[Cites 9, Cited by 0]
Delhi High Court
Crystal Crop Protection Limited vs Sudpita Dey Assistant Controller Of ... on 8 April, 2026
Author: Tushar Rao Gedela
Bench: Tushar Rao Gedela
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 16.02.2026
Judgment delivered on: 08.04.2026
+ C.A.(COMM.IPD-PAT) 86/2022
CRYSTAL CROP PROTECTION LIMITED .....Appellant
versus
SUDPITA DEY ASSISTANT CONTROLLER OF PATENTS AND
DESIGNS & ORS. .....Respondents
Advocates who appeared in this case:
For the Appellant : Mr. Priyam Lizmary Cherian and Ms. Shruti Jain,
Advocates
For the Respondents : Ms. Pratima N. Lakra, CGSC with Mr. Shailendra
Kumar Mishra and Mr. Abhishek Sharma,
Advocates for R-1 Mr.Ajay Amitabh Suman and Mr.
Shravan Kumar Bansal, Advocates for R-3
CORAM:
HON'BLE MR. JUSTICE TUSHAR RAO GEDELA
JUDGMENT
TUSHAR RAO GEDELA, J.
1. Present appeal has been filed under Section 117A of the Patents Act,
1970 (hereinafter referred to as "the Act") assailing the order dated
11.01.2022 passed by the Assistant Controller (hereinafter referred to as
"learned AC") of Patents and Designs under Section 25(1) of the Act,
refusing the grant of patent application no.1607/DEL/2010 (hereinafter
referred to as "subject application").
BRIEF FACTS:-
2. The appellant had submitted the Patent Application no. 1607/DEL/2010
in respect of an Insecticidal Composition was filed on 08.07.2010. The First
Examination Report (hereinafter referred to as "FER") was furnished on
26.05.2017 and the response thereto was submitted by the appellant on
22.09.2017. The appellant had amended its claims vide communication dated
22.11.2019. It is stated that between the years 2017 and 2021, four pre-grant
oppositions were filed against the said application and the appellant had filed
replies thereto.
3. The first hearing notice was issued on 03.09.2021, however, the
appellant sought adjournment, which was granted. Subsequently, the Assistant
Controller heard the arguments on 23.11.2021 before passing the impugned
order on 11.01.2022. It is this order which is challenged before this Court by
way of the present appeal.
4. The appellant claims that the subject application provides a broad
spectrum insecticidal composition for controlling a wide range of insects,
namely: (i) biting and chewing types (Spodoptera, Fruit Borer, Helicoverpa)
and (ii) the sucking types (mites, leaf miners and thrips). The appellant claims
that there does not exist a single insecticidal composition which is effective
against a wide range of insects, which would include the biting and chewing
types as also the sucking types. It claims that different types of insecticides are
used for different varieties of insects, thereby increasing the cost and causing
considerable economic loss.
5. The appellant claims that to overcome the limitations in the prior art, a
broad spectrum insecticidal composition was needed and subject application is
one such insecticidal composition. Primarily, the appellant claims the use of
"Fipronil", which is a member of the Phenyl-Pyrazole Class of pesticides,
which is a systemic and contact insecticide disrupting the central nervous
system by blocking the GABA (gamma-aminobutyric acid) receptor and
glutamate-gated chloride channels (GluCI) and Emamectin Benzoate (EB),
which is a member of the Avermectin Class of pesticides and is a contact
insecticide blocking the neurotransmitter GABA. The composition comprises
Fipronil (F) and Emamectin Benzoate (EB) in specific weight concentrations
namely, 3.5% w/w of F and 1.5% w/w of EB, formulated as a suspension
concentrate (SC) formulation. It is claimed that the combination of F & EB
exhibits an enhanced insecticidal activity at a much lower concentration than
when either of them is used alone, thereby confirming a surprising synergistic
effect. The appellant claims that if a combination of two active ingredients
leads to a synergistic effect which is over and above the additive effect, then
such a synergistic combination is entitled to patent protection as laid down by
this Court in Biomoneta Research Pvt. Ltd. vs. Controller General of
Patents, Designs and Anr., reported in 2023 SCC OnLine Del 1482.
6. The independent claim 1 of the subject application is stated as under:
"1. An insecticidal composition comprising synergistically effective amount of
Fipronil and Emamectin Benzoate, wherein Fipronil weight concentration in
the said composition is 3.5% w/w, Emamectin Benzoate weight concentration
in the said composition is 1.5% w/w, and the said composition is in the form
of a suspension concentrate (SC)".
7. The appellant states that the rejection vide the impugned order is on the
grounds of (a) lack of novelty; (b) lack of inventive step and (c) non-
patentability under Section 3(d) of the Act.
8. Learned counsel appearing for the appellant submits that a perusal of
the impugned order would reflect a clear non-application of mind with regard
to the conclusion of lack of novelty, inasmuch as no reasons or grounds for
reaching such a conclusion have been provided by the learned AC. Equally,
she submits that so far as the conclusion of lack of inventive step is concerned
as well, no reasons whatsoever have been provided as to why the appellant's
submissions in that regard are not acceptable.
9. She further submits that the conclusion of the invention does not meet
the requirement under Section 3(d) of the Act has been reached without
providing any reasons as to why the activity supplied in the complete
specification is not acceptable. In fact, according to learned counsel, the
impugned order merely reproduces the post-hearing submissions of the pre-
grant opposition in lieu of recording independent findings, which are
mandated to be provided by the learned AC, who functions as a quasi-judicial
authority. Learned counsel submitted that the mere observations that the
"arguments regarding the instant composition as a suspension concentrate is
not convincing", cannot be construed as a proper application of mind by the
learned AC. On that short ground, Mr. Priyam Lizmary Cherian, learned
counsel would contend that the impugned order be quashed and the appeal be
allowed by remitting the subject application back to the learned AC for de
novo consideration of the entire claims.
10. In support of the above, learned counsel had advanced the following
submissions, which are reproduced in a tabulated form for the sake of clarity
and convenience:
"Prior Arts for Rejection on Grounds of Lack of Novelty and Inventive Step
Prior Art Discussion in the Impugned Order Principles of Patent law
ignored by the
Impugned Order
Title: Disclosure of CN1969627 (CN‟627): The Ld. Controller has
"A Composite failed to deal with the
Fipronil Insecticide" CN‟627 discloses an insecticide Appellant‟s arguments
(Relied on By comprising 3.5% Fipronil and 1.5% of that:
Respondent No. 2,3,4 Emamectin benzoate (Please see 1. The specific
and 5 in Pre grant embodiment 5 on page 19 of CN‟627). combination of 3.5%
and Respondent No. CN‟627 also discloses that an w/w Fipronil (F) + 1.5%
1 in Refusal order) insecticide composition can be w/w Emamectin
formulated as suspension. In particular, Benzoate (EB) in SC
CN‟627 discloses in claim 8 an formulation without a
insecticide composition in the form of synergist, as the present
suspension. invention, is not
CN‟627 also discloses a formulation disclosed in any claims
comprising Fipronil and Emamectin of CN‟627.
benzoate along with one or more 2. Claim 1 only discloses
adjuvants, including wetting agent a range of 0.5-15% F,
(Please see claim 2), 0.1-10% EB and other
dispersant/dispersion agent (Please see auxiliary
claim 2), emulsifying agent (Please see agents formulated as
claim 5), solvent (Please see claim 5). miscible oil, wetting
The amount of adjuvants is the same as powder, suspending
that claimed in claim 4 of the impugned agent, or microemulsion.
application. (Please see claims of It does not disclose the
CN‟627). specific selection from
CN‟627 also teaches that the said the range, and it does
insecticide composition can be used for not disclose any
controlling rice borer, plant hopper, formulation as a SC.
diamondback moth, beet armyworm, Hence, generic
cigarette beetle and cotton bollworm disclosure in the prior
(Please see abstract and claim 1 of art may not necessarily
CN‟627) take away the novelty of
Embodiment 5 of CN‟627: the specific disclosure.
5% Fipronil and Emamectin Benzoate 3. Embodiment 5 is an
miscible oil (by weight): EC formulation and not
SC, as claimed. EC and
SC cannot be treated
interchangeably. They
are completely different
chemical formulations
having different
properties such as (i)
different size of active
ingredients, (ii) SC is
water based thus more
environment friendly
present set of claims of the impugned over EC which is an
application; and not relevant for emulsifiable oil,
Novelty. However, the office finds that, (iii), their interaction
the composition of 3.5% w/w Fipronil with soil therefore
and 1.5% w/w Emamectin Benzoate as differs and they have
claimed in the claims 1 to 4 of the different environmental
impugned application are being effects accordingly.
anticipated by the disclosure of any one 4. Further, Embodiment
of the CN‟627 or CN‟546. 5 necessarily comprises
Therefore, the Novelty for the claims 1 a synergistic agent
to 4 of the impugned application has which is absent in the
not been acknowledged vis-à-vis claimed invention. Even,
disclosure of CN‟627 or CN‟546. all the remaining other
Embodiments, i.e. 1-4
and 6-12 comprise the
combination of F and
EB along with a
synergistic agent
(necessarily) and in a
different formulation
types other than SC
formulation, as claimed
in the present invention.
