Patenting Lal dant manjan


The Association of Manufacturers of Ayurvedic Medicines (Amam), which represents 200 companies including Dabur, Himalaya, Hamdard and Baidyanath, has accused the American personal care giant, Colgate, for patenting red dental herbifice or Lal dant manjan, as it is familiar to us. Economic Times reports that the association sought governmental intervention for revoking the US patent and initiating necessary measures wherever Colgate has applied or been granted patent. The issue acquires significance in the light of growing concerns pertaining to biopiracy and Indian kurukshetra against neem and turmeric patents which finally led to their revocation abroad. ET reports that the patent application which was filed in India way-back in 2005 is yet to be decided. Contrary to ET report, it may be clarified that Colgate did not claim patent for ‘lal dant manjan’ per se. On the other hand, it claimed patent for the modified ‘lal dant manjan’. It must, however, be noted that the composition is largely similar to that of our well-known ‘lal dant manjan’ which forms part of our traditional knowledge.

Analysis of patent claim (US Patent no. US 7, 736,629 B2)

Colgate’s claim is set in the light of the need for an “invention which provides a red-coloured tooth powder having an aesthetic appeal to customers but does not exhibit the harsh abrasiveness found in many conventional red coloured toothpowders”. It must be noted that the composition of Colgate’s invention is largely similar to that of the ordinary ‘lal dant manjan’ Technically, the invention comprises of (a) calcium carbonate of desired size and angularity which imparts mild abrasiveness to dental enamel and (b) highly purified natural red iron oxide of low abrasiveness. In essence, when compared with other oral dentifrices, it is less abrasive. Interestingly, the patent claim compared itself with other oral dentifrices including Dabur India’s ‘lal dant manjan’!! Thus, as I stated earlier, it is incorrect to state, at least at a prima facie level, that ‘lal dant manjan’ per se was patented. The focus should be on whether the modified ‘lal dant manjan’ deserves patent. I shall argue that the grievances are justified and the instant patent should be revoked and application before Indian Patent Office be rejected.

Any invention should satisfy the following:

a)    Novelty

Novelty is of three standards:

Absolute novelty: Any act which makes an invention available to the public, no matter where in the world, before the filing date or priority date forms part of ‘state of the art’. Such acts include written publications, sales, public oral disclosures and public demonstrations or use. Eg. India, UK.

It should be shown that the claimed invention is quantitatively different from what has been disclosed previously; i.e the technical information disclosed by the patent is not already available to the public. In effect, one has to prove that the claimed invention is not traditional knowledge or an aggregation / duplication of known properties of traditionally known components (S. 3(p) of Patents Act). This has to be judged against all the information which is available at the priority date of the invention; irrespective of where the information was released or the form that it was released in. 

Relative novelty: As per this standard, publication and not the use of that invention outside the country in which protection is sought forms part of ‘state of the art’. Eg. US ( 35 U.S.C. 102)

Local novelty: Any public use or publication of the invention before the priority date will not destroy novelty unless the use or the publication occurs in the country. Eg. New Zealand

As I have stated earlier, the composition of modified ‘lal dant manjan’ is largely similar to that of ordinary ‘lal dant manjan’ which is documented. Further, as discussed subsequently, correlation between particle size and abrasiveness which forms the essence of the invention is documented. However, it must not be forgotten that Colgate is not, at least at a prima facie level, trying to patent the well-known ‘lal dant manjan’. Thus, whether the invention is novel or not can be conclusively determined only by a ‘prior art search’. Assuming the novelty of the instant invention, I shall explain the lack of inventive step in it.

b) Inventive step

As per the Windsurfer decision, analysis of inventive step must begin by identifying the inventive concept embodied in the patent. The differences which exist between the cited prior art and the alleged invention must then be identified. Finally, viewed without any knowledge of the alleged invention, those differences must constitute steps which would have been non-obvious to the skilled man. In M/s Bishwanath Prasad Radhey Shyam v. M/s Hindustan Metal Industries (AIR 1982 SC 1444), Supreme Court held as follows: “It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an inventive step.”

