Introduction
When is a new product considered a mere discovery of something that subsists in nature and thus unpatentable, and when is it altogether new or unfamiliar, and thus, worthy of being granted a patent? This is the question that the Delhi High Court tackled in the recent case of Diamond Star Global SDN BHD v Joint Controller of Patents (2023/DHC/2316), where the Court had occasion to interpret the scope of Section 3(c) of the Indian Patents Act, 1970 (the Act), specifically in relation to 'naturally occurring substances'.
The dispute
Section 3(c) excludes from patentability "the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature".
The patent application in question (IN202017054505) related to a method of preparing a personal care product, which involved obtaining wood vinegar from Rhizophora apiculata and adding 18-22% w/w of the wood vinegar to a personal care product. The claim specified that the wood vinegar contained syringol, benzoic acid, maltol, catechol and vanillin, but was free from guaiacol. The wood vinegar was said to inactivate or kill microorganisms that cause skin and urinary tract infections but retain many beneficial microorganisms. The application also claimed a personal care product obtained from the claimed method.
The patent specification as filed mentioned that wood vinegars from various plants ordinarily contain high amounts of guaiacol, which contributes to undesirable pungent smell, and thus noted that "It is therefore an added advantage to utilize an optimized concentration of wood vinegar from a plant species without the presence of guaiacol." This was besides other distinctions from existing formulations, such as the ability to selectively inactivate or eliminate pathogenic microorganisms. Post-filing data submitted by the Applicant demonstrated efficacy of the claimed concentrations of wood vinegar, and that the efficacy of the claimed product was comparable to existing chemical-based formulations.
The patent application was refused by the Controller on grounds that the Applicant was simply using the inherent germicidal property of the wood vinegar obtained from Rhizophora apiculata. According to the Controller, the claimed method included just adding this wood vinegar so obtained into the personal care formulation, using the known process of pyrolysis.
On an appeal filed by the Applicant before the Delhi High Court, the Controller reiterated this position, emphasising that:
- The invention relied on the naturally occurring property of wood vinegar obtained from the Rhizophora apiculata tree, of being guaiacol-free. Thus, the invention was merely the discovery of a substance occurring in nature and not patentable under section 3(c);
- The application was inherently defective as it did not contain any comparison of the invention with other wood vinegar. Instead, the Applicant compared with chemical formulations.
- The claimed method involved a known process of pyrolysis.
The decision
Pertinently, the Court referred to the following paragraph of the Supreme Court decision in Novartis AG v. U.O.I. ([2013] SCR 148):
- Section 2(1)(j) defines ?invention? to mean, ?a new product or ..., but the new product in chemicals and especially pharmaceuticals may not necessarily mean something altogether new or completely unfamiliar or strange or not existing before. It may mean something "different from a recent previous" or "one regarded as better than what went before" or "in addition to another or others of the same kind [The New Oxford Dictionary of English, Edn. 1998.] . (Emphasis supplied)
Section 3(c), the High Court said, had to be interpreted as it stood. The word "mere" would apply both to the first part, i.e. – discovery of a scientific principle or the formulation of an abstract theory as well as to the second part, i.e. – discovery of any living thing or non-living substances occurring in nature. Therefore, only the mere discovery of a living thing, or non-living substance occurring in nature would fall within the second part of Section 3(c).
In the present case, the appellant was not seeking to merely patent wood vinegar obtained from the Rhizophora apiculata. The claim involved adding 18-22% wood vinegar to the personal care formulation, which was free from any pungent constituents as well as was capable of eradicating harmful bacteria even while preserving beneficial lactic acid bacteria.
Additionally, the expression "new product or process" in Section 2(1)(j) included, as per Novartis AG, not merely "something altogether new or completely unfamiliar or strange or not existing before" but also "something 'different from a recent previous' or 'one regarded as better than what went before' or 'in addition to another or others of the same kind'. The interpretation advocated by the Supreme Court was expansive, rather than restrictive.
The High Court further noted that the patent application contained no categorical admission that other earlier preparations of wood vinegars, as added to skin care preparations, conferred antimicrobial properties. Therefore, the Controller's argument that the application was inherently defective because it made no comparisons with other wood vinegars, was not acceptable. None of the cited documents disclosed the claimed invention. The Controller also did not contradict the Applicant's submissions on the cited documents.
According to the High Court, the Controller's order had failed to recognize the inherent inventive step involved in:
(i) identifying the wood vinegar obtained from the Rhizophora apiculata as being free of guaiacol and, therefore, suitable for addition of skin care cosmetics; and
(ii) working out the composition of 18-22% as the appropriate strength of the wood vinegar (as added to the skin care preparations) which would contain optimum antimicrobial properties and do away with harmful bacteria even while preserving beneficial lactic acid bacteria.
The High Court thus concluded that the disclosures in the application submitted by the appellant were, ex facie, sufficient to support the claims, the scope of which the impugned order misconstrues; and the Controller's order was set aside.
Conclusion
The Delhi High Court has followed the expansive interpretation recommended by the Supreme Court in Novartis A. Whether the Controller will follow suit in its future decisions, or whether it will prefer to err on the side of caution and choose to refuse applications that rely, to some degree, on naturally occurring substances or properties of substances, is a matter to be seen in practice.
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