C.A.(COMM.IPD-PAT) 86/2022 Page 1 of 47

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment reserved on: 16.02.2026

Judgment delivered on: 08.04.2026

+ C.A.(COMM.IPD-PAT) 86/2022

CRYSTAL CROP PROTECTION LIMITED .....Appellant

versus

SUDPITA DEY ASSISTANT CONTROLLER OF PATENTS AND

DESIGNS & ORS. .....Respondents

Advocates who appeared in this case:

For the Appellant : Mr. Priyam Lizmary Cherian and Ms. Shruti Jain,

Advocates

For the Respondents : Ms. Pratima N. Lakra, CGSC with Mr. Shailendra

Kumar Mishra and Mr. Abhishek Sharma,

Advocates for R-1 Mr.Ajay Amitabh Suman and Mr.

Shravan Kumar Bansal, Advocates for R-3

CORAM:

HON'BLE MR. JUSTICE TUSHAR RAO GEDELA

J U D G M E N T

TUSHAR RAO GEDELA , J.

1. Present appeal has been filed under Section 117A of the Patents Act,

1970 (hereinafter referred to as “the Act”) assailing the order dated

11.01.2022 passed by the Assistant Controller (hereinafter referred to as

“learned AC”) of Patents and Designs under Section 25(1) of the Act,

refusing the grant of patent application no.1607/DEL/2010 (hereinafter

referred to as “subject application”).

C.A.(COMM.IPD-PAT) 86/2022 Page 2 of 47

BRIEF FACTS:-

2. The appellant had submitted the Patent Application no. 1607/DEL/2010

in respect of an Insecticidal Composition was filed on 08.07.2010. The First

Examination Report (hereinafter referred to as “FER”) was furnished on

26.05.2017 and the response thereto was submitted by the appellant on

22.09.2017. The appellant had amended its claims vide communication dated

22.11.2019. It is stated that between the years 2017 and 2021, four pre-grant

oppositions were filed against the said application and the appellant had filed

replies thereto.

3. The first hearing notice was issued on 03.09.2021, however, the

appellant sought adjournment, which was granted. Subsequently, the Assistant

Controller heard the arguments on 23.11.2021 before passing the impugned

order on 11.01.2022. It is this order which is challenged before this Court by

way of the present appeal.

4. The appellant claims that the subject application provides a broad

spectrum insecticidal composition for controlling a wide range of insects,

namely: (i) biting and chewing types (Spodoptera, Fruit Borer, Helicoverpa)

and (ii) the sucking types (mites, leaf miners and thrips). The appellant claims

that there does not exist a single insecticidal composition which is effective

against a wide range of insects, which would include the biting and chewing

types as also the sucking types. It claims that different types of insecticides are

used for different varieties of insects, thereby increasing the cost and causing

considerable economic loss.

C.A.(COMM.IPD-PAT) 86/2022 Page 3 of 47

5. The appellant claims that to overcome the limitations in the prior art, a

broad spectrum insecticidal composition was needed and subject application is

one such insecticidal composition. Primarily, the appellant claims the use of

“Fipronil”, which is a member of the Phenyl-Pyrazole Class of pesticides,

which is a systemic and contact insecticide disrupting the central nervous

system by blocking the GABA (gamma-aminobutyric acid) receptor and

glutamate-gated chloride channels (GluCI) and Emamectin Benzoate (EB),

which is a member of the Avermectin Class of pesticides and is a contact

insecticide blocking the neurotransmitter GABA. The composition comprises

Fipronil (F) and Emamectin Benzoate (EB) in specific weight concentrations

namely, 3.5% w/w of F and 1.5% w/w of EB, formulated as a suspension

concentrate (SC) formulation. It is claimed that the combination of F & EB

exhibits an enhanced insecticidal activity at a much lower concentration than

when either of them is used alone, thereby confirming a surprising synergistic

effect. The appellant claims that if a combination of two active ingredients

leads to a synergistic effect which is over and above the additive effect, then

such a synergistic combination is entitled to patent protection as laid down by

this Court in Biomoneta Research Pvt. Ltd. vs. Controller General of

Patents, Designs and Anr., reported in 2023 SCC OnLine Del 1482.

6. The independent claim 1 of the subject application is stated as under:

“1. An insecticidal composition comprising synergistically effective amount of

Fipronil and Emamectin Benzoate, wherein Fipronil weight concentration in

the said composition is 3.5% w/w, Emamectin Benzoate weight concentration

in the said composition is 1.5% w/w, and the said composition is in the form

of a suspension concentrate (SC)”.

C.A.(COMM.IPD-PAT) 86/2022 Page 4 of 47

7. The appellant states that the rejection vide the impugned order is on the

grounds of (a) lack of novelty; (b) lack of inventive step and (c) non-

patentability under Section 3(d) of the Act.

8. Learned counsel appearing for the appellant submits that a perusal of

the impugned order would reflect a clear non-application of mind with regard

to the conclusion of lack of novelty, inasmuch as no reasons or grounds for

reaching such a conclusion have been provided by the learned AC. Equally,

she submits that so far as the conclusion of lack of inventive step is concerned

as well, no reasons whatsoever have been provided as to why the appellant’s

submissions in that regard are not acceptable.

9. She further submits that the conclusion of the invention does not meet

the requirement under Section 3(d) of the Act has been reached without

providing any reasons as to why the activity supplied in the complete

specification is not acceptable. In fact, according to learned counsel, the

impugned order merely reproduces the post-hearing submissions of the pre-

grant opposition in lieu of recording independent findings, which are

mandated to be provided by the learned AC, who functions as a quasi-judicial

authority. Learned counsel submitted that the mere observations that the

“arguments regarding the instant composition as a suspension concentrate is

not convincing”, cannot be construed as a proper application of mind by the

learned AC. On that short ground, Mr. Priyam Lizmary Cherian, learned

counsel would contend that the impugned order be quashed and the appeal be

allowed by remitting the subject application back to the learned AC for de

novo consideration of the entire claims.

C.A.(COMM.IPD-PAT) 86/2022 Page 5 of 47

10. In support of the above, learned counsel had advanced the following

submissions, which are reproduced in a tabulated form for the sake of clarity

and convenience:

“Prior Arts for Rejection on Grounds of Lack of Novelty and Inventive Step

Prior Art Discussion in the Impugned Order Principles of Patent law

ignored by the

Impugned Order

Title:

“A Composite

Fipronil Insecticide”

(Relied on By

Respondent No. 2,3,4

and 5 in Pre grant

and Respondent No.

1 in Refusal order)

Disclosure of CN1969627 (CN‟627):

CN‟627 discloses an insecticide

comprising 3.5% Fipronil and 1.5% of

Emamectin benzoate (Please see

embodiment 5 on page 19 of CN‟627).

CN‟627 also discloses that an

insecticide composition can be

formulated as suspension. In particular,

CN‟627 discloses in claim 8 an

insecticide composition in the form of

suspension.

CN‟627 also discloses a formulation

comprising Fipronil and Emamectin

benzoate along with one or more

adjuvants, including wetting agent

(Please see claim 2),

dispersant/dispersion agent (Please see

claim 2), emulsifying agent (Please see

claim 5), solvent (Please see claim 5).

The amount of adjuvants is the same as

that claimed in claim 4 of the impugned

application. (Please see claims of

CN‟627).

CN‟627 also teaches that the said

insecticide composition can be used for

controlling rice borer, plant hopper,

diamondback moth, beet armyworm,

cigarette beetle and cotton bollworm

(Please see abstract and claim 1 of

CN‟627)

The Ld. Controller has

failed to deal with the

Appellant‟s arguments

that:

1. The specific

combination of 3.5%

w/w Fipronil (F) + 1.5%

w/w Emamectin

Benzoate (EB) in SC

formulation without a

synergist, as the present

invention, is not

disclosed in any claims

of CN‟627.

2. Claim 1 only discloses

a range of 0.5-15% F,

0.1-10% EB and other

auxiliary

agents formulated as

miscible oil, wetting

powder, suspending

agent, or microemulsion.

It does not disclose the

specific selection from

the range, and it does

not disclose any

formulation as a SC.

Hence, generic

disclosure in the prior

art may not necessarily

take away the novelty of

C.A.(COMM.IPD-PAT) 86/2022 Page 6 of 47

Embodiment 5 of CN‟627:

5% Fipronil and Emamectin Benzoate

miscible oil (by weight):

present set of claims of the impugned

application; and not relevant for

Novelty. However, the office finds that,

the composition of 3.5% w/w Fipronil

and 1.5% w/w Emamectin Benzoate as

claimed in the claims 1 to 4 of the

impugned application are being

anticipated by the disclosure of any one

of the CN‟627 or CN‟546.

Therefore, the Novelty for the claims 1

to 4 of the impugned application has

not been acknowledged vis-à-vis

disclosure of CN‟627 or CN‟546.

the specific disclosure.

3. Embodiment 5 is an

EC formulation and not

SC, as claimed. EC and

SC cannot be treated

interchangeably. They

are completely different

chemical formulations

having different

properties such as (i)

different size of active

ingredients, (ii) SC is

water based thus more

environment friendly

over EC which is an

emulsifiable oil,

(iii), their interaction

with soil therefore

differs and they have

different environmental

effects accordingly.

