The Madras high Court in an Appeal from order of Intellectual Property Appellate Board (IPAB) opined the need and importance of the technical expert/ scientific advisor opinion in the patent disputes. Although, Section 115 of the Indian Patent Act provides for appointment of scientific advisor to assist the courts in providing opinion on technical aspect of a matter, the provision  has not been frequently made use of by the courts.

Facts of the case:

• The Patents in dispute are a) process for preparation of low glycemic sweets and b) product patent for low glycemic sweets. Both the Patents were revoked by IPAB on a petition by the Respondent. The Patentee challenged the decision by way of writ petition to the Madras High Court questioning the correctness of the order issued by the IPAB.
• The Invention essentially related to the process for preparation of low glycemic sweets using a natural sweetener Fructose, also known as Levulose. According to the patentee, the sweets made using natural sweetner fructose/ Levulose are meant for consumers with diabetes and diabetic tendencies. Fructose/ Levulose maintains the same textural and visual properties as sweets prepared using sugar cane.
• The petitioners/patentee had set out its case claiming that in normal circumstances, Levulose, when used at high temperature, results in a brown mass due to Maillard reaction/Caramelisation. Maillard reaction occurs between protein element of the sweet-meat and the carbohydrate of the fructose when they are cooked at high temperatures, as required for preparing traditional Indian sweets. According to the petitioners, the formation of the brown mass is dangerous to health and is prone to cancer, kidney related problems.
• The petitioners/patentee claimed that the process of the present Invention overcomes the browning process occuring due to Maillard reaction/Caramelisation by purging Inert Gas (Nitrogen) through Fructose Solution while heating at an elevated temperatures and through different permutations and combinations. The process provides a workable range for the various parameters including protein Carbohydrates ratio, Reaction time, Reactive temperature, pH, Water Activity, for the use of Levulose in the form of syrups, Crystalline or Amorphouse/powder forms.
• Based on the above arguments by the patentee, the Indian Patent Office granted the patents. According to the patentee, after the patent was granted, the respondent made attempt to infringe the Patents. The petitioners therefore filed an infringement suit against the respondent and were successful in obtaining the interim injunction against them. The respondent/s as a counter-blast to the suit filed revocation petition before Intellectual Property Appellate Board (IPAB).

Revocation proceedings

• The respondents in their revocation petition essentially argued the following:
• Caramelisation is a natural process, which cannot be said to have been invented by the petitioners as a novel idea;
• Caramelisation and Maillard reactions, which are said to be responsible for browning, requires temperatures that cannot be reached when water is present (the boiling point of water limits the cooking temperature to 212 degree Fahrenheit or less)

Decision of IPAB

Intellectual Property Appellate Board considering the arguments revoked the patents on the basis that “Fructose uncontested was, at the priority date of the opposed patent, among the most commonly known sweeteners. Hand book of Sugar (page 1-8) confirms this based on sugar analysis. The choice of a fructose as Sweetner in present claim 1 thus formed part of the normal activities of a person skilled in the art having to select a suitable one among a limited number of well known alternative groups of sugar.”

Writ before the High court

The patentee/ petitioners argued that the respondent did not produce any material evidence to show that the patented process invented by them was in existence or was used prior to the grant of patent. The IPAB also did not seek for any expert opinion or any scientific proof to satisfy itself as to whether the process or product invented by the patentee does not disclose any invention at all or it was not new. According to the petitioners, the IPAB did not understand the scope of inventive step involved in preparation of low glycemic sweet fit for consumption by diabetic patients and erred in holding that the invention made by the petitioners lacked initiative step.

Court’s Point of view:

The court considering the arguments of both the parties held that IPAB “ought to have sought the aid of experts or any scientific proof before arriving at a conclusion that the invention so made by the petitioners is not new or it is obvious and normal in the given field.” The court held that “It is well settled that the Courts are not experts of expert to arrive at a finding with respect to intricate technicalities which are hard to follow or to scientifically evaluate a particular dispute and to render solution. In matters of this nature, this Court cannot render any finding in the absence of any scientific proof, therefore, this Court is left with no other option except to restrain from rendering any finding in this case.”

Our Comment

The technical expert plays an important role in Patent evaluation for effectively adjudicating a dispute. This ruling will serve as a good reminder to the courts and Tribunals to make use of them in evaluating Patent disputes.

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Disclaimer: The content of this article is based on personal understanding of the authors and is not intended for any legal advice. Customized solutions and strategy needs to be devised for specific situation.