INDIA: HIGH COURT REASONS AGAINST UNREASONED ORDERS BY THE IPO

INTRODUCTION

The Hon’ble Calcutta High Court (hereinafter, ‘the Court’) in the appeal of Decco Worldwide Post Harvest Holdings B.V & Anr. vs. The Controller of Patents and Designs & Anr. [AID NO. 11 OF 2021] has highlighted the significance of a reasoned order and reiterated that the proper way to construe a specification is to first read the description of the invention and then the claims. 

BACKGROUND

The appeal under section 117A of the Patents Act 1970 (hereinafter ‘the Act’), was filed by Decco Worldwide Post-Harvest Holdings B.V. (hereinafter ‘the Appellant’) challenging the impugned order passed by The Controller of Patents and Designs (hereinafter ‘the Respondent’) refusing a patent for the application titled ‘A Fungicidal Treatment for Black Sigatoka’. Upon examination, the Respondent found that the application was devoid of novelty, inventive merit, claimed non-patentable subject matter, and the disclosure was insufficient, thereby passing a refusal order. 

The Appellant contended that the claimed invention relating to the treatment of plants was objected to fall under Section 3(h) of the Act, and that the Respondent ignored the fact highlighted by the Appellant that numerous inventions pertaining to the treatment of plants have been granted by the Indian Patent Office (IPO). The Appellant further contended that the Respondent has erred with respect to the analysis of lack of inventive step as none of the cited art relate to black sigatoka. 

The Respondent rebutted the Appellant’s claims and deemed them as contradictory and inconsistent, alleging that the subject application provides the use of OPP salt as a fungicide and biocide which is priori foreseeable and hence is void of inventive step. 

COURT’S FINDINGS

The Court opined that the Respondent had failed to explain as to why the subject application, which covers a method of treatment of plants to treat fungal diseases, would fall under section 3(h) of the Act that bars traditional methods of agriculture from patenting. The Court emphasized that the reasons are the foundation of any order passed by any judicial or quasi-judicial authority.

While discussing the inventive step rejection, the Court further observed that the data provided by the Appellants that focussed mainly on the combined use of two actives had not been considered by the Respondent. The Court deliberated extensively on the point that the Respondent had erred in deciding the question of inventive merit of the application, and held that the proper way to construe a specification is to first read that description of the invention and then read the claims.  

The impugned order was set aside and the matter remanded to the Respondent to adjudicate the subject patent application afresh and advised the Respondent that the findings of the Court are prima facie not binding on the Controller.