Background and Invention
UPL Ltd filed a patent application for a novel agrochemical invention involving a combination of fungicides. The invention specifically combined succinate dehydrogenase inhibitor (SDHI) fungicides with at least one other fungicide selected from ergosterol biosynthesis inhibitors or quinone outside inhibitors and added a multi-site fungicide. This combination aimed to improve disease control in crops, particularly addressing resistance developed against existing fungicide combinations. The invention was supported by experimental data demonstrating increased efficacy and a surprising reduction in fungal diseases.
Patent Office Rejection
The patent application was initially examined and objections were raised under various provisions of the Patents Act, including for lack of inventive step under Section 2(1)(j) and for being a mere admixture under Section 3(e). The Controller of Patents rejected the application, finding that the combination lacked synergy and represented only an aggregation of known fungicide components without functional interrelation. The decision relied heavily on select experimental data while disregarding other submitted evidence showing therapeutic efficacy and synergistic effects. Procedural issues were also noted, including the failure to issue a Second Examination Report (SER) despite new documents being cited during the examination process.
Contentions and Court Findings
UPL Ltd contested the rejection, arguing that the patent office failed to appreciate the unexpected advantages and the improved disease control achieved by the specific combination with multi-site fungicide. The appellants highlighted that even small increases in efficacy could have a significant long-term impact, and that the order was cryptic and did not adequately consider all experimental data and prior art documents.
The Court agreed that the impugned order was flawed both on merits and procedure. It emphasized that a mere aggregation of known substances is not patentable only if there is no working interrelation producing a new or improved result. The Court observed that the authorities did not properly analyze the data and failed to issue the SER as mandated by section 13(3) of the Patents Act. Consequently, the Court set aside the rejection order and remanded the matter for fresh consideration, leaving questions of merit open for decision after affording the appellant a proper hearing. The fresh exercise was directed to be completed within four months.
Case Title: UPL Ltd VS The Controller of Patents Designs and Trademark Date of Order: 30 April 2025 Case No.: IPDPTA/2/2025: High Court at Calcutta Original Side (Intellectual Property Rights Division) Name of Hon'ble Judge: Justice Ravi Krishan Kapur