Thus, the claimed
invention cannot be hit
by novelty in light of
CN‟627. Hence, CN‟627
clearly teaches away
from the claimed
invention.
The Ld. Controller has
erred in relying on
CN‟627 for both -
novelty and for inventive
step. The same prior art
cannot render an
invention as lacking
novelty (when tested on
a standalone basis) and
also lacking inventive
step (when it is
combined with other
prior arts). Without
Prejudice:
5. As synergistic agent is
an essential component
of CN‟627, CN‟627
actually teaches away
from engaging in
experiment without a
synergistic agent. Lack
of synergistic agent is an
essential component of
claimed invention.
6. There is nothing in
CN‟627 which teaches,
suggests or motivates a
person to experiment a
combination of F+EB
without a synergist.
7. There is also no
teaching for SC, let
alone preference for SC
in CN‟627. There is no
reason why a person
skilled in the art would
attempt a SC based on
reading of CN ‟627
either alone or in any
combination/ mosaic
with other prior art(s) or
common general
knowledge of the field.
8. Further, for an
invention to lack novelty,
a single prior art must
anticipate all the
features of the invention,
but the CN‟627 does not
have all the features as
claimed in the present
invention. Hence, the Ld.
Controller has erred in
relying of CN‟627 for
novelty.
CN‟546 Disclosure of CN101019546 (CN‟546): The Ld. Controller has
Title: "A kind of failed to deal with the
pesticide mixture of Example 5 of CN‟546 is describing the Appellant‟s arguments
emamectin benzoate active ingredients Emamectin Benzoate that:
andfipronil" (Relied (1.5%) and Fipronil (3.5%), which is 1. The specific
on exactly the composition claimed by the combination of 3.5%
by Respondent No. subject matter of the present impugned w/w F + 1.5% w/w EB
2,3,4 application. in SC formulation
and 5 in Pre grant without a synergist, as
and Respondent No. Further, paragraph 6, page 4 of the present invention, is
1 in Refusal order CN‟546 distinctly states that the not disclosed in an claim
composition can be formulated either of CN‟546.
as emulsifiable oils, microemulsions 2. Claim 1 (Pg. 522 of
and aqueous emulsions. Appeal paperbook) only
present set of claims of the impugned discloses a range of 0.2-
application; and not relevant for 10% F, 0.1-10% EB and
Novelty. However, the office finds that, other functional
the composition of 3.5% w/w Fipronil aid/adjuvants, organic
and 1.5% w/w Emamectin Benzoate as solvent or carrier.
claimed in the claims 1 to 4 of the Hence, generic
impugned application are being disclosure in the prior
anticipated by the disclosure of any one art may not necessarily
of the CN‟627 or CN‟546. take away the
novelty of the specific
Therefore, the Novelty for the claims 1 disclosure. Further,
to 4 of the impugned application has organic solvent is an EC
not been acknowledged vis-à-vis formulation, in contrast
disclosure of CN‟627 or CN‟546. to the SC formulation, as
in the present invention.
3. Although Example 5
(Pg. 525 of Appeal
paperbook) teaches F as
3.5% and EB as 1.5%
but only as a
combination with
organic solvent in an
emulsion oil that is a EC
formulation whereas the
present invention is in
SC formulation.
4. Further, Table at
page 525 of appeal
paperbook discloses a
combination of F and
EB applied as
emulsifiable oil at very
higher dosage of 20g/mu
(21.4g/acre) than in the
claimed invention at
10g/acre. Thus, clearly
the claimed invention
cannot be hit by novelty
in light of teachings in
CN‟546.
Similarly, the Ld.
Controller has erred in
relying on CN‟546 for
both - novelty and for
inventive step. The same
prior art cannot render
an invention as lacking
novelty (when tested on
a standalone basis) and
also lacking inventive
step (when it is
combined with other
prior arts). Without
Prejudice:
1. CN‟546 does not
teach, suggest or
motivate the person
skilled in the art about
the synergist, hence
teaches away.
2. The present claimed
invention does not
comprise an organic
solvent as present in
CN‟546, hence teaching
away. There is no
reason in CN‟546 to
make/prefer SC over
emulsion oils.
3. Moreover, for an
invention to lack novelty,
it must be fully disclosed
and present in its
entirety within a single
prior art reference,
accompanied by
adequate information. In
this context, CN‟546
fails to invalidate the
present invention on
novelty grounds, as it
does not fulfil this
criterion.
CN‟037 Disclosure of CN1911037 (CN‟037): Principles of Patent law
Title: ignored by the Impugned
"Compound CN‟037 discloses a composite Order
insecticides insecticide for controlling rice pests
for controlling rice comprising combination of Fipronil and The Ld. Controller has
Insects" (Relied on by Emamectin Benzoate, wherein the mass failed to deal with the
Respondent No. 4 ratio of Fipronil to Emamectin Appellant‟s arguments
and 5 Benzoate is 0.25-10 : 0.01-5 (see, that:
in Pre grant and CN‟037, claims 5 and 6; and page 4, 1. The specific
Respondent No. 1 in last two paragraphs and page 5, 1st combination of 3.5%
refusal order) paragraph). w/w F + 1.5% w/w EB
in SC formulation
In addition, CN‟037 explicitly discloses without a synergist, as in
examples of Fipronil-Emamectin the present invention, is
Benzoate suspension concentrate (SC) not disclosed in any
formulations (see, CN‟037, Page 9). claims of CN‟037 except
Further, CN‟037 also demonstrates for a broad range.
existence of synergism between Fipronil Hence, disclosure of a
and Emamectin Benzoate (see, CN‟037, broad range in the prior
Page 5, 5th paragraph; and Page 11, art will not by itself it
under „Field control experiment‟). renders as obvious.
With regards to CN‟037, discloses an 2. The exemplified
insecticide composition for the control formulation of CN‟037
of rice insects comprising Fipronil and as in the order at
Emamectin benzoate, wherein the mass example 2 at page 536-
ratio of Fipronil to Emamectin 537 of appeal paperbook
benzoate is in the range of 0.25 to 10: discloses a combination
0.01 to 5 (covering the wt% of Fipronil of F and EB in a
(3.5%) and Emamectin benzoate (1.5%) suspending agent
as claimed in claim 1 of the impugned formulation, but in
application) formulated into suspension different concentrations,
formulation. Hence, the claims of the as claimed in the present
present impugned application (claims invention.
1-4) are obvious in view of the No teaching/motivation
teachings of the document CN‟037 to deviate from the
either singly or when taken in particular exemplified
combination with either of documents concentration of F and
CN‟546, CN‟627 or CN‟055. EB, let alone arrive at
the specific
From the disclosure of CN‟160 concentrations claimed
[suspension concentrate (see page 4, in present invention.
lines 19-21) pesticidal composition 3. Further, the „Field
comprises 5% Fipronil with 1% Control experiment‟ in
Emamectin benzoate; 3% Fipronil with CN‟037 teaches away
0.2% Emamectin Benzoate and 4% the person skilled in the
Fipronil along with 0.5% Emamectin art from the present
benzoate (See example 1)]; and CN‟037 invention with
[suspension concentrate (see, CN‟037, combination of F and
Page 9) pesticidal composition EB by teaching that the
comprises 0.25 or 10 wt% Fipronil with combination of fipronil
0.01 or 5 wt% Emamectin benzoate], it and chlorpyrifos is more
is obvious for a person skilled in the art effective in control of
to arrive at the teachings of the present rice leaf roller borer
impugned invention without exercising over the combination of
any inventive activity. Accordingly, all F and EB. Further, the
the claims (claims 1-4) of the present combination of fipronil
impugned application are obvious in + chlorpyrifos is more
view of the teachings of the document effective in control of
CN‟160 and/or CN‟037 either singly or rice stem borer over the
when taken in combination with combination of F and
common general knowledge; or when EB. (Pg 539 of appeal
taken in combination with the paperbook)
disclosure of CN‟627 and/or CN‟546.
The Ld. Controller is
erred in relying on
CN‟037 for inventive
step as he has not
disclosed the specific
portion of the prior art
that as per the order that
teaches, suggests or
motivates the person
skilled in the art to
arrive at the claimed
invention. Rather,
CN‟037 clearly teaches
away from the claimed
invention. The Ld.
