Summary
The Madras High Court reversed the Controller’s refusal of a patent for Kemin Industries' enzyme-based animal feed supplementation method. The Court clarified that the invention did not fall under Section 3(i) as it pertains to feed supplementation, not treatment. The decision also found the invention novel and inventive under the Patents Act.
The Madras High Court recently overturned the Controller’s decision to reject a patent application in the case of Kemin Industries, Inc. v. The Controller of Patents, finding that the refusal order issued under Sections 3(d), 3(i), and 2(1)(j) of the Patents Act, 1970 was unsustainable.
Facts of the Case
The present appeal arises from an order dated 19th of July 2022 passed by the Controller of Patents (“Controller”), wherein the patent application no. 201617013577 filed by Kemin Industries, Inc. (“Kemin”), titled “Use of Ferulic Acid Esterase to Improve Performance in Monogastric Animals”, was refused. Kemin’s invention involved a method comprising ferulic acid esterase (FAE) supplemented with four main chain degrading enzymes namely cellulase, xylanase, glucanase, and amylase to improve energy extraction in animal feed for monogastric animals.
In the first examination report (FER), the Controller raised objections based on lack of novelty, inventive step and section 3(d) of the Act by citing prior art documents D1 and D2. In their response, Kemin distinguished the invention from cited prior art arguing that D1 and D2 disclosed only the use of xylanase and not the claimed combination of four main chain degrading enzymes with FAE. Subsequently, in response to the hearing notice maintaining all earlier objections, Kemin submitted a single amended claim with a narrowed scope. The amended claim pertained to a method for reducing by 20% to 80% the quantity of the main chain degrading enzymes necessary to extract a given amount of metabolizable energy from animal feed by supplementing the feed with 20 to 200 units of bacterial FAE in combination with four specific enzymes – cellulase, xylanase, glucanase, and amylase.
Despite written submission and claim amendments, the patent application was refused by the Controller primarily citing lack of inventive step, and non-patentability under sections 3(d), and 3(i) of the Act.
Grounds of Refusal by the Controller
The Controller contended that the claimed invention lacked novelty and inventive step as the combination of enzymes with FAE was already known in prior art documents D1 and D2, and their use in improving animal performance was obvious to a person skilled in the art. Relying upon Kymab Limited v. the Assistant Controller of Patents & Designs (Kymab), it was further argued that the invention was related to a method of treatment of animals through the administration of a substance, which is expressly excluded from patentability under section 3(i) of the Act. Additionally, the Controller maintained that the invention amounted to a mere use or admixture of known substances without enhanced efficacy, failing to demonstrate any significant technical advancement over existing knowledge, therefore rendering it non-patentable under section 3(d) of the Act.
Arguments Provided by Kemin
Kemin argued that the claimed invention fulfilled the criteria of novelty and inventive step as it provided a method of supplementing FAE produced from bacteria with four specific main chain degrading enzymes namely cellulase, xylanase, glucanase, and amylase. They further contended that the claimed method significantly enhanced metabolizable energy extraction in monogastric animals, which was neither taught nor suggested in any of the cited prior art. They also argued that their invention demonstrated synergistic effects with supporting experimental data. Kemin maintained that their invention was purely about supplementing animal feed, not treating animals, so section 3(i) did not apply. Finally, they contended that Section 3(d) was not applicable since the process involved more than one new reactant.
Court’s Analysis
The Court found that Kemin’s invention was distinguishable from Kymab and did not fall within the exclusion under section 3(i) of the Act, as it related to feed supplementation and not treatment of animals. It clarified that the scope of Section 3(i) cannot be extended to cover methods of supplementing animal feed merely because such supplementation may ultimately enhance the economic value of the animal or its products, such as meat.
Section 3(d) was also found inapplicable, since the claimed method involved multiple new reactants and was not merely a known process. The Court also concluded that the invention satisfied the requirements of section 2(1)(j), as the combination of enzymes and the demonstrated synergistic effect in Kemin’s invention was neither disclosed nor suggested by the cited prior art.
Conclusion
The Madras High Court set aside the impugned order, and Kemin’s patent application was directed to proceed to grant with no order as to cost.
Citation: Kemin Industries (Appellant) vs The Controller of Patents (Respondent), CMA(PT). No.46 of 2024, 2025:MHC:753, (H.C. Madras March 18, 2025). Available at: https://indiankanoon.org/doc/74027572/
Authored by: Dr. Rukaya Amin Chowdery
Article Review: Neetha Mohan
Accessibility Review: Rakesh Krishnan