In a recent judgment, the Madras High Court upheld the Controller’s decision to refuse Indian patent application number 201721043812, entitled “Eco-friendly lamp made up of composition based on panchagavya with the combination of leaves used in traditional herbal medicine”, in M/s. The Zero Brand Zone Pvt. Ltd. vs The Controller of Patents [(T) CMA (PT) No.146 of 2023], 2024:MHC:2558.

The refused application claimed a single use lamp and a process for producing such a lamp. The claimed lamp was made from specified proportions of six ingredients originating from cow (namely cow dung, cow urine, cow ghee, cow butter, cow milk and cow curd) and a mixture of leaves selected from the neem tree, lemon tree and peepal tree.

The application was refused by the Controller on grounds of non-patentability under Sections 3(p), 3(d) and 3(e), and for lack of inventive step under Section 2(1)(j) of the Patents Act, 1970. For the refusal under Section 2(1)(j), the Controller had relied on a prior art documents D1, D2 and D3, wherein D1 and D2 disclosed the use of traditional ingredients such as cow dung and neem in manufacturing mosquito repellents, and D3 disclosed the use of cow dung, ghee and essential oils in the production of lamps.

The Appellant asserted that:

• The subject invention satisfied all the requirements of Section 2(1)(j): The cited prior art D1 and D2 were contented to be non-analogous prior arts since they related to mosquito repellents and not to single-use lamps. Regarding D3, the Appellant relied on Sections 29(2) and 31(d) of the Patents Act to argue that the said provisions shielded the claimed invention against rejection in view of D3. Additionally, the Appellant distinguished the claimed invention from D3 by contending that the lamp disclosed in D3 did not use all the six ingredients used in the impugned invention. Additionally, unlike in D3, the ingredients in the impugned invention were required to be combined in specific proportions, using specific pressure and temperature ranges.

It should be noted here that section 29(2) of the Patents Act bars any document published before the priority date of an application from being considered as prior art for anticipation if the matter that was published was obtained from the applicant or from a person who derived title from the applicant and was published without his consent.

Section 31(d) further provides that an invention cannot be deemed to have been anticipated by reason only of the description of the invention in a paper read by the true and first inventor before a learned society or published with his consent in the transactions of such a society provided that the application for patent is made by the true and first inventor or a person deriving title from him not later than 12 months after the reading or publication of the paper.

• The Controller disregarded the SGS Lab report which indicated the claimed invention’s technical advancement: The Appellant pointed out that during the prosecution of the application they had submitted a report (‘the SGS report’) which established the technical advance of their invention by indicating that the claimed invention was a zero-carbon product. It was the Appellant’s case that the Controller had failed to consider said report.

• Section 3(p) was not applicable to the claimed invention: The Appellant argued that although the ingredients used in the claimed invention were part of traditional knowledge, manufacturing a new product (the single use lamp in this case) using those ingredients qualified as an invention. Additionally, the claimed invention was asserted to have been derived from those ingredients originating from cow (namely cow urine, cow milk and cow curd) that were previously not known to be used as fuel, thus distinguishing it from a mere aggregation or duplication of known properties of traditional components.

• Section 3(d) was not applicable to the claimed invention: The Appellant argued that since the single-use lamp was made from cow products and a mixture of leaves, it was a new product and was thus not a known substance. Because Section 3(d) only applies to a new form of a known substance, the claimed invention was argued to be patent eligible.

• Section 3(e) was not applicable to the claimed invention: Section 3(e) was argued to be inapplicable to the product and process claims as the claims did not pertain to a substance obtained by a mere admixture.   

In response, the Controller contended that all the ingredients used in the claimed invention were known ingredients which formed part of traditional knowledge. It was clarified that ‘Panchagavya’, a term used in Ayurveda, describes five major substances obtained from cow (namely milk, urine, ghee, curd and dung) which have been known for years. The Controller emphasized that the essential components of both the prior art and the claimed invention were identical. In view of the traditional knowledge of use of cow dung, cow ghee and cow butter as fuel, neem/lemon leaves as insect repellent, and use of panchagavya as organic manure, the claimed invention was argued to be non-patentable under Sections 3(p) and 3(d).

