JUDGMENT :

Ravi Krishan Kapur, J.

1. This is an appeal under section 117A of the Patents Act 1970 assailing an order dated 19 July 2021 passed by the Assistant Controller of Patents and Designs rejecting the Patent Application filed by the appellants dated 7 January 2017.

2. Briefly, the appellant applied for grant of patent with regard to an invention titled “A fungicidal treatment for black sigatoka” which provides for a treatment method for black sigatoka, a leaf-spot disease in banana plants, caused by the ascomycete fungus Mycosphaerella fijiensis (Morelet) by use of Ortho-phenyphenol.

3. It is contended that the subject invention is a cost effective and environment friendly method for treatment of black sigatoka which eliminates and reduces synthesised chemical fungicides having a significant environmental impact and leaves high residue in soil and agricultural products. The invention also reduces the risk of resistance (decreased sensitivity requiring large doses) and improves the health and yield of the plant increasing in their economic value. It is further contended that until this invention, there was no disclosure or knowledge of any method involving application of the compound Ortho-phenyphenol (OPP) or a salt thereof to control black Sigatoka in banana plants. In short, the subject invention is for a “process of treatment of plants to render them free from disease”.

4. The objections raised in the FER dated 21 December 2018 were under Section 2(1)(j), i.e., lack of novelty, 2(1)(ja), i.e., lack of inventive steps, 3(d) & 3(e), i.e., non-patentable invention, 3(h),i.e., method of agriculture and 10(4) i.e., lack of clear and sufficient disclosure. The appellants replied to the said FER on 20 June 2019 following which a hearing notice dated 1 October 2020 was issued fixing the hearing on 5 November 2020. Thereafter, in view of the amendments carried out by the appellants, some of the objections raised were waived by the respondent authorities.

5. The main grounds for rejection of the application are set out as follows:

a. The invention is not patentable under section 3(h) of the Act.

b. The invention does not disclose the best way of performing the same and suffers from insufficiency of disclosure under section 10(4) of the Act.

c. Lack of obviousness and inventive steps under section 2(1)(ja) of the Act. (against prior arts D1 to D7 as mentioned in FER).

6. The appellants contend that the objections raised by the respondent authorities are misconceived and untenable. In passing the impugned order, the respondent no.2 considered the application under section 3(h) of the Act which deals with methods relating to agriculture and horticulture whereas the subject invention pertains to a process of treatment of plants to render them free and prevent diseases. Moreover the Controller failed to provide any reasons in arriving at the finding that the subject invention is not patentable under section 3(h) of the Act and also ignored that similar inventions have been granted patent by the Controller details whereof had been fully enumerated in the petition. Significantly, this point has not even been adverted to nor addressed in the submissions of the respondents.

7. It is further alleged that the Controller erred in holding claim nos. 1 to 4 (initially in the FER and subsequently in the impugned order) and claims 11 to 13 (in the hearing notice) as claims lacking sufficient disclosure was unsubstantiated and bereft of reasoning.

8. The appellants also allege that the refusal of the application by the Controller for lack of inventive steps demonstrates that the Controller misdirected himself in appreciating the invention and comparing the same with reference to prior arts D1 to D7 without appreciating the teachings of the same. The disclosure or teachings was in no way relatable to black sigatoka.

9. On behalf of the respondents, it