India's claims to Traditional Knowledge washed up and spat out

This Kat posted last week on the topic of Traditional Knowledge, raising concerns at proposals to give Traditional Knowledge special sui generis protection.  One of his worries, elaborated in a comment on the blogpost, and in earlier posts (here and here), is that many cited examples of alleged expropriation of Traditional Knowledge simply do not stand up to scrutiny.  Another example has recently arisen, raising allegations of misuse of Traditional Knowledge from India relating to various herbs.  The IPKat was therefore delighted to receive this Guest Post on this latest development from esteemed former Kat David Pearce, writing under his famous feline nom de guerre Tufty the Cat.  Over to Tufty:

I wrote a guest post on Spicy IP a while ago about a claim by the Traditional Knowledge Digital Library (TKDL) to have successfully foiled an attempt by Nestec S.A. to get a European patent for an age-old Indian remedy. After analysing the case in question, I found that this claim turned out to be untrue. After also taking a look at a few more of the cases where the TKDL had been cited in third party observations at the EPO, it appeared to me that its use in preventing patents being acquired for traditional knowledge was greatly over-stated and it was nowhere near as relevant as the people who run it claim it to be.

I therefore greeted the recent announcement from the Indian Government (as reported here, here, here and here, among other places) to have "foiled an attempt by consumer goods giant Colgate-Palmolive to patent a mouthwash formula containing herb extract by citing ancient texts that show it was traditionally used in ancient medicinal practices" with a certain degree of scepticism. Although neither the press release nor any of the subsequent press coverage mentioned the patent applications in question, after a bit of digging I found two that seemed to fit the bill: European applications 08835291.9 and 13189942.9 (the latter being a divisional of 10787235.0). The second of these is mentioned in the "TKDL Major Milestones" list here under its publication number EP2689806.

The first application, titled "Compositions for oral applications containing botanical extracts", initially claimed a mouthwash with at least two botanical ingredients derived from one or more plants selected from a list. The initial claim was very broad. 

Unsurprisingly, the international examiner found some relevant prior art, finding the claims to lack either novelty or inventive step. The applicant then narrowed the claims down to a composition including an active ingredient derived from five (or possibly six) plants. The EPO examiner, however, was not convinced and objected that the claims were still too broad and unclear. The applicant then narrowed the claims further, and specified percentage ranges of extracts from each of six plants in an amended claim 1. 

Following this, the CSIR stepped in with some third party observations in April 2011, claiming that there were several references in the TKDL where three of the plants mentioned had been used for treatment of oral ailments. After forwarding these to the applicant, a few months later the EPO examiner issued a further examination report citing a document mentioned in the application itself, and objecting that the new claims lacked novelty. The applicant filed yet further amendments, narrowing the claims again, but the examiner objected that these lacked an inventive step over the applicant's own cited document. The applicant then changed tack, and amended the claims in an entirely different way, claiming a composition from one of the original dependent claims. The examiner, apparently a bit miffed by this point, was still having none of it and objected that these too lacked an inventive step, pointing out that 

"an inventive step cannot automatically be acknowledged for every novel combination under original claim 1; that would, for instance, enable unacceptable possibilities of speculative draftings at filing date, followed by much later selections" (annex to the communication dated 15 June 2012). 

Examination then continued back and forth until in March this year the examiner issued a communication following a telephone conversation, indicating that the claims still lacked novelty. The applicant failed to respond to the deadline set by the communication, and a notice of loss of rights issued on 12 June 2015. The applicant currently has until 24 August to respond to this, so the application is not quite dead yet, but it does look like the applicant will struggle to get anything allowed. The important point to make, however, is that the TKDL references have played absolutely no part in getting to the current state. The main references have instead been those cited in the application itself, together with a further one cited by the examiner. Any claim that the TKDL has played any part in foiling an attempt to get a European patent in this case is therefore quite clearly false.

The parent of the second application, titled "Oral compositions containing extracts of myristica fragrans and related methods", initially also claimed a mouthwash with a broad scope, in this case specifying a combination of extracts including one from Myristica fragrans (nutmeg). The international examiner, after some amendments had been filed to include another natural extract from a long list of options, objected that the invention was either not novel or not inventive over various cited documents. Following further amendments filed on European regional phase entry, third party observations were filed by CSIR, claiming that there were several references in the TKDL where Myristica fragrans, among others, had been used for oral ailments. After duly forwarding the observations to the applicant, the examiner issued an examination report, objecting that the invention was still not inventive over the documents already cited. No mention was made of the TKDL citations. Following another round of examination, a summons to oral proceedings was issued, with the inventive step objections still raised. and the application was refused at a hearing held on 26 November 2013. The decision made no mention of the TKDL references.

The divisional, 13189942.9, which was filed shortly before the hearing was held on the parent, claimed the original composition from the parent application, which the examiner unsurprisingly objected to.  CSIR then file observations again in May 2014, following which the applicant filed amended claims in response to the search opinion. The examiner then issued an examination report, objecting that the claims were in the form that resulted in refusal of the parent application, and were not allowable for the same reasons as set out in the refusal. The applicant failed to respond in due time, with the result that the application was deemed withdrawn. The application is now officially dead.

Assuming the applications are indeed the ones in question, it appears to me that the recent claim by the Indian Government is not just a bit exaggerated, but completely false. Not only have TKDL references not been instrumental in these cases in preventing Colgate-Palmolive from patenting a mouthwash based on ancient medicinal practice, but they have been shown to be not relevant at all. This is even more striking than in the other applications I looked at previously, where TKDL references were at least mentioned by the EPO examiner, along with other more relevant references. I still wonder then whether there have been any cases at the EPO where the TKDL has been a key factor in preventing something from being patented. I have yet to see one, but I would be happy to be proven wrong.