In the case of M/s. The Zero Brand Zone Pvt. Ltd. and others (“Appellants”) v. The Controller of Patents & Designs and others (“Respondents”), the Madras High Court dismissed an appeal challenging the rejection of a patent application for an invention titled “Eco-friendly lamp made up of composition based on panchagavya with the combination of leaves used in traditional herbal medicine.” The Appellants in the case sought to overturn the order dated 12 March 2020, passed by the Assistant Controller of Patents, rejecting their patent application No. 201721043812 on grounds relating to Sections 3(d) and 3(p) and Inventive Step.
The Appellants argued in the case that their invention, a single-use lamp composed of cow-derived products and specific leaves, met the requirements relating to Section 3(p) that excludes traditional knowledge because their invention involved a novel application of traditional knowledge, integrating ingredients in unique proportions to create an eco-friendly, carbon-neutral lamp. They further argued that Section 3(d) was not applicable and that the invention met the requirements of novelty/inventive step. They contended that their invention was distinct and non-obvious in the light of cited prior arts (D1, D2, and D3) as the lamp with specific proportions of the ingredients were not disclosed in them.
In response, the respondents argued that the claimed invention was an aggregation of known properties of traditionally known components, thus falling under the exclusion criteria of Section 3(p) of the Patents Act. They maintained that all ingredients used in the claimed invention were part of traditional knowledge and, as such, did not qualify for patent protection. They also contended that the disclosures in the 3 prior arts made the invention claimed, obvious to a person skilled in the art.
In its analysis, the court first addressed the grounds for rejection under Section 3 of the Patents Act, particularly the applicability of clause (p), which excludes inventions relating to traditional knowledge. The court agreed with the respondents that the use of cow-derived products and specific leaves was part of traditional knowledge, commonly used in various traditional practices in India. However, the Court stated that Section 3(d) was not applicable in this case as what was claimed was not a new form of a known substance.
In its assessment, the court also considered whether the specific proportions and the process claimed by the appellants constituted an inventive step. It was found that the claimed invention did not demonstrate any technical advancement or inventive ingenuity beyond what was already known. The court held that the optimization of ingredient ratios through routine experimentation did not qualify as an inventive step, citing the principle that merely discovering optimal ranges of known ingredients does not automatically constitute an inventive contribution.
The court reviewed the prior art documents (D1, D2, and D3). D1 and D2 related to mosquito repellents using similar ingredients, while D3 disclosed the production of lamps (diyas) from cow dung, ghee, and essential oils. The court concluded that the combination of these prior arts would make the claimed invention obvious to a person skilled in the art.
In their arguments, the Appellants also alleged that the Assistant Controller had disregarded certain documents, such as the SGS report, which purportedly demonstrated technical advancements. However, the court found that the SGS report and other documents were either not part of the original patent prosecution or did not materially advance the Appellants’ case.
Based on its findings, the court affirmed the Assistant Controller’s decision, concluding that the claimed invention was not patentable under Section 3(p) of the Patents Act as it constituted an application of traditional knowledge without any inventive step. The appeal was therefore dismissed, upholding the order rejecting the patent application.
Relevant Paragraphs relating to Traditional Knowledge and Inventive Step
The relevant paras from the case relating to analysis of the traditional knowledge exclusion and inventive step read as follows:
Extracted Paragraphs
“11. In the Patents Act, Section 3(p) provides defensive protection of traditional knowledge by excluding inventions which are “in effect” traditional knowledge from patent eligibility. The term “in effect” in the provision ensures that there is no circumvention of the prohibition by concealing the usage of traditionally known components or their properties in a claimed invention.
