Case Title: FMC CORPORATION v. THE CONTROLLER OF PATENTS
The goal of Rule 28(7) of Patents Rules 2003, according to Justice Pratibha M. Singh of the Delhi High Court, is to record the arguments raised during the hearing and to carry out any instructions the Controller may have given on the filing of forms and amendments.
In accordance with Rule 28(7) of the Patent Rules, written responses and any pertinent documents must be filed in all hearing cases within 15 days of the hearing date.
Justice Singh gave this verdict in an appeal brought by FMC Corporation against an order given by the Assistant Controller of Patents & Designs on May 10, 2022 about its patent application titled "HERBICIDAL MIXTURES".
The total number of claims in the patent application were 13 that covered a wide range of formulations. The First Examination Report (FER) published by the Patent Office in March 2021 prompted concerns about the First Examination Report's (FER) lack of clarity and definitiveness, lack of innovative step, and ineligibility for patentability under the Patents Act. Additionally, it highlighted concerns about the asserted compositions' lack of proven superiority to the earlier art.
In September 2021, the applicant submitted a response to the FER along with a modified list of claims that limited the total number of claims to five.
The Patent Office published a hearing notice, setting the hearing for March 11, 2022, for which the appellant requested an adjournment. The hearing was then delayed for March 23. However, the hearing that day was "totally derailed" since written comments were not made within the allotted time.
The appellant then requested an extension of time under Rule 138 to file written submissions in accordance with Rule 28(7) of the Rules, and such request was granted. On May 3, a further extension was requested to eliminate inconsistencies in the submission of written arguments. But the same was rejected.
On May 10, the Patent Office issued a decision rejecting the application. The appellant subsequently filed a petition for review. It also submitted a request to modify the name to which the patent application was issued, and the request was approved.
After that, on August 8, the appellant submitted documents in favour of review along with an altered list of claims that contained just one claim. FMC Corporation filed a petition in the High Court to challenge the ruling of rejecting the patent application and to request consideration of the review application because the review was not taken into consideration and the patent application was rejected.
Justice Singh stated that all the pertinent objections were made by the Patent Office back in March 2021 in the FER itself, noting that the case is obviously reflective of how patent applications are being delayed by applicants themselves. It further mentioned that the appellant has to respond to the FER itself with information pertaining to efficacy.
“But the applicant decided to change the claims. Efficacy data don't seem to have been submitted, despite the hearing taking place about a year after the FER was issued. According to the Court, the Applicant had ample opportunity to provide information on efficacy or synergy,” Justice Singh stated.
The court further noted that the appellant requested numerous adjournments, no written submissions were submitted within the allotted time, and that when the patent application itself was denied, a review application and modified claim were submitted.
It also made the observation that, even if the appellant wanted to limit the claims during the hearing, the action and the paperwork needed to file the modified claims should typically be completed within the legal deadline.
"The same cannot be extended indefinitely leading to further delays in finality being arrived at in respect of the patent applications, thereby resulting in pendency in the Patent Office. Be that as it may, if the Applicant failed to file the written submissions in time and the request for extension was rejected by the ld. Asst. Controller, there was also a duty on the ld. Asst. Controller to consider the objections in the FER and the Reply, as also the submissions made orally during the course of hearing and pass a reasoned order," the court said.
The court acknowledged that the appellant was largely to blame for the delay in considering its patent application but added that because patent rights are valuable and application rejection can have serious repercussions, this case is appropriate for remanding the matter back to the Controller for further review.
"The Controller shall now take into consideration the pleas of the Applicant made in the written submissions dated 8th August, 2022 as also in the review application. The application shall now be examined and a decision shall be passed on merits on the basis of the amended one claim which has been now filed by the Applicant along with the written submissions. No fresh hearing shall be given in the application," the court directed.