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03 十一月 2020

Patents – Order must be passed by same officer who heard the matter

Setting aside the Order passed by another Deputy Controller of Patents, Designs and Trademarks who never heard the matter, the Intellectual Property Appellate Board (‘IPAB’) has held that the Order should be passed by the same officer who had initially heard the matter.

Founding the impugned Order illegal, the IPAB noted that the impugned order was in violation of the principles of natural justice, particularly, the principle of audi alteram partem (hear the other side). It held that in the event that the initial officer was unable to pass the order, the matter should have been released by a speaking order, and thereafter been re-allotted to different officer who would have conducted a fresh hearing de novo.

In Optimer Pharmaceuticals Inc. v. The Controller General of Patents, Designs and Trademarks & Anr.,[1] Merck Sharp & Dohme Corporation, formerly known as Optimer Pharmaceuticals Inc. (‘Appellant’) had filed for a patent for its invention titled, ‘18-MEMBERED MACROCYCLES AND ANALOGS THEREOF,' on 31 January 2005.

The Assistant Controller of Patents, Designs, and Trademarks scheduled a hearing for the application on 26 July 2013 and pursuant to the oral hearing, the Appellant filed its written submissions on August 6, 2013.

After a lapse of more than one year, vide an order dated 21 October 2014, another Deputy Controller of Patents, Designs, and Trademarks issued a refusal order, whereby the patent application was rejected on grounds of lack of inventive step and for falling within the scope of Sections 3(d) and 3(e) of the Patents Act, 1970.

The Appellant submitted that the Respondent was neither present at the time of the hearing on July 26, 2013, nor did he on any occasion seek any clarification from the Appellant or its agents before the issuance of the impugned order.

Since the prescribed procedure was not followed in the instant case, the IPAB concluded that the impugned order was contrary to law and ordered the same to be set-aside. The IPAB further directed the Patent Office to conduct a fresh hearing by a controller besides the two involved in this case and the same was to be heard and disposed of within 3 (three) months as the patent application was filed in 2005.

 

[1] OA/45/2015/PT/KOL, decided on Aug. 25, 2020.

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