Patent Rejection Quashed | Calcutta High Court Cites Data Omission, Procedural Lapses and "Lack of Reasoning" | Agrochemical Application Sent Back for Fresh Review
Isabella Mariam
The Calcutta High Court Intellectual Property Rights Division, Single Bench of Justice Ravi Krishan Kapur, set aside the rejection of a patent application for an agrochemical composition, directing the Controller of Patents to reconsider the matter within four months. The Court found that the impugned order was passed without adequate reasoning, failed to account for critical data, and ignored procedural obligations under the Patents Act, 1970.
The appellant, UPL Ltd, challenged an order dated 24 October 2024, issued by the Joint Controller of Patents and Designs, which had rejected Patent Application No. 201731008009 (dated 7 March 2017) under Section 15 of the Patents Act, 1970. The application concerned a novel agrochemical invention involving a combination of fungicides.
The invention claimed a combination of succinate dehydrogenase inhibitor (SDHI) fungicides, ergosterol biosynthesis inhibitor fungicides, quinone outside inhibitor fungicides, and multi-site fungicides, with the stated objective of improving disease control and overcoming resistance seen with existing combinations. According to the appellant, the addition of a multi-site fungicide led to "surprising and unexpected advantages" resulting in increased efficacy.
Following the initial filing, the First Examination Report (FER) was issued on 29 April 2019, raising objections under Sections 2(1)(j), 3(d), 3(e), and 3(h) of the Act. The appellant responded with amended claims on 25 October 2019. A pre-grant opposition was subsequently filed on 16 November 2022 by one Akash Dhyaneshwar Ugale. The pre-grant hearing took place on 22 May 2024, and written submissions were filed on 19 October 2024.
The appellant contended that the rejection failed to consider the invention as a whole and ignored significant technical data demonstrating synergistic effects. It was argued that the invention was not a mere aggregation but presented controlled, reproducible efficacy over years of use. The decision, it was submitted, lacked discussion on the cited prior art (D4-D10), failed to evaluate key experimental tables (1 to 3), and was issued without a mandatory Second Examination Report despite a re-examination.
The respondent authority argued that the order was reasoned and the 4-5% disease control improvement resulted from mere admixture. It was also contended that the failure to issue a Second Examination Report did not cause prejudice since the objections were addressed.
The Court examined the impugned order and found it procedurally and substantively lacking. It recorded, "there are no reasons in arriving at the conclusion that the subject invention lacked inventive steps", noting the complete absence of analysis on how a person skilled in the art would derive the invention from prior knowledge.
In evaluating inventiveness, the Court referred to Avery Dennison Corporation vs. Controller of Patents and Designs 2022 SCC OnLine Del 3659, stating: "In order to decide this issue, some of the fundamental principles for determining the existence of an inventive step and the lack of obviousness need to be stressed" The judgment outlined various tests for inventive step, including the "Obvious to Try," "Problem/Solution," "Could-Would," and "Teaching Suggestion Motivation" approaches.
The Bench noted the failure of the Controller to address prior art documents D4-D10 and stated that the absence of analysis under Section 2(1)(j) constituted a serious error. The Court also observed that data in Tables 1, 2, and 3, which demonstrated the claimed synergistic effect, had been completely disregarded. Only selective reliance on Table 4 was found, while others containing core scientific evidence were omitted.
On Section 3(e), the Court cited Stempeutics Research Pvt. Ltd. vs. Assistant Controller of Patent & Designs 2020 SCC OnLine IPAB 16, stating:
"Thus, it is settled that most inventions are a combination of old elements. The mere existence in the prior arts of each of the elements will not ipso facto mean that the invention offends under section 3(e) of the Act."
Further, it recorded that the impugned order did not reflect a genuine assessment of synergistic working and failed to note the long-term impact of even minimal increases in therapeutic efficacy, observing:
"even a minimum of 4-5% increase in therapeutic efficacy of an invention could have a significant long-term impact when considered on a larger scale."
The Court drew attention to the judgement in British Celanese Ltd. vs. Courtaulds (1935) 52 R.P.C. 171, noting that a patentable invention exists where "old integers when placed together have some working inter-relation producing a new or improved result."
A further procedural lapse was noted in the failure to issue a Second Examination Report, particularly when the re-examination introduced prior art D4-D10. Citing Oyster Point Pharma Inc. Vs, The Controller of Patents and Designs & anr. AID NO.10 of 2022, the Court recorded:
"The statutory mandate of section 13(3) must be followed regardless of the consequences and the ultimate result thereof."
Setting aside the impugned order, the Court remanded the matter to the Controller for fresh consideration. It directed:
"The matter is remanded to the respondent no.1 for consideration afresh after affording the appellant an opportunity of hearing. It is made clear that all questions on the merits are left open for the Hearing Officer to decide afresh in accordance with law. The above exercise is to be completed within 4 (four) months from the date of communication of this order to the respondent authorities."
Advocates Representing the Parties
For the Appellant: Mr. Subhatosh Majumdar, Advocate, Ms. Mitul Dasgupta, Advocate, Mr. K. K. Pandey, Advocate, Mr. Teesham Das, Advocate, Ms. Pooja Sett, Advocate, Ms. Mallika Bothra, Advocate
For the Respondent: Mr. Siddhartha Lahiri, Advocate, Ms. Madhu Jana, Advocate
Case Title: UPL Ltd vs. The Controller of Patents Designs and Trademarks
Case Number: IPDPTA/2/2025
Bench: Justice Ravi Krishan Kapur
[Read/Download order]
