Whether the Controller acted arbitrarily in exercise of his powers under Section 15 of the Act and Rule 129A of the Patents Rules 2003.
- Lifesaver IP filed patent application no. 1856/DELNP/2009 on 20.03.2009 as Patent Cooperation Treaty (PCT) National Phase application, claiming priority from UK application no. GB 0618892.4 dated 25.09.2006. The First Examination Report issued on 04.05.2017 objected to the grant of patent on the grounds of ‘novelty’, ‘inventive step’, ‘scope, clarity and conciseness and definitiveness’ of the claims. In their response dt.31.01.2018 the applicant amended the initial claims to meet the requirements of the FER.
- The Controller issued notice and called for hearing on 28.08.2018, while communicating the official requirements mainly on the grounds of lack of inventive step, clarity and conciseness and unity of invention.
- Lifesaver IP submitted a request u/r 129A of the Patents Rules, 2003 with prescribed fee on 21.08.2018 seeking adjournment of hearing for at least 30 days.
- The Respondent issued notice for adjournment of hearing on 24.09.2019, re-scheduling it to 20.11.2019. A second application was filed by Lifesaver under Rule 129A requesting an adjournment of atleast 30 days following which they received intimation of refusal to grant patent.
- Aggrieved by the order of the Respondent, the Appellant has preferred this appeal.
Section 14 of the Act reads that if the examination report is adverse to the applicant, the Controller shall at the applicant’s behest give them opportunity to be heard. Similarly, Section 80 of the Act instructs the Controller regarding use of discretionary powers under Act. It states that the Controller shall give the applicant reasonable opportunity to be heard before exercising his powers to the detriment of the applicant. Corresponding to Section 80, Rule 129 states that before exercising discretionary powers in a manner adverse to the applicant, the Controller “Controller shall give such applicant or party, a hearing, after giving him or them, ten days’ notice of such hearing ordinarily.”
The Applicant was within their statutory right under Rule 129A in asking for a second adjournment and a request for the same was submitted well in advance (7 days) of the scheduled date of hearing. Hence, if the Controller wished to reject the request for adjournment he should have done so in a procedurally fair and sound manner instead of hastily sending communication of refusal of the patent altogether.
The Respondent deviated from settled principles of natural justice in the following manner:
- Firstly, he arbitrarily decided on the petition on Rule 129A on 04/12/2019 while the date of hearing was 20/11/2019 from which a second adjournment was also sought by the applicant, as was his right under the Rules.
- Secondly, went on to decide the matter against the interest of the applicant, without providing them a fair opportunity of being heard.
- Thirdly his decision was not based on the merit of the case.
The power granted under Rule 129A of the Patent Rules while discretionary enjoins on the Controller the duty to administer it in a just and reasonable manner. Hence, the impugned order was set aside and the patent application was to be placed before a different Controller.
Citation: 2020 SCC OnLine IPAB 52