4. Further, Embodiment

5 necessarily comprises

a synergistic agent

which is absent in the

claimed invention. Even,

all the remaining other

Embodiments, i.e. 1-4

and 6-12 comprise the

combination of F and

EB along with a

synergistic agent

(necessarily) and in a

different formulation

types other than SC

formulation, as claimed

in the present invention.

Thus, the claimed

invention cannot be hit

by novelty in light of

CN‟627. Hence, CN‟627

C.A.(COMM.IPD-PAT) 86/2022 Page 7 of 47

clearly teaches away

from the claimed

invention.

The Ld. Controller has

erred in relying on

CN‟627 for both -

novelty and for inventive

step. The same prior art

cannot render an

invention as lacking

novelty (when tested on

a standalone basis) and

also lacking inventive

step (when it is

combined with other

prior arts). Without

Prejudice:

5. As synergistic agent is

an essential component

of CN‟627, CN‟627

actually teaches away

from engaging in

experiment without a

synergistic agent. Lack

of synergistic agent is an

essential component of

claimed invention.

6. There is nothing in

CN‟627 which teaches,

suggests or motivates a

person to experiment a

combination of F+EB

without a synergist.

7. There is also no

teaching for SC, let

alone preference for SC

in CN‟627. There is no

reason why a person

skilled in the art would

attempt a SC based on

reading of CN ‟627

C.A.(COMM.IPD-PAT) 86/2022 Page 8 of 47

either alone or in any

combination/ mosaic

with other prior art(s) or

common general

knowledge of the field.

8. Further, for an

invention to lack novelty,

a single prior art must

anticipate all the

features of the invention,

but the CN‟627 does not

have all the features as

claimed in the present

invention. Hence, the Ld.

Controller has erred in

relying of CN‟627 for

novelty.

CN‟546

Title: “A kind of

pesticide mixture of

emamectin benzoate

andfipronil” (Relied

on

by Respondent No.

2,3,4

and 5 in Pre grant

and Respondent No.

1 in Refusal order

Disclosure of CN101019546 (CN‟546):

Example 5 of CN‟546 is describing the

active ingredients Emamectin Benzoate

(1.5%) and Fipronil (3.5%), which is

exactly the composition claimed by the

subject matter of the present impugned

application.

Further, paragraph 6, page 4 of

CN‟546 distinctly states that the

composition can be formulated either

as emulsifiable oils, microemulsions

and aqueous emulsions.

present set of claims of the impugned

application; and not relevant for

Novelty. However, the office finds that,

the composition of 3.5% w/w Fipronil

and 1.5% w/w Emamectin Benzoate as

claimed in the claims 1 to 4 of the

impugned application are being

anticipated by the disclosure of any one

of the CN‟627 or CN‟546.

The Ld. Controller has

failed to deal with the

Appellant‟s arguments

that:

1. The specific

combination of 3.5%

w/w F + 1.5% w/w EB

in SC formulation

without a synergist, as

the present invention, is

not disclosed in an claim

of CN‟546.

2. Claim 1 (Pg. 522 of

Appeal paperbook) only

discloses a range of 0.2-10% F, 0.1-10% EB and

other functional

aid/adjuvants, organic

solvent or carrier.

Hence, generic

disclosure in the prior

art may not necessarily

take away the

C.A.(COMM.IPD-PAT) 86/2022 Page 9 of 47

Therefore, the Novelty for the claims 1

to 4 of the impugned application has

not been acknowledged vis-à-vis

disclosure of CN‟627 or CN‟546.

novelty of the specific

disclosure. Further,

organic solvent is an EC

formulation, in contrast

to the SC formulation, as

in the present invention.

3. Although Example 5

(Pg. 525 of Appeal

paperbook) teaches F as

3.5% and EB as 1.5%

but only as a

combination with

organic solvent in an

emulsion oil that is a EC

formulation whereas the

present invention is in

SC formulation.

4. Further, Table at

page 525 of appeal

paperbook discloses a

combination of F and

EB applied as

emulsifiable oil at very

higher dosage of 20g/mu

(21.4g/acre) than in the

claimed invention at

10g/acre. Thus, clearly

the claimed invention

cannot be hit by novelty

in light of teachings in

CN‟546.

Similarly, the Ld.

Controller has erred in

relying on CN‟546 for

both - novelty and for

inventive step. The same

prior art cannot render

an invention as lacking

novelty (when tested on

a standalone basis) and

also lacking inventive

C.A.(COMM.IPD-PAT) 86/2022 Page 10 of 47

step (when it is

combined with other

prior arts). Without

Prejudice:

1. CN‟546 does not

teach, suggest or

motivate the person

skilled in the art about

the synergist, hence

teaches away.

2. The present claimed

invention does not

comprise an organic

solvent as present in

CN‟546, hence teaching

away. There is no

reason in CN‟546 to

make/prefer SC over

emulsion oils.

3. Moreover, for an

invention to lack novelty,

it must be fully disclosed

and present in its

entirety within a single

prior art reference,

accompanied by

adequate information. In

this context, CN‟546

fails to invalidate the

present invention on

novelty grounds, as it

does not fulfil this

criterion.

CN‟037

Title:

“Compound

insecticides

for controlling rice

Insects" (Relied on by

Respondent No. 4

and 5

Disclosure of CN1911037 (CN‟037):

CN‟037 discloses a composite

insecticide for controlling rice pests

comprising combination of Fipronil and

Emamectin Benzoate, wherein the mass

ratio of Fipronil to Emamectin

Benzoate is 0.25-10 : 0.01-5 (see,

Principles of Patent law

ignored by the Impugned

Order

The Ld. Controller has

failed to deal with the

Appellant‟s arguments

that:

C.A.(COMM.IPD-PAT) 86/2022 Page 11 of 47

in Pre grant and

Respondent No. 1 in

refusal order)

CN‟037, claims 5 and 6; and page 4,

last two paragraphs and page 5, 1st

paragraph).

In addition, CN‟037 explicitly discloses

examples of Fipronil-Emamectin

Benzoate suspension concentrate (SC)

formulations (see, CN‟037, Page 9).

Further, CN‟037 also demonstrates

existence of synergism between Fipronil

and Emamectin Benzoate (see, CN‟037,

Page 5, 5th paragraph; and Page 11,

under „Field control experiment‟).

With regards to CN‟037, discloses an

insecticide composition for the control

of rice insects comprising Fipronil and

Emamectin benzoate, wherein the mass

ratio of Fipronil to Emamectin

benzoate is in the range of 0.25 to 10:

0.01 to 5 (covering the wt% of Fipronil

(3.5%) and Emamectin benzoate (1.5%)

as claimed in claim 1 of the impugned

application) formulated into suspension

formulation. Hence, the claims of the

present impugned application (claims

1–4) are obvious in view of the

teachings of the document CN‟037

either singly or when taken in

combination with either of documents

CN‟546, CN‟627 or CN‟055.

From the disclosure of CN‟160

[suspension concentrate (see page 4,

lines 19–21) pesticidal composition

comprises 5% Fipronil with 1%

Emamectin benzoate; 3% Fipronil with

0.2% Emamectin Benzoate and 4%

Fipronil along with 0.5% Emamectin

benzoate (See example 1)]; and CN‟037

[suspension concentrate (see, CN‟037,

Page 9) pesticidal composition

1. The specific

combination of 3.5%

w/w F + 1.5% w/w EB

in SC formulation

without a synergist, as in

the present invention, is

not disclosed in any

claims of CN‟037 except

for a broad range.

Hence, disclosure of a

broad range in the prior

art will not by itself it

renders as obvious.

2. The exemplified

formulation of CN‟037

as in the order at

example 2 at page 536-

537 of appeal paperbook

discloses a combination

of F and EB in a

suspending agent

formulation, but in

different concentrations,

as claimed in the present

invention.

No teaching/motivation

to deviate from the

particular exemplified

concentration of F and

EB, let alone arrive at

the specific

concentrations claimed

in present invention.

3. Further, the „Field

Control experiment‟ in

CN‟037 teaches away

the person skilled in the

art from the present

invention with

combination of F and

EB by teaching that the

C.A.(COMM.IPD-PAT) 86/2022 Page 12 of 47

comprises 0.25 or 10 wt% Fipronil with

0.01 or 5 wt% Emamectin benzoate], it

is obvious for a person skilled in the art

to arrive at the teachings of the present

impugned invention without exercising

any inventive activity. Accordingly, all

the claims (claims 1–4) of the present

impugned application are obvious in

view of the teachings of the document

CN‟160 and/or CN‟037 either singly or

when taken in combination with

common general knowledge; or when

taken in combination with the

disclosure of CN‟627 and/or CN‟546.

combination of fipronil

and chlorpyrifos is more

effective in control of

rice leaf roller borer

over the combination of

F and EB. Further, the

combination of fipronil

+ chlorpyrifos is more

effective in control of

rice stem borer over the

combination of F and

EB. (Pg 539 of appeal

paperbook)

The Ld. Controller is

erred in relying on

CN‟037 for inventive

step as he has not

disclosed the specific

portion of the prior art

that as per the order that

teaches, suggests or

motivates the person

skilled in the art to

arrive at the claimed

invention. Rather,

CN‟037 clearly teaches

away from the claimed

invention. The Ld.

Controller has erred in

ignoring the settled

principle of law that if a

prior art teaches away,

rather than towards the

claimed invention is not

even a relevant prior art

for inventive step.

