Patent

Thou shalt be heard: says Bombay High Court in Patent Abandonment Case


A few months back, the Bombay High Court had passed quite an interesting judgment regarding procedural complexities in a matter involving a patent application filed by a Spanish University. Dated February 26, 2010, this matter (Writ Petition No. 1435 of 2007) had the Universidad Politechnica De Valencia (hereinafter the Petitioner) on the one hand and Union of India, the Controller General of Patents & Designs and the Assistant Controller of Patents (hereinafter collectively the Respondents) on the other.

The Petitioner had filed a patent application on October 16, 2002 numbered IN/PCT/2002/01424/MUM and had claimed priority from Spanish Patent Application No.P200001102 dated April19, 2000 in the officially prescribed manner. A request for examination had been filed in Form 18 on March 15, 2005 and the resultant First Examination Report was issued by the Respondents on June 15, 2005.

The Petitioner contended that the application ought to have been placed for grant by December 15, 2005 according to the prevailing law. The original application contained the request that no adverse action should be taken against the Petitioner without giving it at least 10 days in advance of a hearing. The said report contained objections raised by the Respondents, to which the Petitioner had replied on November 25, 2005. However, on December 13, 2005, just a day before the application was to be placed for grant, Respondents initiated further action and intimated certain other objections vide letter. This last-minute objection didn’t allow the Petitioner to file a response by December 15, since the Petitioner had been based abroad. On application for extension, further time had been granted and the Petitioner managed to file a response to the new objections on January 4, 2006, along with the same request of being granted a hearing before any adverse decision was taken in the matter.

On January 24, 2006, new objections were issued by the Respondents, along with the intimation that the last date for putting the application would expire on March 12, 2006. On March 3, the Petitioner applied for grant of an official hearing, which was received by Respondent No. 3 on March 6, followed by exchange of correspondence. Petitioner had claimed that necessary amendment had been carried out as per the objections, despite the vagueness of such objections. Subsequently, the Petitioner was informed that his application was deemed to have been abandoned vide an order u/s 21(1) of The Patents Act, 1970 (hereinafter the Act), for not meeting the requirements as set out in the order.

The Petitioner had further submitted that the said objections were only concerned with clarity of the words, which was not a fatal error and Sections 3 and 4 of the Act had not been invoked. The review petition filed by the Petitioner against that order had been summarily rejected w/o giving any opportunity to the Petitioner of being heard. However, according to the Petitioner, since Respondent No. 3 had been functioning in a quasi-judicial capacity in this matter, the latter should have given a hearing to the Petitioner and should also have rendered “a speaking and reasoned decision based on justifiable and cogent grounds, as opposed to passing an order in an administrative and mechanical manner without application of mind.” The Petitioner had contended that the two orders of abandonment and summary rejection were entirely without jurisdiction and/or amounting to failure to exercise jurisdiction and consequently they should be set aside, with the Petitioner being given an opportunity of being heard.

In reply, the Respondents argued that the reply to the final objections and reasons for hearing was made by the Petitioner not before 10 days of the last date, viz. March 15, 2006 and hence as per Section 80 of the Act, it was not obligatory on the part of the Controller to give personal hearing. In return, the Petitioner had relied on several judgments, such as Intel Corporation vs. Union of India & Ors. (Writ Petition No.368 of 2007), Teijin Limited vs. Union of India (Writ Petition No.228 of 2007) and Novo Nordisk A/S. vs. Union of India & Ors. (Writ Petition No.2105 of 2006) etc., wherein the Court had set aside orders of the Respondent No. 3 on the ground of the Petitioner not having been granted hearing. Moreover, the last response having been dispatched on March 3, 2006 and received in the office of the Respondent No.3 on March 6, 2006, the Petitioner urged that it was within the prescribed period of 10 days, the last date being March 15, 2006.

The two matters on which the Court pondered were whether the action of Respondent No.3 in denying the Petitioner a hearing on the ground that the request for hearing had not been made before 10 days of the last date was within jurisdiction and whether the Revision Application could be decided at all without giving a hearing to the Petitioner.

