Nestle Prevails In Pre-Grant Opposition.

The Patent law in India provides for a process of a pre-grant opposition, whereby opponents may pose their standing against the grant of the patent. The Forum for the same being the Patent Office itself, the contentions made there under find a place under the microscopic eye of examiners and controllers who apply a confluence of technical and substantive assertions to arrive at a decision. An elucidation of this was viewed in Societe Des Products Nestle S.A. v. Council for Scientific and Industrial Research [2008(37) PTC 555( P&D.O.)]

Nestle, applicants for a patent titled "A process for the Preparation of a Foodstuff with a good cooked flavour by extrusion and an installation for carrying out the Process", obtained a First Examination Report, as under S. 12 of the Patents Act, 1970 to be replied to within fifteen months from the date of forwarding the examination report. The application was responded to, and subsequently examination reports to the effect had been issued. After overcoming the formal and technical objections, the application was accepted by the Controller and the notice of acceptance to the same was published in the gazette.

The application being initiated in 1997, having undergone publication in 2000, and a pre-grant opposition being faced with that very year the official at the Patents and Designs Office clarified that the provisions governing pre-grant opposition, as under the amended Act in 1999, would apply. The application was opposed to by the Council of Scientific and Industrial Research (CSIR), who sought an extension of one month as allowable under the provisions of Section 25 of the Act governing the pre-grant opposition. While the Controller condoned the delay, Nestle challenged the granted extension of time. The formalities with respect to filling of evidence and other procedures were completed and a date for hearing was fixed. CSIR was unrepresented and the hearing was conducted in the presence of Nestle' representative.

Nestle' representative stated that while the process of extrusion was well known, but the same was not being claimed. They stated that what was being claimed related to two sets of extrusion, which were not simultaneous but in series, which differentiated it from the citation made in the opposition. Further he stated that what was claimed was the three-step process, which helped maintain or enhance the flavour and that the same was not enunciated in any of CSIR' citations. Nestle referring to various precedents and authorities on Food Processing Technologies, stated that the problem of maintaining flavour while extruding food products had never been successfully solved before. It was also stated that the absence of the opponents reflected that they had either realized that they could not defend their case or that they possessed no interest in pursuing the matter further.

Referring to the averment made in written by CSIR regarding the twin screw extruders, the Assistant Controller noted that Nestle' specification admitted to the same , while further averring that the documents cited by CSIR did not anticipate or disclose the invention under speculation. Elucidating the specific features of the patent, Nestle requested for the opposition petition to be dismissed. The Assistant Controller took into consideration the averments made in the affidavits filed as evidence and opined that although CSIR was right in as much as the extruding process was a known one on the date of filling the application, but that there existed no substantial evidence as to how flavour was retained. However, he stated that with regard to the dynamic separation device, CSIR had failed to show any evidence and that they failed to prove the lack of novelty. He also stated that the benefit of doubt in respect of "preparation of good food" was in favour of Nestle and ruled the invention to be novel, inventive and industrially applicable, especially since the introduction of the cooker in series, between the two extruders and the dynamic separation device could not be inferred from the prior art.

[c] Lex Orbis 2008

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