ADDITIONAL PRIOR ARTS FOR REJECTION ON GROUND OF LACK OF

INVENTIVE STEP ALONE

CN‟055

“Title: A kind

Disclosure of CN101066055A

(CN‟055)

The Ld. Controller has

failed to deal with the

C.A.(COMM.IPD-PAT) 86/2022 Page 13 of 47

of pesticide

composition

containing

emamectin

benzoate”

The Ld. Controller

has failed to deal

with the Appellant‟s

arguments that:

1. The specific

combination of 3.5%

w/w F + 1.5% w/w

EB in SC formulation

without a synergist,

as in the present

invention, is not

disclosed in any

claims

of CN‟055, rather

CN‟055 is completely

contrary in teaching

the presence of a

synergistic agent as

an essential

component in the

following disclosure:

a. Claim 1: EB (0.1 - 5%) + Compound B

(0.2% - 30%) +

Synergist- 0.1-5%

+ Emulsifying Agent-

(5-20%) +Solvent-

(45-90%) (Pg. 546 of

Appeal

paperbook)

CN‟055 discloses Emamectin Benzoate-

0.1 to 5% with any combination of

either Fipronil, chlorfenapyr and

diafenthiuron in any proportion.

CN‟055 discloses a pesticidal

composition containing 0.2% - 30%

Fipronil and 0.1%-5% Emamectin

Benzoate (See claim 1 of CN‟055). In

example 5, Emamectin Benzoate is

specifically mentioned to be 0.5% along

with Fipronil-5% along with adjuvants.

(See claims 1-5 of CN‟055). The

adjuvants disclosed in CN‟055 include

emulsifying agents, solvents and

synergist (See claim 1 – 5 of CN‟055).

Further, CN‟055 discloses that the

amount of adjuvants is about 50% to

95% w/w (see claim 1 of CN‟055,

composition 1 and 2 mentioned under

Table 2, on page 9). Table 2 on page 9

of CN‟055 showed the efficacy test

results of the composition which is a

mixture of Emamectin Benzoate (0.5%)

and Fipronil (5%), wherein the tests

indicated the control efficiency of

98.62%.

Similarly, from the disclosure of

CN‟055 & CN‟970, a person skilled in

the art would not face any difficulty

whatsoever and would not be required

to have any ingenuity to apply the

teachings of

cited documents CN‟055 and/or

CN‟970 to arrive at the present

invention. Moreover, the claims of the

present impugned application (claims

1-4) are obvious in view of the

teachings of the document CN‟970

Appellant‟s arguments

that:

1. The specific

combination of 3.5%

w/w F + 1.5% w/w EB

in SC formulation

without a synergist, as in

the present invention, is

not disclosed in any

claims of CN‟055, rather

CN‟055 is completely

contrary in teaching the

presence of a synergistic

agent as an essential

component in the

following disclosure:

a. Claim 1: EB (0.1 - 5%) + Compound B

(0.2% - 30%) +

Synergist- 0.1-5% +

Emulsifying Agent- (5-

20%) +Solvent- (45-

90%) (Pg. 546 of Appeal

paperbook) 7

(Relied on by

Respondent No. 2 and 3

in Pre grant And

Respondent No. 1 in

refusal order)

b. Example 5- F (5%) +

EB (0.5%) + Synergist

(4%) + Emulsifying

Agent

(15%) [Adjuvant] as EC

(Pg. 556 of Appeal

paperbook)

2. All the remaining

other Examples, i.e. 1-4

and 6 comprise the

combination of EB with

other active ingredient,

C.A.(COMM.IPD-PAT) 86/2022 Page 14 of 47

either singly or when taken in

combination with either of documents

CN‟546, CN‟627 or CN‟055 or

common general knowledge.

but not F+EB and also

present in a different

formulation type than

SC formulation, as

claimed in the present

invention.

Hence, CN‟627 clearly

teaches away from the

claimed invention.

3. Hence, it has not been

explained in the Order

as to why a person

skilled in the art would

consider synergist as an

optional element when

CN‟055 teaches away

from this. It is trite that

while mosaicking the

prior art with the

claimed invention, there

must be a coherent

thread leading from the

prior art to the claimed

invention where tracing

the thread must be an

act which follows

obviously, that was not

the case present here.

4. Further, formulation

type EC as claimed in

CN‟055 is different than

the SC type

claimed in the present

invention, hence teaches

away.

CN‟160

Title:

"Synergistic

Pesticidal

Composition” (Relied

on by Respondent No.

Disclosure of CN1579160 (CN‟160):

CN‟160 discloses a synergistical

pesticide composition comprising

Fipronil and Emamectin Benzoate in

the weight ratio of Fipronil and

The Ld. Controller has

failed to deal with the

Appellant‟s arguments

that:

1. The specific

combination of 3.5%

C.A.(COMM.IPD-PAT) 86/2022 Page 15 of 47

2 in pre grant and

Respondent No. 1 in

refusal order)

Emamectin Benzoate is 1–50:1. (See

claim 2 of CN „160). Specific examples

are taught in CN‟160, wherein the

pesticidal composition comprises 5%

Fipronil with 1% Emamectin benzoate;

3% Fipronil with 0.2% Emamectin

Benzoate and 4% Fipronil along with

0.5% Emamectin benzoate (See

example 1). It is evident that the active

ingredients Fipronil and Emamectin

benzoate and their amount are

disclosed in CN‟160.

CN‟160 also discloses that an

insecticide composition can be

formulated as suspension (Please see

abstract and claim 4 of CN‟160). In

particular, CN‟160 discloses the

method of preparation of the insecticide

composition in the form of suspension

(Please see page 4, lines 19–21 of

CN‟160).

CN‟160 discloses the use of one or

more adjuvants in formulation

comprising Fipronil and Emamectin

Benzoate (See claims of CN‟160).

CN‟160 discloses a long list of

adjuvants, including wetting agent (see

claim 2), dispersant/dispersing agent

(see claim 2), emulsifying agent (see

claim 5), solvent (see claim 5). The

amount of adjuvants is the same as that

claimed in claim 4 of the impugned

application (See claims of CN‟160).

CN‟160 discloses that the said

insecticidal composition can be used

for preventing and treating various

forest pests, such as rice stem borers,

plant hoppers and vegetable aphids

w/w F + 1.5% w/w EB

in SC formulation

without a synergist, as in

the present invention, is

not disclosed in any

claims or examples of

CN‟160.

2. Claims 1 and 2 (page

541 of Appeal

Paperbook) disclose a

combination of F +

active ingredient B [B

being EB (Abstract)] in

the preferrable range, 1-

30:1, in contrast to the

ratio of F and EB as

claimed in the present

invention, i.e., 2.33:1.

3. Further, the table

(Exploit Example 2 at

page 544 of Appeal

paperbook) in CN‟160

discloses the ratio of F

to EB showing the most

effective control is at

1:1 contrary to the

preferred ratio of 2.33:1

as in claimed invention.

The CN‟160 does not in

any way teach, motivate

or suggest the person

skilled in the art to

particularly arrive at the

invention as claimed

herein and rather the

disclosure therein

teaches away.

C.A.(COMM.IPD-PAT) 86/2022 Page 16 of 47

(Please see abstract and claim 5 of

CN‟160).

CN‟970

Title:

“Fipronil insecticidal

composition” (Relied

on by Respondent No.

3 and 4 in Pre grant

and Respondent No.

1 in refusal order)

Disclosure of CN101151970A

(CN‟970)

CN‟970 discloses insecticidal

composition containing Fipronil and

Emamectin or its derivative Emamectin

Benzoate as active ingredients in a

weight ratio of 1:10 to 10:1 between the

active ingredients (See abstract of

CN‟970), along with adjuvants (page 4

of CN‟970). Paragraph 4 describes the

various suitable dosage forms, eg.

Wettable powder, water soluble

powder, water-dispersible granule, pill,

tablet, paste, aqueous suspension,

emulsion etc. Paragraph 6 describes

suitable adjuvants used in the claimed

formulation. Example 2 and Example 3

of CN‟970 which specifically discloses

2% Emamectin Benzoate and Fipronil

microemulsion formulation (Fipronil-

1% and Emamectin Benzoate-1%) and

3.3% Emamectin Benzoate and Fipronil

microemulsion formulation (Fipronil-

0.3% and Emamectin Benzoate-3%)

respectively. Control efficiency of these

example 2 and example 3 preparations

of CN‟970 were found to be 94.16%

and 94.13% respectively (See page 5/7,

example 8), which is beyond what is

claimed in the present impugned

application.

Similarly, from the disclosure of

CN‟055 & CN‟970, a person skilled in

the art would not face any difficulty

whatsoever and would not be required

to have any ingenuity to apply the

The Ld. Controller has

failed to deal with the

Appellant‟s arguments

that:

1. The specific

combination of 3.5%

w/w F + 1.5% w/w EB

in SC formulation

without a synergist, as in

the present invention, is

not disclosed in any

claims or examples of

CN‟160 rather none of

the Examples 1-3 of

CN‟970 disclose F+EB

in the claimed SC

formulation. Hence,

there is no teaching in

CN‟970 to arrive at the

presently claimed

concentrations.

