The Hon’ble Delhi High Court, in the matter titled Haryana Pesticides Manufactures Association (‘petitioner’) vs Assistant Controller of Patents and Designs, Patent Office, Delhi (‘respondent’), recently gave a verdict on a critical issue of whether an informal communication sent to the Patent Office amount to a formal acceptable notice.
Factual Matrix
An Indian Patent Application titled “Weedicidal Formulation and Method of Manufacture Thereof” was filed by the applicant in 2010 before the Patent Office. Subsequently, after the publication of the said patent application, a pre-grant notice of opposition under Section 25(1) of the Patents Act, 1970, was filed by the petitioner challenging said patent application.
The petitioner claimed that a letter was addressed to the Controller of Patents in 2017 intimating the change in his email address. Further, on the pre-grant opposition filed by the petitioner, a hearing was scheduled by the Patent Office in October 2020, in which the petitioner claimed that the notice of hearing was served only to his old email address.
The petitioner further claimed that he sought adjournment for hearing from his new email address, for which he received intimation regarding rescheduling of hearing on both his old and new email addresses. Thereafter, he sought a second adjournment for a hearing from his new email address; however, for a second adjournment request, the petitioner claimed that he received the hearing notice only on his old email address.
Thus, the petitioner claimed that the revised notice of hearing was received only at his old email address and that the email address by that time had become non-functional; therefore, for the aforesaid reasons, the petitioner could not attend the hearing. Later, he discovered the rejection of the opposition ex-parte in September 2023 after inquiring about the Patent Office.
Key Issues Before the Court
The key issue which arose before the Hon’ble Court was “whether the communication sent by the petitioner in 2017 amounts to a formal acceptable notice to the Patent Office of the change of address”.
Observation by the Court
The Hon’ble Court held that although the petitioner communicated to the Patent Office regarding the change in email address, the same was done by addressing a mere generic letter to the Controller of Patents (without reference to the impugned patent application), and hence, was not done formally. The Hon’ble Court also held that although there is no form prescribed, the Patent Rules do include Form 30, which is “to be used when no other form is prescribed”, and said Form does allow an applicant/patentee/other to communicate address including email, telephone number, mobile and fax number along with the purpose of the request, details of the request and signatures of the person applying.
The Court further held that no steps were taken by the petitioner since 2017 or even after 2020 till 2022 (a long span of two years) to ensure that the petitioner’s old email address was excluded. Moreover, the Court pointed out that as the petitioner is represented through a registered patent agent and an advocate, it was to be ensured that the records were updated in all manners possible and by whatever mode acceptable to the Patent Office. The Hon’ble Court further observed that the petitioner chose to await notice from the office of the Controller of Patents rather than being diligent and inquiring into the matter and ensuring that his new email address was placed on record
for this impugned patent.
The Hon’ble Court observed that the petitioner could have moved for a post-grant opposition in January 2023 or even in September 2023 (when they found out about the rejection of their opposition and grant of patent).
Conclusion
The Hon’ble Court emphasised the relevance of Form 30 of the Patents Act and explained that where there is no specific form provided for change of address or change of email or any other miscellaneous purpose, Form 30, which is generic in nature, must be used. Any informal communication or communication in the Form of a general letter or email may not be binding on the Patent Office. For a communication to the Patent Office to be binding, it should be in the specific Form provided under the Patents Act, and in case no particular form is provided, then it must be in Form 30 of the Patents Act.
Authors: Manisha Singh and Vaneet Kaur
First Published By: Lexology here