In an order dated July 3, Justice KN Basha and Technical Member DPS Parmar allowed an appeal by the Council of Scientific and Industrial Research (CSIR) against Hindustan Unilever Ltd. regarding the former’s application for a patent on a novel iodising agent for table salt.
CSIR’s application, filed in 2004, covers both the iodising agent and the process for its preparation. HUL’s pre-grant opposition, filed in 2006, was met with a reply in 2010. In 2012, CSIR amended its application and reduced the number of claims from 11 to 7. After hearing the opposition, the Assistant Controller rejected the application in 2013, leading to the present appeal by CSIR.
At the outset, it’s important to note that this IPAB ruling was issued without hearing the respondent. In a letter dated Feb 14 2014, HUL unequivocally informed the IPAB that in the years since its initial opposition, it had changed its business strategy and no longer intended to contest the appeal. HUL’s stance can be summarised in the following line from its letter to the Registry: “You are…to dispose of the appeal on merits considering the fact that a bad patent should not be allowed to be granted when the invention is unmeritorious as that would be contrary to law and public interest.”
Thus, it’s entirely possible that the non-adversarial nature of the proceedings in this case could have influenced the decision of the IPAB. With this in mind, let us delve into the issues presented.
The order of the Assistant Controller rejected the application on the ground that it lacked an inventive step under S. 25(1)(e) of the Patents Act. On appeal, CSIR’s argument hinged on the following limbs:
First, the Assistant Controller ruled that a person skilled in the art would be able to vary a process disclosed elsewhere (most specifically in a South African patent) to obtain the optimum result shown in the claim. CSIR argued that there existed no literature that even suggested the possibility of such optimisation of the process in question. Thus, CSIR asserted that the claim was for a novel and inventive process, rather than mere optimisation of an already known process. Further, CSIR pointed to experimental results and other enhanced characteristics of the claimed iodising agent as compared to the product disclosed in the South African patent. These included higher iodate uptake, more uniform distribution of iodine, increased stability of the agent, and reduced preparation time. CSIR argued that all of these enhancements stemmed from its claimed process steps, such as the chosen particle size and concentration of hydrotalcite, temperature, and time period for ageing. CSIR seems to have filed extensive experimental results to demonstrate the drastically improved efficacy of its product as against the South African process, and this seems to have caught the bench’s attention.
Second, CSIR argued that the Assistant Controller’s order, holding that the use of a particular raw material (Pharma grade hydrotalcite) lent no inventive element, was incorrect to the extent that this determination did not take into account the properties that the specific particle size that the raw material lent to the finished product. CSIR asserted that the particle size of the hydrotalcite was crucial to the uniformity of iodine distribution and the loading of iodate in the agent.
The IPAB accepted both these claims, noting that the iodising agent and the process for its preparation were not anticipated by prior art, and that the improved efficacy of the agent due to CSIR’s claimed process was demonstrable as against the iodising agents produced by pre-disclosed processes. For these reasons, the IPAB directed the Assistant Controller to grant CSIR a patent over the claimed process and the iodising agent within two months of the order date.
This decision serves to sharpen the line between optimisation and invention. Per the bench in this case, a patent would issue if the applicant could demonstrate that a) the possibility of optimising the pre-disclosed process was not anticipated by the prior art; b) the product of the claimed process showed significantly enhanced efficacy as against the product of the pre-disclosed process; c) the claimed product owed its enhanced efficacy to the unique characteristics of the claimed process as against the pre-disclosed process.