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The Object Of Rule 28 Is To Bring About A Closure Of The Matter And Not To Reopen The Debate Around The Patent Application

Gautam Badlani ,
  04 November 2022       Share Bookmark

Court :
High Court of Delhi
Brief :

Citation :
A. 17130/2022, 17131/2022

Date of judgement:
19thOctober, 2022

Bench:
Honourable Justice Prathiba M. Singh

Parties:
Petitioner – FMC Corporation
Respondent – Controller of Patents

SUBJECT

In the present case, the Delhi High Court noted that the object of Rule 28 of the Patent Rules is to bring about a closure to the patent application and not to reopen the debate concerning the application.

FACTS

  • In the present case, the appellant had filed a patent application before the Assistant Controller of Patents and Designs.
  • A total of 13 claims had been filed in the original application. The First Examination Report recorded objections relating to lack of clarity, definiteness and inventive steps. It also related to the non-patentability under Section 3 of the Patents Act.
  • The report also raised objections in regards to the efficacy of the claimed compositions and all the objections were explained in detail in the report.
  • In his reply, the applicant amended the claims and limited them to 5.
  • Subsequently, the concerned authority had fixed a date for hearing. After a request of adjournment was made by the applicant, the hearing was rescheduled and a subsequent date was fixed for the hearing and in the hearing, the objections raised in the report very reiterated.
  • Another date of hearing was fixed on 23rd March. However, the applicant failed to file the written statement within the permitted time and subsequently the application was derailed.
  • The applicant successfully sought an extension of time under Rule 138 of the Patent Rules, 2003. Thereafter, the applicant sought another extension but his request was denied.
  • The patent office passed an order rejecting the application of the applicant. The applicant preferred a review under Section 77 of the Act. However, the review was not considered and the applicant approached the Delhi High Court.

ARGUMENTS BY THE PARTIES

  • The respondents contended that despite giving sufficient time to the applicant, the requisite date of efficacy was not produced by him.
  • The applicant had requested for an extension of 3 months but in the opinion of the Assistant Controller such an extension would have been contrary to the spirit of the Patent Act.

RELEVANT PROVISIONS

Rule 28(7) of the Patent Rules, 2003: Procedure in case of anticipation by prior publication

JUDGMENT

  • The court noted that the instant case was a reflection of how the applicants were themselves involved in the delaying of the patent applications.
  • The data to prove the efficacy of the claim should have been submitted by the applicant in reply to the First Examination Report itself.
  • Even though the hearing was conducted almost a year after the issuance of the Report, the applicant failed to file the efficacy data.
  • The Court pointed out that as per Rule 28 of the Patent Rules 2003, written submissions and relevant documents have to be filed within 15 days of the hearing.
  • The Court concluded that there was sufficient time for the applicant to furnish the data relating to the efficacy of the claims.
  • The Court also referred to the case of Hawar Technologies Limited v. The Assistant Controller of Patents, and pointed out that the Controller of Patents has to deal with technical matters involving scientific and legal principles and a hearing of around 1 hour may not be sufficient for his evaluation. In order to ensure fairness in procedure, the Patent Act and Rules also provide for the filing of a written statement.
  • The court noted that the written submissions and the documents filed by virtue of Rule 28 are a sort of primer of the discussions and submissions made during the hearing. The object of Rule 28 is to bring about a closure of the matter and not to reopen the debate around the patent application.

CONCLUSION

The Court noted that in the instant case repeated adjournments were sought by the applicant and the written submissions were not filed by him in the prescribed time period.

Regardless, the Assistant Controller should have considered the objections raised in the First Examination Report and the reply file subsequently. The Controller should have also considered submissions that were made orally. In the instant case, the reasoning given by the Controller had been limited to one paragraph and such reasoning would not constitute a reasoned order in light of the detailed reply filed by the applicant. While the applicant was to be blamed for the delay in filing the written statements, it cannot be ignored that the patent rights are valuable and their rejection has serious consequences. Thus, the Court thought it fit to remand the matter back to the Controller for fresh consideration.

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