Point of Law: Intellectual Property - Infringement of Indian Patent - Guidelines of Patent Office, as also manual of Patent Office, are relied upon to argue that whenever there is an improvement of a product or process, prior art and invention in new patent, is distinguished very clearly and separated by use of word “characterized by” or “wherein.”

JUDGMENT :

PRATHIBA M. SINGH, J.

I.A. No. 15243/2018 in CS (COMM) No. 1225/2018

1. The present suit has been filed alleging infringement of Indian Patent Number 282429 (hereinafter, “IN’429”) granted in favour of the Plaintiff. The patent relates to a “Novel Agricultural Composition.”

2. The elements of IN’429, as claimed, are:

(i) a novel agricultural composition for application to soil.

(ii) an agricultural composition that converts sulphur to its sulphate form instantly to be available for uptake by the plants.

(iii) an agricultural composition comprising an effective amount of a sulphur active ingredient in a range of 82% to 98% (w/w) and at least one dispersing agent in the range of 2% to 18% (w/w).

(iv) wherein the composition is in the form of water dispersible granules and the said water dispersible granules are in a size range of 0.1 to 2.5 mm and comprise particles in the size range of 2 microns to 12 microns.

3. The case of the Plaintiff is that in view of the instant conversion of sulphur into sulphate, the sulphate becomes available for immediate absorption by plants. The patented composition is used as a fertilizer composition or a nutrient composition. According to the Plaintiff, the previously available sulphur fertilizer formulations required administration in high doses, led to uneven coverage and were not compatible with modern irrigation methods. The patented composition, however, can be used at a reduced dosage to uniformly deliver sulphur to the soil through drip and sprinkler irrigation systems.

Prosecution History of IN’429

4. The application for grant of patent was filed on 8th January, 2007 and numbered as 40/MUM/2007. Publication under Section 11A of the Patents Act, 1970 took place on 2nd February, 2007. The application was examined and a response was sought, which response was filed on 6th May, 2008. Upon publication, pre-grant opposition was filed by one M/s. Jaishil Sulfur and Chemical Industries. Vide order dated 24th October, 2009, the Controller of Patents rejected the patent for lack of novelty and inventive step. The said order was challenged by the Plaintiff before the IPAB, which affirmed the rejection of the patent on 4th April, 2012.

5. The order of the IPAB came to be challenged before the Bombay High Court, which set aside the order and remanded the matter back to the IPAB on 13th April, 2016. After the remand order, the IPAB again considered the matter on 21st April, 2016 and remanded it back to the Controller of Patents for fresh consideration. Both orders i.e. the order of the Bombay High Court and the second order of the IPAB dated 21st April, 2016, were rendered on grounds of non-supply of documents to the patentee and not on merits.

6. The IPAB, in its order dated 21st April, 2016, directed the Controller of Patents to decide the matter within three months. The operative portion of the order reads as under:

“14. The reading of the above said provisions would make it crystal clear that the appellant/applicant shall be furnished with notice of opposition along with the enclosures and thereafter by affording prescribed time limit of 3 months for submitting their reply and thereafter affording opportunity of hearing. It is seen that even the application for amendment of claim under Form 13 was taken on record and the same was considered by the Assistant Controller of Patents and Designs, Mumbai on his own and inspite of rejecting the claim in part, the Assistant Controller of Patents and Designs, Mumbai has not thought it fit to afford opportunity to the appellant/applicant. In our considered view, there is clear violation of mandatory provisions under Rule 55 (3), (4), (5) and (6) of the Patents Rules, 2003. We have no hesitation, to hold that the Assistant Controller of Patents and Designs, Mumbai has adopted a strange and unfair procedure contrary to the mandatory provisions of the Act and