As per the doctrine of audi alteram partem, the Controllers of the Indian Patent Office are bound to pass a speaking order while disposing off a patent application i.e., the Controllers shall provide detailed reason for granting or rejecting the patent application. However, in recent past, it has been observed that the orders from the Controllers are non-speaking orders, which lead to the violation of principles of the natural justice leaving parties aggrieved. The subject article discusses the latest judgment pronounced on July 7, 2022 on the similar lines by the Intellectual Property Division (IPD) of Honorable Delhi High Court in Best Agrolife Limited Vs Controllers of Patents & ANR (W.P.(C)-IPD 11/2022 & CM 32/2022, 54/2022, 55/2022.

Brief facts of the case:

A writ petition was filed by Best Agrolife Limited (herein referred to as 'Petitioner') seeking quashing of the order dated 08.04.2022 by Deputy Controller of Patents and Designs (herein referred to as 'Respondent 1'), dismissing the pre-grant opposition filed by the Petitioner and allowing the grant of the patent application no. 284/MUM/2014 in favor of GSP Crop Science Pvt. Ltd. (herein referred to as 'Respondent 2') bearing the patent number IN 394568 (herein referred to as 'subject patent/present patent application'). The subject patent relates to a synergistic suspo-emulsion formulation of Pyriproxyfen and Diafenthiuron, wherein the said formulation has better stability, bio-efficacy, and reduced toxicity. The said patent underwent its complete cycle of examination as per the Indian Patent law and was eventually granted based on the arguments and amendments put forward by the Respondent 2. Meanwhile, the subject patent was opposed by way of pre-grant opposition by six parties. The Respondent no. 2 and Parties filed their replies and respective pleading documents. The parties were given an opportunity to be heard, parties attended the hearing, and accordingly, post-hearing submissions were filed by each party and Respondent 2. Based on the submissions, the pre-grant oppositions were dismissed, and the patent was eventually granted, without any intimation to the parties, leaving parties aggrieved, hence leading to filing of the subject writ petition at the IPD of the Delhi High Court. The key issues of the said writ petition as addressed by the Court is elaborated below.

Key issued addressed by the Court:

1. Maintainability of the Writ petition before the Court:

Contentions made by the Respondents

The very first contention put forth by the Respondents was on the maintainability of the writ petition. The Respondents relied on the previous judgements of the Court in Ucb Farchim Sa V. Cipla Ltd. & Or.,2010 and Mylan Laboratories Limited V. Union of India and Others, 2019. The Respondents have asserted that a person who is unsuccessful in an opposition matter should opt for the immediate available remedies such as post –grant opposition under Section 25(2) of the Indian Patents Act and revocation under Section 64 and await for the Controller's decision. At most the statutory remedy is to file an appeal under Section 117A of the Patents Act.

The Respondents further made a statement that the Writ Courts seldom interfere with the orders passed by the Quasi-Judicial Authorities unless there is a serious illegality or irregularity or the Authority acts in excess of its jurisdiction.

In conclusion, the Respondents have contended that the petitioner should not have approached the Court without exhausting the alternative remedies available under Section 25(2) or Section 64 of the Indian Patents Act. The Respondents further argued that present petition was filed to avoid an infringement action, given that the Petitioners has suppressed the fact that it had a patent granted for a "synergistic insecticidal composition comprising bio active amount of Difenthiuron and Pyriproxyfen" (Patent No. 372736) with a filing date after the filing of the patent in question (394568).

The Observation of the Court on the above-mentioned issue

The Court opined that if the petitioner is able to substantiate that the Respondent 1 has committed a manifest error leading to violation of principles of natural justice or failed to exercise a jurisdiction vested in it or there is non-consideration of vital grounds or documents, the petitioner is suited for the petition.

In this regard, the Court emphasized on previous judicial precedents that Article 226 of the Constitution of India. Article 226 of the Constitution empowers the Hon'ble High Courts to exercise power through issuance of writs – habeas corpus, mandamus, quo warranto, prohibition and certiorari.

The Court held the High Court has power under Article 226 of the Constitution to issue writs not only for enforcements of fundamental rights but also for other purposes for instance when there is violation of natural justice.

The Court has emphasized the following:

  1. as a matter of self-imposed restraint, the High Court could refrain from exercising the writ jurisdiction, where the aggrieved party has an alternative efficacious remedy;
  2. alternate remedy would not, however, operate as a bar in three eventualities carried out by the Supreme Court; and
  3. it is a matter of prudence and discretion as to whether the writ Court would entertain the writ petition in the given facts and circumstances.

The Court drew the following conclusions in the present case in ascertaining that there is violation of principles of natural justice, which shall be elaborated in details in the following paragraphs of this article:

  1. non consideration of pre-grant opposition under Section 25(1)(f) read with Section 3(d) of the Act;
  2. non-consideration of crucial and relevant documents placed on record by the Petitioner, including prior art references;
  3. taking into account additional documents and evidence without informing the Petitioner of the filing of the said documents/evidence; and
  4. taking into account the amended claims. two days prior to the impugned order, without notifying the Petitioner of such amendments and seeking its response.

The Court held that the fact that an aggrieved party has an adequate remedy in law, which in a given case may persuade the Court not to intervene in the matter and relegate the party to the remedy available under the Statute, is a rule of policy, convenience and/or discretion rather than a rule of law.