Controller has erred in
ignoring the settled
principle of law that if a
prior art teaches away,
rather than towards the
claimed invention is not
even a relevant prior art
for inventive step.
ADDITIONAL PRIOR ARTS FOR REJECTION ON GROUND OF LACK OF
INVENTIVE STEP ALONE
CN‟055 Disclosure of CN101066055A The Ld. Controller has
"Title: A kind (CN‟055) failed to deal with the
of pesticide Appellant‟s arguments
composition CN‟055 discloses Emamectin Benzoate- that:
containing 0.1 to 5% with any combination of 1. The specific
emamectin either Fipronil, chlorfenapyr and combination of 3.5%
benzoate" diafenthiuron in any proportion. w/w F + 1.5% w/w EB
The Ld. Controller CN‟055 discloses a pesticidal in SC formulation
has failed to deal composition containing 0.2% - 30% without a synergist, as in
with the Appellant‟s Fipronil and 0.1%-5% Emamectin the present invention, is
arguments that: Benzoate (See claim 1 of CN‟055). In not disclosed in any
1. The specific example 5, Emamectin Benzoate is claims of CN‟055, rather
combination of 3.5% specifically mentioned to be 0.5% along CN‟055 is completely
w/w F + 1.5% w/w with Fipronil-5% along with adjuvants. contrary in teaching the
EB in SC formulation (See claims 1-5 of CN‟055). The presence of a synergistic
without a synergist, adjuvants disclosed in CN‟055 include agent as an essential
as in the present emulsifying agents, solvents and component in the
invention, is not synergist (See claim 1 - 5 of CN‟055). following disclosure:
disclosed in any Further, CN‟055 discloses that the a. Claim 1: EB (0.1 -
claims amount of adjuvants is about 50% to 5%) + Compound B
of CN‟055, rather 95% w/w (see claim 1 of CN‟055, (0.2% - 30%) +
CN‟055 is completely composition 1 and 2 mentioned under Synergist- 0.1-5% +
contrary in teaching Table 2, on page 9). Table 2 on page 9 Emulsifying Agent- (5-
the presence of a of CN‟055 showed the efficacy test 20%) +Solvent- (45-
synergistic agent as results of the composition which is a 90%) (Pg. 546 of Appeal
an essential mixture of Emamectin Benzoate (0.5%) paperbook) 7
component in the and Fipronil (5%), wherein the tests (Relied on by
following disclosure: indicated the control efficiency of Respondent No. 2 and 3
a. Claim 1: EB (0.1 - 98.62%. in Pre grant And
5%) + Compound B Respondent No. 1 in
(0.2% - 30%) + Similarly, from the disclosure of refusal order)
Synergist- 0.1-5% CN‟055 & CN‟970, a person skilled in b. Example 5- F (5%) +
+ Emulsifying Agent- the art would not face any difficulty EB (0.5%) + Synergist
(5-20%) +Solvent- whatsoever and would not be required (4%) + Emulsifying
(45-90%) (Pg. 546 of to have any ingenuity to apply the Agent
Appeal teachings of (15%) [Adjuvant] as EC
paperbook) (Pg. 556 of Appeal
cited documents CN‟055 and/or paperbook)
CN‟970 to arrive at the present 2. All the remaining
invention. Moreover, the claims of the other Examples, i.e. 1-4
present impugned application (claims and 6 comprise the
1-4) are obvious in view of the combination of EB with
teachings of the document CN‟970 other active ingredient,
either singly or when taken in but not F+EB and also
combination with either of documents present in a different
CN‟546, CN‟627 or CN‟055 or formulation type than
common general knowledge. SC formulation, as
claimed in the present
invention.
Hence, CN‟627 clearly
teaches away from the
claimed invention.
3. Hence, it has not been
explained in the Order
as to why a person
skilled in the art would
consider synergist as an
optional element when
CN‟055 teaches away
from this. It is trite that
while mosaicking the
prior art with the
claimed invention, there
must be a coherent
thread leading from the
prior art to the claimed
invention where tracing
the thread must be an
act which follows
obviously, that was not
the case present here.
4. Further, formulation
type EC as claimed in
CN‟055 is different than
the SC type
claimed in the present
invention, hence teaches
away.
CN‟160 Disclosure of CN1579160 (CN‟160): The Ld. Controller has
Title: failed to deal with the
"Synergistic CN‟160 discloses a synergistical Appellant‟s arguments
Pesticidal pesticide composition comprising that:
Composition" (Relied Fipronil and Emamectin Benzoate in 1. The specific
on by Respondent No. the weight ratio of Fipronil and combination of 3.5%
2 in pre grant and Emamectin Benzoate is 1-50:1. (See w/w F + 1.5% w/w EB
Respondent No. 1 in claim 2 of CN „160). Specific examples in SC formulation
refusal order) are taught in CN‟160, wherein the without a synergist, as in
pesticidal composition comprises 5% the present invention, is
Fipronil with 1% Emamectin benzoate; not disclosed in any
3% Fipronil with 0.2% Emamectin claims or examples of
Benzoate and 4% Fipronil along with CN‟160.
0.5% Emamectin benzoate (See 2. Claims 1 and 2 (page
example 1). It is evident that the active 541 of Appeal
ingredients Fipronil and Emamectin Paperbook) disclose a
benzoate and their amount are combination of F +
disclosed in CN‟160. active ingredient B [B
being EB (Abstract)] in
CN‟160 also discloses that an the preferrable range, 1-
insecticide composition can be 30:1, in contrast to the
formulated as suspension (Please see ratio of F and EB as
abstract and claim 4 of CN‟160). In claimed in the present
particular, CN‟160 discloses the invention, i.e., 2.33:1.
method of preparation of the insecticide 3. Further, the table
composition in the form of suspension (Exploit Example 2 at
(Please see page 4, lines 19-21 of page 544 of Appeal
CN‟160). paperbook) in CN‟160
discloses the ratio of F
CN‟160 discloses the use of one or to EB showing the most
more adjuvants in formulation effective control is at
comprising Fipronil and Emamectin 1:1 contrary to the
Benzoate (See claims of CN‟160). preferred ratio of 2.33:1
CN‟160 discloses a long list of as in claimed invention.
adjuvants, including wetting agent (see
claim 2), dispersant/dispersing agent The CN‟160 does not in
(see claim 2), emulsifying agent (see any way teach, motivate
claim 5), solvent (see claim 5). The or suggest the person
amount of adjuvants is the same as that skilled in the art to
claimed in claim 4 of the impugned particularly arrive at the
application (See claims of CN‟160). invention as claimed
herein and rather the
CN‟160 discloses that the said disclosure therein
insecticidal composition can be used teaches away.
for preventing and treating various
forest pests, such as rice stem borers,
plant hoppers and vegetable aphids
(Please see abstract and claim 5 of
CN‟160).
CN‟970 Disclosure of CN101151970A The Ld. Controller has
Title: (CN‟970) failed to deal with the
"Fipronil insecticidal Appellant‟s arguments
composition" (Relied CN‟970 discloses insecticidal that:
on by Respondent No. composition containing Fipronil and 1. The specific
3 and 4 in Pre grant Emamectin or its derivative Emamectin combination of 3.5%
and Respondent No. Benzoate as active ingredients in a w/w F + 1.5% w/w EB
1 in refusal order) weight ratio of 1:10 to 10:1 between the in SC formulation
active ingredients (See abstract of without a synergist, as in
CN‟970), along with adjuvants (page 4 the present invention, is
of CN‟970). Paragraph 4 describes the not disclosed in any
various suitable dosage forms, eg. claims or examples of
Wettable powder, water soluble CN‟160 rather none of
powder, water-dispersible granule, pill, the Examples 1-3 of
tablet, paste, aqueous suspension, CN‟970 disclose F+EB
emulsion etc. Paragraph 6 describes in the claimed SC
suitable adjuvants used in the claimed formulation. Hence,
formulation. Example 2 and Example 3 there is no teaching in
of CN‟970 which specifically discloses CN‟970 to arrive at the
2% Emamectin Benzoate and Fipronil presently claimed
microemulsion formulation (Fipronil- concentrations.
1% and Emamectin Benzoate-1%) and 2. Claim 2 (page 559 of
3.3% Emamectin Benzoate and Fipronil Appeal Paperbook)
microemulsion formulation (Fipronil- discloses F (1:10) + EB
0.3% and Emamectin Benzoate-3%) (10:1) but in broad
respectively. Control efficiency of these ranges. Hence,
example 2 and example 3 preparations disclosure of a broad
of CN‟970 were found to be 94.16% range in the prior art
and 94.13% respectively (See page 5/7, will not by itself render
example 8), which is beyond what is it as obvious.
claimed in the present impugned 3. Further, the CN‟970
application. teaches away by noting
that the combination of
fipronil +
Similarly, from the disclosure of avermectin is more
CN‟055 & CN‟970, a person skilled in efficacious than the
the art would not face any difficulty combination of F+EB
whatsoever and would not be required (Pg. 566 of
to have any ingenuity to apply the Appeal paperbook)
teachings of...
