Otsuka Pharmaceutical Co. Ltd. vs Controller General Of Patents & Designs

S. Usha, J

This appeal is against the order dated 11/05/2009 passed by the Deputy Controller of Patents in India Patent application No. 1880/DELNP/2005 filed on 05/05/2005 under section 15 of the Patents Act, 1970 (hereinafter referred to as the Act).

The facts of the case are-

The application was filed on 05/05/2005. On 27/07/2007 the First Examination Report under section 12 of the Act was issued. The objections were that the claimed invention lacks inventive step in view of the prior art documents JP2002-145769, JP58-216118 and JP2002-114674 and also raised objections against claims under section 3(d) and 3(e) of the Act.

3 . On 26/12/2007, the appellant submitted a detailed reply with respect to the inventive step, section 3(d) and 3(e) of the Act. On 25/03/2008 and 24/06/2008, the Deputy Controller issued two office actions wherein the objections raised with respect to inventive step, section 3(d) and section 3(e) were maintained without any explanation as to how and why the submissions presented by the appellant were not sufficient.

4 . In reply on 16/06/2008 and 30/06/2008 a detailed reply was sent to the Patent office with respect to inventive step, section 3(d) and section 3(e) of the Act.

5 . On 22/08/2008, the Deputy Controller issued a notice for hearing on 15/09/2008 wherein it was stated that "the composition as claimed in amended claims appeared to be a mere admixture as these claims are describing the known amino acids as ingredients wherein the particle size of the amino acids is given elaborately."

6 . The appellant contended that all the remaining objections having been complied with were withdrawn and the hearing was limited to the objection under section 3(e) of the Act. Therefore, the Deputy Controller did not maintain any other objection i.e. with respect to inventive step and section 3(d) of the Act. Accordingly only objection under section 3(e) was maintained in the hearing notice and the objection regarding lack of inventive step and section 3(d) was waived.

During the hearing the appellant submitted the written submission with an annexure I wherein synergism of the claimed composition was demonstrated and the arguments were restricted to the objection under section 3(e) of the Act.

8 . In the impugned order dated 11/05/2009 the Deputy Controller held that the invention as claimed in the claims of the instant application not only lacks in inventive step but also falls within the provisions of section 3(d) of the Act whereas no objection under section 3(e) was mentioned which clearly shows that the claims do not fall under the prohibition under section 3(e) of the Act.

9 . Accordingly all the three objections raised by the Deputy Controller i.e. lack of inventive step, section 3(d) were waived in the hearing notice and section 3(e) was waived by order dated 11/05/2009.

10 . The other error according to the appellant in the order was that the Deputy Controller did not cite Japanese Patent No. 3211824 in any of the official letters prior to the order dated 11/05/2009. Therefore no opportunity was provided to the appellant to give explanation with respect to the said document. There is no reasoning as to why despite acknowledging enhanced efficacy of the claimed composition, the Deputy Controller still considered that the claimed composition falls under the prohibition of section 3(d) of the Act.

The appellant's grievance was also that the Deputy Controller had not considered the Annexure I of the written submission. The counsel further submitted that the Deputy Registrar had not considered all his submissions as regards the main claim of the invention.

The counsel for the appellants relied on few judgments-

(1) OA/23/2010/PT/DEL - Resprotect GMBH Vs. The Controller of Patents & Designs & Anr. - "We also find that in the first examination report, the office indicated that the question of novelty will be considered after specification has been amended. In the second examination report, there is no mention of novelty. Therefore, the inventor will be well within his right to assume that the patent office had accepted the novelty of the invention.

It is better that the notice of hearing indicate what are the prior art that the Controller will be referring to which the inventor has to explain and prove the patentability of the invention.

(2) OA/41/2011/PT/CH - Schering Corporation Vs. Asstt. Controller of Patents & Designs - "The Controller has given a very bald and vague reason without going into the details of the entire document. In view of the aforesaid reasons, we are constrained to set aside the impugned order.

(3) ORA/21/2011/PT/KOL - Ajantha Pharma Ltd. Vs. Allergan Inc. & Ors.-- "A discovery would be considered as an invention if the new form results in enhancement of known efficacy of that substance and so on as described in the section.

(4) (1985) RPC 59--Windsurfing International Inc. Vs. Tabur Marine (Great Britain) Ltd.--The steps required for establishing invention.

We have heard and considered the arguments of the appellant's counsel and have gone through the pleadings and documents.

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The facts in this case is very clear that there had been different objections in different letters. For instance in the first examination report dated 27/07/2007 objection was that the claimed invention lacks inventive step in view of the prior art document and objection was also under section 3(d) and 3(e) of the Act. In the second letter dated 25/03/2008 and 24/06/2008 the objections with respect to inventive step section 3(d) and section 3(e) were maintained.

On 22/08/2008 the objection under section 3(e) of the Act alone was maintained in the hearing notice and therefore the objection under section 3(d) and inventive step was not maintained. As well in the impugned order no objection under section 3(e) was maintained. Therefore, all the three objections seem to have been waived.

We also find in the impugned order, the Deputy Controller has referred to the prior art document which were not cited in any of the official letters nor in the hearing notice. The appellant has not been given an opportunity to answer their case which has led to violation of principles of natural justice.

The case cited by the appellant squarely applied to this case on hand.

OA/23/2010/PT/DEL--"6. However, it is better that the notice of hearing indicate what are the prior art that the Controller will be referring to which the inventor has to explain and prove the patentability of the invention. We also find that in the first examination report, the office indicated that the question of novelty will be considered after specification has been amended. In the second examination report, there is no mention of novelty. Therefore, the inventor will be well within his right to assume that the patent office had accepted the novelty of the invention.

.........The patent office while dealing with grant of patent exercises quasi-

judicial Power. They decide the right that claimed which may be opposed in a fair manner. If there is an opposition, they hear both sides and decide the matter in accordance with law. If there is no opposition till they test the application in accordance with the law of patents, allow the grant or reject it.

A quasi-judicial authority is not an adversary of the patent applicant. Therefore, any objection that may arise in this regard, any prior art that will be relied on must be made known to the applicant before the date of hearing. In this case, we are of the opinion that sufficient time was denied to the applicant. The applicant's Annexure 1 was not considered and therefore we have to send the matter back. We make it clear that we have not examined the merits of the patent. We do not know if the invention deserves the grant. But definitely the appellant deserves a fair hearing and a consideration of all the materials that he has placed before the Authority.

The annexure filed was not considered by the Deputy Controller. The prior art document was not mentioned in any of the letters sent by the Controller to the appellant. Any document that will be relied on must be made known to the appellant before the date of hearing for their reply.

Applying the observations made in OA/23/2010/PT/DEL, we think it fit to remand the matter for hearing afresh by affording an opportunity to the appellants to answer the objections raised. The notice shall indicate all the objections and prior art documents. The matter shall be heard and decided thereafter in accordance with law. As held in OA/23/2010/PT/DEL we have not dealt with the merits of the patent, it is open to the Deputy Controller to decide the grant after clearly indicating the objections and the documents relied on by the Deputy Controller.

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In view of the above, the appeal is allowed and the matter stands remanded to the Deputy Controller for afresh hearing and to decide in accordance with law. No order as to costs.