There is a recent update regarding the Indian Patent law where an Intellectual Property Appellate Board (IPAB) order has been validated by Madras High Court by dismissing a writ petition challenging an order that effectively upheld a Patent.

Background of the Case:

Kibow Biotech, founded in 1997, is a US based company specializing in development and commercialization of dietary supplements. Renadyl is the flagship product of the company that augments kidney function and reduces the need for patients to undergo dialysis was under inspection here.

La Renon, an indigenous Indian company based out of Gujarat, challenged the validity of two patents. In 2013, in La Renon vs Kibow Biotech before IPAB, the process patent no. (205478) was rejected by the IPAB in favor of La Renon. But product patent no. (224100) was upheld in the favor of Kibows. According to an official statement by the Kibows, a product patent is more valuable to them as compared to a process patent, as it permits them to prevent third parties from making a copy of the product, irrespective of the process they used to arrive at the product.

In a writ petition challenging the IPAB order, La Renon approached Madras High Court on the following grounds:

  • That there was no novelty in the invention.
  • The product is obtained by a mere admixture of ingredients resulting in aggregation of the properties of the components, therefore, it is barred from being patented.
  • The patent neither directly nor explicitly discloses a composition comprising a combination of Streptococcus thermophilus with other ingredients viz., vitamin, mineral, carbohydrate, protein and fats, as claimed, but talks of some other unconnected combinations.
  • The patent was obtained by a false suggestion and material suppression of facts, claiming that the claimed composition increases kidney function and it can be used for kidney patients.
  • The patent was obtained by making a false representation that the prior patent applications were pending, when in reality prior patent applications were refused in the US.
  • The patent specification does not disclose as to how the composition increases kidney functions.

On January 10, 2019, the court effectively upheld the IPAB order and ruled against La Renon.

COURT VERDICT: "There is a distinction between the scope of review in a writ jurisdiction and an appeal. The former review is far more limited than the latter." The court added that a person challenging a patent must produce evidence (prior art) and argue how the prior art anticipates the patent. Merely throwing a ton of prior art is not enough and also stated that a person who had the opportunity to adduce evidence and make arguments before the IPAB to contest validity of patent and didn't avail of the opportunity suitably cannot now come and demand a remand.

This is what the court ruled in this regard:

"143. We are not exercising Appellate Court's Jurisdiction under Article 226 of the Constitution of India. On the other hand, we have to examine the impugned order from the perspective of a Court exercising supervisory jurisdiction under Article 226 of the Constitution of India. The scope of writ petition against an order of the third respondent Appellate Board is limited. We can only examine whether there was any infirmity in the procedure adopted by the third respondent Appellate Tribunal while passing the impugned order.

144. We do not find any infirmity in the procedure adopted by the third respondent Appellate Tribunal while passing the impugned order. The impugned order also cannot be termed to be a palpably erroneous order on account of error on the face of record. We therefore find no grounds to intervene."

145. We are therefore inclined to dismiss the above writ petition and accordingly dismiss the writ petition. No cost.

Highlighting the difference in scope of review and appeal for patent matters, this decision is a reminder on provisional procedure to avoid wastage of time, resources and uncertainty in enforcement of rights.

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