Calcutta High Court
Decco Worldwide Post Harvest ... vs The Controller Of Patents And ... on 19 May, 2023
IN THE HIGH COURT AT CALCUTTA
SPECIAL JURISDICTION
ORIGINAL SIDE
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
AID NO. 11 OF 2021
IN THE MATTER OF
Decco Worldwide Post Harvest Holdings B.V & Anr.
Vs
The Controller of Patents and Designs & Anr.
For the appellants : Mr. Ranjan Bachawat, Senior Advocate
Mr. K.K Pandey, Advocate
Mr. Sarosij Dasgupta, Advocate
Ms. Mitul Dasgupta, Advocate
Ms. Enakshi Saha, Advocate
For the respondents : Mr. Indrajeet Dasgupta, Advocate
Ms. Puspita Bhowmick, Advocate
Ms. Rima Biswas, Advocate
Reserved on : 09.02.2023
Judgment on : 19.05.2023
Ravi Krishan Kapur, J.:
1. This is an appeal under section 117A of the Patents Act 1970 assailing
an order dated 19 July 2021 passed by the Assistant Controller of
Patents and Designs rejecting the Patent Application filed by the
appellants dated 7 January 2017.
2. Briefly, the appellant applied for grant of patent with regard to an
invention titled "A fungicidal treatment for black sigatoka" which
provides for a treatment method for black sigatoka, a leaf-spot disease
in banana plants, caused by the ascomycete fungus Mycosphaerella
fijiensis (Morelet) by use of Ortho-phenyphenol.
3. It is contended that the subject invention is a cost effective and
environment friendly method for treatment of black sigatoka which
eliminates and reduces synthesised chemical fungicides having a
significant environmental impact and leaves high residue in soil and
agricultural products. The invention also reduces the risk of
resistance (decreased sensitivity requiring large doses) and improves
the health and yield of the plant increasing in their economic value. It
is further contended that until this invention, there was no disclosure
or knowledge of any method involving application of the compound
Ortho-phenyphenol (OPP) or a salt thereof to control black Sigatoka in
banana plants. In short, the subject invention is for a "process of
treatment of plants to render them free from disease".
4. The objections raised in the FER dated 21 December 2018 were under
Section 2(1)(j), i.e., lack of novelty, 2(1)(ja), i.e., lack of inventive steps,
3(d) & 3(e), i.e., non-patentable invention, 3(h),i.e., method of
agriculture and 10(4) i.e., lack of clear and sufficient disclosure. The
appellants replied to the said FER on 20 June 2019 following which a
hearing notice dated 1 October 2020 was issued fixing the hearing on
5 November 2020. Thereafter, in view of the amendments carried out
by the appellants, some of the objections raised were waived by the
respondent authorities.
5. The main grounds for rejection of the application are set out as
follows:
a. The invention is not patentable under section 3(h) of the Act.
b. The invention does not disclose the best way of performing
the same and suffers from insufficiency of disclosure under
section 10(4) of the Act.
c. Lack of obviousness and inventive steps under section
2(1)(ja) of the Act. (against prior arts D1 to D7 as mentioned
in FER).
6. The appellants contend that the objections raised by the respondent
authorities are misconceived and untenable. In passing the impugned
order, the respondent no.2 considered the application under section
3(h) of the Act which deals with methods relating to agriculture and
horticulture whereas the subject invention pertains to a process of
treatment of plants to render them free and prevent diseases.
Moreover the Controller failed to provide any reasons in arriving at the
finding that the subject invention is not patentable under section 3(h)
of the Act and also ignored that similar inventions have been granted
patent by the Controller details whereof had been fully enumerated in
the petition. Significantly, this point has not even been adverted to nor
addressed in the submissions of the respondents.
7. It is further alleged that the Controller erred in holding claim nos. 1 to
4 (initially in the FER and subsequently in the impugned order) and
claims 11 to 13 (in the hearing notice) as claims lacking sufficient
disclosure was unsubstantiated and bereft of reasoning.
8. The appellants also allege that the refusal of the application by the
Controller for lack of inventive steps demonstrates that the Controller
misdirected himself in appreciating the invention and comparing the
same with reference to prior arts D1 to D7 without appreciating the
teachings of the same. The disclosure or teachings was in no way
relatable to black sigatoka.
9. On behalf of the respondents, it is contended that claim 12 of the
appellant's invention clearly mentions the use of salt of OPP and OPP
to control Black Sigatoka sporulations. The use of OPP as a fungicide
and biocide is well known to a skilled person. Hence, there is lack of
inventive steps in the subject invention. It is further contended that
use of reduced dosage of OPP, i.e., new use of a known substance
cannot be considered as an invention under section 3(d) of the Act.