The Ld. Controller has
cited documents CN‟055 and/or considered "Suspension
CN‟970 to arrive at the present Concentrate" (SC) as a
invention. Moreover, the claims of the stand-alone feature of
present impugned application (claims the invention as a whole
1-4) are obvious in view of the and, for the purposes of
teachings of the document CN‟970 inventive step, has
either singly or when taken in wrongly opined that
combination with either of documents formulating a SC forms
CN‟546, CN‟627 or CN‟055 or part of the common
common general knowledge. general knowledge.
The office further finds that, While admittedly SC as
formulation of a composition into a a formulation type is
suspension form is a standard practice, known, the prior arts do
practiced routinely by a person skilled not provide any
in the art, and hence, formulating a preference for the same
composition into a suspension form, or teaches functional
using the method very well-known equivalence, let alone in
conventionally, forms part of the the context of the
common general knowledge to the presently claimed
skilled person. There is thus nothing invention as a whole.
surprising or inventive about choosing The Ld. Controller has
to formulate a composition as a also wrongly held that
suspension/suspension concentrate formulating a SC
form as claimed. The skilled person formulation is "nothing
would therefore combine the teaching surprising or inventive."
of cited prior arts and will definitely In fact, the present
prepare a suspension concentrate invention does not claim
formulation of the pesticide that formulating the
composition (comprising 3.5 wt% combination of actives
Fipronil, 1.5 wt% Emamectin as SC is the surprising
Benzoate). Therefore, the argument of or inventive aspect of the
the Applicant is meritless and the invention. The Ld.
subject matter of claims 1-4 of the Controller has also
impugned application is obvious to a wrongly held that
person skilled in art. inventive step requires a
"surprising" result,
which is contrary to the
provisions of Section
2(1)(ja) of the Patents
Act. Considering the
teachings of the
aforementioned prior
art, it is evident that
none of the cited prior
art documents establish
the preference of
formulation of a
composition in a
suspension form as a
standard practice.
Furthermore, the Ld.
Controller has not
substantiated this
assertion with any
additional prior art
evidence. The claimed
invention unmistakably
demonstrates a
technological
advancement when
compared to the cited
prior art
documents and thus
ought to have granted
patent protection.
The Ld. Controller has
only broadly mentioned
the prior art Allan
Knowles to rely for
covering conventional
and advanced
formulation type
including suspension
concentrate formulation
(Page 625 of Appeal
paperbook) in one of the
headings of the said
prior art. However, they
didn‟t emphasize that SC
formulation is preferred
or considered a
standard practice
compared to other
formulation types.
Moreover, the Ld.
Controller has not
specifically extracted the
relevant portions of the
said prior art to support
the reason. Surprisingly,
the final conclusion on
the lack of inventive step
didn‟t even acknowledge
this said prior art.
Further, the mosaicking
of prior arts must
collectively teach,
suggest or motivate a
person skilled in the art
to arrive at the claimed
invention as a whole.
However, in this
instance, each prior art
is predominantly
teaching away from the
claimed invention,
thereby losing its
relevance as a prior art.
Hence, the claimed
invention cannot be
deemed obvious to a
person skilled in the art
11. Apart from the above, learned counsel submits that the learned AC has
considered suspension concentrate (SC) as a standalone feature of the
invention and appears to have wrongly opined that formulating an SC forms
part of the general knowledge. She further submitted that such an approach
reflects a mischaracterisation of the invention, inasmuch as it isolates one
feature without appreciating the invention as a whole. She would contend that
while SC as a formulation type is known, however, none of the prior arts
provide any preference for the same or teach functional equivalence. The
conclusion by the learned AC that the SC formulation is "nothing surprising
or inventive" is itself erroneous, as the present invention does not claim that
formulating the combination of actives as SC is the only surprising or
inventive aspect of the invention, whereas the synergistic effect also is an
inventive aspect of the invention. She further submits that the impugned order,
therefore, fails to consider the invention in its entirety, including the
synergistic interaction between the components.
12. In regard to the objection sustained by the learned AC under Section
3(d) of the Act, learned counsel submitted that this objection was not raised in
the FER. It is contended that raising a fresh ground at a belated stage, without
prior notice in the FER, is contrary to the principles of natural justice. It is
submitted by her that only respondent no.3 had made a bald allegation with
regard to Section 3(d) of the Act in its representation, which was duly clarified
by the appellant by providing a clear explanation. Moreover, during the
hearing, respondent no.3 did not urge this ground, thereby effectively
conceding the issue. So far as respondent no.5 is concerned, no such objection
regarding Section 3(d) of the Act was raised at all, nor was it agitated during
the submission, only in the post-hearing submission it was noted that the
subject application failed to prove that the SC formulation of the composition
exhibits improved efficacy.
13. In the aforesaid context, the learned AC is stated to have arbitrarily
noted that the suspension concentrate form of 3.5% w/w Fipronil (F) and 1.5%
w/w Emamectin Benzoate (EB) is not allowable under Section 3(d) of the Act,
in view of the disclosure of the cited prior arts and that the prior arts disclose
either Emulsion Concentrate (EC) and/or SC, and the effectiveness of SC over
the other is also comparable to the cited efficacy. Learned counsel would
contend that, in terms of the settled law, the objection under Section 3(d) of
the Act, in order to be sustainable and valid, has to be raised in the very first
instance, i.e. the FER. Moreover, a specific known substance has to be first
identified and it must be shown how the known efficacy of that known
substance is the same as that of the latter claimed new-formed invention. It
was further submitted that in the absence of such identification and
comparative analysis, the invocation of Section 3(d) of the Act cannot be
sustained. She stoutly contended that this legal aspect was not addressed by
the learned AC, rendering the impugned order unsubstantiated. Accordingly, it
is contended that the finding under Section 3(d) suffers from lack of reasoning
and is liable to be set aside.
CONTENTIONS OF RESPONDENT NO.3:
14. Per contra, Mr. Amitabh Suman, learned counsel for the respondent
no.3, opposed the arguments addressed on behalf of the appellant. He
submitted that the impugned order does not suffer from any infirmity
warranting interference by this Court. He specifically refuted the stand that
AC has merely reproduced, by way of copy-pasting, the representations filed
in the pre-grant opposition stage by the respondents in the impugned order,
which allegedly do not contain any independent application of mind or
analysis by the learned AC. According to him, mere similarity of reasoning
with the submissions of a party does not ipso facto establish non-application
of mind. He would contend that the grounds of lack of novelty, lack of
inventive step and non-patentability under Section 3(d) of the Act have been
examined threadbare by the learned AC by referring to each and every prior
art in respect of each of the objections, and that due application of mind is
apparent from a plain reading of the impugned order. It is thus contended that
the order qualifies as a reasoned determination passed in exercise of quasi-
judicial powers.
15. The learned counsel for the respondent no.3 submitted that the
impugned patent application lacks novelty and is anticipated in view of the
disclosure made in prior art CN1969627. He submits that the said prior art
constitutes a clear and enabling disclosure of the claimed composition. He has
cited pages, 497-520, specifically, 498, 500, 515, and claims 1, 5 and 8 of the
prior art CN1969627. As per the learned counsel, Fipronil 3.5% and
Emamectin Benzoate 1.5% is disclosed under the Embodiment 5 of the
detailed specification of the said prior art. On this basis, he submitted that the
essential features of the claimed invention stand disclosed in the prior art.
16. The learned counsel for the respondent no. 3 submitted that in view of
the disclosure made in CN'627, the subject application lacks novelty and is
barred under section (25) (1) (b) of the Act. He further submitted that the
statutory bar under Section 25(1)(b) of the Act squarely applies in the facts of
the present case.
17. While citing the prior art CN101019546, the learned counsel for the
respondent no.3 submitted that under Example 5 of the Complete
Specification (CS) at page 525 of the prior art, Fipronil and Emamectin
Benzoate at 3.5% and 1.5% respectively are disclosed. Further, citing page
521 of the said prior art, the learned counsel for the respondent no. 3
contended that the said prior art also discusses that the composition of the
claimed invention can be prepared as EC, EW, and Suspending agent, etc.
Thus, according to him, the form of formulation claimed by the appellant is
also within the contemplation of the prior art. Citing the same prior art, the
learned counsel for respondent no. 3 further submitted that claim 1 of the said
prior art claims a kind of pesticide mixture of Emamectin Benzoate and
Fipronil. The respondent also contended that as per pages 524 and 525 of the
CS of the said document, adjuvants and organic solvents are disclosed.