The insights provided by the Court into the patentability of this invention based on the various grounds of refusal are as follows:

Section 3(p)

• Section 3(p) excludes from patentability an invention “which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.”. The legislative intent behind the provision was to prevent monopoly over traditional knowledge, including by aggregating the known properties of traditionally known components. However, this exclusion was not intended to deny patent protection for inventions drawing on traditional knowledge ‘per se’. Instead, it allows for patentability if the applicant can demonstrate that the product or process is sufficiently innovative and no longer qualifies as traditional knowledge in effect. 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.
• The expression ‘traditional knowledge’, although not defined in the Patents Act, refers to knowledge derived from centuries of lived experience that takes many forms and is passed on from one generation to the next. Such knowledge is commonly owned by the communities possessing the knowledge.
• The claimed invention merely aggregated the known properties of the ingredients used and was thus patent ineligible under Section 3(p). The Court remarked that even assuming that cow urine, milk and curd were not known to be used as fuel, one of the traditionally known properties of the other ingredients of cow dung, cow ghee and cow butter is their use as fuel and of neem and lemon leaves is their use as insect repellents. The Court pointed that even a Google search would reveal that cow dung as fuel was used in combination with neem and lemon leaves as fragrance emitting substances and mosquito repellents, for making lamps during festivals such as Diwali. In view of this the Court found the refusal under Section 3(p) justified.

Section 3(d)

Section 3(d) prohibits from patentability the mere discovery of a new form of a known substance or the mere discovery of any new property or new use of a known substance. The Court noted that because the impugned claims pertained to a lamp made from multiple ingredients and not to a new form of a known substance, they did not fall under the category of a mere discovery of a new form or new use of a known substance. Therefore, Section 3(d) was found inapplicable in this case.

Section 3(e)

Section 3(d) prohibits from patentability substances that are obtained by a mere admixture of components or ingredients. The Court noted the established position that section 3(e) is applicable to composition claims and held that since the claims of the impugned application did not pertain to a composition, Section 3(e) was not applicable.   

Section 2(1)(j)

• Regarding the defence of D3 not being a prior art document in view of Sections 29(2) and 31(d) of the Patents Act, the Court noted that both of said sections pertain to anticipation and not to obviousness. It was additionally noted that for section 29(2) to apply, it should be proven that the matter published was obtained from the appellant, which the appellant in this case had failed to do. Similarly, section 31(d) is applicable only when the true and first inventor provides a description of the invention in a paper read by him before a learned society or the invention is published with his consent in the transactions of the society, which was not the case here. Therefore, D3 was adjudicated to be relevant for the purpose of assessment of obviousness.     
• The Court noted that prior art document D1 disclosed herbal mosquito repellent compositions comprising cow dung, cow milk, cow ghee, and neem and peepal tree barks. While the Court noted that D1 did not relate to lamps and a coherent thread leading to the impugned invention could not be attributed to D1 alone, it was pertinent to examine whether D1 combined with the other prior art would lead to the invention claimed in the impugned application.
• The Court further noted that D2 which also dealt with herbal mosquito repellents disclosed compositions comprising cow dung and neem but the ingredients of the compositions of D2 were not present in the lamps of the impugned application. D3 which deals with eco-friendly lamps/diyas disclosed the production of lamps from cow dung, ghee and essential oils. It was held that while all the ingredients of D3 were not common to those comprised in the lamps of the impugned application, the pertinent question was not whether there were 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 Court noted that both D1 and D2 used traditional ingredients in mosquito repellents while D3 disclosed the use of cow dung, ghee and essential oils in lamps/diyas.
• Regarding the applicant’s argument that each ingredient of the lamps was required in a specific range, the Court held that once the ingredients are established as part of traditional knowledge, working out the optimum ranges and proportions is a matter of routine experimentation and does not qualify as inventive.
• Regarding the point of non-consideration of the SGS report by the Controller, the Court held that even if the SGS report was considered by the Controller, it would not have established that the claimed invention was inventive. It was reasoned by the Court that the claimed technical advance of reduced carbon footprint would be obvious to a person skilled in the art based on the known carbon neutral effects of the ingredients. 

In conclusion, the Court dismissed the appeal and affirmed the rejection of the subject application.