The Madras High Court, in a decision dated March 19, 2024, set aside a patent refusal order issued by the Assistant Controller of Patents and Designs in the case of a patent application filed by Novozymes A/S. This post summarizes the decision of the court in this case.
Background/Facts
Novozymes filed a patent application titled “Enzyme Granules for Animal Feed” (Application Number 650/CHENP/2009) before the Indian Patent Office on 4th February 2009. The invention pertained to a process for preparing granules containing a core with enzyme and a zinc organic salt, aimed at enhancing enzyme stabilization in animal feed.
In the first examination report (FER), the Patent Office raised objections that the claims of the application do not qualify as an invention under Section 2(1)(j) of the Patents Act and that they are non-patentable under Sections 3(d) and (e) of the Patents Act, 1970. In response, Novozymes submitted an amended set of 15 claims by deleting certain original claims. Following the conclusion of the hearing, Novozymes further refined their submission, presenting a revised set of 7 claims. Despite recognizing the novelty of claims 1 – 6, the Controller maintained that Claim 7 lacked novelty and asserted that all claims lacked inventive step based on prior art references D8 and D9. Additionally, claim 6 was deemed non-patentable under Section 3(d). Consequently, the application was rejected vide the impugned order dated February 28, 2017.
Novozymes contested this rejection, asserting that the Controller made grave errors in assessing the inventive step and in applying Section 3(d) as grounds for the rejection.
Amended Independent Claims of the Application
“1. A process of preparing granules, comprising the steps of:
a) preparing a core comprising a zinc salt of an organic acid and an enzyme
b) coating the core with a coating material
6. A granule suitable for feed comprising an enzyme and a zinc salt of an organic acid as obtained by the process as claimed in claims 1 – 5.
7. A method for manufacturing a feed composition comprising the steps of:
i) mixing feed components with any of the granules comprising a mixture of an enzyme and zinc salt of an organic acid.
ii) steam treating said composition (i), and
iii) pelleting said composition (ii)”
Court’s Findings
The Court identified the problem addressed by the invention as enhancing pellet stability in animal feeds by incorporating an organic zinc salt together with the enzyme in the pellet core. Analyzing prior art, the Court differentiated between the solutions offered by D8 and D9 and the claimed invention. The Court observed that while D8 addressed enzyme stability during steam treatment by coating the core containing the enzyme with salt, it did not suggest the specific benefits of using a zinc salt of organic acid, unlike Novozymes’ invention. The Court also noted that when working with feed for animals it is important that the materials used in the granule have a certain purity and the zinc salt of organic acid is food grade. Similarly, D9 focused on different problems, thus failing to render Novozymes’ invention obvious.
The Court also pointed out that the impugned order does not contain any discussion as to how and why a person skilled in the art would select a zinc salt of an organic acid, in order to address the problem of enzyme stabilization. It emphasized that arriving at the claimed invention solely on the basis of prior art D8 without the benefit of hindsight would be implausible.
The Court further clarified that Section 3(d) is not applicable to claim 6, given that the Controller had already acknowledged the novelty of claims 1 to 6. Additionally, the Court suggested that an amendment to Claim 7, as provided below, may enhance specificity and narrow down the scope of the claim:
“7. A method for manufacturing a feed composition consisting of all the following steps:
i) mixing feed components with any of the granules of claim 6 comprising a mixture of an enzyme and zinc salt of an organic acid as claimed in claims 1-5,
ii) steam treating said composition (i), and
iii) pelleting said composition (ii)”
Conclusion
In light of these critical observations, the Madras High Court overturned the refusal order affirming that the claimed invention qualifies as patentable subject matter, is novel, and involves an inventive step. The Court also directed the Controller to grant the patent. This decision underscores the importance of comprehensive examination and reasoned decision-making by the patent office.
Authored by Ms. Neetha Mohan, Patents Team
Citation: Novozymes A/S & Assistant Controller of Patents and Designs, Madras High Court, 19th March, 2024, (T)CMA(PT) No.92 of 2023
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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