OP(PT)/4/2024 of Bull Agro Implements Vs Ashlyn Antony on 13 November 2026

ORDER

The petitioners have filed the instant original petition to revoke the patent of the 1st respondent which was granted by the 2nd respondent in Patent No. 458805. Brief summary of the petition for revocation filed under Section 64 of the patents Act, 1970 are as follows:

2. The impugned patent application titled “Baler for tying round blade using twine” was favourably considered and granted on 12.10.2023 in Patent No. 458805. The 1st respondent, pursuant to the said grant had issued a cease- and-desist notice dated 22.01.2024 calling upon the petitioners to stop infringing the registered patent granted to the 1st respondent. The petitioners sent a reply dated 15.02.2024 (since the cease and desist notice itself was sent on 22.01.2024, it cannot be 15.02.2023, as mentioned in the reply) contending that the 1st respondent’s patent is devoid of any novelty and that there are prior arts and that it is used commonly in industry for over a decade, even before filing the patent of the impugned patent. The 1st respondent claims monopoly based on a non-existing invention. The mechanism for tying bales has been prevalent long before the 1st respondent had even applied for patent and the same is evident from patent and non-patent literature, as well as prior arts in existence, prior to the alleged invention of the 1st respondent.

3. The petitioners have been engaged in agricultural mechanical implements field for more than 25 years and have even made a technically advanced strong straw baler. Petitioners have been manufacturing baler machines for over 8 years and in fact, in 2017, the petitioner, on considerable research and development has invented a technically advanced baler machine and has applied for patent registration. It took the petitioners 4 years to come up with a safer baler machine which protected the farmers from physical injury or harm to their hands, while operating the baler machine. The petitioner’s conceptualisation has also been fruitful with a sale of over 1000 machines and the same also being put to commercialisation successfully. The 1st respondent has obtained patent with no intention to commercialise the impugned patent and the 1st respondent has not even produced a single machine, though has obtained grant of impugned patent. The 1st respondent is attempting to monopolise the mechanism and hinder the market with ulterior motives of depriving the petitioners and the like from getting their inventions registered. Contending that the petitioner is an interested person under Section 2(t) of the Patents Act, 1970, the original petition has been filed seeking revocation of the patent granted to the 1st respondent. Summary of the counter of the 1

st respondent:

4. The patent granted to the 1st respondent is an integrated combination of a chain drive on a link plate, a side backstop clutch that holds the twine at one end for the next cycle, and a blade mounted beneath that clutch which cuts at a set bale density and stops the twine. The said patent was granted by the Controller after a thorough examination was made. The present original petition has been filed only as a counter blast after the 1st respondent had issued a cease-and- desist notice to the petitioner alleging infringement of the patent granted in favour of the 1st respondent. Though the petitioners claim to have been in the market for 25 years and have made balers for 8 years, the petitioners have chosen to challenge the patent only after they were called upon to stop the infringement by way of cease-and-desist notice dated 22.01.2024. Petitioners have not come to Court with clean hands. All the prior arts that have been cited and relied upon by the petitioners do not disclose the features put together namely, a side backstop clutch that holds the twine at one end for the next cycle, with a blade mounted beneath it that cuts it at a set density and stops the twine. Therefore, none of the prior arts can come in the way of the patent being granted, rightly, by the Controller, to the 1st respondent. The prior arts also do not come in the way of the combination invented by the 1st respondent being obvious in view of the unknown technical effects that have been brought about by the 1st respondent in the granted patent.

5. The allegations of the petitioner that the 1st respondent is attempting to monopolise the basic mechanism for tying bales is hit by Section 64(1)(d) and it not amounting to an invention is also denied, contending that, in the baler machine invented by the 1st respondent, the advancing new features are capable of industrial application and therefore would clearly amount to an invention under Section 2(1)(j) of the Act and certainly involves an inventive step. It was further contended that petition offers no expert, experiment or attempt showing that a skilled person tried to build a baler and failed. The 1st respondent therefore prays for dismissal of the revocation petition with costs.