- Cow dung, cow urine, cow ghee and other cow products along with leaves of the neem tree, lemon tree and peepal tree are animal and plant products that have been used traditionally in India. The use of these products would, therefore, form part of traditional knowledge. This leads to the question whether the combination of these products in specific proportions for the production of a lamp falls outside the scope of clause (p). This, in turn, depends on whether known properties of these products have been aggregated in the claimed invention. In the impugned order, the second respondent referred to the expression “panchagavya” in Ayurveda as referring to five substances derived from the cow, namely, urine, milk, ghee, curd and dung. Reference was also made to traditional knowledge of the use of cow dung cake, cow ghee and cow butter as fuel and the use of neem and lemon leaves as insect repellents. Even assuming that urine, milk and curd from the cow were not known to be used as fuel, as contended by the appellant, since one of the known properties of other ingredients is their use as fuel, the claimed invention would fall within Section 3(p). Indeed, a Google search is sufficient to establish the conventional use of cow dung as fuel, in combination with neem and lemon leaves (for fragrance and as insect repellents), and to make lamps during festivals, such as Diwali. In the claimed invention, the lamp is produced from the mixture of these components and, upon being lit, it has the effects of, inter alia, emitting light, acting as a mosquito repellent and not leaving a carbon footprint. The usage of such traditional knowledge, including by using known properties of the ingredients, therefore, falls within the exclusion in Section 3(k). For reasons set out above, I see no reason to depart from the conclusions of the second respondent on Section 3(p) of the Patents Act. This conclusion, on its own, is sufficient to reject this appeal. Nonetheless, since conclusions on other exclusions under Section 3 and on lack of inventive step were recorded in the impugned order, the same are also discussed.
- As regards clause (d), it applies inter alia to the mere discovery of a new form of a known substance or to the mere discovery of any new property or new use for a known substance. Given the fact that the claim is in respect of a lamp made of multiple ingredients and not for a new form of a known substance, it cannot be construed as a mere discovery of a new form of a known substance. Therefore, clause (d) of Section 3 is not applicable. Clause (e) of Section 3 excludes from patent protection a substance obtained by a mere admixture of components or ingredients. This clause was interpreted in Novozymes v. Assistant Controller of Patents and Designs, 2023/MHC/4261, as applicable to a composition claim unless the patent applicant establishes synergy between the ingredients constituting the composition. The claim in the present case is not in respect of a composition; it is for a product and a process for making such product. Hence clause (e) of Section 3 is also not applicable.
Alleged non-consideration of documents
- Before embarking on obviousness analysis, it is necessary to deal briefly with the appellant’s contention that several documents were not taken into consideration by the respondents. The documents relied on by the appellant were i) Chinese Science Bulletin Article “Climatic and environmental implications from n-alkanes in glacially eroded lake sediments in Tibetan Plateau: An example from Ximen Co”; ii) SGS Report; iii) 2011 Census Data; and iv) China Publication No. 17771045 Announcement No. 100475221. On examining the record of patent prosecution, it appears that the appellant had not placed documents labelled as i), iii) and iv) above before the respondents. Therefore, those documents cannot be considered at the appellate stage. The SGS report, however, was submitted along with the reply to the FER. I deal with this document in the course of discussion on inventive step.
Obviousness analysis
- Section 2(1)(j) and Section 2(1)(ja), which define invention and inventive step, respectively, are set out below:
“2. Definitions and interpretation.- (1) In this Act, unless the context otherwise requires,-
[(j) “invention” means a new product or process involving an inventive step and capable of industrial application;
[(ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;]
In the above statutory context, whether the claimed invention would be obvious to a person skilled in the art based on the cited prior art falls for consideration next. In the impugned order, after examining prior arts D1 to D3, the following conclusions were recorded:
“In view of the documents cited, herbal compositions made of cow dung, ghee, milk, butter, neem, lemon, peepal tree are known in the art. Present invention lacks technical advancement as compared to the existing knowledge and is obvious to a person skilled in the art. Also, in effect of the traditional knowledge cow dung (cow dung cake), ghee, butter usage as fuel, neem/lemon leaves as insect repellent and panchagavya usage as organic manure is known. Considering the prior art documents already described cow dung, ghee, milk, butter, neem, lemon, peepal tree for the same purpose, optimizing by adding further ingredients (cow urine, butter) is normal routine work for the skilled person and cannot be considered inventive as such unless such additional ingredients endow additional surprising effects with respect to the prior art. Hence, claims 1-2 lack inventive step under Section 2(1)(j)(a) of the Patents Act, 1970.”
