Madras High Court
M/S.Rallis India Limited vs Deputy Controller Of Patents And ... on 20 November, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:2659
C.M.A.(PT) No.21 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on 28.08.2025
Pronounced on 20.11.2025
CORAM:
THE HONOURABLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
C.M.A.(PT) No. 21 of 2024
M/s.Rallis India Limited
23rd Floor, Vios Tower New Cuffe Parade
Off Eastern Freeway, Wadala,
Mumbai City, Mumbai,
Maharashtra, India, 400 037,
India.
... Appellant
Vs.
1.Deputy Controller of Patents and Designs,
The Patent Office, Intellectual Property Building,
G.S.T.Road, Guindy, Chennai - 600 032, India. ... Respondent 1
2.M/s.Haryana Pesticide Manufactures Association (HPMA)
1307, 13th floor, Vikram Towers, Rajendra Place,
New Delhi - 110 008, India. ... Respondent 2
3.Mr.Chimanbhai Chauhan ... Respondent 3
1
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C.M.A.(PT) No.21 of 2024
Prayer : Appeal filed under Section 117(A)(2) of Patent's Act, 1970 to set
aside the order of the first respondent dated 05th March, 2024.
For Appellant : Mr.Adarsh Ramanujan
representing
M/s.Khurana & Khurana
Mr.Tarun Khurana
Mr.Tapan Shah
Mr.P.Subburaj
For R1 : Mr.A.R.Sakthivel
SPCGSC
For R2 : Mr.Shravan Kumar Bansal
Mr.Somnath De
For R3 : Mr.Bhavik Patel
assisted by Dr.Heena Patel
JUDGMENT
The appellant filed Application No. 4135/CHEN/2014 titled “Stable
Herbicidal Composition comprising Pendimethalin and Metribuzin” at the
Indian Patent Office (IPO) , Chennai, on 25th August 2014. A request for
examination was filed on 27th September 2017. Pursuant thereto, the First
Examination Report (FER) was issued by the IPO on 22nd July 2019. In the
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FER, the first respondent raised objections, inter alia, on the grounds that
claims 1 to 6, as originally filed, lacked novelty and inventive step in view of
three cited documents, namely:
• D1: AU760278B2 ;
• D2: AU2012203353B2 ; and
• D3: O.B HILDEBRAND: Proceedings of the Ninth Australian Weeds
Conference, Adelaide, South Australia, August 6–10, 1990.
Objections were also raised on the ground of non-patentability under Section
3(d) and Section 3(e) of the Patents Act, 1970 (“the Patents Act”). The
appellant replied to the FER on 21st January 2020 along with a copy of the
amended claims and specifications.
2. Meanwhile, an opposition was filed by the second respondent on
10th September 2019, challenging the claims under Sections 25(1)(b) to
25(1)(f) of the Patents Act. The pleadings and evidence in relation to the
opposition by the second respondent were completed by 27th August 2021.
Thereafter, after a hearing notice was issued, the hearing was concluded on
24th November 2021 and orders were reserved by directing the parties to file
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written submissions. One day prior to the filing of the written submissions by
the second respondent, the third respondent filed an opposition challenging
the claims under Section 25(1)(b) to 25(1)(g) of the Patents Act. The
pleadings and evidence in relation to the second opposition were completed
by 13th February 2023. The hearing in relation to the second opposition was
concluded on 17th July 2023 and the appellant filed written submissions
along with an amended set of claims. At that juncture, the appellant filed an
affidavit of Mr.Vairamani Ramanathan, along with the miscellaneous petition
with the request to change the legal status of cited document R3
(2243/MUM/2014) from “in force” to “deemed to be revoked”. The
impugned order herein was issued in the above facts and circumstances on
5th March 2023.
Counsel and their contentions:
3.1. Oral arguments on behalf of the appellant were advanced by Mr.
Adarsh Ramanujan, learned counsel, assisted by Mr.Tarun Khurana, learned
counsel.
3.2. Oral arguments on behalf of the first respondent were advanced by
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Mr.A.R.Sakthivel, learned Special Panel Counsel.
3.3. Oral arguments on behalf of the second respondent were advanced
by Mr.Shravan Kumar Bansal, learned counsel, assisted by Mr.Somnath De,
learned counsel.