6. This Hon’ble Court, by order dated 17.06.2025, framed the following issues:

i. Whether the impugned patent is liable to be revoked on the ground that the invention was publicly known before the priority date of the claim?

ii. Whether the impugned patent is liable to be revoked on the ground of lack of novelty?

iii. Whether the impugned patent is liable to be revoked on the ground of lack of inventive step?

iv. Whether the impugned patent is liable to be revoked on the ground that the complete specification does not sufficiently and fairly describe the invention? v. Whether the petitioners are entitled to the relief claimed?

vi. Whether the parties are entitled to any other relief?

7. Both parties chose to not lead any oral evidence, excepting for filing their respective affidavits of admission and denial with regard to the documents that have been relied on by the petitioner and 1st respondent.

8. Heard Mr. Surya Senthil, learned counsel for petitioners and Mr.Dinesh Jothwani, learned counsel for the 1st respondent and Mr. P.G.Santhosh Kumar, learned Senior Panel Counsel, Central Government, for the 2nd respondent. Submissions of Mr. Surya Senthil are summarised as hereunder:

9. The 1st respondent’s claim is not new and there is nothing inventive about it. The very same objectives have been sufficiently addressed by earlier prior arts which have been prevailing in the agricultural industry for several decades together, before even the 1st respondent’s application for the impugned patent. 12 prior arts have been cited to show that there is no invention or inventive step in the claim of the 1st respondent. The mechanism employed in the patent granted to the 1st respondent has been adopted with same features, including blade sprocket movement of twine in prior art 11 and there is nothing novel in the claim for grant of patent made by the 1st respondent and it was only an obvious existing mechanism that was adopted. Even the claim of stopping mechanism in the impugned patent is not new, but has been anticipated in the prior arts as well.

10. Further there is insufficient disclosure and the complete specification does not fairly describe the invention in the impugned patent specification. Therefore, even applying Section 64(1)(h) of the Patents Act, 1970, the claim of invention cannot be sustained. For being obvious, the claim of the complete specification is also hit by Section 64(1)(f) as well, since the mechanism has been publicly known and published even prior to the claim made by the 1st respondent. Further, the claim of the complete specification is not even based on the disclosed material in these specifications and even under Section 64(1)(i), the patent is liable to be revoked. Relying on Section 64(1)(d), Mr. Surya Senthil states that the 1st respondent, by obtaining the patent, is attempting to only monopolise a basic mechanism of tying bales which has been in common practice and within public knowledge and therefore, even on this ground, according to Mr. Surya Senthil, the patent cannot be sustained. Submissions of Mr. Dinesh Jothwani are summarised as hereunder:

11. The petition itself has been filed only as a counter blast after receipt of the cease-and-desist notice issued by the 1st respondent. If the petitioners have really been in the field as claimed, for 2 decades and have been manufacturing baler machines from 2017 onwards, there was no reason why the petitioners remained quiet all along and chose to lay their first challenge only after the cease-and-desist notice was issued by the 1st respondent. In fact, the petitioners cannot even claim lack of knowledge since the 2nd petitioner’s application for patent has already been opposed by the 1st respondent and the notice and reply notice have already been exchanged prior to the verification of the present original petition. It is therefore contended that the petitioners have suppressed material facts and have approached this court with unclean hands.

12. He would further state that though as many as 12 prior arts have been cited against the claimed patent invented by the 1st respondent, none of such prior arts disclosed new features and advancements found in the impugned patent. He would take me through each of the prior arts to contend that the patent granted in favour of the 1st respondent was only invented by the 1st

respondent, with new and advance features. Therefore, none of the prior arts can be cited against the 1st respondent. As far as the objections under Section 64(1)

(f) , the 1st respondent has shown that the combination is not obvious, since the claimed combination in the patent granted by 1st respondent produces a technical effect which none of the prior arts addressed. The learned counsel further brought to my notice that the following 3 features which stand out in the combination and invention claimed, namely:

i. twine held at one end for the next cycle

ii. winding initiated from the centre

iii. the density-triggered cut that stops twine movement

13. He would further state, with regard to the objections under Section 64(1)(d) that the patent granted is not an invention, claim 1 is only for an apparatus and not for a process claim and the said machine invented by the 1st respondent, is certainly capable of industrial application and would clearly fall within the definition of invention under Section 2(1)(j) of the Patent Act, 1970 containing new and inventive steps.

