AIC246 AG & Co. KG v. The Patent Office of India & Others

High Court of Judicature at Bombay (Commercial Division) | Decided: 27 February 2026 Commercial Miscellaneous Petition No. 72 of 2025 Bench: Hon’ble Mr. Justice Arif S. Doctor Citation: 2026:BHC-OS:5637

Background

AIC246 AG & Co. KG, the petitioner, is a company that filed Patent Application No. 201627001750 on 21 March 2016 for an invention titled “Combinations Comprising a Triazole Fungicide and a Biological Control Agent.” The application was published on 7 October 2016. A First Examination Report under Section 12 of the Patents Act, 1970 was issued by the Controller of Patents on 4 December 2020 setting out the objections of the Controller. The petitioner filed its reply to the First Examination Report on 4 June 2021.

Following the First Examination Report, the Controller issued a hearing notice to the petitioner under Section 14 of the Patents Act, scheduling a hearing on 5 January 2021. However, less than one hour before the scheduled hearing, the Controller cancelled and adjourned the hearing, expressly recording that a fresh hearing under Section 14 would be granted to the petitioner in due course. Despite this express assurance no such fresh hearing was ever convened.

Subsequent to the petitioner’s reply to the First Examination Report, the third respondent filed a pre-grant opposition under Section 25(1) of the Patents Act. On 19 April 2023 the Controller conducted a hearing in the pre-grant opposition proceedings under Section 25(1) at which both the petitioner and the opponent made oral submissions and thereafter filed written submissions before the Controller.

Thereafter, without granting the earlier-promised hearing under Section 14 and without passing any order under Section 15 of the Patents Act, the Controller passed the impugned order dated 26 June 2023 rejecting the petitioner’s patent application solely under the provisions of Section 25(1) of the Patents Act on account of the pre-grant opposition filed by the third respondent. The impugned order adjudicated upon the statutory grounds under Section 25(1)(b), (e) and (f) read with Section 3(d) of the Patents Act.

The petitioner acknowledged that the impugned order suffered from several substantive infirmities including failure to consider expert evidence, absence of adequate reasoning and failure to properly assess novelty, inventive step and the applicability of Section 3(d) of the Patents Act. However the petitioner chose to confine its challenge before the Bombay High Court to the single admitted and limited procedural ground that the petitioner was not granted a hearing under Section 14 of the Patents Act prior to rejection of the patent application and that no order was passed under Section 15.

The Patent Office despite being afforded several opportunities initially failed to file any affidavit in reply. It was only after the Court by its order dated 25 November 2025 observed that the Controller’s omission to file a reply was inexplicable and recorded that it was taking a serious view of such non-compliance that an affidavit in reply was eventually filed. The Patent Office contended in that affidavit that the impugned order was passed strictly in accordance with the Patents Act and suffered from no procedural infirmity. The first respondent took the position that once proceedings under Section 25(1) were initiated, a separate hearing under Section 14 was neither required nor contemplated.

Issues for Determination

The sole issue for determination before the Court was whether the Controller of Patents was required, as a matter of mandatory statutory obligation, to afford the petitioner an opportunity of hearing under Section 14 of the Patents Act, 1970 before rejecting the petitioner’s patent application, even where a pre-grant opposition had been filed under Section 25(1) and a hearing had been conducted in those opposition proceedings under Rule 55 of the Patent Rules, 2003. This issue required the Court to examine the relationship between the examination process under Chapter IV of the Patents Act specifically Sections 12 to 15 and the pre-grant opposition process under Chapter V of the Patents Act specifically Section 25(1) and to determine whether these two processes are distinct, parallel and independent statutory pathways each of which must be separately followed or whether the conduct of a hearing under Section 25(1) read with Rule 55 satisfies and renders unnecessary any separate hearing under Section 14.

