Whether the patent held by Sulphur Mills is rendered invalid due to lack of novelty and inventive step, and hence liable to be revoked?
SUBJECT MATTER OF THE PATENT
IN 282429 (IN’429) for a novel agriculture composition namely a fertiliser that converts sulphur to its sulphate form instantly to be available for uptake by the plants. The composition is in the form of water dispersible granules and the said water dispersible granules are in a size range of 0.1 to 2.5 mm and comprise particles in the size range of 2 microns to 12 microns.
- Sulphur Mills filed a patent application numbered 40/MUM/2007 on 8th Januray, 2007. Upon publication, a total of seven pre-opposition grants were filed, which were all rejected. The patent was granted on 11th April, 2017.
- Post-grant oppositions were also filed challenging the grant of the patent; and remain lis pendens.
- The Plaintiff discovered that Dharmaj Crop has launched three brand names manufacturing products which infringe IN’429. Legal notices were sent to Dharamaj who denied any infringement by them.
- The Plaintiff thereafter got tests conducted at the Shriram Institute for Industrial Research, which allegedly confirmed that the Defendant No. 1’s products were infringing the Plaintiff’s patent. Another expert opinion confirming this finding was also obtained by the Plaintiff.
- The Plaintiff instituted a suit for injunction against Dharmaj and at the preliminary hearing it was ordered that subject to the post grant opposition being withdrawn by the Defendant No. 1, the Defendant’s counterclaim seeking revocation of the Plaintiff’s patent was registered.
- In the present order, the application for interim injunction is being considered.
SUBMISSION OF THE PLAINTIFF
- The Plaintiff opened arguments by stating that Defendant No. 1 does not dispute the aspect of infringement but primarily relies on the plea of invalidity of IN’429.
- Further, there were seven opponents who had opposed the patent and it was granted after a huge contest.
- The earlier patent application i.e., 655/MUM/2000, covered a fungicidal composition teaching a minimum of 80% Sulphur, as opposed to the range of 82% to 98% covered in IN’429. Further, it was submitted that the fungicide is applied on the plant whereas the fertilizer is applied on the soil. Thus, IN’429 would neither be anticipated nor hit by the earlier patent application.
- Insofar as the issue of invalidity is concerned the main prior art which is relied upon by the Defendant is the Plaintiff’s own patent application No. 655/MUM/2000. It is submitted that the said patent had a different particle size and granule size for Sulphur and the same is not covered in any manner by the patented composition.
- In so far as the argument of lack of novelty is concerned, the submission is that the comparison of claim 1 of both patents would reveal two different numerals at Sulphur loading, 80% in 655/MUM/2000 and 82% to 98% in IN’429. It is submitted that the allegation of lack of novelty has to be established by showing the entire patented product in a particular prior art. Even if there is one difference between the prior art and the patented product, it is not hit by novelty.
- Insofar as the argument of lack of inventive step is concerned, the first submission is that IN’429 proceeds on a footing which is exactly the opposite of what is taught in patent application No. 655/MUM/2000. The said application in fact teaches that the particle size of Sulphur should not be reduced. IN’429 does the exact opposite, as the particle size is reduced to 2 to 12 microns, while at the same time increasing the loading of Sulphur. This is where the innovation of the Plaintiff lies, inasmuch as reduction in the particle size and the simultaneous increase in the loading of Sulphur makes IN’429 a very effective and efficient product.
- Amendments to the claims were within the permissible limits, as per Section 59 of the Act which allows narrowing of claims and prohibits their broadening thereof. Additionally, Section 64(1)(o) of the Patent Act, 1970, allows reliance to be placed only on amendments obtained by fraud, to support a case for revocation. Not every amendment can be challenged in a proceeding under Section 64, unless and until the same is obtained by fraud.
- It is highlighted that IN’429 has gone through several pre-grant oppositions. Thus, unless and until there is something completely erroneous in the Controller’s orders, it would be safe to prima facie hold that the patent is valid.
- It is submitted that so long as the Defendant No. 1 can use any other form of sulphur of a different range, the Defendants business is not affected. On the other hand, if the injunction is not granted, the Plaintiff’s patent would be rendered completely ineffective as very few years of the term of the patent are left. Accordingly, it is prayed that the interim injunction prayed for ought to be granted in the present case.
