An order in January this year by the Intellectual Property Appellate Board (“IPAB”) drives home a simple, much re-iterated and often neglected point of law: the right to be heard.

Facts of the case

Abraxis BioScience LLC (“Abraxis”) had filed a patent application in 2005 for “composition and method for delivery of pharmacological agents”. This patent application received an objection (First Examination Report or in short, FER) from the Patent Office with the deadline to respond on or before January 7, 2009. A response to the objections was filed on January 06, 2009.

Simultaneously, it received a pre-grant opposition from a pharmaceutical company, Natco Pharma (“Natco”). The opposition was decided on April 28, 2009 and against Abraxis. An appeal against this decision was filed with the IPAB.


Abraxis argued on three grounds:

  1. that they had been denied the opportunity of being heard in respect of their response dated January 06, 2009 to the FER;
  2. that since no order was passed in respect of the response to FER, they were denied the opportunity to appeal in that regard; and
  3. that while deciding the opposition, the Assistant Controller of Patents and Designs (“Assistant Controller”, the deciding authority for the opposition) supplemented an additional ground of insufficiency under Section25(1)(g), suo moto.

As regards the first ground for argument, the deadline to respond to the FER was January 7, 2009. Abraxis had requested a hearing while filing its response on January 6, 2009. The Assistant Controller denied the hearing, stating in his order that the request for hearing was not filed before January 7, 2009. This is rather surprising considering the fact the Indian Patent Office provides us with an acknowledgement of receipt when asked for it. This acknowledgment consists of the seal of the Indian Patent Office along with the date of receipt and the signature of the officer receiving the documents. In any case, the documents uploaded online would have the date of receipt of the documents so factual errors like this can be argued using such documents.

As regards the third ground, Natco had not raised the argument of insufficiency of disclosure or method of working of the invention. The Assistant Controller supplemented this as an additional ground while rejecting the patent application.

IPAB’s reasoning and decision

Accepting Abraxis’s arguments on factual and legal basis, the IPAB set aside the Assistant Controller’s order.

Legally under Section14 of the Patents Act (“the Act”), a patent applicant is afforded hearing if he requests so within the time period for responding to the FER. The IPAB in its order also pointed to Rule 129 of the Patent Rules which mandates that the Controller (including any person deciding on his behalf through delegation of powers) afford a hearing to the patent applicant before exercising his discretionary powers against said patent applicant. In this case, the Assistant Controller did not allow a hearing under Section 14 due to a factual error. However, he also did not appoint a hearing under Rule 129. The IPAB called this denial of a hearing a “flagrant violation of natural justice”.

As regards the second ground argument, the IPAB agreed with Abraxis that lack of an order against their response to the FER deprived them of their right of appeal. Finally, in respect of the third ground, the IPAB cited judicial precedents to state that a finding in respect of an issue that was not pleaded by the parties was unsustainable.

While this is a regular run-of-the-mill type of case, it is rather amazing how some things just happen over and over again ad nauseam.