FMC Corporation v. The Controller of Patents

1. This hearing has been done through hybrid mode.

2. The present appeal under section 117A of the Patents Act, 1970 (hereinafter „Act‟) has been filed by the Appellant / Applicant - FMC Corporation (hereinafter „Applicant‟), against the order dated 10th May, 2022 passed by the Asst. Controller of Patents & Designs in respect of Applicant‟s patent application bearing no. 201917036361.

3. The background of the matter is that the Patent Applicant, FMC Corporation, through its predecessor, Bayer Aktiengesellschaft, filed a patent application titled “HERBICIDAL MIXTURES” on 10th September, 2019 in the Indian Patent Office.

4. The patent application, as originally filed, had a total of 13 claims covering a large number of compositions. The First Examination Report (hereinafter referred as „FER‟) was issued by the Patent Office on 26th March, 2021. In the FER, objections relating to lack of inventive step under section 2(1)(ja) and non-patentability under Sections 3(d) and 3(h) of the Act as also lack of clarity and definitiveness were raised. The said objections were explained in detail in the FER. The FER also raised objections relating to „efficacy‟ of the claimed compositions over the prior art as having not been established.

5. The Applicant filed a Reply to the FER on 24th September, 2021, just before the due date, dealing with the objections raised by the Patent Office in the FER. Along with the response, the Applicant filed an amended set of claims restricing the number of claims to 5.

6. A hearing notice dated 24th February, 2022 was issued by the Patent Office fixing the hearing on 11th March, 2022 for which adjournment was sought by the Applicant. Thereafter, the hearing was rescheduled to 23rd March, 2022 vide hearing notice dated 10th March, 2022 which also reiterated the objections raised in the FER relating to inventive step and non patentability.

7. Hearing was held on 23rd March, 2022 which was duly attended by the patent agent of the Applicant. However, thereafter, the application was completely derailed owing to the non-filing of the written submissions within the stipulated time by the Applicant. First, the Applicant sought extension of time, under Rule 138 of the Patent Rule, 2003 (hereinafter „Rules‟), for filing written submissions under Rule 28(7) of the Rules which was granted. Secondly, another extension was sought by the Applicant on 3rd May, 2022 under Rule 137 for obviating irregularities in filing written submissions. However, the second extension was refused.

8. Parallelly, the Patent Office passed a separate order rejecting the application on 10th May, 2022. Thirdly, the Applicant preferred a review petition under Sections 77(1)(f) and 77(1)(g) of the Act on 10th June, 2022. Fourthly, the Applicant also filed an application dated 12th July, 2022 for change in the name of Applicant in whose favour the subject patent application was stated to have been assigned. The said assignment is now stated to have been allowed.

9. Fifthly, further submissions were filed by the Applicant in support of the Review on 8th August, 2022 along with an amended set of claims which now consisted of only one claim. However, since the review has not been considered and the patent application stands rejected, the present appeal has been filed challenging the original order dated 10th May, 2022 and praying for consideration of the review application.

10. Mr. Kalra, ld. Counsel appearing for the Applicant submits that the impugned order is completely unreasoned on merits. The Asst. Controller has merely rejected the application on the ground that the written submissions were not filed and the additional data is also not filed within the prescribed period.

11. Mr. Harish V. Shankar, ld. CGSC appearing for the Patent Office on the other hand submits that the Applicant has been given sufficient indulgence by the Patent Office and despite the same the Appellant did not furnish the requisite data of efficacy. In view thereof, the impugned order does not deserve to be interfered with.

12. Heard. A perusal of the impugned order shows that the reasoning given by the Asst. Controller is as under: “The applicant though attended the hearing did not replied to the objections raised in the hearing notice within the prescribed time period. The additional one month time period offered considering the petition filed under rule 138 of the Patents Act and also adhering the principles of natural justice, is over on 07/05/2022. Moreover the applicant filed petition filed under rule 137 of The Patents Act for further extension of 3 months cannot be considered, as it is against the spirit of the Patents Act and rules. This appears to be an clever attempt by applicant to override the provisions of The Patent Act, as there was ample time for submitting any additional data during the prosecution of the application (i.e.FER was issued in this case on 26/03/2021). Based on the above facts and on the circumstances of the case, the objections raised vide Office letter are admitted by the applicant, still outstanding and not met. Therefore, it is hereby ordered that the invention disclosed and claimed in the instant application been refused to proceed further U/s 15 of the Patents Act, 1970.”

13. As per the above order, the ld. Asst. Controller was of the opinion that: a) The request of the Applicant for extension of three months for submitting written submissions cannot be considered as it is against the spirit of the Patents Act, 1970. b) The attempt of the Applicant was to override the provisions of the Act and additional data during prosecution of the application was not furnished despite ample time having been available since the issuance of the FER in March, 2021. c) The objections were not met and hence the invention is not liable to be allowed.

14. The present case is clearly a reflection of how patent applications are being delayed even by the Applicants themselves in the Patent Office. A perusal of the FER would show that all the relevant objections were raised by the Patent Office way back in March, 2021 in the FER itself. The data relating to efficacy ought to have been submitted by the Applicant in response to the FER itself. The Applicant, however, chose to amend the claims. Despite the hearing being held almost one year post the issuance of the FER, efficacy data appears to have not been submitted. In the opinion of the Court, there was sufficient time for furnishing of efficacy or synergistic data by the Applicant.

15. Rule 28(7) of the Patent Rules, 2003 permits parties to submit written submissions and relevant documents in cases where hearing is held. The said Rule reads as under: