Rallis India Limited appealed against the Deputy Controller's order dated 05 March 2024 rejecting its patent application No. 4135/CHEN/2014 for a stable herbicidal composition comprising Pendimethalin and Metribuzin in emulsifiable concentrate formulation, filed on 25 August 2014 with examination request on 27 September 2017 leading to FER on 22 July 2019 citing lack of novelty inventive step and non-patentability under Sections 3(d) and 3(e);
Pre-grant oppositions were filed by Haryana Pesticide Manufacturers Association on 10 September 2019 and Chimanbhai Chauhan challenging under Sections 25(1)(b) to (g) with hearings concluded by 2023.
The Madras High Court reasoned that the impugned order erroneously relied on D3 (IN 2243/MUM/2014) as prior art without addressing whether its EC claims were fairly based on the provisional specification filed 09 July 2014 which disclosed only suspo-emulsion not EC,
Ignored expert affidavits distinguishing formulations and D3's deemed revocation status, overlooked additional prior arts cited by opponents, and inadequately assessed comparative data for synergy. The appeal was allowed order set aside and matter remanded to a different Controller for fresh reasoned decision within four months after hearing parties keeping all contentions open without the Court's observations binding the remand.
Important Law Point:
For a complete specification to claim priority from a provisional specification under Section 11(2) of the Patents Act, 1970, the claims must be fairly based on the disclosure in the provisional; failure disqualifies it as prior art for anticipation if the specific invention (e.g., EC formulation) is absent in the provisional.
The Controller must provide explicit reasoned findings on all material contentions responses evidence including expert affidavits and status of cited patents (e.g., deemed revocation under Rule 58(2) of Patents Rules, 2003) in refusal orders; omission renders the order unsustainable.
In appeals under Section 117A(2) of the Patents Act, 1970, the High Court may set aside a patent refusal and remand for fresh adjudication by a different officer if the order lacks proper consideration without the appellate observations prejudicing the remand.
Case Title: Rallis India Limited Vs. Deputy Controller of Patents and Designs & Ors.
Order date: 20 November 2025 : C.M.A.(PT) No. 21 of 2024 :Mad HC: Hon'ble Mr. Justice Senthilkumar Ramamoorthy
[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]