3.4. Oral arguments on behalf of the third respondent were advanced
by Mr.Bhavik Patel, learned counsel, assisted by Dr.Heena Patel, learned
counsel.
3.5 All the parties also submitted written submissions. The appellant
filed the pleadings and documents in seven volumes, Volume I-VII.
4. Mr.Adarsh Ramanujan advanced several contentions in support of
his request to set aside the impugned order. His contentions may be
summarised as under:
4.1. The rejection of the claimed invention by reference to IN
2243/MUM/2014 is untenable because the said application does not qualify
as prior art. The provisional specification of the said application was filed on
9th July 2014. The provisional specification does not disclose an emulsifiable
concentrate (EC) formulation. On the contrary, it discloses a suspo-emulsion
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(SE) formulation and contains an assertion that a SE formulation is superior
to an EC formulation. In spite of this objection being raised in the reply
statement to the pre-grant opposition (at pages 1026–1028 and pages 1036–
1038 of Volume VI) and in the written submissions to the pre-grant
opposition hearing of the third respondent (at pages 1184–1191 of Volume
VII), no finding was recorded in respect of this objection in the impugned
order.
4.2. The appellant had filed a post-grant opposition to the patent
granted in IN 2243/MUM/2014. The patentee did not file a reply statement
under Rule 58 to such post-grant opposition within the specified time limit.
Therefore, the appellant had raised the objection that the patent is deemed to
have been revoked under Rule 58(2) of the Patents Rules, 2003. No finding
was recorded on this objection also.
4.3. The formulation of IN 2243/MUM/2014 is materially different
from the formulation of the claimed invention not only because different
classes of excipients are used, but also because IN 2243/MUM/2014 requires
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the use of excipients that remain as insoluble solid particles. By contrast, the
EC formulation does not include any insoluble solid particles and, therefore,
does not require suspending or dispersing agents. In spite of providing two
affidavits from Mr.G.N.Kendapa and Mr.Vairamani Ramanathan to clarify
aspects of the claimed invention, including to highlight that EC formulations
cannot contain insoluble particles like silica or China clay, these aspects were
not addressed in the impugned order.
4.4. The first respondent failed to appreciate that neither prior art D1
nor D2, teaches, motivates or suggests the concentration of pendimethalin and
metribuzin in the composition or deals with an EC formulation.
4.5. The first respondent failed to appreciate that the experimental data
provided in Table 1 of the as-filed specification demonstrates synergy
between the active ingredients. By way of illustration, entry - 1 in Table 1
may be compared with entries 5–7 thereof. Therefore, the conclusion that the
claimed invention is non-patentable under Section 3(e) is untenable.
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4.6. The as-filed specification sufficiently describes the claimed
composition, the method by which it is to be prepared and its use, including
by providing multiple working examples and the best method of working the
invention.
5. Mr.A.R.Sakthivel raised several contentions on behalf of the first
respondent in support of his request to affirm the impugned order. His
contentions may be summarised as under:
5.1. IN 2243/MUM/2014 (D3) was first filed on 9th July 2014, thereby
pre-dating the instant application filed on 25th August 2014. The said
document discloses the use of pendimethalin (20–50%) and metribuzin (1–
10%). The specified ranges completely overlap the ranges claimed in the
present application [pendimethalin (25–52%) ; metribuzin (6–12%)]. The
marginal difference of 2% in the upper limits is statistically and practically
negligible and does not represent technical advancement. There is no specific
enabling disclosure in the complete specification to demonstrate how the
claimed excipients (solvents, co-solvents and surfactants) provide a distinct
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and improved formulation as compared to D3.
5.2. D1 (AU Conference Proceedings, 1990) and D2 (ACTA
Horticulturae) disclose that combinations of pendimethalin and metribuzin
have proven herbicidal efficacy on various crops.
5.3. The comparative data provided by the appellant fails to align the
concentrations of the premixed formulation of the claimed invention and the
tank-mix. For example, Table 1 and Table 2 of the complete specification of
the claimed invention compares 40% + 9% EC composition with 30% + 7%
tank-mix, which is unscientific.
5.4. The claimed composition is a mere recombination of known
herbicides in a known form and no data was submitted demonstrating
enhanced therapeutic or technical efficacy across the claimed range.
