Pre-grant opposition rules grant a personal hearing to the opponent

By Manisha Singh Nair, Lex Orbis
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Neon Laboratories filed a writ petition under article 226 of the Constitution of India against the grant of patent No. 231479, dated 4 March 2009, to Troikaa Pharma Limited.

Troikaa had filed a patent application, accompanied by provisional specification, on 1 February 2005 before the patent office in Mumbai and thereafter filed a complete specification on 25 January 2006.

Subsequently, Neon filed a representation by way of opposition under section 25(1) of the Patents Act, 1970, and rule 55 of the Patent Rules, 2003, and asked the patent controller to grant a hearing on the representation.

First examination report

Manisha Singh Nair, Partner, Lex Orbis Intellectual Property Practice
Manisha Singh Nair
Partner
Lex Orbis Intellectual Property Practice

On 14 January 2008, the assistant controller of patents and designs issued a first examination report, to which Troikaa filed a reply on 22 February 2008. Troikaa had also previously filed a reply to the opposition of Neon and served Neon with a copy of this, to which Neon filed a rejoinder and requested that a date be fixed for oral hearing.

The assistant controller of patents and designs accordingly informed the parties that the matter would be heard on 9 July 2008. However, on the date of hearing, Troikaa stated that it intended to file an amended set of claims to the original patent application. Both parties agreed that the hearing would be held after the amended claims were filed.

Troikaa filed the amended set of claims on 30 July 2008 and this was made available to Neon on 11 September 2008. Accordingly, Neon filed its opposition to the amended claims and sent a letter to the assistant controller of patents and designs to put on record its opposition to the amended claims. Neon also sent a letter dated 30 December 2008 requesting that the patent controller grant a personal hearing in the light of its opposition to the amended claims.

Having received no response to the above communications, Neon sent a letter dated 6 May 2009 objecting to the course adopted by the assistant controller of patents and designs (i.e. allowing the amendment of claims). The attention of the patent controller was drawn to rules 55(5) and 55(6) of the Patent Rules.

Since Neon still did not hear anything from the authorities, it conducted a general search and was astounded to learn that patent no. 231479 had been granted to Troikaa on 4 March 2009 without any reference to the opposition it had filed.

More than three months after the grant of patent, the assistant controller of patents and designs forwarded to Neon an order dated 3 June 2009 dismissing the representation by way of opposition that Neon had filed, and allowing the amendment to the claims.

No fair hearing?

Relying on a comparison of the original claim, amended claims and granted claims, Neon stated in a rejoinder affidavit that it had been denied a fair hearing and further stated that the impugned order did not state whether the amended claims were within the scope of disclosures made in the patent application.

Neon further stated that it was fallacious to say that the amended claims were dealt with at the hearing held on 9 July 2008, as the amended claims were filed only on 30 July 2008 and amended specifications were made available to Neon only on 11 September.

Neon relied on rule 55(6) of the Patent Rules, under which the patent controller can, after considering the representation made in the opposition and the submissions made during the hearing, either reject the representation and grant the patent or accept the representation and reject the patent.

Further, Neon claimed that if a person opposing the grant requests that he be heard on the amended claims, it is incumbent upon the authorities to grant a personal hearing and therefore if a patent is granted by taking into account the amended claims without any hearing, this is contrary to the statutory mandate as contained in section 25(i) and rule 55 of the Patents Act and the Patent Rules. As such, Neon claimed that the mandatory hearing requirement was violated and therefore the impugned order should be set aside.

The assistant controller of patents and designs stated that it had already heard Neon’s objection dated 7 October 2008; that Neon did not submit any relevant evidence against the amended claims; and that the amendment of claims was in accordance with rule 55(5) of the Patent Rules.

The assistant controller of patents and designs also submitted that it found the patent application was in order for the grant of a patent under section 43. Further, the amendments to the claims were within the scope of the invention and therefore no separate hearing was required under rule 5 of the 2003 Rules.

It was further contended that Neon was not entitled to file a writ under article 226 of the Constitution of India, since a mere breach of the principles of natural justice would not suffice. Proof of prejudice, independent of breach and violation, must be furnished, which was not done in this case.

The Bombay High Court observed that if the patent controller was of the view that there was no need for a further hearing after the first hearing of 9 July 2008, then he was not required to forward the amended claims to Neon.

It was therefore held that once the claims were forwarded to Neon and its objections were invited, and when a request was made by Neon for a personal hearing, it was incumbent upon the patent controller to further hear Neon.

Order set aside

The impugned order was accordingly set aside by the Bombay High Court and the patent controller was directed to give a personal hearing to Neon and Troikaa, and to give a reasoned order within three months of the date of appearance of the parties.

Manisha Singh Nair is a partner at Lex Orbis, an intellectual property practice law firm headquartered in New Delhi

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