Denial of Adjournment Request Results in Remand of the Application back to the Patent Office

• By: Bhawna Sharma
• Date: 01-Mar-2021
• Post in: Patents

Lifesaver IP Limited (Applicant) moved the Intellectual Property Appellate Board (IPAB) against the impugned order of the Controller of Patents (Controller) refusing the grant of a patent and denying the adjournment request filed by the Applicant.  

The Indian Patent Office (IPO) issued a hearing notice in the national phase patent application of the Applicant for further discussion and clarification, after the submission of the response to the examination report. On receiving a hearing notice, the Applicant filed a request to seek an adjournment for the scheduled hearing within the prescribed time limit. The Controller rescheduled the hearing, upon receiving such an adjournment request. The Applicant within the legitimate limits requested the second adjournment and was expecting the matter likely to be adjourned. Instead of rescheduling the hearing, the Controller denied the second adjournment request and passed an unfavorable order refusing grant of the patent due to non-compliance of the objections/requirements raised in the hearing notice.

As per the relevant Rule 129A of the Patents Rules, 2003, the applicant can seek an adjournment of hearing by filing a request 3 days before the hearing date, along with the applicable official fee. The Rule 129A of the Patents Rules, 2003, was incorporated vide Patents (Amendments) Rules, 2016 in the Patents Rules, 2003 and which reads as follows:

“An applicant for patent or a party to a proceeding may make a request for adjournment of the hearing with reasonable cause along with the prescribed fee prescribed in First Schedule, at least three days before the date of hearing and the Controller, if he thinks fit to do so, and upon such terms as he may direct, may adjourn the hearing and intimate the parties accordingly.

Provided that not party shall be given more than two adjournments and each adjournment shall not be for more than thirty days.”

The Rule 129A of the Patents Rules, 2003, provides discretionary power to the Controller to allow or refuse any such requests. However, before exercising any such discretionary powers which affect the applicant adversely, the Controller is required to give the applicant a hearing opportunity as per the said rule. It is significant to note that the applicant is allowed to seek such adjournments twice only.

While passing the decree in favor of the applicant and setting aside the impugned order of the Controller, the IPAB opined that the Controller did not act as per the statutory provisions and settled principles of natural justice:

• by arbitrarily deciding the petition on Rule 129A of the Patents Rules, 2003, and passing the order of refusal;
• by deciding the matter against the interest of the applicant, without providing them a fair opportunity of being heard;
• by not deciding the matter on the merits.

The IPAB remanded the application to IPO for hearing before another Controller. The IPAB has directed the IPO to provide a fair hearing opportunity and complete the proceedings in the matter within 6 months.

It is important in the interest of best justice that the inventors or applicants should be provided with a fair opportunity to defend the matters, within the legal limits provided by the law.