Recently on July 30, the DHC clarified that non appearance of an applicant in a hearing cannot result in the Controller deeming their application as abandoned. Discussing this order and noting its importance vis a vis the right to be heard, we are pleased to bring to you this post by SpicyIP Intern Aditi Bansal. Aditi is a fourth year law student studying at OP Jindal Global University. She is incredibly passionate towards IP laws and its workings. Her previous post can be accessed here.
Missed Hearings Do Not Equal Abandonment: Star Scientific Limited v. The Controller Of Patents And Design
By Aditi Bansal
In an important order upholding the right of an applicant to be heard before the Indian Patent Office, the Delhi High Court in Star Scientific Limited v the Controller of Patents and Design (pdf), held that non appearance of the applicant in a scheduled hearing will not automatically abandon the patent application. The Court clarified that the Controller should have considered the evidence on the record and that non appearance of the applicant in the hearing will not deem the application as abandoned, unless it was clear from the party’s explicit actions. Directing the Controller to consider the evidence on the record before passing an order, the Court remanded the matter back to the Indian Patent Office to consider it afresh.
For some quick background, the applicant/ appellant filed an application to register their patent for ‘Composition, Methods, and Apparatuses for Catalytic Combustion’. They submitted that owing to certain financial difficulties, they were not able to attend the scheduled hearing in front of the Controller. The appellant also sent emails to the Controller regarding their non appearance. Despite this, the Controller rejected the application of the appellant only on the ground of non appearance without giving any other reasons.
Can Non Appearance be Regarded as Abandonment of the Application?
The Court in the present case relied on Merck Serono v. Union of India where it was explained that non appearance of a party in the hearing can be considered as an indication of abandoning a patent application when it can be tied up with other instances of neglect of an applicant towards their application. However, non appearance alone could not be regarded as abandonment of the application. As seen in this case, the appellant was not able to attend the hearing for certain reasons. Regardless, they did express their willingness to pursue the application. The High Court emphasized the same, clarifying that the intent of the appellant should have been taken into account and the evidence provided by them on record (like reply to the first examination report) should have been considered by the Controller. Another interesting point highlighted by the Court is that despite the Controller’s decision to deem the application as abandoned, the law (Rule 28(5)) clearly states that the Controller is bound to pass a reasoned order regardless of the applicant’s appearance in a hearing. The High Court’s interpretation here is on point and it upholds the right of a party to be heard, reaffirming the obligation on the Controller to pass a reasoned order (we have previously discussed the need of passing speaking orders here, here, and here). The decision also serves as a significant clarification about the principle of “Audi Alteram Partem” (To hear the other side). According to this principle, all the parties in a case are to be heard by an adjudicating authority and they should be allowed to present their case before the authority. The Court in this decision has seemingly extended the application of this principle even in the situations where one party cannot “physically” be heard by directing the Controller to take into account the arguments of the absent party.