Rallis India Limited Vs Controller of Patent

Brief Introductory Head Note

The present case arises from an appeal before the High Court of Judicature at Madras challenging the order of rejection passed by the patent office. The main issue was whether a previously filed patent application could be treated as ‘prior art’ for judging the obviousness and novelty of the appellant’s formulation. The court examined the procedural fairness of the order, the correctness of relying on a provisional specification to set priority date, and whether the claimed emulsifiable concentrate (EC) formulation was actually disclosed in the provisional specification of the earlier patent. The judgment ultimately remanded the case for fresh decision by another officer.

Factual Background

The appellant, Rallis India Limited, filed Patent Application No. 4135/CHEN/2014 on 25 August 2014 for a “stable herbicidal composition containing pendimethalin and metribuzin in emulsifiable concentrate (EC) form” at the Indian Patent Office, Chennai. A request for examination was made on 27 September 2017. The patent office issued the First Examination Report on 22 July 2019, raising objections on lack of novelty and lack of inventive step under Section 2(1)(j) and Section 2(1)(ja) of the Patents Act, 1970, by citing prior documents AU760278B2, AU2012203353B2, and Proceedings of the Ninth Australian Weeds Conference, 1990.

Alongside, two opponents—Haryana Pesticide Manufacturers Association (HPMA) and Chimanbhai Chauhan—filed pre-grant oppositions under Section 25(1) of the Patents Act. HPMA’s opposition was filed on 10 September 2019, and pleadings were completed by 27 August 2021, with hearing concluded on 24 November 2021. The third respondent filed a separate pre-grant opposition a day before submissions were filed by HPMA; that second opposition concluded with hearing on 17 July 2023.

A key document used by all opponents was Patent No. IN 2243/MUM/2014, which also described pendimethalin and metribuzin compositions, and included dependent claim 17 referring to EC, ZC, OD, etc. This patent was initially filed provisionally on 9 July 2014 and later completed on 30 December 2014.

The appellant submitted amended specifications and two affidavits from experts, including by Vairamani Ramanathan, clarifying that the earlier provisional specification taught only SE formulation, not EC and even claimed that SE was superior to EC.

The controller rejected the claims on 5 March 2024.

Procedural Details

The appeal was filed under Section 117A(2) of the Patents Act, 1970. The appeal did not examine merits fully, but focused on legality of the rejection order. The court checked whether a ‘speaking order’ (reasoned order) was passed, and whether contentions, affidavits, and prior art reliance were examined in a fair and complete manner.

Core Dispute

The core dispute was whether the provisional specification of IN 2243/MUM/2014 actually disclosed an EC formulation so that its priority date could defeat the appellant's priority date of 25 August 2014. The appellant argued it does not, and hence cannot be treated as prior art for EC claims, because Section 11(2) mandates that the priority date of a claim can be taken from the provisional specification only if the claim is “fairly based on the disclosures” in it.

The opponents argued that the ranges overlap and compositions were already known, hence obvious. However, the impugned order never examined the appellant’s preliminary legal objection under Section 11(2) at all nor analysed all prior arts relied by opponents.

Reasoning and Detailed Discussion by Court

The court referred to Section 11(1), Section 11(2), Section 11(6), and Section 11A of the Patents Act, 1970 in full. It emphasised that priority date can flow from the provisional specification only if the claim is fairly based on it. When it examined the extracts from provisional specification, it found that the provisional specification of D3 related only to Suspo-Emulsion formulation and contained statements that SE formulations are better than EC, do not require solvents, contain no organic solvent and are water based. There was no disclosure of EC formulation at all. The later complete specification alone included claim 17 describing EC, OD, etc., but this came on 30 December 2014, which is after the appellant’s filing on 25 August 2014.

