31.05.2018, objecting to the claims inter alia
on grounds of lack of novelty, inventive step etc. Reply was filed by
Respondent No. 2 on 19.07.2018 to the said Examination Report and
subsequently, Respondent No. 2 amended the claims. On 04.03.2021,
Petitioner filed a pre-grant opposition under Section 25(1) of the Act,
opposing the grant of patent on several grounds including lack of novelty
under Section 25(1)(b) and non-patentability under Section 25(1)(f) read
with Section 3(d) and 3(e) of the Act as well as objecting to the scope of the
amended claims.
3. In addition to the Petitioner, six other persons also filed pre-grant
oppositions against the patent application. Respondent No. 2 filed a reply to
the pre-grant opposition on 18.06.2021 and took various objections. Parties
filed their respective pleadings with documents as well as post-hearing
written submissions. On 06.04.2022, Respondent No. 2 made certain
modifications in the claims, however, Petitioner was not given any notice or
opportunity to respond to the proposed amendments. Vide impugned order
dated 08.04.2022, Respondent No. 1 granted the subject patent and
aggrieved by the same, present petition has been filed by the Petitioner.
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4. It is contended by learned Senior Counsel appearing on behalf of
the Petitioner that the pre-grant opposition was filed before Respondent
No. 1 on several grounds, viz. (a) lack of novelty under Section 25(1)(b);
(b) prior use/knowledge in India under Section 25(1)(d); (c) lack of
inventive step under Section 2(1)(ja); (d) non-patentable under Section
25(1)(f) read with Section 3(d) and (e); and (e) insufficiency of disclosure
under Section 25(1)(g) of the Act. While granting the subject patent,
Respondent No. 1 has not only passed a non-speaking and unreasoned order
but has not even dealt with the substantive grounds raised by the Petitioner,
more particularly the ground of non-patentability under Section 3(d) of
the Act. Reading of the impugned order would show that Respondent No. 1
has not even taken note of the ground raised by the Petitioner under
Section 3(d), despite the same being raised in the pleadings and written
submissions and extensive arguments being addressed in respect thereof.
5. It was contended that since Respondent No. 1 failed to take note of
the objection under Section 3(d), there is a failure to compare the data of the
formulations as disclosed in the prior arts cited in support of Section 3(d) of
the Act as also to consider whether the composition, as claimed, would cross
the threshold of Section 3(d) or not, especially when prior arts cited by the
Petitioner disclosed suspo-emulsion formulations of Pyriproxyfen and
Diafenthiuron. An inquiry envisaged under Section 3(d) is independent of an
inquiry under Section 3(e). Section 3(d) deals with assessment of 'enhanced
efficacy' of claimed composition in comparison to efficacy of known
substance and not merely comparison of efficacy with individual
components of the composition while Section 3(e), on the other hand, deals
with assessment of synergistic effect of claimed composition over individual
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properties of each component of the composition. Succinctly put, test for
Section 3(d) is 'enhanced efficacy' while that for Section 3(e) is 'synergistic
effect' and both operate in two different fields.
6. Learned Senior Counsel relied on the judgment of the Supreme Court
in Novartis AG v. Union of India and others, (2013) 6 SCC 1, wherein the
importance of Section 3(d) as well as the scope of inquiry thereunder has
been laid down. It was submitted that the Supreme Court in the said
judgment has held that even if an invention satisfies the criteria of Novelty
and Inventive step, patent can be denied on the ground of Section 3(d).
Provisions of Section 3(d) exclude the patentability of a new form of a
known substance if it does not result in enhancement of the known efficacy
of that substance. Respondent No. 2 claimed a form (suspo-emulsion) of the
admixture/combination of Pyriproxyfen and Diafenthiuron and therefore, the
applicant had to pass the test of both Section 3(d) and 3(e), though on
different aspects, i.e., enhanced efficacy over known combination of a
suspo-emulsion for the former and synergistic effect over the mere additive
effect of individual components of the suspo-emulsion composition for the
latter. Therefore, it is not right for the Respondents to take a stand that the
reasoning given qua bio-efficacy and stability of the subject matter deals
with both Section 3(d) and 3(e) and Respondent No. 1 was not separately
required to consider the opposition under Section 3(d).
7. It was next contended that even assuming for the sake of argument,
that Section 3(d) was not applicable in the present case or that it was
sufficient to deal with the parameters under Section 3(e) of the Act for the
purpose of opposition under Section 3(d), Respondent No. 1 ought to have
so mentioned in the impugned order and given a reasoning for arriving at
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such a conclusion. It is not permissible to substitute reasons at this stage by
the Respondents, to justify and defend the impugned order, when there is no
such finding supported by reasons in the impugned order. The order is
non-speaking and to the extent that it does not even touch upon the grounds
of opposition under Section 3(d), it clearly violates the principles of natural
justice.
8. The next plank of the argument on behalf of the Petitioner was that
Petitioner had raised a ground of lack of novelty in the pre-grant opposition
and had cited various prior arts, which were not even considered while
passing the impugned order. US 2011/0053772 was not considered with
respect to the challenge on lack of novelty. Respondent No. 1 did not deal
with several documents filed by the Petitioner viz. D3, D5, D6, D8 and D9,
regarding lack of inventive step under Section 2(1)(ja) of the Act. Relying
on the judgment passed in Agriboard International LLC v. Deputy
Controller of Patents and Designs, 2022 SCC OnLine Del 940, it was
urged that this Court has in the said judgment emphasised on the procedure
for dealing with the prior arts for purposes of validity of the patent.
Respondent No. 1 has completely overlooked and by-passed the said
procedure by not considering the relevant documents and has not even given
reasons for non-consideration.
9. It was contended that Respondent No. 1 did not consider the
submissions of the Petitioner with respect to Section 3(e) of the Act and
granted the patent solely on the basis of manipulated and unauthenticated
data submitted by Respondent No. 2. While the veracity of the data is itself
questionable, however, Respondent No. 1 while dismissing the objection,
did not even discuss the issues raised or deal with the data, documents
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provided during the opposition hearing and in the written submissions. In
view of the documents D1-US 2011/0053772, D2-IN 212564 and
CA-2865730, which disclosed the known substance, Respondent No. 1
ought to have considered the efficacy/synergistic effect data of the subject
matter of the patent application qua subject matter disclosed in these prior
arts, which Respondent No. 1 failed to do and granted the subject patent to
Respondent No. 2 arbitrarily and without application of mind.
10. It was further contended that Respondent No. 1 allowed the
amendment to the claims made by Respondent No. 2 on 06.04.2022 i.e., two
days prior to the impugned order, without notifying the Petitioner, which is
in complete violation of the principles of natural justice as well as the
procedure prescribed in the Manual of Practice and Procedure, by the Patent
Office. Section 57 of the Act provides the procedure for amendment in the
patent application or in the complete specification or any document related
thereto, subject to provisions of Section 59 of the Act. Without following the
due procedure and without even putting the Petitioner to notice, the
amendment was allowed. Even assuming that the amendment to Claim 4
was a mere typographical error, Claim 7 was amended to incorporate
'narrow down scope of protection by reducing the range of amount of
thickener'. By allowing the amendment, Respondent No. 2 was permitted to
enlarge the scope of protection without even giving an opportunity to the
Petitioner to respond. Reliance was placed on the judgment of the High
Court of Bombay in Neon Laboratories Pvt. Ltd. v. Troikaa Pharma
Limited and Ors., 2010 SCC OnLine Bom 1799.
11. Learned counsel appearing on behalf of Respondent No. 1, per
contra, contended that the writ petition is not maintainable in view of the
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judgments in Ucb Farchim Sa v. Cipla Ltd. & Ors., 2010 SCC OnLine Del
523 and Mylan Laboratories Limited v. Union of India and Others, 2019
SCC OnLine Del 10319, wherein this Court has held that the remedy of a
person who is unsuccessful in a pre-grant opposition, to prevent the grant of
a patent and is a 'person interested' within the meaning of Sections 25(2)
and 64 of the Act, is to file a post-grant opposition under Section 25(2) or a
revocation petition under Section 64 and await the decision of the
Controller. If he is still aggrieved by the decision of the Controller under
Section 25(4) of the Act, the statutory remedy is to file an appeal under
Section 117A of the Act.
12. Petitioner has made out no ground for this Court to exercise the writ
jurisdiction. Writ Courts seldom interfere with orders passed by Quasi-
Judicial Authorities unless there is serious procedural illegality or
irregularity or the Authority acts in excess of its jurisdiction. No such case
has been made out by the Petitioner. Reliance was placed on the judgment of
the Supreme Court in Sh. Satish Chand Kapoor (Deceased) Through LR's
v. The Financial Commissioner, Delhi & Anr., 2010 SCC OnLine Del
3280 and in Punjab Roadways v. Punja Sahib Bus & Transport Co.,
(2010) 5 SCC 235.
13. It was contended that Petitioner has suppressed the fact that it had
applied for grant of patent on 05.06.2020 and was granted Patent
No. 372736 for 'a synergistic Insecticidal Composition comprising of Bio
Active amount of Difenthiuron and Pyriproxyfen'. This fact was suppressed
during the pre-grant opposition hearings also.
14. It was urged that the impugned order is not a non-speaking order and
a plain reading shows that all relevant facts have been considered and all
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relevant documents and legal objections have been taken note of and dealt
with by Respondent No. 1.
15. Learned counsel submitted that while much has been argued by the
Petitioner with regard to non-consideration of the opposition under Section
3(d), as a matter of fact, Petitioner never pressed the said objection. In any
case, the objection is completely frivolous. Case of Petitioner was that
Respondent No. 2's claim to a SE composition containing a known
combination of two agrochemical compounds with excipients is not
patentable under Section 3(d). Petitioner admits that patent was sought in
respect of a composition. A composition or an admixture falls entirely in the
scope of examination under Section 3(e) and Section 3(d) would have no
relevance in the present case. Reading of the provisions show that the
moment the Petitioner refers to known substances being mixed together, the
same automatically entails an examination under Section 3(e) and not under
Section 3(d). Section 3(e) presupposes that the composition/admixture is of
two or more known substances and therefore, what needs to be examined is
whether the same exhibits a synergistic effect, which is not a mere
aggregation of the properties or effects of two or more substances. Court
would have to apply the 'pith and substance' test in respect of admixtures/
combinations and if so applied, only Section 3(e) is applicable.
16. Insofar as the allegations of non-consideration of documents is
concerned, it was submitted that all relevant documents were considered and
merely because the Petitioner chose to file several irrelevant documents,
Respondent No. 1 was not bound to consider them. Petitioner, during the
hearing, on 07.09.2021 did not press the documents D3, D5, D6, D8 and D9
and therefore, the decision was given considering the remaining documents
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cited by the Petitioner. In any case, relevance or irrelevance of the document
is a fact-finding exercise and within the domain of Respondent No. 1 and
Petitioner cannot call upon this Court in a writ petition to adjudicate on this
issue.
17. With respect to the argument regarding amendments to claims No. 4
and 7, it was submitted that the amendment to claim No. 4 was sought on
account of a mere typographical error, where some repetitions had occurred.
The second amendment was with respect to claim No. 7 where a correction
and reduction in the range was sought to bring the same in line with the
specifications. The amendments were very trivial and did not change the
nature or the complexion of the claims. Furthermore, there was no
requirement of following the elaborate procedure and there is no violation of
principles of natural justice or Section 57 of the Act. It has been held in
various judgments that principles of natural justice are not an unruly horse
and each case has to be tested on its own merit. Reliance is placed in support
of the said proposition on the judgment in P.D. Agrawal v. State Bank of
India, (2006) 8 SCC 776.
18. Learned counsel on behalf of Respondent No. 2 urged the Court to
dismiss the writ petition on the ground that there is an alternative efficacious
remedy available to the Petitioner under the Act and it is therefore, not open
to the Petitioner to approach this Court, without exhausting the remedies
available. Reliance was placed on the judgment in Ucb Farchim (supra),
which was rendered after considering a plethora of judgments of the
Supreme Court as also the judgment of the High Court of Bombay in
Glochem Industries Ltd. v. Cadila Healthcare Ltd., 2009 SCC OnLine
Bom 1701. It is an admitted position that Petitioner is a 'person interested'
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within the meaning of Section 2(1)(t) of the Act and therefore, has a remedy
of filing a post-grant opposition under Section 25(2) of the Act or a
revocation petition under Section 64 of the Act. Present petition is merely a
path adopted to avoid an infringement action and deserves to be dismissed
on this ground alone.
19. It was further argued that the impugned order is a speaking and a
well-reasoned order. The Petitioner did not even press its ground with any
degree of seriousness on Section 3(d) during the pre-grant opposition.
Secondly, the substance of the challenge under Section 3(d) was identical to
a challenge under Section 3(e) which is evident from the documents placed
on record along with the present writ petition. Thirdly, Respondent No. 1
has considered the data provided in Respondent No. 2's application as well
as additional data provided in its reply on the pre-grant and has arrived at a
considered decision that Respondent No. 2's composition has stability, bio-
efficacy and reduced toxicity. Section 3(d) may not be specifically
mentioned in the impugned order but the relevant parameters for assessment
and the reasoning can be deciphered. Further, when an order
comprehensively rules on 'novelty' in favour of Respondent No. 2, the very
premise of Section 3(d), i.e., combination being a non-substance is
inapplicable.
20. Perusal of the impugned order shows that the challenge under Section
3(d) has been considered and the data for bio-efficacy in the written
description of IN'284/IN'568 and additional supporting data given by
Respondent No. 2 has been captured, considered and addressed. 'Efficacy'
in the context of Section 3(d) in patent jurisprudence for an agrochemical is
bio-efficacy, supported by stability and toxicity. Since Petitioner had itself
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merged both the grounds under Section 3(d) and 3(e), Respondent
No. 1 has dealt with them in paragraph (iv) of the impugned order.