- With specific reference to D3, the second respondent considered the submissions made by the appellant to distinguish the claimed invention from D3 and, thereafter, recorded findings. The relevant extracts as set out below:
“As regards to D3, applicant stated that D3 is acknowledged prior art which teaches a lamp made up of cow dung, ghee and essential oil (lemon grass). It is submitted that D3 teaches a lamp made up of dry form of cow dung based mixture which will not be able to withstand the pressure (900-1100 PSI) and temperature of 100° C during the moulding process for making the lamp of the present invention. D3 does not comprise cow butter which acts as a binding agent and along with specific mixture of leaves of Neem tree (Azadirachta indica) lemon tree (Citrus Limon) and Peepal tree (Ficus religiosa) helps to withstand the pressure (900-1100PSI) and temperature of 100° C during the moulding process for making the lamp of the present invention. It is submitted that the dry form of cow dung based mixture of D3 will not be able to withstand the pressure (900-1100PSI) and temperature of 100° C. Hence the lamp of the present invention is different from the lamp made up of dry cow dung based mixture of D3 and inventive over D3.” “D3 discloses diyas prepared with cow dung, ghee and essential oil (lemon grass) which can be used as a fertilizer and can also use as mosquito repellents. D3 further states that “The fragrance coming from these lamps not only sparks fragrance around you, but also the negativity surrounding this fragrance will be removed. The scent of lemon, mint and lavender will give you complete rest by relaxing your nerves. You can illuminate your Diwali in many ways with the light of these lamps. These lamps are easily available in the market of Diwali, made of cow dung and pure ghee in a cow shed away from the city…” Thus D3 also discloses the mosquito-repelling lamps made up of cow dung, cow ghee and essential oils and the utility is also the same as mentioned in the above Para. Here the inventiveness of the claimed composition when compared with D3 is not demonstrated. Hence the subject matter of claims are known in view of D3.
- Eventually, upon considering the appellant’s contention that the ingredients were combined in specific proportions and that the lamp was made by using specific pressure and temperature ranges, the following conclusions were drawn:
“Selection of known ingredients with a particular ratio in a composition is obvious and can only be regarded as inventive if the claimed composition shows unexpected effect. Since no such effect is indicated and supported in the application, the subject matter of claim 1 and 2 does not involve an inventive step. Thus in combined view of the cited documents D1, D2 and D3, it is obvious to the person skilled in the art to construe the claimed composition from D1 comprises cow dung, neem paste, cow ghee, cow milk, Neem and Pipal tree bark and from the available knowledge of D2 and D3 therefore render the claims obvious. Hence claims 1 and 2 do not involve any technical advance as compared to the existing knowledge with reference to the cited documents and there is no inventive ingenuity and obvious to try for a person skilled in the art when he knows the use of the cow products from D1 and obvious combine with other documents to bring out with the claimed subject matter.” In effect, the respondents concluded that the claimed invention lacks technical advancement compared to existing knowledge and would be obvious to a person skilled in the art.
- Whether the alleged failure to consider the SGS report vitiates the above findings warrants a brief discussion. The SGS report specifies that the samples were not collected by SGS. In that factual context, materiality and weight cannot be attached to the results reported therein. Without prejudice to the above, even assuming that the below detection level carbon emissions, as indicated in the SGS report, do constitute a technical advancement, it has to be examined whether it would be obvious to PSITA. The claimed invention makes use of ingredients which are not only traditionally known, but known to have carbon neutral effects. Therefore, the reduced carbon footprint due to the usage of these ingredients in the lamp is merely incidental and is because of the known properties of the ingredients used therein. Therefore, the SGS report does not advance the cause of the appellant. Consideration of the prior art documents is necessary to test the tenability of the above conclusions.
