High Court: Invention beyond a mere discovery may not fall under Section 3(c) of the Patents Act
In the recent case of Diamond Star Global SDN BHD v Joint Controller of Patents, [2023:DHC:2316], the Intellectual Property Division (hereinafter referred to as “IPD”) of the Delhi High Court discussed the purview of Section 3(c) of the Indian Patents Act (hereinafter referred to as “Act”). Section 3(c) of the Act states “the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature” are non-patentable subject matter.
In the above-mentioned decision, the IPD clarified that Section 3(c) of the Act aims to restrict the granting of patents for inventions that are based solely on the discovery of natural phenomena. The Hon’ble Court further interpreted Section 2(1)(j) of the Act expansively, emphasizing that a "new product or process" does not necessarily have to be completely unfamiliar or strange but can be a significant improvement or addition to existing knowledge.
The present case arose out of an Indian patent application no. 202017054505 (hereinafter referred to as “subject application”), corresponding to a PCT Application no. PCT/MY2018/050045, for grant of a patent titled “Hygiene Wash”. The subject application claimed a skincare formulation that contained wood vinegar obtained from the Rhizophora apiculata tree, in a concentration of 18 to 22%.
Pursuant to filing of the subject application, an Office Action dated July 29, 2021, was issued by the Controller of Patents (hereinafter referred to as “Respondent”) and a reply was filed by the Applicant on November 08, 2021. Consequently, a hearing was scheduled and thereafter, the Applicant filed written submissions, dated March 21, 2022.
The Respondent, by order dated June 02, 2022, rejected the Applicant’s application for a grant of a patent on the grounds of:
Section 3(c), holding that the applicant’s application was a mere discovery of properties obtained from Rhizophora apiculata tree;
Lack of inventive step; and
Insufficiency of disclosure under Section 10(4) of the Act due to lack of experimental-based working examples for carrying out the claimed process.
Aggrieved by the order, the Applicant preferred the present appeal under Section 117A(2) of the Act.
Arguments by the Applicant in the appeal:
The Applicant argued that the Respondent in the impugned order failed to consider the two main deficiencies in the existing prior arts which the Applicant’s invention overcame, namely, the pungent smell of guaiacol and the capability of the additive to distinguish between harmful bacteria and beneficial lactic acid bacteria. The Applicant contended that the Respondent failed to note the fact that the Applicant was entitled to take credit for identifying the Rhizophora apiculata tree, as the source from which to derive the appropriate wood vinegar and to work out the concentration in which the wood vinegar was required to be added to the skincare preparation, as well as the process to be followed in that regard.
Insufficiency of disclosure
The Applicant contended that the column relating to insufficiency of disclosure was left blank in the First Examination Report, and therefore, the Respondent erred in holding, in the impugned order, that the Applicant’s application lacked sufficiency of disclosure.
The Applicant submitted that the surprising effect of the wood vinegar obtained from the Rhizophora apiculata tree added at a concentration of 18 to 22%, is that the wood vinegar would attack only harmful bacteria and would be free from guaiacol. The Applicant contended that the impugned order failed to appreciate these facts, and proceeded, in a somewhat myopic fashion, in treating the invention as merely making use of the property already existing in nature, of wood vinegar obtained from Rhizophora apiculata.
Arguments by the Respondent:
Section 2(1)(j), 3(c) and insufficiency of disclosure: The Respondent relied on Section 2(1)(j) as well as 3(c) of the Act to assert that the subject application pertained to a naturally occurring property of wood vinegar obtained from the Rhizophora apiculata tree, of being guaiacol-free, and therefore the application was merely “the discovery of (a) living being or non-living being substance occurring in nature”
No experimental data: The Responded argued that to establish inventive step of the subject application, the Applicant was required to provide experimental data. However, such data had not been provided by the Applicant. Further, the Respondent contended that the subject application was inherently defective as the subject application did not compare the claimed invention with other wood vinegars, which would be the appropriate prior art, so as to make out a case of the superiority of the wood vinegar obtained from the Rhizophora apiculata tree, vis-à-vis other wood vinegars, for use as anti-microbials in skincare preparations. Therefore, in the absence of any comparison, the appropriateness and efficacy of the subject application could not be established.
Anticipation by prior arts: The Respondent highlighted the objections regarding lack of inventive step as contained in the FER. As per which, the prior art documents D1, D2 and D3, cumulatively seen, clearly indicated that the process and the product which the Applicant sought to patent were completely lacking in inventiveness.