As stated earlier, the crux of the instant invention lies in its low abrasiveness which is linked to the particle size of calcium carbonate and red iron oxide. However, this correlation between particle size and abrasiveness is a well-known fact. It was discussed by M.L. Smith in “The Influence of Particle Size, Shape, Aggregation and Harness on the Abrasiveness of Fine Powders”,  J Soc Chem Ind 54:269, 1935 ( This has been mentioned in “Laboratory studies concerning the enamel and dentin abrasion properties of common dentifrice polishing agent” by George K. Stooney and Joseph C. Muhler here ) The author observed that the abrasiveness of calcium carbonate on dentin increased linearly with increasing particle size. In other words, abrasiveness is directly proportional to the particle size. Considering this fact, the difference which exists between the cited prior art and the instant invention viz., difference in abrasiveness, is a “workshop improvement” and obvious to a person skilled in the art (PHOSITA) resulting in lack of inventive step.  Considering this aspect, the instant patent should be opposed in USPTO and the patent application before Indian Patent Office be rejected without any further delay.

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

3 comments.

  1. AvatarK.MUTHU SELVAM

    Main aim of TKDL is to prevent Bio-piracy. Based on the TKDL some of the patents filed in USPTO and EPO were rejected and others were withdrawn by the applicants themselves. While so, I wonder how “Lal Dant Manjan ” has escaped from the contents of TKDL. I suspect it may be an overstepping action of Examiner and other authorities of USPTO.

    Given below are some of the patent applications which were rejected and applications were withdrawn.

    PISTACHIO – For Anti-Cancer Drug
    MELON – For Anti-vitilgo Cream

    11 applications were withdrawn:-

    BENGAL GRAM – For treating obesity and diabetes.
    NEEM, ALOE VERA, DALCHINI – For treating Diabetes
    TURMERIC, JEERA, GINGER, ONION – For slimming agents
    ARJUNA – For Anti-aging and anit-wrinkle agent
    GRAPE & APPLE JUICE – As Cardio tonics
    OPIUM,SPINACH & FENUGREEK – Immuno-modulator agents
    ASHWANGANDHA – For treating stress, sleeplessness and
    Anxiety.
    BRAHMI, TEA LEAVES, ASHWAGANDHA
    & TURMERIC – Anti-aging and anti-inflammatory
    agents

    Even India, based on TKDL, thwarted china’s attempt to patent the use of medicinal plants pudina (mint) and kalamegha (Andrographis) for the treatment of H5N1 Avian Influenza or Bird Flu.

    I think this is a crucial time India needs to analyse and come to a conclusion on this issue at the earliest.
    K.MUTHU SELVAM
    ADVOCATE

    Reply
  2. AvatarRajiv Kr. Choudhry

    The Indian TKDL library (in the manner it is provided) is made available to the examiners at the USPTO. The file history of this patent does not show that the TKDL was seen by the Examiner.
    However, the availability of the TKDL to US/EPO is very recent-it was done late last year and therefore the Examiner may not have known about it.

    Further, the inventors are both from India-they must have known about products like Dabur-lal dant manjan and the like…They have an affirmative duty to disclose the prior art to the Patent office. They failed in that.

    Then what remains is the novelty of the invention (claimed composition) over the relevant art (like Daburs products).

    If this patent undergoes re-exam at the USPTO, it is likely that it may be invalidated on the ground of new art made available to the Examiner.

    Reply
  3. AvatarMathews P. George

    As I stated in the post, the invention has been compared with Dabur’s ‘lal dant manjan’. Thus, it is incorrect to state that the prior art was not disclosed.

    W/r the invention is novel or not can be conclusively determined only after a prior art search. Note that the determination of novelty is a quantitative analysis and not a qualitative analysis as in the case of inventive step.

    Reply

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