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Date of Decision: 7th August, 2023 C.A.(COMM.IPD-PAT) 170/2022
DOW AGROSCIENCES LLC ..... Appellant
Through: Mr. Ankush Verma, Mr. Debashish Banerjee, Mr. Rohit Rangi, Mr. Vineet Rohilla, Mr. Pankaj Soni, Mr. Tanveer Malhotra and Mr. Venkatesh Naik, Advocates (M: 9971799662).
Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar
Mishra, Mr. Alexander Mathai Paikaday and Mr. M Sriram, Advocates (M: 98107 88606).
JUDGMENT
1. This hearing has been done through hybrid mode.
2. The delay in filing the appeal is condoned.
3. M/s Dow Agrosciences LLC has filed the present appeal challenging the impugned order dated 14th July, 2020 by which the application for grant of a patent for patent application bearing No. 9212//DELNP/2012 titled ‘Stabilized Agricultural Oil Dispersions’ (hereinafter ‘subject patent’) has been refused under Section 15 of the Patents Act, 1970 (hereinafter ‘the Act’). By the said impugned order, the Appellant’s application for patent has been refused on several grounds including lack of inventive step on the basis of various prior art documents. The subject patent application was filed before the Indian Patent Office (IPO) on 25th October, 2012 as a national phase application and was published under Section 11A of the Act on 19th February, 2016. The priority date of the subject patent application is 26th April, 2010.
4. A first examination report (FER) dated 29th December, 2017 was issued raising objections relating to lack of inventive step under Section 2(1)(ja) of the Act, citing three prior art documents, non-patentability under Section 3(e) of the Act as also lack of clarity and conciseness under Section 10(4)(c) and Section 10(5) of the Act. The Appellant filed a response to the said FER on 26th June, 2018 and dealt with all the three prior arts documents cited by the ld. Controller. The three prior arts cited in the FER in support of the objection of lack of inventive step are set out in the following table: Prior Art Publication No. Publication Date Title D[1] WO2002036566 A[1] 10.05.2002 Agrochemical Composition D[2] US5599768 04.02.1997 Stabilization of Non-Aqueous Suspensions D[3] WO2008032328 A[2] 20.03.2008 Pesticide Nanoparticles Obtained from Microemulsions and Nanoemulsions
5. Thereafter, a hearing notice dated 18th November, 2019 was issued on behalf of the IPO in which again D[1] to D[3] were cited for the objection on lack of inventive step. In addition, in the said hearing notice, a further set of 19 prior art documents, i.e., D[4] to D22 were cited in support of the objection of lack of inventive step. In addition, the objections under non-patentability under Section 3(e) of the Act and insufficiency of disclosure were also raised in the said hearing notice. The matter was then heard before the ld. Controller and finally by the impugned order, the subject patent application was refused.
6. The Court has heard ld. Counsels for the Appellant and the Respondent and also perused the record. The grievance of the ld. Counsel for the Appellant is in three-fold: i) Firstly, the one of the reasons for rejection i.e. in respect of how the term ‘consisting essentially’ is to be construed was never raised in any previous objections or in the FER. ii) Secondly, some of the prior arts documents i.e., D-16 and D[7] have been wrongly referred to by the ld. Controller. Ld. Counsel contends that document D-16 as referred to internal page 17 of the order does not have a column 2 and the content is completely different. iii) Thirdly, the document D-7, i.e., EP0789999 titled ‘Herbicidal Oil Suspension Concentrates’ that is referred to, is a German document, and the reference to the same is not corrigible. It appears that the extractions in the impugned order have been taken from some other documents to which there is no reference in the impugned order. The relevant portion of the impugned order concerning Document D-7 is extracted below: D[7] describes in example 3 a composition which corresponds to the components (a) to (e) of the present composition which is thermally stable (see page 28, 3rd paragraph, 1st sentence). He submits that such a reference cannot be found in D-7 at all and D-7 is a document which is in German with only ten pages. It is, thus, pleaded that the impugned order deserves to be set aside on this ground itself. It has also been averred by the ld. Counsel for the Appellant, that the above reference does not correspond to the prior art document D[7].
7. Mr. Harish V Shankar, ld. CGSC appearing for the Patent Office submits that repeated conversations have been held with the concerned Assistant Controller who has handled the subject patent application which reveals that the impugned order, has some incorrect references. He fairly submits that the matter may have to be remanded to the IPO for a fresh consideration.
8. The submissions made today and the hearing notice as also the impugned order reveals that there are some major errors in the impugned order and the references are themselves incorrect. Such an order cannot be sustained.
9. Insofar as the reference to prior art document D[7] is concerned, the Court has also accessed a translated version of the said prior art document D-7 using machine translation tools, however, the document does not appear to be having any specific reference to the term ‘thermal stability’. Prima facie, the same appears to be relating to stability in terms of storage.
10. In view of the fact that the references in the impugned order to the prior art are not accurately made and there clearly appears to have been some confusion in the manner in which the prior art documents have been cited and referred to in the impugned order. Therefore, it is deemed appropriate to remand the matter to the Patent Office for a fresh hearing.
11. Fresh hearing shall take place on the basis of hearing notice which is already on record. If any additional objections are to be raised, the same shall also be enumerated and submissions shall be sought from the Applicant. The decision shall be rendered within a period of two months of filing the written submissions by the Appellant. The Appellant to file updated Form 3, before the IPO by 31st August, 2023.
12. The Patent office shall ensure that such errors do not occur, as rejection of a patent deprives the Applicant for valuable economic rights.
13. The appeal is allowed and disposed of with all pending applications.
14. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail- llc-ipo@gov.in for compliance of this order. Mr. Harish V. Shankar, ld. Counsel for the Respondent to also communicate the order to the IPO, to ensure compliance of the same.
PRATHIBA M. SINGH JUDGE AUGUST 7, 2023 mr/am [Corrected and released on 10th August, 2023]