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Reasons are the foundation of any order passed by any judicial or quasi-judicial authority to provide clarity to the reader and to understand how and why, the court added.
The Calcutta High Court recently set aside an order passed by the Assistant Controller of Patents and Designs ("Controller") who rejected a Patent Application filed by agrochemical multinational UPL's postharvest division Decco Worldwide (the appellants) for their invention titled "A fungicidal treatment for black Sigatoka," which is used to prevent leaf-disease that infects banana plants.h
The court stated, “Reasons are the foundation of any order passed by any judicial or quasi-judicial authority to provide clarity to the reader and to understand how and why and how the matter has been proceeded and dealt with by the Authority.”
The single judge bench of Justice Ravi Krishan Kapur said, “The subject invention lacked inventive steps is unreasoned and without appreciating the facts. The Controller has misdirected himself in appreciating the invention and comparing them with reference to the prior arts without understanding and appreciating the teachings thereof.”
The Assistant Controller of Patents and Designs objected to the patent application on the basis that it dealt with "agricultural and horticultural methods," which are not patentable under Section 3(h) of the Patents Act, 1970 ("Act"). Furthermore, it was determined that the Patent Application lacked unambiguous disclosure under Section 10(4) of the Patents Act and that the invention lacked "obviousness and inventive steps" under Section 2(1) (ja) of the Patents Act.
Decco Worldwide Post Harvest Holdings B.V & Anr. applied for a grant of a patent with regard to an invention titled “A fungicidal treatment for black Sigatoka” which provides a treatment method for black sigatoka, a leaf-spot disease in banana plants, caused by the ascomycete fungus Mycosphaerella fijiensis (Morelet) by use of Ortho-phenypheno.
Appellants contended that the subject invention is a cost-effective and environment-friendly method for the treatment of black Sigatoka. This also reduces the risk of resistance and improves the health and yield of the plant increasing in their economic value.
Further, it was also contended that until this invention, there was no disclosure or knowledge of any method involving the application of the compound Ortho-polyphenol (OPP) or a salt thereof to control black Sigatoka in banana plants
Furthermore, it was also contended that the subject invention is for a “process of treatment of plants to render them free from disease”
The main grounds for rejection of the application as per the appellants were as follows:
Further, the appellants pointed out that the respondents had raised an objection under Sections 2(1)(j), i.e., lack of novelty, 2(1)(ja), i.e., lack of inventive steps,3(d) & 3(e), i.e., non-patentable invention, 3(h),i.e., method of agriculture and 10(4) i.e., lack of clear and sufficient disclosure, which were misconceived and untenable.
Counsel representing the respondents stated that the use of salt of OPP as a fungicide and biocide is well known to a skilled person, hence, there was a lack of inventive steps in the subject invention.
Also, the use of a reduced dosage of OPP, i.e., new use of a known substance cannot be considered as an invention under section 3(d) of the Act, he stated.
Respondents contended the appellant’s claim was contradictory and inconsistent.
After hearing the arguments, the court held, “ The Controller has misdirected himself in appreciating the invention and comparing them with reference to the prior arts without understanding and appreciating the teachings thereof.”
The bench relied on the case of Avery Dennison Corporation vs. Controller of Patents and Designs 2022 which talks about the tests for deciding inventive steps and said that the Controller has ignored the same in deciding the question of inventiveness.
“The subject patent lacked sufficiency of disclosure under section 10(4) of the Act, no adequate opportunity was afforded to the appellants. Significantly, at the hearing before the Controller there was no whisper about any objection concerning the disclosure being insufficient for not fully or particularly disclosing the adjuvants as recited in claims,” the court further added.
Accordingly, the bench set aside the order dated July 19, 2021.
Case Title: Decco Worldwide Post Harvest Holdings B.V & Anr. V The Controller of Patents and Designs & Anr.
Statue: Patents Act 1970
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