2. Claim 2 (page 559 of

Appeal Paperbook)

discloses F (1:10) + EB

(10:1) but in broad

ranges. Hence,

disclosure of a broad

range in the prior art

will not by itself render

it as obvious.

3. Further, the CN‟970

teaches away by noting

that the combination of

fipronil +

avermectin is more

efficacious than the

combination of F+EB

(Pg. 566 of

Appeal paperbook)

C.A.(COMM.IPD-PAT) 86/2022 Page 17 of 47

teachings of…

cited documents CN‟055 and/or

CN‟970 to arrive at the present

invention. Moreover, the claims of the

present impugned application (claims

1–4) are obvious in view of the

teachings of the document CN‟970

either singly or when taken in

combination with either of documents

CN‟546, CN‟627 or CN‟055 or

common general knowledge.

The office further finds that,

formulation of a composition into a

suspension form is a standard practice,

practiced routinely by a person skilled

in the art, and hence, formulating a

composition into a suspension form,

using the method very well-known

conventionally, forms part of the

common general knowledge to the

skilled person. There is thus nothing

surprising or inventive about choosing

to formulate a composition as a

suspension/suspension concentrate

form as claimed. The skilled person

would therefore combine the teaching

of cited prior arts and will definitely

prepare a suspension concentrate

formulation of the pesticide

composition (comprising 3.5 wt%

Fipronil, 1.5 wt% Emamectin

Benzoate). Therefore, the argument of

the Applicant is meritless and the

subject matter of claims 1–4 of the

impugned application is obvious to a

person skilled in art.

The Ld. Controller has

considered “Suspension

Concentrate” (SC) as a

stand-alone feature of

the invention as a whole

and, for the purposes of

inventive step, has

wrongly opined that

formulating a SC forms

part of the common

general knowledge.

While admittedly SC as

a formulation type is

known, the prior arts do

not provide any

preference for the same

or teaches functional

equivalence, let alone in

the context of the

presently claimed

invention as a whole.

The Ld. Controller has

also wrongly held that

formulating a SC

formulation is “nothing

surprising or inventive.”

In fact, the present

invention does not claim

that formulating the

combination of actives

as SC is the surprising

or inventive aspect of the

invention. The Ld.

Controller has also

wrongly held that

inventive step requires a

“surprising” result,

which is contrary to the

provisions of Section

2(1)(ja) of the Patents

C.A.(COMM.IPD-PAT) 86/2022 Page 18 of 47

Act. Considering the

teachings of the

aforementioned prior

art, it is evident that

none of the cited prior

art documents establish

the preference of

formulation of a

composition in a

suspension form as a

standard practice.

Furthermore, the Ld.

Controller has not

substantiated this

assertion with any

additional prior art

evidence. The claimed

invention unmistakably

demonstrates a

technological

advancement when

compared to the cited

prior art

documents and thus

ought to have granted

patent protection.

The Ld. Controller has

only broadly mentioned

the prior art Allan

Knowles to rely for

covering conventional

and advanced

formulation type

including suspension

concentrate formulation

(Page 625 of Appeal

paperbook) in one of the

headings of the said

prior art. However, they

didn‟t emphasize that SC

formulation is preferred

C.A.(COMM.IPD-PAT) 86/2022 Page 19 of 47

or considered a

standard practice

compared to other

formulation types.

Moreover, the Ld.

Controller has not

specifically extracted the

relevant portions of the

said prior art to support

the reason. Surprisingly,

the final conclusion on

the lack of inventive step

didn‟t even acknowledge

this said prior art.

Further, the mosaicking

of prior arts must

collectively teach,

suggest or motivate a

person skilled in the art

to arrive at the claimed

invention as a whole.

However, in this

instance, each prior art

is predominantly

teaching away from the

claimed invention,

thereby losing its

relevance as a prior art.

Hence, the claimed

invention cannot be

deemed obvious to a

person skilled in the art

11. Apart from the above, learned counsel submits that the learned AC has

considered suspension concentrate (SC) as a standalone feature of the

invention and appears to have wrongly opined that formulating an SC forms

part of the general knowledge. She further submitted that such an approach

reflects a mischaracterisation of the invention, inasmuch as it isolates one

C.A.(COMM.IPD-PAT) 86/2022 Page 20 of 47

feature without appreciating the invention as a whole. She would contend that

while SC as a formulation type is known, however, none of the prior arts

provide any preference for the same or teach functional equivalence. The

conclusion by the learned AC that the SC formulation is “nothing surprising

or inventive” is itself erroneous, as the present invention does not claim that

formulating the combination of actives as SC is the only surprising or

inventive aspect of the invention, whereas the synergistic effect also is an

inventive aspect of the invention. She further submits that the impugned order,

therefore, fails to consider the invention in its entirety, including the

synergistic interaction between the components.

12. In regard to the objection sustained by the learned AC under Section

3(d) of the Act, learned counsel submitted that this objection was not raised in

the FER. It is contended that raising a fresh ground at a belated stage, without

prior notice in the FER, is contrary to the principles of natural justice. It is

submitted by her that only respondent no.3 had made a bald allegation with

regard to Section 3(d) of the Act in its representation, which was duly clarified

by the appellant by providing a clear explanation. Moreover, during the

hearing, respondent no.3 did not urge this ground, thereby effectively

conceding the issue. So far as respondent no.5 is concerned, no such objection

regarding Section 3(d) of the Act was raised at all, nor was it agitated during

the submission, only in the post-hearing submission it was noted that the

subject application failed to prove that the SC formulation of the composition

exhibits improved efficacy.

C.A.(COMM.IPD-PAT) 86/2022 Page 21 of 47

13. In the aforesaid context, the learned AC is stated to have arbitrarily

noted that the suspension concentrate form of 3.5% w/w Fipronil (F) and 1.5%

w/w Emamectin Benzoate (EB) is not allowable under Section 3(d) of the Act,

in view of the disclosure of the cited prior arts and that the prior arts disclose

either Emulsion Concentrate (EC) and/or SC, and the effectiveness of SC over

the other is also comparable to the cited efficacy. Learned counsel would

contend that, in terms of the settled law, the objection under Section 3(d) of

the Act, in order to be sustainable and valid, has to be raised in the very first

instance, i.e. the FER. Moreover, a specific known substance has to be first

identified and it must be shown how the known efficacy of that known

substance is the same as that of the latter claimed new-formed invention. It

was further submitted that in the absence of such identification and

comparative analysis, the invocation of Section 3(d) of the Act cannot be

sustained. She stoutly contended that this legal aspect was not addressed by

the learned AC, rendering the impugned order unsubstantiated. Accordingly, it

is contended that the finding under Section 3(d) suffers from lack of reasoning

and is liable to be set aside.

CONTENTIONS OF RESPONDENT NO.3:

14. Per contra, Mr. Amitabh Suman, learned counsel for the respondent

no.3, opposed the arguments addressed on behalf of the appellant. He

submitted that the impugned order does not suffer from any infirmity

warranting interference by this Court. He specifically refuted the stand that

AC has merely reproduced, by way of copy-pasting, the representations filed

in the pre-grant opposition stage by the respondents in the impugned order,

C.A.(COMM.IPD-PAT) 86/2022 Page 22 of 47

which allegedly do not contain any independent application of mind or

analysis by the learned AC. According to him, mere similarity of reasoning

with the submissions of a party does not ipso facto establish non-application

of mind. He would contend that the grounds of lack of novelty, lack of

inventive step and non-patentability under Section 3(d) of the Act have been

examined threadbare by the learned AC by referring to each and every prior

art in respect of each of the objections, and that due application of mind is

apparent from a plain reading of the impugned order. It is thus contended that

the order qualifies as a reasoned determination passed in exercise of quasi-

judicial powers.

15. The learned counsel for the respondent no.3 submitted that the

impugned patent application lacks novelty and is anticipated in view of the

disclosure made in prior art CN1969627. He submits that the said prior art

constitutes a clear and enabling disclosure of the claimed composition. He has

cited pages, 497-520, specifically, 498, 500, 515, and claims 1, 5 and 8 of the

prior art CN1969627. As per the learned counsel, Fipronil 3.5% and

Emamectin Benzoate 1.5% is disclosed under the Embodiment 5 of the

detailed specification of the said prior art. On this basis, he submitted that the

essential features of the claimed invention stand disclosed in the prior art.

16. The learned counsel for the respondent no. 3 submitted that in view of

the disclosure made in CN'627, the subject application lacks novelty and is

barred under section (25) (1) (b) of the Act. He further submitted that the

statutory bar under Section 25(1)(b) of the Act squarely applies in the facts of

the present case.

C.A.(COMM.IPD-PAT) 86/2022 Page 23 of 47

17. While citing the prior art CN101019546, the learned counsel for the

respondent no.3 submitted that under Example 5 of the Complete

Specification (CS) at page 525 of the prior art, Fipronil and Emamectin

Benzoate at 3.5% and 1.5% respectively are disclosed. Further, citing page

521 of the said prior art, the learned counsel for the respondent no. 3

contended that the said prior art also discusses that the composition of the

claimed invention can be prepared as EC, EW, and Suspending agent, etc.

Thus, according to him, the form of formulation claimed by the appellant is

also within the contemplation of the prior art. Citing the same prior art, the

learned counsel for respondent no. 3 further submitted that claim 1 of the said

prior art claims a kind of pesticide mixture of Emamectin Benzoate and

Fipronil. The respondent also contended that as per pages 524 and 525 of the

CS of the said document, adjuvants and organic solvents are disclosed.

