Delhi High Court
Crystal Crop Protection Ltd vs Assistant Controller Of Patents And … on 28 February, 2026
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 28/02/2026
+ C.A.(COMM.IPD-PAT) 19/2023 & I.A. 20715/2025
CRYSTAL CROP PROTECTION LTD .....Appellant
versus
ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
& ORS. .....Respondents
Advocates who appeared in this case
For the Appellant : Ms. Priyam Lizmary Cherian,
Advocate.
For the Respondents : Ms. Anubha Bhardwaj, CGSC with
Ms. Ananya Shamshery, Advocates
for R-1.
Mr. Ajay Amitabh Suman, Mr.
Shravan Kumar Bansal, Mr. Rishi
Bansal, Mr. Pankaj Kumar, Mr.
Deepak Srivastava, Mr. Rishabh
Gupta, Ms. Shruti Manchanda and Ms.
Deasha Mehta, Advocates for R-2.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
JUDGMENT
TEJAS KARIA, J
I.A. 20715/2025
INTRODUCTION
1. This is an Application filed on behalf of Respondent No. 2 under Rule
6(v)(xii) of Delhi High Court Intellectual Property Division Rules, 2022
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(“IPD Rules”), Order XLI Rule 27 read with Section 151 of the Code of Civil
Procedure, 1908 (“CPC“) for placing additional documents on record.
2. The specifics of the additional documents are as under:
a. Registration of Halosulfuron Methyl 75% with EPA, USA (2009)
b. Registration of Metribuzin with EPA, USA (2009)
c. Publication: Metribuzin Analysis of Risks to Endangered and
Threatened Salmon and Steelhead EPA, (2004)
d. Registration of Tribenuron Methyl with EPA, USA (2009)
e. Registration of Tribenuron Methyl with EPA, USA (2008)
f. Product Details from University of Tennessee Record (2008)
g. Description of Carfentrazone-ethyl as PPO Inhibitor (University of
Hertfordshire, since 1997)
h. Article on PPO 14 (E) Inhibitor Function (University of California)
i. Registration of Carfentrazone-ethyl EPA, (1997/1998)
j. Article: Persistence of Sulfosulfuron Applied in Wheat on
Succeeding Crop of Sorghum (2007)
k. Resolution in favour of Ms. Tarannum Khan
SUBMISSIONS ON BEHALF OF THE APPELLANT
3. The learned Counsel for the Appellant submitted as under:
3.1. The present Application has been filed to bring on record
documents that were not presented to the learned Controller at the
time of adjudication of Pre-Grant Opposition I and were available
in public domain on the date of publication of the Subject
Application, as Respondent No. 2 admits, “6.a…The documentsC.A.(COMM.IPD-PAT) 19/2023 Page 2 of 50
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listed…are publicly available records with the Environmental
Protection Agency (EPA), USA.”
3.2. Respondent No. 2 has not established any of the requirements under
Order XLI Rule 27 of the CPC as: (i) it is not Respondent No. 2’s
case that the learned Controller refused to admit the additional
documents under Order XLI Rule 27(1)(a) of the CPC; (ii) has not
shown how despite its due diligence these documents were not
within its knowledge under Order XLI Rule 27(1)(aa) of the CPC;
and (iii) how the additional documents would enable
pronouncement of a judgement under Order XLI Rule 27(1)(b) of
the CPC.
3.3. The Act provides various opportunities to third parties to supply
documents to challenge the patentability of an application viz.:
a. While making representations before the Patent Office: (i)
Section 25(1) of the Act read with Rule 55(1) of the Rules:
representation before the grant of patent along with evidence;
and (ii) Section 25(2) of the Act: after patent grant but before
the expiry of one year from the publication of patent grant, by
any person interested.
b. Before hearing before the Patent Office: (i) Rule 60 of the
Rules: Further evidence only can be submitted with the leave
of the learned Controller but before a hearing under Rule 62 of
the Act; (ii) Rule 62(4) of the Rules: party intending to rely on
publication at the hearing not already mentioned in the notice,
statement or evidence, shall give not less than five days’ notice;
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and (iii) Rule 128 of the Rules: where the learned Controller is
of the opinion that for proper prosecution or completion of any
proceedings it is necessary for a party to file a document or
produce evidence, for which provision has not been made in
the Act, he may, by notice require such party to file the
document or produce the evidence.
3.4. Respondent No. 2 had several occasions available to file additional
documents particularly at the stages of Pre-Grant Opposition I,
Reply Statements I and II and the Hearing. The present Application
to place the additional documents on record was filed on
19.08.2025. This shows a clear lack of diligence over a period of
several years. The law requires an act to be done in a particular
manner; the act has to be done in that manner alone or not done at
all. All other methods of doing the act are necessarily forbidden.
Respondent No. 2 has not produced this evidence in the manner
prescribed in law, and therefore, cannot be allowed at this stage.
Reliance was placed upon the decision in Akebia Therapeutics
INC. v. Controller General of Patents, 2023 SCC OnLine Del
4841 while making the above submission.
3.5. The validity of a patent can be challenged even after grant. The Act
provides different remedies to a person interested to raise a
challenge to a patent. Section 25(2) of the Act allows a “person
interested” to challenge the grant of a patent. Such notice of
opposition can include additional documents that the opponent may
wish to rely upon. Further, Section 64(1) of the Act allows seeking
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revocation of a patent, where additional documents may be relied
upon.
3.6. Respondent No. 2 has not shown how admission of the additional
documents is necessary to pronounce a satisfactory judgment. The
requirement of the Court to enable it to pronounce judgment or for
any other substantial cause is not likely to arise ordinarily unless
some inherent lacuna or defect becomes apparent on an
examination of evidence. Only if absence of such additional
documents / evidence would result in a defective decision, would
Order XLI Rule 27(b) of the CPC come into effect. Order XLI Rule
27(b) of the CPC, which permits the admission of additional
evidence if the appellate court “requires” it to “pronounce
judgment, or for any other substantial cause”. This provision does
not apply automatically. The test is whether the Court can
pronounce a satisfactory judgment on the materials already
available on record without the additional evidence. There has been
no plea of apparent defect / lacuna in the facts of the present Appeal
or how non-admission of additional documents would result in a
defective decision. Caution is to be exercised in dealing with claims
for additional evidence, after a long lapse of time. Here, the
additional documents are sought to be placed after two years of
filing the present Appeal. Mere difficulty to pronounce a judgment
is not sufficient to allow additional documents at the stage of an
appeal. Reliance was placed upon the following decisions while
making the above submission:
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a. K. Venkataramiah v. A. Seetharama Reddy, 1963 SCC OnLine
SC 216
b. Wadi v. Amilal and Others, (2015) 1 SCC 677
c. N. Kamalam v. Ayyasamy, (2001) 7 SCC 503 4
d. Union of India v. Ibrahim Uddin, (2012) 8 SCC 1483.7. Section 107 read with Order XLI Rule 27 of the CPC does not allow
a litigant to patch up the weakness parts of their case and fill up
omissions for the first time in the Court of appeal. Allowing these
documents would result in allowing Respondent No. 2 to make a
fresh case by adding and varying the evidence, previously
examined, in order to prove a case which had not been set up before
the learned Controller. Reliance was placed upon the decisions in
Md. Saifur Rahman v. State of Assam, 1983 SCC OnLine Gau 8
and Hurpurshad v. Sheo Dyal, 1876 SCC OnLine PC 12 while
making the above submission.
3.8. Accordingly, the present Application shall be dismissed.
SUBMISSIONS ON BEHALF OF RESPONDENT NO. 2
4. The learned Counsel for Respondent No. 2 submitted as under:
4.1. The onus is on the Appellant to prove inventive step as per Section
2(1)(ja) of the Act. The Supreme Court in Novartis AG v. Union of
India, (2013) 6 SCC 1, has clearly held that the touchstone for
patentability in India is strict, and the applicant must demonstrate
not only novelty but also a significant technical advance having
economic significance or an inventive step as defined under Section
2(1)(ja) of the Act. The burden of proof lies squarely upon the
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applicant /appellant to establish such inventive step. The Appellant
has not disputed this legal proposition. Yet, despite such an
admitted position, the Appellant has neither furnished efficacy data
nor made any endeavor to distinguish the subject matter from
existing prior arts.
4.2. It is a statutory and manual requirement to disclose relevant prior
arts. The Act read with the Patent Manual requires that every
applicant must disclose all material prior arts known to him in the
specification itself. Such a disclosure ensures that the examination
process is conducted fairly and with complete knowledge of the
existing state of the art.
4.3. The Appellant has admitted that additional documents and prior
arts are vital and necessary for adjudication of the Subject Patent.
