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2025 Supreme(Online)(Mad) 69031
IN THE HIGH COURT OF JUDICATURE AT MADRAS
MR. SENTHILKUMAR RAMAMOORTHY, J
M/s.Rallis India Limited – Appellant
Versus
Deputy Controller of Patents and Designs, The Patent Office – Respondent
C.M.A.(PT) No. 21 of 2024
For the Appellants/Petitioners: Mr.Adarsh Ramanujan, Mr.Tarun Khurana, Mr.Tapan Shah, Mr.P.Subburaj
For the Respondents: Mr.A.R.Sakthivel, Mr.Shravan Kumar Bansal, Mr.Somnath De, Mr.Bhavik Patel, Dr.Heena Patel
The court emphasized the need for a thorough evaluation of objections regarding novelty and non-obviousness of a patent in light of existing prior art.
Headnote:(A) Patents Act, 1970 - Section 3(d), Section 3(e), Section 25 - Rejection of claims on grounds of non-patentability and lack of inventive step - The appellant contested the opposition by asserting that the cited prior art did not adequately disclose the claimed invention - The Court found that adequate consideration of the appellant’s objections was not recorded - The rejection was remanded for reconsideration due to failure to provide necessary findings. (Paras 9, 23)
(B) Patent Law - Novelty and Inventive Step - Claim must not only be novel but also include an inventive aspect not obvious to a person skilled in the art - Appealed claims were found overlapping with prior art despite slight differences, questioning their non-obviousness. (Paras 17, 18, 22)
Facts of the case:
The case revolves around the patent application for a stable herbicidal composition involving Pendimethalin and Metribuzin challenged on the basis of prior documents that included similar formulations. Various claims were considered wherein objections raised pinpointed the novelty and inventive step lacking based on existing prior art.
Findings of Court:
The Court determined that the impugned order failed to thoroughly assess the objections raised by the appellant that were pertinent to prior art qualifications. It noted critical issues requiring evaluation on the grounds claimed.
Issues: The principal issues centered around the rejection based on perceived overlaps with prior art claims and the criteria for establishing novelty and inventive steps under the Patents Act.
Ratio Decidendi: The Court resolved that key findings made in the initial order inadequately addressed significant objections, necessitating a remand for comprehensive reassessment of evidence and claims.
Result: The impugned order is set aside and remanded for reconsideration.
| Table of Content |
|---|
| 1. patent application submission details. (Para 1) |
| 2. summary of arguments by appellant and respondents. (Para 4 , 5) |
| 3. discussion on prior arts and grounds for refusal. (Para 8 , 9) |
| 4. remand for reconsideration due to inadequate findings. (Para 23) |
JUDGMENT
The appellant filed Application No. 4135/CHEN/2014 titled “Stable Herbicidal Composition comprising Pendimethalin and Metribuzin” at the Indian Patent Office (IPO) , Chennai, on 25th August 2014. A request for examination was filed on 27th September 2017. Pursuant thereto, the First Examination Report (FER) was issued by the IPO on 22nd July 2019. In the FER, the first respondent raised objections, inter alia, on the grounds that claims 1 to 6, as originally filed, lacked novelty and inventive step in view of three cited documents, namely:
• D1: AU760278B2 ;
• D2: AU2012203353B2 ; and
• D3: O.B HILDEBRAND: Proceedings of the Ninth Australian Weeds Conference, Adelaide, South Australia, August 6–10, 1990.
Objections were also raised on the ground of non-patentability under Section 3(d) and Section 3(e) of the Patents Act, 1970 (“the Patents Act”). The appellant replied to the FER on 21st January 2020 along with a copy of the amended claims and specifications.
2. Meanwhile, an opposition was filed by the second respondent on 10th September 2019, challenging the claims under Sections 25(1)(b) to 25(1)(f) of the Patents Act. The pleadings and evidence in relation to the opposition by the second respondent were completed by 27th August 2021. Thereafter, after a hearing notice was issued, the hearing was concluded on 24th November 2021 and orders were reserved by directing the parties to file written submissions. One day prior to the filing of the written submissions by the second respondent, the third respondent filed an opposition challenging the claims under Section 25(1)(b) to 25(1)(g) of the Patents Act. The pleadings and evidence in relation to the second opposition were completed by 13th February 2023. The hearing in relation to the second opposition was concluded on 17th July 2023 and the appellant filed written submissions along with an amended set of claims. At that juncture, the appellant filed an affidavit of Mr.Vairamani Ramanathan, along with the miscellaneous petition with the request to change the legal status of cited document R3 (2243/MUM/2014) from “in force” to “deemed to be revoked”. The impugned order herein was issued in the above facts and circumstances on 5th March 2023.
Counsel and their contentions
3.1. Oral arguments on behalf of the appellant were advanced by Mr. Adarsh Ramanujan, learned counsel, assisted by Mr.Tarun Khurana, learned counsel.
3.2. Oral arguments on behalf of the first respondent were advanced by Mr.A.R.Sakthivel, learned Special Panel Counsel.
3.3. Oral arguments on behalf of the second respondent were advanced by Mr.Shravan Kumar Bansal, learned counsel, assisted by Mr.Somnath De, learned counsel.
3.4. Oral arguments on behalf of the third respondent were advanced by Mr.Bhavik Patel, learned counsel, assisted by Dr.Heena Patel, learned counsel.
3.5 All the parties also submitted written submissions. The appellant filed the pleadings and documents in seven volumes, Volume I-VII.
4. Mr.Adarsh Ramanujan advanced several contentions in support of his request to set aside the impugned order. His contentions may be summarised as under:
4.1. The rejection of the claimed invention by reference to IN 2243/MUM/2014 is untenable because the said application does not qualify as prior art. The provisional specification of the said application was filed on 9th July 2014. The provisional specification does not disclose an emulsifiable concentrate (EC) formulation. On the contrary, it discloses a suspo-emulsion (SE) formulation and contains an assertion that a SE formulation is superior to an EC formulation. In spite of this objection being raised in the reply statement to the pre-grant opposition (at pages 1026–1028 and pages 1036– 1038 of Volume
