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Vifor (International) Limited & Anr. vs Msn Laboratories Pvt Ltd & Anr.

The Division Bench (“DB”) of the Hon’ble Delhi High Court has, in the much discussed and debated product-by-process patent infringement suit filed by Vifor (International) Limited & Anr. (“Appellants”) against three (3) respondents, namely, MSN Laboratories Pvt Ltd, Corona Remedies Pvt Ltd & Dr Reddys Laboratories Ltd (“Respondents”), ruled that, product-by-process claim under The Patents Act, 1970 (“Act”) would necessarily have to be examined based on ‘new and unobvious product’. The DB further stated that patentability of the product cannot depend upon the mere novelty of the process adopted.

The Appellants filed a suit against the Respondents regarding the former’s patented product (FCM) for an interim injunction to prevent the respondents from using a different manufacturing process to manufacture product similar to FCM. The Hon'ble Single Judge dismissed the interim injunction application, stating that the Appellant's patent protection was restricted to the process of obtaining the product, not the product itself. (Click here to know more about the judgement of Hon’ble Single Judge)

During the oral hearing scheduled on 4th September 2023, the Appellants relied on guidelines of the Intellectual Property Appellate Board (IPAB), asserting that product-by-process claims must define a novel and unobvious product, not influenced by production methods. The appellant argued that Section 2(1)(j) of the Act defines an invention as either a product or process, and Section 48 of the Act grants patentees the right to enjoin infringers on both. The appellant also argued that a product cannot be considered novel solely due to a new manufacturing process if it is identical to a known product.

The DB clarified scope of products obtained by a process and those obtainable by a process, the scope of a claim to a product "obtained by" a process would be only to products which had actually been made by the process. Such claims would only be infringed by products actually made by the relevant process. On the other hand, "obtainable by" claims cover a product which was not made by the defined process but could have been.

The ruling emphasized that if an applicant is compelled to submit a product-by-process claim for improved disclosure, the protection should be limited to the product itself. Furthermore, the determination of patentability of a product by process claim is limited to the product, so in case of infringement, it should be seen from the product's perspective only. The DB ruled that a product-by-process claim must be a novel and inventive product, unknown in the prior art, to be eligible for Section 48(a) of the Act, setting aside the Single Judge's refusal of interim relief in a patent infringement case.

Click here to access the Judgement Document:

Vifor (International) Limited & Anr. vs Msn Laboratories Pvt Ltd & Anr., [FAO(OS) (COMM) 159/2023 & CM APPL. 39177/2023, Delhi High Court, decision dated 7th February 2024]

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