The Appellant has not given any specific reply contesting the prior
arts, their relevancy, or their effect on the Subject Patent by
Respondent No. 2 in the present Application for defeating its
alleged patentability. The present case is within the ambit of Order
XLI Rule 27(1)(b) of the CPC justifying the production of such
prior arts before this Court. Even Sections 13(1)(a) and 13(1)(b) of
the CPC provides for testing the patentability of the Subject
Application on the basis of all the prior arts, in existence prior to
filing of the Subject Application.
4.4. The mere grant of a patent by the learned Controller does not create
presumption of its validity, as the examination process may not
encompass all relevant prior arts or grounds of objection. Patents
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must be evaluated for patentability based on the entirety of prior
arts available before the filing date, as incomplete consideration by
the learned Controller can lead to erroneous grants. The patent
examination process is not infallible, and post-grant proceedings
provide an opportunity to rectify oversights in considering prior
arts. Reliance was placed upon the decision in F. Hoffmann-LA
Roche Limited v. Cipla Ltd., 2009 (40) PTC 125 (Del) while
making the above submission.
4.5. Counterclaims for patent invalidity based on prior arts can be
entertained even after the patent’s expiry, as the grant’s validity
remains contestable in ongoing infringement suits. To safeguard
public interest, Courts must scrutinize patents against all prior arts
to avoid granting monopolies on non-inventive subject matter. It
promotes a balanced intellectual property regime, ensuring patents
are revoked if prior arts reveal anticipation or obviousness.
Reliance was placed upon the decisions in Macleods
Pharmaceuticals Ltd. v. Controller of Patents, Neutral Citation:
2025:DHC:158 and F. Hoffmann-La Roche Ltd. (supra) while
making the above submission.
4.6. The mere availability in the public domain does not mean that such
documents were within the knowledge, power, or possession of
Respondent No. 2. The duty to disclose such prior arts lay upon the
Appellant while filing the Subject Application. Thus, the plea of
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statutory duty to disclose all the prior arts while filing the Subject
Application.
4.7. The Appellant has not furnished any efficacy data or evidence to
demonstrate how the present invention is distinguishable from prior
arts. In Novartis AG (supra), the Supreme Court categorically
mandated that incremental inventions without demonstrable
enhancement of efficacy cannot qualify for patent protection. In the
absence of such data, the claimed invention cannot be said to
involve an inventive step.
4.8. The Appellant has misconceived and sought to misapply the
decision in Ibrahim Uddin (supra). There is contextual
misapplication as the said decision pertains to a private land title
dispute (in personam), not a public monopoly right (in rem) like
patents. The public interest imperative in patent matters overrides
strict procedural barriers outlined in the said decision. It is the
Court’s inherent duty to examine all prior arts in patentability
assessment necessitates admission, rendering the Ibrahim Uddin
(supra) restrictions inapposite. The said decision’s emphasis on
“substantial cause” actually supports the admission due to fraud
and public policy, contrary to the Appellant’s selective reliance
upon the said decision. There is precedential divergence as patent
appeals warrant liberal evidentiary admission unlike the rigid
framework in the said decision which has non-intellectual property
context.
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4.9. When this Court granted liberty to file written submissions on
relevancy on 03.09.2025, the Appellant neither challenged the
details provided in the present Application under Order XLI Rule
27 of the CPC in its written submission nor reliance on any further
submission has been made. There is not any pleading with respect
to rebuttal on relevance of additional prior arts. In absence of any
pleading in the written submission, the Appellant cannot argue
what is not pleaded.
4.10. The grant of a patent constitutes an action in rem, conferring upon
the patentee a monopolistic right that operates erga omnes i.e.,
against all persons. Given the far-reaching implications, the Act is
designed to strictly regulate and scrutinize such grants to prevent
unwarranted monopolies. Reliance was placed upon the decisions
in M/s Golden Tobie Private Limited (Formerly known as Golden
Tobie Limited) v. M/s Golden Tobacco Limited, Neutral Citation:
2021:DHC:1820 and Indian Network for People living with
HIV/AIDS v. Union of India & Ors., 2009 (39) PTC 468 (Mad)
(DB) while making the above submission.
4.11. The Act incorporates multi-layered framework for challenging
patents including pre-grant opposition under Section 25(1) of the
Act, post-grant opposition under Section 25(2) of the Act,
revocation petitions under Section 64 of the Act, revocation by way
of counterclaim in infringement suits under Section 64(1) of the
Act and appeals against the learned Controller’s orders under
Section 117A of the Act. Notably, counterclaims for revocation are
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maintainable even against expired patents. This scheme
underscores the legislative intent to allow repeated scrutiny of
patent validity. Reliance was placed upon the decisions in
Macleods Pharmaceuticals Limited (supra) and F. Hoffmann-La
Roche Ltd. (supra) while making the above submission.
4.12. Invention and patentability are different. For an invention to qualify
as patentable, it must satisfy the criteria under Section 2(1)(j) of the
Act, it must be new, involve inventive step, and be capable of
industrial application that involves technical advance as compared
to existing knowledge. Reliance was placed upon the decision in
Novartis AG (supra) while making the above submission.
4.13. In alignment with Section 2(1)(j) of the Act all prior arts existing
before the filing date of the patent application must be
comprehensively evaluated to assess patentability. This includes
publications, public use, or any other disclosures worldwide that
could render the invention obvious. Failure to account for such
prior art undermines integrity of the patent examination process and
contravenes the Act’s objective of granting patents to genuine
inventions only. The Patent Manual mandates that the patent
applicant disclose all relevant prior arts in the specification itself,
including those that may anticipate or render the invention obvious.
This disclosure facilitates thorough examination by the learned
Controller and opponents. In the present case, the Appellant has
deliberately suppressed the additional documents, which qualify as
pertinent prior arts, thereby misleading the Patent Office. Reliance
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was upon Clause 5.3.5, Patent Manual, Version 3.0, dated
26.11.2019 while making the above submission.
4.14. The Appellant has entirely failed to address the relevancy and
necessity of the additional documents within the meaning of Order
XLI Rule 27(1)(b) of the CPC which permits additional evidence
if required to enable the Appellate Court to pronounce proper
judgment. This omission leaves the Appellant with no ground to
challenge admission of these additional documents, conceding their
admissibility. It is a well-established proposition that an application
under Order XLI Rule 27 of the CPC for adducing additional
document must be decided conjointly with the main appeal, rather
than deciding prior to Appeal. The application should be
considered alongside the merits of the appeal. Reliance was placed
upon the following decisions while making the above submission:
a. Eastern Equipment & Sales Limited v. Ing. Yash Kumar
Khanna, 2008 (12) SCC 739
b. Rameshwari Devi and Another v. Rakesh Mishra, Neutral
Citation: 2024:AHC:34990
c. Savitri Devi v. Gayatri Devi & Ors., 2010 (114) DRJ 327
d. B. Nagaraja Reddy v. B. Sambo Sankar Reddy, 2020 SCC
OnLine AP 4623
e. Rajathi Ammal and Others v. Venkatasubbu Reddiar and
Others, 2021 SCC OnLine Mad 11251
4.15. Order XLI Rule 27 of the CPC empowers the Appellate Court to
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traditional evidentiary rules, provided it is necessary for the
pronouncement of a just and proper judgment. The additional
documents meet this threshold as envisaged under Section 2(1)(j)
of the Act, ensuring a complete record for deciding the appeal.
Reliance was placed upon the following decisions while making
the above submission:
a. K. Venkataramiah (supra)
b. Northern Eastern Railway Administration, Gorakhpur v.
Bhagwan Das (Dead) by LRs, 2008 (8) SCC 511
c. Sayed Abdul Khader v. Rami Reddy and Others, 1979 (2) SCC
601
d. Wadi (supra)
e. Ibrahim Uddin (supra)
4.16. Order XLI Rule 24 of the CPC mandates that the Appellate Court
dispose of the appeal on its merits wherever possible, with remand
to the Trial Court permitted only in the rarest of cases where the
record is insufficient. It is the duty of the Trial Court and the
Appellate Court to elicit the truth, and judgment should be based
on truth. Reliance was placed upon the following decisions while
making the above submission:
a. Union of India and Another v. Umrao Kevalchand Bothra,
2018 SCC OnLine Bom 2868
b. Ashwinkumar K. Patel v. Upendra J. Patel and Others, (1999)
3 SCC 161C.A.(COMM.IPD-PAT) 19/2023 Page 13 of 50
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c. High Court Bar Association, Allahabad v. State of Uttar
Pradesh and Others, 2024 SCC (6) 267
4.17. Accordingly, the present Application shall be allowed, and the
additional documents shall be taken on record.
ANALYSIS AND FINDINGS
5. Respondent No. 2 has discovered that the additional documents are
highly pertinent to resolve the dispute between the Parties. Through the
present Application, Respondent No. 2 seeks to introduce the abovementioned
additional documents, which were not available to Respondent No. 2 at the
time of filing of the Appeal.
6. Respondent No. 2 became aware of these prior art references during the
preparation of the case and, and even more recently, additional documents
have come to light. These documents are filed vide separate list of documents
dated 19.08.2025.