Further, citing page 528 of CN'546, the respondent submitted that the said
document discloses the synergism of the composition claimed under the said
prior art. It is therefore contended that even the alleged synergistic effect is not
novel. Further, citing example 5 of the cited document, the respondent submits
that since it shows best co-toxicity efficient of the two active compounds, it
teaches towards the present invention of the subject application.
18. Learned counsel for the respondent no.3, referred to the written
submissions on its behalf and while relying on the Manual of Patent Office
Practice and Procedure, 2019, submitted that since the prior art is read
through the eyes of a person skilled in the art, there is implicit disclosure of
the present invention in the cited documents.
19. The counsel for the respondent submitted that the cumulative reading of
these cited prior arts renders the claimed invention obvious.
20. While citing the prior art CNI969627, the counsel for the respondent
submitted that at page 500, Example 8 uses 10 -75% of water as a solvent. The
counsel also cited the claim 1 of the said document. Thus, according to him,
demonstrates that aqueous formulations were already known.
21. The second document relied on by the counsel for the respondent is
CN101019546. Citing Example 7 (Pg.525) of this document, the respondent
submitted that Fipronil 3.5% and Emamectin Benzoate 1.5 % by weight is
disclosed. As per the respondent, at page 524, the said document discloses
adjuvants and organic solvents up to 100%.
22. The counsel for the respondent also cited document CN1579160 and
contended that at page 544, the examples in the table discloses reagent +
Emamectin Benzoate, where the reagent is the structure of Fipronil. Under the
abstract, it also discloses Suspending Agents and EC.
23. As per the written submission of the respondent, CN101066055, at page
546, discloses the active ingredient Fipronil (02. to 5%) and Emamectin
Benzoate (01. to 5%). Further, the respondent also relied on the abstract of the
said cited document. It is contended that the claim ranges fall within the
disclosed ranges of the prior art.
24. The next document relied on by the respondent to support the objections
under Section (25)(1)(e) of the Act is CN101151970. The counsel for the
respondent submitted that at page 556, the said document discloses 5%
Fipronil and 0.5 % Emamectin Benzoate. The responder also argued that the
said document also discloses emulsifier, wetting agent and disintegrator.
25. The counsel for the respondent submits that the present invention under
claim 1 specifies that said composition is in the form of a suspension
concentrate (SC), which is already disclosed in the prior arts. He submits that
the selection of SC as a formulation does not involve any inventive step. The
respondent has relied on claims 1 and 8 of CN1969627, Examples A, B, C and
D of CN1911037, at page 536 and Annexure A-35 (page 567-700) of prior art
"Alan Knowles". Citing these documents, the respondent argues that a person
skilled in the art would be aware of the advantages of using a water-based
suspension concentrate (SC) in place of an Emulsifying Concentrate.
26. The counsel for the respondent submitted that the present invention
under claims 2 and 3 claims that the formulation may comprise one or more
adjuvants and that adjuvants may include a solvent, an emulsifying agent, a
dispersant, a wetting agent, and a foaming agent. The use of adjuvants is
disclosed in claims 2 and 5 of CN1969627, page 524 of CN101019546, page
540 of CN 1579160, the abstract of CN 101066055 and page 56 of
CN101151970. It is contended that the use of such adjuvants forms part of
routine formulation practice.
27. As to the contention of the appellant that the impugned order is
suggestive of copy-pasting the submissions of the respondent by the learned
AC, and non-application of mind is apparent, he would submit that there is no
bar to the adjudicating authority agreeing with the contentions of one of the
parties and expressing the same. He submits that concurrence with a party's
reasoning does not vitiate an order, provided independent satisfaction is
discernible. He would further submit that even if such portions of the
impugned order are eschewed from consideration, though without admitting to
the same, if the patent lacks any one of the aspects, i.e., lack of novelty or lack
of inventive step, or is barred under the provisions of Section 3 of the Act,
such an order is sustainable in law. He submits that the impugned order is
independently sustainable on merits. Thus, according to him, there is no
substance in such a contention.
28. In the overall conspectus, learned counsel would forcefully contend that
in view of the clear findings recorded in the impugned order regarding lack of
inventive step and obviousness, coupled with prohibition under section 3 (d)
of the Act, the present appeal be dismissed as being devoid of merit.
ANALYSIS AND CONCLUSION:
29. Having heard Mr. Priyam Lizmary Cherian, learned counsel for the
appellant and Mr. Suman, learned counsel for respondent no.3, and having
perused the pleadings and examined the documents on record, the following
order is passed. For the sake of clarity and structured adjudication, the issues
are analysed in a topic-wise manner as set out hereinafter.
THE INVENTION
30. The present invention is titled as "INSECTICIDAL COMPOSITION"
and pertains to an insecticidal formulation comprising a synergistically
effective amount of active ingredient Fipronil and Emamectin Benzoate,
wherein the said composition is claimed to exhibit excellent insecticidal
efficacy. The invention is stated to provide effective control over a wide
spectrum of agricultural pests. The "Field of the Invention" given under the
Complete Specification (CS) of the subject application is reproduced
hereunder:
"The present invention relates to an insecticidal composition
comprising synergistically effective amount of a first active
ingredient Fipronil and a second active ingredient Emamectin
benzoate, wherein the composition exhibits excellent insecticidal
properties and is capable of controlling major insects/pests in
agricultural crops. More particularly, the present invention relates
to a broad spectrum neurotoxic insecticidal composition with
contact, systemic and trans-laminar activity. The composition is
highly effective in low doses and is also environment friendly."
Problem claimed to have been solved by the present invention
31. According to the appellant, existing insecticidal compositions do not
effectively address piercing and sucking insects as well as biting and chewing
insects in a single formulation. It was further contended that such conventional
formulations are often associated with high cost per unit dosage, thereby
limiting their commercial viability.
32. It has also been asserted that there are few petrochemical-based
materials which can be safely absorbed into the environment and that the
availability of environment-friendly and bio-degradable compositions is very
low. Therefore, it is desired to have an insecticidal composition that is active
against a wide range of insects, that is, a composition with contact/systemic as
well as trans-laminar activity against these insects. Additionally, the claim
also considers the problem of washing-out of sprayed insecticides due to
rain/irrigation. Hence, the need for a broad-spectrum insecticidal composition
which is capable of controlling major insects/pests in various agricultural
crops and of overcoming problems associated with the prior art is established.
33. As per the Summary of the Invention, the present invention seeks to
provide an efficacious solution for controlling a wide range of agricultural
pests through a combination of Fipronil and Emamectin Benzoate. A key
feature of the present invention is the alleged synergistic interaction between
the two active ingredients, resulting in enhanced insecticidal activity. The
summary of the present invention is reproduced hereunder:
"SUMMARY OF THE INVENTION
It is an object of the invention to provide a combination of two different
active ingredients which are well known insecticides; thereby providing
a highly effective and efficacious solution for controlling major insects
and pests in various agricultural crops, wherein the two active
ingredients are fipronil and ememectin benzoate. Another object of the
invention is to provide a broad spectrum insecticide effective against
both piercing and sucking type as well as biting and chewing type of
insects for all the agricultural crops. The invention encompasses a
broad spectrum neurotoxic insecticidal composition with contact,
systemic and trans-laminar activity.
Yet another object of the invention is to provide a synergistic
composition comprising fipronil and emamectin benzoate in
synergistically effective amount, wherein each ingredient significantly
enhances and abets the activity of the other ingredient. This way, the
combination of both the active ingredients exhibits a synergistic effect
resulting in a faster and higher mortality of the insect pests. The
enhanced mortality ensures reduction in crop damage by insect pests,
thereby resulting in a significant increase in the overall yield of the
crop. Also, the combination of both has made it possible to achieve a
higher insecticidal effect for a larger spectrum of insects/pests. Another
object of the invention is to provide an insecticidal composition that is
effective even when used in far lower amounts as compared to other
insecticides that are usually very expensive; thereby being highly cost
effective. Further, since the dose of individual active ingredient, i.e.
fipronil and emamectin benzoate in this composition is far less than the
doses required when used alone, the residue in the soil as well in crop
is also lower than their individual residues when used alone. This
eliminates any possible side/adverse effects. Consequently, this
combination is environmentally safer than its parental compounds.
Individually, in such infinitesimally low concentrations, both the
components of the combination are very safe to the environment as well
as to any non-target organisms including human beings. Therefore, the
present composition turns out to be highly economical, effective against
a large number of insects and is also environmental friendly. Another
object of the present invention is to provide a composition that does not
get washed even after two hours of rains following foliar application.
This prevents any wastage as well as enhances the effective time period
of the application. This also enables the insecticidal composition to act
against insects lying on the lower surface of the leaves or other hidden
areas which are more prone to attack. It is also an object of the
invention to provide a method of preparing the insecticidal composition
and its formulations thereof comprising fipronil and emamectin
benzoate. Further object of the invention is to provide a method of
controlling insects wherein the insects, their habitats and/or plants are
treated with the composition of the present invention."