21. Insofar as the amendments made on 06.04.2022 are concerned,
amendment to claim 4 was merely typographical, while claim No. 7 was
amended to incorporate the exact range of thickener to bring it within the
scope of specifications. The nature of the proposed amendments being trivial
and not changing the original claims were not required to be notified to the
Petitioner.
22. Learned counsel for Respondent No. 2 submitted that Respondent
No. 1 has considered all the documents relied upon by the Petitioner and
only those documents which were not pressed during the hearing have not
been taken into account. Respondent No. 1 has considered D1 and D2 under
the grounds of lack of novelty and held that D1 was not a relevant document
as there is no disclosure with respect to combination of Pyriproxyfen and
Diafenthiuron nor its suspo-emulsion and with respect to D2, it was held that
it is a composition of Diafenthiuron with one or more components selected
from the given list of 65 components amongst which one is Pyriproxyfen
and there is no disclosure of use of Poly Aryl Phenol/Octyl Phenol
Ethoxylates. Similarly, under the heading prior publication and knowledge
Respondent No. 1 has considered D3, D4 and D5 and has come to a
conclusion that they do not disclose Pyriproxyfen or Diafenthiuron or a
combination thereof. Similarly, three documents cited by the Petitioner
under lack of inventiveness have also been considered by Respondent No. 1
and detailed reasons have been given for not agreeing with the Petitioner in
respect of these documents.
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23. It was also argued that it is wrong for the Petitioner to contend that
US'772 was not considered under the ground of lack of novelty. Record
would show that during the oral arguments, Petitioner gave up reliance on
US'772 under lack of novelty and instead relied on the same under
'obviousness'. For opposition on the ground of lack of novelty, Petitioner
referred only to CA 2865730 and IN 212564.
24. The foremost issue that pronouncedly emanates is the maintainability
of the present petition. Succinctly put, the objection raised by the
Respondents is that the issues raised by the Petitioner are impervious to jural
interference in a writ jurisdiction and the objection is predicated on
existence of an alternative efficacious remedy available to the Petitioner in
terms of post-grant opposition under Section 25(2) of the Act as well as
revocation petition under Section 64 thereof. Heavy reliance was placed on
the judgments in Ucb Farchim (supra) and Mylan (supra). The argument is
that pre-grant opposition is in the nature of an aid to examination and is not
an adversarial proceeding and thus no right of the Petitioner can be said to
be violated so as to invoke the extraordinary jurisdiction of this Court under
Article 226 of the Constitution of India.
25. Having considered the rival submissions on this aspect and given
careful cogitation, in my view, the preliminary objection raised by the
Respondents cannot be sustained. There cannot be a debate that the Act
provides a remedy of post-grant opposition or a revocation petition to a
'person interested', who is unsuccessful in a pre-grant opposition as well as
an appeal thereafter under Section 117A of the Act. Nonetheless, in my
considered view, if the Petitioner is able to substantiate the pleas that
Respondent No. 1 has committed a manifest error leading to violation of
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principles of natural justice or has failed to exercise a jurisdiction vested in it
or there is non-consideration of vital grounds or documents, Petitioner
cannot be non-suited in the present petition. In order to come to this
conclusion, this Court draws strength from the judicial expositions on the
rule of alternative remedy and self-restraint. In Whirlpool Corporation v.
Registrar of Trade Marks, Mumbai and Others, (1998) 8 SCC 1, the
Supreme Court has elaborately and perspicuously explained the scope and
ambit of judicial interference in a writ jurisdiction even where an alternative
remedy is available to a party. It was observed in the said case that under
Article 226 of the Constitution of India, High Court has a discretion to
entertain or not to entertain a writ petition, but the High Court may impose
upon itself certain restrictions, one of which is the existence of an effective
and efficacious remedy available to a party, in which case the High Court
would not normally exercise its jurisdiction. However, in three
contingencies the alternative remedy does not operate as a bar and one of
them, as enunciated by the Supreme Court, was where there is violation of
principles of natural justice. Relevant paras of the judgment are as under:-
"14. The power to issue prerogative writs under Article 226 of
the Constitution is plenary in nature and is not limited by any
other provision of the Constitution. This power can be
exercised by the High Court not only for issuing writs in the
nature of habeas corpus, mandamus, prohibition, quo warranto
and certiorari for the enforcement of any of the Fundamental
Rights contained in Part III of the Constitution but also for
"any other purpose".
15. Under Article 226 of the Constitution, the High Court,
having regard to the facts of the case, has a discretion to
entertain or not to entertain a writ petition. But the High Court
has imposed upon itself certain restrictions one of which is that
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if an effective and efficacious remedy is available, the High
Court would not normally exercise its jurisdiction. But the
alternative remedy has been consistently held by this Court not
to operate as a bar in at least three contingencies, namely,
where the writ petition has been filed for the enforcement of any
of the Fundamental Rights or where there has been a violation
of the principle of natural justice or where the order or
proceedings are wholly without jurisdiction or the vires of an
Act is challenged. There is a plethora of case-law on this point
but to cut down this circle of forensic whirlpool, we would rely
on some old decisions of the evolutionary era of the
constitutional law as they still hold the field."
26. Relying on the aforesaid judgement and a later judgement of the
Supreme Court in Harbanslal Sahnia and Another v. Indian Oil Corpn.
Ltd. and Others, (2003) 2 SCC 107, the Supreme Court in Radha Krishan
Industries v. State of Himachal Pradesh and Others, (2021) 6 SCC 771,
culled out principles of law that would guide in determining if a writ petition
can be entertained. In the said case, the High Court had declined to entertain
a petition under Article 226 of the Constitution in the light of an effective
alternative remedy available to the aggrieved party under the GST Act. The
principles as culled out and to the extent relevant to the present lis are as
follows:-
"27.1. The power under Article 226 of the Constitution to issue
writs can be exercised not only for the enforcement of
fundamental rights, but for any other purpose as well.
27.2. The High Court has the discretion not to entertain a writ
petition. One of the restrictions placed on the power of the High
Court is where an effective alternate remedy is available to the
aggrieved person.
27.3. Exceptions to the rule of alternate remedy arise where :
(a) the writ petition has been filed for the enforcement of a
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fundamental right protected by Part III of the Constitution; (b)
there has been a violation of the principles of natural justice;
(c) the order or proceedings are wholly without jurisdiction; or
(d) the vires of a legislation is challenged.
27.4. An alternate remedy by itself does not divest the High
Court of its powers under Article 226 of the Constitution in an
appropriate case though ordinarily, a writ petition should not
be entertained when an efficacious alternate remedy is
provided by law.
27.5. When a right is created by a statute, which itself
prescribes the remedy or procedure for enforcing the right or
liability, resort must be had to that particular statutory remedy
before invoking the discretionary remedy under Article 226 of
the Constitution. This rule of exhaustion of statutory remedies
is a rule of policy, convenience and discretion."
27. I may also refer to a few passages from a recent judgement of the
Supreme Court in Ghanashyam Mishra and Sons Private Limited v.