SUBMISSION BY THE DEFENDANT
- It is submitted that the difference between a fungicidal and a fertilizer composition is an artificial distinction. A fungicide kills the bad fungi and a fertiliser enables better growth. Thus, both compositions enable better growth. The patented product is nothing but a tweaking of the earlier product and admittedly, its physical and chemical properties are no different from raw sulphur.
- The fact that the earlier product is also used and perceived to be a fertilizer is evident from the report of the Indian Institute of Vegetable Research (hereinafter, “IIVR Report”) which has been relied upon by the Plaintiff to show that the present product leads to an 81.8% increase in yield as compared with the fungicide product. Further, in IN’429, the current product, apart from being described as a fertilizer, is also described as a plant protectant, which is nothing but a fungicide.
- It is also highlighted that the claims have been repeatedly amended by the Plaintiff. The third amendment, by which the range of sulphur active ingredient was changed to “82% to 98%” is a clear give-away that the unamended claim would have been fully anticipated by the earlier application. The Plaintiff’s attempt to delete the word “about” shows that the attempt was merely to try and somehow bring it outside the scope of the earlier patent application. The earlier patent application having been abandoned and the present specification being on almost identical lines, it is submitted that IN’429 is liable to be revoked.
- The main claim in IN’429 is for an agricultural composition which converts sulphur to sulphate. Initially, the claims were for a broader range of sulphur active ingredient. However, over the course of the examination and oppositions, the range has been reduced and restricted as 82% to 98%. It is to be borne in mind that during the prosecution of a patent application, amendments to the claims are a common phenomenon, especially in response to the objections raised by the Patent Examiner. So long as the amendments are within the broad scope of the claims originally filed, they can be considered by the Examiner. No inference can be drawn based on the amendment of claims by a process of ‘reverse analysis’. In an infringement action, it is the granted claims that are to be considered. Accordingly, it is the main claim consisting of 82% to 98% (w/w) range of Sulphur, along with the dependent claims, which has to be examined by this Court to be tested on the plank of novelty and inventive step.
- 655/MUM/2000 is actually teaching away from what is contained in IN’429. The former application encourages use of larger particle size whereas IN’429 shows a shift in the opposite direction i.e., use of smaller particle size to enable better absorption. The mere presence of standardised agents such as wetting agent, dispersing agent, filler and binding agent would not make the two compositions identical in as much as the nature of the composition and the loading of sulphur, the utilisation of the same etc., are different. An entirely different range of active ingredient means that the claim is not anticipated by the former application.
- The Defendants ought to have satisfied the Court as to how 655/MUM/2000 would make IN’429 obvious to a person skilled in the art. The Defendants have not been able to demonstrate by comparing the method/process in 655/MUM/2000 with IN’429 as to how there was any motivation, suggestion or teaching in 655/MUM/2000 to arrive at IN’429. There was no argument forthcoming as to how a person skilled in the art would be inspired to try and arrive at the invention disclosed in IN’429. The submission as to the lack of inventive step has to be supported by some material to show that the journey from 655/MUM/2000 to IN’429 was an obvious one. However, this has not been demonstrated or established by the Defendants from the record. The mere fact that IN’429 uses the term ‘plant protectant’ would not lead to the conclusion that the composition can also be used as a fungicide, when admittedly it is being used as a fertiliser. Due to the above comparative features of 655/MUM/2000 and IN’429, this Court is of the opinion that IN’429 patent discloses a novel and inventive composition.
- The Defendants have also argued that the Controller ought not to have permitted the amendments to the claims of IN’429. It is seen that the Plaintiff has amended IN’429 on four occasions during the examination and oppositions process. The consistent view of the Controller, except in order dated 24th October, 2009 which is no longer in operation, has been that the said amendments were well within the scope of the originally filed claims and the Plaintiff only sought to restrict the claims and not broaden them. The view having been that the amendments are in accordance with Section 59 of the Patents Act, 1970, the mere fact that the Plaintiff has amended the claims would not weigh against the Plaintiff. It is usual for patent applicants to edit, amend, modify and vary the claims during the examination and opposition process. So long as the amendments sought are within the scope of the claims originally filed, no adverse conclusion can be drawn on the basis of the said amendments.
- Thus, the injunction prayed for is granted to Sulphur Mills with Dharmaj Crop allowed to exhaust their existing stock of manufactured compounds.
Citation: 2021 SCC OnLine Del 3874