34. The independent claim 1 of the present invention claims an insecticidal
composition which comprises a synergistically effective amount of Fipronil and
Emamectin Benzoate. Fipronil weight concentration in the composition is 3.5% w/w
while the weight concentration of Emamectin Benzoate is 1.5% w/w, and the said
composition is in the form of a suspension concentrate (SC). The claims which
were considered in the impugned order are as follows:
"We Claim:
1. An insecticidal composition comprising synergistically effective
amount of Fipronil and emamectin benzoate, wherein Fipronil weight
concentration in said composition is 3.5%w/w, emamectin benzoate
weight concentration in said composition is 1.5%w/w, and said
composition is in the form of a suspension concentrate (SC).
2. The composition as claimed in claim 1, further comprising one or
more adjuvants.
3. The composition as claimed in claim 2, wherein the adjuvant is
selected from the group consisting of solvent, emulsifying agent,
dispersant, wetting agent, foaming agent, and combinations thereof.
4. The composition as claimed in claim 2, wherein the weight
concentration of adjuvant is in the range of 50% to 95%w/w.
[Emphasis Supplied]
35. This Court will now proceed to examine the prior arts to determine
whether the reasoning provided by the learned Controller under the objection
of lack of novelty and inventive step is sound.
LACK OF NOVELITY:
36. The first issue for determination is whether the subject invention
satisfies the requirement of novelty under the Act.
Prior Art CN1969627 (CN' 627):
37. As per the Embodiment 5 of CN'627, an insecticidal composition
comprising 3.5% Fipronil and 1.5% of Emamectin Benzoate is expressly
disclosed. The said prior art further teaches that such compositions may be
formulated as suspensions, including suspension concentrates.
38. Further, claims 2, 5 and 8 of CN'627 disclose formulations comprising
Fipronil and Emamectin Benzoate with one or more adjuvants, such as wetting
agents, dispersants/dispersing agents, emulsifying agents, and solvents. It is
important to note that the amount of adjuvants here is the same as that claimed
in claim 4 of the subject application.
39. As per the abstract and claim 1, CN'627 also teaches that the insecticide
composition can be used for controlling rice borer, plant hopper, diamond
back moth, beet armyworm, cigarette beetle and cotton bollworm. The abstract
and claim 1 of CN'627 are reproduced as follows:
"[57] Abstract
A composite Fipronil insecticide, belonging to the technical field of
pesticide formulation, particularly relates to a composite formulation of
Fipronil and emamectin benzoate. CIt is characterized by that, the
composite insecticide comprising foes 0.5~15% of Fipronil and
0.1~10% of emamectin benzoate by weight, and the rest is being
additives formulated miscible oil, or wettable powder, or miscible oil,
or suspending agent, or micro-emulsion. When compared with single
component type and composite Fipronil insecticide of the prior art, the
composite Fipronil insecticide provided by present invention has
significantly higher efficiency, improved in efficacy speed, long lasting
validity period, strong insecticidal activity, reduced dosage, low toxicity
and environmental friendly for controlling rice borer, plant hopper,
diamondback moth, beet armyworm, cigarette beetle and cotton
bollworm."
"1. A composite Fipronil insecticide, characterized in that, the
composite insecticide comprises of 0.5~15% of Fipronil and 0.1~10%
of emamectin benzoate by weight, and the rest is additives formulated
miscible oil, or wettable powder, or miscible oil, or suspending agent,
or micro-emulsion."
[Emphasis Supplied]
40. Further, claim 8 of CN'627 claims a composition containing, 0.5-15%,
Fipronil and 0.1-10% Emamectin Benzoate along with other components. It is
important to note that claim 8 clearly claims such a composition in the form of
a formulated suspending agent. claim 8 of CN'627 is reproduced hereunder:
"8. A composite Fipronil insecticide according to Claim 1,
characterized in that, the formulated suspending agent comprises of
the following components in percentage by weight:
Fipronil 0.5~15%, emamectin benzoate 0.1~10%, wetting agent
1%~40%, dispersing agent 0.3~20%, spreading agent 0.1~15%,
stabilizer 0.1~30%, synergistic agent 0.5~25%, penetrant 0.1~10%,
thickener 0.1~25%, anti-freeze agent 0.05~12%, defoamer
0.01~5%, PH adjusting agent 0.01~5% and water 10~75%. The
sum of the components is 100%."
[Emphasis Supplied]
41. Embodiment 5 of CN'627 in the following table discloses the Fipronil
percentage by weight as 3.5% and Emamectin Benzoate at 1.5% by weight.
The Embodiment 5 is reproduced as follows:
Prior Art CN101019546 (CN'546):
42. CN'546 similarly discloses a pesticide composition comprising Fipronil
(3.5%) and Emamectin Benzoate (1.5%) under Example 5. This reinforces the
disclosure of identical concentration ranges as claimed in the present
invention. For clarity, Example 5 is reproduced hereunder:
"Exploit Example 5: emamectin benzoate takes up 1.5%, fipronil
occupies 3.5%, and other functional adjuvants and organic
solvent supplement to 100%."
43. Additionally, at paragraph 6 of page 4 of CN'546 states that the
composition can be formulated as emulsifiable oils, microemulsions and
aqueous emulsions. The said relevant para is reproduced hereunder:
"The preparation method of the present invention is the same
with the preparation methods of mixed pesticides, especially
EC(emulsifiable concentrate), micro-emulsion and
EW(Emulsion in Water), in the existing technology. These
preparation methods shall be deemed as part of the present
invention."
This document under example 5 shows that if Emamectin Benzoate and
Fipronil is taken with concentration of 1.5% and 3.5% respectively the Co-toxicity
Coefficient is maximum which is 146.5511. This cited document at page 8 further
discloses that since Co-toxicity Coefficient is more than 100, it can be concluded
that there is an obvious synergistic effect. At page 8, the prior art describes that
5% Emamectin Benzoate emulsifiable concentrate - Fipronil shows optimal
control effect on the rice leaf rollers. The relevant paragraph is reproduced
hereunder:
"...........It is thus clear that 5% emamectin benzoate emulsifiable
concentrate · fipronil shows optimal control effect on the rice leaf
rollers. The above processing pesticides show no sterile reaction
during the growth and development stage of the rice. For the area
where 5% emamectin benzoate · fipronil emulsifiable concentrate has
been applied, the paddy rice grows well with comely leaves, and ears
well in later period."
44. Therefore, as discussed above, the abstract as well as claim 1 of
CN'627 shows that the composition of 3.5% w/w Fipronil and 1.5% w/w
Emamectin Benzoate as claimed in claims 1 to 4 of the subject application is
being anticipated by the disclosure of the CN'627, which discloses 0.5-15% of
Fipronil and 0.1-10% of Emamectin Benzoate by weight in various solutions.
Additionally, the invention under the prior art CN'546 under Example 5
describes the active ingredients Emamectin Benzoate (1.5%) and Fipronil
(3.5%). Therefore, in view of the disclosure of the active ingredients and their
concentrations of the present invention in CN'627 and CN'546, it leads to
anticipation and makes the present invention not novel under Section 2(1)(j)
of the Act. Therefore, this Court is of the view that the objection of lack of
novelty is well-reasoned in the impugned order.
45. Therefore, in the light of the cited prior arts CN'627 and CN'546,
individually/together, the invention under the subject application is not novel.
46. Accordingly, this Court is of the considered view that the finding of
lack of novelty recorded in the impugned order is justified and does not
warrant interference.
LACK OF INVENTIVE STEP:
47. The next question which arises for consideration is whether the claimed
invention involves an inventive step within the meaning of Section 25(1)(e)
and Section 2(1)(ja) of the Act.
48. The impugned order has upheld the objection of lack of inventive step
while rejecting the subject application. In order to examine the correctness of
the reasoning adopted by the AC on this ground, this Court shall proceed to
analyse the cited prior arts forming the basis of the impugned order.
CN101066055A (CN'055)
49. Under claim 1, CN'055 clearly discloses a pesticidal composition
comprising Emamectin Benzoate in the range of 0.1 to 5%, with chlorfenapyr
or the mixture of any one/ more of compounds Fipronil, Diafenthiuron, beta
cypermethrin and cyhalothrin, in varying proportion. CN'055 discloses a
pesticidal composition containing 0.2% - 30% Fipronil and 0.1%-5%
Emamectin Benzoate. Under Example 5 as well as claims 1-5, Emamectin
Benzoate is mentioned to be 0.5% with Fipronil 5% along with adjuvants. The
adjuvants disclosed include emulsifying agents, solvents and synergists. In
order to appreciate this aspect, claim 1 of CN'055 is reproduced hereinbelow:
"1. A kind of pesticide composition containing emamectin benzoate, it
is characterized in that its weight ratio structure is:
Emamectin Benzoate: 0.1%- 5%,
Active Ingredient B: 0.2% - 30%,
Synergist: 0.1% - 5%,
Emulsifying agent: 5.0% - 20%,
Solvent: 45% - 90%,
Wherein: The above mentioned active ingredient B can be
chlorfenapyr or the mixture of any one or more of the following
substances in any ratio: diafenthiuron, fipronil, beta cypermethrin and
cyhalothrin."