7. The learned Counsel for Respondent No. 2 has submitted the following
table to establish the relevancy of the additional documents:
S. Impugned Patent Disclosure in Prior Para of O 41 Relevance /
No Feature Art R27 PSITA
Motivation
a. Composition: GWN-9889: EPA Record Prior art already
Halosulfuron Metribuzin 58.3% + – Para 5(a)- discloses both
Methyl 12% w/w Halosulfuron Methyl (e) active ingredients
+ Metribuzin 55% 11.2% w/w + at nearly identical
w/w Tribenuon Methyl ratios; only
5.5% w/w difference is
omission of
Tribenuon Methyl.
b. Target crop: EPA data: EPA Record PSITA would omit
(Sugarcane) Halosulfuron Methyl - Para 5(a)- Tribenuon Methyl
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and Metribuzin - (e) from GWN-9889
documented sugarcane when creating
herbicides; Tribenuon sugarcane-specific
Methyl - not targeted herbicide due to its
to sugarcane lack of sugarcane
efficacy.
c. Halosulfuron GWN-9889: Same EPA Record Structural &
Methyl - classification; - Para 5(a)- functional
Sulfonylurea Tribenuon Methyl also (e) similarity makes
group herbicide Sulfonylurea group omission of
Tribenuon Methyl
a predictable,
routine
modification.
d. Metribuzin - Prior art: Metribuzin EPA Record Substitution of a
(photosynthesis well-known in - Para 5(c), PPO inhibitor (e.g.,
blocker) sugarcane weed (g), (h) Carfentrazone)
control; inhibits with a PSII
electron transport in inhibitor already
photosystem II known for
sugarcane use is
obvious to PSITA.
e. Known 2008 product label: Para 5(f)-(g) PSITA could
combination: Carfentrazone-ethyl replace
Halosulfuron (50%) + Halosulfuron- Carfentrazone-
Methyl + methyl (12.5%) ethyl with
Carfentrazone- Metribuzin
ethyl because both
disrupt
photosynthesis and
Metribuzin has
proven sugarcane
compatibility.
f. Alternative US 5,900,048: Para 5(j) Sulfosulfuron and
combination: Metribuzin (60%) + Halosulfuron are
Metribuzin + Sulfosulfuron (15%) - both
Sulfosulfuron applied to wheat Sulfonylureas;
PSITA motivated
to swap
Sulfosulfuron for
Halosulfuron when
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targeting
sugarcane.
g. Crop specificity Carfentrazone-ethyl Para 5(i) Reinforces
registered for wheat, motivation to
corn, soybeans (1997), replace
not sugarcane Carfentrazone with
sugarcane-specific
active
(Metribuzin).
8. Documents Nos. (a) to (e) discuss about the active ingredients
halosulfuron-methyl and metribuzin. These herbicidal agents are discussed
targeting saccharum officinarum (sugarcane). Therefore, these documents are
relevant to pronounce the proper judgement in this case.
9. Documents Nos. (c), (g) to (i) discuss the function of PPO inhibitor
14(E). These documents also discuss the use of metribuzin on sugarcane and
showing its function through the inhibition of electron transport in the
photosynthesis pathways. Therefore, these documents become relevant.
10. Document Nos. (f) and (g) discuss the use of a combination of
carfentrazone-ethyl (50%) and halosulfuron-methyl (12.5%). The documents
also show use of carfentrazone-ethyl with respect to PPO 14 (E) Inhibitor
Function while metribuzin (27%) was also shown as PPO 14 (E) Inhibitor
Function. Document No. (j) shows that it also belongs to the sulfonylurea
group of herbicides.
11. The IPD Rules under Rule 6 (iv) and (v) allows the additional
documents with the leave of the Court. The party who submits the additional
documents have to specify the details and relevance of the additional
documents. The Rule 6 (iv) and (v) is reproduced hereunder:
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“6. IPD Procedure for Appeals
(iv) Documents that are not part of the record of the IPO shall
generally not be accepted by the IPD except with the leave of the
Court. 7
(v) Memorandum of appeal shall specify as to whether the documents
being filed are part of the record of the IPO and if any additional
documents are being filed, the details and relevance thereof shall be
specified. Such documents shall be accompanied with an application
seeking leave of the Court, in which case principles akin to Order XLI
Rule 27 of the Code of Civil Procedure, 1908 would apply.”
12. In view of the above, the additional documents sought to produced are
relevant for pronouncing the judgement in this Appeal and, therefore, they are
considered during the course of the hearing of the present Appeal.
C.A.(COMM.IPD-PAT) 19/2023
INTRODUCTION
13. The present Appeal has been filed under Section 117A of the Patents
Act, 1970 (“Act”) against the order dated 28.03.2023 (“Impugned Order”)
passed by the Assistant Controller of Patents and Designs (“Respondent No.
1 / Controller”) rejecting grant of patent to the Indian Patent Application No.
2228/DEL/2011 (“Subject Application”) titled ‘Herbicidal Composition for
Field Crops’ (“Subject Patent”) under Section 25(1) of the Act.
FACTUAL MATRIX
14. The Subject Application was filed on 05.08.2011 before the Patent
Office, Delhi (“Patent Office”) by the Appellant, Crystal Phosphates Ltd.
The Appellant later changed its name to Crystal Crop Protection Ltd. The
Complete Specification in the Subject Application was filed on 06.08.2012.
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15. The Appellant filed the request for examination on 10.10.2012. The
Subject Application was published in the Patent Office Journal under Section
11A of the Act on 08.02.2013.
16. On 16.03.2017, Respondent No. 2, Haryana Pesticides Manufactures’
Association filed the pre-grant opposition under Section 25(1) of the Act to
the Subject Application (“Pre-Grant Opposition I”). Respondent No. 1
issued the first examination report in the Subject Application on 05.01.2018
(“FER”). The Appellant filed the response to the FER on 02.05.2018
(“Reply”). The reply statement to the Pre-Grant Opposition I was filed by the
Appellant on 20.07.2021 (“Reply Statement I”).
17. On 07.01.2022, Respondent No. 3, Dr. Meera Sharma filed the pre-
grant opposition under Section 25(1) of the Act to the Subject Application
(“Pre-Grant Opposition II”). The reply statement along with a claim
amendment to the Pre-Grant Opposition II was filed by the Appellant on
15.10.2022 (“Reply Statement II”).
18. The replication filed by Respondent No. 3 to the Reply Statement II on
21.11.2022. Hearing notice under Section 25(1) of the Act was issued on
23.12.2023 (“Hearing Notice”) scheduling the hearing for Pre-Grant
Oppositions I and II on 02.02.2023 (“Hearing”).
19. During the Hearing, oral submissions were conducted by the Parties.
On 15.02.2023, the Appellant filed a Petition under Rule 138 of the Patent
Rules, 2003 (“Rules”) for extension of one month for filing the post-hearing
written submissions. Respondent Nos. 2 and 3 filed their respective post-
hearing written submissions on 17.02.2023.
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20. On 07.03.2023, the Appellant filed Form 13 with minor amendments
in the Complete Specification in the Subject Application. The Appellant filed
its written submissions on 09.03.2023.
21. Subsequently, Respondent No. 1 issued the Impugned Order rejecting
the Subject Application stating that the Subject Patent:
a. is not an invention under Section 2(1)(ja) of the Act;
b. does not have an inventive step in view of the disclosure of the prior
arts and claim nos. 1 to 7 are refused by Respondent No. 1 under
Section 25(1)(e) of the Act; and
c. is not patentable under Section 3(e) of the Act and the claim nos. 1
to 7 are refused by Respondent No. 1 under Section 25(1)(f) of the
Act.
SUBMISSIONS ON BEHALF OF THE APPELLANT
22. The learned Counsel for the Appellant submitted as under:
22.1. The Appellant is a company registered under the Companies Act,
1956. The Appellant is a research and development company
engaged in the crop protection manufacturing, marketing and sale
of agro-chemicals and agro-products being insecticides, fungicides,
herbicides, plant growth regulators / micronutrients. The products
of the Appellant cater to the entire lifecycle of crops, from sowing
to harvesting. The Appellant provides crop protection solutions to
Indian farmers to assist them to maximize productivity and
profitability.
22.2. The Subject Patent relates to synergistic herbicidal ready to use
composition for control of major unwanted vegetation in a wideC.A.(COMM.IPD-PAT) 19/2023 Page 19 of 50
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variety of agricultural crops, wherein the herbicidal composition
comprises synergistically effective amounts of a first active
ingredient i.e., halosulfuron-methyl and a second active ingredient
i.e., metribuzin combined in specific weight concentrations.