Further, citing page 528 of CN’546, the respondent submitted that the said

document discloses the synergism of the composition claimed under the said

prior art. It is therefore contended that even the alleged synergistic effect is not

novel. Further, citing example 5 of the cited document, the respondent submits

that since it shows best co-toxicity efficient of the two active compounds, it

teaches towards the present invention of the subject application.

18. Learned counsel for the respondent no.3, referred to the written

submissions on its behalf and while relying on the Manual of Patent Office

Practice and Procedure, 2019, submitted that since the prior art is read

through the eyes of a person skilled in the art, there is implicit disclosure of

the present invention in the cited documents.

C.A.(COMM.IPD-PAT) 86/2022 Page 24 of 47

19. The counsel for the respondent submitted that the cumulative reading of

these cited prior arts renders the claimed invention obvious.

20. While citing the prior art CNI969627, the counsel for the respondent

submitted that at page 500, Example 8 uses 10 -75% of water as a solvent. The

counsel also cited the claim 1 of the said document. Thus, according to him,

demonstrates that aqueous formulations were already known.

21. The second document relied on by the counsel for the respondent is

CN101019546. Citing Example 7 (Pg.525) of this document, the respondent

submitted that Fipronil 3.5% and Emamectin Benzoate 1.5 % by weight is

disclosed. As per the respondent, at page 524, the said document discloses

adjuvants and organic solvents up to 100%.

22. The counsel for the respondent also cited document CN1579160 and

contended that at page 544, the examples in the table discloses reagent +

Emamectin Benzoate, where the reagent is the structure of Fipronil. Under the

abstract, it also discloses Suspending Agents and EC.

23. As per the written submission of the respondent, CN101066055, at page

546, discloses the active ingredient Fipronil (02. to 5%) and Emamectin

Benzoate (01. to 5%). Further, the respondent also relied on the abstract of the

said cited document. It is contended that the claim ranges fall within the

disclosed ranges of the prior art.

24. The next document relied on by the respondent to support the objections

under Section (25)(1)(e) of the Act is CN101151970. The counsel for the

respondent submitted that at page 556, the said document discloses 5%

C.A.(COMM.IPD-PAT) 86/2022 Page 25 of 47

Fipronil and 0.5 % Emamectin Benzoate. The responder also argued that the

said document also discloses emulsifier, wetting agent and disintegrator.

25. The counsel for the respondent submits that the present invention under

claim 1 specifies that said composition is in the form of a suspension

concentrate (SC), which is already disclosed in the prior arts. He submits that

the selection of SC as a formulation does not involve any inventive step. The

respondent has relied on claims 1 and 8 of CN1969627, Examples A, B, C and

D of CN1911037, at page 536 and Annexure A-35 (page 567-700) of prior art

“Alan Knowles”. Citing these documents, the respondent argues that a person

skilled in the art would be aware of the advantages of using a water-based

suspension concentrate (SC) in place of an Emulsifying Concentrate.

26. The counsel for the respondent submitted that the present invention

under claims 2 and 3 claims that the formulation may comprise one or more

adjuvants and that adjuvants may include a solvent, an emulsifying agent, a

dispersant, a wetting agent, and a foaming agent. The use of adjuvants is

disclosed in claims 2 and 5 of CN1969627, page 524 of CN101019546, page

540 of CN 1579160, the abstract of CN 101066055 and page 56 of

CN101151970. It is contended that the use of such adjuvants forms part of

routine formulation practice.

27. As to the contention of the appellant that the impugned order is

suggestive of copy-pasting the submissions of the respondent by the learned

AC, and non-application of mind is apparent, he would submit that there is no

bar to the adjudicating authority agreeing with the contentions of one of the

parties and expressing the same. He submits that concurrence with a party’s

C.A.(COMM.IPD-PAT) 86/2022 Page 26 of 47

reasoning does not vitiate an order, provided independent satisfaction is

discernible. He would further submit that even if such portions of the

impugned order are eschewed from consideration, though without admitting to

the same, if the patent lacks any one of the aspects, i.e., lack of novelty or lack

of inventive step, or is barred under the provisions of Section 3 of the Act,

such an order is sustainable in law. He submits that the impugned order is

independently sustainable on merits. Thus, according to him, there is no

substance in such a contention.

28. In the overall conspectus, learned counsel would forcefully contend that

in view of the clear findings recorded in the impugned order regarding lack of

inventive step and obviousness, coupled with prohibition under section 3 (d)

of the Act, the present appeal be dismissed as being devoid of merit.

ANALYSIS AND CONCLUSION :

29. Having heard Mr. Priyam Lizmary Cherian, learned counsel for the

appellant and Mr. Suman, learned counsel for respondent no.3, and having

perused the pleadings and examined the documents on record, the following

order is passed. For the sake of clarity and structured adjudication, the issues

are analysed in a topic-wise manner as set out hereinafter.

THE INVENTION

30. The present invention is titled as “INSECTICIDAL COMPOSITION”

and pertains to an insecticidal formulation comprising a synergistically

effective amount of active ingredient Fipronil and Emamectin Benzoate,

wherein the said composition is claimed to exhibit excellent insecticidal

efficacy. The invention is stated to provide effective control over a wide

C.A.(COMM.IPD-PAT) 86/2022 Page 27 of 47

spectrum of agricultural pests. The “Field of the Invention” given under the

Complete Specification (CS) of the subject application is reproduced

hereunder:

“The present invention relates to an insecticidal composition

comprising synergistically effective amount of a first active

ingredient Fipronil and a second active ingredient Emamectin

benzoate, wherein the composition exhibits excellent insecticidal

properties and is capable of controlling major insects/pests in

agricultural crops. More particularly, the present invention relates

to a broad spectrum neurotoxic insecticidal composition with

contact, systemic and trans-laminar activity. The composition is

highly effective in low doses and is also environment friendly.”

Problem claimed to have been solved by the present invention

31. According to the appellant, existing insecticidal compositions do not

effectively address piercing and sucking insects as well as biting and chewing

insects in a single formulation. It was further contended that such conventional

formulations are often associated with high cost per unit dosage, thereby

limiting their commercial viability.

32. It has also been asserted that there are few petrochemical-based

materials which can be safely absorbed into the environment and that the

availability of environment-friendly and bio-degradable compositions is very

low. Therefore, it is desired to have an insecticidal composition that is active

against a wide range of insects, that is, a composition with contact/systemic as

well as trans-laminar activity against these insects. Additionally, the claim

also considers the problem of washing-out of sprayed insecticides due to

rain/irrigation. Hence, the need for a broad-spectrum insecticidal composition

C.A.(COMM.IPD-PAT) 86/2022 Page 28 of 47

which is capable of controlling major insects/pests in various agricultural

crops and of overcoming problems associated with the prior art is established.

33. As per the Summary of the Invention, the present invention seeks to

provide an efficacious solution for controlling a wide range of agricultural

pests through a combination of Fipronil and Emamectin Benzoate. A key

feature of the present invention is the alleged synergistic interaction between

the two active ingredients, resulting in enhanced insecticidal activity. The

summary of the present invention is reproduced hereunder:

“SUMMARY OF THE INVENTION

It is an object of the invention to provide a combination of two different

active ingredients which are well known insecticides; thereby providing

a highly effective and efficacious solution for controlling major insects

and pests in various agricultural crops, wherein the two active

ingredients are fipronil and ememectin benzoate. Another object of the

invention is to provide a broad spectrum insecticide effective against

both piercing and sucking type as well as biting and chewing type of

insects for all the agricultural crops. The invention encompasses a

broad spectrum neurotoxic insecticidal composition with contact,

systemic and trans-laminar activity.

Yet another object of the invention is to provide a synergistic

composition comprising fipronil and emamectin benzoate in

synergistically effective amount, wherein each ingredient significantly

enhances and abets the activity of the other ingredient. This way, the

combination of both the active ingredients exhibits a synergistic effect

resulting in a faster and higher mortality of the insect pests. The

enhanced mortality ensures reduction in crop damage by insect pests,

thereby resulting in a significant increase in the overall yield of the

crop. Also, the combination of both has made it possible to achieve a

higher insecticidal effect for a larger spectrum of insects/pests. Another

object of the invention is to provide an insecticidal composition that is

effective even when used in far lower amounts as compared to other

insecticides that are usually very expensive; thereby being highly cost

effective. Further, since the dose of individual active ingredient, i.e.

fipronil and emamectin benzoate in this composition is far less than the

C.A.(COMM.IPD-PAT) 86/2022 Page 29 of 47

doses required when used alone, the residue in the soil as well in crop

is also lower than their individual residues when used alone. This

eliminates any possible side/adverse effects. Consequently, this

combination is environmentally safer than its parental compounds.

Individually, in such infinitesimally low concentrations, both the

components of the combination are very safe to the environment as well

as to any non-target organisms including human beings. Therefore, the

present composition turns out to be highly economical, effective against

a large number of insects and is also environmental friendly. Another

object of the present invention is to provide a composition that does not

get washed even after two hours of rains following foliar application.