Edelweiss Asset Reconstruction Company Limited, (2021) 9 SCC 657,
where the aforesaid principles were reiterated and are as follows:-
"135. The High Court found that the appellant has an
alternative efficacious remedy of filing the second appeal and
as such, deemed it fit to not to entertain the said petition. The
basic grievance of the appellant in the writ petition was that
after the resolution application was approved by the
adjudicating authority and the management of the corporate
debtor was transferred to the resolution applicant, all the
claims stood extinguished and the proceedings in respect
thereof could not continue.
136. The main ground raised on behalf of the respondent is
with regard to availability of alternate remedy. The second
ground raised is, since the transfer date is prior to the 2019
Amendment to Section 31 of the I&B Code, the said amendment
would not be applicable to the debts owed to the State
Government or the Central Government.
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137. As held by this Court in a catena of cases including
in Baburam Prakash Chandra Maheshwari v. Antarim Zila
Parishad, Muzaffarnagar, (1969) 1 SCR 518, Whirlpool
Corpn. v. Registrar of Trade Marks, (1998) 8 SCC 1, Nivedita
Sharma v. COAI, (2011) 14 SCC 337, Embassy Property
Developments (P) Ltd. v. State of Karnataka, (2020) 13 SCC
308 and recently in Kalpraj Dharamshi v. Kotak Investment
Advisors Ltd., (2021) 10 SCC 401, that non-exercise of
jurisdiction under Article 226 is a rule of self-restraint. It has
been consistently held that the alternate remedy would not
operate as a bar in at least three contingencies, namely,
(1) where the writ petition has been filed for the enforcement of
any of the fundamental rights;
(2) where there has been a violation of the principle of natural
justice; and
(3) where the order or proceedings are wholly without
jurisdiction or the vires of an Act is challenged."
28. From reading of the aforesaid judgments, it clearly emerges that:
(a) as a matter of self-imposed restraint, the High Court could refrain from
exercising the writ jurisdiction, where the aggrieved party has an alternative
efficacious remedy; (b) alternate remedy would not, however, operate as a
bar in three eventualities carried out by the Supreme Court; and (c) it is a
matter of prudence and discretion as to whether the writ Court would
entertain the writ petition in the given facts and circumstances. Seen in this
light, at the cost of repetition, it be noted that Petitioner has alleged violation
of principles of natural justice on many-fold grounds inter alia: (a) non-
consideration of pre-grant opposition under Section 25(1)(f) read with
Section 3(d) of the Act; (b) non-consideration of crucial and relevant
documents placed on record by the Petitioner, including prior art references;
(c) taking into account Respondent No. 2's additional documents and
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evidence without informing the Petitioner of the filing of the said
documents/evidence; and (d) taking into account the amended claims on
06.04.2022, i.e. two days prior to the impugned order, without notifying the
Petitioner of such amendments and seeking its response. Thus, if the
Petitioner is able to substantiate each or any of the above pleas, there would
be a violation of principles of natural justice and in those circumstances, the
present writ petition would be maintainable, applying the binding and
enduring principles laid down by the Supreme Court, as aforementioned.
29. The judgment relied upon by Respondent No.1 in Punjab Roadways
(supra), lays down that Article 226 of the Constitution confers extraordinary
jurisdiction on the High Court to issue writs for enforcement of fundamental
rights for any other purpose and the powers are not to be exercised as an
Appellate Authority reappreciating the finding of facts recorded by the
Tribunal or an Authority exercising quasi-judicial functions. The proposition
is no doubt a binding dictum, however, in the present case, this Court is not
reappreciating any finding of fact as an Appellate Authority and the
judgment cannot help Respondent No.1. The contentions raised by the
Petitioner are violation of principles of natural justice and non-consideration
of grounds raised and documents filed and it is settled that these are the
exceptions in which a writ jurisdiction can be exercised by a High Court.
Similarly, in Sh. Satish Chand Kapoor (supra), this Court held that in a writ
jurisdiction, the Court cannot act as an Appellate Court reappreciating the
orders of the Tribunals or statutory authorities. Respondent No.1 has failed
to note that in the same very judgment, the Court has held that the High
Court may interfere in the final order passed by the statutory authority if the
order suffers from manifest error and if allowed to stand, it would amount to
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perpetuation of grave injustice. It needs no reiteration that if the Petitioner is
able to show violation of principles of natural justice and yet the Court does
not interfere, it would indeed amount to perpetuation of grave injustice, if
the impugned order is upheld.
30. Reliance on the judgment in Ucb Farchim (supra) by the
Respondents, in my view, does not enure to their advantage. A reading of
the judgment shows that the issues that concern the Court in the present
case, as aforementioned, were not the issues before the said Court. In case
Petitioner is able to establish the pleas raised, the impugned order becomes
unsustainable in law, it would be unfair to relegate the Petitioner to the long-
drawn remedy of a post-grant opposition under Section 25(2) or an
application for revocation under Section 64 of the Act. In this context, I am
persuaded by the observations of the Division Bench of the Bombay High
Court in Glochem Industries (supra), relevant paras of which are profitably
reproduced as follows:-
"11. The Respondent No. 1 on the other hand, have supported
the impugned decision on the argument that all relevant matters
have been taken into account by the Respondent No. 4 while
answering the controversy on hand. It is not a case of any
manifest error committed by the Respondent No. 4. Further,
this Court cannot sit in appeal over the opinion of the
Respondent No. 4 on technical issues. It is submitted that
Petitioners had fair opportunity in pursuing their objections
and the Respondent No. 4 has dealt with the objection as raised
by the Petitioners and decided the same on merits. According to
Respondent No. 1, there is an alternative and efficacious
remedy available to the Petitioners to which they can take
recourse to. It is submitted that the remedy of post grant
opposition under Section 25(2) of the Act is still available. Even
remedy of seeking suo moto revocation of Patent under Section
64 of the Act can be resorted to. Moreover, it is also open to the
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Petitioners to file a counter claim for revocation or invalidation
of Patent, in a suit which may be filed by the Patentee, under
Section 104 of the Act. Even for that reason, the Court should
be slow in entertaining the present writ petition.
12. Having considered the rival submissions, we would deal
with the last objection first. Although the Petitioners may have
remedy of post grant opposition or of seeking suo moto
revocation as well as filing of a counter claim as is suggested
by the Respondents that by itself can be no basis to non-suit the
Petitioners, if the Petitioners were right in their grievance that
the authority has committed manifest or jurisdictional error
while considering the representation by way of opposition or
for that matter decided the objections on palpable misreading
and misapplication of the relevant provisions of law. This is so
because the law provides for remedy of pre-grant opposition by
virtue of Section 25(1) of the Act. If such a remedy is provided,
the authority is obliged to consider the representation by way of
pre-grant opposition under Section 25(1) keeping in mind the
parameters of law by observing principles of natural justice. It
is not necessary for us to examine the argument of the
Petitioners that the remedy of pre-grant opposition is
qualitatively different than the remedy of post-grant opposition.