Key Holdings of the Court

The Court held that the examination process under Chapter IV and the opposition process under Chapter V of the Patents Act, 1970 constitute two distinct statutory pathways which may proceed in parallel but do not merge. The power under Section 15 to grant or refuse a patent flows from Chapter IV and is an independent statutory power not controlled or circumscribed by opposition proceedings under Section 25(1). Both processes remain distinct and independent and the Patents Act does not envisage their merger into a single composite proceeding.
The Court held that the opportunity of hearing contemplated under Section 14 of the Patents Act is mandatory and constitutes a statutory right of a patent applicant, the denial of which vitiates any order of refusal as being contrary to the principles of natural justice. This position was confirmed by the Delhi High Court’s decision in Abraxis Bioscience LLC v. Union of India and was also clearly supported by paragraph 09.04(12) of the Manual of Patent Office Practice and Procedure, which expressly provides that no patent shall be refused without giving an opportunity of being heard under Section 14 of the Patents Act.
The Court held that an opponent in a pre-grant opposition proceeding has no right to participate in the examination hearing contemplated under Section 14 of the Patents Act. The hearing under Section 14 is a proceeding between the applicant and the Controller only. The exclusion of the opponent at that stage is by statutory design and does not amount to any infraction of the principles of natural justice. The respondents’ contention that granting a separate hearing under Section 14 without the opponent would itself violate natural justice was accordingly rejected as contrary to both the statute and binding judicial authority.
The Court held that even where a pre-grant opposition is filed and a hearing is conducted there under, the correct procedure requires the Controller to additionally grant a separate hearing to the applicant under Section 14 at which the opponent does not participate and thereafter to pass a composite speaking order under both Section 15 and Section 25(1) simultaneously deciding both the patent application and the pre-grant opposition. The standard practice of the Patent Office in other matters of conducting separate hearings under Sections 14 and 25(1) and thereafter disposing of both by a composite reasoned order was confirmed as reflecting the correct understanding of the statutory scheme.
The Court rejected the respondents’ contention that conducting separate hearings under Sections 14 and 25(1) would amount to duplication of proceedings not contemplated by Parliament, holding that this contention was wholly untenable and directly contrary to the provisions of the Patents Act, the Patent Rules, the Patent Manual and binding judicial precedents including the Delhi High Court’s Division Bench decision in Novartis AG v. Natco Pharma & Anr. and the decisions in Abraxis Bioscience LLC v. Union of India and UPL Limited v. Union of India.
The Court found the Controller’s conduct in the present case to be plainly arbitrary, unexplained and contrary to the statutory scheme. The Controller had issued a hearing notice under Section 14 and expressly assured the petitioner that a fresh hearing would be granted in due course. Despite this assurance the Controller rejected the patent application without ever granting the promised hearing under Section 14 and without passing any order under Section 15. This conduct was characterised by the Court as acting contrary to an express assurance, in clear disregard of the legal position established by judicial authority and in a manner that would permit the Controller to act arbitrarily by applying different procedures in different matters without any legal basis for doing so.
The Court allowed the petition and passed the following orders. The impugned order dated 26 June 2023 was set aside. Patent Application No. 201627001750 was remanded for fresh consideration before a different Controller who was directed to adjudicate the application in accordance with law including compliance with the hearing procedures under Sections 14 and 15 as well as Section 25 of the Patents Act. There was no order as to costs.

Statutory Provisions Involved

Section 12 of the Patents Act, 1970 requires that on a request for examination being filed under Section 11B, the Controller shall refer the application to an examiner who shall examine the application and report on, among other things, whether the application complies with the requirements of the Act and Rules. The First Examination Report is the mechanism through which the Controller communicates the results of this examination to the applicant.

Section 13 of the Patents Act, 1970 governs the investigation of prior art by the examiner in connection with the examination of the application. Together with Section 12 it constitutes the substantive examination process under Chapter IV through which the Controller satisfies himself as to the patentability of the claimed invention.

