Delhi High Court
Grains Research And Development … vs The Assistant Controller Of Patents And … on 23 February, 2026
Author: Jyoti Singh
Bench: Jyoti Singh
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 23rd February, 2026
+ C.A.(COMM.IPD-PAT) 66/2024
GRAINS RESEARCH AND DEVELOPMENT CORPORATION
.....Appellant
Through: Ms. Vindhya S Mani, Advocate.
versus
THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS
.....Respondent
Through: Mr. Sumit Nagpal, SPC with Mr.
Rudra Paliwal, G.P.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J. (ORAL)
1. This appeal is filed on behalf of the Appellant under Section 117A of
The Patents Act, 1970 (‘1970 Act’) seeking setting aside of impugned order
dated 09.05.2024, whereby Respondent has refused to grant patent under
Section 15 of 1970 Act in respect of Indian Patent Application bearing No.
201617030967 filed as PCT Application No. PCT/AU2015/05110 on
17.03.2015 on grounds of lack of inventive step under Section 2(1)(ja) and
non-patentability under Section 3(d) of 1970 Act.
2. To the extent necessary, the factual matrix as brought forth in the
appeal is that one PB IP Ltd. filed the PCT Application No.
PCT/AU2015/05110 on 17.03.2015 having 1-31 claims originally, taking
priority from 2014900932 dated 18.03.2014. Present Indian Patent
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Application bearing No. 201617030967 with 1-31 claims originally, was
filed on 10.09.2016 before the Indian Patent Office. The application was
published in the Patent Journal on 30.12.2016 and on 06.03.2018, Request
for Examination was made before the Respondent in Form-18. On
28.06.2018, patent application was assigned to The Australian Plant
Biosecurity Science Foundation Ltd. (‘APBSF’), along with copy of the
Deed of Assignment, which was recorded in Australia. The First
Examination Report (‘FER’) was issued by the Respondent on 10.05.2019,
to which response was filed by the applicant on 30.10.2019, along with
amended claims 1-19 and copies of drawings and abstract.
3. It is stated that on 20.11.2023, first hearing notice was issued under
Section 14 of 1970 Act, scheduling the hearing for 26.12.2023, which was
deferred on request of the applicant and finally, the hearing was held on
09.02.2024, whereafter written submissions were filed on 23.02.2024 along
with amended claims 1-9 and amendments to Complete Specification as also
Form-13. On 29.02.2024, second hearing notice was sent scheduling the
hearing on 22.03.2024, which was adjourned and fresh hearing notice was
sent for 09.04.2024. On 11.04.2024, APBSF appointed a Liquidator. On
23.04.2024, post-hearing written submissions were filed and subsequent
thereto, vide impugned order dated 09.05.2024, Respondent rejected the
application under Sections 2(1)(ja) and 3(d) of 1970 Act. On 01.08.2024,
APBSF assigned the patent application to the Appellant herein and thus the
appeal is filed by the Appellant. For the sake of convenience, hereinafter the
assignors and the assignees are being referred to as ‘Appellant’.
4. As stated in the appeal, present application is a National
Phase Application from corresponding PCT Application bearing No. PCT/
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AU2015/05110 dated 17.03.2015, which claims priority from Australian
Application bearing No. 2014900932 dated 18.03.2014 and is titled
‘METHOD OF CONTROLLING INSECTS AND INSECTICIDE FOR
USE THEREIN’. The present invention relates to a method of controlling
insects in stored food comprising the step of contacting said insects with an
effective amount of synthetic amorphous silica, such as food grade synthetic
amorphous silica in the form of a dust-based formulation. The invention also
relates to solid insecticide formulations comprising an effective amount of
synthetic amorphous silica.
5. It is stated that the technical problem that the claimed invention seeks
to address is that insects can cause serious public health concerns and insect
infestations can result in economic loss for example food spoilage.
Admittedly, there are various insecticides available, however, many of these
are unsuitable for widespread application due to toxicity. Furthermore, many
insecticides tend to be active against a relatively narrow range of targets and
only function optimally under very specific conditions e.g. moisture,
humidity and temperature. These factors combined with the ever-increasing
problem of insecticide resistance means there is a need for new and effective
insecticides, particularly those without residue and OH&S issues.