- Prior art document D1 was published on 10.06.2017. It discloses a composition of cow dung, cow milk, cow ghee, neem and peepal tree barks. It is a method for preparing a herbal mosquito repellent. While there is commonality in some of the ingredients used in prior art D1, prior art D1 does not deal with a lamp. On examining prior art D1, it cannot be concluded that there is a coherent thread leading from the said prior art to the claimed invention. In other words, solely on the basis of D1, it cannot be said that the claimed invention would be obvious to the PSITA.
- Having concluded the above, it is pertinent to examine whether D1 combined with other prior arts would make the invention obvious to PSITA. Prior art D2 is non-patent literature, namely, an article authored by Mandavgane titled “Development of cow dung based herbal mosquito repellent” and was published by the Department of Chemical Engineering, Priyadarshini Institute of Engineering and Technology, on 11.04.2005. It is also a herbal mosquito repellent composition. Out of the ingredients contained in the claimed invention, it is evident from table 1 of D2 that D2 also contains cow dung and neem. However, the other ingredients of the claimed invention are not present in D2.
- As regards D3, it is non-patent literature disclosing the preparation of eco-friendly lamps/diyas from cow dung. Learned counsel for the appellant relied on Sections 29(2) and 31(d) of the Patents Act to contend that the said provisions shield the claimed invention against rejection in light of D3. This contention is fallacious for more than one reason. First, both Sections 29 and 31 pertain to anticipation, and not to obviousness. Secondly, in order to claim the benefit of Section 29(2), the appellant should prove that the matter published was obtained from him. Although the appellant makes such assertion, the appellant has failed to prove that the material for D3 was so obtained. In addition, Section 31(d) applies only if the true and first inventor provided a description of the invention in a paper read by him in a learned society or published with his consent by said society and such inventor applies for a patent not later than twelve months thereafter. Such is clearly not the case as regards D3. Therefore, D3 is pertinent for the obviousness analysis.
- D3 discloses the production of lamps from cow dung, ghee and essential oils. While it is true that prior art documents D1 and D2 do not teach, motivate or suggest the production of lamps from cow dung, cow urine and cow ghee and the like, D3 clearly discloses the production of diyas from cow dung, ghee and essential oils. Undoubtedly, on comparison of D3 and the claimed invention, all the ingredients are not common. The relevant question, however, is not whether there are differences between the cited prior art and the claimed invention but whether the claimed invention would be obvious to a person skilled in the art based on the prior art.
- The person skilled in the art would be a person with the requisite skill set to produce lamps from natural / traditional ingredients such as cow dung. The question that falls for consideration is whether such person would be able to arrive at the claimed invention, without the benefit of hindsight, on the basis of the cited prior art. Both D1 and D2 disclose the use of traditional ingredients such as cow dung in the manufacture of mosquito repellents. D3 discloses the use of cow dung, ghee and essential oils in the production of lamps/diya. Knowledge of the cited prior art should be imputed to the person skilled in the art. Common general knowledge should also be imputed to such person. The appellant claims that each ingredient is required to be used in specific proportions within the ranges indicated in the claims. In discussing whether such routine experimentation could be considered inventive, it was held in Genentech Inc v Hospira, 946 F.3d 1333 that “when the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. Thus, once the ingredients are part of traditional knowledge, working out the optimum ranges and proportions is a matter of routine experimentation and cannot be construed as inventive. I am bolstered in this conclusion because D3 discloses, not merely the use of some common ingredients, but also their use in the production of diyas. Therefore, when armed with the knowledge of D1 to D3, in my view, the claimed invention would be obvious to the person skilled in the art.”
Citation: M/s. The Zero Brand Zone Pvt. Ltd. v. Controller of Patents & Designs, (2024) MHC 2558 (H.C. Madras July 5, 2024). Available at: http://indiankanoon.org/doc/147461851/, Visited on: 16/07/2024.
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