Over the past years, the Courts have consistently stressed that the Controller of patents must engage with every material contention raised by an applicant (and opponent, where applicable) and must record a speaking order that reflects application of mind, respond to arguments advanced, and demonstrates how each issue has been weighed. The Madras High Court’s recent decision in Rallis India Limited vs Deputy Controller of Patents and Designs [C.M.A.(PT) No. 21 of 2024] serves as yet another reminder of this obligation, highlighting that procedural shortcomings alone may warrant a remand even when the Court is otherwise equipped to decide the appeal on merits.

In this case, the Court expressly noted that it “could have decided” the core issue underlying the appeal. However, “in view of the manner in which other issues were dealt with in the impugned order,” the Court declined to adjudicate the appeal on merits and remanded the matter to the Patent Office for reconsideration.

The appeal challenged the rejection of patent application no. 4135/CHEN/2014, entitled “Stable Herbicidal Composition comprising Pendimethalin and Metribuzin”. The invention disclosed an Emulsifiable Concentrate (EC) pre-mix composition. The Controller had refused the subject application primarily on grounds of anticipation by prior claiming and lack of novelty.

It was the case of the Appellant that the Controller failed to consider the objection they raised in their reply statement and written submissions concerning the cited prior-art document IN 2243/MUM/2014. According to the Appellant, the Controller erred in taking the date of filing of the provisional specification of said document as the relevant date for assessing whether it qualified as prior art for the EC formulation claim. This objection went to the core of the novelty and anticipation analysis.

The Appellant riled on Section 11(2) of the Patents Act, 1970, to contend that the EC formulation disclosed in the complete specification of the cited document was not fairly based on the disclosure made in its provisional specification. The provisional specification, in fact, disclosed only a suspo-emulsion (SE) formulation and expressly described the SE formulation as superior to EC formulations. The Appellant argued that if the date of filing of the provisional application of the said document (July 9, 2014) were to be disregarded, it would not qualify as a prior art, as regards the EC formulation, because the complete specification of the said document was filed on December 30, 2014, whereas the provisional application of the claimed invention was filed earlier on August 25, 2014 (i.e. the priority date).

Notably, Section 11(2) stipulates that priority may be reckoned from the date of filing of the provisional specification provided the claim is fairly based on a matter disclosed in the provisional specification.

The Court examined the records and found that the provisional specification of the cited document indeed disclosed only an SE formulation. The only reference to EC formulations was an isolated comparison under the heading “Advantage of suspo-emulsion in comparison of wettable powder (WP) & emulsifiable concentrate (EC) formulation”.

The Court noted that the impugned order failed to record any finding on this issues despite acknowledging that the Appellant had raised this objection. When the Controller relies heavily on a prior-art document to reject an application, it becomes essential to address preliminary questions that determine whether that document can even be treated as valid prior art. Ignoring such objections vitiates the decision-making process itself.

The Court further observed that several other prior art documents relied upon by the Opponents had also not been considered in the impugned order. This, according to the Court, constituted the primary reason to remand the matter to the Patent Office, rather than deciding the priority date issue itself. The Court thus directed reconsideration by a different officer, with a reasoned and speaking order to be issued.