6. It is stated that one area where insect infestations are particularly
problematic is in relation to stored food. Stored food such as grain and rice
are particularly susceptible to insect infestations. Many solid formulation
insecticides, e.g. diatomaceous earth (DE) designed for application to stored
food, are less than ideal because they need to be applied in relatively high
doses and the food often requires treatment to remove the insecticide before
food is safe for processing and/or consumption. The instant application
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relates to an invention to cater to the need for more effective and economical
insecticides and methods of treatment.
7. It is stated that the present invention provides a food comprising an
effective amount of synthetic amorphous silica, which is “food grade” and is
suitable for consumption without undue adverse effects. Moreover, the
synthetic amorphous silica meets at least one of the food grade
certifications: (a) Food Chemical Codex (FCC); (b) the Food and Drugs
Administration (FDA) and Australia AICS; (c) Canada CEPA OSL; (d) EU
EINECS Number; (e) Japan ENCS; and (f) USA TSCA inventory.
Preferably, the synthetic amorphous silica comprises at least 91%, 92%,
93%, 94%, 95%, 96%, 97%, 98% or 99% silica by weight and the synthetic
amorphous silica has an average particle size of less than 20000nm, more
preferably less than l0000nm and even more preferably, less than 1000nm. It
is particularly preferred for the synthetic amorphous silica to have an
average particle size of less than 750, 500 or 250nm. In one form of the
invention, the average particle of the synthetic amorphous silica is 50-
200nm, 100-150nm or 110-120nm. For ready reference, the amended
pending claims of the instant application rejected by the Respondent are as
follows:-
“I/We Claim
1. A method of controlling insects in stored food comprising the step of
applying to the stored food an effective amount of a food grade synthetic
amorphous silica comprising 100-250mg/kg of the stored food and
wherein the synthetic amorphous silica has an average particle size of
100-150rn measured by a scanning electron microscope an effective
surface area of 185-280m2/g and at least 98% silica, by weight.
2. The method as claimed in claim 1 wherein the insects are controlled for
at least 45 days.
3. The method as claimed in any one of the preceding claims wherein the
food grade synthetic amorphous silica comprises a dust or a powderSignature Not Verified
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4. The method as claimed in any one of the preceding claims wherein the
food grade synthetic amorphous silica comprises at least 99% silica, by
weight.
5. The method as claimed in any one of the preceding claims wherein the
food grade synthetic amorphous silica has an oil absorption value of 290-
320m1/100g.
6. The method as claimed in any one of the preceding claims wherein the
food grade synthetic amorphous silica is adapted not to impact on the
density of the stored food.
7. The method as claimed in any one of the preceding claims wherein the
insect is a beetle.
8. The method as claimed in any one of claims 1 to 7 wherein the insect is
an arachnid.
9. The method as claimed in any one of the preceding claims wherein the
stored food is grain.”
8. Learned counsel for the Appellant assails the impugned order on
multiple grounds. It is submitted that impugned order is unreasoned and
non-speaking and suffers from non-application of mind. The order has 12
pages, out of which 4 contain the narrative of the prosecution history of the
application and also pending claims 1-9. Pages 4 and 5 contain an overall
brief about prior arts D1-D7 that were cited collectively in the first and
second hearing notices and page 6 contains commonality of elements in
prior arts D1-D7 with some attributes required to qualify a person skilled in
the art in the field of agriculture and pages 7 and 8 faintly capture
submissions made during first and second hearings. Page 9 has discussion
on Section 3(d) objection followed by page 10 which has general discussion
on the subject matter but without any claim comparison or analysis. Page 11
deals with objections in the second hearing notice and finally page 12
contains the conclusion, rejecting the instant application. Deconstruction of
the impugned order would show that its contents have been copied and
pasted from the various documents on record and suffers from non-
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application of mind and in the absence of independent analysis, the order
cannot be sustained in law. Reliance is placed on a decision of the Madras
High Court in Signal Pharmaceuticals v. Deputy Controller of Patents and
Designs, MANU/TN/6445/2024, where the impugned order was quashed on
the ground that it was a non-speaking order on several aspects and the matter
was remanded back for reconsideration on merits.