In this context, the Hon’ble Court relied on the Supreme Court judgement in the case of Novartis AG v. U.O.I. [(2013) 6 SCC ] where it was noted that:
“169. Section 2(1)(j) defines “invention” to mean, “a new product or …”, but the new product in chemicals and especially pharmaceuticals may not necessarily mean something altogether new or completely unfamiliar or strange or not existing before. It may mean something “different from a recent previous” or “one regarded as better than what went before” or “in addition to another or others of the same kind” [The New Oxford Dictionary of English, Edn. 1998.] .”
The Hon’ble Court opined that Supreme Court advocates an expansive, rather than a restrictive, interpretation, of the expression “new product or process” as laid down in Section 2(1)(j) and according to Article 141 of the Constitution of India, said interpretation becomes binding on every authority lower in the judicial hierarchy, including the present Court.
The Hon’ble Court assessed the subject application and identified that the inherent inventive step of the subject application lied in (i) identifying the wood vinegar obtained from the Rhizophora apiculata as being free of guaiacol and, therefore, suitable for addition of skin care cosmetics, (ii) working out the composition of 18 to 22% as the appropriate strength in which, on addition of the said wood vinegar to the skin care preparations, optimum antimicrobial properties, which would do away with harmful bacteria even while preserving beneficial lactic acid bacteria.
The Hon’ble Court observed that none of the cited prior arts D1-D3 anticipated the subject application and the disclosures in the subject application submitted by the Applicant were, ex facie, sufficient to support the claims, the scope of which the impugned order misconstrued.
Insufficiency of disclosure:
In this regard, it was observed that the Applicant had not made any categorical admission that there were other earlier preparations of wood vinegars, which were added to skin care preparations, so as to confer antimicrobial properties, and therefore the Applicant was not required to show comparative data demonstrating greater efficacy or preferable properties of the wood vinegar obtained from the Rhizophora apiculata tree and added at a concentration of 18 to 22%. The Hon’ble Court further noted that the complete specification filed by the Applicant before the Respondent contained detailed workings of how, when the Applicant’s product was added, these claimed technical properties were found to result. Therefore, the Hon’ble Court held that the Applicant’s application did not lack sufficiency of disclosure.
In this regard, the Hon’ble Court observed that “the word “mere”, as used in the opening part of the said Clause would apply, in my opinion, both to the first part, i.e. “discovery of a scientific principle or the formulation of an abstract theory” as well as to the second part, i.e. “discovery of any living thing or non-living substances occurring in nature”. It is only mere discovery of a living thing, or non-living substance occurring in nature which, therefore, according to me, would fall within the second part of Section 3(c)”.
The Hon’ble Court while considering the facts of the present suit opined that there would have been a possibility to reject the subject application if the Applicant was seeking a patent for guaiacol on the ground that guaiacol is a substance occurring in nature and, therefore, even if it had not been earlier discovered, the mere discovery of guaiacol was not patentable as an invention, in view of the proscription contained in Section 3(c) of the Act. The Hon’ble Court opined that the Respondent failed to observe that the Applicant was not seeking to merely patent wood vinegar obtained from the Rhizophora apiculata tree. The claim of the appellant was that, as an antimicrobial additive to skin care preparations, which would be free of any pungent constituents as well as capable of eradicating harmful bacteria even while preserving beneficial lactic acid bacteria, the wood vinegar obtained from the Rhizophora apiculata tree, added to the skin care preparations at a strength of 18 to 22%, would provide optimum results. Therefore, the Hon’ble Court held that the subject application does not fall within the ambit of Section 3(c) of the Act.
Resultantly, the impugned order dated June 02, 2022, passed by the Respondent was quashed and set aside. The Respondent was, therefore, directed to proceed in accordance with law towards the grant of patent in respect of the Applicant’s application.
In conclusion, the case provides important insights into the scope of Section 3(c) of the Act. The Hon’ble Court's interpretation of Section 3(c) clarifies that the mere discovery of a living or non-living substance occurring in nature does not automatically fall within its scope. This interpretation allows for broader possibilities of patentability, as long as the claimed invention goes beyond a mere discovery, as in the present case, the Hon’ble Court identified that the subject application went beyond mere discovery by solving a technical problem through a specific concentration of wood vinegar from the Rhizophora apiculata tree in skincare preparations.