Inconsistency in the arguments put forth by patent applicants and their attorneys and the subsequent prejudice to their intellectual property (IP) portfolio, is not a new occurrence in the IP sector. A recent decision on a patent application of a pharmaceutical giant has led to the resurfacing of this unfortunate issue that has urged people, time and again, to practice by the maxim, ‘Don’t raise your voice, improve your argument’.

Hindustan Unilever Ltd. (HUL), on June 14, 2007, filed a PCT National Phase Application (898/MUMNP/2007) for a hair-care product, that claimed enhanced sensory properties such as appearance and feel and enhanced compatibility with hair benefit agents or conditioning agents. The product, a water-in-oil microemulsion, claimed to comprise an oil phase (a first oily component and a second oily component) and an aqueous phase (water, a nonionic emulsifier and a hair conditioning agent).

The first oily component of the product was a glyceride fatty ester having a vegetable oil source and it was present in an amount ranging between 20% and 80% of the total weight of the microemulsion. The second oily component, on the other hand, was a light mineral oil and was present in an amount ranging between 20% and 80% of the total weight of the microemulsion. The water content of the microemulsion was claimed to be ranging between 4 % and 6% (less than 10%) of the total weight of the microemulsion. Further, the nonionic emulsifier was an ethoxylated alcohol with the HLB value ranging between 7 and 9 and the hair-conditioning agent was a cationic polymer, a quaternary ammonium cationic surfactant. The specification also claimed a ‘method of treatment’ that involved use of the afore-stated product for a pre-hair wash or for a post-hair wash treatment. During examination, the inventive-step and the patentability of the patent, amongst other grounds were objected to. Documents D1 (US 5298240) and D2 (WO/2001/045651) were cited as the most relevant. The citing of the same documents in the International Search Report was also acknowledged. In response to the report, HUL deleted the ‘method of treatment claim’, and presented a new set of amended claims, persisting however with the claim that the invention did involve an inventive step - the type of the nonionic emulsifier. A hearing took place but the Controller maintained that the invention lacked inventive step based on the combined teachings of two prior art documents and refused to grant a patent to HUL under Section 15 of the Indian Patents Act, 1970 (as amended in 2005).

Aggrieved, HUL approached the Intellectual Property Appellate Board (IPAB) in an appeal challenging the decision of the Controller, wherein HUL contended that a further set of amended claims was submitted in the hearing that was not taken into consideration. In the appeal, HUL took an additional defence that the water content of the formulation (less than 10% of the total weight of the microemulsion) was the actual inventive step of the invention as no other prior art document spoke of decreasing the water content in order to increase the aesthetic appeal of the product. Ironically, in the response to the examination report, HUL had pointed out the type of the nonionic emulsifier to be the inventive step, as has been mentioned previously.

To make matters worse, in the appeal, HUL went even further to state that the absence of cationic surfactants, along with the characteristic water content, were the inventive steps. The former contention was quite contrary to the matter claimed in the complete specification that HUL themselves were so aggressively defending. Claim 12 clearly stated that the hair-conditioning agent in the hair-care product was a cationic surfactant.

The three major arguments made by HUL to buttress the inventive step were predictably not accepted. The first argument stating that the type of the nonionic emulsifier was the inventive step, was repudiated by stating that the prior art document D1 taught the use of the nonionic surfactant. The next one stating that the specific water content was the inventive step was also held to be anticipated, as one of the examples of the prior art document D1 involved a product having less than 10 % water content. The next argument put forth by HUL was the absence of a cationic surfactant in the product. The Board found that there was enough evidence in the claims of the concerned specification to show that this contention was incorrect.

The progression of events in the concerned matter not only speaks of inconsistent arguments but also of technical inaccuracy. If certain claims of a specification clearly state that the cationic surfactants are essentially present in the product, there was no basis for an applicant to propose that the absence of cationic surfactants constituted an inventive step.

Predictably, the IPAB in an order dated June 10, 2013, upheld the Controller’s decision to refuse HUL’s patent application no. 898/MUMNP/2007.