Recent IPAB Decision - A hotchpotch of arguments

What happens when a pre-grant opposition is filed for an Indian patent application and the following happens:

• The pre-grant opposition application is withdrawn by the respondent on the grounds that the party (respondent) is no longer interested in pursuing the matter.
• The documents cited as prior art in the pre-grant opposition belong to the inventor of the current application and has been abandoned.
• The most important cited document is not from the same technology area.
• There is no agreement between the experts testifying on the matter of novelty and inventive step.

This is what happened in a recent IPAB decision in which the patent application was not allowed for grant. The patent in suit is 40/2007/PT/MUM, titled “NOVEL AGRICULTURAL COMPOSITION”. The patent application discloses an agricultural composition comprising an effective amount of a sulphur active ingredient and a dispersing agent. According to the appellant (patentee), the novel feature of the invention was the ability to instantly convert sulphur to its sulphate form so that desired quantity of sulphur is made available for assimilation by plants. The composition was in the form of grains (0.1 mm to 2.5 mm) that were soluble in water and ranged from 2 to 12 microns in particle size. 

Background: Seven documents were cited in the first examination report, the response to which was filed by the appellant by limiting and modifying the initial set of 15 claims to 13 claims. Thereafter, the pre-grant opposition was filed by the respondent. The most important document from a prior art view disclosed all the elements of the current application. However, the difference lay in the fact that the document was targeted towards fungicides whereas the current application targeted the easy assimilation of sulphur in its sulphate form by plants. Further, the percentage by weight of each ingredient was different in the cited document and the current application.  Even though the respondent withdrew their appeal and did not go ahead with the opposition, the board nonetheless stressed on the fact that it was the duty of the board to not allow an application to go forth to the public merely because the opposition is withdrawn.

For deciding the novelty and inventive steps, the board relied on the fact that the process of assimilation of sulphur in sulphate form was known in the art and the main area of contention was with respect to the particle size and the speed at which the sulphur containing composition gets oxidized and becomes sulphate. In order to throw light on the novelty and inventive step, the board agreed with the findings of the controller who had concluded that agricultural composition included both fungicidal composition and nutrients required for the plants. As a result of this, the cited document acted as deciding prior art for the current application. The board stated “The use of sulphur as a nutrient is a known use, the rapid oxidation by change in particle size is known, there are prior arts which feature economic advantage of the composition as also sustained release.” The above argument was also used while considering the testimony of 10 experts in the field of horticulture and sulphur. There was difference of opinions with respect to what the experts thought of the novelty and inventive steps of the invention with one expert going as far as stating in his testimony that the claims (as filed) did not do justice to the invention and only dependent claims 12 and 13 in combination with examples in the specification brought out the novelty of the invention. Further details can be found on the IPAB site.