Introduction
In this significant decision, the High Court at Calcutta, Intellectual Property Rights Division, has underscored the imperative of maintaining distinct procedural pathways for the examination of patent applications under Sections 14 and 15 of the Patents Act, 1970, and the adjudication of pre-grant oppositions under Section 25(1) of the same Act.
The case of UPL Limited versus Haryana Pesticides Manufacturers Association & Anr. highlights the consequences of procedural consolidation where separate hearings and reasoned orders are mandated by the statutory framework.
The judgment remands a rejected patent application for fresh consideration, emphasizing adherence to principles of natural justice and the independent character of examination and opposition proceedings.
This ruling aligns with recent judicial trends that seek to prevent the conflation of these distinct stages while ensuring that the Controller of Patents exercises independent scrutiny untainted by mechanical adoption of third-party submissions.
Factual Background
The dispute centers on a patent application filed by UPL Limited on 26 March 2018, bearing number 201831011137, titled “Herbicidal Combinations.”
The claimed invention pertains to synergistic herbicidal compositions combining active ingredients from three distinct classes:
- a triazolone herbicide,
- a Photosystem II inhibitor herbicide, and
- either an ALS inhibitor herbicide from the imidazolinone family or a bleacher herbicide.
The applicant asserted that these combinations exhibited unexpected synergistic efficacy in controlling undesirable weeds, an advantage not achievable when the individual components were applied alone.
The application was published on 27 September 2019.
Following examination, the Patent Office issued a First Examination Report (FER) on 24 January 2020, raising objections primarily on grounds of lack of novelty and inventive step.
In response, the applicant amended the claims by deleting the compound amicarbazone and submitted data purporting to demonstrate synergistic effects.
Subsequently, the Haryana Pesticides Manufacturers Association filed a pre-grant opposition under Section 25(1) on 30 September 2020, contesting the application on multiple grounds including lack of novelty, obviousness, and the invention constituting a mere admixture falling within the prohibition under Section 3(e) of the Act.
After a combined hearing on 7 April 2022 and written submissions, the Controller passed an order dated 27 April 2023 rejecting the application, relying inter alia on prior art documents introduced during the opposition.
Key Factual Dates
| Event | Date |
|---|---|
| Patent application filed by UPL Limited | 26 March 2018 |
| Publication of patent application | 27 September 2019 |
| First Examination Report issued | 24 January 2020 |
| Pre-grant opposition filed under Section 25(1) | 30 September 2020 |
| Combined hearing conducted | 7 April 2022 |
| Order rejecting the application | 27 April 2023 |
Procedural Background
The procedural timeline reveals a sequence that ultimately became the focal point of challenge.
After publication, the FER cited six prior art documents that mirrored those identified in the International Search Report.
The applicant responded on 22 July 2020, expressly requesting a hearing under Section 14 should the Controller remain dissatisfied.
No separate hearing was afforded at the examination stage.
The pre-grant opposition introduced additional prior art documents (D3 to D5) beyond those common with the FER (D1 and D2).
A single hearing addressed both the outstanding examination objections and the opposition grounds.
The Controller thereafter issued a composite order rejecting the application without delineating which portions addressed examination objections under Section 15 and which disposed of the opposition under Section 25(1).
Aggrieved, UPL Limited preferred an appeal under Section 117A of the Act, contending that the consolidation violated statutory mandates and principles of natural justice.
The private opponent and the Controller defended the procedure, asserting that consolidation was permissible and that the order was adequately reasoned.
Reasoning And Decision Of Court
The court examined the statutory architecture of the Patents Act and Rules, concluding that examination proceedings under Sections 14–15 and pre-grant opposition under Section 25(1) constitute distinct and independent stages.
The court observed that Rule 55(5) permits simultaneous decision of the application and representation but does not authorize merger of hearings or obliteration of procedural separation.
Need For Separate Hearings
- Where objections in the FER differ from those in the opposition, separate hearings are obligatory.
- Where new prior art emerges only at the opposition stage, the applicant must be given a meaningful opportunity to respond.
The court found that the applicant had expressly sought a hearing in response to the FER, a request that went unheeded.
Procedural Prejudice And Fairness
- The inability to locate one cited prior art document (D4).
- The absence of any response from the Controller.
These factors compounded the prejudice suffered by the applicant.
Defects In The Composite Order
The composite order was held vitiated by its failure to distinguish between examination and opposition findings, rendering it impossible to discern independent application of mind by the Controller.
The court noted with concern the Controller’s near-verbatim reproduction of the opponent’s submissions, concluding that such mechanical adoption evidenced absence of reasoned scrutiny.
Reliance On Precedents
Drawing upon precedents including Gilead Pharmasset LLC v. Union of India (2015 SCC OnLine Del 7014) and the recent Division Bench ruling in Novartis AG v. Natco Pharma Limited (2024 SCC OnLine Del 152), the court reaffirmed that pre-grant opposition serves an assistive rather than adversarial role.
Opponents possess no locus to participate in pure examination proceedings.
Final Directions Of The Court
- The appeal was allowed.
- The impugned order was set aside.
- The application was remanded to a different Controller for fresh consideration.
- Directions were issued to afford separate hearings.
- A speaking order was to be passed within twelve weeks.
Point Of Law Settled In The Case
The judgment crystallizes several critical propositions in Indian patent jurisprudence.
1. Separation Of Proceedings
Examination under Sections 14–15 and pre-grant opposition under Section 25(1) are separate and independent proceedings that must ordinarily be heard and decided distinctly, particularly when objections or prior art differ between stages.
2. Limits On Consolidation
Consolidation, while permissible in appropriate cases for simultaneous disposal, cannot extinguish the applicant’s statutory right to separate hearings where prejudice is demonstrated.
3. Requirement Of Clear Reasoning
A composite order addressing both streams must clearly demarcate portions relating to examination and opposition respectively, failing which it stands vitiated.
4. Duty Of The Controller
The Controller is obliged to apply independent mind and furnish reasons, and mechanical adoption of an opponent’s submissions constitutes abdication of quasi-judicial function.
5. Role Of Pre-Grant Opponents
Pre-grant opponents enjoy no right of audience or participation in the examination process, their role being confined to aiding the Controller through representation on specified grounds.
6. Natural Justice And Remand
Violation of these procedural safeguards amounts to breach of natural justice warranting remand, even mindful of the general reluctance to remit matters to expert tribunals.
The decision thus reinforces the structural separation articulated in Novartis and allied rulings, ensuring that the expeditious yet rigorous framework envisaged by the legislature remains intact.
Case Details
| Case Title | UPL Limited Vs Haryana Pesticides Manufacturers Association & Anr. |
|---|---|
| Date Of Order | 05.02.2026 |
| Case Number | IPDPTA No.116 of 2023 |
| Name Of Court | High Court At Calcutta, Intellectual Property Rights Division |
| Name Of Hon’ble Judge | Ravi Krishan Kapur, J. |
Disclaimer: Readers are advised not to treat this as substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
