Societe Des Produits Nestle SA v Controller of Patents and Design (2023)

Summary

“The present appeal under Section 117A of the Patents Act, 1970” “impugns the order dated 29th December, 2021 passed by the Assistant Controller of Patents and Designs, Patent Office, Delhi” “refusing the application for grant of patent application No.201817040811 for an invention title ‘Composition for use in the Prophylaxis of Allergic Disease’.” (para 1) The impugned order held that the claims “defined a method for ’treatment of human body’” under “Section 3(i) of the Act”, that “The amended Claims filed by the appellant were not permissible in terms of Section 59 of the Act”, and that the data “was not demonstrating stabilized synergism” under “Section 2(1)(ja) and Section 3(e) of the Act” (para 4).

The Court concluded “that the subject Patent Application is not directed towards a method or process for prophylactic treatment” (para 18). It held that “if the High Court, in appeal is considering the issue of grant of patent, it should necessarily have the same powers as given to the Controller under Section 15 of the Act, which includes power to require amendment” (para 39), and allowed the appellant to revert to “the previously filed Claim” (para 40). It set aside the objection “under Section 3(e) of the Act” (para 50) and found that “the subject Patent Application satisfies the criteria of inventive step” (para 66). “The subject Patent Application shall accordingly proceed for grant. The appeal is allowed, with no order as to costs.” (para 67)

What the court decided

1. The reach of Section 3(i). “Section 3(i) of the Act covers within its scope any process for the prophylactic treatment of human beings to render them free of disease or to increase their economic value. Therefore, any claim directed towards a process for the prophylaxis or prophylactic treatment are not patentable as per the Act.” (para 11)
2. A composition defined by its use. “In my view, the subject Claims are directed towards a composition, comprising DGLA” (“dihomo-γ-linolinic acid”) “, EPA and DHA.” (para 16) “The expression ‘composition comprising DGLA directed towards treatment’ was used only for defining the composition and not directed towards a method of treatment.” (para 17) “I conclude that the subject Patent Application is not directed towards a method or process for prophylactic treatment.” (paras 16–18)
3. The amendment below. “While amending the Claims, the original scope of the Claims stood expanded and the protection claimed was enhanced, as instead of being a purpose-related Claim, it became a general Claim over the composition.” (para 26)
4. No bar to amendment on appeal. “There is no provision in the Act, which specifically bars the amendment of a patent specification at the appellate stage.” (para 30) “Only requirement under the Act is that the amendment has to fulfil the requirements under Section 59 of the Act and the consideration that has to be kept in mind is that the amended Claims are not inconsistent with the earlier Claims in the original specification.” (paras 30, 33)
5. Appellate powers under Section 15. “It is axiomatic that if the Controller has been given the power to direct an amendment to the patent application, the High Court, which is sitting in appeal over the decision of the Controller, should also have similar powers to direct the patent applicant to amend Claims to its satisfaction.” (para 35) “Further, it is a settled position of law that an appeal is a continuation of the proceedings of the original court. The appellate jurisdiction involves a re-hearing on law as well as on facts.” (para 36) “Further, the appellate proceedings challenging the refusal of grant of a patent, questions of facts need to be re-examined comprehensively and therefore, a liberal view has to be taken with regard to amendment of Claims.” (paras 35, 36, 39)
6. Reverting to the earlier claims. “In the present case, since the appellant is resorting back to the previously filed Claim, the same is fully covered under Section 59 of the Act. Taking into account the fact that the objection due to which the amendment was pursued has itself been set aside, it would be in the interest of justice to allow the amendment at the appellate stage.” (para 40)
7. The purpose-limited claim and Section 3(i). “In respect of Claim 1, the appellants have resorted back to the composition being a purpose-limited claim.” The Court held that “the aforesaid Claim is not covered under Section 3(i) of the Act as it does not bar patentability of compositions being used in the treatment or prophylaxis of a disease.” (para 42)
8. Data of synergy under Section 3(e). “A perusal of the material on record would show that the appellant has provided extensive experimental data in the specification supported by examples as well as drawings showing the synergistic effect when compared to the individual.” (para 44) “Sufficient data has been provided by the appellant comparing the individual components namely, DGLA-60, NIF 2.14 and control group and their efficacy with that of the claimed composition. Therefore, the objection taken by the Patent Office under Section 3(e) of the Act is not sustainable and the same is set aside.” (paras 44, 50)
9. The test at the appellate stage. Applying the five steps laid down by “The Division Bench of this Court in F. Hoffmann-La Roche Ltd. and Ors. v. Cipla Ltd., 2016(65) PTC 1 (Del)” (para 54), see Cipla v F Hoffmann-La Roche (2015), the Court said: “In line with the steps listed above, at the appellate stage, for determining inventive step, I shall start at Step 4 and identify the differences between the prior arts identified by the Controller.” (paras 54–55)
10. A document that teaches away. “Given that D2 is aimed towards an entirely different purpose i.e., for combating dyslexia and inadequate night vision, I observe that D2 actually teaches away from the invention.” (para 59) “Therefore, D1 is the closest prior art and given that D2 is actually teaching away from the invention, there would not be any benefit in combining the teachings of both the prior arts.” (paras 59–60)
11. The age of the prior art. “The prior arts cited are more than 20 years older than the subject Patent Application. Therefore, in my view, when the subject matter of the patent application is showing technical advancement over the cited prior arts, and when the cited prior arts are considerably old, it is a clear indicator of non-obviousness.” (para 64)
12. The corresponding European grant. “It is pertinent to note that the prior arts cited by the Indian Patent Office are the same as that were cited by the European Patent Office” (“EPO”) “when the corresponding European” “patent application was being prosecuted.” “This, in my view, would also be a persuasive argument in support of the grant of the Indian Patent Application, especially when the same prior art has been cited.” (para 65)
13. Disposition. “Accordingly, the subject Patent Application satisfies the criteria of inventive step as the inventive concept of the subject patent application is a technical advancement over the prior art and is not obvious to a person skilled in the art.” (para 66) “The subject Patent Application shall accordingly proceed for grant. The appeal is allowed, with no order as to costs.” (paras 66–67)

Subsequent treatment

• Followed — In OpenTV v Controller of Patents and Designs (2023) the Delhi High Court (Prathiba M. Singh J) relied on this judgment, at paras 51–52, in holding that claims may be amended at the appellate stage.
• Followed — In Syngenta Crop Protection v Assistant Controller of Patents (2024) the Delhi High Court (Amit Bansal J) reproduced paras 30, 33, 35 and 39 and allowed an amendment at the appellate stage (para 12); and in EMD Millipore v Assistant Controller of Patents and Designs (2025) the Delhi High Court (Prathiba M. Singh J) relied on it at paras 51–52.
• Followed — In Bayer Pharm Aktiengesellschaft v Controller General of Patents and Designs (2024) the Delhi High Court recorded the appellant’s reliance on this judgment, “where, in a similar situation, the Court referenced the Manual of Patent Office, Practice and Procedure”, and held: “In the present case as well, the claim 1, as defined, in the opinion of the Court, does not render the application to be non-patentable.” (para 9)

No further appeal traced as of 17 October 2026.