5.5. The appellant failed to demonstrate any synergistic effect beyond
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the additive properties of pendimethalin and metribuzin.
5.6. The complete specification does not provide reproducible
examples across the full scope of the claimed composition ranges or any
explanation of the role played by the excipients in achieving enhanced
homogeneity or stability.
6. The oral arguments of Mr.Shravan Kumar Bansal, on behalf of the
second respondent, may be summarised as under:
6.1. The claimed invention is anticipated by prior claiming in view of
IN 2243/MUM/2014. The said prior art document relates to liquid
compositions of pendimethalin and metribuzin and encompasses compositions
in any of the forms selected from SC, EC, Zeon Concentrate (ZC), and oil
dispersion (OD).
6.2. The inactive ingredients disclosed in Example 3 of IN
2243/MUM/2014 are the same as those disclosed in claim 2 (as solvent) and
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claim 5 (as surfactant) of the claimed invention.
6.3. The claimed invention is also anticipated by prior claiming in India
and Europe through prior art documents D1 and D2. D1 discloses the
herbicidal efficacy of metribuzin, linuron and prometrym combined with
bentazone, fluazifop-P-buthyil and pendimethalin on potato yield. The highest
efficacy is attained by the combination of metribuzin + pendimethalin. D2
discloses that the combination of pendimethalin and metribuzin incorporated
by sowing was more effective for bromegrass control than either of the
components used alone in 10 of 15 cases.
6.4. Even if the minor differences between D1, D2 and IN
2243/MUM/2014, on the one hand and the claimed invention, on the other,
were taken into account, the same would be obvious to a person skilled in the
art in view of the said prior arts.
6.5. D4 discloses herbicidal compositions comprising flufenacet,
pendimethalin and metribuzin. D5 discloses a composition comprising a
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microencapsulated pesticide selected from a group of compounds like
pendimethalin. D6 discloses an aqueous solution of pendimethalin alone and
four mixtures, including pendimethalin and metribuzin.
6.6. The claimed invention does not establish synergistic or surprising
effect from the ingredients of the composition and, therefore, is not patentable
under Section 3(e) of the Patents Act.
7. The arguments of Mr.Bhavik Patel, on behalf of the third
respondent, may be summarised as follows:
7.1. The claimed invention is anticipated by prior claiming by IN
2243/MUM/2014. The appellant admits, at page 25 of the appeal, that the
provisional specification of IN 2243/MUM/2014 refers to the EC
formulation.
7.2. When the claimed invention is compared with IN
2243/MUM/2014, apart from the use of pendimethalin and metribuzin in
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ranges that overlap, IN 2243/MUM/2014 also contains a non-ionic surfactant,
namely, octylphenol ethoxylate (in an amount of 5–15% w/w) and
ethoxylated polyarylphenol (in an amount of 0.05–5% w/w). The said prior
art also contains calcium dodecylbenzene sulphonate, as is evident from claim
10 thereof. This is an ionic surfactant and tallies with the preferred ionic
surfactant under claim 5 of the claimed invention.
7.3. The appellant is attempting to obtain a broad scope of protection
by using generic terms such as solvent, co-solvent, non-ionic surfactant and
ionic surfactant. By contrast, IN 2243/MUM/2014 has disclosed specific non-
ionic surfactants, such as octylphenol ethoxylate, and a specific anionic
surfactant, such as calcium dodecylbenzene sulphonate. It also discloses
solvents such as water, ethylene and glycol.
7.4. The claimed invention would be obvious to a person skilled in the
art on the basis of US 201102817331, CA 1049805A, US 6340655 B1 and
IN 696/BEL/2011.
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7.5. The EC pre-mix composition of the claimed invention does not
show synergistic effect or technical advancement as compared to the tank-
mix combination of pendimethalin and metribuzin. This is evident from Table
2. It is also evident on comparing Table 2 with prior art document D1 (AU
Conference Proceedings, 1990).
8. Each party also relied on several judgments. These judgments are
not being referred to or discussed on account of the course of action adopted
in this judgment.