14. As regards insufficient disclosure in the specifications and objections raised under Section 64(1)(h), the learned counsel for the 1st respondent states that the specifications sufficiently describe the structure and operations and even the averments in the original petition make out a case that the petitioners have understood the specifications in the right perspective. He would further state that the test is to only see whether the complete specification sufficiently and fairly describes the invention and the methods by which it is to be performed to the extent that a person in India, of average skill and knowledge in the art, can work it and that the specifications disclose the best method known to the applicant, for which the protection is claimed. In this regard, he would state that every new feature has been described in claims 1 to 7 in the complete specification and therefore the allegation of insufficient disclosure under Section 64(1)(h) is without any merit.

15. As regards the objection raised under Section 64(1)(i) that the claim is not clear and not fairly based on any specification, the learned counsel Mr. Dinesh Jothwani, contends that excepting for a pleading that there is no particular or material disclosed to expand the one sentence plea as to how claim 1 is unclear or as to which feature lacks support. In any event, it is his contention that claim 1 defines each component clearly and there is nothing unclear about it. He would also state that all features of claim 1 to 7 appear in the description as well.

16. As regards the objection that the 1st respondent has not marketed the invention, the learned counsel relies on Section 146(2) of the Patents Act, 1970 read with Rule 131 of the Patents Rules, 2003. Section 146(2) and Rule 131 have been extracted below for convenience. Section 146(2): “(2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.” Rule 131: Form and manner in which statements required under section 146(2) to be furnished

(1) The statements shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licencee or his authorised agent.

(2) The statements referred to in sub-rule (1) shall be furnished once in respect of every period of three financial years starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of such period. Provided that the Controller may condone the delay or extend the time in filing of such statement for a period up to three months upon a request made in Form 4.

(3) The Controller may publish the information received by him under sub- section (1) or sub-section (2) of section 146.

17. He would therefore state that when the patent was granted only on 12.10.2023, the statement is due only by 30.09.2027 and therefore the allegation regarding non-working and seeking to revoke the patent on this ground is premature. It is his further submission that non-working is not even a ground for revocation under Section 64(1) and it is only addressed under compulsory licensing provisions contained under Section 85(1) of the Patents Act, 1970.

18. Lastly, he would submit that none of the cited prior arts are similar to the patent of the 1st respondent and the learned Controller of the Patents has thoroughly examined the said prior arts and came to a definite conclusion that there is no similarity with any of the earlier disclosed prior arts and therefore the 1st respondent was entitled to the grant of patent. The learned counsel would therefore, pray for the original petition being dismissed.

19. I have carefully considered the submissions advanced by the learned counsel on either side. I have also gone through the pleadings, the documents filed on either side and as well as the written submission, supplemented by oral arguments advanced before me.

20. In the backdrop of the issues already framed by this Court it would suffice to decide issue numbers 1- 4. For the sake of convenience, issues 1 to 3 are taken up together and issue 4 is dealt with separately. ISSUES 1 – 3:

21. The primordial submissions of Mr. Surya Senthil, learned counsel for the petitioner, is that the patent that has been granted to 1st respondent is based on an alleged invention which was already publicly known and was in place even before the date of application for patent was made by the 1st respondent. It is also contended that there is no novelty or inventive step in the impugned patent.

22. For deciding these issues together, I have to first understand the actual claim for invention in respect of which patent has been granted to the 1st respondent. According to the 1st respondent, the patent involves an integrated combination of a chain drive on a link plate, a side backstop clutch that holds the twine at one end for the next cycle, and a blade mounted beneath that clutch which cuts at a set bale density and stops the twine. It is the specific argument for the learned counsel for the 1st respondent that none of the prior arts that are now being cited against the 1st respondent’s invention, have adopted or even disclosed the combination that has been invented by the 1st respondent. Therefore, I have to test the 12 prior arts and see whether there is any new inventive step or novelty claimed by the 1st respondent, thereby entitling the 1st respondent to grant of a patent. I have to also see whether there is any teaching in place that would lead a skilled person to merely assemble it, thereby depriving the 1st respondent from claiming the patent. Lastly, I have to see whether any of the grounds for revocation have been made out under Section

64(1) of the Patents Act, 1970.

