In a recent judgement dated November 28, 2024, the Madras High Court while hearing an appeal under Section 117A of the Patents Act, 1970 (“Act”), quashed an impugned order that the Controller of Patents and Designs (“Controller”) had passed, on grounds of non-application of mind and violation of principles of natural justice.
BASF SE, the appellant in this case, had filed a Divisional Application under Section 16[1] of the Patents Act, 1970, following the grant of its parent patent application. The Controller rejected the Divisional Application on the ground that the timing of the grant of the parent patent preceded the filing of the Divisional Application, even though the divisional application was filed on the same day as the grant of the parent application. This timing, according to the Controller, rendered the Divisional Application to not be in accordance with Section 16 of the Act.
The Appellant, on the other hand, contended that the application was rejected on incorrect grounds as it was practically impossible for the Appellant to determine the exact timing of the grant and make the filing of the application before the grant. As per the Appellant, the fact that the Divisional Application was filed on the same day as the grant of the parent patent application should have been considered sufficient to meet the requirement of Section 16 of the Act.
Further, the Appellant argued that the impugned order was passed in violation of the principles of natural justice, as the hearing notice issued by the Controller did not mention lack of distinctiveness as an objection. However, in the impugned order, one of the reasons for refusing patent grant in respect of the Divisional Application was that the claims are not distinctive in comparison to the claims of the parent patent applications. The absence of the objection in the hearing notice denied the appellant the opportunity to present an explanation on the matter during the hearing, prior to the issuance of the order rejecting the application.
The High Court considered these submissions and held that the respondent violated the principles of natural justice while passing the impugned order. Moreover, the Court held that the order was passed by total non-application of mind. The Court held that it is an admitted fact that the Divisional Application was filed on the day the patent on the parent application was granted, and it was impossible for the appellant to know the exact timing when the patent would be granted. Therefore, the court proceeded to quash the impugned order and the appeal was disposed of by remanding the matter back to the respondent for fresh consideration of the Divisional Application filed by the appellant on merits.
The Court also acknowledged the practical difficulty in knowing the exact timing of the grant of patent and held that it is sufficient to file a divisional application on the same day as the day of grant of parent application to meet the requirement of Section 16 of the Act. Further, through this judgement, the court has reinforced the significance of the principles of natural justice in patent proceedings. The failure to include the reason for refusing the patent grant in the notice of hearing was deemed a substantive omission, which deprived the appellant of a reasonable opportunity to provide an explanation, resulting in the final order being issued without adhering to the principle of fair hearing.
[1] Section 16
Power of Controller to make orders respecting division of application
(1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