Discussion, analysis and conclusions:
9. The rejected claims of the claimed invention are set out below:
"1. A Stable Herbicidal emulsifiable concentrate (EC) pre-
mix composition comprising:
i. Pendimethalin Technical in the range from 25 to
52 w/w%;
ii. Metribuzin Technical in the range from 6 to 12
w/w%;
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iii. Solvent in the range from 24 to 55w/w%;
iv. Co-solvent in the range of 4 to 6w/w%;
v. Non-ionic surfactant in the range of 3 to 5w/w%
and
vi. Ionic surfactant in the range of 3 to 5w/w%.
2. An emulsifiable concentrate (EC) composition as
claimed in claim 1 wherein the solvent is selected from the group
consisting of Aromatic hydrocarbons, aliphatic hydrocarbons,
diethylene glycol dialkyl ether, esters of plant oils-or mixture
thereof. Preferred solvent is C-IX solvent.
3. An emulsifiable concentrate (EC) composition as
claimed in claim 1 wherein the Co-solvent is selected from the
group consisting of N-alkyl Pyrolidones, preferably N-methyl
pyrolidone.
4. An emulsifiable concentrate (EC) composition as
claimed in claim 1 wherein the Non-ionic surfactant is selected
from the group consisting of Alkoxylated alcohols, ethoxylated
alcohols, ethopropoxylated alcohols, alkylphenolethoxylates,
alkoxylated tristyrylphenols, alkoxylated tributylphenols,
alkylaminethoxylates, ethoxylated propoxylated polyaryl phenol,
poly adducts of ethylene oxide and propylene oxide, ethoxylated
fatty acids, sorbitan esters and their ethoxylates, sorbitol esters,
propylene glycol esters of fatty acids and polyglycerol esters.
Preferred Non-ionic surfactant is Ethoxylated propoxylated
polyaryl phenol.
5. An emulsifiable concentrate (EC) composition as
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claimed in claim 1 wherein the Ionic surfactant is selected from
the group consisting of calcium salt of alkylaryl sulfonates,
ethoxylated and/or propoxylated di- or tri-styrylphenol
phosphate, ethoxylated and/or propoxylated di- or tri-
styrylphenol sulfate, phenyl sulfonate, alkynaphtalenesulphonate,
ethoxylated and/or propoxylated alcohol phosphate ester,
ethoxylated and/or propoxylated alkylaryl phosphate ester,
taurate, suphosuccinate, or polycarboxylate. Preferred ionic
surfactant is Calcium dodecylbenzene sulfonate.
6. A process for preparation of Pendimethalin and
Metribuzin emulsifiable concentrate (EC) as claimed in any one
of the preceding claim comprising the steps of:
i. Weighing the Solvent and adding N-alkyl
Pyrolidone under stirring to obtain a reaction mixture;
ii. Adding Non-ionic surfactant and ionic surfactant
under stirring to the mixture of step (i) to obtain a reaction
mixture;
iii. Adding Metribuzin technical and Pendimethalin
technical to the reaction mixture obtained in step (ii) and stirring
to dissolve the active ingredients."
10. As is noticeable from the narration of the contentions of the
respondents, the principal ground on which the claimed invention was
rejected by the impugned order was that it is both anticipated and obvious in
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view of IN 2243/MUM/2014. This document is referred to as D3 in the
impugned order and in the written arguments of the first respondent. In the
written arguments of the appellant, it is referred to either as D3 or R3. In the
written arguments of the second respondent, it is referred to as D7 and in the
written arguments of the third respondent, it is referred to as D1. In order to
avoid confusion, the said document is either referred to as IN
2243/MUM/2014 or as D3 in the remainder of this judgment.
11. In response to the contention that the claimed invention is
anticipated or obvious in view of D3, the appellant raised two preliminary
objections. The first objection is the weightier objection. This objection was
raised on the ground that the date of filing of the provisional specification of
D3 should not be taken into consideration to decide whether it qualifies as
prior art as regards the claim for an EC formulation. Learned counsel relied
on Section 11(2) of the Patents Act as the statutory foundation of this
contention by submitting that the EC formulation of D3 is not fairly based on
disclosures made in the provisional specification thereof. If the date of filing
of the provisional application of D3 were to be disregarded, it was submitted
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that D3 would not qualify as prior art, as regards the EC formulation, because
the complete specification of D3 was filed on 30th December 2014, whereas
the provisional application of the claimed invention was filed earlier on 25th
August 2014 (i.e. the priority date). Learned counsel for the appellant
contended that this objection was raised categorically in the reply statement
to the pre-grant opposition (at pages 1026–1028 and pages 1036–1038 of
Volume VI) and in the written submissions to the pre-grant opposition of the
third respondent (at pages 1184–1191 of Volume VII). This contention
warrants close examination.