9. It is argued that the other glaring infirmity in the impugned order is
that new and inconsistent objections were raised by the Respondent at all
stages of examination of the application, which shows that there was no
clarity in the mind of the Respondent and this has also resulted in violation
of principles of natural justice, since the Appellant did not get the chance to
effectively deal with the objections. Moreover, it is settled that objections in
the hearing notice must emerge from the FER and cannot go beyond the
scope and limitations of the objections specified in the FER. To demonstrate
this point, learned counsel urged that initially the objection was raised under
Section 3(d), (e) and (h) of 1970 Act, however, in the First hearing Notice
dated 20.11.2023, objection of Section 3 was waived but again in the
Second hearing Notice, objection was raised under Section 3(p) and
although not specifically mentioned, Section 3(d) was indirectly introduced.
Inconsistency is also apparent from the fact that in the FER dated
10.05.2019, it was expressly stated that the instant application had industrial
applicability but de hors this, an objection was raised under Section 2(1)(ac)
in the Second hearing Notice dated 29.02.2024. Further, in the First hearing
Notice, Respondent cited entirely new set of prior arts D1 and D3 and in the
Second hearing Notice, another new set of prior arts D5-D7 were
introduced. The inconsistent objections have not only led to procedural
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violations but also principles of natural justice. This also shows that after
examining the response of the Appellant to the FER, Respondent was unable
to sustain the objection and therefore kept resorting to fresh objections.
10. It is argued that Respondent has completely overlooked that in respect
of corresponding applications in foreign jurisdictions, similar claims have
been granted such as in Europe, Canada, Australia, Brazil and Indonesia.
This demonstrates the inventive merit and patentability, which the claimed
invention posits and also highlights the vested commercial interest and
industrial applicability of the claimed invention. Reliance is placed on the
judgment of this Court in Otsuka Pharmaceutical Co. Ltd. v. Controller of
Patents, 2022 SCC OnLine Del 4982, where it was held that
acknowledgement of the inventive step in corresponding applications in
different jurisdictions leading to grant of patents, affirms the patentability of
the subject invention and is a factor which must be taken into account by
the Controller of Patents & Designs. Reliance is placed on the order of IPAB
in OA/03/2017/PT/CHN titled Stempeutics Research Pvt. Ltd. v. The
Controller of Patents, decided on 07.08.2020 wherein it was observed that
when a similar patent is registered in multiple jurisdictions after having
overcome the objection of novelty and obviousness, this factor must be
taken into consideration at the time of considering a similar application in
other jurisdictions. In the present case, Respondent has not even taken into
consideration this crucial factor.
11. It is further argued that Respondent has incorrectly rejected the instant
application for lack of inventive step under Section 2(1)(ja) of 1970 Act
relying on cited prior arts D1-D7. It was brought before the Respondent that
the cited prior arts do not ‘teach’, ‘suggest’ or ‘motivate’ a person skilled in
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the art to arrive at the invention claimed in the instant application either by
going through the documents alone or in combination. The claimed
invention posits both technical and economic significance over the cited
prior arts. D1 does not teach, suggest or disclose specific combination of
composition and method parameters of pending claim 1 of the instant
application. Claim 1 of D1 describes a device comprising a substrate with a
non-drying adhesive layer that holds silica aerogel particles and the key
focus is on physical structure of the device and its ability to release silica
aerogel particles when insect comes in contact with the device and does not
disclose method of directly applying synthetic amorphous silica as in the
claimed invention. D1 does not disclose direct interaction between silica and
stored food, whereas instant application claims a method that controls
insects for at least 45 days focusing on duration and effectiveness, a
consideration absent in D1. Therefore, inventiveness of instant application
lies in assurance of long-term effectiveness in stored food and a person
skilled in the art would not have concluded applying food grade synthetic
amorphous silica to the stored food or derive the claimed duration of
effectiveness from teachings of D1. Further, D1 fails to disclose that silica
can be in the form of dust or powder, whereas present application focuses on
the form in which silica can be applied, ensuring flexibility and adaptability
in various stored food environments and provides an inventive method that
can be adjusted as per needs of the stored food unlike D1 which offers a
rigid and static solution. D1 teaches away from the application of synthetic
amorphous silica to stored food and instead teaches the application to tape
and then use of this tape impregnated with synthetic amorphous silica to
control insects. Therefore, Respondent overlooked that D1 fails to disclose
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all elements of claimed invention and thus, the latter is novel.
