In the case of UPL Ltd. vs Controller of Patents, Designs and Trademarks [IPDPTA/2/2025], the Calcutta High Court underscored that even a marginal numerical improvement in efficacy can constitute enhancement in the context of patentability. The decision reiterates that patent examination cannot be reduced to a mechanical or statistical exercise; the Controller must evaluate the technical and functional advancement of the invention as a whole.

The appeal concerned patent application number 201731008009, entitled “Agrochemical Composition comprising Combination of Fungicides”. The Controller had refused the application citing lack of inventive step and non-patentability under Section 3(e) of the Patents Act, 1970. It was stated in the impugned order that the substance of the claimed invention was a mere aggregation of known components without any synergistic effect and was therefore not allowable under Section 3(e).   

The subject invention disclosed an agrochemical made by combining fungicides comprising of succinate dehydrogenase inhibitor fungicides (SDHI) with at least one other fungicide selected from ergosterol biosynthesis inhibitor fungicide, a quinone outside inhibitor fungicide, plus multi-site fungicide. The addition of a multi-site fungicide was said to improve disease control and resistance management. It produced surprising and unexpected advantages, including enhanced efficacy and significant reduction in fungal disease. The invention was supported by examples and accompanying experimental data Tables.

The Appellant asserted that the aim of the invention was to expand the disease spectrum and overcome resistance observed in existing fungicidal combinations, allowing broader, more durable, and lower-dose efficacy through synergistic interaction among the active components.

The Appellant challenged the impugned order primarily on the grounds that it was unreasoned and procedurally irregular. The key contentions were as follows:

• The Controller failed to appreciate the real object and technical advancement achieved by the claimed invention.
• The finding that the invention was a mere aggregation of known components ignored the scientific data demonstrating synergistic improvement.
• The Controller relied solely on numerical interpretation, concluding that a 4-5% increase in disease control was insignificant, without any basis and understanding its practical and cumulative importance.
• The order was cryptic and lacked proper reasoning.
• Despite introducing new prior arts during re-examination, the Controller did not issue a Second Examination Report (SER).

Court’s Analysis and Observations

The Court identified multiple substantive and procedural lapses in the Controller’s approach.

• Lack of Analytical Reasoning on Inventive Step: The Court noted that the impugned order did not provide any analysis of how the prior arts, individually or in combination, rendered the claimed invention obvious. Moreover, the Controller had evaluated only Table 4, ignoring the remaining experimental data provided in Table 1, 2 and 3 that formed the evidentiary foundation of the claimed technical advancement.
• Ignoring Evidence of Synergistic Effect: The Court observed that the Controller overlooked the synergistic effect provided by the invention. The Controller failed to acknowledge the successive increase in disease control effectiveness and a reversal of percentage of gradual decay of the same over time, particularly from the data in Table 2. Importantly, the Court recognised that even a minimal 4-5% increase in therapeutic efficacy could be significant when considered on a larger scale. Such incremental improvement, though numerically small, could translate into substantial benefits in crop protection and resistance management, thereby satisfying the standard of enhanced efficacy. The Court noted that the Controller ought to have considered the experimental data in its entirety and evaluated the therapeutic efficacy of the invention, rather than basing the conclusion solely on numbers.
• Procedural Infirmity and Natural Justice: The Court further held that the failure to issue a SER after the introduction of new prior art references was a serious procedural lapse. Relying on Oyster Point Pharma Inc. v. Controller of Patents [AID No.10 of 2022], the Court reaffirmed that compliance with Section 13(3) is mandatory and essential to preserve the applicant’s right to be heard.

In view of the foregoing, the Court set aside the impugned order and remanded the matter to the Patent Office for fresh consideration.