12. As a first step, it is apposite to set out Section 11(1), (2) and (6) of
the Patents Act. The said provisions are as under:
“11.Priority dates of claims of a complete specification.-
(1) There shall be a priority date for each claim of a
complete specification.
(2) Where a complete specification is filed in pursuance of
a single application accompanied by-
(a) a provisional specification; or
(b) a specification which is treated by virtue of a
direction under sub-section (3) of section 9 as a provisional
specification,
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and the claim is fairly based on the matter disclosed in the
specification referred to in clause (a) or clause (b), the
priority date of that claim shall be the date of the filing of
the relevant specification.
(6) In any case to which sub-sections (2), (3), (3A), (4) and
(5) do not apply, the priority date of a claim shall, subject
to the provisions of Section 137, be the date of filing of the
Complete Specification.”
13. The next step is to examine whether the appellant raised this
objection in the pre-grant opposition. On perusal of the statement and
evidence of the appellant to the pre-grant opposition of the third respondent,
the contention that the priority date of D3 cannot be reckoned from the date
of filing of the provisional specification has been raised at internal pages 9-11
thereof (pages 1026-1028 of Volume VI). In the written submissions of the
appellant in relation to the pre-grant opposition of the third respondent, at
internal page 23 thereof (page 1186 of Volume VII), it is stated as follows:
"Document D1 (IN2243/MUM/2014) cannot validly claim
the priority date of the provisional specification (July 09, 2014).
The provisional specification of the cited document only discloses
a Suspo-emulsion (SE) formulation of Pendimethalin and
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Metribuzin, wherein one of the active ingredients remains
suspended (remains as an insoluble/dispersed particle) in the
formulation."
14. I turn next to the impugned order to verify whether this contention
was noticed and, if so, whether a finding was recorded in relation thereto. At
paragraph 10 of the impugned order, while discussing the appellant’s
response to prior arts D1 to D3, in relevant part, it is recorded as under:
"D3 published on 15/01/2016 (Publication under section
11A is annexed herewith as Annexure A) which is after the date of
filing of the instant application (i.e. 25/08/2014) and therefore D3
is not a valid prior art under the ground of 25(1)(e)."
Thus, the contention of the appellant was noticed in the impugned order. The
impugned order contains findings from paragraphs 17 to 20 thereof and the
conclusion at paragraph 21 thereof. Conspicuous by its absence is any finding
with regard to the objection that D3 cannot be construed as prior art for the
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reasons discussed above.
15. The provisional specification of D3 warrants examination so as to
decide whether there is at least prima facie merit in the contention of the
appellant. The provisional specification of D3 sets out the background of the
invention. Thereafter, the summary of the invention is as follows:
"Present invention relates to a novel composition in suspo-
emulsion (SE) form comprising a) pendimethalin b) metribuzin c)
dispersant d) anti freezing agent c)anti foaming agent f)
suspending agent g) anti microbial agent h) thickener and i)
buffering agent.
Present invention also relates to process for preparing the
suspo-emulsion composition comprising pendimethalin and
metribuzin."
16. The detailed description of the invention provides, in relevant parts,
as under:
"A suspo-emulsion (SE) formulation is essentially a
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mixture of a suspension concentrate with an oil-in-water
emulsion.”
....
“Advantage of suspo-emulsion in comparison of wettable
powder (WP) & emulsifiable concentrate (EC) formulation is
outline below;
● The particle size (less than 5 micron) of Suspo-emulsion
formulation is smaller than particle size (30 - 50 micron)
of WP formulation.
● SE formulation is eco-friendly formulation as it is water
based where as WP formulation is dusty.
● SE formulation has contains no organic solvent where as
EC formulation has contains organic solvent.
● As non-ionic surfactants are used in SE formulation, so it
gives better bio-efficacy than EC & WP formulation."