22.3. The object of the present invention is to provide a synergistically
effective amount of each of the active ingredients such that each
ingredient significantly enhances and abets the activity of the other
active ingredient. The first active ingredient, halosulfuron-methyl
belongs to the chemical class of sulfonylurea and is a known
systemic herbicide. Halosulfuron-methyl is absorbed by the root
system and / or leaf surface and translocated to meristem tissues
where it inhibits synthesis of essential amino acids valine, leucine,
and isoleucine, thereby resulting in rapid cessation of cell division
and plant growth in both roots and shoots. The second active
ingredient, metribuzin belongs to the chemical class of triazinone
and exhibits selective systemic action. It inhibits the photosynthetic
activities and disrupts plant growth, ultimately leading to death of
target weeds. The third active ingredient, tribenuron-methyl is
optional or does not contribute to the efficacy of the ternary
combination of D1. D1 teaches away from the present invention for
at least the reason that tribenuron-methyl is an essential active
ingredient of D1, without which, the ternary composition of D1
would be lacking in efficacy. A person skilled in the art (“PSITA”)
would not have any reasonable reason to “remove” tribenuron-
methyl, and that “removing” tribenuron-methyl would yield an
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“effective” combination, i.e., the binary composition of the present
invention. The “mere” identification of metribuzin and
halosulfuron-methyl at similar concentrations as being common
between D1 and the present invention is wholly insufficient for D1
being relevant. Any such conclusion of relevancy is the sole result
of hindsight and cherry picking, which is to be strictly avoided in
inventive step determination. Reliance was placed upon the
decision in Bristol-Myers Squibb Holdings Ireland Unlimited
Company and Ors. v. BDR Pharmaceuticals International Pvt.
Ltd. and Anr., 2020 SCC OnLine Del 1700 while making the above
submission.
22.4. The present invention discloses the ready to use synergistic
composition of the herbicides including weight concentration of
halosulfuron-methyl in said composition to be in the range of 10 to
15% and weight concentration of metribuzin in said composition to
be in the range of 50 to 60%.
22.5. The inventive step of the present invention lies in the fact that a
synergistic effect is achieved by the combination of the two active
ingredients in specific weight concentrations of the active
ingredients. It is a trite that if the observed effect of the combination
of two active ingredients is over and above the expected additive
effect of the individual ingredients, then such an effect is
synergistic and the combination is entitled to patent protection.
Reliance was placed upon the decisions in Biomoneta Research
Pvt. Ltd. v. Controller General of Patents Designs and Anr., 2023
C.A.(COMM.IPD-PAT) 19/2023 Page 21 of 50
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SCC OnLine Del 1482 and Avery Dennison Corporation v.
Controller of Patents and Designs, 2022 SCC OnLine Del 3659
while making the above submission.
22.6. The prior art titled “Comparison of Sulfonylurea Herbicides for
Spring Transition” relates to the effect of various (7) individual
members of the sulfonylurea family members on removal of
perennial ryegrass. Pertinently, halosulfuron-methyl is not even
listed among the (7) different members of the sulfonylurea class of
herbicides tested and identified in the “Abstract” of the prior art as
relied upon by the Respondents. The “Abstract” of the said prior
art is reproduced hereunder:
“In six field experiments that were conducted during the spring
of 2004 with seven sulfonylurea herbicides for removing
perennial ryegrass from bermudagrass turf, the most rapid
response and effective ryegrass removal occurred with the
latest applications made in June compared to applications
made in April or May. Flazosulfuron, formasulfuron,
rimsulfuron, trifloxysulfuron, and chlorsulfuron were effective
in removing most of the ryegrass. Sulfosulfuron and
metsulfuron were least effective for removing ryegrass,
especially during the cooler April and May timings.”
22.7. Halosulfuron-methyl is not an obvious substitution for
sulfosulfuron. Furthermore, sulfosulfuron is structurally starkly
different from halosulfuron-methyl, in view of which, it cannot be
said that halosulfuron-methyl is an obvious and equivalent
functional substitute of sulfosulfuron. The Respondents have
provided no proof of any motivation to substitute halosulfuron-
methyl with sulfosulfuron. The structural difference between
halosulfuron-methyl with sulfosulfuron is reproduced hereunder:
C.A.(COMM.IPD-PAT) 19/2023 Page 22 of 50
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Sulosulfuron Halosulfuron-methyl
As stated above, sulfosulfuron is structurally entirely different
from halosulfuron-methyl, which by itself suggests that they are
unlikely to be equivalent functional substitutes. Thus, in view of
the above, the present invention is inventive and non-obvious over
the aforesaid prior art.
22.8. Respondent No. 2 claims that the present invention is not patentable
under Section 3(e) of the Act. The Impugned Order as well comes
to a conclusion of lack of synergy in the present invention without
any discussion on how Table No. 1 of the Complete Specification
fails to indicate synergism. Table No. 1 clearly shows that
application of halosulfuron-methyl (12%) and metribuzin (55%) in
treatment 2 (T-2), at a reduced dosage (54g halosulfuron-methyl +
247.5g metribuzin = 301.5g) as compared to the additive amounts
from their individual applications (67.5g halosulfuron-methyl +
350g metribuzin = 417.5g), is synergistic as it shows enhanced
control of Cyperus rotundus, Amaranthus spp., Dactylectenlum
spp., and Bracharia spp. A PSITA would not expect any
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“enhancement” in control of weeds by reducing the amounts of the
actives as compared to the expected additive effect at comparable
amounts of actives. Thus, the demonstrated enhanced control
despite usage of lower amounts of the actives is clearly and
unambiguously indicative of synergism. Therefore, the present
invention cannot be considered as “mere admixture resulting only
in the aggregation of the properties of the components”, and thus,
the bar of Section 3(e) of the Act is met and sufficiently overcome
by the present invention. Table No. 1 is reproduced hereunder:
Table-1: Effect of herbicidal treatment on weed density of narrow
and broad leaves weedsat 30 DAADose/ Narrow and Broad leaves weeds per square meter
Treatments ha Cyperusrotundus Amaranthus Dactylectenlumsp Bracharia
spp. spp.
Live % Live % Live % control Live %
pop. control pop. control pop. pop. control
CPL-1255 300g 2.0 83.00 0.66 80.00 4.33 0.00 3.00 0.00
CPL-1255 450g 0.20 98.28 0.06 98.23 1.5 65.35 1.00 66.67
CPL-1255 600g 0.15 98.71 0.00 100 1.4 67.66 1.00 66.67
CPL-1255 900g 0.00 100 0.00 100 1.4 67.66 1.00 66.67
Halosulfuro 90g 1.0 91.42 3.6 0.00 3.12 27.94 3.33 0.00
n methyl
75%WG
Metribuzin 500g 8.33 29 1.3 61.76 4.66 0.00 4.33 0.00
70%WP
Untreated - 11.66 - 3.4 - 4.33 - 3.00 -
22.9. Further, the Respondents speculates that the Appellant has merely
shown that increasing dosage results in increasing control of weeds,C.A.(COMM.IPD-PAT) 19/2023 Page 24 of 50
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which is not unexpected and therefore, not synergistic. The
Appellant refutes any such gross simplification and lack of
understanding by the Respondent, and highlights that treatment 2
(T-2) utilizes a dose of 450g of the claimed combination, which
provides 66.67% control of Bracharia spp. Increasing the dosage
to 600mg (approximately 33% increase) in treatment 3 (T-3) does
not result in any concurrent comparable increase in control of
Bracharia spp. In fact, at 600mg dosage also provides the same
66.67% control of Bracharia spp. Even an increase to 900mg
(100% increase compared to T-2) in treatment 4 (T-4) does not
result in any increase whatsoever in Bracharia spp. In the case of
the other narrow and broad leaf weeds also, it can be seen that any
gains in control by higher dosage is insignificant. These trial data
establish that the effect of the claimed composition is not attribute
merely to higher formulation dosage per acre as alleged by the
Respondents.
22.10. Accordingly, the Impugned Order is liable to be set aside and the
Appeal shall be allowed.
SUBMISSIONS ON BEHALF OF RESPONDENT NO. 1
23. The learned Counsel for Respondent No. 1 submitted as under:
23.1. The present invention does not contain any technical advancement
as compared to the prior art cited by Respondent Nos. 2 and 3. It is
merely a mixture of already existing substances used. The
ingredients used in the present invention are halosulfuron-methyl
and metribuzin. The Appellant applied for a grant of patent byC.A.(COMM.IPD-PAT) 19/2023 Page 25 of 50
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changing the percentage of the existing substance which is already
used as herbicidal composition and which is not sufficient for the
inventive step and efficacy. In the Impugned Order, the prior art
documents which were cited by Respondent Nos. 2 and 3 were
considered as the closest documents and found the present
invention is not an invention under the Act.
23.2. The learned Controller has refused to grant the Subject Patent on
the grounds of pre-grant opposition which was found valid from
the main grounds of Section 25(1)(e) of the Act and on the grounds
of non-patentability under Section 25(1)(f) of the Act. The learned
Controller has not recorded / mentioned in the Impugned Order that
the present invention is not novel. According to Rule 55 (1 to 5) of
the Rules, if even one ground of the pre-grant opposition is found
to be valid, then that application cannot be patented.
