Can the IPO Raise New Objections During the Patent Hearing?

Filing and applying for a patent is an exhaustive and expensive process which requires intense research development and expenditure. This means that if the application gets rejected by the patent office, it tends to sting. Particularly so if the application is rejected without the Patent Office clarifying the grounds of the objections and depriving the applicant of rectifying these objections.

The case, Perkinelmer Health Sciences Inc vs Controller Of Patents decided on 04 Jan 2023 is an example of this.

During the prosecution stage of the patent, the IPO rejected the patent application and held that the Appellant was not able to satisfy it on the objections mentioned in the hearing notice, which is standard procedure.

However, the IPO also raised objections under section 3(f), that were conveyed only at the time of the hearing. Section 3 of the Patents Act 1970, lays down a number of grounds for refusing the grant of a patent. Subsection (f) specifically objects to patenting the following;

“a mere arrangement or re-arrangement or duplication of known devices each capable of functioning independently of one another in a known way”

This is a major objection, and the Appellant moved to the Delhi High Court after it was raised during the hearing. The Appellant protested that the non-patentability of the invention (an important objection by all accounts) should have been communicated to the applicant at the time of examination, and not at the hearing stage.

The Appellant approached the Delhi HC on these grounds of impermissibility, relying upon the September 2022 judgement passed in Otsuka Pharmaceutical Co Ltd vs The Controller Of Patents and the circular named Examination of Patent Applications and Consideration of Report of Examiner (2011).

The Circular in its words clearly allows the Examiner/Controller to raise valid objections if he opines that any major patentability criteria have been missed. Upon receiving the Reply to such an Examination Report, if the Controller is still not satisfied or holds that the objections have not been sufficiently explained, a second round of objections may be raised. Most significantly, such objections need to be communicated well in advance to the applicants and sufficient opportunity must be provided.

While the circular in question has since then been updated by an upgraded version, the crux of the matter remains the same today as well. Fittingly, it was held by the Delhi High Court that the Controller was not justified in raising objections at the hearing and had, by doing so, violated the principles of natural justice.

These actions took away from the Appellant the opportunity of giving a proper explanation. In this regard, the IPO was ordered to issue another hearing notice with all the grounds and conduct the hearing afresh.

Clearly, it is now established procedure that audi alteram partum cannot be denied to any party in patent proceedings.

Author: Dipanwita Chakraborty, Attorney at PA Legal.

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