Case Title: FMC Corporation V. The Controller of Patents
According to the Delhi High Court, it is not possible to reopen the whole discussion in a patent application by the use of written submissions and the filing of pertinent documents in accordance with Rule 28(7) of the Patent Rules, 2003.
The goal of Rule 28(7), according to Justice Pratibha M. Singh, 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 changes.
"The written submissions and filing of relevant documents under Rule 28(7) of the Rules cannot be used as a tool to reopen the entire debate. It is meant as a sort of primer of the submissions made and discussions agreed upon during the course of the hearing. The purpose of Rule 28(7) is to bring the matter to closure rather than to reopen the consideration of the patent application," the court said.
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 before the hearing date. In her ruling on 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," Justice Singh stated the remarks.
The total number of claims in the patent application, 13, included 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 steps, 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 an amended set of claims, restricting the number of claims to five, which was also filed. 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 to 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 her 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 denying the application. The appellant subsequently filed a petition for review. Additionally, it submitted a request to have its name changed in favour of the patent application being assigned - the same was allowed.
After that, on August 8, the appellant submitted documents in favour of the review along with an altered list of claims that contained just one claim. FMC Corporation petitioned the High Court to challenge the ruling rejecting the patent application and to request consideration of the review application since the review was not taken into consideration and the patent application was denied.
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 effectiveness.
"The Applicant, however, chose to amend the claims. Despite the hearing being held almost one year post the issuance of the FER, efficacy data appears to have not been submitted. In the opinion of the Court, there was sufficient time for furnishing of efficacy or synergistic data by the Applicant," the court said.
The court further noted that the appellant requested several adjournments, no written arguments 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 an 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 noted that the appellant was largely to fault for the delay in considering its patent application but added that because patent rights are precious and application rejection might have major repercussions, it is of the opinion that this is a suitable matter for appeal.
"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.
It added, "it must be clarified that this indulgence is being given to the Applicant in view of the fact that the impugned order is unreasoned, however, the same shall be subject to payment of costs of Rs.1,00,000/- to the office of the CGPDTM within four weeks. The order shall be passed within two months".