Societe Des Produits Nestle SA v. The Controller of Patents and Design & Anr.

Relevant Acts and provisions

Patents Act, 1970

Section 2(1)(ja)Section 3(e)Section 3(i)Section 59

Provisions considered: Sections 3(e), 3(i) and 59 of the Patents Act, 1970, on the method-of-treatment exclusion, synergy and claim amendment.

Brief facts

Nestle's national phase application for a composition for prophylaxis of allergic disease was refused under Section 15 on the grounds that its claims fell within the method-of-treatment exclusion under Section 3(i), that a claim amendment made during prosecution impermissibly broadened the claims under Section 59, and that insufficient comparative data of synergistic effect was shown under Section 3(e).

Issues before the Court

1. Does a composition claim limited to prophylactic use fall within the Section 3(i) exclusion for methods of treatment?
2. Can the High Court permit an applicant, on appeal, to revert to an earlier claim abandoned only to meet an untenable objection?

Court's findings

The Court held that a composition claim drafted with reference to its therapeutic use is not thereby converted into a process of treatment within Section 3(i); the exclusion targets processes of treatment, not product or composition claims that are merely limited in purpose, so the Controller's Section 3(i) objection was untenable.

The Court held that since the claim amendment restricting the claims to a pure composition form had been made only to meet the unsustainable Section 3(i) objection, the appellant could properly revert to its earlier purpose-limited claim; the High Court in appeal has the same power as the Controller under Section 15 to permit amendment of claims, an appeal being a continuation of the original proceedings.

On synergy, the Court held that the appellant's data comparing the claimed composition against its individual components sufficiently demonstrated a synergistic effect, so the Section 3(e) objection could not be sustained, and it further found the invention satisfied the requirement of inventive step.

Decision

Appeal allowed; the refusal order was set aside and the application, on the appellant's reverted claims, was directed to proceed towards grant.

Cases cited

• Nippon A&L Inc. v. The Controller of Patents, 2022 SCC OnLine Del 1909

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Claim Amendment Inventive Step Patent Prosecution Section 3(i) Section 59 Synergy