Dimminaco AG v Controller of Patents and Designs (2002)

Summary

The appeal was “filed against the decision dated 27th December 1999 passed by the Assistant Controller of Patents and Designs under section 15 of P.A.” (“Patent Act, 1970”) (p 258), and “the said Patent Application filed by the appellant involved, according to the appellant, an invention relating to a process for preparation of infectious Bursitis Vaccine.” (p 258) “On such official examination, the Examiner gave a finding that what is claimed in the said Patent Application does not constitute an invention under section 2(i)(j) of P.A.” (p 258) The Assistant Controller “held that the process for preparation of the said vaccine which has living entity cannot be considered a manufacture” and “further held that a vaccine with living organism cannot be considered a substance.” (p 259)

The Court held that “the word manufacture has not been defined, in the Act” and that “the dictionary meaning of this word or the meaning attributed to in the particular trade or business must be accepted if the end product is a commercial entity.” (p 268) “It is also admitted that there is no statutory bar to accept a manner of manufacture as patentable even if the end-product contains a living organism.” (p 268) It concluded “that the controller erred himself in law by holding that merely because the end product contains a live virus, the process involved in bringing out the end product is not an invention” and that, as “the claim process for patent leads to a vendible product, it is certainly a substance after going through the process of manufacture.” (p 269) “In that view of the matter and for the discussions aforesaid, this Court quashes the impugned order of the Controller dated 27th December 1999. The appeal is thus allowed.” (p 270)