23.3. The Appellant, to think that the herbicidal composition in the
Subject Application should be granted a patent since it is a novel
composition is wrong. According to the Act, the invention should
be inventive and patentable as well, as compared to the existing
prior art, so it is necessary to have technical advancement in
comparison to the prior art. The Appellant has attempted to obtain
a patent by narrowing the ratio of an already existing substance in
the prior art.
23.4. The learned Controller observed that there was no scope for
amendment in the Subject Application and it fell under Section
25(1) of the Act and Rule 55 (1) to (5) of the Rules. Therefore,C.A.(COMM.IPD-PAT) 19/2023 Page 26 of 50
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when the grounds of the pre-grant opposition were found to be valid
and the patent was not grantable, there was no basis for giving a
hearing under Section 14 of the Act. After the Hearing, even when
there was no scope for amendment in the Subject Application, the
Appellant made suo moto amendments.
23.5. The Pre-Grant Oppositions I and II, against the Subject
Application, were filed for claim nos. 1 to 7. Claim nos. 1 to 7 were
the broadest claims of the Subject Application and the same claims
were filed at the time of Reply by the Appellant. Thereafter, the
Appellant deleted his own methods claims in the Reply Statement
II. The Pre-Grant Oppositions I and II filed by Respondent Nos. 2
and 3, respectively were for both composition and methods claim.
Therefore, the learned Controller had to give a decision for all
claims, which included the consideration of claim nos. 1 to 5, after
amendments.
23.6. The table below provides a reference key of the prior arts cited by
Respondent No. 1 in the Hearing Notice and those cited by
Respondent Nos. 2 and 3 in the Pre-Grant Oppositions I and II,
some of which were numbered differently by Respondent Nos. 2
and 3:
Prior art cited in Prior art cited by Prior art cited by
Hearing Notice Respondent No. 2 Respondent No. 3
D1 – WO2000027203 A1 D1 – WO2000027203 –
A1
D2 - US 8921271 B2 D2 - US 8921271 B2 -
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D3 - EP 2498604 A1 D3 - EP 2498604 A1 -
D4 - Umeda et al., D4 - Umeda et al., -
University of Arizona University of Arizona
College of Agriculture, College of Agriculture,
2004, Turf grass and 2004, Turf grass and
Ornamental Research Ornamental Research
Report, Dec 1, 2004 pp 1- Report, Dec 1, 2004 pp
9 1-9
- D5 - US 5990048 A -
- - D1 - Herbicide
Product - "GWN
9889" U.S.EPA
registration no.
81880-25
Registrant - Canyon
Group, LL c/o
Gowan Company
Date of Issuance -
Dec. 07, 2010
- - D2 - WO
2009/015064 A2
23.7. Respondent No. 2’s D1 describes a novel herbicidal synergistic
composition comprising an herbicidal active compound
combination that is suitable for selectively controlling undesirable
vegetation in crops of useful plants resistant to protoporphyrinogen
oxidase inhibitors, for example, maize, sugar beet, soya beans,
rape, cotton, sunflowers, cereals, rice and sugar cane.
23.8. Respondent No. 2’s D2 discloses an herbicidal composition
comprising, as active ingredients, (i) flazasulfuron or its salt and
(ii) metribuzin or its salt.
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23.9. Respondent No. 2’s D5 discloses the novel herbicidally active
compound combinations comprising (i) metribuzin of the Formula
I and (ii) an active compound from the group of the substituted
imidazo [l,2-a] pyridin-3-yl-sulfonyl compounds of the Formula II.
23.10. Respondent No. 3’s D2 discloses the tank mix which is reproduced
hereunder:
Table 4C
tank mixes
H
PERMIT® 0.031 lbs. active/acre
YUKON® —
CALLISTO ® --
ATRAZINE 90DF® --
ROUNDUP Original MAX® 4.5 AE --
HALEX GT 4.38L® --
IMPACT 2.8SC® --
LAUDIS 3.5SC® --
SENCOR DF® 0.094 lbs. active/care
COC --
liquid AMS 2.5% v/v
ACTIVATOR 90® 0.25% v/v
Water q.s.
23.11. In the prior art, D1 (WO2000027203) claim nos. 8, 19, 20 disclosed
halosulfuron-methyl, metribuzin which is used as a herbicidal
composition, for controlling weeds and grasses in crops, so that theC.A.(COMM.IPD-PAT) 19/2023 Page 29 of 50
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combination of halosulfuron-methyl and metribuzin may exhibit
desired herbicide effect irrespective of the amount (“wt.%”) of
halosulfuron-methyl and metribuzin present in the combination /
composition the wt.% of halosulfuron-methyl and metribuzin in the
claimed composition cannot be construed to be contributing to the
inventive step of the presently claimed composition.
23.12. Respondent No. 3’s D1 discloses an herbicide product ‘GWN-
9889′ comprising 58.3 wt.% metribuzin, 11.2 wt.% halosulfuron-
methyl and 5.5 wt.% tribenuronmethyl, wherein metribuzin and
halosulfuron-methyl are present in an amount (% and / or ratio)
falling under the range claimed in the pending claim no. 1 of the
present application. The active compounds used as a composition
in the present invention, halosulfuron and metribuzin, have been
known for a long time and have proved useful for the selective
control of weeds, in particular in soybean and potato.
23.13. Respondent No. 3’s D2 discloses a tank mix composition
comprising halosulfuron-methyl and metribuzin in a weight ratio
of ~1:3 along with other excipients that are duly tested for its
herbicidal activity exhibiting 99% weed-controlling efficacy.
23.14. It is clear from the prior art documents, which have been cited by
Respondent Nos. 2 and 3 that the two active ingredients
halosulfuron-methyl and metribuzin used for the herbicidal
composition of the present invention are already known in the prior
art. The Appellant filed the Subject Application by changing just
the ratio / percentage of the two active ingredients halosulfuron-
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methyl and metribuzin well-known used for the herbicidal
composition in the prior art in which there is no technical
advancement and therefore, the Subject Application is not
patentable.
23.15. The claim nos. 1 to 7 of the present invention are not patentable
under Section 3(e) of the Act and such a ground of opposition is
validly established by Respondent Nos. 2 and 3. The claim nos. 1
to 7 do not contain synergistic ratios of the constituents. The
ingredients used in the present invention are halosulfuron-methyl
and metribuzin which are already known in the prior art. In view of
cited prior arts namely D1, D2 and D5 and known technologies and
practices in agricultural activities, the composition is well-known
to the people related to agrochemicals and the use of various
inactive excipients is also well-known in the agriculture field and
the Appellant just mixed the active and inactive ingredients to get
claimed herbicidal composition.
23.16. The Appellant has failed to demonstrate any synergistic effect of
the present composition. Based on the cited documents of
Respondent Nos. 2 and 3, it is clear that the Appellant has used
active ingredient herbal compositions that are already available in
the prior art, it is merely a mixture of already existing substances.
23.17. In view of the above, the Impugned Order ought to be upheld, and
the present Appeal is liable to be dismissed.
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SUBMISSIONS ON BEHALF OF RESPONDENT NO. 2
24. The learned Counsel for Respondent No. 2 submitted as under:
24.1. The Subject Application is barred under Section (2)(1)(ja) of the
Act. As per the requirement under Section (2)(1)(ja) of the Act,
‘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 PSITA. Hence, the Subject Application was required
to show that it involves technical advance as compared to the
existing knowledge or having economic significance or both. Once
the Appellant was confronted with prior arts namely D1, D2 and
D5, the Appellant was required to show technical advancement by
way of producing experimental data, which has not been done in
the case. Reliance was placed upon the decision in Astrazeneca AB
and Ors. v. Intas Pharmaceuticals Limited and Ors., 2020 (84)
PTC 326 (Del) while making the above submission.
24.2. The Subject Application is barred under Section 25(1)(e) of the Act
as it is anticipated and obvious. In Respondent No. 3’s D1,
halosulfuron-methyl was shown as 11.2%, while metribuzin was
used as 58.3%. While in the Subject Application, Table No. 1
shows similar use of both the ingredients. The relevant Table No.
1 is reproduced hereunder:
Table 1: Ingredients for 12% Halosulfuron methyl + 55%
Metribuzin WGC.A.(COMM.IPD-PAT) 19/2023 Page 32 of 50
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S. No. Ingredient Concentration
1 Halosulfurona.i. 12.00% m/m
2 Metribuzinea.i. 55.00% m/mThus, it is apparent that halosulfuron-methyl was shown as 12%,
while metribuzin was used as 55% which is almost similar to
weight percentage ratio as used in D1. Hence, the present invention
was obvious to a PSITA.
