The Patents Act 1970 clearly elucidates the necessary formalities that must be complied with when pursuing a patent application. Rule 24(4) of the Patent Rules, 2003 clearly provides that an applicant should comply with all the technical objections within first six months or any other reasonable period and resubmit the documents with all necessary amendments. The provision also recognizes t the failure to proceed within reasonable time as abuse of proceedings. However, the Registrar , in exercise of his discretion under Section 80 can afford an opportunity to be heard before issuing an order rejecting the application.
In Novo Nordisk Health Care AG v. Assistant Controller of Patents and Designs 2009(41) PTC 577(IPAB) It was held that the Patent Controller arbitrarily exercised his discretion and rejected the patent application t on grounds of filing a response few days prior to the expiry of time limit. A request for examination had been filed with the Controller upon which the First Examination Report (FER) was issued stating the last date for placing the application in order for grant. The FER included objections revolving around the subject matter falling in the purview of Section 3, the lack of novelty due to anticipation as well as the absence of an inventive step
The applicant filed the response two days prior to the expiry date, reverting to the objections on lack of novelty. An opportunity to be heard was also requested in case the Controller desired to decide adversely against the grant of the application. . However, the Controller refused to proceed with the application in exercise of his power to amend or refuse an application (as under Section 15) vide a letter signed by the Examiner of Patents for and on its behalf. Two reasons explaining the rejection were cited, namely, disentitlement of a chance to be heard under section 80 due to non-filling tem days prior to the expiry of time limit and non-fulfillment of the technical objections raised in the FER.
The Board in view of the FER noted that the same expressly stated that it was in the interest of the applicant to comply with the requirements at the earliest. Further, in consideration of Section 14 and 15, the Board observed that the applicant was required to request for a hearing well in advance. Looking at Section 80, it was also ruled that meeting with technical requirements is one aspect, while fulfilling the requirements of law is essential to every legal system. The Board however observed that the power to refuse a patent application vested with the Controller. It was further observed that the purported order of refusal, which was in fact a communication in the form of a letter had not been signed by the Controller, who alone had the power to hold any hearing. It was clearly held that the Examiner (acting on behalf of the Assistant Controller) was only empowered to examine the technical objections, but not to usurp the functions of the Controller, unless authorized under the law.
The Board revisiting the principles of audi alteram partem dismissed the impugned order on grounds that the same was manifestly arbitrary and as such unsustainable. The Board ordered that Novo Nordisk be afforded an opportunity to be heard within a reasonable time frame.
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