[Emphasis Supplied]
Further, under claim 1 and Table 2 at page 9 of CN'055, it is disclosed
that the total amount of adjuvants ranges between 50% to 95% w/w. Table 2
specifically discloses a composition comprising Emamectin Benzoate (0.5%)
and Fipronil (5%), demonstrating the control efficiency of 98.62%. However,
this Court also notes that the synergist is also used in the abovementioned
claims, in Example 5, and in Table 2.
50. Further, at page 4, CN'055 encourages the use of pesticide mixtures in
combination with new surface-active agents in order to enhance efficacy and
reduce resistance. The relevant paragraph is reproduced hereinbelow:-
"Thus, a new type of pesticides mixture with a new surface active
agent cannot only play the role of original pesticide types to the
greatest extent, but also can greatly reduce the occurrence of pesticide
resistance."
[Emphasis Supplied]
Prior Art CN101151970A (CN'970) :
51. The invention under CN'970 relates to an insecticidal composition for
controlling diamondback moth, comprising Fipronil and Emamectin/its
derivative Emamectin Benzoate, as active ingredients, wherein the weight
ranges from 1:10 to 10:1. The abstract is reproduced hereinbelow:
"[57] Abstract
An insecticidal composition for the prevention and control of
diamondback moth on cruciferous vegetables, which is characterized in
that it contains fipronil and avermectin or their derivatives emamectin
benzoate as active components, and the weight ratio of fipronil to
avermectin or their derivatives emamectin benzoate is 1 : 10 to 10 : 1."
52. The said prior art, under claim 2, specifically claims a composition
comprising Fipronil and Emamectin Benzoate in the ratio 1:10 to 10:1. It
would be apposite to extract claim 2 hereunder:
"The insecticidal composition is characterized in that it contains
fipronil and emamectin benzoate as active ingredients, and the weight
ratio of fipronil and emamectin benzoate is 1 : 10 to 10 : 1."
53. Further, CN'970 under Content of the invention discloses adjuvant in
suitable dosage forms including wettable powder, water-soluble powder, pill,
tablet, plaster, aqueous suspension, water-dispersible granule and emulsion
etc. The relevant paragraph is reproduced hereinbelow:
"The insecticidal composition of the invention can be prepared into
various suitable pesticide dosage forms, such as wettable powder,
water-soluble powder, water dispersible granule, pill, tablet, plaster,
suspension agent, emulsion, etc. These preparations can be directly or
through the addition of water to form aqueous dispersion in the form
of spray, mist, powder spraying, and so on."
54. Additionally, it is relevant to note that 2% Emamectin Benzoate and
Fipronil microemulsion formulation (Fipronil-1% and Emamectin Benzoate-
1%) and 3.3% Emamectin Benzoate and Fipronil microemulsion formulation
(Fipronil -0.3% and Emamectin Benzoate-3%) respectively are disclosed
under Examples 2 and 3 of CN'970. Under Example 9 and 8, the Control
efficiency of these Examples 2 and 3 was found to be 94.16% and 94.13%
respectively. It may be pertinent and significant to note that the aforenoted
efficiency is higher than what is claimed by the appellant in its patent
application. However, this Court also notes that synergists are also used in the
examples. The examples are reproduced hereunder:
Prior Art CN1911037 (CN'037):
55. As far as the invention under CN'037 is concerned, it pertains to a
compound insecticide in respect of the compound insecticide technology for
controlling rice stem borer as well as the riceleaf roller. This prior art
discloses, under claims 5 and 6, a composite insecticide for controlling rice
pests comprising a combination of Fipronil and Emamectin Benzoate, wherein
the mass ratio of Fipronil to Emamectin Benzoate ranges from 0.25-10 : 0.01-
5. To make this clear, claims 5 and 6 of CN'037 is reproduced hereinbelow:
"5. The compound insecticide for controlling rice insects is
characterized in that its effective components are (RS) -5-amino-1-
(2,6-dichloro-4-trifluoromethyl) -4-trifluoromethylsulfinyl-3-nitrile
and 4" - epi-methylamino-4" deoxyavermectin B1 benzoate.
6. The compound insecticide for controlling rice insects described in
Claim 5 is characterized in that (RS) -5-amino-1- (2,6-dichloro-4-
trifluoromethyl) -4-trifluoromethylsulfinyl-3-nitrile and 4-epi-
methylamino - 4" deoxyavermectin B1, and the quality to mass ratio of
benzoate is 0.25〜10 : 0.01〜5."
56. It may be significant to note that under the Technical Scheme 3
disclosed under the complete specification of prior art CN'037, the
composition of Fipronil and Emamectin Benzoate is disclosed. The mass ratio
of (RS) of these two compounds is 0.25-10:0.01-5. The scheme further
discloses that the composition is low-cost, long-term and quick acting, and is
capable of improving the control effect and simultaneously delaying the
development of insecticide resistance. To understand this better, the Technical
Scheme 3 is extracted hereunder:
"Scheme 3: the effective components are (RS) - 5-amino-1 - (2,6-
dichloro-4-trifluoromethyl) - 4- trifluoromethylsulfuropyrazol-3-nitrile
(fipronil) and 4" epi-methylamino-4" deoxyavermectin B1 benzoate
(mesaavermectin benzoate).
(RS)-5-amino-1-(2,6-dichloro-4-trifluoromethyl)-4-
trifluoromethylsulfinyl-3-nitrile (fipronil) and a mixture of 4" epi-
methylamino-4" deoxyavermectin B1 benzoate (emamectin benzoate) to
form fluoroavermectin (fipronil and emamectin benzoate) is also low-
cost, long-term and quick acting, which can improve the control effect
and delay the development of insecticide resistance. The synergistic
effect (CO toxicity coefficient) was 414.8.
Among them, the mass ratio of (RS) - 5-amino-1 - (2,6-dichloro-4-
difluoromethylphenyl) - 4- trifluoromethylsulfinyl-3-nitrile to 4" -epi-
methylamino-4" deoxyavermectin B1 and benzoate is 0.25〜10 :
0.01〜5."
[Emphasis Supplied]
57. Additionally, at pages 8 and 9, the prior art CN'037 discloses examples
of Fipronil-Emamectin Benzoate in suspension concentrate (SC) formulations.
The same is extracted hereunder:-
"C. 15% fipronil / abamectin suspension Weigh 90% abamectin
physical quantity 5.55kg (5kg), 95% fipronil physical quantity 10.53kg
(10kg), adjuvant 10kg, reducing gum 0.3kg, benzoic acid 0.5kg,
defoamer 0.5kg, glycol 5kg, water 67.62kg are added into the shear
reactor, cut for 30 minutes, and then put into the primary sand mill,
then the secondary sand mill, mix in the mixing reactor, carry out the
measurement and sub packaging after passing the inspection, obtains
the finished product.
D. 0.36% fipronil / abamectin suspension Weigh 90% abamectin physical
quantity 0.11kg (0.1kg), 95% fipronil physical quantity 0.27kg (0.25kg),
adjuvant 10kg, reducing gum 0.3kg, benzoic acid 0.5kg, defoamer 0.5kg,
glycol 5kg, water 83.32kg are added into the shear reactor, cut for 30
minutes, and then put into the primary sand mill, then the secondary sand
mill, mix in the mixing reactor, carry out the measurement and sub
packaging after passing the inspection, obtains the finished product.
A. 5.25% fipronil / emamectin benzoate suspension 100kg Weigh 60%
emamectin benzoate physical quantity 8.33kg (5kg), 95% fipronil
physical quantity 0.27kg (0.25kg), adjuvant 10kg, reducing gum 0.3kg,
benzoic acid 0.5kg, defoamer 0.5kg, glycol 5kg, water 75.1kg are added
into the shear reactor, cut for 30 minutes, and then put into the primary
sand mill, then the secondary sand mill, mix in the mixing reactor, carry
out the measurement and sub packaging after passing the inspection,
obtains the finished product."
