Summary
The Calcutta High Court set aside the rejection of a patent application filed by UPL Ltd., involving innovative fungicidal combinations. The Court found that the rejection order issued by the Controller lacked detailed reasoning and had procedural deficiencies, particularly concerning inventive step and treatment of experimental data.
Patent applicants in India often encounter patent refusals that lack detailed reasoning and are marred by procedural lapses. In a similar instance, the Calcutta High Court was called to overturn the Controller’s decision rejecting a patent application on the grounds of lack of inventive step under Section 2(1)(j) and 3(e) of the Patents Act.
UPL Ltd. (“hereinafter referred to as “Appellant”) filed a patent application titled ‘fungicidal combinations’ bearing number 201731008009 before the Indian Patent Office on 7th March, 2017. The patent application was related to a fungicidal formulation comprising a combination of succinate dehydrogenase inhibitor (SDHI) fungicides with at least one other fungicide and a multi-site fungicide to improve disease control and overcome resistance issues commonly observed with known fungicide combinations.
The Appellant claimed that the invention delivered unexpected advantages by improving the spectrum of disease control and reducing fungal resistance through a synergistic combination of these fungicides. The invention was supported by experimental data provided in several tables demonstrating enhanced efficacy over known formulations. Despite the data provided by the Applicant, the application was rejected by the Controller on the grounds that the invention lacked inventive step under Section 2(1)(j) and was merely an admixture under Section 3(e) of the Patents Act. The Controller concluded that the claimed improvement in disease control was marginal and attributable to known effects of adding another fungicide which did not involve any inventive step or synergistic effect.
The Appellant challenged the rejection, arguing that the Controller failed to consider all the submitted data, including Tables 1, 2, and 3, and had selectively relied only on Table 4. It was further submitted that the order lacked reasoning as to how the combination of prior art documents D4–D10 would render the invention obvious. The Appellant also pointed out procedural irregularities, including failure by the Patent Office in issuing a Second Examination Report despite the re-examination and introduction of new prior art documents during the hearing stage.
While analyzing the issues, the Court observed that the impugned order failed to provide sufficient reasoning to support the conclusion that the invention lacked inventive step. The Court relied upon the tests as laid out in Avery Dennison Corporation v. Controller of Patents and Designs, for analyzing lack of inventive step. The Court clarified that the Controller was obliged to discuss what the existing knowledge was and how a person skilled in the art would move from the existing knowledge to the subject invention. The Court further clarified that, since most inventions are combinations of known elements, the mere presence of individual components in prior art does not, by itself, attract Section 3(e). The Court also noted that the Controller had not properly examined the experimental data or considered the invention as a whole. The Court further pointed out that the failure to issue a Second Examination Report was a procedural infirmity that prejudiced the Appellant’s right to respond.
Accordingly, the Court set aside the impugned order and remanded the matter to the Controller for fresh consideration. The Controller was directed to provide a reasoned decision within four months of granting the Appellant an opportunity to be heard.
Citation: UPL Ltd. v. Controller of Patents & Designs, IPDPTA/2/2025 (H.C. Calcutta Apr. 30, 2025). Available at: https://indiankanoon.org/doc/197814319/
Article and Accessibility Reviewed by: Gaurav Mishra
