Scope Of Discretionary Powers Of The Controller Under Section 80, Patents Act

“Audi alteram partem”

It is a famous Latin phrase and literally translates as “listen to the other side”. Other than being a famous Latin phrase, the same is also one of the two fundamental principles of natural justice. The aim of natural justice is to ensure fairness and remove arbitrariness. This doctrine dates back hundreds of years and our Supreme Court, through various decisions, has recognized it as a part of the fundamental rights falling under Article 14 of the Indian Constitution[1].

For the scope of this article we will focus on the well settled interpretation that any affected party must be given a chance to be heard before an adverse order is passed against it[2].  Thus, any order passed by a judicial or a quasi-judicial body without giving such an opportunity will be rendered as null and void i.e. invalid, on account of being unreasonable and arbitrary.

The Controller of Patents in India is regarded as the custodian of patent rights and is entrusted with the responsibility of granting or refusing a grant of patent. There are certain general powers that have been entrusted upon him by virtue of Chapter 15 of the Patents Act, 1970 (hereinafter referred to as the Act). Other than these, various discretionary powers have also been granted to the Controller. For the scope of this article we will stick to these powers given under Section 80 of the Act as well as Rule 129 and Rule 129A of the Patent Rules, 2003 (hereinafter referred to as the Rules).

Section 80 of the Act talks about the exercise of discretionary powers by the Controller and says that the Controller shall give an opportunity to the applicant of a patent to be heard before they pass any adverse order against the applicant. However, the applicant has to make a request for such a hearing at least 10 days in advance of the expiry of the time-limit that has been specified in respect of the proceeding. Section 14 of the Act states that if after the First Examination Report, the report of the examiner is adverse to the applicant or requires him to make certain amendments or modifications, then the Controller must not only communicate such objections to the applicant but also give an opportunity to the applicant to be heard if required by the applicant.

A combined reading of the two sections mentioned above along with Section 21 of the Act and Rules 24B and 24C of the Rules which state the required time given for examination as well as for putting together an application in order for a grant, means that if an adverse order is going to be passed against the applicant, then the applicant must before 10 days of expiry of the requisite time period, which in this case would be 9 months (extendable by 3 months more if Form 4 had been filed) from the receipt of first statement of objection by the Controller request the Controller to conduct a hearing.

Further, Rule 129 and 129A of the Rules state that when a Controller is going to exercise their discretionary powers given under the Act or the Rules in such a way that it is likely to affect the applicant adversely then the Controller must give a hearing to such an applicant after giving him a 10 days’ notice period of the same.  If the Applicant feels that he may not be able to defend himself on such short notice, he may request for an adjournment of the hearing by making a request of the same with reasonable cause along with the prescribed fees at least 3 days before the date of hearing. The controller then, if he thinks fit may adjourn the hearing. However not more than 2 adjournments can be requested, each of which must not bemore than 30 days apart.

The scope of the section was understood in the case of Lek Pharmaceuticals D.D. v. Assistant Controller of Patents and Design[3].

The facts of the case are that an application was filed by the applicant(appellant in this case) and requested for an examination. Against the same, the respondent(Controller in this case) issued the First Examination Report (FER) under which questions were raised upon the novelty and inventive step of the invention. Furthermore, the respondent claimed that the same had many references of prior art and any skilled person in this field would have arrived at this subject matter. Stating all these reasons, the respondent rejected the grant of the patent. Amended documents were then submitted by the applicant keeping in mind these technical observations.

Section 80 was applied after the submission of the documents and an observation was made that a request has to be made by the applicant 10 days before the expiry of the time limit in respect of the proceedings. It was also noted that the applicant made a delay in submitting the amended documents and wasn’t able to give an advance notice of ten days to the respondent to seek an opportunity for a hearing. Another thing which the court pointed out was that given the circumstances of a case, the Controller can even reduce the time for the filing of a hearing request. But the court also pointed out that if the person is not granted an opportunity of hearing the applicant under Section 80, the same leads to a violation of natural justice which is unacceptable. In the present case, it is noted that the respondent categorically refused to grant an opportunity to the applicant under Section 80 of the Act and refused the grant of patent. Thus, the court held in the case that the order refusing the patent grant was arbitrary in nature, as it defeated the natural principles of justice, and was then set aside.

CONCLUSION

To conclude we can say that the Section 80 of the Patents Act is essential to ensure that before any adverse order is passed against the applicant, he is given an opportunity of being heard. The timelines, however, must be strictly adhered to and the applicant cannot merely sit on his rights. Equal importance is given to natural justice and procedural law.

Author: Ram Sharma – 3rd Year BA LLB, and Ascharya Dagur – 2nd Year, Symbiosis Law School, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1]Union of India v. Tulsiram Patel (AIR 1985 Sc 1416)

[2]Nava Bharat Ferro Alloys Ltd. v. A.P. Electricity Regulatory Commission, 2007 APTEL 622

[3] 2009 SCC Online IPAB 41

[4]  Patents Act, 1970

[5]  Patent Rules, 2003

[6]  Manual of Patent Office Practice and Procedures

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