Recently, the Bombay High Court issued an order with respect to the issue of application of principles of natural justice with respect to amendment of patent applications.
In the case, HUL had submitted a patent application with a complete specification. Following this, the patent application was published in the Official Journal of the Patent Office. Thereafter, a First Examination Report was issued by the IPO. Tata Chemicals filed their objection to the Patent application. Consequently, pre-grant hearings between both parties were conducted before the Joint Controller of Patents and Designs which concluded on December 2011. In December 2012, the Deputy Controller sent a letter to HUL stating that the invention for which the patent was sought was not clearly defined in the absence of support of description. As a result, HUL filed four amendments to their application and filed an additional affidavit through which they adduced new evidence which was instrumental to the final order of the Joint Controller.
Tata Chemicals contended that the neither the amendments nor the affidavit was served on them. They were not given a hearing on this matter and therefore,were deprived of the opportunity to reply to these new developments. As the December 2012 letter stated that it was under Section 14 and 15 of the Patent Act, they contended that the letter was still a part of the pre-grant stage wherein there was a requirement to give opportunity of hearing to them. Therefore,they submitted that this a violation of the principles of natural justice which led to the vitiation of proceedings. Thus, they submitted that the final order was void.
HUL contended that there was no violation of the principles of natural justice.in the instant case. They submitted that the scheme of the Patent Act permitted post-grant hearings and that the amendments were only clarificatory in nature. Therefore, there was no requirement to give a personal hearing to Tata Chemicals.
On the first issue of violation of principles of natural justice, the Court after an analysis of Apex Court judgments that discuss the scope and meaning of principles of natural justice,held that there was indeed a violation in the instant case. The Court noted that four amendments were filed after the proceedings under Section 25 were concluded, of which two were crucial. Moreover, additional evidence was adduced which greatly helped HUL’s claim. In such a scenario, depriving Tata Chemicals an opportunity of hearing or to file a reply on the amendments and the additional evidence was held to be a clear breach of principles of natural justice. Therefore, the Court granted an interim relief to that extent.
The Court framed the second issue as whether the Joint Controller could revert back to the stage of proceedings undertaken under Section 14 and 15 of the Act after an opposition application has been filed and proceedings under Section 25 had been concluded. The Court decided that this issue requires further consideration and granted the parties liberty to apply for a date of hearing after completing their pleadings expeditiously.
Great analysis Gopika. And a sound judgment. Patent applicants cannot escape the rigours of an opposition by simply amending and arguing that the opponent is to be kept out of the opposition!