To answer the same, the Bench, comprising Justices A.R. Joshi and Ferdino I. Rebello, examined Sections 21 and 80 of the Act and also Rules 28, 28A, 29, 30 and 129 of the Patent Rules, 2003 (hereinafter the Rules). With regard to the first question, the Court held that an application could be abandoned u/s 21 only if no response had been filed to the objections raised within the time period mentioned in S. 80. In the present case, the response had been filed within the time period of March 16, 2006, though received by the Controller within 10 days before expiry of due date, and the Court believed that S. 21, while creating a deeming fiction of abandonment, had two aspects to be considered: “One to treat the application as abandoned in the event the response is not forwarded to the Controller within the time when the objections are made known. The second, if it is the contention of the petitioner that he has complied with the objections, can the Controller hold that the Patent is deemed to have been abandoned without giving a hearing to such applicant?

To such a question, the Court replied that S. 21 would require judicious exercise of discretion on the Controller and as such, all judicial or quasi-judicial authority ordinarily, in the absence of a statutory bar, can decline to hear a party in respect of civil proceedings. Thus S. 80 involves statutory recognition of the inbuilt element of hearing within the exercise of discretion, i.e. if discretion has to be exercised, then hearing has to be given if the request is made within the time stipulated by the provisions. As per Rule 28(1), if an applicant requests for a hearing regarding contesting the objections communicated to him, he has to be given such an opportunity. Proviso to R. 28(2) requires such request to be made on a date earlier than 10 days of the final date of the period referred to in S. 21(1). However, apart from this, the Controller also has the power vide R. 30 to grant hearing on a request being made by the applicant at any time before the matter is decided, as also a requirement u/R. 129 that before exercise of any discretionary power, the Controller shall give such applicant a hearing after giving him 10 days notice of the same.

A combined reading of Sections 21 and 80 along with Rule 28(2) would thus mean, according to the Court, that the claim for hearing must be made within a time as specified in the proviso to the S.21 and the Rule. If a request is made within the time as framed, the Controller has to give a hearing, since the operative word used is “shall”. However, that does not exclude the right of hearing in other cases if sought even after the prescribed time. The right of hearing is inherent in any discretionary exercise of power, as has been separately recognized in Rules 30 and 129.

Thus the order by the Respondent No.3, holding that the Petitioner’s application was deemed to be abandoned was clearly without jurisdiction and hence liable to be set aside. Even in case of a review, the quasi-judicial authority concerned has to provide the parties involved an opportunity to be heard and thereafter, has to pass a speaking order backed by specific reasons which had not been done in the present case, thereby rendering the order dismissing the application for Review also liable to be quashed and set aside. The matter was thus finally remanded to the Respondent No.3 to hear the Petitioner herein after giving a proper opportunity as contemplated under the Act and the Rules and thereafter to decide the matter according to law.

Shouvik Kumar Guha

Shouvik is at present employed as a Research Associate and a Teaching Assistant at The W.B. National University of Juridical Sciences, Kolkata. He has obtained his B.A. LL.B. (Hons.) degree from NUJS itself and is also currently pursuing his LL.M. degree from the same university. From his very year at law school, he had been attracted towards the discipline of Intellectual Property and that interest has been kindled further in course of time. The interface between IP and other disciplines such as Economics, Anti-trust Law, Human Rights, World Trade Law and the technological developments relating thereto, has especially caught his attention since then. He’s authored several papers on issues relating to IP and other legal disciplines for journals, books, magazines and conferences in national as well as international levels. He is also currently co-heading an organization called Lexbiosis, which is an endeavor meant to facilitate the collaboration between the legal industry and academia.

5 comments.

  1. Anonymous

    This things arise because at the patent office, few people put in the hours and are trained enough to respond to an office action.
    If one sees the office actions for this applications, one can see that the Examiner/Asstt. Controller simply did not put in the required time/efforts.

    Why cant the patent office get its act together? It seems that this kind of a situation arises very frequently (multiple cases at multiple jurisdictions) and yet the Asstt. Controllers/Examiner keep trying to push the envelope-i.e. see whether the applicant will fold.

    The Controller should circulate a nationwide circular prohibiting such practices at the patent office.

    Reply

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