The court observed that though the appellant specifically raised this objection in the reply statement (Volume VI – pages 1026-1028) and written submissions (Volume VII – page 1186), the impugned order noticed that D3 is not a prior art under Section 25(1)(e) but failed to record any reasoning or finding on whether EC claim could derive priority from provisional specification. Hence, the order stood legally defective. The court also held that several other prior art documents used by opponents were not examined at all in the controller’s order. It was also noted that affidavits by experts were neither accepted nor rejected with reasons. This failure to deal with significant materials and issues rendered the order invalid in law.

Decision

The court set aside the rejection order dated 5 March 2024 and remanded the matter for fresh decision by another patent officer with direction to pass a speaking order within four months and without being influenced by the court’s prima facie remarks.

Concluding Note

This judgment stresses the importance of fairness, full reasoning, and proper legal foundation when rejecting a patent. It explains that if the earlier provisional specification does not disclose the exact subject matter claimed later (here, the EC formulation), then such later-added dependent claims cannot get priority back-dated to the provisional date. This protects the integrity of Section 11(2) of the Patents Act, which ensures that priority cannot be claimed for subject matter that was never disclosed at first filing.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Case Title: Rallis India Limited Vs Controller of Patent

Case Number: C.M.A.(PT) 21 of 2024
Order Date: 20 November 2025
Neutral Citation: 2025:MHC:2659
Name of Court: High Court of Judicature at Madras, Chennai – Tamil Nadu
Hon’ble Judge: Justice Senthilkumar Ramamurthy

Written By: Advocate Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Five Suitable Suggested Titles for Publication

Simultaneous Priority Claims and the Test of ‘Fair Basis’ under Section 11(2) of the Patents Act, 1970
Rallis India Limited v. Controller of Patents: A Case Study on Procedural Fairness and Prior Art Reliance
The Doctrine of Fair Basis for Priority: Lessons from the Rallis India Patent Appeal
When Provisional Specification Falls Short: Understanding Section 11(2) through Rallis India Ltd.
Prior Art, Fair Basis, and the Imperative of a Reasoned Order: Insights from Rallis India Limited v. Controller of Patents

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The case titled Rallis India Limited v. Controller of Patents, decided on 20 November 2025 in Case No. 4135/CHEN/2014, was delivered by Hon’ble Mr. Justice Senthilkumar Ramamoorthy of the High Court of Judicature at Madras. The appeal by Rallis India Limited challenged the patent controller’s rejection of its invention concerning a stable herbicidal composition of pendimethalin and metribuzin in Emulsifiable Concentrate (EC) form. The rejection order, originally issued on 5 March 2024, was examined by the High Court of Madras for legal correctness and procedural fairness.

The dispute largely centred on the controller’s reliance on an earlier filed patent (IN 2243/MUM/2014) as prior art with a priority date of 9 July 2014 (provisional specification). The appellant argued that the provisional filing of that earlier application only disclosed a Suspo-Emulsion (SE) formulation and never disclosed an EC formulation, and hence its priority could not be used against the appellant's EC claims as per Section 11(2) of the Patents Act, 1970. Although the controller acknowledged D3 was not prior art under Section 25(1)(e), the rejection order contained no clear reasoning or finding on the “fair basis” test for backdating priority for EC formulation. The appellant also pointed out that affidavits filed by technical experts, including by Vairamani Ramanathan and G.N. Kendapa, were not discussed or evaluated at all.

The High Court found that the rejection order failed to deal with important legal objections, did not evaluate expert affidavits, and did not consider several prior art documents submitted by opponents. The court held that such omissions rendered the order invalid in law as it was not a “speaking order” (reasoned order). Consequently, the court set aside the rejection and remanded the matter for fresh consideration by a different patent officer, directing that a detailed reasoned order be issued within four months without being influenced by the court's remarks.

This decision reinforces the importance of complete reasoning, fairness, and the requirement that priority dates for specific formulations must be fairly based on the provisional disclosures, failing which they cannot defeat later-filed inventions.

Disclaimer:This is for general information only and should not be construed as legal advice as it may contain human errors in perception and presentation: Advocate Ajay Amitabh Suman, IP Adjutor (Patent & Trademark Attorney), High Court of Delhi

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