What the court decided

1. Examination as an adjudicatory process. “this court finds that the examination of the application for patent by the Examiner involves certain adjudicatory process.” Of the clauses of section 12 the Court held “Therefore, section 12 has a direct nexus with section 13. Thus sections 12 and 13 both constitute the Code for examination of the application.” (p 260)
2. The Examiner’s report. “From the impugned report of the Examiner in this case, it does not appear that there has been any investigation made under section 13 of P.A.” (“Patent Act, 1970”) “Apart from that, the main finding of the said Examiner is that the claimed specification does not constitute an invention. The reason for such finding has not been given.” (p 260)
3. A reasoned order. “It appears that while giving his report, the said Examiner has to act in a quasi-judicial manner and it is well settled as a proposition of law that when an authority, acting in a quasi-judicial manner, passes an order which affects the right of the parties such order should be a reasoned order.” (p 260)
4. Grants with living end products. “It is, therefore, clear from the aforesaid stand of the respondents that the patent applications have been granted in respect of some cases where even the end-product contains living substance.” (p 266) Of specification No. 183034, “From the aforesaid excerpts, it is clear that lyophilizing cells have been placed on the same footing with freshly grown living cells. Therefore, the presence of the living organism in the end-product of the claim process is not ruled out.” (p 267) Of specification No. 183035, “Therefore, the end-product contains living organism.” (p 268)
5. The meaning of manufacture. “It is an admitted position that the word manufacture has not been defined, in the Act. In such a situation since the word manufacture has not been defined the dictionary meaning of this word or the meaning attributed to in the particular trade or business must be accepted if the end product is a commercial entity.” (p 268)
6. A living end product. “It is also admitted that there is no statutory bar to accept a manner of manufacture as patentable even if the end-product contains a living organism. It is of course, true whether a claim for grant of patent is an invention or not, has to be decided in the facts of each case. A new and useful are or process is an invention.” (p 268)
7. The vaccine process. “In the instant case, the novel process claimed in the patent application in its original version and amended version is a new process for preparation of vaccine involving chemical steps under specific scientific conditions. The said vaccine is useful for protecting poultry against contagious bursitis infection. Therefore, it is a new process and such process is apparently patentable under section 5 read with section 2(1)(1) of P.A., Therefore, where the end-product is a new article, the process leading to its manufacture is an invention.” (p 268)
8. The vendibility test. “Judged in this context, the expression manner of manufacture is of special significance. To decide whether in a particular case, the process of manufacture involved in the invention ought to be patented or not, one of the most common test is the vendibility test. The said vendibility test is satisfied if the invention results in the production of some vendible item or it improves or restores former conditions of a vendible item or its effect is the preservation and prevention form deterioration of some vendible product. In other words, a vendible product means something which can be passed on from one man to another upon the transactions of purchase and sale.” (p 268)
9. The Controller’s error of law. “Therefore, this Court is of the view that the controller erred himself in law by holding that merely because the end product contains a live virus, the process involved in bringing out the end product is not an invention, The dictionary meaning of the word manufacture does not exclude the process of preparing a vendible commodity which contains a living substance and in a case like this where there is no statutory meaning of manufacture, the dictionary must be accepted.” (p 269)
10. Section 3. “This court also finds that in the instant case, the appellant’s claim for patent should have to be considered by the controller on the principle of Section 3 of P.A. No objection has been taken by the examiner under section 3 of the P.A.” (p 269)
11. The end product as a substance. “This Court also find that the order passed by the controller that the claim process does not lead to the manufacture of a substance also cannot be accepted. Since the claim process for patent leads to a vendible product, it is certainly a substance after going through the process of manufacture.” The Court referred to Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries (1978), “reported in AIR 1982 SC 1444”, where “the learned judges of the Supreme Court held that patent is granted only for an invention which must be new and useful, which means it must have novelty and utility.” (p 269)
12. Manufacture in R v Wheeler. “In para 22 of the same judgment the learned judges also held that the law relating to patentable invention prevailing in Britain and the patent law in India is substantially the same. Keeping the aforesaid principle in mind, the court is of the opinion that the word manufacture which has been explained by the Chief Justice Abbott in R. vs. Wheeler should have been accepted by the Controller.” From R v Wheeler the Court set out “the word manufacture has been generally understood to denote either a thing made which is useful for its own shake, and vendible as such” and held “The Controller by rejecting the application for patent by the appellant’s firm on the ground that it cannot called a manner of manufacture because it involves a living virus in the end-product has not acted on correct principles.” (p 269)
13. Lyophilization. Of the respondent’s stand “that by the process of lyophilizing the living cells will be killed”, the Court held “However, the said explanation cannot be accepted by the Court. Even the dictionary meaning on which the respondent relied, shows that lyophilizing is meant for drying of materials in the frozen state. The same, is therefore, a preservation technique and by lyophilizing nothing is killed and destroyed.” and “In fact, freeze drying does not kill the mirco-organizm activity. On the other hand, the same is the best method to preserve the bacterial cultures.” (p 270)
14. Obiter. Revocation of the earlier grants. Of the submission that “the Controller would initiate steps for revocation of the aforesaid grants of patent”, the Court held “In fact, the said stand is contrary to law. The revocation of grant of patent is governed under section 64 of P.A. Under the said section such revocation procedure can only be initiated on the petition of any person interested or on the basis of petition by the Central Government or on a counter-claim in a suit for infringement of the patent.” and “There is nothing to show that any such step has been taken. Therefore, this submission is not acceptable to Court.” (p 270)
15. Procedure. Directions on remand. “The patent application of the petitioner No. 135/Cal/98 is to be reconsidered for the grant of patent by the authority concerned as early as possible but, certainly not latter than two months from the date of production or service of this judgment on them. Such consideration must be made in the light of the observations made in this judgment and after hearing the parties.” (p 270) “There will be no order as to costs.” and “Prayer for stay of operation of the judgment and order is considered and rejected.” (p 271)

Subsequent treatment

Distinguished in Yahoo v Assistant Controller of Patents and Designs (2011), where, the appellant having cited Dimminaco with patents granted to others, the Intellectual Property Appellate Board held “However, it cannot be disputed that there should be a uniform practice, when similar inventions come up for grant of patent.” and “But we cannot allow this appeal, ignoring the patentability bar merely because it is alleged that in other cases erroneous decisions have been issued.” (para 50)