Process Claims
The assessment of patentability under Section 3(d) remains an important and contentious topic of the Patents Act, 1970. The Section, intended to prevent the grant of a patent for trivial variations of known product or processes, demands careful examination to clearly discern innovations over mere discoveries. This article talks about a recent decision in an appeal filed against the refusal order of a patent application directed to a process for the production of Xylitol.
The decision reacts to fundamental issues of the confluence of established processes being treated as a "mere use of a known process", the threshold of inventive step, and the need for putting concrete evidence affirming obviousness allegations rather than relying on mere assertions of common knowledge. This article examines the court's key findings and their implications for patent applicants, attorneys, and policymakers.
Inventions predominantly in the field of chemical science and engineering are considered to be patentable only when they circumvent the threshold of this unique provision in India. Section 3(d) of the Patents Act has the following three limbs:
- mere discovery of a new form of a known substance which does not result in the enhancement of known efficacy of that substance;
- mere discovery of any new property or new use for a known substance;
- mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
When claims are objected under Section 3(d), the examination report seldom contains adequate reasoning as to why the objection under Section 3(d) of the Act has been raised. While there has been sufficient guidance on ascertaining the patentability of inventions falling under the first limb of Section 3(d), the second and third limb of Section 3(d) have been rarely dealt with by the Courts as they are considered to be straight forward.
However, in a recent order, the Madras High Court while considering an appeal filed by Annikki GmbH (hereinafter “the Appellant”), remanded the case to the Patent Office. The Court issued this order in an appeal against the order of the Patent Office in Indian Patent Application No. 467/CHENP/2012. The subject matter of the claims pertained to a process for the production of Xylitol by a non-fermentative process. It was argued by the Appellant that the claimed process possessed high selectivity of lignin degradation, besides the enzyme costs that formed the critical factors in determining the inventiveness of the process. It was observed by the Court that the Patent Office had not evaluated the provisions of Section 2(1)(ja) and Section 3(d) of the Act correctly and therefore failed to assess the inventive merit of the claimed invention properly.
An important observation made by the Court in this matter was with regard to the evaluation of Section 3(d) of the Act made by the Patent Office. Since the subject matter of the claims related to a process for the production of Xylitol, it was clear that the third limb of Section 3(d) became relevant in assessing for patentability of the claimed process under Section (d) of the Act. It is to be noted that there was no single prior art document that utilized the process as claimed in the subject application. The finding that led to the refusal of the case under Section 3(d) was that the claimed process was considered to be a mere use of two different known processes, part of which was objected from cited prior arts D1-D4 and part from another cited document D5. The Judge observed that the respondent had combined processes from multiple prior arts to sustain an objection under Section 3(d). It was held that the phrase “mere use of a known process” in Section 3(d) indicated that the exclusion only applied to a single process that does not result in a new product or involved a new reactant. The Court concluded that by combining or fusing processes described in multiple prior arts, it cannot be inferred that a claimed process merely uses a “known process”. In other words, the requirement for assessing a process claim for patentability under Section 3(d) of the Act follows a path similar to the “Novelty” consideration wherein all the features of the claimed invention should be contained in a single prior art.
Another important observation made by the Court was that the Controller while arriving at a conclusion regarding inventive step recorded that the enzymes used for converting xylose to xylitol was obvious to a person skilled in the art in the art of enzymology and therefore the claimed process lacks inventive step. The Judge pointed out at this conclusion and held that:
“While recording conclusions on the purported basis of common general knowledge, it is necessary to at least include the source or material on the basis of which such conclusion is drawn”.
This is an important observation made by the Court wherein it was clarified that an inference as to an invention being obvious cannot be asserted based on common general knowledge without specifically referring to any piece of material or published information that renders such common general knowledge. Similar observation was also made by the Delhi High Court in AGFA NV & ANR Vs Asst. Controller of Patents in C.A.(COMM.IPD-PAT) 477/2022 which referred to UK Patents Court in Generics (UK) Ltd. v. Daiichi Pharmaceuticals Co. Ltd., [2009] R.P.C. 4, and the Judgment of Calcutta High Court, in Groz-Beckert KG v. Union of India & Ors., 2023 LiveLaw (Cal) 17.
Thus, this order once again serves as a guideline where it clearly indicates that there should be at least a prior documentary proof to substantiate the common general knowledge without which, denying the inventive merit of an invention can jeopardize the rights of the Applicant. The Court’s finding also provides valuable guidance as to how Section 3(d) must be interpreted and applied in practice.
