On the issue of determining the issue of patentability of the inventions under the product-by-process claims the Indian Patent Act and Manual of Patent office practise and procedure are silent. but the guidelines which has been issued by office of controller general of patents, designs and trademarks for examination of patent applications in field of pharmaceuticals on 29th October 2014 with reference to a case Research foundation of state University of NewYork v. Asst Controller General of Patents throws light on the examination of product-by-process claim patentability criteria.
Here in this case Research foundation of State University of New York filed a patent application before the patent office seeking the patent on ceramic based nanoparticles for entrapping therapeutic agents for photodynamic therapy. Here the claims are directing on a composite prepared by novel and inventive step. Further the prosecution in patent office, controller under section 15 of the act refused the grant of patent application on the ground that there is lack of inventive step in light of prior art. Later after controller decision the applicant approached appellate board of intellectual property against the decision of controller.
In the appellate board it was held that the patentability of product-by-process claim is based on the product itself.
In another case of Umicore AG & Co.KG v. Controller General of Patents the applicant Umicore AG & Co.KG filed a patent application for patent of “vanadium free catalyst obtained by process of impregnating Ce-Zr mixed oxide with aqueous solution of compound of Cr,Mo,W or mixture of them thereof,” the catalytic properties of vanadium free catalyst obtained by this process are better. While in the application examination controller claims that there is lack of novelty as in prior art vanadium free catalyst is there but prepared by different process as a result court held the product created will not be considered as novel merely because it is obtained by different process. Applicant said the claimed process is different which is leading to novel product in the art.As applicant has applied different processes which resulted in catalyst having W inside pores of Ce-Zr mixed oxide which is not there in prior art. W is incorporated in oxide structure as Ce-W-Zr oxide. Applicant once again compared the catalytic properties with prior art as to show its enhanced catalytic activities which ultimately shows that the product has different properties as well as there is difference in mode of preparation of these two catalyst as well as a result controller granted the patent. Applicant has to give evidence to show modifications of process parameters led to a new product.