12. It is argued that the Respondent has completely ignored that D2
suggests combination of diatomaceous earth and synthetic amorphous silica,
where synthetic amorphous silica is a minor component in the mixture and
performs the role of a synergist to diatomaceous earth and does not in any
way teach or suggest the use of synthetic amorphous silica alone for
controlling insects. The instant invention involves applying silica directly to
the stored food at defined concentration and particle size which ensures
prolonged insect control. Use of 99% high-purity silica is not disclosed in
D2 and moreover, diatomaceous earth is a natural product and is not
synthetic amorphous silica nor is it food grade, both features of claim 1 of
the instant application. Therefore, a person skilled in the art would not be
able to derive the inventive claims of instant application from D2 due to
several fundamental differences in focus, physical properties and
application.
13. It is argued that D3 and D4 referred to in the impugned order were
previously cited as prior arts documents D1 and D2 in the FER, to which an
appropriate response was submitted by the Appellant on 30.10.2019. Prior
art D3, Golob P. (1997) is a review of the work of McLaughlin i.e., D4 and
does not teach or suggest anything with regard to claim 1. Moreover, D4
neither teaches nor even remotely suggests the claimed methods that are
limited to use of synthetic amorphous silica with the recited physical
characteristics at the recited dosage. D3 or D4 do not provide teachings with
regard to modification of formulations therein or using other synthetic
amorphous silica compounds with similar physical characteristics to the
synthetic amorphous silica claimed in the instant application. As an
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example, in terms of most relevant synthetic amorphous silica products
described in D4: (a) Aerosil R974 has a smaller average particle size than
the synthetic amorphous silica recited in amended claim 1; and (b) Gasil
23D has a larger average particle size (4600nm) than the synthetic
amorphous silica recited in amended claim 1.
14. It is argued that Respondent did not consider that D5 describes the use
of synthetic amorphous silica known as Sipernat 22 as an insecticide in
stored wheat, both alone and in combination, with insecticide impregnated
silica dusts (malathion dust and pirimiphos methyl dust). Sipernat 22 has an
average particle size of 100,000 nm, which is of a magnitude greater than
the one recited in claim 1 of the instant application and furthermore, D5
teaches methods involving the synthetic amorphous silica at a concentration
of 1150 mg/kg, which is a much higher dose than recited in claim 1. Hence,
several features of method in claim 1 are not taught or suggested by D5. It
was pointed out to the Respondent that D5 teaches a mortality rate of less
than 80% and 60% for S oryzae at 250C and mortality rate of less than 20%
and 10% at 150C, however, even this crucial difference in the achievable
mortality rate in the instant application, was not noted by the Respondent.
15. It is argued that D6 teaches the use of diatomaceous earth with
particle sizes ranging from 3µm-1mm, wherein particle size of diatomaceous
earth converts to 3000nm-1000,000nm and is thus well outside the
average particle size range recited in claim 1 i.e., 100-150nm.
Moreover, diatomaceous earth is not a synthetic amorphous silica and is
not food grade/98% silica by weight and has no bearing on the inventive
step of method of controlling insects defined in claim 1 of the subject
application.
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16. It is submitted that Respondent did not appreciate that D7 teaches the
use of silica gel, including silica particles with a maximum particle size of
50µm and does not teach an effective dosage of 100-250 mg/kg, where
physical characteristic and dosage of synthetic amorphous silica are critical
to its insecticidal properties. Combination of specific features such as dose
of 100-250 mg/kg of synthetic amorphous silica with certain physical
characteristic results in extended control of insects in stored food where
100% mortality is maintained for at least 45 days with a dose of 150 mg/kg.
The embodiment in D7 teaches spray application of silica gels to a film laid
on the ground and insects are killed when they come in contact with silica
gel. In contrast, claim 1 of the instant application defines a method that
involves applying synthetic amorphous silica to stored food.