According to the Petitioners, in the pre-grant opposition, the
onus is on the patent applicant to show that the alleged
invention would result in enhancement of the known efficacy of
the stated substance; whereas in the post-grant opposition, the
onus will be on the objector to show that the alleged invention
does not result in enhancement of the known efficacy of the
stated substance. Suffice it to observe that the preliminary
objection raised by the Respondent No. 1 does not mean that
this Court has no jurisdiction to entertain writ petition under
Article 226 of the Constitution of India against the decision of
the authority on the opposition under Section 25(1) of the Act.
It is a matter of prudence and discretion as to whether the
Court should entertain the writ petition or not. In the facts of
the present case, we think that it would not be proper to non-
suit the Petitioners at the threshold on this count."
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31. This Court is also fortified in its view by a judgment of the
Co-ordinate Bench of this Court in Gilead Pharmasset, LLC v. Union of
India & Anr., 2015 SCC OnLine Del 7014, wherein the Court held that if
there is breach of principles of natural justice, then notwithstanding the
alternative remedy by way of appeal the Court would have jurisdiction to
entertain the writ petition. The fact that an aggrieved party has an adequate
remedy in law, which in a given case may persuade the Court not to
intervene in the matter and relegate the party to the remedy available under
the Statute, is a rule of policy, convenience and/or discretion rather than a
rule of law. Reliance was placed on the judgment of the Supreme Court in
ABL International Ltd. and Anr. v. Export Credit Guarantee Corporation
of India Ltd. and Ors., (2004) 3 SCC 553. Finding on the facts of the case
that there were violations of principles of natural justice as well as the
procedure adopted by Controller of Patents, the Court set aside the
impugned order whereby grant of patent was rejected and remanded the
matter for a fresh decision. In Agriboard International (supra) the Court
found that without the required analysis in accordance with the provisions of
the Act, rejection of the patent application was wrong as also that the
impugned order was unreasoned and non-speaking and accordingly
remanded the matter back to the Competent Authority for a fresh
consideration, relying on the judgment of the Supreme Court in Manohar v.
State of Maharashtra and Ors. AIR 2013 SC 681, wherein the Supreme
Court has observed that application of mind and recording of reasons in a
decision are the basic elements of natural justice and scrupulous adherence
to these principles would be required while rejecting patent applications. In
yet another matter being Precise Biopharma Pvt. Ltd. v. Assistant
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Controller of Patents and Designs and Anr. in W.P.(C) IPD 3/2022, the
Court in a challenge to an order rejecting the pre-grant opposition under
Section 25(1) of the Act, remanded the matter back to the Authority for re-
considering the matter and passing a reasoned order, finding that the
impugned order was bereft of any reason and was a non-speaking order and
thus in violation of well-established principles of natural justice.
32. The vexed question that now arises for consideration is whether there
is violation of principles of natural justice while passing the impugned order,
as asserted by the Petitioner, requiring judicial interference in a writ
jurisdiction under Article 226 of the Constitution of India.
33. Plain reading of the scheme of the Patents Act, 1970 shows that
Section 25(1) provides a remedy for pre-grant opposition when a patent
application is made and published. It needs no emphasis that if the Act
provides a remedy, the Authority competent to take a decision must consider
the representation in consonance with and by scrupulously applying the
principles of natural justice, albeit at the stage of pre-grant opposition only a
summary enquiry is envisaged.
34. Petitioner has unequivocally and categorically taken a stand that it had
raised the ground of non-patentability of the impugned patent under Section
25(1)(f) read with Section 3(d) of the Act in the pre-grant opposition,
replication and written submissions and extensive arguments were addressed
on this issue before Respondent No. 1. Adverting to the impugned order, it
is palpably clear that Respondent No. 1 has not even taken note of
Section 3(d) in the entire order and consequently not dealt with the
submissions made in respect thereof. At this stage, it is condign and
warranted to bring forth the objections raised by the Petitioner under
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Section 3(d) in the pre-grant opposition and the same are extracted
hereunder for ready reference:-
"IV. CLAIMS 1-11 OF THE IMPUGNED PATENT
APPLICATION ARE NOT PATENTABLE UNDER
SECTION 25 (1) (f) READ WITH SECTION 3(d) AND 3(e)
OF THE PATENTS ACT
xxx xxx xxx
b) .....Section 3(d) of the Patents Act provides that a known
substance may include combination of known substances. The
claims of the impugned application relate to a suspo-emulsion
formulation comprising a combination of known substances i.e.,
Pyriproxyfen and Diafenthiuron with inactive excipients and
therefore must fulfil the requirements of Section 3(d). The
Opponent submits that claims of the impugned application
relate to a suspo-emulsion formulation comprising a
combination of known substances i.e., Pyriproxyfen and
Diafenthiuron with inactive excipients. However, from the prior
art documents cited herein, the formulation/ composition of the
impugned application is already known. Moreover, the
applicant has not provided any technical data and/or
experimental proof of any enhancement in the significant
improvement in therapeutic efficacy i.e., no experimental data
has bene provided by the applicant to prove the alleged
efficacious nature of the SE formulation/composition claimed
by the applicant in the impugned application. The data
provided in the specification of the impugned patent application
only provides the average number of whiteflies after treatment
with claimed formulation and the % leaf infection by Liriomyza
Trifolii on Tomato Leaf miner, which does not indicate any
enhancement of efficacy of the claimed formulation as no
mortality rate has been provided by the applicant. Additionally,
no comparison has been made by the applicant w.r.t the
claimed formulation with any prior art SE formulation. Failing
this, no efficacy can be claimed by the applicant in respect of
the claimed formulation of the impugned application.
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c) Therefore, the Applicant's claim to a SE composition
containing a known combination of two agrochemical
compounds with excipients is not patentable under Section 3(d)
of The Patents Act."
35. Petitioner had evidently contested the grant of patent on the ground
that the patent application related to a suspo-emulsion formulation
comprising of a combination of known substances, i.e., Pyriproxyfen and
Diafenthiuron with inactive excipients and therefore, must cross the
requirement of showing 'enhanced efficacy' as required under Section 3(d)
of the Act. It was the case of the Petitioner that from the prior art documents
cited therein, the formulation/composition of the impugned application was
already known. Moreover, the applicant had not provided any technical data
and/or experimental proof of any enhancement in the therapeutic efficacy.
The data provided in the specification of the patent application only
provided average number of whiteflies after treatment with claimed
formulation and % (percentage) leaf infection by Liriomyza Trifolii on
Tomato Leaf miner, which did not indicate enhancement of efficacy, as no
mortality rate was provided. Additionally, according to the Petitioner no
comparison was made by the applicant of the claimed formulation with any
prior art suspo-emulsion formulation. Pithily put, the opposition was that
given that the combination of Diafenthiuron and Pyriproxyfen was known in
the prior art, i.e., D2, the applicant was required to show that the suspo-
emulsion composition of Diafenthiuron and Pyriproxyfen is a new form of
known combination of the two and that the new form resulted in
enhancement of known efficacy of the existing combination, in order to
cross the threshold test of Section 3(d).