2. Issuance of an Un-Reasoned, Non Speaking Order:

As briefed in the preceding paragraph, the Court analysed whether the present case encompassed a violation on principle of natural justice focussing on non-reasoned and a non-speaking order issued by the Controller, taking into account the following grounds:

2.1 Overcoming Section 3(e) is not sufficient for addressing Section 3(d)

It is noted that the pre-grant opposition was filed before Respondent No. 1 on several grounds, viz. (a) lack of novelty under Section 25(1)(b); (b) prior use/knowledge in India under Section 25(1)(d); (c) lack of inventive step under Section 2(1)(ja); (d) non-patentable under Section 25(1)(f) read with Section 3(d) and (e); and (e) insufficiency of disclosure under Section 25(1)(g) of the Act.

Contentions raised by the Counsels on behalf of the Petitioner and Respondents

The petitioner submitted that while granting the subject patent, Respondent No. 1 has not only passed a non-speaking and unreasoned order but has not even dealt with the substantive grounds raised by the Petitioner, more particularly the ground of non-patentability under Section 3(d) of the Act. However, the Counsel on behalf of the Respondent 2 argued the following:

  • Petitioner did not press its ground with any degree of seriousness on Section 3(d) during the pre-grant opposition.
  • The substance of the challenge under Section 3(d) was identical to a challenge under Section 3(e).
  • Respondent No. 1 has considered the data provided in Respondent No. 2's application as well as additional data provided in its reply on the pre-grant and has arrived at a considered decision that Respondent No. 2's composition has stability, bio-efficacy and reduced toxicity.
  • Section 3(d) may not be specifically mentioned in the impugned order but the relevant parameters for assessment and the reasoning can be deciphered from the reasons given for Section 3(e).
  • Further, when an order comprehensively rules on 'novelty' in favour of Respondent No. 2, the very premise of Section 3(d), i.e., combination being a non-substance is inapplicable.

The Observation of the Court on the above-mentioned issue

The Court opined that Respondent No. 1 has not even taken note of Section 3(d) in the entire order and consequently not dealt with the submissions made in respect thereof. Therefore, non-consideration of ground is violation of principles of natural justice. It is further opined that the Section 3(d) entails an assessment of 'enhanced efficacy' of the claimed composition in comparison to the efficacy of the known substance while the assessment of under Section 3(e) is with a view to determine the synergistic effect of the claimed composition with the individual properties of each component comprising the composition. Legislature in its wisdom has enacted two different provisions and the tests for both are different. Thus, the Respondents may not be wholly correct in arguing that reasons given for Section 3(e) for novelty of a product or for not being a mere admixture would be applicable for addressing Section 3(d) objection as well. Therefore, the Court held that, "[t]here is merit in the contention of the Petitioner that the patent applicant has claimed a suspo-emulsion of admixture/combination of Diafenthiuron and Pyriproxyfen and therefore, the applicant would have to pass the test under both Section 3(d) and 3(e), albeit on different aspects by showing enhanced efficacy over known combination of a suspo-emulsion qua Section 3(d) and synergistic effect over the mere additive effect of individual components of suspo-emulsion composition."

2.2 Amendments in claims

Contentions raised by the Counsels on behalf of the Petitions and the Respondents: The Petitioner asserted that the Respondent allowed amendment to claims two days prior to the issuance of impugned order without notifying the petitioner. Further, out of the two amendments made in claims, while one of the amendments was assumed to be typographical error, the second amendment to restrict the range of the thickener was, in fact, enlarging the scope of protection, without giving opportunity for the petitioner to be heard.

The Respondents contended that, given the fact that, amendment to one claim was typographical and the second claim was to incorporate the range of thickener to bring it within the scope of specification, the nature of amendments were trivial and not changing the scope of the original claims and hence it was not required to notify the petitioner.

The Opinion of the Court: The Court although agreed with the Respondent's contention that the first amendment was typographical in nature, it held that, with respect to the second amendment, though may be assumed trivial by the Respondent, it may not have been the case for the petitioner and given an opportunity to be heard the petitioner might have been able to justify the opposition. Further, the Court criticized that the impugned order did not mention the amendments that were made and that was eventually allowed.

2.3 Novelty and Inventive step

Another factor on which the Court based its conclusion that the present case entails a breach of principles of natural justice is that the Respondent did not even consider all the prior art documents placed on record by the petitioner, while granting the patent in question. The Court opined that the impugned order by the Respondent is a non-speaking un-reasoned order as the Respondent has not clearly elucidated as to why the documents are considered irrelevant to the novelty and inventive step of the patent in question.

2.4 Decision

It was noted that the Court partially allowed the writ petition in favour of petitioner as the petitioner has been able to make out a case for remanding the matter to the Respondent 1 for reconsideration of the pre-grant opposition in the context of Section 25(1)(f) read with Section 3(d) of the Act, non-consideration of the documents as referred to above and the amendment to claim No. 7 by the Respondent 2. Accordingly, the Respondent 1 was directed to reconsider the issues, encapsulated above and pass a reasoned and speaking order within 8 weeks from the date of present order, in accordance with law and uninfluenced by the observations in the present judgment or the impugned order. Further, the Court did not express any opinion on the validity of the subject patent.


It has been a common practice in the Indian Patent Office to refuse orders without any elaborate reasoning. The instant order of the High Court will shape the way the refusal orders are written by the Patent Office. While the Controller of Patents have the reason to reject or grant a patent, issuing an unreasoned order is a blatant violation of principles of natural justice and therefore this order reaffirms that the refusal orders should be a speaking order.

Reference: Best Agrolife Limited vs. Deputy Controller of Patents & ANR. (W.P.(C)-IPD 11/2022)

Author: Mrs. Aastha Sharma (Senior Attorney & IP Specialist)
Mrs. Krishnaja Saseendran (Attorney & IP Specialist)
Co-Author: Dr. Joshita Davar Khemani (Managing Partner & Principal Attorney at Law)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.