17. It is argued that Respondent failed to make claim-wise analysis and/or
give any reasoning with regard to lack of inventive step albeit Appellant had
refuted the prior arts, comprehensively in the written submissions.
Moreover, Respondent has failed to follow the five-step test laid down by
the Division Bench in F. Hoffman-La Roche Ltd. & Anr. v. Cipla Ltd.,
2015 SCC OnLine Del 13619 and has only attempted to follow the exercise
by referring to a person skilled in the art. No exercise was carried out to
identify the differences, if any, between the claimed invention and the cited
prior arts, especially, when Appellant had pointed out so many features in
the claimed invention, which the cited prior arts do not teach or suggest.
18. It is argued that Respondent has incorrectly rejected the instant
application for non-patentability under Section 3(d) of 1970 Act. The
objection under Section 3(d) was initially raised in the FER, to which
detailed response was filed by the Appellant. This objection was not
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mentioned in the First hearing Notice and it was assumed that the objection
was waived being satisfied with the response. However, the objection was
again raised in the Second hearing Notice, which is an incorrect procedure to
adopt. The objection is qualified by the Respondent as falling in fourth part
of Section 3(d) i.e., ‘the mere use of a known process unless such known
process results in a new product or employs at least one new reactant’.
Respondent merely stated that claims 1-9 are mere use of known processes
in cited prior arts D1-D7 without any cogent reasoning to support this. The
subject matter of instant application involves a novel component/reactant
i.e., a food grade synthetic amorphous silica having an average particle size
of 100-150nm, an effective surface area of 185-280m2/g and at least 98%
silica by weight. Since the claimed method involves at least one new
reactant/component, it shall fall outside the ambit of Section 3(d). No
analysis has been carried out of the claimed subject matter with D1-D7.
Respondent has also failed to recognize which part of the claimed method of
instant application constitutes a ‘known process’. There is no disclosure of
the known efficacy or new form of the known substance before rejecting the
instant application. It is trite that use of known processes would be
considered patentable as long as the known process involves a new reactant.
This ground of rejection is also in teeth of Respondent’s own
acknowledgement of novelty and industrial applicability of claimed
invention over prior arts D1-D4.
19. Mr. Sumit Nagpal, learned SPC appearing for the Respondent defends
the impugned order and submits that Appellant is unable to demonstrate how
principles of natural justice have been violated by the Respondent. Each
time a new objection was raised, opportunity was granted to the Appellant to
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file written arguments/response to deal with the objections. The argument
that Respondent did not consider grant of patent in other jurisdictions cannot
be accepted since patent is a territorial right and grant of patent in another
jurisdiction cannot bind the Respondent to necessarily grant the patent and
each decision is based on its individual facts.
20. It is argued that Appellant has not been able to show the inventive
steps taken to develop the method it claims and sans the inventive steps,
Respondent was justified in refusing the patent application under Section
2(1)(ja) of 1970 Act in light of the combined teachings of cited documents
D1-D7. The method of controlling insects in stored food grains comprising
the step of applying the stored food within an effective amount of a food-
grade synthetic amorphous silica, is a very commonly known method and
was widely available and known prior to the instant application. Prior arts
D1-D7 collectively disclosed various methods and compositions for
controlling insects in stored food using silica-based materials, which
includes silica aerogel particles (D1), a mixture of diatomaceous earth and
silica (D2), synthetic amorphous silica (D3, D4, D5), silica gel (D7) and
traditional uses of silica such as diatomaceous earth (D6).
