INDIA: High Court interprets Section 3(d) clarifies the scope of patentability of known processes

INTRODUCTION:

In an order dated March 10, 2023, the Hon'ble Delhi High Court (hereinafter referred to as "the Hon'ble Court") in Tapas Chatterjee vs Assistant Controller of Patents [C.A.(COMM.IPD-PAT) 18/2022 &I.A.3580/2022] upheld the refusal order of the Controller and undertook a detailed analysis of the inventive step and patentability of the claimed subject matter under Section 3(d) of theIndian Patents Act (hereinafter “the Act”).

BACKGROUND:

The present appeal was instituted by Tapas Chatterjee (hereinafter referred to as the “Appellant”) challenging the impugned order of the Assistant Controller of Patents (hereinafter referred to as the “Respondent”) refusing the Appellant’s application 201911036748 titled “Recovery of Potassium Sulphate and other valuable products from spent wash leading to ZLD system” under Section 3(d) of the Act and 2(1)(ja) of the Act.

Submissions made by the Appellant:

The Appellant challenged the impugned refusal order on the ground that the Patent Office had passed a cryptic order without dealing with any of the submissions made on behalf of the appellant. Placing reliance on the judgment of the Court in DS Biopharma vs Controller [C.A. (COMM.IPD-PAT) 6/2021 & I.A. 12828/2021], the Appellant submitted that the Respondents failed to identify a reference point process which can be considered as a ‘known’ or ‘old process’ and had no occasion to answer with reference to any prior art as to how the bar of Section 3(d) of the Act would apply.

The Appellant contended that since the Respondent had acknowledged the novelty of the claimed invention, the process is not hit by the bar of Section 3(d) of the Act and hence, the need to involve a new reactant or ingredient does not arise.

The Appellant further highlighted that the claimed invention involved a new step of ‘thermal decomposition’ with repeated fractionation, which lead to a new result, i.e., providing enormous amount of pure commercially usable potassium sulphate and water that can be recycled and reused.

Additionally, the appellant contended that the subject invention cannot be used as a blueprint to map the prior art onto the subject invention, the same would amount to hindsight analysis. The prior arts, D1 and D2, teach two different processes, which cannot be combined at all. Reliance in this regard was placed on Avery Dennision Corporation vs Controller of Patents and Designs [C.A. (COMM.IPD-PAT) 29/2021].

Submissions made by the Respondents:

In respect of the refusal under Section 3(d) of the Act, the Respondents argued that:

· The process in the subject application does not involve any new reactant, nor results in the formation of a new product.

· The appellant failed to establish the technical leap or economic significance of the invention due to absence of experimentation in the subject application.

In respect of the refusal under Section 2(1)(ja) of the Act, the Respondent submitted:

· The subject invention does not differ from the teachings of D2.

· Merely because the appellant uses the process of thermal decomposition to break down one compound into two or more new compounds, would not result in any technical advancement with the cited prior art references.

· The claimed process does not result in a new product and the end product in all the prior art documents D1 - D4 is the same, i.e., Potassium Sulphate.

Analysis and Findings of the Hon’ble Court:

The Hon’ble Court held that the claimed process in the claims 1 to 11 of the subject patent application squarely falls within the scope of Section 3(d), as being a mere use of known processes, which were already disclosed in the prior art documents D1 and D2.

In terms of Section 3(d) of the Act, the Hon’ble Court clarified that “a patent can be granted in respect of a ‘known process’ only when such a ‘known process’ results in a new product or employs at least one new reactant. There is a material difference between the terminology ‘discovery of a new form of a known substance’ and ‘mere use of a known process’. In the case of discovery of a new form of a known substance, the patent can be granted only if the said new form results in enhancement of the known efficacy of the substance, whereas there is no such provision for enhancement of known efficacy in respect of known processes. Therefore, the scope of patentability of processes is narrower than substances”.

The Hon’ble Court agreed with the Respondents that the subject application does not result in a new product and the end product in all the prior art documents as well as the subject patent application being the same, Potassium Suplhate. The Hon’ble Court clarified further that the only difference is the process adopted by the appellant is a zero liquid discharge process, and the process described in prior arts being the discharge of effluents is still not sufficient to overcome the objection raised by the Respondents.

With regard to Section 2(1)(ja), the Hon’ble Court discussed the five-step test to determine inventive step as opined in F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del), with specific emphasis on steps 4 and 5:

“…

Step No.4 To identify the differences, if any, between the matter cited and the alleged invention and ascertain whether the differences are ordinary application of law or involve various different steps requiring multiple, theoretical and practical applications;

Step No.5 To decide whether those differences, viewed in the knowledge of alleged invention, constituted steps which would have been obvious to the ordinary person skilled in the art and rule out a hindside approach.”

The Hon’ble Court conducted claim mapping for the subject application vis-à-vis D1 and D2 and observed that by combining teaching of the prior arts, D1 and D2, a person skilled in the art would be able to come to the subject matter claimed in the subject application.

Hence, the Hon’ble Court dismissed the appeal and held that the refusal order is justified and that the subject application does not appear to be constituting a technical advancement.

The Hon’ble Court has taken a stance regarding applicability of Section 3(d) in process patents by highlighting the differences between known processes and known substances. Overall, the decision provides guidance to patent applicants and examiners in evaluating the innovation and novelty involved in such patents.