Lifesaver Ip Limited vs Assistant Controller Of Patents And Designs

Manmohan Singh, J, Dr. B.P. Singh Member (T)

The present appeal has been filed under section 117A of the Patents Act, 1970 against the order of the Respondent, dated 04/12/2019 by which he refused to grant patent on the patent application no. 1856/DELNP/2009; under section 15 of the Patents Act, 1970.

The instant patent application no. 1856/DELNP/2009 was filed 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 (FER) was issued by the respondent on 04/05/2017, mainly on the grounds of 'novelty', 'inventive step', 'scope, clarity and conciseness and definitiveness' of the claims. The applicant/appellant submitted their response of the FER on 31/01/2018, amending the initial claims to meet the requirements of FER.

A Hearing Notice was issued by the Respondent on 11/06/2018 fixing the date of hearing on 28/08/2018 and communicating the official requirements mainly on the grounds of lack of inventive step, clarity and conciseness and unity of invention.

The Applicant/Appellant submitted a request u/r 129A of the Patents Rules, 2003 with prescribed fee on 21/08/2018, i.e. 07 days prior to the date of hearing seeking adjournment of hearing for at least 30 days.

The Respondent issued notice for adjournment of hearing on 24/09/2019, re-scheduling the hearing to 20/11/2019.

The Applicant/Appellant submitted a second petition u/r 129A of the Patents Rules, 2003 for adjournment of hearing with prescribed fee for at least 30 days.

Here, it is pertinent to mention that as per the proviso of Rule 129A, a maximum of two adjournments could have been applied for by the Applicant/Appellant. Therefore, the Appellant were very much within their statutory limits.

Thereafter, the Applicant/Appellant received the order of the Respondent refusing to grant the patent. Aggrieved by the order of the Respondent, the Appellant has preferred this appeal.

The submission of the Learned counsel for the appellant is that hearing in the above said matter, before the respondent was fixed on 20/11/2019. The request for adjournment of hearing was filed on 13/11/2019. The Learned counsel for the appellant was expecting the matter would be likely to be adjourned. However, the order dated 04/12/2019 has been received by the appellant, refusing the patent.

It was further stated by the learned counsel of the appellant that if the matter is likely to be remanded back, it may be put up before some other Controller.

Now, we analyse the operating portion of the order of the respondent quoted herein below:

"Upon perusal of records, it is observed that the ld. agent for applicant did not show up for hearing as scheduled on 20/11/2019 and filed another adjournment request on 13/11/2019.

The same reason that applicant requires further time to fully prepare the arguments before attending the hearing has been again cited, which in my opinion is not valid and sufficient. Further sufficient time has been provided to the applicant as per the statutory time limits to comply the objections/requirements. Therefore, the adjournment request dated 13/11/2019 is denied.

Therefore, this application is refused patent for want of compliance of aforementioned objections/requirements, u/s. 15 of "The Patent Act 1970".

It is evident that the respondent has denied the adjournment request on 04/12/2019 for a hearing which was scheduled on 20/11/2019. Further, he went on to refuse the application for non-compliance of the objections/requirements issued in the hearing notice.

Let's see the provisions for the powers of Controller under of section 14 Available at http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps14.html and 15 Available at http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps15.html of the Patent Act, 1970

"Section 14

Consideration of the report of examiner by Controller

Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard."

"Section 15

Power of Controller to refuse or require amended applications, etc., in certain case

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so."

It is, therefore, amply clear that if the report of examiner is adverse to the applicant, the Controller will offer the applicant an opportunity of being heard and allow such amendment(s), as deemed necessary in accordance with law, before he proceeds to refuse the application on failure, on the part of the applicant, to adhere to the direction of the Controller.

The exercise of the discretionary power of the Controller is governed by the principles enshrined in section 80 Available at http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps80.html of the Patents Act, 1970 read with Rule 129 Available at http://ipindia.nic.in/writereaddata/Portal/ev/rules/pr129.html of the Patents Rules 2003, quoted herein below for reference:

"Section 80

Exercise of discretionary powers by Controller

Without prejudice to any provision contained in this Act requiring the Controller to hear any party to the proceedings thereunder or to give any such party an opportunity to be heard, the Controller shall give to any applicant for a patent, or for amendment of a specification (if within the prescribed time the applicant so requires) an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Act.

Provided that the party desiring a hearing makes the request for such hearing to the Controller at least ten days in advance of the expiry of the time-limit specified in respect of the proceeding.

"Rule 129

Exercise of discretionary power by the Controller

Before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to a proceeding adversely, the Controller shall give such applicant or party, a hearing, after giving him or them, ten days notice of such hearing ordinarily."

It is clear from the above quoted provisions of Rule 129 that before exercising any discretionary powers which is going to affect the applicant adversely, the Controller shall give such applicant or party, a hearing.

Let's have a look on the provisions of Rule 129A Available at http://ipindia.nic.in/writereaddata/Portal/ev/rules/pr129A.htmlof the Patents Rules, 2003:

"Rule 129A

Adjournment of hearing

An applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee prescribed in First Schedule, at least three days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly: Provided that no party shall be given more than two adjournments and each adjournment shall not be for more than thirty days."

