In the case Bayer Cropscience AG vs The Assistant Controller of Patents and Designs [(T) CMA (PT) No. 219 of 2023], decided by the Madras High Court on September 6, 2024, Bayerchallenged the refusal of their patent application number 4574/CHENP/2007, entitled “Long-Chain Inulin”, on the grounds of lack of novelty and inventive step in view of two prior art documents.

The subject application disclosed an invention involving long-chain inulin and its preparation from artichoke roots, claimed to have advantageous properties such as enhanced stability on heat or acid treatment, stronger prebiotic effects, and beneficial viscosity for foodstuffs and cosmetics.

The refusal was grounded in the assertion that the cited prior art documents already disclosed similar inulin compositions and their associated benefits. The Controller held that the benefits of using purified inulin with a specific fraction of higher molecular weight instead of using naturally occurring inulin was obvious.

Bayer contented that the claimed invention demonstrated significant advancements over prior art by achieving a higher degree of polymerization and molecular weight distribution, which provided unexpected benefits not disclosed in prior art. These benefits were supported by comparative data showing technical advantages in terms of stability, prebiotic effect, and viscosity. Bayer also highlighted the grant of their corresponding patent applications in other jurisdictions after considering the same prior art, implying that the Controller misapplied the prior art references.

In response, the Controller argued that the inulin claimed by the Appellant was not a new compound but a mixture of known polymers. The Controller suggested that isolating inulin and demonstrating its benefits did not constitute an inventive step. The Controller maintained the position that the cited prior art already covered the properties and uses claimed by the Appellant, rendering the invention obvious.

The findings of the Court essentially revolved around the following:

• Novelty and Inventiveness: The Court found that the Appellant’s invention was not merely a discovery of existing inulin but involved novelty. The Court observed that the invention’s specific chain length and higher molecular weight, achieved through fractionalization of insulin, demonstrated novelty and provided unexpected technical advantages not disclosed by the prior art. The comparative results showed clear benefits over the prior art, making a strong case for the inventive step.
• Misapplication of Prior Art: The Court noted that the Controller had failed to properly differentiate between the claims in the subject application and the disclosure of the cited prior art. The Court also observed that the Controller did not substantiate the refusal based on obviousness. Specifically, the Controller failed to demonstrate that a person skilled in the art, by mosaicing prior arts, would have arrived at the results claimed in the Appellant’s application. The Controller’s reliance on prior art without adequately considering the benefits of the claimed invention was deemed incorrect. The Court determined that the Controller’s decision was influenced by hindsight bias and a superficial analysis of the prior art rather than a detailed examination of the invention’s novel contribution of achieving a higher molecular weight by fractionalising inulin and thereby achieving a different degree of polymerization and a special chain length profile.
• Corresponding Patent Grants: The Court opined that, while corresponding patent grants are not binding on the Indian patent office, the Controller should at least distinguish the other grants and state why such other grants were not compelling, particularly when the same prior art has been cited.

The Court concluded that the claimed invention displayed novelty and inventive step, which were not adequately acknowledged by the Controller. The impugned order was found to be unsustainable and was set aside. Consequently, the Court allowed the appeal and claimed invention was directed to proceed to grant.