ORDER (No.9 of 2014)
Justice K.N. Basha, Chairman
This appeal is filed by the appellant challenging the order of the learned Assistant Controller of Patents and Designs dated 28/4/2009 rejecting the patent application preferred by the appellant seeking for the patent for their invention œcomposition and method for delivery of pharmacological agents? in India under the Indian Patents Act, 1970 under the application number 2899/DELNP/2005.
2. The appellant is a fully integrated bio-technology company dedicated to delivering progressive therapeutics and core technologies that offer patients and medical professionals safer and more effective treatment for cancer and other critical illnesses. The appellant claimed that their company is the worlds first only protein based Nano particles chemotherapeutic for cancer treatment clinically approved by regulatory agencies in several countries. The appellant developed this proprietary tumor targeting system known as nab Technology platform which is an innovative approach for treating cancer and other critical illness. Accordingly the appellant submitted their application as stated above for grant of patent right. The generic version of medicine Abraxane is covered by the patent application.
3. The 4th respondent launched their product œAlbupaxŸ. Therefore, the 4th respondent herein filed pre-grant opposition raising several objections to the claims made by the appellant.
4. Mrs. Archana Shanker, the learned counsel appearing for the appellant would submit that though the appellant raised several grounds including on merits, she is confining her arguments mainly on the ground of gross violation of Principle of Natural Justice and on the ground of rendering findings in the impugned order without any plea raised by the respondent No.4.
5. The learned counsel for the appellant would vehemently contend that the impugned order suffers from gross violation of principles of natural justice and as such the same is liable to set-aside. It is contended that the appellant has been denied an opportunity of hearing as per provision under Section 14 of the Act inspite of making specific request as per letter dated 08.04.2009. It is for the Assistant Controller of Patents to afford opportunity of hearing under Section 14 of the Act and to pass an order under Section 15 of the Act. The learned counsel would submit that the said opportunity of hearing under Section 14 of the Act was denied by the Assistant Controller of Patents on the ground that the appellant has not submitted their reply to the First Examination Report before 07.01.2009 and the said finding is incorrect as the appellant has submitted its reply for the First Examination Report on 06.01.2009 itself. It is further contended that without following the mandatory requirement under Section 14 of the Act, the Assistant Controller of Patents proceeded with the hearing on the pre-grant representation under Section 25 (1) of the Act. The learned counsel would submit that an order passed as per provision under Section 14 and 15 of the Act is an appealable order and as such the appellant has been deprived of an opportunity of preferring an appeal at that stage in the event of not succeeding as per provision under Section 14 of the Act. It is submitted that an order passed under Section 25 (1) at the pre-grant stage is not appealable during the relevant dime and only subsequently in a batch of writ petition the HonŸble Delhi High Court has held that orders passed at pre-grant stage are also appealable. Therefore, it is contended that the impugned order is vitiated on the ground of violation of Principles of Natural Justice.
6. The learned counsel for the appellant would also contend that the learned Assistant Controller has suo-moto taken additional ground of opposition œinsufficiency? under section 25(i)(g) of the Act which was neither pleaded by the opponent nor even argued during the hearing. It is pointed out that the learned Assistant Controller has given finding on the said additional ground and there by committed a serious error of law. In support of her contentions, the learned counsel for the appellant would place reliance on the following decisions :-
(1) 2008(37) PTC 448 (Del.) “ Ferid Allani Vs. UOI and Ors. (2) 2011 (1) UJ SC 0453 “ Kalyan Singh Chouhan Vs. C.P. Joshi (3) IPAB Order No.96 of 2013 in TRA/3/2007/PT/DEL dated 2nd May, 2013 “ LML Limited vs. Bajaj Auro Limited
7. Mr. S. Majumdar, the learned counsel for the 4th respondent would submit that there is no illegality or infirmity in the impugned order. It is contended that the appellant having participated in the proceedings of hearing under Section 25 (1) of the Act cannot contend that they have not given opportunity of hearing as per provision under Section 14 of the Act. The learned counsel for the 4th respondent would contend that the learned Assistant Controller has given opportunity to both sides and there is no question of any deprivation of opportunity to the appellant. Lastly, Mr. S. Majumdar, the learned counsel for the 4th respondent submitted that the 4th respondent was not furnished with the copy of evidence filed through Dr. Anindhya Sircar and as such they have no opportunity to submit their reply to that evidence.
8. We have given our careful and thoughtful consideration to the rival contentions put forward by either side and perused the impugned order.
9. The undisputed fact remains that the learned Assistant Controller of Patents has not given opportunity of hearing to the appellant as contemplated under section 14 of the Act. It is specifically stated by the learned Assistant Controller of Patents in the impugned order as hereunder:-
œTherefore the request of the applicant to hear the applicant U/S 14 in case the representation is allowed cannot be allowed.? The above said observation makes it abundantly clear that the specific request made by the appellant/applicant for hearing under section 14 of the Act was denied and rejected. It is pertinent to note that a specific written request was made by the appellant as per letter dated 08.04.2009 seeking for the relief of hearing under Section 14 and 15 of the Act. The perusal of the said letter reveals a response was filed to the first office action on 06.01.2009 itself with the request for hearing under Section 14 and 15 of the Act. But unfortunately, the said request was denied by the Assistant Controller of Patents stating that the said request was not made before 07.01.2009 and such finding is factually wrong as the said request was made by the appellant even on 06.01.2009 iteslf. The perusal of 06.01.2009 letter reveals that finally the appellant/applicant made a request hereunder. œIn case the Examiner is not convinced of the allowability of the present claims, oral hearing is requested before the final disposal of this application.?
Therefore it is very clear that the above said request for oral hearing was made as contemplated under Section 14 of the Act. It is relevant to refer Section 14 of the Act which reads hereunder. Section 14 œConsideration of report of examiner by Controller. “
Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.? The reading of the above said provision makes it crystal clear that the above said provision contemplates of an opportunity of hearing and as such the said provision is mandatory but unfortunately in the instant case such a mandatory requirement of affording opportunity to be heard was denied to the appellant.
10. We are also constrained to point out that the learned Assistant Controller is well aware about the affording opportunity to the appellant/applicant as well as to the opponent as it is observed by the learned Assistant Controller in para 3.3 as hereunder :-
œThe controller is also duty bound to afford an opportunity of hearing in the interest of justice to the representor and the applicant if desired by the parties according to the rule 55 avoiding which there is a chance of gross miscarriage of justice and damage to the public interest. The applicant also has to be given equal opportunities to rebut the arguments contained in the representation.? Inspite of making the above said observations, the learned Assistant Controller has not given opportunity of hearing to the appellant as per the mandatory provision under section 14 of the Act.
11. At this juncture, it is also relevant to state that an order passed under Section 14 and 15 of the Act is an appealable order and the appellant has been deprived of their right to appeal against an adverse order if passed under Section 14 and 15 of the Act.
It is also worthwhile to refer the decision of HonŸble Delhi Court reported in 2008 (37) PTC 448 (Del.) “ Ferid Allani Vs. UOI and Ors. œRule 129 of the Patents Rules, 2003 was inserted by the Patents (Amendment) Act, 2002 dated 25th June, 2002 with effect from the 20th of May, 2003 which provides thus :-
œ129. Exercise of discretionary power by the controller “ Before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to proceeding adversely, the controller shall give such applicant or party, a hearing, after given him or them, ten days notice of such hearing ordinarily.? This statutory rule casts a duty on the controller to give a hearing to an applicant, before exercising any discretionary power, which was likely to affect an applicant for a patent adversely. The petitioner has been deprived of these opportunities as well before taking the adverse action against the petitioner.? The principle laid down by the HonŸble Delhi High Court in the decision cited supra is squarely applicable to the facts of the instant case, in view of the reasons assigned earlier.
12. In view of the above said factors we have no hesitation to hold that the learned Assistant Controller has passed the impugned order in flagrant violation of the Principle of Natural Justice.
13. The yet another contention of the learned counsel for the appellant is that the learned Assistant Controller has suo-moto taken an additional ground of opposition namely on the ground of œinsufficiency? and rendered finding in favour of the 4th respondent and such finding is erroneous in view of the absence of plea raised by the 4th respondent. It is pertinent to note that the learned Assistant Controller has formulated an additional ground of opposition on œinsufficiency? under section 25(1)(g) of the Act and also rendered a finding in para 5.17 in the impugned order on the said ground. It is to be stated that the 4th respondent has not at all raised or pleaded the ground of opposition on œinsufficiency? and as such any finding on the said ground in the absence of pleading is unsustainable in law.
The HonŸble Apex Court in 2011 (1) UJ SC 0453 - Kalyan Singh Chouhan Vs. C.P. Joshi. held that œThis Court in Bachhaj Nahar vs. Nilima Mandal and Ors. AIR 2009 SC 1103, held as under :
The object and purpose of pleadings and issues is to ensure that the litigants come to trial with all issues clearly defined and to prevent cases being expanded or grounds being shifted during trial. Its object is also to ensure that each side is fully alive to the questions that are likely to be raised or considered so that they may have an opportunity of placing the relevant evidence appropriate to the issues before the Court for its consideration. The object of issues is to identify from the pleadings the questions or points required to be decided by the Courts so as to enable parties to let in evidence thereon. When the facts necessary to make out a particular claim, or to seek a particular relief, are not found in the plaint, the Court cannot focus the attention of the parties, or its own attention on that claim or relief, by framing an appropriate issue¦.. Thus, it is said that no amount of evidence, on a plea that is not put forward in the pleadings, can be looked into to grant any relief.?
This Bench in an unreported case in IPAB Order No.96 of 2013 in TRA/3/2007/PT/DEL -- LML Limited vs. Bajaj Auto Limited held here under:-
œIn absence of any evidence of the applicant to the contrary we are inclined to disagree with the argument of the applicant in respect of insufficiency. This ground therefore also fails.?
14. The principles laid down by the HonŸble Apex Court and this Bench in the decisions cited supra are squarely applicable to the instant case as in this case also the Assistant Controller of Patents has formulated an additional ground on œinsufficiency? and rendered a finding in the absence of any specific plea taken by the 4th respondent.
15. For the forgoing reasons we are constrained to set aside the impugned order No.2899/DELNP/2005 dated 28/4/2009. Consequently we remand the matter to the learned Assistant Controller of Patent for fresh consideration by affording opportunity to both sides. As it is pointed out by the learned counsel for the 4th respondent that the affidavit of evidence filed by the appellant through Dr. Anindhya Sircar, the 4th respondent was not served with any copy of the affidavit of evidence as such learned Assistant Controller of Patent is directed to serve copy of the same to the 4th respondent and he will be given opportunity to reply the same. It is made clear that the learned Assistant Controller of Patent shall complete the hearing and dispose of the matter within a period of three months from the date of receipt of the record and order of this Bench. It is also made clear that the order passed by the Bench is without prejudice of the contention of both parties on merit. Accordingly the Miscellaneous Petition No.57/2010 is disposed of.