Rule 129A was inserted in the Patents Rules 2003 vide Patents (Amendments) Rules, 2016. The intention of the legislation was to minimise the time period of grant of patent by curtailing the number and durations of adjournments sought. It imposed fee for such adjournments. Further the written submission was also consuming lot of time and the Patents (Amendment) Rules 2016 provided a definite time frame of 15 days from the date of hearing vide Rule 28(7) which reads "In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing." Thus, the amended rules formulated to regulate the process of hearing have been implemented very successfully barring few cases. The intention of legislation was, however, never to allow for hurriedly taken arbitrary decisions, without hearing the parties.

Rule 129A provides that the applicant cannot seek more than two adjournments and each of adjournments shall not be of more than 30 days duration. Here, the Controller has been given discretionary power to allow such adjournments "the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly"

Therefore, looking at the provisions of the Act and the Rules thereunder, it is clear that while the Controller does have discretionary power to allow or not to allow the request for adjournment filed under Rule 129A, he does not have any discretion to refuse a case without giving a fair opportunity of being heard to the applicant. The legal provisions don't allow the Controller to decide the matter against the applicant, without giving him an opportunity of being heard.

As stated earlier, though the Controller has discretionary powers to allow or not to allow the request for adjournments, but the Controllers, applying other statutory provisions discussed earlier, they rarely decide the matter without offering hearing. Here, in this case, neither a decision on adjournment was taken in time nor any written submission was sought and the case was refused by the impugned order just denying the adjournment application on 04/12/2019 when the hearing was scheduled on 20/11/2019 and based on the existing objections/official requirements in the hearing notice. It is also evident that no decision was not taken, on the merit of the case.

Therefore, in the instant case, the appellant didn't get an opportunity of being heard, let alone fair opportunity of being heard. It is not only unfair in accordance with the teachings of the Act and Rules made thereunder but is also a clear violation of the principles of natural justice.

The maxim 'Audi Alteram Partem' means, 'listen to the other side'. It lays down a the principle that nobody should be judged by a court without being heard. Hon'ble Supreme court of India In Maneka Gandhi's case, observed that audi alteram partem rule is a highly effective tool devised by the courts to enable a statutory authority to arrive at a just decision and it is calculated to act as a healthy check on abuse or misuse of power and hence its reach should not be narrowed and its applicability circum-scribed.

Hon'ble Supreme Court observed in Tulsiram Patel Union Of India And Another vs. Tulsiram Patel And Others  1985 AIR 1416 : 1985 SCR Supl. (2) 131 case that the rule of natural justice with which we are concerned in these Appeals and Writ Petitions, namely, the audi alteram partem rule, in its fullest amplitude means that a person against whom an order to his prejudice may be passed should be informed of the allegations and charges against him, be given an opportunity of submitting his explanation thereto, have the right to know the evidence, both oral or documentary, by which the matter is proposed to be decided against him, and to inspect the documents which are relied upon for the purpose of being used against him, to have the witnesses who are to give evidence against him examined in his presence and have the right to cross-examine them, and to lead his own evidence, both oral and documentary, in his defence.

In Swadeshi Cotton Mills vs. Union Of India Swadeshi Cotton Mills v. Union of India [1981] 2 S.C.R. 533 Chinnappa Reddy, J., in his dissenting judgment summarized the position in law on this point as follows the "The principles of natural justice have taken deep root in the judicial conscience of our people, nurtured by Binapani, Kraipak, Mohinder Singh Gill, Maneka Gandhi etc. etc. They are now considered so fundamental as to be 'implicit in the concept of ordered liberty' and, therefore, implicit in every decision making function, call it judicial, quasi judicial or administrative. Where authority functions under a statute and the statute provides for the observance of the principles of natural justice in a particular manner, natural justice will have to be observed in that manner and in no other. No wider right than that provided by statute can be claimed nor can the right be narrowed. Where the statute is silent about the observance of the principles of natural justice such statutory silence is taken to imply compliance with the principles of natural justice. The implication of natural justice being presumptive it may be excluded by express words of statute or by necessary intendment. Where the conflict is between the public interest and the private interest, the presumption rust necessarily be weak and may, therefore, be readily displaced."

Hon'ble Supreme Court in the same case ibid observed that in India, this Court has consistently taken the view that a quasi-judicial or administrative decision rendered in violation of the audi alteram partem rule, wherever it can be read as an implied requirement of the law, is null and void (e.g. Maneka Gandhi's case, ibid, and S.L. Kapoor v. Jagmohan, ibid).

Therefore, on both counts i.e. according to the provisions of the Patents Act and the Rules made thereunder as well as on the principles of natural justice, the impugned order is an arbitrarily action of the respondent, herein.

The respondent, did not act as per the statutory provisions and the settled principles of natural justice on following three counts:

• Firstly, he arbitrarily decided on the petition on Rule 129A on 04/12/2019 while the date of hearing was 20/11/2019.

• 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.

We have considered the submissions of the appellant, the provisions of the law and available records and arrive at the conclusion that the order of the respondent is arbitrary in nature and cannot be sustained.

We, therefore, set aside the impugned order dated 04/12/2019 of the respondent and remand back the case for deciding it on merit in accordance with law, after providing the applicant, a fair opportunity of being heard, strictly within 6 months from the issuance of this order.

As requested by the Appellant to put up the case before some other Controller in case of remand, we are of the view that, in the best interest of justice, the case may be referred to some other Controller u/s. 73(4) of the Patents Act, 1970.

Appeal is allowed. No cost.