Section 14 of the Patents Act, 1970 provides that where the Controller is not satisfied that the applicant has complied with the requirements of the Act or considers that the application should be refused or that an amendment ought to be made, the Controller may, before granting or refusing the application, give the applicant an opportunity to be heard. The Court confirmed that this provision mandates a hearing to the applicant before any refusal and that the hearing under Section 14 is exclusively between the applicant and the Controller the opponent in any pre-grant opposition has no right of participation at this stage.

Section 15 of the Patents Act, 1970 governs the grant or refusal of a patent application after examination. It provides that where the Controller is satisfied that the application and the specification and other documents related thereto are in compliance with the requirements of the Act, he shall grant the patent. The Court held that any refusal of a patent application must be made under Section 15 and only after compliance with the procedure under Chapter IV including the hearing under Section 14. An order rejecting a patent application solely under Section 25(1) without passing any order under Section 15 is procedurally defective.

Section 25(1) of the Patents Act, 1970 enables any person to file a pre-grant opposition to the grant of a patent at any time after the publication of the application but before the grant of the patent, on any of the grounds specified in the provision including lack of novelty, absence of inventive step and the applicability of Section 3(d). The Court clarified that Section 25(1) falls under Chapter V of the Act which is titled Opposition to Grant of Patents and constitutes a distinct statutory pathway from the examination proceedings under Chapter IV. Section 25(1) proceedings are adversarial and bilateral in nature involving both the applicant and the opponent, unlike the examination hearing under Section 14 which involves only the applicant and the Controller.

Section 3(d) of the Patents Act, 1970 provides that the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance shall not be regarded as an invention within the meaning of the Act. The Controller invoked Section 3(d) in the impugned order as one of the grounds for refusing the petitioner’s patent application. The Court did not examine the merits of this ground, confining its analysis to the procedural infirmity.

Rule 55 of the Patents Rules, 2003 prescribes the complete procedure for adjudication of a pre-grant opposition under Section 25(1). It requires the Controller to furnish the applicant with a copy of the notice of opposition, permit the applicant to file a reply statement and evidence, allow both parties to put their materials on record and grant a hearing if requested before passing a reasoned order. Rule 55(5) specifically envisages that after the conclusion of Section 25(1) proceedings the Controller shall pass a speaking order under Section 15 simultaneously disposing of both the opposition and the application.

The Manual of Patent Office Practice and Procedure at paragraph 09.04(12) expressly states that no patent shall be refused without giving the applicant an opportunity of being heard under Section 14 of the Patents Act. At paragraph 09.06(10) the Manual envisages that after consideration of a pre-grant opposition the Controller shall pass a speaking order under Section 15 simultaneously deciding both the opposition and the application. The Court treated these provisions of the Manual as consistent with the statutory scheme and as reflecting the correct practice required of the Controller.

Reasoning of the Court

The Court’s reasoning was brief, principled and anchored in the clear statutory architecture of the Patents Act and in binding judicial precedents that had already settled the legal position in issue.

The Court commenced by accepting the petitioner’s characterisation of the Patents Act as containing two distinct statutory chapters that operate independently in parallel. Chapter IV titled Publication and Examination of Applications provides the mechanism by which a patent application is examined by the Controller for compliance with the requirements of the Act, culminating in a grant or refusal under Section 15. Chapter V titled Opposition to Grant of Patents provides the mechanism by which third parties may intervene in the process and place relevant material before the Controller, but does not replace or subsume the examination process. The Court accepted that while both processes may proceed simultaneously, they do not merge and the opposition mechanism under Chapter V serves only as an aid to the examination under Chapter IV, not a substitute for it.

The Court then applied the settled position established by the Delhi High Court’s Division Bench in Novartis AG v. Natco Pharma & Anr. which had after detailed analysis confirmed that examination under Chapter IV and opposition under Chapter V are distinct, that the Controller’s power under Section 15 flows independently from Chapter IV and is not controlled by the opposition proceedings and that the opponent has no right of participation in a Section 14 hearing. It also applied the Abraxis Bioscience LLC decision which had specifically held the Section 14 hearing to be mandatory and its denial to vitiate any refusal order. The Calcutta High Court’s decision in UPL Limited v. Union of India was similarly applied for the proposition that separate hearings under the two chapters are required even though they may ultimately be disposed of by a composite order.