17. As is evident from the above extracts, even the detailed description
deals only with a SE formulation, and the only references to EC formulation
appear to be confined to the references extracted above. Against this
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backdrop, recognising the statutory prescription in Section 11(2) that priority
may be reckoned from the date of filing of the provisional specification
provided the claim is fairly based on a matter disclosed in the provisional
specification, it is pertinent to examine the granted claims of D3 to test
whether there is an arguable case to say that the priority of the claim in D3
regarding the EC formulation should be reckoned from the date of filing of
the complete, and not provisional, specification. For this purpose, I set out
below independent claim 1 and dependent claim 17 (which deals with an EC
formulation) of D3:
“1. A liquid composition of bioactive amounts of Pendimethalin
and Metribuzin along with inactive excipients wherein, the ratio
of Pendimethalin to Metribuzin is in the ratio from 1:1 to 25:1.
17. A liquid composition of Pendimethalin and Metribuzin as
claimed in claims 1 to 5 wherein the formulation may be in the
form of suspo emulsion (SE), emulsifiable concentrate (EC), zeon
concentrate (ZC) and Oil Dispersion (OD).”
18. On examining dependent claim 17 of D3 in the light of the
provisional specification thereof, I find that the objection raised by the
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appellant cannot be rejected outright as untenable and warranted careful
consideration and a finding. After noticing the contention in the impugned
order, as recorded earlier, there is neither discussion nor finding on this issue
in the impugned order. Especially in view of the emphasis placed on D3 both
in the impugned order and in the oral and written arguments of all the
respondents, the failure to record such finding vitiates the impugned order.
19. Under these circumstances, one option would have been for me to
record a finding on this issue and, thereafter, dispose of the appeal on merits.
Not only because it is more appropriate for the forum of first instance to
record a finding on a significant issue, but also in view of the manner in
which other issues were dealt with in the impugned order, I am not resorting
to that course of action.
20. Both in the opposition proceedings before the first respondent and
in the course of submissions in these proceedings, the second respondent has
referred to seven prior art documents, including D3. The third respondent has
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referred to nine prior art documents, including US 201102817331, CA
1049805A, US 6340655B1 and IN 696/BEL/2011, which were labelled as
D2, D4, D6, and D9, respectively, by the third respondent. The third
respondent has also mapped these prior arts against the claimed invention.
The discussion in the impugned order regarding these prior arts calls for
consideration next.
21. Paragraphs 17 and 18 of the impugned order, which discuss the
prior arts, are set out below:
"17. I agree with the opposition and concluded
that the range of the active ingredients Pendimethalin 25-
52% and Metribuzin 6-12% is already disclosed in the prior
filed application 2243/MUM/2014 as Pendimethalin 20-50%
and Metribuzin 1-10%. The entire range of both the active
substances claimed in the composition of the present
invention is fall within the disclosed range of
2243/MUM/2014 where the difference in the upper range of
Pendimethalin and also Metribuzin is only 2% but such a
range cannot be a workable range and the upper range 2%
is negligible as there is no significant activity for that range
provided in the specification. There is no specific disclosure
or enabling disclosure provided in the specification
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pertaining to the effect of excipients in the composition for
the enhanced activity. Thus the workable range and the
range claimed in the present application is not novel under
the provision of section 25(1)c of the Act as the identical
range is claimed in the prior filed application
2243/MUM/2014.
18. The Pendimethalin and Metribuzin combination is
known in the art. Different proportion of said active
substances where workable and improved results producing
proportion is also known in the art. The object of the present
applicant as stated in the application is to provide a
homogeneous, stable, premixed with an enhanced herbicidal
effectiveness on wheat, barley, soyabeen and potatoes which
results in good yield. D1 disclosed combinations of
pendimethalin and metribuzin incorporated by sowing (IBS)
were more effective for bromegrass control than either of the
components used alone in 10 of 15 cases. Pendimethalin
.594 Kg/ha + metribuzin 100 Kg/ha and pendimethalin .660
Kg/ha + metribuzin .200 Kg/ha resulted in the greatest
reduction in bromegrass numbers. D1 discloses the workable
proportion 49.5:15, 59.4:10 and 33:10. D2 disclosed that
the highest efficacy were attained by the combination of
metribuzin + pendimethalin (88.1). The applicant failed to
provide comparative experiment with data for the effect of
excipients in the pre-mix composition comprising
pendimethalin and metribuzin of the present invention with
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the same concentration of avtive ingredientstank mix or
same concentration without any excipient in Table 1 and
Table 2. Table 1 and 2 provided for the effect of the
herbicides Pendimethalin 40% and Metribuzin 9% on the
growth of the wheat crop and on weed count at different
intervals after application with same concentration could not
provided any to understand the surprising effect of the
premix composition and data provided in the table.
