Controller can not raise new objection(s) in Hearing without giving intimation or time to respond to Applicant

Pfizer filed patent application No.991/MUMNP/2003 for “CHIRAL SALT RESOLUTION” of “3-{(3R, 4R)-4-Methyl-3-[methyl-(7H-pyrrolo [2,3-d]pyrimidin-4-yl)-amino]-piperidin-1-yl}-3-oxo-propionitrile” on Oct 27, 2003. Subsequently FER was issued on Mar 13, 2008 with objections such as clarity of claims, distinctiveness and section 3(i). Applicant then filed response to FER with amended set of claims. The learned Controller issued official letter on Mar, 14, 2011 regarding intimation about Hearing on Mar 29, 2011 with new objections of section 2(1)(j) on the ground of lacking novelty, inventive step and section 3(d).

Applicant apprised the Controller during hearing about new objections. Controller agreed but he held that objection can not be ignored at this stage. Applicant then submitted written submission and amended claims. Surprisingly the instant application refused u/s 15 of Indian Patent Act under those new grounds section 3(d) and novelty. Applicant then submitted review petition to set aside the order passed by Controller but ultimately that was also denied.

Then Applicant filed appeal and challenged the order at IPAB by summarizing all above facts. IPAB said that, “objections raised under section 3(d) of the Act was neither contained in the first examination report nor mentioned in the hearing notice and the same was taken for consideration at the time of actual hearing and relied on by the Assistant Controller while passing the impugned orders. In view of this serious lapse on the part of the learned Assistant Controller we are of the considered view that the impugned orders are vitiated on the sole ground of flagrant violation of the principles of natural justice.”

IPAB citing the decision (OA/18/2011/PT/DEL – Telefonaktiebolaget LM Ericsson. vs. The Controller General of Patents, New Delhi) said- “it is better that the notice of hearing indicate what are the prior art that the Controller will be referring to which the inventor has to explain and prove the patentability of the invention.”

Consequently IPAB directed that the Assistant Controller shall reconsider the matter afresh by furnishing the objections well in advance to the appellant enabling the appellant to give their response both in respect of section 3 (d) of the Act and as well as in respect of novelty. It is made clear that some other Assistant Controller other than the Assistant Controller who passed the orders impugned shall reconsider the entire matter afresh by affording reasonable opportunity to the appellant as stated above.