Calcutta High Court Sets Aside Rejection Of UPL's Herbicide Patent For Denying Mandatory Hearing

The Calcutta High Court has recently set aside an order of the Controller of Patents rejecting UPL Limited's patent application for a herbicidal combination, holding that the authority committed a “serious procedural infirmity” by denying the company a mandatory hearing under Section 14 of the Patents Act and improperly issuing a composite order in examination and pre-grant opposition proceedings.

Allowing the appeal, Justice Ravi Krishan Kapur ruled that examination proceedings under Sections 14–15 and pre-grant opposition under Section 25(1) are “distinct, separate and independent stages” that must be carried out separately.

UPL had filed its patent application titled “Herbicidal Combinations” on 26 March 2018. After issuance of the First Examination Report (FER), the company filed its response and expressly sought a hearing under Section 14. Meanwhile, Haryana Pesticides Manufactures Association filed a pre-grant opposition under Section 25(1).

On 27 April 2023, the Controller passed a single composite order upholding the opposition and rejecting the patent application. The officer was of the opinion that the invention lacked novelty and that the invention was a “mere admixture” under Section 3(e) of the Act.

The High Court held that this approach violated the statutory scheme. It noted that once objections were raised in the FER and a hearing was sought, the Controller was obliged to grant a separate hearing under Section 14 before disposing of the application. Instead, a combined order was passed covering both the examination stage and the opposition stage.

The Court further observed that additional prior art documents (D3 to D5) were introduced during the opposition stage and were not part of the FER. In the absence of a separate hearing under Section 14, the applicant was left “at a loss to rebut the objection raised.”

Justice Kapur also criticised the reasoning in the impugned order, observing that the Controller had mechanically reproduced the opponent's submissions and merely concluded that the “office is of the same opinion as the opponent's views,” without independent analysis. Emphasising that “reasons are the soul of all judicial and quasi-judicial orders,” the Court held that the authority was under a statutory duty to independently evaluate the material on record.

Holding that the procedural impropriety went to the root of the matter and vitiated the rejection order, the Court declined to examine the merits of the invention and remanded the matter to a different Controller for fresh consideration within twelve weeks.