“Reasons Are The Foundation Of Any Order": Calcutta High Court Allows Decco's Appeal Against Rejection Of Patent Application

The Calcutta High Court recently set aside an order passed by the Assistant Controller of Patents and Designs (“Controller”), rejecting a Patent Application filed by agrochemical multinational UPL's postharvest division Decco Worldwide (“the Appellants”) for their invention titled “A fungicidal treatment for black sigatoka,” to prevent leaf-disease that infects banana plants.The Assistant Controller of Patents and Designs objected to the patent application on the grounds that it was a non-patentable subject under Section 3(h) of the Patents Act, 1970 (“Act”), which deals with “agricultural and horticultural methods”. Further it was also adjudged that the Patent Application did not contain any clear disclosure under Section 10(4) of the Patents Act and that there was a lack of “obviousness and inventive steps” in the invention under Section 2(1) (ja) of the Patents Act.It was contented by the Counsels for the Appellant that insofar as the objection under Section 3(h) of the Act is concerned, i.e., that the subject invention was not patentable; the invention was in fact for a “process for treatment of plants to render them free from disease.” The appellants argued, that since Section 3(h) pertained to methods of agriculture or horticulture, it would not apply to an invention that dealt with a method of treatment which rendered plants free of disease. Further, Section 3(i) which covered method of treatment under Patent Law in India, had been amended in 2002 to remove “method of treatment of plants” from the scope of non-patentability. The respondents on the other hand argued that the invention that the Appellants have applied to get patented, uses chemicals such as Ortho-phenylphenol or “OPP” which are well-known fungicides and biocides in order to control Black Sigatoka sporulations. Thus, according to the respondents, the invention of the appellants does not contain any inventive steps due to being already known to skilled persons, and is barred under Section 3(d) of the Act, which makes incremental inventions, i.e., discovery of new uses for a previously known substance non-patentable due to it being a reproduction of “prior art.”Upon appreciating the facts on record, the single-judge bench of Justice Ravi Kishan Kapur held that the Controller’s decision that the invention lacked an incentive step was unreasoned, and a result of not appreciating the facts at hand. Justice Kapur opined, “The Controller has misdirected himself in appreciating the invention and comparing them with reference to the prior arts without understanding and appreciating the teachings thereof.” It was also noted that the Appellants had submitted within their application, annexures to the effect that any of the previously known uses of OPP would not lead to the Appellant’s invention for treatment of black sigatoka, either individually or in any combination.“I also find that in combining the prior arts D1 to D7, the Controller failed to appreciate the teachings thereof. It is important to read the claims of a patent application with their specifications. Thus, it is necessary to read the description of the invention before examining the claims. In Enercon vs Alloys Wobben (ORA/08/2009/PT/CH) Order no.123 of 2013, (Paragraph 43) the IPAB has observed that there has to be coherent thread leading from prior art to obviousness or there has to be reasonable expectation of success embedded in the prior art which motivates the skilled person. The tests for deciding inventive steps have been elaborately dealt in Avery Dennison Corporation vs. Controller of Patents and Designs (2022) SCC OnLine Del 3659 (Para 10-20), and the Controller has ignored the same in deciding the question of inventiveness.”Finally, in dealing with Section 10(4) of the Patent Act, the Court held that there was no opportunity for disclosure which was afforded to the applicants, since at the hearing before the Controller, “there was no whisper about any objection concerning the disclosure being insufficient for not fully or particularly disclosing the adjuvants as recited in claims 1-4”While setting aside the aforesaid order passed by the Assistant Controller of Patents and Designs dated 19th July 2021, Justice Kapur remanded the respondent authorities to adjudicate the subject patent application afresh including the question of patentability, after giving an opportunity of hearing to the appellant; although the observations made by the single-judge bench would be non-binding for the re-appraisal of the application. It was observed that:“In fact, no reasons have been given by the Controller as to why a method of treatment of plants to treat fungal diseases would fall within section 3(h) which covers traditional methods of agriculture. The Controller has also failed to explain why prevention of disease or treatment would fall under agriculture, when there is a separate provision under section 3(i) of the Act. It is evident from section 3(i) of the Act that, the treatment...

“Reasons Are The Foundation Of Any Order": Calcutta High Court Allows Decco's Appeal Against Rejection Of Patent Application

Srinjoy Das

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