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36. Reading of the impugned order leaves no scintilla of doubt that
Respondent No. 1 has not even adverted to Section 3(d) and the opposition
raised on the ground provided under the said provision albeit it would have
been a different matter if the ground urged under the said provision was
rejected on merits. Non-consideration of the ground per se, in my view
constitutes violation of principles of natural justice. In fact, non-
consideration of Section 3(d) is self-evident from para 3 of the impugned
order, extracted hereunder, where Respondent No. 1 has enumerated the
grounds raised by the opponent:-
"3)The opponent raised following grounds:
a) Section 25(1)(b) Lack of Novelty
b) Section 25(1)(d) Prior Publication and Prior Knowledge
c) Section 25(1)(e) Lack of Inventive step / Obviousness
d) Section 25(1)(f) Non-Patentable Invention [Section 3(e)]
e) Section 25(1)(g) Lack of Sufficiency of disclosure."
37. This facet of the case becomes extremely significant and important in
view of the judgment of the Supreme Court in Novartis (supra), wherein the
Supreme Court held that amendment to Section 3(d) cannot be underscored.
Relevant paras of the judgment are as follows:-
"87. We are clearly of the view that the importance of the
amendment made in Section 3(d), that is, the addition of the
opening words in the substantive provision and the insertion of
the Explanation to the substantive provision, cannot be
underestimated. It is seen above that, in course of the
Parliamentary debates, the amendment in Section 3(d) was the
only provision cited by the Government to allay the fears of the
Opposition members concerning the abuses to which a product
patent in medicines may be vulnerable. We have, therefore, no
doubt that the amendment/addition made in Section 3(d) is
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meant especially to deal with chemical substances, and more
particularly pharmaceutical products. The amended portion of
Section 3(d) clearly sets up a second tier of qualifying
standards for chemical substances/pharmaceutical products
in order to leave the door open for true and genuine
inventions but, at the same time, to check any attempt at
repetitive patenting or extension of the patent term on
spurious grounds.
88. We have so far seen Section 3(d) as representing
"patentability", a concept distinct and separate from
"invention". But if clause (d) is isolated from the rest of Section
3, and the legislative history behind the incorporation of
Chapter II in the Patents Act, 1970, is disregarded, then it is
possible to see Section 3(d) as an extension of the definition of
"invention" and to link Section 3(d) with clauses (j) and (ja) of
Section 2(1). In that case, on reading clauses (j) and (ja) of
Section 2(1) with Section 3(d) it would appear that the Act sets
different standards for qualifying as "inventions" things
belonging to different classes, and for medicines and drugs and
other chemical substances, the Act sets the invention threshold
further higher, by virtue of the amendments made in Section
3(d) in the year 2005."
(emphasis supplied)
38. Emphasising on the amendment to Section 3(d), the Supreme Court
observed that the amendment brought about with effect from 01.01.2005,
was one of the crucial amendments that saw the Bill through the Parliament
and acts as second tier of qualifying standards for chemical substances/
pharmaceutical products to leave the door open for genuine inventions,
while at the same time, keeping a check on the repetitive patenting or
extension of patent term on spurious grounds. As noted by the Supreme
Court, the Parliamentary debate focused on agricultural chemicals as well. It
was also observed that there is wider distinction between the concepts of
invention and patentability, a distinction that was at the heart of the Patent
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Act, as framed in 1970 and which is reinforced by 2005 amendment to
Section 3(d). The impugned order is, however, completely silent on the
pre-grant opposition of the Petitioner under Section 3(d) and therefore, not
only violates the principles of natural justice but also is in the teeth of
judgment of the Supreme Court in Novartis (Supra).
39. Learned counsels appearing on behalf of the Respondents, in order to
justify the non-consideration of opposition under Section 3(d), had
vehemently canvassed that the substance of Section 3(d) challenged is
identical to the challenge under Section 3(e) and while Section 3(d) may not
be specifically mentioned in the impugned order, relevant parameters for a
Section 3(d) assessment are covered under the reasoning and conclusion
rendered by Respondent No. 1 in para (iv) of the order under the heading
'Section 3(e) of The Patents Act, 1970'. Aptly encapsulated the argument
on behalf of Respondent No. 1 was that the subject matter of the impugned
patent application would fall in the scope of examination under Section 3(e)
and therefore, was not required to be considered separately under Section
3(d) as also if the compositions composed of known combinations are to be
subjected to an examination under Section 3(d), the same would be against
the principles of interpretation and would render Section 3(e) negatory.
40. Respondent No. 2, on the other hand, urged that objection under
Section 3(d) was in-effect considered and rejected though not separately
mentioned in the impugned order since the finding under Section 3(e) covers
the finding under Section 3(d). It was also contended that relevant
parameters of bio-efficacy, toxicity and stability relate to Section 3(d)
and their consideration under Section 3(e) covers adjudication under
Section 3(d). Justifying the impugned order, it was also urged that when the
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Controller has comprehensively ruled on novelty in favour of Respondent
No. 2 and held that the composition is not a mere admixture, the very
premise of Section 3(d), i.e., combination being a known substance goes and
no separate finding was required to be given under Section 3(d).
41. These arguments, though ingenious, cannot be accepted in the present
case. The position adopted by the Respondents is both factually and legally
incorrect when placed in the context and perspective of the provisions of
Section 3(d). It bears repetition to state that Respondent No. 1 has not even
considered Section 3(d) while with respect to Section 3(e) Respondent No. 1
has observed that the composition under the patent application is not a mere
admixture and the data provided by the Applicant regarding stability and
bio-efficacy shows synergistic effect. Relevant para is as follows:-
"3) In the following paragraphs, I wish to analyze the relevant
grounds which the Opponent has raised:
xxx xxx xxx
iv) Section 3(e) of The Patents Act, 1970:
The applicant has provided data regarding stability and bio
efficacy of composition claimed in instant application to show
synergistic effects. The applicant has provided data regarding
the reduced toxicity of composition which is in the form of
suspo-emlsuion in comparison to toxicity exhibited by
individual components of the composition. From the
submissions given by the applicant, it was observed that it is not
a mere admixture of Pyriproxyfen, Diafenthiuron, Poly Aryl
Phenol/Octyl Phenol Ethoxylates, Magnesium Aluminium
Silicate and Acrylic polymer but a synergistic suspo-emulsion
as prepared by method claimed in claim 10.
Hence subject matter of claims 1-10 does not fall under Section
3(e) of The Patents Act, 1970."
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42. In order to appreciate and examine the arguments of the respective
parties, it would be pertinent to refer to Section 3(d) and 3(e) of the Patents
Act, which are extracted hereunder:-
"3. What are not inventions.--The following are not
inventions within the meaning of this Act,--
xxx xxx xxx
(d) the mere discovery of a new form of a known substance
which does not result in the enhancement of the known efficacy
of that substance or the mere discovery of any new property or
new use for a known substance or of the mere use of a known
process, machine or apparatus unless such known process
results in a new product or employs at least one new reactant.
