Procedural Separation in Patent Examination and Pre-Grant Opposition

Intellectual Property By 0

Patents Act, 1970 — Sections 14, 15, 25(1) and Rule 55(5) — Examination and pre-grant opposition — Distinct and independent proceedings — Requirement of separate hearings where objections or prior art differ — Composite order must demarcate examination and opposition findings — Mechanical adoption of opponent’s submissions vitiates order — Violation of natural justice warrants remand to different Controller for fresh consideration — Appeal allowed.

Held: Where FER objections and opposition grounds are not identical and new prior art is introduced in opposition, separate hearings under Sections 14 and 25(1) are mandatory. Controller must independently apply mind and provide reasons. Pre-grant opponent has no locus in examination proceedings. Matter remanded for de novo consideration with liberty to all parties on merits