24.3. In Respondent No. 2’s D1, claim no. 20 describes a herbicidal
composition for controlling weeds in crops of sugar cane resistant
to protoporphyrinogen oxidase inhibitors, where the co-herbicide
b) is a compound selected from the group consisting of atrazine,
ametryn, dicamba, terbutryn, prosulfuron, hexazinone, asulam,
diuron, 2,4-D, halosulfuron-methyl, flazasulfuron, isoxaflutole,
azafenidin, tebuthiuron, sulcotrione, pendimethalin, clomazone,
metribuzin, thiazopyr, glyphosate, glufosinate, sulfosate and
ethoxysulfuron, and also the compound of the Formula C. While
the Subject Application also relates to an herbicidal composition
for controlling weeds in crops of sugar cane comprising of
halosulfuron-methyl and metribuzin. Thus, active ingredients of
Subject Application have already been disclosed in D1.
24.4. Respondent No. 2’s D1 describes a novel herbicidal synergistic
composition comprising an herbicidal active compound
combination which is suitable for selectively controlling
undesirable vegetation in crops of useful plants resistant to
protoporphyrinogen oxidase inhibitors, for example maize, sugar
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beet, soya beans, rape, cotton, sunflowers, cereals, rice and sugar
cane. While in the Subject Application, the “Field of Invention”
relates to a broad-spectrum herbicidal composition for controlling
broad leaved as well as narrow leaved weeds in sugarcane crop.
Merely claiming invention in the alleged proportion of both the
active ingredients cannot render it patentable, given the fact that the
alleged better result of the composition is not attributable to the
alleged proportion of active ingredient, rather effective amount of
active ingredients.
24.5. Table 4C as mentioned in Respondent No. 3’s D2 specifically
discloses Tank Mix Composition of halosulfuron-methyl [permit]
and metribuzin [sencor] clearly reflects weight ratio of 0.031 lbs to
0.094 lbs, equivalent to 1:3.03. If the weight ratio of the active
compound in the Subject Application is seen, then it comes to
halosulfuron-methyl at 10 to 15% of weight ratio and metribuzin at
50 to 60% weight ratio. Hence, one of the permissible weight
percentages of halosulfuron-methyl and metribuzin comes as
1:3.03. Thus, the weight ratio of both of the active ingredients is
almost identical to that of D2. The Tank Mix Composition of
halosulfuron-methyl and metribuzin as disclosed in D2, having
weight ratio of 1:3.03, having herbicidal quality show 99% weed
control efficacy.
24.6. Respondent No. 2’s D5 describes a novel herbicidally active
compound composition. Claim nos. 2 and 3 are reproduced
hereunder:
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“2. The herbicidal composition according to claim 1, wherein
0.005 to 50 parts by weight of the sulfosulfuron (2-ethyl-
sulfonyl-N-[[(4,6-dimethoxy-pyrimidin-
2yl)amino]carbonyl]imidazo[1,2-a]pyridine-3-sulfonamide)
is employed per part by weight of active compound metribuzin
of the formula (I).
3. The herbicidal composition according to claim 2, wherein
0.02 to 20 parts by weight of sulfosulfuron (2-ethyl-sulfonyl-N-
[[(4,6-dimethoxy-pyrimidin-
2yl)amino]carbonyl]imidazo[1,2-a]pyridine-3-sulfonamide)
is employed per part by weight of active compound metribuzin
of the formula (I).”
In view of the disclosures made in the prior arts namely, D1,
D2 and D5, the Subject Application is anticipated. Reliance was
placed upon the decision in Chugai Seiyaku Kabushiki Kaisha v.
Controller of Patents, Neutral Citation: 2022:DHC:1337 while
making the above submission.
24.7. The Subject Application is barred being non-patentable under
Section 25(1)(f) read with Section 3(e) of the Act. The present
invention is a mere admixture of known substances, namely
halosulfuron-methyl and metribuzin. The synergistic effect should
be clearly brought out in the description by way of comparison at
the time of filing of the Subject Application itself, which has not
been done in the case at hand. The Subject Application fails to show
any synergism and that the same is merely an ad-mixture of prior
known active ingredients. The data provided by the Appellant in
the Complete Specification fails to show synergy. The Appellant
itself asserted that the present invention lies in their effective
amount and not on the proportion of the components.
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24.8. The Appellant itself asserted that the present invention lies in their
effective amount and not on the proportion of the components.
Hence, the claimed number of halosulfuron-methyl ranges from 10
to 15% weight ratio and metribuzin ranges from 50 to 60% weight
ratio is incorrect. The Appellant has given the details of different
treatment in the Subject Application. The relevant portion of the
Subject Application is reproduced hereunder:
Treatment Treatment Details Dose/ha ai/ha
s
T-1 Halosulfuron methyl 12% + 300g 36g + 165g
Metribuzin 55% WG
(CPL-1255)
T-2 Halosulfuron methyl 12% + 450g 54g + 247.50g
Metribuzin 55% WG
(CPL-1255)
T-3 Halosulfuron methyl 12% + 600g 72g + 330g
Metribuzin 55% WG
(CPL-1255)
T-4 Halosulfuron methyl 12% + 900g 108g + 495g
Metribuzin 55% WG
(CPL-1255)
T-5 Halosulfuron methyl 75% WG 90g 67.5g
T-6 Metribuzin 70% WP 500g 350g
T-7 Untreated - -
From bare perusal of the aforementioned treatment details, it is
apparent that even though the proportion of both the active
ingredients remains the same, i.e., halosulfuron-methyl range 12%
weight ratio and metribuzin range 55% weight ratio, however,
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effective amount of both the active components kept on increasing.
In T-l, the actual dosages per acre was 300g (36g and 165g), T-2
450g (54g to 247.50g), for T-3 600g (72g and 330g), T-4 900g
(108g and 495g). Thus, the actual amount of the active component
kept on increasing from T-l to T-4. As per Table No. 1, T-4 is
giving the better result, but the effective amount of both of the
components is more than another example.
24.9. The findings recorded by the learned Controller are cogent, well-
reasoned, and based on proper appreciation of the material on
record. The Appellant has failed to demonstrate any perversity,
illegality, or material irregularity in the findings. In the absence of
any such infirmity, no ground is made out warranting interference
by this Court. Reliance was placed upon the decision in Mohd.
Mehtab Khan and Others v. Khushnuma Ibrahim Khan and
Others, (2013) 9 SCC 221 while making the above submission.
24.10. Accordingly, the Impugned Order is to be upheld, and the present
Appeal be dismissed.
ANALYSIS AND FINDINGS
THE INVENTION
25. The present invention relates to a synergistic herbicidal composition
which controls unwanted vegetation in a variety of agricultural crops. The
“Field of Invention” is reproduced hereunder:
“Field of Invention
The present invention relates to a synergistic herbicidal composition
for control of major unwanted vegetation in a wide variety of
agricultural crops. More particularly, the present invention relates toC.A.(COMM.IPD-PAT) 19/2023 Page 37 of 50
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a broad spectrum herbicidal composition for controlling broad
leaved as well as narrow leaved weeds in sugarcane crop.”
26. The object of the present invention is to provide a synergistic herbicidal
composition to overcome the problems associated with the prior art and
existing knowledge. The object of the present invention is reproduced
hereunder:
“The main objective of a present invention is to provide a synergistic
herbicidal composition which overcomes some or all of the problems
associated with the prior art as identified above and others.
Accordingly one of the objectives of our present invention is to
provide an herbicidal composition which is highly effective in low
dosage amounts. Another objective of the present invention is to
provide an herbicidal composition whose application and effects on
the weeds can be directly and visually assessed. Yet another objective
of the present invention is to provide an herbicidal composition which
could directly adhere to the surface of the weeds. Another object of
the present invention is to provide an herbicidal composition which is
highly effective against broad and narrow leaved weeds in sugarcane
crop especially weeds such as Cyprus rotundus along with other
Cyprus spp., Digitaria spp., Chenopodium spp. and Melilotus spp.
The other objectives and preferred embodiments and advantages of
the present invention will become more apparent from the following
description of the present invention when read in conjunction with the
accompanying examples which are not intended to limit the scope of
the present invention in any manner.”
27. The problem in the prior art is discussed in the Complete Specification
which is reproduced hereunder:
“Further, there are a few plants for which the weed problem is more
severe and complex. The most common example of such a plant is
sugarcane, where the weeds tend to flourish extremely well due to
abundant water and nutrient supply conditions that are basic
requirement for the sugarcane crop. Also, the growth of sugarcane is
very slow taking around 100 days from germination till development
of full canopy cover. This gives ample time for the weeds to grow in
the field. Therefore, a selective herbicide for sugarcane plant can beC.A.(COMM.IPD-PAT) 19/2023 Page 38 of 50
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extremely beneficial to selectively control the target weed without
causing any phytotoxic effects to the sugarcane plant. The existing
herbicides in this area do not necessarily meet the requirements of
effectiveness and selectivity. In accordance with the above, there is a
need for a selective herbicidal composition for plants that is effective
against the target weeds at a very low concentration and exhibit
excellent selectivity with minimal or no phytotoxicity.”