21. Elaborating the argument, it is submitted that D1 relates to a device
for controlling stored-food insects, comprising a substrate selected from the
group consisting of paper, burlap, cardboard and porous plastic, a layer of
non-drying adhesive attached to said substrate and a deposit of silica aerogel
particles atop the adhesive layer, the silica aerogel particles being releasable
upon insect contact. D2 relates to insecticidal dust composition consisting of
a mixture of about 95% to 65% by weight diatomaceous earth and about 5%
to 35% by weight silica, selected from the group consisting of precipitated
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silica and aerogel silica. D3 and D4 relate to method of controlling insects in
stored food comprising the step of contacting said insects with an effective
amount of synthetic amorphous silica, such as food-grade synthetic
amorphous silica. D5 recites amorphous silica as an additive to dust
formulations of insecticides for stored grain pest control. D6 recites that
silica is utilized in the method of food preservation and is traditionally
known. Diatomaceous earth is a dust form from fossilized diatoms
consisting of entirely amorphous silicon in which the particle size ranges
from 3µm to more than 1 mm and is used as a natural insecticides. D7
relates to a method for killing insects by exposing them to an insect-killing
effective amount of a biotically toxic composition consisting essentially of a
relative humidity controlling effective amount of silica gel having a
minimum particle size of 350µm and about 0.05% to about 5% by weight
silica particles, having a maximum diameter of about 50µm. It is urged that
there is a coherent thread between each of the cited documents for purpose
of insects’ control in food-grade substance with utilization of silica by
application and there being no inventive step, since use of silica for
controlling insects in stored food is a knowledge available in the field prior
to filing of the patent application, the instant application was rightly refused
under Section 2(1)(ja).
22. It is further argued that the subject matter of claims 1-9 is a mere use
of known processes over D1-D7 and hence, the claim method was rightly
objected to as falling within the purview of fourth part of Section 3(d).
Method of controlling insects in stored food (grain) by applying stored food
with effective amount of food-grade synthetic amorphous silica is
commonly known and present in D1-D7. In fact, utilization of silica for
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insect control in grain is a long-standing practice ingrained in traditional
agricultural methods and spans generations of farmers. The physical features
of silica like particle size, surface area and priority on which much emphasis
is laid by the Appellant, are essential for characterizing materials but they do
not inherently make a substance novel from a chemical perspective. They
make differences with respect to other silica in the physical sense only
which cannot be considered as new silica or new reactant per se. Further, a
reactant is a chemical substance which participates in chemical reactions and
forms new substances called products.
23. It is argued that novelty in chemistry refers to new chemical
compounds, formulations or processes that have not been previously
described or utilized and arises from changes in molecular structure,
composition or behaviour that result in distinct chemical properties or
reactions and in the context of silica to be considered as novel, it would
typically involve chemical modifications, new applications and
unprecedented reactivity. Therefore, while physical characteristic like
particle size and surface area are crucial for understanding and utilizing
materials like silica, they are not sufficient on their own to confer chemical
novelty. Thus the silica unitized in the claimed process is not a novel
reactant and the processing step of controlling insects in stored food
comprising the step of applying to the stored food an effective amount of
food-grade synthetic amorphous silica is already known. As such, claims 1-9
are non-patentable under Section 3(d) being mere use of known process,
which does not result in a new product and basis the objection under Section
3(d), the application was rightly refused.
24. It is also argued that Respondent dealt with person skilled in the art,
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which in the claimed invention would likely to be someone with expertise in
the field of agricultural science, specially focused on pest control in stored
food products. This individual would possess knowledge and experience in
various aspects related to insect management, including the selection and
application of insecticides or insect control agents. Given the specific focus
on the application of food-grade synthetic amorphous silica for controlling
insects in stored food, a person skilled in the art might also have a
background in food science or food safety and this expertise would enable
him to understand the requirements and regulations surrounding the use of
additives in food products, ensuring compliance with safety standards.
Therefore, person skilled in the art for claimed invention would likely have
interdisciplinary knowledge encompassing agricultural science, food science
and material science with specific focus on pest control stored food
products. It is thus asserted that all steps required by law were followed
before refusing the patent.
25. Heard learned counsels for the parties and examined their
submissions.
26. The instant application is a PCT Application bearing No.
PCT/AU2015/05110 dated 17.03.2015 taking priority from Australian
Application bearing No. 2014900932 dated 18.03.2014. As pointed out by
the Appellant, when the FER was issued, the objections raised were lack of
novelty under Section 2(1)(j), lack of inventive step under Section 2(1)(ja),
non-patentability under Section 3(d), 3(h) and 3(e), prior arts D1-D6. In the
First hearing Notice, new prior arts D1-D4 were cited and there was no
objection concerning Section 3, however, in the Second hearing Notice,
objection was raised under Section 3(p) and indirectly under Section 3(d).