Explanation.--For the purposes of this clause, salts,
esters, ethers, polymorphs, metabolites, pure form,
particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance
shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy;
(e) a substance obtained by a mere admixture resulting only in
the aggregation of the properties of the components thereof or
a process for producing such substance;"
43. Both Section 3(d) and 3(e) fall under Chapter II of the Act. Section
3(d) provides that a mere discovery of a new form of a known substance
which does not result in enhanced efficacy of that substance shall not be an
invention. Explanation to the Section provides that 'combinations' shall be
considered to be the same substance unless they differ significantly in
properties with regard to efficacy. Section 3(e) provides that a substance
obtained by a mere admixture resulting only in the aggregation of properties
of the components thereof shall not be an invention. Plain reading of the two
provisions, indicates that Section 3(d) entails an assessment of 'enhanced
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efficacy' of the claimed composition in comparison to the efficacy of the
known substance while the assessment under Section 3(e) is with a view to
determine the synergistic effect of claimed composition with the individual
properties of each component comprising the composition. Legislature in its
wisdom has enacted two different provisions and the tests for both are
different. The Supreme Court in Novartis (supra) has observed that
Section 3(d) is not ex majore cautela and sets up a second tier of qualifying
standards in chemical substances/pharmaceutical products to encourage
genuine inventions, at the same time keeping check on evergreening.
Section 3(d) provides a safeguard to patentability of a new form of known
substance if it does not pass the threshold of enhanced efficacy. Thus, the
Respondents may not be wholly correct in arguing that an adjudication
under Section 3(e) of novelty or a product not being a mere admixture would
cover the adjudication under Section 3(d). There is merit in the contention of
the Petitioner that the patent applicant has claimed a suspo-emulsion of
admixture/combination of Diafenthiuron and Pyriproxyfen and therefore, the
applicant would have to pass the test under both Section 3(d) and 3(e), albeit
on different aspects by showing enhanced efficacy over known combination
of a suspo-emulsion qua Section 3(d) and synergistic effect over the mere
additive effect of individual components of suspo-emulsion composition.
Therefore, it was incumbent upon Respondent No. 1 to take note of the
pre-grant opposition under Section 3(d) and deal with the same, in
accordance with law and the material placed on record.
44. This Court also finds prima facie merit in the contention of the
Petitioner that synergistic effect can be demonstrated by a combined effect
of increase in bio-efficacy and stability of the admixture beyond the sum of
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their individual effects. However, if bio-efficacy/stability is to be tested in
respect of Section 3(d), the test would be bio-efficacy/stability of the form,
i.e., suspo-emulsion in this case and not the admixture, over and above the
closest prior art brought forth by the opposer, which is the known substance
as a comparator. Petitioner has also raised a plea that the data provided by
Respondent No. 2 related to bio-efficacy/stability and not with respect to
enhanced efficacy as compared to the prior art, i.e., the alleged known
substance. Therefore, once the Petitioner had raised opposition under
Section 3(d) and 3(e) both, Respondent No. 1 was required to deal with the
opposition, looking at the scheme of the Act and the intent of the legislature
in enacting two separate provisions.
45. The impugned order shows that the pre-grant opposition has been
rejected on a finding that the data provided by Respondent No. 1 regarding
stability and bio-efficacy of composition shows synergistic effects and the
composition claimed has reduced toxicity in comparison to toxicity
exhibited by individual components of the composition. In my prima facie
view, none of these factors are germane to answer the real question of
opposition raised under Section 3(d). Respondent No. 1 ought to have
examined whether the data and other factors brought forth by the Applicant
had the effect of enhancement of efficacy from a known substance, which is
the legislative intent of amendment of Section 3(d).
46. In any event, even assuming for the sake of argument that there can be
an overlap in a given case between the findings under Section 3(d) and 3(e)
and a finding under one could cover the adjudication under the other,
Respondent No. 1 ought to have deliberated on the issue and given its
finding that no separate adjudication was required with respect to the test of
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enhanced efficacy under Section 3(d), once a finding is rendered under
Section 3(e) that the composition claimed was not a mere admixture or that
for any other reason, Section 3(d) was inapplicable. Had the objection been
rejected on merit, Petitioner would have taken recourse to further remedies
under the Act. Petitioner is right in its argument that all these reasonings are
being provided by the Respondents in their reply before this Court while
none of this finds mention in the impugned order. It is a settled law that
when an order is passed by an Authority competent to pass the order, it must
be tested for its validity based on the reasons mentioned therein and cannot
be supplemented by reasons mentioned in the counter affidavits filed in
Court. As held by the Supreme Court in Mohinder Singh Gill & Anr. v.
Chief Election Commissioner, New Delhi & Ors., (1978) 1 SCC 405, that if
this was permitted then an order bad in the beginning may by the time it
comes to Court on account of a challenge, gets validated by additional
grounds later brought out.
47. Touching on the violation of principles of natural justice, Petitioner
has brought out that a number of crucial and relevant documents placed on
record by the Petitioner were not even considered by Respondent No. 1. The
documents relied upon include D1 being US 2011/0053772 under the
ground of lack of novelty, D3/D5/D6/D8/D9 under the ground of lack of
inventive step. Perusal of the impugned order supports the contention of the
Petitioner. While it cannot be disputed that being a quasi-judicial Authority,
Respondent No. 1 has the power and discretion to decide the relevancy or
otherwise of the documents relied upon by the parties, however, the least
that is expected is that in case the Authority comes to a conclusion that the
documents are irrelevant, it must record a reasoned finding to that effect. No
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reason is discernible from the impugned order as to why the documents were
not considered by Respondent No. 1 and to this extent, as rightly contended
by the Petitioner, the impugned order is non-speaking and unreasoned. In
fact, by non-consideration of the documents, there is also a breach of
principles of natural justice. Petitioner had cited the documents, as according
to it, they were of relevance in deciding the pre-grant opposition and
consequently impacting the grant of patent.
48. Another aspect of the matter that needs examination is the contention
of the Petitioner that Respondent No. 2 had sought to amend the claim two
days prior to passing of the impugned order, i.e., on 06.04.2022 and the
amendment was allowed without notifying the Petitioner and granting the
Petitioner an opportunity to respond to the amendment. Learned counsels for
the Respondents had sought to contend that the first amendment was a mere
deletion of repetition of few words in the claim, i.e., a typographical error,
while the second amendment was only to incorporate the exact range of
thickener to bring it within the scope of the specifications. Nature of
amendments was so trivial that this objection of the Petitioner is untenable
in law.
