[Patents Act] Product-By-Process Claim Has To Be Examined On Anvil Of New And Unobvious Product: Delhi High Court

The Delhi High Court has ruled that the product-by-process claim under the Patents Act would necessarily have to be examined on the anvil of a “new and unobvious product”, irrespective of the applicant having chosen to describe the invention by referring to a process of manufacture.

“The mere adoption of the product-by-process format would not result in a novel product being downgraded to Section 48(b) of the Act. It would inevitably have to be tested on principles enshrined in Section 48(a),” a division bench of Justice Yashwant Varma and Justice Dharmesh Sharma said.

Section 48 of the Patents Act deals with rights of patentees. Section 48(a) states that where the subject matter of the patent is a product, the patentee will have the exclusive right to prevent third parties from making, using, offering for sale, selling or importing that product in India. Similarly, Section 48(b) confers similar right on a patentee where the subject matter of the patent is a process.

“Mere usage of process terms cannot be accepted as limiting nor is there any justifiable rationale to accept the advocated distinction between validity and infringement. If the rule of necessity were to compel the applicant to submit an application embodying a product-by-process claim, there would appear to be no justification to stultify the extent of protection,” the court said.

The bench said that a product-by-process claim would have to meet the test of pertaining to a novel and inventive product as opposed to a process.

It added that it will thus be wholly incorrect to abridge or truncate a product-by-process claim to fall within the ambit of Section 48(b).

“In our considered opinion as long as the product-by-process claim pertains to a product which is novel and inventive and unknown in the prior art it would remain a product which would fall within the ambit of Section of 48(a),” the court said.

The bench also observed that as long as a product-by-process claim pertains to a product which is novel and has no parallel in the prior art, the mere fact that the patentee chooses to describe the invention more exhaustively by reference to process terms, the tests should remain unchanged.

“The guidelines as well as the judgments rendered in the context of product-by-process claims speak in unison when they state that for assessing novelty one must disregard the process terms and discern whether the product possesses novelty. We are reminded that a product is not rendered novel merely by virtue of the fact that it is produced by a new process,” the court said.

It added: “A product-by-process claim is an amalgam which “straddles” the otherwise recognised distinction between products and process patents per se. A product-by-process patent is founded on a claim relating to a novel product whose unique attributes are sought to be explained by reference to its manufacturing process.”

The court made the observations while dealing with the appeals moved by Vifor (International) Limited challenging a single judge's order passed in July last year refusing interim relief in its patent infringement case against various entities including Dr. Reddys Laboratories.

Vifor's patent was titled "Water Soluble Iron Carbohydrate Complex and a Process for Producing Water Soluble Iron Carbohydrate Complex” (IN'536).

The bench allowed the appeals and set aside the judgment of the single judge. The court observed that the Single Judge clearly erred in appreciating the scope of product-by-process claims and manifestly erred in propounding the theory of distinct principles being applicable to infringement actions.

The court left it open to Vifor to press its claim for deposit of percentage of sales at the appropriate stage and subject to further orders passed in the pending suits.

Counsel for Appellants: Senior Advocates Neeraj Kishan Kaul and Sandeep Sethi with Advocates Pravin Anand, Vaishali Mittal, Rohin Koolwal, Hersh Desai, Ira Mahajan, Pritha Suri and Siddhant Chamola

Counsel for Respondents: Advocates G. Nataraj, Shashikant Yadav, Rahul B., Advs; Senior Advocate Chander M. Lall with Advocates Kunal Vajani, Kunal Mimani, Shubhang Tandon and Prashant Alai for intervener (BDR Pharmaceuticals Pvt. Ltd.)

Title: VIFOR (INTERNATIONAL) LIMITED & ANR. v. MSN LABORATORIES PVT LTD & ANR. and other connected matters

Citation: 2024 LiveLaw (Del) 148

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