23. In this backdrop, I also have to keep in mind, the conduct of the parties. The patent has been granted to the 1st respondent on 12.10.2023, subsequent to which the 1st respondent has alleged infringement of its patent and issued a cease-and-desist notice to the petitioners. Admittedly, the above original petition has been filed only after receipt of the cease-and-desist notice. It is also relevant to keep in mind that in the interregnum period, the 2nd petitioner’s patent application has been opposed by the 1st respondent as well. Though this aspect may not be really significant in deciding the revocation petition, at best it may be an additional factor that this Court may weigh, while arriving at the final conclusion.

24. Having discussed the invention and novelty claimed by 1st respondent, I will see whether the 12 prior arts have adopted the same mechanism or combination earlier. If I am able to come to a conclusion that the combination that has been invented by the petitioner is not relatable to any of the prior arts and that additionally, there is no literature available to a skilled person to arrive at this combination, then the 1st respondent is entitled to retain its patent.

25. Coming to the 12 prior arts, in prior art 1, in US41332584A dated 09.01.1979, it is a device invented for helically winding twine around a bale with a movably mounted twine guide assembly, a cutter operated by movement of the guide assembly, and a guide support moving in a straight path parallel to the bale axis. This prior art does not disclose a backstop clutch holding the twine for the next cycle and in this prior art, there is no blade beneath the clutch leave alone a density triggered cut. Coming to prior art 2 in US4563854A dated 14.01.1986, it is a round baler with a binding tape supply, a pivotable blade holder, tape advancing rollers, a hydraulic piston-cylinder and a drive chain over deflection rollers. However, even in this prior art, there is no side backstop clutch and no blade beneath one. which is new feature invented by 1st respondent.

26. In prior arts 3 (US4956968A dated 18.09.1990) and 4 (US5036642A dated 06.08.1991) also, there are balers with a sledge assembly carrying dispensing means for sheet material wrapped around the bale. However, the mechanism of twine winding or chain drive on a link plate and clutch holding the twine are absent as in the case of the granted patent. Coming to prior art 5 in US5054387A dated 08.10.1991, it is a twine based wrapping apparatus with a feed roller, a knife, actuator means, a twine arm on the tongue, and two links with a crank lever where the twine is fed by driven roller and cut by a knife operated through links. The 1st respondent’s claim however has an additional chain drive on a link plate with no side backstop clutch and no blade beneath.

27. Prior art 6 in US5479766A dated 02.01.1996, is a baling apparatus with a bale chamber loaded from beneath, periodic compression means and retractable supporting means. The said prior art does not involve any twine at all. In prior arts 7 in US5581973A dated 10.12.1996, it is a round baler with a web-material dispensing assembly, pivoting insertion means and grasping tips. Prior art 8 in US5581976A dated 10.12.1996 is a method that dispenses a web and also twine, cut by the same transverse cutting means. These prior arts do not disclose any chain drive on link plate or a clutch holding the twine or blade beneath it as in the case of the granted patent to the 1st respondent.

28. Prior art 9 in US5941166A dated 24.08.1999 is a twine wrapping arrangement with a longitudinally moving twine guide, a twine outlet, a cutting knife, and a groove shaper that cuts a circumferential groove in the bale to receive the final wrap. This prior art 10 in US6021622A dated 08.02.2000 also does not involve any clutch and blade beneath it as in the case of the invention of the 1st respondent. Prior art 10 is a baler where wrapping material is dispensed through a slot between two transverse tolls with a feed-assist element. Admittedly, wrapping material, not twine tied by any chain drive. Further, there is no clutch or blade beneath as in the invention of the 1st respondent.

29. In prior art 11 in US20020005097A1 dated 17.01.2002, it is an apparatus for severing the twine from a finished bale held by a tractor’s grapple arms: a slide bar, a blade riding on it, and a motor coupled to the blade. However, as rightly contended by Mr. Dinesh Jothwani, learned counsel for the 1st respondent, I find that prior art 11 is only a post-baling twine severing device and it cannot be compared to a baler’s tying mechanism, which is the subject matter of the patent granted to the 1st respondent. In any event, prior art 11 also does not have any side backstop clutch or holding of the twine at one end or the next cycle or a cut triggered by blade density also stopping of the twine movement. It is also driven by the blade side from the motor and not a chain drive on a link plate carries the twine to the centre of the bale as in the case of the 1st respondent’s invention.

