Summary
The Madras High Court, in M/s Rallis India Limited v. Deputy Controller of Patents and Others, set aside the refusal of Indian Patent Application No. 4135/CHEN/2014, which had been rejected on the grounds of anticipation and obviousness in view of prior art IN 2243/MUM/2014. The Court observed that the Patent Office had failed to address a critical objection raised by the applicant - whether the provisional specification of IN 2243/MUM/2014 actually disclosed the claimed formulation at its priority date, since the formulation in question appeared only later in the complete specification. Finding the refusal order unsustainable, the Court remanded the application to a different officer for fresh consideration.
Background
M/s Rallis India Ltd. (hereafter “Rallis”), filed Indian Patent Application No. 4135/CHEN/2014 on 25 August 2014, titled “Stable Herbicidal Composition comprising Pendimethalin and Metribuzin.” The invention related to a stable herbicidal emulsifiable concentrate (EC) premix composition comprising Pendimethalin and Metribuzin.
The First Examination Report (FER) dated 22 July 2019 raised objections on novelty, inventive step, and patentability (Sections 3(d) & 3(e)). Meanwhile, a first pre-grant opposition was filed by M/s. Haryana Pesticide Manufactures Association (hereafter “HPMA”), followed later by a second opposition from Mr. Chimanbhai Chauhan. Both oppositions relied heavily on a prior Indian application IN 2243/MUM/2014 (hereafter “D3”).
The Patent Office rejected the Rallis’ application on 5 March 2024, holding that the invention lacked novelty and inventive step, primarily in view of D3. Rallis challenged this order before the High Court.
Arguments by Parties
Rallis submitted that the rejection based on D3 was untenable. They argued that the provisional specification of D3 disclosed only a suspo-emulsion (SE) formulation and contained no teaching on an emulsifiable concentrate (EC) formulation. According to Rallis, the EC formulation appeared for the first time only in the complete specification of D3, which was filed on 30 December 2014, well after the priority date of their own application. Consequently, they maintained that D3 could not be considered as prior art for assessing the patentability of their EC claims. They contended that despite raising this objection in the reply to the pre-grant opposition and in written submissions during the pre-grant opposition hearing, no finding on this point appeared in the impugned order. Further, Rallis added that the D3 patent should be deemed revoked owing to the patentee’s failure to file a reply in the post-grant opposition proceedings initiated by Rallis.
Rallis also submitted that the claimed EC formulation was materially distinct, notably in excipients and absence of insoluble solids, and exhibited a synergistic effect between Pendimethalin and Metribuzin, as demonstrated in Table 1 of the specification. The argued that other cited prior arts, D1 and D2, did not disclose the claimed concentration ranges nor an EC formulation and, accordingly the Section 3(e) objection was without merit.
The Controller maintained that D3 disclosed overlapping concentration ranges for Pendimethalin and Metribuzin. He argued that the EC formulation offered no technical advancement over the prior art and that the comparative data submitted was unscientific.
The pre-grant opponents asserted that the claimed invention was anticipated by D3 and other prior art (D1, D2), and that differences were obvious to a skilled person. They asserted no synergistic effect existed to justify patentability.
Key Issue
The key issue before the Court was whether Rallis’ EC formulation constituted a patentable invention in light of prior art D3, considering the priority date, material differences in formulation, and claimed synergistic effects.
Observations by the Court
The Court noted that the impugned order did not address Rallis’ argument that D3’s provisional specification did not disclose an EC formulation and whether D3 should be considered prior art. The court examined Section 11(2) of the Patents Act regarding priority dates and found prima facie merit in the Rallis’ contention.
The Court also observed that other prior art documents cited by the respondents were not fully discussed, and the affidavits clarifying formulation differences were not considered. The Court underscored that the failure to record a finding on the critical issue of whether D3’s EC formulation claim could be considered prior art undermined the impugned order.
Conclusion
In view of the above discussed dimensions, the Madras High Court set aside the impugned order dated 5 March 2024 and remanded the matter for reconsideration. The Court directed that a different officer should review the case, provide the parties with a reasonable opportunity, and issue a speaking order within four months. All contentions regarding priority dates, post-grant opposition, and patentability were left open for consideration by the officer on remand.
Citation: M/S. Rallis India Limited vs Deputy Controller Of Patents And Ors, 20 November 2025, Madras HC, C.M.A.(PT) No.21 of 2024.
Available at: https://indiankanoon.org/doc/75442456/
Article Review: Dr. Vasundhara Paliwal
Accessibility Review: Rakesh Krishnan