Neon Laboratories v Troikaa Pharma (2010)

Summary

“This petition under Article 226 of the Constitution of India is directed against the grant of Patent No.231479 dated 04.03.2009 vide Patent Application No.96/MUM/2005” ... “and the order dated 03.06.2009” (para 1). “the patent was sought in respect of ‘Injectable preparations of Diclofenac and its pharmaceutically acceptable salts’.” (para 4) “on 29.10.2007 the Petitioner filed a representation by way of opposition under Section 25(1) of the Patents Act, 1970” ... “The Petitioner requested for hearing on this representation.” (para 5) The hearing was held “on 09.07.2008”, when “the agent of the Respondent No.1 pointed out that they intended to file an amended set of claims” (para 8). “The Petitioner also requested by its letter dated 30.12.2008 for a personal hearing in the light of the opposition to the amended claims.” (para 10) “More than three months after the grant of patent, the Respondent No.4 forwarded to the Petitioner, an order dated 03.06.2009 dismissing the representation by way of opposition filed by the Petitioner and allowing the amendment to the claims.” (para 11)

The Bench held that “the interpretation placed by the Division Bench of Madras High Court, in the context of identical submissions and on the same statutory provisions, cannot be brushed-aside” (para 39), that the “opportunity contemplated by sub-section (1) must be effective, meaningful and purposeful” (para 41), and that “If the original claim/application is amended, as in this case, and the amendments are also opposed, then, a personal hearing to the objector on the amended claims is required to be given if specifically requested.” (para 43) “The opportunity of personal hearing as requested by the Petitioner to oppose the amended claims having been admittedly denied, we cannot sustain the grant in this case.” (para 47) “In the result, while setting aside the grant and the impugned order (Annexures-U and Z), we direct the Controller to give personal hearing to the Petitioner and the Respondent No.1 on the above lines and deliver a reasoned order within a period of three months from the date of appearance of the parties.” (para 56)

What the court decided

1. The nature of the pre-grant proceeding. The Division Bench of the Madras High Court, in “Indian Network for People living with HIV/AIDS vs. Union of India and others” (para 26), had held, as reproduced by the Bench, that “the pre-grant opposition proceedings come within the sweep of ‘any proceedings’ under Section 77 of the said Act” and that the Controller “is thus having the trappings of a Civil Court. Proceeding before such an authority are obviously a quasi-judicial proceedings.” (para 36) The Bench held: “In our view, the interpretation placed by the Division Bench of Madras High Court, in the context of identical submissions and on the same statutory provisions, cannot be brushed-aside as suggested by Mr.Kadam.” (paras 36, 39)
2. “Shall hear”. The Madras judgment, as reproduced, held that “the expression ‘may’ give the opponent an opportunity to be heard has been replaced by the word ‘shall hear’. Where legislature itself makes such alteration, making its intention clear in specific term, no option is left except to follow the strict letter of law.” (para 36) The Bench held that this interpretation “cannot be brushed-aside as suggested by Mr.Kadam.” (paras 36, 39)
3. An effective opportunity. “If the grounds indicated in sub-section (1) of Section 25 are perused carefully, it is clear that opportunity contemplated by sub-section (1) must be effective, meaningful and purposeful, so also, in consonance with the object of the Amendment Act.” “If the Controller was of the view that there was no necessity of another hearing after 09.07.2008, then, he was not required to forward the amended claims to the Petitioner. Once the claims were forwarded to the Petitioner, their objections were invited and when there was a request made by the Petitioner for grant of personal hearing, then, in such facts and circumstances, it was incumbent upon the Controller to further hear the Petitioner.” (para 41)
4. Summary enquiry and natural justice. Of “Glochem Industries Ltd. vs. Cadila Healthcare Ltd. and others”, the Bench reproduced the holding that “the enquiry contemplated at the stage of pre-grant opposition is a summary enquiry. Nevertheless, the principles of natural justice will have to be adhered to even during that enquiry.” (para 42) and held: “It is, therefore, clear that the opportunity provided in Section 25(1) is not an empty formality.” (paras 42–43)
5. A hearing on amended claims. “In this context, it must be understood that the opposition under Section 25(1) is to the ‘grant of a patent’. The grant is on an application made in that behalf, which itself is duly published. If the opposition is raised to the grant, then, until the same is dealt with, no patent can be granted. If the original claim/application is amended, as in this case, and the amendments are also opposed, then, a personal hearing to the objector on the amended claims is required to be given if specifically requested. That is the scheme of Section 25(1) and Rule 55 which are to be considered and read together.” (para 43)
6. Revocation is no substitute. “The requirement of hearing, if requested, would be nullified if the Controller is only obliged to hear the person opposing the grant on the contents of the original application.” “Therefore, alleging that the patent was wrongfully obtained and must, therefore, be revoked, is no opportunity contemplated by Section 25(1). That is an opportunity prior to the grant.” (para 44)
7. Proof of prejudice. “The nature of the proceedings, right of hearing conferred and importantly the lis between the parties, has to be borne in mind and it will not be possible to hold as suggested by Mr.Kadam that in all cases of pre-grant opposition the Court must call upon the aggrieved party to produce proof of prejudice, independent of denial and violation of natural justice. That would mean that the Court must dilute the provision mandating a pre-grant hearing, if requested, on the representation made in writing by way of opposition to the grant of patent.” (para 39) “In our view, the argument of prejudice cannot be considered de-hors this vital aspect.” (paras 39, 50)
8. The Controller’s order. “If his conclusion as reproduced above is perused in the light of the amended specifications and particularly paragraph Nos.10 to 16 as set out in the order of the Controller dated 03.06.2009, then, it is more than clear that the Controller has relied on the amended claims to grant the patent.” “The record, therefore, indicates that the grant is sought to be supported by the reasons not indicated in the impugned order.” “The entire exercise, therefore, is vitiated by breach of principles of natural justice.” (para 47)
9. Jurisdictional error. “As far as our Courts are concerned, the settled view is that if the principles of natural justice are violated, the order is procedurally ultra-vires and therefore, suffers from a jurisdictional error. Such an error is required to be corrected and is capable of being corrected by a writ of certiorari under Article 226 of the Constitution of India.” “Therefore, we can safely conclude that in this case the impugned order does not create any right in favour of the Respondent No.1 and the grant of patent, therefore, cannot be said to be valid.” (para 52)
10. Snehlata Gupte. Of Dr Snehlata C Gupte v Union of India (2010) the Bench held: “These observations are to be seen in the light of the ultimate finding that the opposition must be filed before the grant.” “This decision is of no assistance in resolving the present controversy.” (para 53)
11. Lapse of time and foreign grants. “Once we find that the statutory mandate has been breached and violated, then, the Respondent No.1 will suffer prejudice if the clock has to be set back, is indeed no answer.” “If the grant does not confer any legal right as it is vitiated by non observance of the principles of natural justice, then, to continue the patent as granted, would put a premium on the illegality of the authorities. That can never be the intention of the legislature.” (para 54)
12. Procedure. Relief. “Thus, the original and amended claims and the objections thereto raised by the Petitioner alone will be considered by the Controller afresh and the same including the supporting documents, can be relied upon by the parties.” (para 55) “However, for a period of 3 months from today no penalties be imposed on the Respondent No.1 in terms of Chapter XX of the of the Patents Act, 1970 entitled ‘Penalties’.” (para 56) “Rule is made absolute in the aforesaid terms but without any order as to costs.” (paras 55–57)

What the court did not decide

“We hasten to clarify that we have not expressed any opinion on merits of the controversy and all pleas of both sides in that behalf are kept open.” (para 55)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 16 October 2026.