30. In so far as last prior art 12, in EP1882409B1 dated 30.01.2008, it is a clamping device for a round baler, a duck bill assembly with a pair of plates gripping wrapping material and moving between an advanced and a retracted position, a cutting device located between the retracted duck bill position and the bale-forming position, and a clamping device urging the plates together between wrapping cycles. It is the contention of Mr. Surya Senthil that the duck bill is nothing but the backstop clutch that is claimed to be invented by the 1st respondent. However, as rightly pointed by Mr. Dinesh Jothwani, prior art 12 is entirely different in the sense that it has no chain drive on a link plate and also does not stop a twine movement during cutting. Further, even the cutter employed in prior art 12 is a separate cutting device whereas in claim 1 in the granted patent, the blade is mounted beneath the clutch and cuts at a set bale density.

31. As regards duck bill grips, it grips web material between plates urged together by a clamping device. However, in the invention of the patent granted to the 1st respondent, the clutch is a catcher body and there is a lock plate bolted by spring-loaded pins, opened by a lever at the pre-determined bale density and closed again at the end of the link plate to catch and hold the twine. Therefore, in view of the above discussion, certainly there are new and innovative features. Though they may be a combination of some features already existing in the field and known publicly, when the particular combination that has been invented is certainly novel and capable of industrial application, I do not see why the 1st respondent should be declined the grant of patent. I find that there are new technical advancements and novelties over the prior arts put against the 1st respondent.

32. I have also carefully gone through the Controller’s decision to grant patent to the 1st respondent. The order is a well-considered and comprehensive order, discussing all relevant aspects. Therefore, I am unable to see any grounds arising to revoke the patent grant to the 1st respondent under Sections 64 (1)(f) and (d).

I SSUE

4:

33. Now coming to the aspect of whether there has been insufficient disclosure and the claims are not clear and fairly based on the specifications as required under law, I am unable to countenance the arguments of Mr. Surya Senthil on two grounds. Firstly, as rightly pointed out by Mr. Dinesh Jothwani, the structure and operation of 1st respondent’s patent, as described in his specifications has been rightly understood by the petitioners themselves, which can be made out from their own original petition averments and allegations. In such view of the matter, I do not see any insufficient or incomplete disclosure in the specifications. Secondly, in claims 1 to 7, which have been set out in the complete specification, every feature claimed has been disclosed, with its numbered element and operation. As rightly pointed out by Mr. Dinesh Jothwani, there is also no evidence adduced or material produced on the side of the petitioners to show that any skill person has already attempted to experiment with the combination reached by the 1st respondent in building a baler and has failed in such attempt. Therefore, I am unable to see any merit in the submissions of the learned counsel for the petitioners that under Section 64(1)

(h) and 64(1)(i), also the 1st respondent’s patent is to be revoked

34. As regards the non-workability of the patent, though no issue has been framed, it was vehemently contended by Mr. Surya Senthil that the 1st respondent has not even sold a single machine to the general public till date despite grant on patent on 12.10.2023. However, as rightly pointed by Mr. Dinesh Jothwani, learned counsel for the 1st respondent, under Section 146 (2) of the Patents Act, 1970 read with Rule 131 of the Patents Rules, 2003 (as amended in 2024), a patentee has 3 financial years’ time to file a statement of working in Form 27. Considering that the patent was granted only on 12.10.2023, the 1st respondent can file his statement on or before 30.07.2027. Therefore, today, it is not open to the petitioner to contend that there is a default in disclosure of the working of the patent and therefore the 1st respondent is only attempting to monopolise the market by taking an advantage of the patent granted to. Further, as rightly pointed out, under Section 64, non-working or non-marketing of the patent is not even a ground for revocation. In such view, even this argument of the petitioners falls to the grounds. Issues are answered accordingly.

35. For all the above reasons, I do not see any merit in the petition. In fine, the OP is dismissed. No order as to costs. 13-11-2026 Index: Yes Speaking order Neutral Citation: Yes RKP To The Deputy Controller of Patents & Designs,

The Patent Office Intellectual Property Building, GST Road, Guindy, Chennai 600 032.

P.B.BALAJI J. RKP Pre-delivery Order in OP (PT) No.4 of 2024 13-11-2026