An IPAB order drove home a simple, much-reiterated and often neglected point of law: the right to be heard. The case is unremarkable in every respect except how avoidable it was.
The facts
Abraxis BioScience LLC filed a patent application in 2005 for a “composition and method for delivery of pharmacological agents”. The Patent Office issued a First Examination Report with a deadline to respond on or before 7 January 2009. Abraxis filed its response on 6 January 2009 — a day early.
Simultaneously, the application faced a pre-grant opposition from Natco Pharma. The opposition was decided on 28 April 2009 against Abraxis, which appealed to the IPAB.
The three grounds
Abraxis argued that:
- it had been denied the opportunity of being heard on its response of 6 January 2009;
- because no order was passed on that response, it was denied the opportunity to appeal in that regard; and
- in deciding the opposition, the Assistant Controller supplemented an additional ground of insufficiency under Section 25(1)(g), suo motu.
The factual error
On the first ground, the position is almost absurd. The deadline was 7 January 2009. Abraxis requested a hearing when filing its response on 6 January — within time.
The Assistant Controller denied the hearing, recording in his order that the request was not filed before 7 January 2009.
That is surprising, because the Indian Patent Office provides an acknowledgement of receipt on request, bearing the Office’s seal, the date of receipt and the receiving officer’s signature. And documents uploaded online carry the date of receipt in any event. Factual errors of this kind are readily disproved from the record — which is precisely what happened.
The ground nobody pleaded
On the third ground, Natco had not raised insufficiency of disclosure or of the method of working the invention. The Assistant Controller added it himself while rejecting the application.
That is a separate and more serious problem. A party cannot answer an objection that was never put to it, and an applicant refused on a ground introduced in the decision itself has had no opportunity to meet it.
The IPAB’s decision
Accepting Abraxis’s arguments on both factual and legal grounds, the IPAB set aside the Assistant Controller’s order.
Its reasoning on the hearing point covered two independent routes. Under Section 14 of the Patents Act, an applicant is entitled to a hearing if requested within the time for responding to the FER. Separately, Rule 129 of the Patents Rules requires the Controller — including anyone deciding on his behalf under delegated powers — to afford a hearing before exercising discretionary powers against an applicant.
So the Assistant Controller had denied a hearing under Section 14 due to a factual error, and had also failed to appoint one under Rule 129, which applied regardless. The IPAB described the denial as a “flagrant violation of natural justice”.
On the second ground, it agreed that the absence of an order on the FER response deprived Abraxis of its right of appeal. On the third, it cited precedent holding that a finding on an issue not pleaded by the parties is unsustainable.
Why it recurs
This is a run-of-the-mill case, and it is remarkable how often the same things happen. The pattern — hearings denied on incorrect facts, orders that engage with objections never raised, decisions unaccompanied by reasons — has appeared repeatedly in Indian patent appeals, including in more recent High Court judgments setting aside refusals as non-speaking.
Two practical points follow for applicants. Always obtain and retain the acknowledgement of receipt, because it defeats a factual error of the kind made here in a single document. And where a decision rests on a ground never put to you, that is itself the appealable defect — you do not need to win the substantive argument to have the order set aside.
A note on forum: the IPAB was abolished in 2021, and appeals from Controller’s orders now lie to the High Courts, which have continued this line of reasoning.
The takeaways
- Section 14 gives a right to a hearing if requested within the FER response period.
- Rule 129 requires a hearing before discretionary powers are exercised against an applicant.
- A ground not pleaded cannot sustain a refusal.
- Keep the acknowledgement of receipt — it disposes of date disputes.
Frequently asked questions
Am I entitled to a hearing before my patent application is refused? Yes — under Section 14 if requested within the FER response period, and under Rule 129 before the Controller exercises discretionary powers against you.
Can the Controller refuse a patent on a ground the opponent never raised? No — the IPAB held that a finding on an issue not pleaded by the parties is unsustainable.
What if the Office records the wrong date for my filing? The acknowledgement of receipt, bearing the Office’s seal and date, together with the online record, will establish the correct position.
Where do appeals from Controller’s orders go now? To the High Courts — the IPAB was abolished in 2021.