Calcutta High Court Quashes Rejection Of UPL’s Herbicide Patent; Holds Denial Of Mandatory Section 14 Hearing Vitiates Controller’s Order

Calcutta High Court Quashes Rejection Of UPL’s Herbicide Patent; Holds Denial Of Mandatory Section 14 Hearing Vitiates Controller’s Order

Introduction

The Calcutta High Court has set aside an order of the Controller of Patents rejecting UPL Limited’s patent application titled “Herbicidal Combinations,” holding that the rejection suffered from a serious procedural infirmity. The Court found that the Controller denied the applicant a mandatory hearing under Section 14 of the Patents Act, 1970, and improperly issued a composite order dealing simultaneously with examination proceedings and pre-grant opposition.

Factual Background

UPL Limited filed a patent application on 26 March 2018 for an invention titled “Herbicidal Combinations.” Following issuance of the First Examination Report (FER), the applicant filed its response and expressly sought a hearing under Section 14 of the Patents Act.

During the pendency of the examination process, the Haryana Pesticides Manufacturers Association filed a pre-grant opposition under Section 25(1) of the Act. On 27 April 2023, the Controller passed a single composite order, upholding the opposition and rejecting the patent application.

The Controller concluded that the invention lacked novelty and constituted a “mere admixture” within the meaning of Section 3(e) of the Patents Act. Aggrieved by the rejection, UPL approached the Calcutta High Court.

Procedural Background

Before the High Court, UPL contended that the Controller had failed to comply with the statutory mandate under Section 14, which requires the grant of a hearing once objections are raised in the FER and a hearing is sought. It was argued that instead of conducting a separate hearing at the examination stage, the Controller issued a combined order covering both the examination under Sections 14–15 and the pre-grant opposition under Section 25(1).

The petitioner further submitted 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 distinct hearing under Section 14, the applicant was deprived of a fair opportunity to rebut these objections.

Issues

1. Whether the Controller violated the statutory scheme by issuing a composite order covering examination and pre-grant opposition proceedings.

2. Whether denial of a separate mandatory hearing under Section 14 vitiated the rejection order.

3. Whether the reasoning in the impugned order satisfied the requirement of independent evaluation by the Controller.

Contentions of the Parties

UPL contended that examination proceedings under Sections 14–15 and pre-grant opposition under Section 25(1) are distinct and independent stages under the Patents Act. It was argued that the Controller was statutorily bound to provide a separate hearing once objections were raised in the FER and the applicant requested one.

The petitioner further submitted that the impugned order merely reproduced the opponent’s submissions and mechanically adopted them without independent analysis. Such an approach, it was argued, violated principles of natural justice and the statutory duty to provide reasoned orders.

The respondents defended the rejection, maintaining that the Controller had considered the material on record and correctly concluded that the invention lacked novelty and was hit by Section 3(e).

Reasoning And Analysis

Justice Ravi Krishan Kapur held that examination proceedings and pre-grant opposition proceedings are “distinct, separate and independent stages” under the statutory framework. The Court observed that once objections were raised in the FER and a hearing was sought, the Controller was under a statutory obligation to grant a separate hearing under Section 14 before disposing of the application.

By issuing a composite order, the Controller conflated two independent processes and denied the applicant a fair opportunity to address objections raised during examination. The introduction of additional prior art documents at the opposition stage, without a distinct Section 14 hearing, left the applicant “at a loss to rebut the objection raised.”

The Court also criticised the reasoning in the impugned order, noting that the Controller had mechanically reproduced the opponent’s contentions and merely concluded that the “office is of the same opinion as the opponent’s views,” without conducting an independent analysis. Emphasising that “reasons are the soul of all judicial and quasi-judicial orders,” the Court held that the authority had failed in its statutory duty to provide a reasoned and independent evaluation.

The procedural impropriety, the Court held, went to the root of the matter and vitiated the rejection order. In light of this finding, the Court declined to examine the merits of novelty or inventive steps.

Decision

The Calcutta High Court set aside the rejection order dated 27 April 2023. The matter was remanded to a different Controller for fresh consideration in accordance with law. The Controller was directed to complete the process, including compliance with statutory requirements and grant of hearing, within twelve weeks.

In this case the appellant was represented by Mr. Subhatosh Majumder, Mr. Paritosh Sinha, Mr. Sarosij Dasgupta, Mr. Mitul Dasgupta, Mr. K. K. Panday, Mr. Manosij Mukherjee, Mr. Teesham Das, Ms. Mallika Bothra and Ms. Sonia Nandy, Advocates.

Meanwhile the respondent was represented by Mr. Ajay Amitabh Suman, Mr. SomnathDe, Ms. Antara Dey, Ms. Rashmi Bothra, Ms. Madhu Jana, Mr. Jeet Brahma and Mr. Ujjal Rajak, Advocates.