49. Insofar as the first amendment is concerned, this Court finds force in
the contention of the Respondents as what was sought to be amended was a
mere typographical error. However, with respect to the second amendment
the plea of Respondents cannot be accepted. By the second amendment
Respondent No. 2 sought to amend the range of the thickener from
0.025-05% to 0.05-0.25%. Patents Act is a complete Code which provides a
mechanism and a procedure for carrying out amendment of an application,
specifications, etc., before the Deputy Controller of Patents under
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Sections 57 and 59 thereof. Admittedly, the procedure, as mandated under
the Act, was not followed by Respondent No. 1 before permitting
Respondent No. 2 to carry out the amendment. In fact, the amendment was
allowed two days prior to the passing of the impugned order, without even
notifying the Petitioner of the same, leave alone giving an opportunity to
respond. Assuming that the amendment was trivial or insignificant in the
perception of the Respondents, which is the case being set up at this stage, it
may not have been so for the Petitioner and given an opportunity it may
have been able to justify the opposition. It is pertinent to note that strangely
and significantly the order impugned herein does not even mention that an
amendment was made to the original claims and specifications by
Respondent No. 2, which were allowed.
50. Therefore, holistically read, the impugned order suffers from legal
infirmities, as aforementioned, being a non-speaking and unreasoned order,
besides there being violations of principles of natural justice.
51. In Agriboard (supra), a Co-ordinate Bench of this Court has
remanded the matter back to the Competent Authority for a fresh
consideration on the ground that the decision refusing to grant the patent
was unreasoned. Reliance was placed on the judgements of the Supreme
Court in Assistant Commissioner, Commercial Tax Department v. Shukla
and Brothers, (2010) 4 SCC 785 and Manohar v. State of Maharashtra &
Ors., AIR 2013 SC 681. Relevant paras are as under:-
"22. The Supreme Court in Assistant Commissioner v. Shukla
and Brothers (supra), has categorically held that passing of a
reasoned and a speaking order is an integral part of the
principle of audi alteram partem. The relevant paragraph reads
as under:
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Signed By:KAMAL KUMAR
Signing Date:09.07.2022
12:27:33
"9. The increasing institution of cases in all
Courts in India and its resultant burden upon the
Courts has invited attention of all concerned in the
justice administration system. Despite heavy
quantum of cases in Courts, in our view, it would
neither be permissible nor possible to state as a
principle of law, that while exercising power of
judicial review on administrative action and more
particularly judgment of courts in appeal before the
higher Court, providing of reasons can never be
dispensed with. The doctrine of audi alteram partem
has three basic essentials. Firstly, a person against
whom an order is required to be passed or whose
rights are likely to be affected adversely must be
granted an opportunity of being heard. Secondly, the
concerned authority should provide a fair and
transparent procedure and lastly, the authority
concerned must apply its mind and dispose of the
matter by a reasoned or speaking order. This has
been uniformly applied by courts in India and
abroad."
23. The said reasoning has been reiterated by the Supreme
Court in Manohar v. State of Maharashtra, (2012) 13 SCC
14 : AIR 2013 SC 681 wherein it has been categorically
observed that application of mind and recording of reasoned
decision are the basic elements of natural justice. There can be
no doubt that scrupulous adherence to these principles would
be required while rejecting patent applications.
24. In the opinion of this Court, while rejecting an invention
for lack of inventive step, the Controller has to consider three
elements-
• the invention disclosed in the prior art,
• the invention disclosed in the application under
consideration, and
• the manner in which subject invention would be obvious
to a person skilled in the art.
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Signed By:KAMAL KUMAR
Signing Date:09.07.2022
12:27:33
25. Without a discussion on these three elements, arriving at
a bare conclusion that the subject invention is lacking inventive
step would not be permissible, unless it is a case where the
same is absolutely clear. Section 2(1)(ja) of the Act defines
'inventive step' as under:
(ja) "inventive step" means a feature of an invention
that involves technical advance as compared to the
existing knowledge or having economic significance
or both and that makes the invention not obvious to
a person skilled in the art.
26. Thus, the Controller has to analyse as to what is the
existing knowledge and how the person skilled in the art would
move from the existing knowledge to the subject invention,
captured in the application under consideration. Without such
an analysis, the rejection of the patent application under
Section 2(1)(ja) of the Act would be contrary to the provision
itself. The remaining prior arts which are cited by ld. Counsel
having not been considered in the impugned order, the Court
does not wish to render any opinion in this regard.
27. In view of the above discussion, the impugned order
dated 16th June, 2021 rejecting the patent application of the
Appellant is set aside and the matter is remanded back to the
IPO for a fresh consideration. As part of the said consideration,
the IPO is permitted to consider the prior art D1 as also other
prior arts and the ISR issued by the PCT office, which are now
cited by the Respondent."
52. This Court is also fortified in its view that the matter deserves to be
remanded by observations of another Co-ordinate Bench in Regents of the
University of California v. Union of India and Others, 2019 SCC OnLine
Del 8590, relevant paras of which are as follows:-
"56. The decision of the Controller, as recorded in the
impugned order, has been set out hereinbefore. A plain reading
of the said conclusion indicates that some of the issues raised
by Mr. Jung had not been addressed. In addition, there is no
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Signing Date:09.07.2022
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reference to the affidavits affirmed by Mr. Schafer and Dr.
Charles L. Sawyers in the impugned order. It was contended
that the said affidavits were regarding clinical trials and
marketing approvals of the drug and, therefore, were not
relevant. This Court finds the aforesaid contention to be
unpersuasive. Admittedly, even a minor change in a compound
used as a drug can bring in about significant changes in its
therapeutic value. In this view, the affidavits affirmed by Mr.
Schafer and Dr. Charles L. Sawyers could not be considered as
irrelevant. However, even if it is accepted that the same were to
be rejected as being irrelevant, the Controller was required to
indicate the same. However, the impugned order is completely
silent on the affidavits submitted by them. In view of the above,
the impugned order is liable to be set aside also for the reason
that the Controller had failed to consider the affidavits of the
experts placed by the petitioner.
xxx xxx xxx
59. For the reasons mentioned hereinabove, the impugned
order is set aside and the matter is remanded to the Controller
to decide afresh."
53. For all the aforesaid reasons, in my opinion, Petitioner has been able
to make out a case for remanding the matter to Respondent No. 1 for
reconsideration of the pre-grant opposition, confined of course to the issues
raised before this Court in the context of Section 25(1)(f) read with
Section 3(d) of the Act, non-consideration of the documents as referred to
above and the amendment to claim No. 7 by Respondent No. 2. Since the
reconsideration may impact other issues, the appropriate course would be to
set aside the impugned order.
54. Accordingly, Respondent No. 1 is directed to reconsider the issues,
encapsulated above and pass a reasoned and speaking order within 8 weeks
from today.
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Signed By:KAMAL KUMAR
Signing Date:09.07.2022
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55. All the rival contentions raised by the parties in the present petition to
this extent are left open to be considered afresh by Respondent No. 1 on
their own merits, in accordance with law and uninfluenced by the
observations in the present judgment or the impugned order.
56. It is made clear that this Court has not expressed any opinion on the
merits of the matter and the views given hereinabove are only prima facie.
57. Writ petition is partially allowed in the aforesaid terms.
58. Pending applications also stand disposed of.
JYOTI SINGH, J
th
JULY 7 , 2022/shivam/rk/sn
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Signed By:KAMAL KUMAR
Signing Date:09.07.2022
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