This prevents any wastage as well as enhances the effective time period

of the application. This also enables the insecticidal composition to act

against insects lying on the lower surface of the leaves or other hidden

areas which are more prone to attack. It is also an object of the

invention to provide a method of preparing the insecticidal composition

and its formulations thereof comprising fipronil and emamectin

benzoate. Further object of the invention is to provide a method of

controlling insects wherein the insects, their habitats and/or plants are

treated with the composition of the present invention.”

34. The independent claim 1 of the present invention claims an insecticidal

composition which comprises a synergistically effective amount of Fipronil and

Emamectin Benzoate. Fipronil weight concentration in the composition is 3.5% w/w

while the weight concentration of Emamectin Benzoate is 1.5% w/w, and the said

composition is in the form of a suspension concentrate (SC). The claims which

were considered in the impugned order are as follows:

“We Claim:

1. An insecticidal composition comprising synergistically effective

amount of Fipronil and emamectin benzoate, wherein Fipronil weight

concentration in said composition is 3.5%w/w, emamectin benzoate

weight concentration in said composition is 1.5%w/w, and said

composition is in the form of a suspension concentrate (SC).

2. The composition as claimed in claim 1, further comprising one or

more adjuvants.

C.A.(COMM.IPD-PAT) 86/2022 Page 30 of 47

3. The composition as claimed in claim 2, wherein the adjuvant is

selected from the group consisting of solvent, emulsifying agent,

dispersant, wetting agent, foaming agent, and combinations thereof.

4. The composition as claimed in claim 2, wherein the weight

concentration of adjuvant is in the range of 50% to 95%w/w.

[Emphasis Supplied]

35. This Court will now proceed to examine the prior arts to determine

whether the reasoning provided by the learned Controller under the objection

of lack of novelty and inventive step is sound.

LACK OF NOVELITY:

36. The first issue for determination is whether the subject invention

satisfies the requirement of novelty under the Act.

Prior Art CN1969627 (CN' 627):

37. As per the Embodiment 5 of CN’627, an insecticidal composition

comprising 3.5% Fipronil and 1.5% of Emamectin Benzoate is expressly

disclosed. The said prior art further teaches that such compositions may be

formulated as suspensions, including suspension concentrates.

38. Further, claims 2, 5 and 8 of CN’627 disclose formulations comprising

Fipronil and Emamectin Benzoate with one or more adjuvants, such as wetting

agents, dispersants/dispersing agents, emulsifying agents, and solvents. It is

important to note that the amount of adjuvants here is the same as that claimed

in claim 4 of the subject application.

39. As per the abstract and claim 1, CN’627 also teaches that the insecticide

composition can be used for controlling rice borer, plant hopper, diamond

C.A.(COMM.IPD-PAT) 86/2022 Page 31 of 47

back moth, beet armyworm, cigarette beetle and cotton bollworm. The abstract

and claim 1 of CN’627 are reproduced as follows:

“[57] Abstract

A composite Fipronil insecticide, belonging to the technical field of

pesticide formulation, particularly relates to a composite formulation of

Fipronil and emamectin benzoate. CIt is characterized by that, the

composite insecticide comprising foes 0.5~15% of Fipronil and

0.1~10% of emamectin benzoate by weight, and the rest is being

additives formulated miscible oil, or wettable powder, or miscible oil,

or suspending agent, or micro-emulsion. When compared with single

component type and composite Fipronil insecticide of the prior art, the

composite Fipronil insecticide provided by present invention has

significantly higher efficiency, improved in efficacy speed, long lasting

validity period, strong insecticidal activity, reduced dosage, low toxicity

and environmental friendly for controlling rice borer, plant hopper,

diamondback moth, beet armyworm, cigarette beetle and cotton

bollworm.”

“1. A composite Fipronil insecticide, characterized in that, the

composite insecticide comprises of 0.5~15% of Fipronil and 0.1~10%

of emamectin benzoate by weight, and the rest is additives formulated

miscible oil, or wettable powder, or miscible oil, or suspending agent,

or micro-emulsion.”

[Emphasis Supplied]

40. Further, claim 8 of CN’627 claims a composition containing, 0.5-15%,

Fipronil and 0.1-10% Emamectin Benzoate along with other components. It is

important to note that claim 8 clearly claims such a composition in the form of

a formulated suspending agent. claim 8 of CN’627 is reproduced hereunder:

“8. A composite Fipronil insecticide according to Claim 1,

characterized in that, the formulated suspending agent comprises of

the following components in percentage by weight:

Fipronil 0.5~15%, emamectin benzoate 0.1~10%, wetting agent

1%~40%, dispersing agent 0.3~20%, spreading agent 0.1~15%,

stabilizer 0.1~30%, synergistic agent 0.5~25%, penetrant 0.1~10%,

thickener 0.1~25%, anti-freeze agent 0.05~12%, defoamer

C.A.(COMM.IPD-PAT) 86/2022 Page 32 of 47

0.01~5%, PH adjusting agent 0.01~5% and water 10~75%. The

sum of the components is 100%.”

[Emphasis Supplied]

41. Embodiment 5 of CN’627 in the following table discloses the Fipronil

percentage by weight as 3.5% and Emamectin Benzoate at 1.5% by weight.

The Embodiment 5 is reproduced as follows:

Prior Art CN101019546 (CN'546):

42. CN’546 similarly discloses a pesticide composition comprising Fipronil

(3.5%) and Emamectin Benzoate (1.5%) under Example 5. This reinforces the

disclosure of identical concentration ranges as claimed in the present

invention. For clarity, Example 5 is reproduced hereunder:

“Exploit Example 5: emamectin benzoate takes up 1.5%, fipronil

occupies 3.5%, and other functional adjuvants and organic

solvent supplement to 100%.”

43. Additionally, at paragraph 6 of page 4 of CN’546 states that the

composition can be formulated as emulsifiable oils, microemulsions and

aqueous emulsions. The said relevant para is reproduced hereunder:

C.A.(COMM.IPD-PAT) 86/2022 Page 33 of 47

“The preparation method of the present invention is the same

with the preparation methods of mixed pesticides, especially

EC(emulsifiable concentrate), micro-emulsion and

EW(Emulsion in Water), in the existing technology. These

preparation methods shall be deemed as part of the present

invention.”

This document under example 5 shows that if Emamectin Benzoate and

Fipronil is taken with concentration of 1.5% and 3.5% respectively the Co-toxicity

Coefficient is maximum which is 146.5511. This cited document at page 8 further

discloses that since Co-toxicity Coefficient is more than 100, it can be concluded

that there is an obvious synergistic effect. At page 8, the prior art describes that

5% Emamectin Benzoate emulsifiable concentrate - Fipronil shows optimal

control effect on the rice leaf rollers. The relevant paragraph is reproduced

hereunder:

“...........It is thus clear that 5% emamectin benzoate emulsifiable

concentrate · fipronil shows optimal control effect on the rice leaf

rollers. The above processing pesticides show no sterile reaction

during the growth and development stage of the rice. For the area

where 5% emamectin benzoate · fipronil emulsifiable concentrate has

been applied, the paddy rice grows well with comely leaves, and ears

well in later period.”

44. Therefore, as discussed above, the abstract as well as claim 1 of

CN’627 shows that the composition of 3.5% w/w Fipronil and 1.5% w/w

Emamectin Benzoate as claimed in claims 1 to 4 of the subject application is

being anticipated by the disclosure of the CN’627, which discloses 0.5-15% of

Fipronil and 0.1-10% of Emamectin Benzoate by weight in various solutions.

Additionally, the invention under the prior art CN'546 under Example 5

describes the active ingredients Emamectin Benzoate (1.5%) and Fipronil

C.A.(COMM.IPD-PAT) 86/2022 Page 34 of 47

(3.5%). Therefore, in view of the disclosure of the active ingredients and their

concentrations of the present invention in CN’627 and CN’546, it leads to

anticipation and makes the present invention not novel under Section 2(1)(j)

of the Act. Therefore, this Court is of the view that the objection of lack of

novelty is well-reasoned in the impugned order.

45. Therefore, in the light of the cited prior arts CN’627 and CN’546,

individually/together, the invention under the subject application is not novel.

46. Accordingly, this Court is of the considered view that the finding of

lack of novelty recorded in the impugned order is justified and does not

warrant interference.

LACK OF INVENTIVE STEP:

47. The next question which arises for consideration is whether the claimed

invention involves an inventive step within the meaning of Section 25(1)(e)

and Section 2(1)(ja) of the Act.

48. The impugned order has upheld the objection of lack of inventive step

while rejecting the subject application. In order to examine the correctness of

the reasoning adopted by the AC on this ground, this Court shall proceed to

analyse the cited prior arts forming the basis of the impugned order.

CN101066055A (CN'055)

49. Under claim 1, CN’055 clearly discloses a pesticidal composition

comprising Emamectin Benzoate in the range of 0.1 to 5%, with chlorfenapyr

or the mixture of any one/ more of compounds Fipronil, Diafenthiuron, beta

cypermethrin and cyhalothrin, in varying proportion. CN’055 discloses a

pesticidal composition containing 0.2% - 30% Fipronil and 0.1%-5%

C.A.(COMM.IPD-PAT) 86/2022 Page 35 of 47

Emamectin Benzoate. Under Example 5 as well as claims 1-5, Emamectin

Benzoate is mentioned to be 0.5% with Fipronil 5% along with adjuvants. The

adjuvants disclosed include emulsifying agents, solvents and synergists. In

order to appreciate this aspect, claim 1 of CN’055 is reproduced hereinbelow:

“1. A kind of pesticide composition containing emamectin benzoate, it

is characterized in that its weight ratio structure is:

Emamectin Benzoate: 0.1%- 5%,

Active Ingredient B: 0.2% - 30%,

Synergist: 0.1% - 5%,

Emulsifying agent: 5.0% - 20%,

Solvent: 45% - 90%,

Wherein: The above mentioned active ingredient B can be

chlorfenapyr or the mixture of any one or more of the following

substances in any ratio: diafenthiuron, fipronil, beta cypermethrin and

cyhalothrin.”

