Examination and pre-grant opposition are two different proceedings with two different casts of characters. Can the Patent Office fold them into a single order? In UPL Limited v. Haryana Pesticides Manufacturers Association & Anr. [IPDPTA No. 116 of 2023], the Calcutta High Court said no — and set aside a refusal that did exactly that.
One order for two proceedings
UPL’s application (no. 201831011137, “Herbicidal Combinations,” for a composition of three classes of herbicides) was refused on the grounds urged in a Section 25(1) pre-grant opposition by HPMA — lack of novelty (25(1)(b)), lack of inventive step over D1–D5 (25(1)(e)), and mere admixture under Section 3(e) (25(1)(f)). The First Examination Report had raised its own objections; D1 and D2 were common to both the FER and the opposition, but D3–D5 surfaced only in the opposition. The Controller disposed of both the examination and the opposition in a single consolidated order under Section 25(1), without separate hearings or a clear demarcation of the statutory basis of refusal.
Parallel, but never converging
The Court reaffirmed the Act’s structural design: examination under Sections 12–15 is a bilateral process between applicant and Office; the Section 25(1) pre-grant opposition allows third-party participation only within its own contours; and an opponent does not become a party to the examination. The two stages may run in parallel but cannot collapse into one — a point the Court drew from Novartis AG v. Natco Pharma [2024 SCC OnLine Del 152]. Under Rule 55(5), a speaking order on the opposition should be passed alongside the Sections 14–15 proceedings; where the FER objections differ from the opposition’s, separate consideration and hearing are required, and a composite order must at least demarcate what is decided under Section 15 and what under Section 25(1).
On the facts, the lapses were many: the applicant’s express request for a Section 14 hearing was not granted; D3–D5 were introduced at the opposition stage without an opportunity to respond; the order did not separate its Section 15 and Section 25(1) findings; and the applicant’s submission that a cited FER document was untraceable went unaddressed.
Why it matters
For applicants facing a pre-grant opposition — a common ambush in the agrochemical and pharma space — UPL is a valuable procedural shield: you are entitled to your own examination hearing, to notice of any opposition-only prior art, and to an order that tells you which ground refused you under which provision. For the Office, it is a workload caution against the tempting shortcut of one order for everything. It pairs naturally with this blog’s note on Crystal Crop (the same opponents’ association, the same Section 3(e) terrain) and the broader “communicate the objection” theme in Wirtgen.
Sources & further reading: Section 25(1); Rule 55; Novartis AG v. Natco Pharma.
Educational note: This case summary is general information, not legal advice.