Patent Case Brief – Dimminaco A.G. v. Controller of Patents Designs

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Citation – (2002) I.P.L.R. 255 (Cal)

Facts and Procedural History:
§ The Appellant, Dimminaco A.G, filed for a patent application for an invention relating to a process for preparation of the bursitis vaccine. The vaccine was useful for protecting the poultry against the contagious bursitis infection. However, the process to prepare the vaccine contained a living virus in the end product.
§ The patent application filed by Dimminaco A.G. was examined by the Patent Officer Examiner under Section 12 of the Patent Act, 1970. On such examination, the Examiner gave a finding that the said Patent Application did not constitute an invention under Section 2 (j) (i) of the Patent Act, 1970.
§ Dimminaco A.G. further appealed against this rejection to the Controller of Patents & Designs.
§ Acting under delegated authority by the Controller, the Assistant Controller of Patents and Designs too refused to accept the Patent Application and upheld the objection.
§ Hence, the appellants approached the Calcutta High Court with this appeal.

Issues:
1) Is there a statutory bar to accept a manner of manufacture as patentable if the end product contains a living organism?
2) Will a process of preparing a vaccine that contains a live virus be considered to be ‘methods or process of manufacture’ under the Patent Act, 1970? If yes, will it be construed to be an invention as under Section 2 (j)(i) of the Patent Act, 1970?

Rule and Law Applicable:
Section 2 (j)(i) of the Patent Act, 1970 stated –
“(j) ‘Invention’ would mean any new and useful –
i. Art, process, method or manner of manufacture;
ii. Machine, apparatus or other articles;
iii. Substance produced by manufacture and includes any new and useful improvement of any of them and an alleged invention;”
Section 5 of the Patent Act, 1970 stated – “Inventions where only methods or process of manufacture patentable –

1) In the case of inventions –
a) Claiming substances intended for use, or capable of being used, as food or as medicine or drug, or
b) relating to substances prepared or produced by chemical process (including alloys, optical glass, semi-conductors and intermetallic compounds),
No patent shall be granted in respect of claims for substances themselves, but claims for the methods or processes of manufacture shall be patentable.
2) Notwithstanding anything contained in sub-section (1), a claim for patent of an invention for a substance itself intended for use, or capable of being used, as a medicine or drug may be made and shall be dealt, without prejudice to the other provisions of this Act, in the manner provided in Chapter IV-A.”

Analysis:
§ The Court held that there is no statutory bar to accept a manner of manufacture to be patentable if the end product contains a living organism. In this case, the process claimed in the patent application was a new and novel process for the preparation of vaccine that involved chemical steps under specific scientific conditions. Therefore, the Court held that it was a new process and was patentable under Section 5 of the Patent Act. In other words, since the end product was a new article, the process leading to its manufacture was held to an invention, and thus patentable.
§ To decide whether in a particular case, the process of manufacture that is involved in the invention ought to be patented or not, the vendibility test can be used.
§ A vendible product is one that can be passed on from one man to another upon the transactions of purchase and sale. Therefore, the vendibility test is satisfied if:
* the invention results in the production of some vendible product; or
* if it improves/restores former conditions of a vendible product; or
* if its effect is the preservation and prevention from deterioration of some vendible product.
§ Since ‘manner of manufacture’ is not defined in the statute, the dictionary meaning of the word has to be used. The Court held that the dictionary meaning of the word ‘manufacture’ includes the process of preparing a vendible commodity which contains a living organism.
§ The Court also rejected the Patent Office’s understanding of the lyophilizing. It held that the as a result of the process of lyophilizing, nothing is killed or destroyed – the biological activity of the material is retained and not wasted. Therefore, as a matter of practice, patents had been granted by various Patent Offices, to processes that involved living organisms.

Conclusion and Ratio Decidendi:
§ There is no statutory bar to accept a manner of manufacture as patentable if the end product contains a living organism.
§ Since the claim process for patent, that is, the bursitis vaccine, led to a vendible product, it was certainly a substance after going through the process of manufacture. Therefore, the process was an invention, and thus patentable.

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