INDIA - Understanding the traditional characteristics of Section 3(p) of the Indian Patents Act

In a judgment that sheds light on the prospects of patentability of inventions concerning traditional knowledge in India, a Single Judge bench of the Hon’ble Madras High Court dismissed an appeal filed by M/s. The Zero Brand Zone Pvt. Ltd. and Anand, Jayashree (hereinafter referred to as the ‘Appellant’) against an order passed by the Assistant Controller of Patents (hereinafter referred to as the ‘Respondent’) refusing an application for grant of patent for invention titled ‘Eco-friendly lamp made up of composition based on panchagavya with the combination of leaves used in traditional herbal medicine’.

Facts of the Case

The application related to a single-use lamp and a process for producing such lamp. The First Examination Report (FER) issued in the matter raised objections pertaining to lack of inventive step and non-patentability under Sections 3(e) and 3(p) of The Patents Act, 1970 [hereinafter referred to as ‘the Act’], among others. A response was filed to address the objections raised. A pre-grant opposition was filed in the matter, which was replied to by the Appellant and subsequently, a hearing was fixed, which was attended to by the Appellant, while the pre-grant opponent failed to attend the hearing. By impugned order dated March 12, 2020, the application was refused on grounds of lacking inventive step and for falling under the purview of Section 3(d), 3(e), and 3(p) of the Act.

Contentions of the Appellant

The Appellant differentiated the invention described in the application from the prior art, asserting that the prior art were not analogous or relevant. With reference to Section 3(p), they contended that clause (p) applies when the invention is, in effect, traditional knowledge or is an aggregation of known properties of traditionally known compositions. They emphasized that though cow dung, cow urine, cow ghee, cow butter, cow milk and cow curd are part of traditional knowledge, the manufacturing of a single-use lamp by using these ingredients qualifies as an invention, thus, not attracting Section 3(p) of the Act. 

With respect to Section 3(d), it was argued that since the single-use lamp made from cow products and a mixture of leaves selected from neem tree, lemon tree and peepal tree was a new product and not a known substance, clause (d) of Section 3 is not attracted.

Further, it was argued that Section 3(e) is inapplicable in the present matter as it only applies to a substance obtained by a mere admixture of ingredients. 

Contentions of the Respondent

The Respondent contented that the invention was obvious in view of the cited prior art D1-D3, and all the ingredients used in the claimed invention are known ingredients, which form part of traditional knowledge, thus, excluded from patentability under Section 3(p) of the Act.

Analysis by the Hon’ble Court

The Hon’ble Court elucidated on the object and purpose of inserting Section 3(p) in the Act, which was to prevent the creation of a monopoly over traditional knowledge, including by aggregating the known properties of traditionally known components. The Hon’ble Court also elaborated on the expression ‘traditional knowledge’ and clarified that said expression is not qualified by the term ‘per se’, unlike the expression ‘computer programme per se’ in Section 3(k) of the Act, as the exclusion is not intended to completely bar inventions based on traditional knowledge. Rather, it allows for patentability of inventions wherein the Applicant can establish that the product or process can no longer be described as being, in effect, traditional knowledge.

The Court further discussed the term ‘traditional knowledge’ with reference to the definition provided by the World Intellectual Property Organisation (WIPO) and the United Nations Educational Scientific and Cultural Organisation (UNESCO). It held that Section 3(p) provides defensive protection of traditional knowledge by excluding inventions which are “in effect” traditional knowledge, from patent eligibility. The term “in effect” in the provision ensures that there is no circumvention of the prohibition by concealing the usage of traditionally known components or their properties in a claimed invention. 

Delving into the contentions raised by the parties, the Hon’ble Court opined that the components used in the preparation of the claimed product have been traditionally used in India and thus, form part of traditional knowledge. It further accentuated that whether the combination of the known components in specific proportions for the production of a lamp falls outside the scope of Section 3(p) depends on whether known properties of these components have been aggregated in the claimed invention. 

Referring to the refusal order passed by the Respondent, the Court observed that the expression “panchagavya” in ayurveda symbolises the five substances derived from the cow, namely, urine, milk, ghee, curd and dung. Further, the use of cow dung cake, cow ghee and cow butter as fuel and the use of neem and lemon leaves as insect repellents is known, and is part of traditional knowledge.

The Hon’ble Court was of the opinion that even assuming that urine, milk and curd from the cow were not known to be used as fuel, since one of the known properties of other ingredients is their use as fuel, the claimed invention would fall within Section 3(p) of the Act. 

The Court also discussed the other grounds of refusal in this matter, namely, Section 3(d), 3(e), and inventive step, providing its insights on the same. 

Conclusion

The Hon’ble Court concluded that the usage of traditional knowledge, including using known properties of the ingredients, falls within the exclusion in Section 3(p). The Hon’ble Court also held that clauses (d) and (e) of Section 3 are not applicable, while the claimed invention was held to be obvious to a person skilled in the art on the basis of the cited prior art and common general knowledge. Consequently, the impugned order was upheld by the Hon’ble Court and the appeal was dismissed.