The Subject Matter Appeal has been filed against order dated 29.12.2021 passed
by the Controller of Patents and Designs, Patent , refusing the Patent
Application of the Appellant.
The Appellant is the Applicant for the Patent while the Respondent is the
controller of the Patent which has passed the Order of refusal.
The Patent Application:
On 29.10.2018, the Appellant filed patent application No.201817040811 for an
invention title "Composition for use in the Prophylaxis of Allergic Disease
claiming priority date from European Patent Application, i.e., EP16172431.5
dated 1st June, 2016.
The Reason For Refusal Of The Patent Application:
- The Patent Application is a method for treatment of the human body‟ and
hence barred under the provisions of Section 3(i) of the Patent Act.
- The amendments sought were not permissible as they were enlarging the scope of
invention, hence barred under Section 59 of the Act.
- In the complete specification, there is insufficient data, hence barred under
2(1)(ja) and Section 3(e) of the Act.
The subject matter Patent Application was ordered to proceed for grant.
The Observation Of The Court:
- The subject matter claims of the Patent Application was not a method for
treatment of the human body but rather it was directed towards a composition
comprising DGLA, EPA and DHA.
- The Ld. Controller was wrong in observing that the subject matter Patent
Application is barred under Section 3 (i) of the Patent Act. As the subject
matter Patent Application is not directed towards a method or process for
prophylactic treatment, the provision of Section 3 (i) of the Act is not
- At the time of hearing, the claim 1 of the subject matter Patent is
mainly focused on the composition. The relevant portion of claim 1 of the
subject matter Patent was:
- A composition comprising DGLA for use in the prophylaxis of allergic
disease in an offspring of a mammalian subject, comprising administration of
the composition to said subject pre-pregnancy and/or during pregnancy and/or
during lactation and preferably wherein said composition is a composition
enriched in DGLA wherein said composition also contains an omega-3
polyunsaturated fatty acid, selected from the group consisting of DHA and
EPA or a combination of DHA and EPA....".
It is apparent that claim 1 of the subject matter Patent was directed towards
the composition comprising of DGLA , DHA and EPA. It was not focused on the
method of treatment, rather it was focused on a composition comprising of DGLA ,
DHA and EPA which is used in relation to of allergic disease in an offspring of
a mammalian subject.
- The Applicant's application for amendment was enlarging the scope of
claim , hence it was not allowed. However, the question was this, whether
the applicant should be allowed to resort the originally filed Claim.
- The Court observed that the Appeal is a continuation of the proceedings
of the original court. Hence, the Single Judge is fully entitled to allow
the amendments under Section 15 of the Act. Accordingly, the originally
filed claim was held not to be barred under the provision of Section 3 (i) of the Act.
- The Court also rejected the argument of the controller regarding inefficiency
of data as , according to the Hon'ble High Court of Delhi, there was sufficient
data in the complete specification of the Patent Application.
- For evaluating the inventive steps, the Hon'ble Single Judge followed the 5
layers of test of this as laid down in F. Hoffmann-La Roche Ltd. and Ors. Vs.
Cipla Ltd., 2016(65) PTC 1 (Del). These tests are as:
Step No.1 To identify an ordinary person skilled in art.
Step No.2 To identify the inventive concept embodied in the patent.
Step No.3 To impute to a normal skilled but unimaginative ordinary person
skilled in the art what was common general knowledge in the art at the priority
Step No.4 To identify the differences, if any, between the matter cited and the
alleged invention and ascertain whether the differences are ordinary application
of law or involve various different steps requiring multiple, theoretical and
Step No.5 To decide whether those differences, viewed in the knowledge of an
alleged invention, constitute steps which would have been obvious to the
ordinary person skilled in the art and rule out a hindside approach.
- Another fact for evaluating the inventive steps as laid down in Avery
Dennison Corporation v. Controller of Patents and Designs, 202/DHC/004697 is the
time gap between the prior art document and the invention under consideration.
If a long time has passed since the prior art was published and a simple change
resulted in unpredictable advantages which no one had thought of for a long
time, the Court would tilt in favour of holding that the invention is not
- In the present case, the closest prior art cited was 20 years old, hence
it is a clear indicator that the subject matter patent is non obvious.
- It is submitted that the idea behind this concept is that there has been
a long gap between the prior art and the patent application. By passage of
time , there has been technical advancement , still inventive steps have not
been envisaged by the field. Hence, the law says, the older a prior art is,
the less amount of inventiveness is required. Hence, the wide gap of prior
art is directly proportional to the inventiveness of patents.
Case Law Discussed:
- To attract the provision of Section 3 (i) of the Patent Act, a composition
for treatment of the human body is not enough. To attract the provision of
Section 3 (i) of the Act, a method for prophylactic treatment is required to be
- In the subject matter case, the Patent was focused on composition , used for
treatment and not on the method of treatment. Hence the same was held not be
barred under the provisions of Section 3 (i) of the Act.
- Appeal is a continuation of the proceedings of the original court.
- While evaluating the patent application on the parameter of lacking
inventive step, the relevant criteria is how long the time gap between the
subject matter patent application and the prior art. If the time gap is
longer, then even less amount of enhancement may result into inventive step.
- The long gap of prior art is directly proportional to a Patent
Application being non obvious.
Case Title: Societe Des Produits Nestle SA Vs The Controller of Patent
Judgment date: 03.02.2023
Neutral Citation No. 2023/DHC/000774
Case No: C.A. (COMM.IPD-PAT) 22/2022
Name of Court: High Court of Delhi
Name of Hon'ble Justice: Amit Bansal, H.J.
This information is being shared in the public interest. It should not be
treated as a substitute for legal advice as there may be possibility of error in
perception, presentation and interpretation of facts and the law involved
Written By: Ajay Amitabh Suman, IPR Advocate,
Hon'ble High Court of
Email: [email protected]
, Ph No: 9990389539