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While noting in the FER that instant application had industrial applicability,
an objection was raised under Section 2(1)(ac) in the Second hearing Notice.
Entirely, new set of prior arts D5-D7 were introduced in the Second
hearing Notice. Finally, the patent has been refused under Sections 2(1)(ja)
and 3(d).
27. First and foremost, plain reading of the impugned order dated
09.05.2024 shows that Respondent has not followed the five-steps laid down
by the Division Bench in F. Hoffman-La Roche (supra), for determining
grant/refusal of the patent. The five steps are extracted hereunder for ready
reference:-
“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 hideside approach.”
28. Counsel for the Appellant is right in her submission that though a
feeble attempt was made by the Respondent to follow the five-step
procedure by identifying the person skilled in the art but further steps were
not followed. Respondent has neither carried out claim analysis nor
compared the prior arts with the claimed invention to identify the
differences, if any, between the cited matter and the claimed invention and
thereafter to ascertain whether differences are ordinary application of law or
involve various different steps requiring multiple, theoretical and practical
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applications and this, in my view, is sufficient to hold that the order is
untenable in law. In fact, in Tapas Chatterjee v. Assistant Controller of
Patents and Designs and Another, 2025 SCC OnLine Del 6369, Division
Bench of this Court has held that the steps envisaged in F. Hoffman-La
Roche (supra) are not only required to be followed but must be followed
sequentially while examining the aspect of obviousness and existence of
inventive step.
29. Appellant is right that in the comprehensive responses to the
objections, Appellant had meticulously brought forth the differences
between cited prior arts D1-D7 and the claims in the instant application,
however, Respondent has not analysed the same. The methodology followed
by the Respondent, as reflected from the impugned order, is that references
have been made to the cited prior arts and their teachings/suggestions but
there is no independent analysis and consequently, there is no reasoning why
the claimed invention is not inventive. The common thread that runs in the
entire order is a singular observation and understanding of the Respondent
that application of silica based materials for insect control in stored food is
common and known to those skilled in the art and claimed invention does
not demonstrate any unexpected or non-obvious advantages over the prior
arts so as to qualify as an invention under Section 2(1)(ja).
30. It was brought forth before the Respondent how as per the inventor,
D1-D7 did not teach or suggest and/or had any bearing on the inventive step
of the method defined in claim 1 of the subject application. These
differences have been brought forth in the earlier part of this judgment and
are not being repeated for the sake of brevity. However, none of these
differences have been adverted to or dealt with by the Respondent.
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Impugned order does not even discuss as to in what way the claimed
invention would be obvious to the person skilled in the art and/or how he
would be able to anticipate the claimed invention. It is trite that person
skilled in the art must anticipate the invention on the basis of prior arts and
further predict with a reasonable expectation of success, the solution of the
underlying technical problem of the invention. For assessment of inventive
step of invention, it must be observed and determined whether the skilled
person could have arrived at the invention by combining the prior arts or
whether he would have done so because the prior art provided motivation to
do so with a reasonable expectation to solve the technical problem.
31. Appellant has brought out that the technical problem which the
claimed invention sought to address was that whilst there are various
insecticides available, many are not suitable for widespread application due
to toxicity and many insecticides tend to be active against a relatively
narrow range of targets and only function optimally under very specific
conditions such as moisture, humidity and temperature. This apart, there is
an ever-increasing problem of insecticide resistance. It was also brought out
that stored food such as grain and rice are particularly susceptible to insect
infestations and many solid formulation insecticides such as diatomaceous
earth are less than ideal because they need to be applied in relatively high
doses and the food requires treatment to remove the insecticides before it is
safe for consumption. The claimed invention provides a food comprising
and effective amount of synthetic amorphous silica, which is ‘food-grade’
since it is suitable for consumption without undue and adverse effects and
meets at least one of the many food-grade certifications. Many more features
of the claimed invention were also brought out in the response to the
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objections by the Appellant but these have either not been dealt with or there
is no analysis or reasoning to conclude otherwise. Respondent has also erred
in not correctly considering a very vital and crucial feature of claimed
invention that results in extended control of insects in stored food, whereby
100% mortality is maintained for at least 45 days with a dose of 150 mg/kg
and has simply brushed aside the point by observing that a person skilled in
the art would reasonably expect to achieve this end by applying sufficient
dose of an insecticide and consequently holding that there was no technical
advancement. As rightly flagged by counsel for the Appellant, there is no
analysis/reasoning in the order which would show scientifically that the
physical characteristic and dosage of synthetic amorphous silica leading to
100% mortality rate for 45 days was equivalent to using a higher dose of
silica.