The respondents further contend that the appellant's claims are
contradictory and inconsistent. Although, the invention claims to
eradicate fungus completely by the use of OPP however it is claimed
that the invention is only to partially eradicate the fungus.
10. Insofar as the objection under section 3(h) of the Act is concerned, i.e.
that the subject invention was not patentable, the case of the
appellant that the invention was for a "process for treatment of plants
to render them free from disease" has been rejected by the Controller.
Instead it has been held that the invention claimed is for a method of
agriculture which cannot be an invention under section 3(h) of the
Act. Sections 3(h) and 3(i) of the Act cover different categories of
invention. Section 3(h) is method of agriculture or horticulture which
does not contemplate treatment of plants to render them free of
disease whereas section 3(i) deals with the process of treatment or
prevention. The Amendment Act 38 of 2002 amended section 3(i) to
remove "or plants" from its scope. A comparison of the unamended
and amended provisions of section 3(i) is set out hereinbelow:
Section 3(i) originally under Section 3(i) under Patents Act, 1970
Patents Act, 1970 after amendment by Act 38 of 2002
(with effect from 20.05.2003)
(i) any process for the (i) any process for the medicinal,
medicinal, surgical, curative, surgical, curative, prophylactic
prophylactic diagnostic, diagnostic, therapeutic or other
therapeutic or other treatment of human beings or any
treatment of human beings process for a similar treatment of
or any process for a similar animals to render them free of
treatment of animals or disease or to increase their
plants to render them free economic value or that of their
of disease or to increase products.
their economic value or that
of their products.
11. In passing the impugned order the Controller has failed to explain why
the subject patent application falls within the category of
"agriculture". 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 of plants do not fall within
the purview of non patentability and the Manual being a mere guiding
factor to the statutory provisions of the Act cannot have an overriding
effect over the Act. Thus, the finding that the subject invention falls
within the definition of "agriculture" does not deal with the
submissions of the appellants. In this connection, reliance was also
placed by the appellants on the numerous inventions dealing with
treatments of plants enumerated in the petition which have been
totally ignored in the impugned order. Reasons are the foundation of
any order passed by any judicial or quasi judicial authority. The main
objective of providing reasons in any order is to provide clarity to the
reader and to understand how and why and how the matter has been
proceeded and dealt with by the Authority [Kranti Associates Private
Limited & Anr. vs. Masood Ahmed Khan & Ors. (2010) 9 SCC 496,
Uniworth Resorts Ltd. & Anr. vs. Ashok Mittal & Ors. 2007 SCC OnLine
Cal 535 and Santanu Ghosh & Ors. Vs. The State Bank of India & Ors.
(2013) 3 CLT 486].
12. Moreover, in arriving at the finding that the subject patent lacked
sufficiency of disclosure under section 10(4) of the Act, no adequate
opportunity was afforded to the appellants. Significantly, 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 to 4. The
finding on insufficiency of disclosure also ignores the complete
specifications provided by the appellant where the adjuvants have
been clearly mentioned.
13. I also find that the finding that the subject invention lacked inventive
steps is unreasoned and without appreciating the facts. 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. The Written Submissions filed on
behalf of the appellants which highlighted the data provided in the
prior arts, which focuses mainly on combined use of two actives has
not been considered in the impugned order and is silent about the use
of Ortho-phenyphenol per se. Each of the prior arts relied on by the
Controller had been distinguished to contend that D1 to D7 either
alone or read in combination would not lead to the subject invention
for treatment of black sigatoka caused by Mycosphaerellafijiensis and
are not relevant to the point in issue. This aspect of the matter has
also not been considered in the impugned order. In this connection, it
has been held that the proper way to construe a specification is to
first read that description of the invention and then see the claims
[Bishwanath Prasad Radhey Shyam vs. Hindustan Metal Industries
(1979) 2 SCC 511 paragraphs 43-44].
14. There has also been no combination of the prior arts which would
help in determining whether the claimed invention was lacking in
inventive steps. 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.
15. For the foregoing reasons, the order dated 19 July 2021 is
unsustainable and set aside. The matter is remanded to the
respondent authorities to adjudicate the subject patent application
afresh including the question of patentability, after giving an
opportunity of hearing to the appellant. It is made clear that the
aforesaid findings insofar as the merits of the case are concerned, are
prima facie and not binding on the Controller.
16. With the aforesaid directions, AID 11 of 2011 stands allowed.
(Ravi Krishan Kapur, J.)