28. The claims submitted in the Reply to the FER are hereunder:
“We claim:
1. A herbicidal composition comprising synergistically effective
amount of two active ingredients, wherein the first active ingredient
is Halosulfuron methyl in an amount ranging from 10-15%wt and the
second active ingredient is Metribuzin in an amount ranging from
50-60%wt.
2. The composition as claimed in claim 1, wherein the amount of
Halosulfuron methyl is 12%wt.
3. The composition as claimed in claim 1, wherein the amount of
Metribuzin is 55%wt.
4. A formulation comprising a composition as claimed in claim 1, and
one or more adjuvants.
5. The formulation as claimed in claim 4, wherein the amount of one
or more adjuvants ranges from 25%wt to 40%wt.
6. The formulation as claimed in claim 4, wherein the formulation is
in the form of a 15 powder, solid or liquid.
7. A method for controlling unwanted vegetation in agricultural
crops, where unwanted vegetation includes weed population, said
method comprising obtaining a composition as claimed in claim 1 or
a formulation as claimed in claim 4 and contacting said composition
or formulation with unwanted vegetation in agricultural crops.”
29. The learned Counsel for the Appellant submitted that the filing of ten
additional documents by Respondent No. 2 itself demonstrates an implicit
acknowledgment that there are deficiencies and issues in the Impugned Order.
Respondent No. 2 by seeking to introduce these additional documents at this
stage, is effectively attempting to set up a new case.
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Prior Art: WO2000027203 Al
30. The invention claims an herbicidal synergistic composition for the
selective control of broad-leaved weeds / grasses in crops of useful plants
resistant to protoporphyrinogen oxidase inhibitors, comprising, in addition to
customary inert formulation auxiliaries, as active compounds of a mixture of
an herbicide inhibiting the action of protoporphyrinogen oxidases and further
pesticide selected from the group consisting of co-herbicides / fungicides /
insecticides / parasites.
31. Claim no. 7 of this document specifies the target crop and weeds. Claim
no. 7 describes an herbicidal composition to control broad-leaved weeds and
grasses in crops such as maize / sugar beet / soya beans, cotton, sunflowers,
cereals, rice and sugarcane which are resistant to protoporphyrinogen oxidase
inhibitors. Additionally, Claim nos. 8 and 20 of the document D1 describes a
herbicidal composition in which the co-herbicide b) is a compound selected
from the group including metribuzin.
Prior Art: US8921271B2
32. The invention relates to an herbicidal composition which is comprising
of flazasulfuron or its salt and metribuzin or its salt. The prior arts failed to
disclose specific combinations of the herbicidal composition and synergistic
effects obtainable by the combination which is claimed in the present
invention.
Prior Art: WO 2009/015064 A2
33. This prior art is titled as “Improved Processes for the Control of
Undesired Vegetation” and the invention relates to an improved process for
the control of undesired vegetation amongst crops.
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34. Under Table 4C, (tank mix entry ‘H’) discloses a tank mix composition
of halosulfuron-methyl and metribuzin in a weight ratio of 1:3.
35. This prior art also discusses the herbicidal activity in Table 4CR, entry
‘H’. The Table 4CR is reproduced hereunder:
common lambsquarter (% common ragweed (%
controlled) controlled)
Days 38 58 79 113 38 58 79 113
after days days days days days days days days
planting:
Tank
mix:
none 0 0 0 0 0 0 0 0
(C1)
C2 99 99 99 99 99 99 99 99
C3 99 98 98 95 94 88 93 86
C4 99 99 99 99 99 99 99 99
A 99 99 96 94 95 91 89 87
B 99 99 99 99 99 93 96 94
C 98 83 80 75 99 87 83 78
D 99 90 80 74 99 95 87 84
E 99 89 82 73 99 93 89 85
F 99 96 88 84 99 97 94 90
G 99 99 89 85 99 99 92 88
H 99 97 91 88 98 84 83 80
I 99 99 96 94 99 99 97 96
J 99 99 99 99 99 98 99 99
K 99 99 96 97 99 96 93 90
L 99 99 99 94 99 93 94 90
M 99 99 99 99 99 99 99 99
N 99 99 98 99 99 99 99 99
36. This Court notes that the entry ‘H’ of Table 4C discloses the
composition of halosulfuron-methyl and metribuzin in a weight ratio of 1:3.
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Prior Art: GWN-9889
37. This prior art is a publication of the U.S. Environmental Protection
Agency containing the number EPA Reg. No. 81880-25. This prior art
discloses halosulfuron-methyl at 11.2%, metribuzin at 58.3% and tribenuron-
methyl at 5.5%. The relevant extract of GWN-9889 is reproduced hereunder:
38. The learned Counsel for Respondent No. 2 submitted that the Appellant
has not furnished any experimental results / comparative synergy data which
demonstrate the technical enhancement / unexpected efficacy over the cited
document.
Prior Art: US5990048A
39. This prior art discloses the use of metribuzin [60] and use of
sulfosulfuron [15] as herbicidal composition. The relevant excerpt is
reproduced hereunder:
TABLE A
Post-emergence test/greenhouse
Active compound Test plants
or Application rate Damage or activity in %
active compound in g/ha (of active Apera spica-venti Setaria viridis
combination compound) found calc. found calc.
(I) 60 20 50
– known –
(II-1) 15 80 80
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– known –
(I) + (II-1) 60+15 98 84 100 90
- according to the
invention -
40. This prior art discloses its use with metribuzin (60) and sulfosulfuron
(15) in herbicidal compositions. This evidence shows that combinations of
sulfonylurea class herbicides with metribuzin were well-known, and the
Subject Patent merely adopts another member of the same chemical class
(halosulfuron-methyl) in nearly identical concentration without
demonstrating any surprising technical advantage.
Prior Art: Comparison Of Sulfonylurea Herbicides for Spring Transition
41. This prior art already discusses limitations of sulfosulfuron.
Additionally, the above discussed document US5990048A discloses its use
with metribuzin (60) and sulfosulfuron (15) in herbicidal compositions.
42. Since the limitations of sulfosulfuron are disclosed and the
halosulfuron-methyl belongs to the same class, the combinations of
sulfonylurea class herbicides with metribuzin would be obvious to PSITA. In
other words, the Subject Application merely adopts another member of the
same chemical class in nearly the same concentration. Additionally, in the
absence of data demonstrating technical advantage, the inventive step
threshold cannot be assessed.
43. Citing the claim nos. 5 and 6, Respondent No. 2 submitted that the
adjuvants are not mentioned in claim nos. 5 and 6 and other claims are vague,
as nature, and adjuvate are not mentioned. The relevant claims are reproduced
hereunder:
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“5. A formulation prepared using the composition of claim 1, wherein
the formulation comprises of one or more adjuvants.
6. The formulation as claimed in claim 5, wherein the amount of
adjuvant/s ranges from about 25% w/w to 40 % w/w.
7. The formulation as claimed in claim 5, wherein the formulation is
in the form of powder, solid or liquid.
8. A method for controlling unwanted vegetation in agricultural
crops, where unwanted vegetation includes weed population.”
44. The learned Counsel for Respondent No. 2 submitted that the Appellant
had to put data and compare with this synergistic data. No such data is
provided by the Appellant. Therefore, as per Respondent No. 2, the
synergistic effect is not proved, and the provided data is not relevant for
synergism, but it is relevant for inventive step. This Court notes that, in WO
2009/015064 A2, metribuzin and halosulfuron-methyl are present in an
amount (% and / or ratio), which falls under the range claimed in the claim
no. 1 of the Subject Application. The Table 4C tank mix ‘H’ of WO
2009/015064 A2, shows halosulfuron-methyl and metribuzin. The relevant
excerpts are reproduced hereunder:
Present invention D2
Halosulfuron methyl 10-15wt% Halusulfuron methyl 75wt%
Metribuzin 50-60wt% Metribuzin 70wt%
Under Table 4C, (tank mix entry ‘H’) discloses a tank mix composition
of halosulfuron-methyl and metribuzin in a weight ratio of 1:3 which falls
within the range of composition as claimed in the claims of the Subject
Application. D2 (WO 2009/015064 A2) clearly teaches a tank-mix
composition comprising halosulfuron-methyl and metribuzin in a weight ratio
of ~1:3 along with other excipients that is duly tested for its herbicidal activity
exhibiting 99% weed-controlling efficacy. Additionally, the prior art GWN-
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9889 discloses halosulfuron-methyl at 11.2%, metribuzin at 58.3% and
tribenuron-methyl 5.5%. Therefore, in the absence of a date (described below)
to prove synergy, the prior art documents make it obvious to a PSITA.