32. The same position obtains with respect to objection under Section
3(d). Appellant pointed out that D1-D7 do not teach, suggest or motivate
person skilled in the art to arrive at the subject matter of the instant
application. It was pointed out to the Respondent that since the claimed
method involved a novel component/reactant i.e., a food-grade synthetic
amorphous silica with average particle size of 100-150nm, an effective
surface area of 185-280m2/g and at least 98% silica by weight, Section 3(d)
would not be applicable. Strangely, even this issue has been dealt with by
the same observation as in the context of objection under Section 2(1)(ja) by
stating that role of silica is widely known in insect/pest control and is
disclosed in the prior arts D2 and D7 and that physical features of silica such
as particle size etc., are essential for characterizing materials but do not
inherently make a substance novel. Respondent has stated in the impugned
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order that subject matter of claims 1-9 is a mere use of known processes
over D1-D7, but there is no mention of how and which part of the claims
qualifies as a known process. The order also does not indicate the known
efficacy or new form of the known substance in arriving at the conclusion of
non-patentability or under Section 3(d).
33. Appellant had also drawn the attention of the Respondent to the fact
that corresponding applications in foreign jurisdictions in respect of similar
claims have been granted in Europe, Canada, Australia, Brazil and
Indonesia, however, no attention has been paid to this aspect. It is no doubt
true that mere grant of patents in other jurisdictions cannot be a decisive
factor for grant of similar patent by the Respondent and the Controller has
the discretion to analyze the patent application on its own facts, however, it
is equally settled that the fact that the inventive step involved in the instant
application has been acknowledged in several other jurisdictions, is a
persuasive fact and due credence ought to have been given by the
Respondent, as there is no gainsaying that the patents were granted after
having overcome the objection of novelty and obviousness and this becomes
important owing to the fact that even in the present case, Respondent
acknowledged the industrial applicability of the claimed invention as also its
novelty.
34. The impugned order certainly lacks reasoning and clarity in
examination and fails to notice several distinctions brought forth by the
Appellant between the claimed invention and cited prior arts, which this
Court is able to assess even on a superficial comparison. Most importantly,
despite repeated and consistent observation by this Court, the five steps laid
down in F. Hoffman-La Roche (supra) have not been followed. As noted
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above, there is no independent examination and determination on the issue
of applicability of Section 3(d) per se by adverting to and identifying the
‘known process’ and/or disclosing the known efficacy or the new form of
the known substance before refusing the application under Section 3(d),
considering that Section 3(d) will apply only where the process forming the
subject matter of the claimed invention is a known process.
35. For all the aforesaid reasons, I am inclined to remand the matter to the
Respondent for a fresh consideration. Accordingly, impugned order dated
09.05.2024 is quashed and set aside. Matter is remanded back to the
Respondent for reconsideration and fresh determination of Indian Patent
Application bearing No. 201617030967. The consideration will be restricted
to the objections under Section 2(1)(ja) and Section 3(d) of 1970 Act in
respect of claims 1-9, based on prior art documents D1-D7 as enlisted in
Second hearing Notice dated 29.02.2024. While carrying out de novo
consideration, the Respondent shall follow the tests and principles laid down
in F. Hoffman-La Roche (supra). Opportunity of hearing will be granted to
the Appellant after intimating the date of hearing, whereafter a reasoned and
speaking order shall be passed on the basis of material already on record and
no new evidence will be permitted, save and except, judicial precedents, if
any. Fresh order will be passed by the Respondent within two months from
today.
36. Appeal is partially allowed and disposed of in the aforesaid terms.
JYOTI SINGH, J
FEBRUARY 23, 2026
S.Sharma
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