Comparing pre-mix composition (pendimethalin 40% and
metribuzin 9%) of the present invention with different tank
mix composition (pendimethalin 30% and metribuzin 70%) is
unscientific and it is not clear how the 40% and 30%
pendimethalin in combination with 9% and 70% metribuzin
respectively expected to produce similar activity, such a
comparison cannot be considered as improved effect. There
is no support in the specification for the homogeneous,
stable and an enhanced herbicidal activity. In the absence of
any support in the specification the claimed result achieved
is considered as a mere statement without any improvement
in the work. It appears that the applicant submitted with
certain formulation with permutation and combination,
where such a combinations proved as a suitable combination
for achieving more efficacious effect as per the prior art. For
claiming any specific pre-mix combination, there must be a
comparative study with the tank mix combination having
same concentration of active ingredient. Different
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concentration of active ingredients in pre-mix and tank mix
produce different results, such a comparison cannot be
acceptable and considered as unscientific. Pendimethalin
and metribuzin is a preferred combination in the prior art
D1 and D2. Excipients used in the premix composition are
also known for using premix combination. Person skilled in
the art motivated with the teaching and suggestion in the
prior art for preparing different workable range of
pendimethalin and metribuzin combination with expcipients
which are routinely used for preparing premix composition.
Preparing certain composition which is already suggested in
the prior art D1 and D2 along with routinely used excipients
for preparing premix composition is obvious to the person
skilled in the art unless such a combination exhibits
improved effect. Thus claims of the impugned application do
not involve inventive step and there is no technical
advancement u/s 25(1)(e) of the Act."
22. The conclusion that follows from the above paragraphs is that,
apart from a discussion on prior art document D3 in paragraph 17, the
impugned order takes note of prior documents D1 and D2 in paragraph 18.
No other prior art documents have been discussed in the impugned order. As
regards D1 and D2, the appellant contended that these prior arts do not
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disclose an EC formulation. On examining D1 and D2, there is prima facie
merit in this contention. In these circumstances, for the primary reason that
the impugned order does not record any finding on whether D3 qualifies as
prior art as also on account of non-consideration of several prior art
documents relied upon by the second and third respondents, the matter
warrants reconsideration. An ancillary reason would be the failure to discuss
and record any findings in relation to the affidavits of Mr.G.N.Kendapa and
Mr.Vairamani Ramanathan, including as to whether these documents are
liable to be considered or disregarded. Because of these conclusions, it is
unnecessary to deal with the second objection regarding D3, namely, that the
grant stands revoked under Rule 58 of the Patents Rules for non-filing of a
reply to the post-grant opposition within the prescribed time. All contentions
are kept open to all parties in this regard.
23. For the reasons set out above, the impugned order dated 5th March
2024 is set aside and the matter is remanded for reconsideration on the
following terms:
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23.1. In order to preclude the possibility of predetermination, an officer
other than the officer who issued the impugned order shall undertake
reconsideration.
23.2. After providing a reasonable opportunity to the appellant and the
opponents, a speaking order shall be issued within four months from the date
of receipt of a copy of this order.
23.3. The first respondent shall decide the matter on remand
uninfluenced by any observations herein, including the prima facie
observations in relation to the provisional specification of IN
2243/MUM/2014 (D3).
20.11.2025
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
PKN
To
1.Deputy Controller of Patents and Designs,
Intellectual Property Office,
Intellectual Property Office Building,
G.S.T.Road, Guindy,
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Chennai - 600 032.
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SENTHILKUMAR RAMAMOORTHY J.
PKN
Pre-delivery judgment made in
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20.11.2025
https://www.mhc.tn.gov.in/judis ( Uploaded on: 24/11/2025 01:45:03 pm )
