UPL Limited\u2019s (\u201cUPL\u201d) patent application No. 201831011137 related to a herbicidal composition comprising herbicides selected from three classes, Triazolone herbicides, Photosystem II inhibitors, and either ALS inhibitors (Imidazolinone class) or bleacher herbicides. UPL claimed that the specific combinations produced unexpected synergistic weed control, though the individual components were ineffective when used alone.<\/p>\n
A First Examination Report was issued on 24 January 2020, to which UPL responded by amending claim 1 to overcome the novelty objection. On 30 September 2020, Haryana Pesticides Manufactures Association (\u201cpre-grant opponent\u201d) filed a pre-grant opposition under Section 25(1). A hearing was held on 7 April 2022, following which the Controller passed a composite order rejecting the application under Sections 25(1)(b), 25(1)(e), and 25(1)(f) along with Section 3(e) of the Act.<\/p>\n
UPL contended that the Controller failed to grant a mandatory hearing under Sections 14 and 15 of the Patents Act despite a specific request in its FER response. It argued that examination proceedings under Sections 14 or 15 and pre-grant opposition proceedings under Section 25(1) are distinct under the statutory scheme, and that disposing of both through a single composite order without separate hearings vitiated the proceedings.<\/p>\n
UPL further submitted that the Controller failed to independently analyse the prior art relied upon by the pre-grant opponent and incorrectly concluded lack of inventive step without considering the experimental data demonstrating synergy. It pointed out that additional documents (D3\u2013D5) were introduced at the pre-grant stage, depriving UPL of an adequate opportunity to respond. It argued that the impugned order merely reproduced the opponent\u2019s submissions without independent reasoning, reflecting non-application of mind and absence of a reasoned decision.<\/p>\n
The Controller defended the order as compliant with the Act and Rules, arguing that consolidation of proceedings where opposition follows the FER is permissible and that Rule 55(5) contemplates simultaneous disposal. It was submitted that all prior arts and data were duly considered and that no separate hearing under Section 14 was required.<\/p>\n
The pre-grant opponent supported the rejection, contending that UPL sought to claim a wide array of herbicidal permutations without sufficient experimental proof. It maintained that the claimed invention lacked novelty and inventive step, and that the claimed compositions were merely admixtures of known active ingredients resulting in an obvious aggregation without any demonstrated synergistic effect.<\/p>\n
Whether examination proceedings under Sections 14 and 15 and pre-grant opposition proceedings under Section 25(1) can be consolidated and decided through a single composite order without affording separate hearings.<\/p>\n
The Court undertook a detailed analysis of Sections 14, 15, and 25(1) of the Act and Rule 55(5), holding that examination proceedings and pre-grant opposition proceedings are distinct and independent stages under the statutory framework. While Rule 55(5) permits simultaneous disposal, it does not authorise a merger of proceedings or dilution of the applicant\u2019s right to a separate hearing at the examination stage. The Court clarified that a pre-grant opponent is confined to the opposition stage and has no right to participate in the examination process.<\/p>\n
The Court noted that the objections in the FER differed from those raised in the pre-grant representation and that additional prior art documents (D3\u2013D5) were introduced at the opposition stage. It held that the failure to grant a Section 14 hearing, despite an express request, amounted to a serious procedural infirmity that defeated the scheme of the Act and violated principles of natural justice. The Court also observed that if a composite order is passed, it must clearly demarcate findings under Sections 15 and 25(1), which the impugned order failed to do.<\/p>\n
The Court further found that the impugned order reflected a mechanical adoption of the pre-grant opponent\u2019s submissions without independent reasoning or engagement with the applicant\u2019s data and arguments. Citing S.N. Mukherjee v. Union of India<\/a>, the Court added that recording of reasons is an essential facet of natural justice in quasi-judicial decision-making unless expressly excluded.<\/p>\n