India: Best Agrolife Limited vs Deputy Controller Of Patents

A person shall exhaust all the alternate efficacious remedies available to him before approaching the High Court under Article 226 of the Constitution is the rule of thumb. But can there be exceptions to this rule? Can an exception be carved out when a person is aggrieved by the order of the Controller of Patents in pre grant opposition when alternate remedies of post grant opposition and revocation petition is available? This was the question raised in the recent matter of Best Agrolife Limited V. Deputy Controller of Patents¹ dated 7^th July 2022 by the single judge bench of Justice Jyoti Singh in Delhi HC.

FACTUAL MATRIX:

Respondent No. 2 filed a patent application for the patent of of ‘A synergistic suspo-emulsion formulation of Pyriproxyfen and Diafenthiuron'. The patent application was published under Section 11 A of the Patents Act,1970 (hereinafter referred to as the “Act”) and the Respondent No.1 who is Deputy Controller of Patents and Designs (hereinafter referred to as the “Deputy Controller”) issued the First Examination Report on 31.05.2018 objecting to the claims inter alia on grounds of lack of novelty, inventive step etc. Reply to the First Examination Report was filed by Respondent No.2 and then subsequently amended their claims. Meanwhile, Petitioner filed a pre-grant opposition under Section 25(1) of the Act, opposing the grant of patent on several grounds including lack of novelty under Section 25(1)(b) and non-patentability under Section 25 (1)(f) read with Section 3(d) and 3(e) of the Act and also objected to the scope of amended claims.

Not just the petitioner but six other persons had also filed pre-grant opposition. Subsequent to such oppositions raised by petitioner and others, the Respondent no.2 on 18.06.2021 filed a reply to the same and took various objections against it. Yet again, Respondent No.2 made certain modifications in the claims. To this, the petitioner contended that while such amendments to the claims were made, he was not given any notice or opportunity to respond to the proposed amendments and patent was granted in absolute denial of his right to response or hearing. Thus, a writ petition under Article 226 of the Constitution was filed before the High court of Delhi for quashing the order of the Deputy Controller which dismissed the pre grant opposition and allowed the grant of patent.

ISSUES:

1. Whether the present writ petition is maintainable under Article 226 of the Constitution as alternate remedies are available under Section 25(2) and Section 64 of the Act?
2. Whether there is violation of principles of natural justice while passing the impugned order, requiring judicial interference in a writ jurisdiction under Article 226 of the Constitution of India?

ANALYSIS:

• The pressing issue of maintainability

The fundamental issue that arose is the maintainability of the writ petition. Briefly put, the main contention raised by the Respondents was that the issues raised by the petitioner are impermeable to an interference of judiciary under Article 225 of Writ jurisdiction. The rationale pointed out by the Respondents was that the existence of other alternate efficacious remedies available under Section 25(2) of the Patents Act as well as revocation petition under Section 64 or an appeal under Section 117 A of the Act bars the petitioner from initiating a writ petition before the High Court.

In support of their contention, heavy reliance was placed on the judgements of Ucb Farchim Sa V. Cipla Ltd. & Ors.² (2010) and Mylan Laboratories Limited V. Union of India and Others (2019)³

Wherein it was held that that, if a ‘person interested' within the meaning of Section 25(2) and 64 of the Act is not satisfied with the remedy of pre-grant opposition to prevent the grant of patent, then he shall avail the remedy of post-grant opposition under Section 25(2) or a revocation petition under 64 of the Act. After exhausting such remedies, if he is still aggrieved by the decision of the Controller then the remedy available under the statute is to file an appeal under Section 117 A of the act. It is contended that pre- grant opposition is only a procedure to aid the examination of patent and is not in the nature of an adversarial proceeding so as to invoke the extraordinary jurisdiction under Article 226 of the Constitution.

However, the High Court took another direction that, nonetheless, the petitioner has alternate remedies of post grant opposition or a revocation petition or an appeal under Section 117 A, grave injustice is caused to the petitioner as there is violation of principles of natural justice. And for that reason, petitioner cannot be non-suited in the present petition. The judgement draws strength from the judicial expositions on the rule of alternative remedy and self-restraint. In Whirlpool Corporation v. Registrar of Trademarks, Mumbai and Others⁴ the Supreme Court deliberated upon the scope of judicial interference in a writ jurisdiction even when an alternative remedy is available to a party. Thus, where an alternate efficacious remedy is available the general rule of non- interference of judiciary under Article 226 will not sustain and discretion can be exercised in the event of existence of three contingencies, one of which is violation of principles of natural justice. The High Court reiterated that the court may interfere in the final order passed by the statutory authority if the order suffers from manifest error and if allowed to stand, it will amount to perpetuation of grave injustice.

In light of the above cited judgements the Court came to the conclusion that principles of natural justice has been denied to the petitioner on the many-fold grounds namely: (A) non consideration of pre-grant opposition under Section 25(1)(f) read with Section 3(d); (b) non-consideration of crucial and relevant documents that included prior art references; (c) taking into account additional documents filed by Respondent No.2 without informing the petitioner and (d) taking into account the amended claims two days prior to the grant of patent without notifying the petitioner. Ergo, the issue of maintainability was rested holding the petition to be maintainable under Article 226 of the Constitution.

• Non-speaking order and violation of principles of natural justice:

Petitioner has unequivocally and categorically taken a stand that it had raised the ground of non-patentability of the impugned patent under Section 25(1)(f) read with Section 3(d) of the Act in the pre-grant opposition. The Hon'ble Court stressed that from the reading of the order given by the Deputy Controller of patents, it leaves “...no scintilla of doubt that Respondent No. 1 has not even adverted to Section 3(d) and the opposition raised on the ground provided under the said provision”.

The court points out the significance of the decision of Novartis AG V Union of India and Others⁹, wherein the Supreme Court held that amendment to Section 3(d) cannot be underscored. The amended portion of Section 3(d) was to clearly lay down qualifying standards to keep a check on any repetitive patenting or evergreening of patents on spurious grounds. The Court came to a conclusion that the impugned order, being completely silent on the pre-grant opposition of the Petitioner under Section 3(d), not only violates the principles of natural justice but also is in the teeth of judgment of the Supreme Court in Novartis.

CONCLUSION

It is noteworthy that in the decision Court brought to the attention that the order of Controller was non- speaking and not a reasoned order. 

The Court criticised the order passed by the Controller that, “While it cannot be disputed that being a quasi-judicial Authority, Respondent No. 1 has the power and discretion to decide the relevancy or otherwise of the documents relied upon by the parties, however, the least that is expected is that in case the Authority comes to a conclusion that the documents are irrelevant, it must record a reasoned finding to that effect” The judgement brings into light the lackadaisical manner in which orders are passed by the Controller and how uniformity of orders has to be maintained. It was also a right chance for the Court to lay down guidelines to regulate the conduct of passing of orders of Controllers.

Footnotes

1 W.P.(c)- IPD 11/2022 & CM 32/2022,54/2022,55/2022

2 2010 SCC OnLine Del 523

3 2019 SCC OnLine Del 10319

4 (1998) 8 SCC 1

5 2010 SCC OnLine Del 3280

6 2003) 2 SCC 107

7 2021 6 SCC 771

8 2021) 9 SCC 657

9 (2013) 6 SCC 1

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