The Delhi High Court has observed that a product-by-process claim under the Patents Act needs to be examined on the anvil of a new and unobvious product irrespective of the applicant having chosen to describe the invention by referring to a process of manufacture.

In that context, the Bench of Justice Yashwant Varma and Justice Dharmesh Sharma said that, "The mere adoption of the product-by-process format would not result in a novel product being downgraded to Section 48(b) of the Act. It would inevitably have to be tested on principles enshrined in Section 48(a). It is this aspect of significance which convinces us to hold that the mere usage of process terms cannot be accepted as limiting nor does there appear to be any justifiable rationale to countenance or accept the distinction between validity and infringement as suggested in the impugned judgement. If a product be already known in the prior art, it would clearly not be entitled to patent protection."

It was further clarified that, "A process claim on the other hand would be confined to the novelty and unobviousness of the process in respect of which protection is claimed. If the rule of necessity were to compel the applicant to submit an application embodying a product-by-process claim, there would appear to be no justification to stultify the extent of protection."

Senior Counsel Neeraj Kishan Kaul, along with others, appeared for the appellants, while Senior Counsel Chander M Lall, along with others, appeared for the respondents.

In this case, Vifor (International) Limited had filed appeals challenging a Single Judge's order, which denied interim relief in a patent infringement case against several entities, including Dr. Reddy's Laboratories. The patent in question was titled "Water Soluble Iron Carbohydrate Complex and a Process for Producing Water Soluble Iron Carbohydrate Complex” (IN'536).

The High Court observed that the Single Judge had erred in appreciating the scope of product-by-process claims, and manifestly erred in propounding the theory of distinct principles being applicable to infringement actions. In that context, it was noted that, "One could have understood the learned Judge having come to conclude that IN‘536 was a pure process claim. However, once it was accepted that it was a product-by-process claim, the findings and conclusions ultimately rendered would not sustain."

With that background, the High Court took the considered view that once IN‘536 was recognised and accepted to be a product-by-process claim, the question of infringement was necessarily liable to be answered on the basis of product attributes and de hors the process of manufacture.

Subsequently, the appeals were allowed, and the impugned judgment was set aside. The Court left it open to the appellants to press their claim for the deposit of a percentage of sales at the appropriate stage and subject to further orders being passed in the pending suits.


Appellants: Senior Advocate Neeraj Kishan Kaul, Counsels Pravin Anand, Vaishali Mittal, Rohin Koolwal, Hersh Desai, Ira Mahajan, Pritha Suri, Siddhant Chamola

Respondents: Senior Counsel Chander M Lall, Counsels G Nataraj, Shashikant Yadav, Rahul B, Kunal Vajani, Kunal Mimani, Shubhang Tandon, Prashant Alai

Cause Title: Vifor (International) Limited & Anr. vs MSN Laboratories Pvt Ltd & Anr.

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