[Emphasis Supplied]
58. Apart from the above, it is also worthwhile to consider that at page 11,
the prior art CN'037 also demonstrates the existence of synergism between
Fipronil and Emamectin Benzoate. Thus, the appellant's submission in this
regard is negated by the existence of the synergism in the prior art, which the
appellant claims to have discovered as not known hitherto before. For
clarification, page 11 of the prior art is reproduced hereinbelow:
"The test data show that the field control effects of fipronil / phoxim,
fipronil / avermectin, fipronil / emamectin benzoate and fipronil /
chlorpyrifos on chilosuppressalis and rice leaf roller are obviously better
than those of the control agents."
[Emphasis Supplied]
59. As discussed above, it is noted that the prior art CN'037, under its
claims 5 and 6, discloses a composite insecticide for controlling rice pests
comprising a combination of Fipronil and Emamectin Benzoate, wherein the
mass ratio of Fipronil to Emamectin Benzoate is 0.25-10 : 0.01-5. Moreover,
the prior art at page 9 discloses examples of Fipronil-Emamectin Benzoate,
suspension concentrate (SC) formulation. At page 11, it also discloses that the
field control effect of Fipronil and Emamectin Benzoate is far better than the
control agents. In view of the above disclosures, it is difficult to accept the
submissions advanced on behalf of the appellant.
Prior Art CN1579160 (CN'160):
60. The invention under CN'160 pertains to a synergistic pesticidal
composition of reagent and Emamectin Benzoate. Claim 2 of the prior art
CN'160 discloses a synergistic pesticide composition which comprises
Fipronil and Emamectin Benzoate, wherein the weight ratio of Fipronil to
Emamectin Benzoate is 1-50:1.
61. Claim 4 of this prior art claims that the composition can be used with
routine plant protective agents, including suspending agents. In order to
appreciate, claim 4 of this document, is reproduced hereinbelow:
"The preparation method of this synergistic pesticidal composition is
characterized by the possibility to process the pesticide into routine plant
protective agents, such as suspending agent, emulsifiable concentrate,
micro-emulsion, wettable powder, granule and etc."
[Emphasis Supplied]
62. It may be pertinent and significant to consider at this stage that the
Example 1 in prior art CN'160, which clearly discloses the various pesticidal
compositions comprising (i) 5% Fipronil with 1% Emamectin Benzoate; (ii)
3% Fipronil with 0.2% Emamectin Benzoate and (iii) 4% Fipronil along with
0.5% Emamectin Benzoate, where the active ingredients are Fipronil and
Emamectin Benzoate. Furthermore, the abstract and claim 4 of prior art
document CN'160 specifically disclose that an insecticide composition can be
formulated as a suspension. Particularly, at page 4, the said prior art under
consideration discloses the method of preparation of the insecticide
composition in the form of a suspension. Thus, it cannot be contended that
none of the prior arts disclose that the insecticide composition can be
formulated in suspension concentrate form.
63. A closer examination of the prior art CN'160, reveals that the claims
under the said document disclose the use of one or more adjuvants in a
formulation comprising Fipronil and Emamectin Benzoate. Particularly, the
document under claim 4 discloses routine plant protective agents such as
suspending agents, emulsifiable concentrate, micro-emulsion, wettable
powder, granules etc. Further, CN'160 under its abstract and claim 5 also
discloses that the said insecticide composition can be used for
preventing/treating forest pests such as rice stem borers, plant hoppers and
vegetable aphids. The Example 1 is reproduced hereunder:
64. The Complete Specifications of the prior art CN'160 also discusses
surface-active agents including anionic and non-ionic surfactants. The relevant
para is reproduced hereinbelow:
"Available surface active agents are anionic surface active agents and
non-ionic surface active agents. Applicable agent can be alkyl sulfate,
alkyl sulphonic acid alkali metal salt and amino, sodium dialkyl
succinate sulfonate, pesticide adjuvant 2000 #, alkyl naphthalene
sulfonate - alkyl polyoxyethylene ether sulfate, fatty acid or fatty acid
ester sulfate, alkylphenolethoxylates, fatty alcohol polyoxyethylene
ether and so on. Pesticide emulsifier 2000 series, 8202, lignosulfonate,
NNO, dispersing agent MF and the like can be taken as examples."
[Emphasis Supplied]
65. As discussed above, specification of CN'055, the new surface active
agent is encouraged to reduce pesticidal resistance. From the disclosure of
CN'055 and CN'070 as discussed above, using the teaching of these two prior
arts, a person skilled in the art would reach the present invention. Further, it is
well established that the concept of water dispersible granules, EC and SC etc.
are common/well-known/routinely employed and are conventional forms in
the agrochemical industry. Therefore, claim 1 of the present invention is
obvious as per the teachings, in view of the cited document CN'970 either
alone or in combination with either CN'546, CN'627, CN'055 or common
general knowledge. Further, the above discussed disclosure in CN'546 or
CN'627 or CN'055 alongwith the disclosure and teachings of CN'037, which
discloses the SC and synergy between Fipronil and Emamactin Benzoate,
would also render the present invention obvious. Additionally, as discussed
above, CN'160 at page 4 of the specification also discloses the SC and
therefore, read with above-discussed disclosure in CN'546, CN'627 and
CN'055, the present invention would lack inventive step under section 2(1)(ja)
of the Act. The present invention also fails to demonstrate any technical
advancement or economic significance over the existing knowledge, as
required under Section 2(1)(ja) of the Act.
66. Additionally, since all the cited prior art documents primarily discloses
the similar products as the subject matter of the present invention and belongs
to crop protection formulation. Therefore, the submission of the appellant that
there is no common thread between the prior arts cannot be accepted. In
Sterlite Technologies Ltd. v. HFCL Ltd. 2022 SCC OnLine Del 2895., this
Court held that when multiple documents disclose substantially similar
products to the patented products, then it is a reflection of the state of the art
and would not amount to "mosaicing". The relevant para is reproduced
hereunder:
"20.3 Since only these two documents are being used as prior art at
this stage, this Court, at the outset, holds that the Plaintiff‟s claim of
mosaicing lacks merit. The objection of "mosaicing" would normally
apply when completely unconnected documents are presented in a
combination to defeat the inventive step in the invention. However, the
argument of mosaicing cannot be sustained when there are only two
documents used as prior art and such documents are interconnected or
disclose similar products. When multiple documents are alleged to
disclose substantially similar products to the patented product, then
the same is a reflection of the state of the art and not "mosaicing"."
[Emphasis Supplied]
67. Upon a harmonious and conjoint appreciation of the above
discussion, claim 1 of the present application cannot be said to be inventive.
The arguments of Mr. Priyam Lizmary Cherian, learned counsel for the
appellant, that the learned AC has merely copy-pasted the objections raised by
various objections including respondent no.3 may appear to be superficially
attractive, however, when viewed in the backdrop of the above observations
and analysis, coupled with the fact that the learned AC had indeed examined
the lack of inventive step in detail, the said contention is unfounded and is
untenable.
68. Further, the objection on the ground of lack of inventive step is well
reasoned, as the learned Controller has discussed all the necessary steps
mandated by this Court in Agriboard International LLC vs. Deputy
Controller Of Patents And Designs, reported in 2022 SCC Online Del 940.
The relevant paragraphs are reproduced hereinbelow:
24. In the opinion of this Court, while rejecting an invention for lack of
inventive step, the Controller has to consider three elements-
• the invention disclosed in the prior art, • the invention disclosed in
the application under consideration, and • the manner in which
subject invention would be obvious to a person skilled in the art.
25. Without a discussion on these three elements, arriving at a bare
conclusion that the subject invention is lacking inventive step would
not be permissible, unless it is a case where the same is absolutely
clear. Section 2(1)(ja) of the Act defines `inventive step' as under:
(ja) "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention not
obvious to a person skilled in the art.
26. Thus, the Controller has to analyse as to what is the existing
knowledge and how the person skilled in the art would move from the
existing knowledge to the subject invention, captured in the
application under consideration. Without such an analysis, the
rejection of the patent application under Section 2(1)(ja) of the Act
would be contrary to the provision itself. The remaining prior arts
which are cited by ld. Counsel having not been considered in the
impugned order, the Court does not wish to render any opinion in this
regard.
69. The learned AC has analysed: (i) the prior art, (ii) the subject invention
and (iii) the manner in which the invention would be obvious to a Person
Skilled in the Art (PSA), thereby satisfying the required three factors.
70. Based on the above reasoning, this Court is of the considered opinion
that the learned AC has rightly refused the subject application for lack of
novelty under Section 25(1)(b) and Section (2)(1)(j) and lack of inventive
step under Section 25(1)(e) and Section (2)(1)(ja) of the Act. Having rendered
the aforesaid opinion, the requirement to examine the objection under Section
3(d) and Section 25(1)(g) of the Act is not necessitated.
71. As a result, the appeal fails and is dismissed as such, though without
any order as to costs.
TUSHAR RAO GEDELA
(JUDGE)
APRIL 08, 2026
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