In UPL v Haryana Pesticides Manufacturers Association & Anr, the Calcutta High Court set aside a refusal order passed in pre-grant opposition proceedings and remanded the matter to a different Controller for fresh consideration (IPDPTA 116 of 2023). The ruling clarifies that pre-grant opposition and examination hearing proceedings under Section 25(1) and Section 14 of the Patents Act 1970 are distinct statutory stages and cannot be conflated where objections diverge.

Case background

UPL’s patent application (201831011137) concerned a synergistic herbicidal composition comprising three active constituents: a triazolone herbicide, a photosystem II inhibitor herbicide and an ALS inhibitor herbicide. The invention claimed unexpected synergistic efficacy in weed control beyond the performance of individual components.

The application was published on 27 September 2019. A first examination report (FER) was issued on 24 January 2020, citing prior art and including references from the international search report. In its response to the FER, UPL amended its claims to overcome the cited prior art.

On 30 September 2020, the Haryana Pesticides Manufacturers Association filed a pre-grant representation under Section 25(1), alleging lack of novelty, lack of inventive step and non-patentability. A hearing was conducted on 7 April 2022, and on 27 April 2023, the Controller refused the application without granting UPL a separate hearing under Section 14.

Issues on appeal

UPL challenged the refusal on procedural grounds, claiming:

  • it was denied an opportunity to be heard under Section 14 after conclusion of the pre-grant opposition;
  • a lack of opportunity to contest prior art documents D3 to D5, which were introduced during opposition proceedings but not cited in the FER;
  • failure to supply certain cited documents despite a request; and
  • lack of a reasoned order, with the IPO substantially reproducing the opponent’s submissions and resorting to statements such as the “office is of the same opinion as the opponent's views”, thereby compromising UPL’s right to a meaningful hearing.

The Controller defended consolidation of proceedings as permissible where an opposition is filed after issuance of the FER and stressed that his decision was reached after careful review of all prior art and data, which was deemed sufficient, thereby justifying the lack of separate hearings. The opponent supported the refusal, contending that the claims covered 304 permutations allegedly supported only by broad assertions.

Court’s analysis

The judge examined Sections 14, 15, 25(1) and Rule 55(5) and held that pre-grant opposition and examination are distinct stages. Further, a divergence between the FER objections and those raised in the pre-grant opposition, particularly the introduction of new prior art documents, warranted separate hearings in order to independently address each aspect. Conflating the outcome of both proceedings into one composite order violated the statutory framework - though it was acknowledged that composite orders may be pragmatic in certain straightforward cases - and deprived UPL of fair rebuttal opportunities.

Relying on Gilead Pharmasset v Union of India, the court reiterated that ambiguous or shifting objections prejudice applicants. Referring to Novartis v Natco Pharma, it clarified that a pre-grant opponent’s role is limited to assisting the Controller; the examination function must remain independent. On the requirement of reasoned orders, the court invoked SN Mukherjee v Union of India, reaffirming that reasons are the “soul” of judicial and quasi-judicial determinations. The impugned order’s cursory adoption of the opponent’s submissions without engagement with UPL’s data or arguments rendered it unsustainable.

The court also rejected the opponent’s attempt to revive a previously waived FER objection under Section 10(4)(a) on sufficiency of description, holding that the opponent lacked locus to pursue such grounds at the appellate stage.

The refusal order was set aside and the matter remanded to a different Controller for fresh adjudication within 12 weeks, with all substantive issues left open.

Key takeaways

For applicants, the judgment affirms the right to insist upon a Section 14 hearing following pre-grant opposition where warranted. For opponents, it delineates limits: they may assist but cannot intrude on the examination process. The decision strengthens procedural discipline within India’s patent framework and clarifies that adversarial participation cannot override statutory examination.

Shukadev Khuraijam, Govind Chate

Remfry & Sagar