45. The learned Counsel for the Appellant has given the details of different
treatment in the Subject Application. The Appellant claims a fixed ratio of
halosulfuron-methyl (12% w/w) and metribuzin (55% w/w). It is important to
note that the actual quantity of both active ingredients increases continuously
across treatments from T-1 to T-4. The dosages, according to Table No. 1
above is calculated hereunder:
a. In T-1 the dosage/ha is 300 g wherein Halosulfuron is 36 g and
Metribuzin is 165 g.
b. In T-2 the dosage/ha is 450 g (54 g Halosulfuron is 54 g and
Metribuzin is 247.5 g.
c. In T-3 the dosage/ha is 600 g wherein Halosulfuron is 72 g and
Metribuzin is 330 g.
d. In T-4, the dosage/ha is 900 wherein Halosulfuron is 108 g and
Metribuzin is 495 g.
46. It is apparent from the above that there is a constant increase in the ai/ha
from T-1 to T-4. From T-1 to T-4, T-4 is leading to the best result. Such an
improvement increase in ai/ha correlates with a higher dose of both actives.
47. Therefore, based on the above discussion, it can be inferred that the rise
in biological efficacy is attributable to higher amount / concentration dosage
per acre and not to synergistic effect arising from the fixed ratio.
48. A PSITA, while reading the above cited document together can reach
to the invention claimed in the Subject Application. Amended claim nos. 1 to
7 on record, lack inventive step and being obvious in view of combined
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teaching of the above cited documents. Therefore, the analysis of the learned
Controller is providing reasoning behind the objection raised.
OBJECTION UNDER SECTION 25(1)(F) READ WITH SECTION 3(E)
OF THE ACT
49. The learned Counsel for Respondent No. 2 submitted that as per the
Complete Specification of the Subject Application the two compounds show
synergistic effect if used in the claimed amount. The learned Counsel for
Respondent No. 2 further submitted that the synergistic effect should be
clearly brought out in the description by way of comparison at the time of
filing of the Subject Application itself, which has not been done in the case at
hand.
50. As discussed above, the data submitted by the Appellant is not
sufficient to establish the synergistic effect as the improvement / increase in
ai/ha correlates with higher dose of both actives.
51. In this regard, reference may be taken from the Manual of Patent
Office, Practice and Procedure (“Patent Manual”). The Patent Manual serves
as a practical procedural guide for the Patent Office. Even though it is not
binding, it can be relied upon as persuasive reference material. The Patent
Manual under Paragraph No. 09.03.05.05 states that synergistic effect should
be clearly established from the description through comparison. Paragraph
No. 09.03.05.05 of the Patent Manual is reproduced as hereunder:
“09.03.05.05
A substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a process
for producing such substance is not an invention. An admixture
resulting in synergistic properties is not considered as mere
admixture. Hence, substances like soap, detergent, lubricants, may
be considered as patentable. A mere aggregation of features must beC.A.(COMM.IPD-PAT) 19/2023 Page 46 of 50
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distinguished from a combination invention. The existence of a
combination invention requires that the relationship between the
features or groups of features be one of functional reciprocity or that
they show a combinative effect beyond the sum of their individual
effects. The features should be functionally linked together which is
the actual characteristic of a combination invention. In general, all
the substances which are produced by mixing components or a
process of producing such substances should satisfy the requirement
of synergistic effect in order to be patentable. Synergistic effect
should be clearly brought out in the description by way of
comparison at the time of filing of the Application itself. The
subsequent submissions regarding synergism can be accepted in a
reply to the office action as a further support of synergy.”
52. Therefore, the synergism as claimed in the Subject Application is not
proved as the data provided by the Appellant is not reliable.
53. In Best Agrolife Limited v. Deputy Controller of Patents & Anr., 2022
SCC OnLine Del 1982, this Court held that a known substance that does not
lead to enhanced efficacy of that substance would not be an invention under
Section 3(e) of the Act. The relevant paragraphs are reproduced hereunder:
“43. Both Section 3(d) and 3(e) fall under Chapter II of the Act.
Section 3(d) provides that a mere discovery of a new form of a
known substance which does not result in enhanced efficacy of that
substance shall not be an invention. Explanation to the Section
provides that ‘combinations’ shall be considered to be the same
substance unless they differ significantly in properties with regard to
efficacy. Section 3(e) provides that a substance obtained by a mere
admixture resulting only in the aggregation of properties of the
components thereof shall not be an invention. Plain reading of the
two provisions, indicates that Section 3(d) entails an assessment of
‘enhanced efficacy’ of the claimed composition in comparison to the
efficacy of the known substance while the assessment under Section
3(e) is with a view to determine the synergistic effect of claimed
composition with the individual properties of each component
comprising the composition. Legislature in its wisdom has enacted
two different provisions and the tests for both are different. The
Supreme Court in Novartis (supra) has observed that Section 3(d) isC.A.(COMM.IPD-PAT) 19/2023 Page 47 of 50
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not ex majore cautela and sets up a second tier of qualifying
standards in chemical substances/pharmaceutical products to
encourage genuine inventions, at the same time keeping check on
evergreening. Section 3(d) provides a safeguard to patentability of a
new form of known substance if it does not pass the threshold of
enhanced efficacy. Thus, the Respondents may not be wholly correct
in arguing that an adjudication under Section 3(e) of novelty or a
product not being a mere admixture would cover the adjudication
under Section 3(d). There is merit in the contention of the Petitioner
that the patent applicant has claimed a suspo-emulsion of
admixture/combination of Diafenthiuron and Pyriproxyfen and
therefore, the applicant would have to pass the test under both Section
3(d) and 3(e), albeit on different aspects by showing enhanced
efficacy over known combination of a suspo-emulsion qua Section
3(d) and synergistic effect over the mere additive effect of individual
components of suspo-emulsion composition. Therefore, it was
incumbent upon Respondent No. 1 to take note of the pre-grant
opposition under Section 3(d) and deal with the same, in accordance
with law and the material placed on record.
44. This Court also finds prima facie merit in the contention of the
Petitioner that synergistic effect can be demonstrated by a combined
effect of increase in bio-efficacy and stability of the admixture
beyond the sum of their individual effects. However, if bio-
efficacy/stability is to be tested in respect of Section 3(d), the test
would be bio-efficacy/stability of the form, i.e., suspo-emulsion in this
case and not the admixture, over and above the closest prior art
brought forth by the opposer, which is the known substance as a
comparator. Petitioner has also raised a plea that the data provided
by Respondent No. 2 related to bio-efficacy/stability and not with
respect to enhanced efficacy as compared to the prior art, i.e., the
alleged known substance. Therefore, once the Petitioner had raised
opposition under Section 3(d) and 3(e) both, Respondent No. 1 was
required to deal with the opposition, looking at the scheme of the Act
and the intent of the legislature in enacting two separate provisions.”
54. In view of the above analysis, the present invention is not permissible
under Section 3(e) of the Act.
55. As regards whether the Impugned Order is well-reasoned in terms of
the objection of lack of inventive step, it is important to examine the approach
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of the learned Controller in the Impugned Order. In F-Hoffmann-la Roche
Ltd. & Anr. v. Cipla Ltd., Neutral Citation: 2015: DHC:9674, this Court
emphasized on the following steps which must be followed while raising an
objection on the ground of lack on inventive step under Section 2 (1)(ja) of
the Act. The steps are reproduced hereunder:
“Step No.1 To identify an ordinary person skilled in the art,
Step No.2 To identify the inventive concept embodied in the patent,
Step No.3 To impute to a normal skilled but unimaginative ordinary
person skilled in the art what was common general knowledge in the
art at the priority date.
Step No.4 To identify the differences, if any, between the matter cited
and the alleged invention and ascertain whether the differences are
ordinary application of law or involve various different steps
requiring multiple, theoretical and practical applications,
Step No.5 To decide whether those differences, viewed in the
knowledge of alleged invention, constituted steps which would have
been obvious to the ordinary person skilled in the art and rule out a
hindsight approach.”
56. The learned Controller has discussed the inventive concept embodied
in the Subject Patent of the present invention. Thereafter, the 3rd step that
pertains to common general knowledge in the art at the priority date is
compiled by the discussion of the cited prior arts. Pursuant to that, the
comparison of the cited documents with the present invention was undertaken
and the same was assessed to come to the conclusion. Therefore, the
Impugned Order is well-reasoned and does not contain any infirmities.
Accordingly, no interference is required in this Appeal.
CONCLUSION
57. In view of the above analysis, Respondent No. 2 has established the
relevancy of the additional documents and, accordingly, I.A. 20715/2025 is
hereby allowed and the additional documents are directed to be taken on
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record. As the Impugned Order is well-reasoned, the present Appeal is hereby
dismissed. There shall be no order as to costs.
TEJAS KARIA, J
FEBRUARY 28, 2026
‘KC’ / ‘N’
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