[Emphasis Supplied]

Further, under claim 1 and Table 2 at page 9 of CN'055, it is disclosed

that the total amount of adjuvants ranges between 50% to 95% w/w. Table 2

specifically discloses a composition comprising Emamectin Benzoate (0.5%)

and Fipronil (5%), demonstrating the control efficiency of 98.62%. However,

this Court also notes that the synergist is also used in the abovementioned

claims, in Example 5, and in Table 2.

50. Further, at page 4, CN’055 encourages the use of pesticide mixtures in

combination with new surface-active agents in order to enhance efficacy and

reduce resistance. The relevant paragraph is reproduced hereinbelow:-

“Thus, a new type of pesticides mixture with a new surface active

agent cannot only play the role of original pesticide types to the

greatest extent, but also can greatly reduce the occurrence of pesticide

resistance.”

[Emphasis Supplied]

C.A.(COMM.IPD-PAT) 86/2022 Page 36 of 47

Prior Art CN101151970A (CN'970) :

51. The invention under CN’970 relates to an insecticidal composition for

controlling diamondback moth, comprising Fipronil and Emamectin/its

derivative Emamectin Benzoate, as active ingredients, wherein the weight

ranges from 1:10 to 10:1. The abstract is reproduced hereinbelow:

“[57] Abstract

An insecticidal composition for the prevention and control of

diamondback moth on cruciferous vegetables, which is characterized in

that it contains fipronil and avermectin or their derivatives emamectin

benzoate as active components, and the weight ratio of fipronil to

avermectin or their derivatives emamectin benzoate is 1 : 10 to 10 : 1.”

52. The said prior art, under claim 2, specifically claims a composition

comprising Fipronil and Emamectin Benzoate in the ratio 1:10 to 10:1. It

would be apposite to extract claim 2 hereunder:

“The insecticidal composition is characterized in that it contains

fipronil and emamectin benzoate as active ingredients, and the weight

ratio of fipronil and emamectin benzoate is 1 : 10 to 10 : 1.”

53. Further, CN’970 under Content of the invention discloses adjuvant in

suitable dosage forms including wettable powder, water-soluble powder, pill,

tablet, plaster, aqueous suspension, water-dispersible granule and emulsion

etc. The relevant paragraph is reproduced hereinbelow:

“The insecticidal composition of the invention can be prepared into

various suitable pesticide dosage forms, such as wettable powder,

water-soluble powder, water dispersible granule, pill, tablet, plaster,

suspension agent, emulsion, etc. These preparations can be directly or

through the addition of water to form aqueous dispersion in the form

of spray, mist, powder spraying, and so on.”

C.A.(COMM.IPD-PAT) 86/2022 Page 37 of 47

54. Additionally, it is relevant to note that 2% Emamectin Benzoate and

Fipronil microemulsion formulation (Fipronil-1% and Emamectin Benzoate-

1%) and 3.3% Emamectin Benzoate and Fipronil microemulsion formulation

(Fipronil -0.3% and Emamectin Benzoate-3%) respectively are disclosed

under Examples 2 and 3 of CN’970. Under Example 9 and 8, the Control

efficiency of these Examples 2 and 3 was found to be 94.16% and 94.13%

respectively. It may be pertinent and significant to note that the aforenoted

efficiency is higher than what is claimed by the appellant in its patent

application. However, this Court also notes that synergists are also used in the

examples. The examples are reproduced hereunder:

C.A.(COMM.IPD-PAT) 86/2022 Page 38 of 47

Prior Art CN1911037 (CN'037):

55. As far as the invention under CN’037 is concerned, it pertains to a

compound insecticide in respect of the compound insecticide technology for

controlling rice stem borer as well as the riceleaf roller. This prior art

discloses, under claims 5 and 6, a composite insecticide for controlling rice

pests comprising a combination of Fipronil and Emamectin Benzoate, wherein

the mass ratio of Fipronil to Emamectin Benzoate ranges from 0.25-10 : 0.01-5. To make this clear, claims 5 and 6 of CN’037 is reproduced hereinbelow:

“5. The compound insecticide for controlling rice insects is

characterized in that its effective components are (RS) -5-amino-1-

(2,6-dichloro-4-trifluoromethyl) -4-trifluoromethylsulfinyl-3-nitrile

and 4” - epi-methylamino-4” deoxyavermectin B1 benzoate.

6. The compound insecticide for controlling rice insects described in

Claim 5 is characterized in that (RS) -5-amino-1- (2,6-dichloro-4-

trifluoromethyl) -4-trifluoromethylsulfinyl-3-nitrile and 4-epi-

methylamino - 4” deoxyavermectin B1, and the quality to mass ratio of

benzoate is 0.25〜10 : 0.01〜5.”

56. It may be significant to note that under the Technical Scheme 3

disclosed under the complete specification of prior art CN’037, the

composition of Fipronil and Emamectin Benzoate is disclosed. The mass ratio

C.A.(COMM.IPD-PAT) 86/2022 Page 39 of 47

of (RS) of these two compounds is 0.25-10:0.01-5. The scheme further

discloses that the composition is low-cost, long-term and quick acting, and is

capable of improving the control effect and simultaneously delaying the

development of insecticide resistance. To understand this better, the Technical

Scheme 3 is extracted hereunder:

“Scheme 3: the effective components are (RS) - 5-amino-1 - (2,6-

dichloro-4-trifluoromethyl) - 4- trifluoromethylsulfuropyrazol-3-nitrile

(fipronil) and 4” epi-methylamino-4” deoxyavermectin B1 benzoate

(mesaavermectin benzoate).

(RS)-5-amino-1-(2,6-dichloro-4-trifluoromethyl)-4-

trifluoromethylsulfinyl-3-nitrile (fipronil) and a mixture of 4” epi-

methylamino-4” deoxyavermectin B1 benzoate (emamectin benzoate) to

form fluoroavermectin (fipronil and emamectin benzoate) is also low-

cost, long-term and quick acting, which can improve the control effect

and delay the development of insecticide resistance. The synergistic

effect (CO toxicity coefficient) was 414.8.

Among them, the mass ratio of (RS) - 5-amino-1 - (2,6-dichloro-4-

difluoromethylphenyl) - 4- trifluoromethylsulfinyl-3-nitrile to 4” -epi-

methylamino-4” deoxyavermectin B1 and benzoate is 0.25〜10 :

0.01〜5.”

[Emphasis Supplied]

57. Additionally, at pages 8 and 9, the prior art CN’037 discloses examples

of Fipronil-Emamectin Benzoate in suspension concentrate (SC) formulations.

The same is extracted hereunder:-

“C. 15% fipronil / abamectin suspension Weigh 90% abamectin

physical quantity 5.55kg (5kg), 95% fipronil physical quantity 10.53kg

(10kg), adjuvant 10kg, reducing gum 0.3kg, benzoic acid 0.5kg,

defoamer 0.5kg, glycol 5kg, water 67.62kg are added into the shear

reactor, cut for 30 minutes, and then put into the primary sand mill,

then the secondary sand mill, mix in the mixing reactor, carry out the

measurement and sub packaging after passing the inspection, obtains

the finished product.

C.A.(COMM.IPD-PAT) 86/2022 Page 40 of 47

D. 0.36% fipronil / abamectin suspension Weigh 90% abamectin physical

quantity 0.11kg (0.1kg), 95% fipronil physical quantity 0.27kg (0.25kg),

adjuvant 10kg, reducing gum 0.3kg, benzoic acid 0.5kg, defoamer 0.5kg,

glycol 5kg, water 83.32kg are added into the shear reactor, cut for 30

minutes, and then put into the primary sand mill, then the secondary sand

mill, mix in the mixing reactor, carry out the measurement and sub

packaging after passing the inspection, obtains the finished product.

A. 5.25% fipronil / emamectin benzoate suspension 100kg Weigh 60%

emamectin benzoate physical quantity 8.33kg (5kg), 95% fipronil

physical quantity 0.27kg (0.25kg), adjuvant 10kg, reducing gum 0.3kg,

benzoic acid 0.5kg, defoamer 0.5kg, glycol 5kg, water 75.1kg are added

into the shear reactor, cut for 30 minutes, and then put into the primary

sand mill, then the secondary sand mill, mix in the mixing reactor, carry

out the measurement and sub packaging after passing the inspection,

obtains the finished product.”

[Emphasis Supplied]

58. Apart from the above, it is also worthwhile to consider that at page 11,

the prior art CN’037 also demonstrates the existence of synergism between

Fipronil and Emamectin Benzoate. Thus, the appellant’s submission in this

regard is negated by the existence of the synergism in the prior art, which the

appellant claims to have discovered as not known hitherto before. For

clarification, page 11 of the prior art is reproduced hereinbelow:

“The test data show that the field control effects of fipronil / phoxim,

fipronil / avermectin, fipronil / emamectin benzoate and fipronil /

chlorpyrifos on chilosuppressalis and rice leaf roller are obviously better

than those of the control agents.”

