Dimminaco A.G. v. Controller of Patents & Designs
Calcutta High Court
2001
Single Bench
2001 SCC OnLine Cal 901
Patents • Biotech • Process
~7 min
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PRIMARY_KEYWORDS: Dimminaco v Controller of Patents, vendibility test, live organism process patent
SECONDARY_KEYWORDS: Section 2 Patents Act 1970, Section 5 process patent, vaccine process, Calcutta HC
Quick Summary
The Patent Office rejected a process patent for a poultry vaccine because the process used a live virus. The Calcutta High Court said: a process does not lose patent protection only because living material is involved. If the process is new, useful, and leads to a marketable product, it can be patented. This reading fits Sections 2 and 5 of the Patents Act, 1970.
Issues
- Is there a bar on patenting a manufacturing process when it uses or yields a living organism?
- Do such process claims fit within Section 2 (definition of “invention”) and Section 5 (process patents) of the Patents Act, 1970?
Rules
- Vendibility Test: Does the claimed process produce a usable, marketable result or improve/preserve/restore a product? If yes, it supports patentability.
- Core Patent Criteria: Novelty and utility are the anchors. The presence of a live organism does not negate them.
- Sections 2 & 5 (1970 Act): Permit process claims meeting statutory standards, even for biotech processes.
Facts (Timeline)
Patent Application: Dimminaco sought a patent for a bursitis vaccine process for poultry; the process used a live virus during manufacture and in the end product.
Examination: The Examiner (s.12, Patents Act, 1970) rejected: not an “invention”; treated it like a food/drug; said live organism barred patent.
Appeal within Office: Assistant Controller upheld the rejection.
High Court Appeal: Dimminaco appealed to the Calcutta High Court.
Arguments
Appellant (Dimminaco A.G.)
- The process is novel and useful; it yields a vaccine for poultry health.
- Use of a live virus is a step in manufacture, not a legal bar.
- Passes the vendibility test: leads to a marketable product.
Respondent (Controller)
- Processes with living organisms should not be patentable.
- The claim is closer to a food/drug and outside patent scope.
- Fails to satisfy the statutory definition of “invention.”
Judgment
Held: The High Court set aside the refusal. The mere presence of a live virus in the process or final product does not bar a process patent. The touchstones remain novelty and usefulness. The claim can be considered under Sections 2 and 5 of the 1970 Act.
Ratio (Core Reason)
A biological element in a process does not defeat patentability. If the process, judged by the vendibility test, produces a useful, marketable result and satisfies statutory criteria, it is patent-eligible as a process.
Why It Matters
- Gives biotech clarity: living materials do not automatically bar process claims.
- Re-centres novelty and utility over formal labels like “food/drug.”
- Guides examiners to apply the vendibility test rather than blanket refusals.
Key Takeaways
- No per se bar: Live organisms ≠ automatic rejection for process patents.
- Vendibility matters: End result must be usable/marketable or improve a product.
- Statutory fit: Sections 2 & 5 allow such claims when novel and useful.
Mnemonic + 3-Step Hook
Mnemonic: V.A.C.C.I.N.E.
- Vendibility test passed
- Act Sections 2 & 5 apply
- Contains living material? OK
- Commercially usable result
- Invention must be novel
- No per se bar
- Emphasis on utility
3-Step Hook
- Is the process new and useful?
- Does it yield a marketable result (vendibility)?
- If yes, process patent can be granted.
IRAC Outline
| Issue | Whether a process using a live virus is patentable under the Patents Act, 1970, and compatible with Sections 2 & 5. |
|---|---|
| Rule | Apply criteria of novelty and utility; use the vendibility test; no per se bar for living organisms in process claims. |
| Application | The vaccine process involves technical steps and yields a usable product for poultry health—marketable and beneficial. |
| Conclusion | Refusal set aside; process is patent-eligible as claimed. |
Glossary
- Vendibility Test
- A check of whether the process leads to a usable/marketable result or improves a product.
- Process Patent
- Protection for steps of making a product, regardless of product per se.
- Novelty
- The invention is new and not anticipated by prior art.
FAQs
Yes, if it is novel, useful, and passes the vendibility check. There is no blanket bar.
It treated “live virus” as a disqualifier. The Court said focus on novelty, utility, and marketable result instead.
Sections 2 and 5 of the Patents Act, 1970 supported allowing process claims like this one.
Biotech applicants can claim manufacturing processes involving live materials if statutory requirements are met.
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