India: High Court interprets Section 3(d) of the Patent Act to clarify the scope of patentability of known substances.

In an order dated March 10, 2023 in the case of Tapas Chatterjee v. Deputy Controller of Patents (C.A.(COMM.IPD-PAT) 18/2022 & I.A.3580 /2022) In the Delhi High Court (hereinafter referred to as "the Court"), the decision of the Controller was affirmed and a detailed analysis of the novelty and patentability of the claimed subject matter under Section 3(d) of the Indian Patent Act (hereinafter referred to as "the Act") was conducted.

In the current appeal, Tapas Chatterjee (hereinafter referred to as 'the Applicant') challenges the impugned decision of the Deputy Controller of Patents (hereinafter referred to as 'the Respondent') refusing to grant the Applicant's application 201911036748 on 'Recovery of Potassium Sulphate and other valuable products from wasted water leading to a total water recycling system' under Sections 3(d) and 2(1)(ja)''Law.

The Appellant challenges the impugned decision, pointing out that the Patent Office has taken an indecipherable decision without considering any of the objections raised by the Appellant. Referring to the Court's decision in DS Biopharma v. Controller (C.A. (COMM.IPD-PAT) 6/2021 & I.A. 12828/2021), the Applicant submitted that the Respondents failed to identify a reference process which could be considered as a "known" or "old process" and had no basis to respond in view of any prior known process as applicable to the hurdle of Section 3(d) of the Act.

The Petitioner argues that because the Respondent has recognized the novelty of the claimed invention, the process does not fall within the hurdle of Section 3(d) of the Act and, therefore, there is no need to include a new reagent or''ingredient.

The Applicant also emphasized that the claimed invention includes a new step of "thermal decomposition" with re-fractionation, which has the novel result of providing vast quantities of pure commercially usable potassium sulfate and water that can be recycled and reused. Further, Applicant argued that the subject invention cannot be used as a blueprint for comparison with known materials, otherwise it would be an analysis based on known information. The previously known materials, D1 and D2, give two different processes which cannot be combined. The case of Avery Dennision Corporation v. Controller of Patents and Designs (C.A. (COMM.IPD-PAT) 29/2021) was cited in this regard.

In respect of''s rejection under Section 3(d) of the Act, the Respondents argued as follows: The process in the subject application does not involve a new reagent and does not result in a new product. The applicant failed to prove a technical leap or economic significance of the invention because of the lack of experimentation in the subject application.

On the rejection under Section 2(1)(ja) of the Act, the Respondent stated the following: The subject invention is not different from the teachings set out in D2. Merely because the Applicant uses a thermal decomposition process to decompose a single compound into two or more new compounds, it will not result in a technical advancement in accordance with the earlier teachings. The claimed process does not result in the formation of a new''product, and the end product in all of the D1-D4 pre-known documents is the same - potassium sulfate.

The court's analysis and findings. The Court pointed out that the claimed process in patent claims 1-11 of the subject application fell within the limitations of Section 3(d) as a mere use of known processes that were already disclosed in prior art documents D1 and D2.

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Under Section 3(d) of the Act, the Court clarified that "a patent may be granted with respect to a '\'known process'\' only if such a '\'known process'\' produces a new product or utilizes at least one new reagent. There is a significant difference between the terms "discovery of a new form of a known substance" and "mere utilization'of a known process'. Where a new form of a known substance is discovered, a patent can be granted only if that new form results in an improvement in the known efficacy of the substance, whereas there is no such provision for known processes." The Court agreed with Defendants that the subject application does not result in a new product, and the end product in all prior art documents as well as the subject application is the same - potassium sulfate. The Court further explained that the only difference is that the process utilized by the Applicant is a total aqueous utilization process and the process described in the prior known materials is a wastewater discharge, which is still insufficient''to overcome Defendants' objections.

In relation to section 2(1)(ja), the Court discussed the five-step test for determining an inventive step expressed in F. Hoffmann-La Roche Ltd. v. Cipla Ltd, 2016 (65) PTC 1 (Del), with particular emphasis on steps 4 and 5: ".... Step No. 4: Determine the differences that exist between the material submitted (matter cited) and the claimed invention and whether these differences are a routine application of law or involve different steps requiring multiple theoretical and practical applications. Step No. 5: Decide whether these differences, considered in the light of the knowledge of the claimed invention, are steps that would be obvious to an ordinarily skilled person in the art and exclude them on the basis of hindsight'. 'approach)'".

The Court compared the claims of the subject application with D1 and D2 and noted that by combining the teachings of the preliminary D1 and D2 materials, a person skilled in the art would be able to arrive at the subject matter claimed in the subject application. Thus, the Court dismissed the appeal and held that the rejection decision was justified and the subject application did not constitute a technical advance.

The Court took a position on the application of Section 3(d) in patent proceedings, emphasizing the differences between known processes and known substances. Overall, the decision provides guidance to patent applicants and examiners in assessing the innovation and novelty characteristic of such patents.