Decco Worldwide Post Harvest Holdings B.V. v Controller of Patents and Designs (2023)

Summary

“This is an appeal under section 117A of the Patents Act 1970 assailing an order dated 19 July 2021 passed by the Assistant Controller of Patents and Designs rejecting the Patent Application filed by the appellants dated 7 January 2017.” (para 1) “Briefly, the appellant applied for grant of patent with regard to an invention titled ‘A fungicidal treatment for black sigatoka’ which provides for a treatment method for black sigatoka, a leaf-spot disease in banana plants, caused by the ascomycete fungus Mycosphaerella fijiensis (Morelet) by use of Ortho-phenyphenol.” (para 2) “The main grounds for rejection of the application are set out as follows:” “The invention is not patentable under section 3(h) of the Act.” “The invention does not disclose the best way of performing the same and suffers from insufficiency of disclosure under section 10(4) of the Act.” “Lack of obviousness and inventive steps under section 2(1)(ja) of the Act.” (para 5)

The Court held that “Section 3(h) is method of agriculture or horticulture which does not contemplate treatment of plants to render them free of disease whereas section 3(i) deals with the process of treatment or prevention.” (para 10) “In fact, no reasons have been given by the Controller as to why a method of treatment of plants to treat fungal diseases would fall within section 3(h) which covers traditional methods of agriculture.” (para 11) “Moreover, in arriving at the finding that the subject patent lacked sufficiency of disclosure under section 10(4) of the Act, no adequate opportunity was afforded to the appellants.” (para 12) “I also find that the finding that the subject invention lacked inventive steps is unreasoned and without appreciating the facts.” (para 13) “For the foregoing reasons, the order dated 19 July 2021 is unsustainable and set aside. The matter is remanded to the respondent authorities to adjudicate the subject patent application afresh including the question of patentability, after giving an opportunity of hearing to the appellant.” (para 15)

What the court decided

1. Sections 3(h) and 3(i). “Sections 3(h) and 3(i) of the Act cover different categories of invention. Section 3(h) is method of agriculture or horticulture which does not contemplate treatment of plants to render them free of disease whereas section 3(i) deals with the process of treatment or prevention. The Amendment Act 38 of 2002 amended section 3(i) to remove ‘or plants’ from its scope.” (para 10)
2. An unreasoned finding under section 3(h). “In passing the impugned order the Controller has failed to explain why the subject patent application falls within the category of ‘agriculture’. In fact, no reasons have been given by the Controller as to why a method of treatment of plants to treat fungal diseases would fall within section 3(h) which covers traditional methods of agriculture. The Controller has also failed to explain why prevention of disease or treatment would fall under agriculture, when there is a separate provision under section 3(i) of the Act.” (para 11)
3. Treatment of plants and the Manual. “It is evident from section 3(i) of the Act that, the treatment of plants do not fall within the purview of non patentability and the Manual being a mere guiding factor to the statutory provisions of the Act cannot have an overriding effect over the Act.” (para 11)
4. Earlier grants ignored. “Thus, the finding that the subject invention falls within the definition of ‘agriculture’ does not deal with the submissions of the appellants. In this connection, reliance was also placed by the appellants on the numerous inventions dealing with treatments of plants enumerated in the petition which have been totally ignored in the impugned order.” (para 11)
5. Reasons as the foundation. “Reasons are the foundation of any order passed by any judicial or quasi judicial authority. The main objective of providing reasons in any order is to provide clarity to the reader and to understand how and why and how the matter has been proceeded and dealt with by the Authority” (para 11)
6. Insufficiency without a hearing. “Moreover, in arriving at the finding that the subject patent lacked sufficiency of disclosure under section 10(4) of the Act, no adequate opportunity was afforded to the appellants. Significantly, at the hearing before the Controller there was no whisper about any objection concerning the disclosure being insufficient for not fully or particularly disclosing the adjuvants as recited in claims 1 to 4. The finding on insufficiency of disclosure also ignores the complete specifications provided by the appellant where the adjuvants have been clearly mentioned.” (para 12)
7. An unreasoned finding on inventive step. “I also find that the finding that the subject invention lacked inventive steps is unreasoned and without appreciating the facts. The Controller has misdirected himself in appreciating the invention and comparing them with reference to the prior arts without understanding and appreciating the teachings thereof.” (para 13) “There has also been no combination of the prior arts which would help in determining whether the claimed invention was lacking in inventive steps. I also find that in combining the prior arts D1 to D7, the Controller failed to appreciate the teachings thereof.” (paras 13–14)
8. Description before claims. “In this connection, it has been held that the proper way to construe a specification is to first read that description of the invention and then see the claims” (para 13), citing Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978). “It is important to read the claims of a patent application with their specifications. Thus, it is necessary to read the description of the invention before examining the claims.” (paras 13–14)
9. The tests for inventive step. “In Enercon vs Alloys Wobben (ORA/08/2009/PT/CH) Order no.123 of 2013, (Paragraph 43) the IPAB has observed that there has to be coherent thread leading from prior art to obviousness or there has to be reasonable expectation of success embedded in the prior art which motivates the skilled person. The tests for deciding inventive steps have been elaborately dealt in Avery Dennison Corporation vs. Controller of Patents and Designs (2022) SCC OnLine Del 3659 (Para 10-20), and the Controller has ignored the same in deciding the question of inventiveness.” (para 14)
10. Procedure. Remand. “For the foregoing reasons, the order dated 19 July 2021 is unsustainable and set aside. The matter is remanded to the respondent authorities to adjudicate the subject patent application afresh including the question of patentability, after giving an opportunity of hearing to the appellant.” (para 15) “With the aforesaid directions, AID 11 of 2011 stands allowed.” (paras 15–16)

What the court did not decide

“It is made clear that the aforesaid findings insofar as the merits of the case are concerned, are prima facie and not binding on the Controller.” (para 15)

Subsequent treatment

• Followed — In Syngenta Crop Protection v Assistant Controller of Patents (2024) the Delhi High Court reproduced para 11 of this judgment (para 21) and held: “I am respectfully in agreement with the aforesaid view taken by the Calcutta High Court. In my opinion, a method of treatment of plants would not fall under the purview of ‘method of agriculture’ as defined in Section 3(h) of the Patents Act.” (para 23) It recorded that “the Controller went on to grant the patent to the applicant therein, noting that the method of plant treatment does not fall under the purview of Section 3(h) of the Patents Act.” (para 24)