INDIA: High Court Upholds Natural Justice, Quashes Refusal Order Against UPL Limited

In a writ petition filed by UPL Limited, the Hon’ble Calcutta High Court (hereinafter “the Court”) set aside the order issued by the Controller of Patents and reaffirmed the importance of the principles of natural justice. The petitioner challenged the rejection of its patent application No. 201631037704, which had been refused following a pre-grant opposition filed by the Haryana Pesticides Manufacturers’ Association under Section 25(1) of the Patents Act, 1970.

BACKGROUND

The application titled “FUNGICIDAL COMBINATIONS” relates to a composition that provides significant benefits for agriculture, including reduced fungal infections, delayed senescence, enhanced greening, and increased production of crops.

A First Examination Report (FER) was issued on 30 April 2019 by the Controller and the applicant filed its response on 28 October 2019. In July 2020, a pre-grant opposition was filed by the “Haryana Pesticides Manufactures’ Association” under Section 25(1) on the grounds of lack of Novelty, lack of Inventive Step and that the composition was a mere admixture. After the hearing of pre-grant opposition hearing and submission of written submissions, the Controller passed the impugned order, refusing the application.

UPL limited then filed a writ petition and claimed relief from the High Court, alleging violation of principles of natural justice.

 CONTENTIONS MADE BY THE PETITIONER (UPL Limited)

The petitioner claimed the expert affidavit with scientific facts and analysis demonstrating synergistic effects of the composition was ignored by the Controller of Patents. Instead, the Controller conducted his own scientific research and independent calculations.               

It was argued that there has been a violation of the principles of natural justice as none of the information, data nor scientific analysis relied on by the Controller was made available to the petitioner and they were not given an opportunity to argue or reply to the analysis.

Additionally, the petitioner argued that the law demands two distinct hearings: one for the pre-grant opposition and one for the patent application. However, the Controller held a single combined hearing and issued a single order, which they contended was contrary to the principles of fair procedure.

CONTENTIONS MADE BY THE RESPONDENTS

The respondents submitted that mere non-acceptance of the expert opinion does not impact the finding of the Controller on the grounds of novelty, inventive steps or under section 3 of the Act .

They argued that the invention lacked novelty and inventive steps as the invention was only a combination of known fungicides and was therefore non-patentable under section 3(e) of the Patents Act. They contended that the patent lacked “synergistic effect” and “technical advancement”.

Additionally, they challenged the expert declaration, claiming that it only demonstrated efficacy for a single combination, although the patent claimed multiple combinations across different ranges. As a result, the affidavit was insufficient for validating the overall invention.

Further, a point of maintainability of the present writ petition was raised by the respondents asserting that a statutory remedy by way of an appeal against the impugned order was available under the Act and hence, the writ petition should not be accepted.

 COURT’S ANALYSIS

The High Court of Calcutta allowed the writ petition and reaffirmed that the existence of an alternative statutory remedy does not bar the exercise of writ jurisdiction. It was held that “While a High Court would not ordinarily exercise its jurisdiction under Article 226 of the Constitution if an effective and efficacious alternative remedy is available, it is well settled that the existence of an alternative remedy does not by itself bar the High Court from exercising its jurisdiction in certain circumstances.”

The Court observed that a pre grant opposition and an application upon examination are distinct and must be dealt with independently under section 25(1) and section 14 respectively.

Further, the Court noted that the Controller erred in not considering the expert affidavit filed by the petitioner. It was held that the entire exercise of providing independent scientific analysis without granting an opportunity to the petitioner is a serious infirmity in the impugned order and in violation of the principles of natural justice.

Accordingly, the Court rejected the order passed by the Controller and remanded the case to the patent office for a new verdict. The Court directed that a new Hearing Officer be appointed to conduct two separate hearings under Sections 14 and 25 of the Patents Act, examine all relevant documents and evidence, and issue separate, justified orders. The substantive questions on novelty and inventive step were left open for adjudication afresh.

Megha Sharma

Patent Associate

megha.sharma@iprattorneys.com