[Emphasis Supplied]

59. As discussed above, it is noted that the prior art CN’037, under its

claims 5 and 6, discloses a composite insecticide for controlling rice pests

comprising a combination of Fipronil and Emamectin Benzoate, wherein the

mass ratio of Fipronil to Emamectin Benzoate is 0.25-10 : 0.01-5. Moreover,

C.A.(COMM.IPD-PAT) 86/2022 Page 41 of 47

the prior art at page 9 discloses examples of Fipronil-Emamectin Benzoate,

suspension concentrate (SC) formulation. At page 11, it also discloses that the

field control effect of Fipronil and Emamectin Benzoate is far better than the

control agents. In view of the above disclosures, it is difficult to accept the

submissions advanced on behalf of the appellant.

Prior Art CN1579160 (CN'160):

60. The invention under CN’160 pertains to a synergistic pesticidal

composition of reagent and Emamectin Benzoate. Claim 2 of the prior art

CN’160 discloses a synergistic pesticide composition which comprises

Fipronil and Emamectin Benzoate, wherein the weight ratio of Fipronil to

Emamectin Benzoate is 1-50:1.

61. Claim 4 of this prior art claims that the composition can be used with

routine plant protective agents, including suspending agents. In order to

appreciate, claim 4 of this document, is reproduced hereinbelow:

“The preparation method of this synergistic pesticidal composition is

characterized by the possibility to process the pesticide into routine plant

protective agents, such as suspending agent, emulsifiable concentrate,

micro-emulsion, wettable powder, granule and etc.”

[Emphasis Supplied]

62. It may be pertinent and significant to consider at this stage that the

Example 1 in prior art CN’160, which clearly discloses the various pesticidal

compositions comprising (i) 5% Fipronil with 1% Emamectin Benzoate; (ii)

3% Fipronil with 0.2% Emamectin Benzoate and (iii) 4% Fipronil along with

0.5% Emamectin Benzoate, where the active ingredients are Fipronil and

C.A.(COMM.IPD-PAT) 86/2022 Page 42 of 47

Emamectin Benzoate. Furthermore, the abstract and claim 4 of prior art

document CN’160 specifically disclose that an insecticide composition can be

formulated as a suspension. Particularly, at page 4, the said prior art under

consideration discloses the method of preparation of the insecticide

composition in the form of a suspension. Thus, it cannot be contended that

none of the prior arts disclose that the insecticide composition can be

formulated in suspension concentrate form.

63. A closer examination of the prior art CN’160, reveals that the claims

under the said document disclose the use of one or more adjuvants in a

formulation comprising Fipronil and Emamectin Benzoate. Particularly, the

document under claim 4 discloses routine plant protective agents such as

suspending agents, emulsifiable concentrate, micro-emulsion, wettable

powder, granules etc. Further, CN’160 under its abstract and claim 5 also

discloses that the said insecticide composition can be used for

preventing/treating forest pests such as rice stem borers, plant hoppers and

vegetable aphids. The Example 1 is reproduced hereunder:

C.A.(COMM.IPD-PAT) 86/2022 Page 43 of 47

64. The Complete Specifications of the prior art CN’160 also discusses

surface-active agents including anionic and non-ionic surfactants. The relevant

para is reproduced hereinbelow:

“Available surface active agents are anionic surface active agents and

non-ionic surface active agents. Applicable agent can be alkyl sulfate,

alkyl sulphonic acid alkali metal salt and amino, sodium dialkyl

succinate sulfonate, pesticide adjuvant 2000 #, alkyl naphthalene

sulfonate – alkyl polyoxyethylene ether sulfate, fatty acid or fatty acid

ester sulfate, alkylphenolethoxylates, fatty alcohol polyoxyethylene

ether and so on. Pesticide emulsifier 2000 series, 8202, lignosulfonate,

NNO, dispersing agent MF and the like can be taken as examples.”

[Emphasis Supplied]

C.A.(COMM.IPD-PAT) 86/2022 Page 44 of 47

65. As discussed above, specification of CN’055, the new surface active

agent is encouraged to reduce pesticidal resistance. From the disclosure of

CN’055 and CN’070 as discussed above, using the teaching of these two prior

arts, a person skilled in the art would reach the present invention. Further, it is

well established that the concept of water dispersible granules, EC and SC etc.

are common/well-known/routinely employed and are conventional forms in

the agrochemical industry. Therefore, claim 1 of the present invention is

obvious as per the teachings, in view of the cited document CN’970 either

alone or in combination with either CN’546, CN’627, CN’055 or common

general knowledge. Further, the above discussed disclosure in CN’546 or

CN’627 or CN’055 alongwith the disclosure and teachings of CN’037, which

discloses the SC and synergy between Fipronil and Emamactin Benzoate,

would also render the present invention obvious. Additionally, as discussed

above, CN’160 at page 4 of the specification also discloses the SC and

therefore, read with above-discussed disclosure in CN’546, CN’627 and

CN’055, the present invention would lack inventive step under section 2(1)(ja)

of the Act. The present invention also fails to demonstrate any technical

advancement or economic significance over the existing knowledge, as

required under Section 2(1)(ja) of the Act.

66. Additionally, since all the cited prior art documents primarily discloses

the similar products as the subject matter of the present invention and belongs

to crop protection formulation. Therefore, the submission of the appellant that

there is no common thread between the prior arts cannot be accepted. In

Sterlite Technologies Ltd. v. HFCL Ltd. 2022 SCC OnLine Del 2895., this

C.A.(COMM.IPD-PAT) 86/2022 Page 45 of 47

Court held that when multiple documents disclose substantially similar

products to the patented products, then it is a reflection of the state of the art

and would not amount to “mosaicing”. The relevant para is reproduced

hereunder:

“20.3 Since only these two documents are being used as prior art at

this stage, this Court, at the outset, holds that the Plaintiff‟s claim of

mosaicing lacks merit. The objection of “mosaicing” would normally

apply when completely unconnected documents are presented in a

combination to defeat the inventive step in the invention. However, the

argument of mosaicing cannot be sustained when there are only two

documents used as prior art and such documents are interconnected or

disclose similar products. When multiple documents are alleged to

disclose substantially similar products to the patented product, then

the same is a reflection of the state of the art and not “mosaicing”.”

[Emphasis Supplied]

67. Upon a harmonious and conjoint appreciation of the above

discussion, claim 1 of the present application cannot be said to be inventive.

The arguments of Mr. Priyam Lizmary Cherian, learned counsel for the

appellant, that the learned AC has merely copy-pasted the objections raised by

various objections including respondent no.3 may appear to be superficially

attractive, however, when viewed in the backdrop of the above observations

and analysis, coupled with the fact that the learned AC had indeed examined

the lack of inventive step in detail, the said contention is unfounded and is

untenable.

68. Further, the objection on the ground of lack of inventive step is well

reasoned, as the learned Controller has discussed all the necessary steps

mandated by this Court in Agriboard International LLC vs. Deputy

C.A.(COMM.IPD-PAT) 86/2022 Page 46 of 47

Controller Of Patents And Designs, reported in 2022 SCC Online Del 940.

The relevant paragraphs are reproduced hereinbelow:

24. In the opinion of this Court, while rejecting an invention for lack of

inventive step, the Controller has to consider three elements-

• the invention disclosed in the prior art, • the invention disclosed in

the application under consideration, and • the manner in which

subject invention would be obvious to a person skilled in the art.

25. Without a discussion on these three elements, arriving at a bare

conclusion that the subject invention is lacking inventive step would

not be permissible, unless it is a case where the same is absolutely

clear. Section 2(1)(ja) of the Act defines `inventive step' as under:

(ja) "inventive step" means a feature of an invention that involves

technical advance as compared to the existing knowledge or having

economic significance or both and that makes the invention not

obvious to a person skilled in the art.

26. Thus, the Controller has to analyse as to what is the existing

knowledge and how the person skilled in the art would move from the

existing knowledge to the subject invention, captured in the

application under consideration. Without such an analysis, the

rejection of the patent application under Section 2(1)(ja) of the Act

would be contrary to the provision itself. The remaining prior arts

which are cited by ld. Counsel having not been considered in the

impugned order, the Court does not wish to render any opinion in this

regard.

69. The learned AC has analysed: (i) the prior art, (ii) the subject invention

and (iii) the manner in which the invention would be obvious to a Person

Skilled in the Art (PSA), thereby satisfying the required three factors.

70. Based on the above reasoning, this Court is of the considered opinion

that the learned AC has rightly refused the subject application for lack of

novelty under Section 25(1)(b) and Section (2)(1)(j) and lack of inventive

C.A.(COMM.IPD-PAT) 86/2022 Page 47 of 47

step under Section 25(1)(e) and Section (2)(1)(ja) of the Act. Having rendered

the aforesaid opinion, the requirement to examine the objection under Section

3(d) and Section 25(1)(g) of the Act is not necessitated.

71. As a result, the appeal fails and is dismissed as such, though without

any order as to costs.

TUSHAR RAO GEDELA

(JUDGE)

APRIL 08, 2026

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