Against this settled legal position the Court found the respondents’ defence entirely untenable. The contention that a Rule 55 hearing under Section 25(1) satisfies and replaces the Section 14 hearing was contrary to the statute, the Rules, the Patent Manual and the judicial precedents. The contention that separate hearings would amount to duplication not contemplated by Parliament was directly negated by the Patent Manual’s own provisions which expressly contemplate both processes. The contention that granting a Section 14 hearing without the opponent would violate natural justice was rejected as contrary to the statutory design which deliberately excludes the opponent from Section 14 proceedings.

The Court was also moved by two specific features of the present case. First, the Controller had personally issued a hearing notice under Section 14 and then upon receipt of the pre-grant opposition cancelled that hearing on less than one hour’s notice while expressly assuring the petitioner that a fresh Section 14 hearing would be granted in due course. This express assurance was never honoured. Second, the Court found the Patent Office’s own conduct in the proceedings before the Court repeatedly failing to file a reply affidavit and then filing one that advanced positions wholly contrary to settled law to be reflective of an approach that would permit the Controller to act arbitrarily and inconsistently. The Court noted that other orders of the Patent Office placed on record by the petitioner showed consistent practice in other matters of conducting separate hearings and passing composite orders, making the deviation in this case entirely unexplained and arbitrary.

These findings led the Court to hold that the impugned order was vitiated by a fundamental procedural infirmity and could not stand. The Court further held that to condone the approach adopted by the Controller would in effect permit the Controller to bypass mandatory statutory requirements and act in a completely arbitrary manner treating similar applications differently without any legal justification.

Doctrinal Significance

The AIC246 AG judgment makes a clear and important contribution to the procedural jurisprudence governing patent examination and pre-grant opposition proceedings in India.

Its most significant contribution is the definitive affirmation by the Bombay High Court following the Delhi High Court’s Division Bench in Novartis AG v. Natco Pharma & Anr. that the examination process under Chapter IV and the pre-grant opposition process under Chapter V of the Patents Act, 1970 are two wholly distinct statutory pathways that must each be independently followed. A hearing under Section 25(1) read with Rule 55 does not satisfy, replace or render unnecessary a separate hearing under Section 14. The applicant’s statutory right to a hearing under Section 14 is an independent right that exists regardless of whether a pre-grant opposition has been filed and regardless of whether the applicant has already participated in opposition proceedings. This principle definitively closes the argument which the Patent Office sought to advance that compliance with Rule 55 represents complete procedural compliance for the purposes of refusing a patent application.

The judgment also clarifies the nature of the Section 14 hearing by confirming that it is a bilateral proceeding between the applicant and the Controller only, from which the opponent in a pre-grant opposition is deliberately excluded by statutory design. This exclusion of the opponent from Section 14 proceedings is not a violation of natural justice it is itself a feature of natural justice in that the applicant’s right to be heard by the Controller without an adversary present is a valuable statutory protection that must be preserved.

The correct procedure that emerges from the judgment is clear where a pre-grant opposition is pending, the Controller must conduct separate hearings under Section 25(1) read with Rule 55 and under Section 14 and thereafter pass a composite speaking order under both Section 15 and Section 25(1) simultaneously disposing of both the opposition and the application. Any order refusing a patent application must be made under Section 15 refusal solely under Section 25(1) without any order under Section 15 is procedurally defective and liable to be set aside.

The judgment is also significant for its implicit rebuke of the Patent Office’s conduct. The Court’s characterization of the Patent Office’s stance as wholly untenable, befuddling and contrary to settled law and its specific finding that permitting such an approach would allow the Controller to act as a law unto himself reflects a strong judicial insistence on procedural regularity and consistency in the administration of the patent grant process. The direction that the matter be remanded to a different Controller further reinforces the Court’s concern that the petitioner should receive a fresh and fair hearing untainted by the earlier irregular proceedings.

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