Introduction
In March 2023, in the case of Tapas Chatterjee vs. Assistant Controller of Patents and Designs, a judgment was passed by the Hon’ble Delhi High Court upholding the rejection of a patent application. The court acknowledged that a simple combination of known processes does not qualify the criteria for patent protection under the Indian laws. Section 3(d) of the Indian Patents Act (herein referred to as the “Act”), significant in the life science sector, prevents the patenting of known processes unless they result in a novel product or involves a new reactant.
The Overview Of The Battle:
In the present case, Tapas Chatterjee, the Appellant, challenged the rejection of his patent application based on non-patentability u/s 3(d) of the Act and the lack of inventive steps as specified u/s 2(1) (ja) of the Act. The Appellant argued that the process used in his invention, involved a unique step of thermal decomposition, resulting in commercially viable potassium sulfate, and it was unique and not previously recognized under prior art.
To this the Respondent contended that the process neither involves any new reactant or product nor it shows any inventive advancement over prior art. Moreover, the absence of experimental data supporting the claimed economic benefits was highlighted and the Court upheld the rejection.
The Criteria For Innovation As Per The Act: Section 2(1(j)) defines “invention” as a new product or process involving an inventive step and capable of industrial application.
Section 2(1(ja)) defines “inventive step” as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
Section 3 (d) of the Act states – “the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the 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.” In general section 3 (d)means that merely discovering an updated version of an already known substance, or identifying a new property or use for it, does not qualify for patent protection unless it leads to a significant improvement in its effectiveness or functionality. Similarly, using an existing process, machine, or apparatus will not be considered novel unless it either produces a new product or uses at least one new element in the process. There must be a genuine innovation or enhancement, not just a minor variation or a new application of what is already known.
The Decision Of The Court
The court determined that the process in question falls u/s 3(d) of the Act since it is a combination of known processes from previous documents D1 and D2. Section 3(d) as specified above, stipulates that a known process can only be patented if it leads to a new product or involves at least one new reactant. The court emphasized that a “known process” can encompass multiple known processes and clarified that the patentability of processes is more restricted as compared to substances The Court clarified a distinction between the “discovery of a new form of a known substance,” that can be patented if it enhances the known substance’s effectiveness, and the “mere use of a known process,” which does not have a similar provision for enhancement. Therefore, after conducting through research and implementing appropriate sections of the Act, the Court, in the present case, concluded that the processes utilized in the invention did not introduce any new reactants or create a new product and therefore cannot be patented.
Suggestion And Conclusion
Based on the Court’s analysis, it is suggested that to secure patent eligibility u/s 3(d) of the Act, a process must either introduce a new product or include a new reactant, rather than merely combining known or existing processes. The application should ensure that any claimed invention demonstrates a genuine inventive step and not just an obvious modification of prior art.
