Natco Pharma Vs Union of India

DATE OF JUDGEMENT: 12.07.2022
CASE: W.P.(C)-IPD 91/2021
NAME OF HON'BLE COURT: High Court of Delhi
NAME OF HON'BLE JUDGE: The Honourable Justices Prathiba M Singh
CASE TITLE: Natco Pharma Vs Union of India

The Petitioner namely NATCO was the Opponent while Respondent No.2 namely NOVARTIS was the applicant for Patent. NOVARTIS filed PCT application being PCT/US2006/043710 on 8th November, 2006 which had 85 claims.

Subsequently Indian application bearing no. 4412/DELNP/2007 titled “PHARMACEUTICAL COMBINATIONS OF AN ANGIOTENSIN RECEPTOR ANTAGONIST AND AN NEP INIBITOR” was filed on 8th June, 2007 with the Indian Patent Office.

During the pendency of pre grant opposition's filed by inter alia the Petitioner herein, the Respondent No.2 kept on filing applications seeking amendment of the claims. The Petitioner filed pre grant Oppositions against the impugned Patent of the Respondent No.2, which was at that time, containing 17 claims.

Subsequent there to the Applicant namely NOVARTIS filed amended sets of claims along with expert affidavit. This was the expert , which was sought to be cross examined by the Petitioner/Opponent namely NATCO.

The Opponent argued that the Patent Office ought to have first given a ruling as to whether the amendments filed by the Applicant were allowed and if allowed, which is the final set of claims being considered for grant. Though it was sought to be rebutted by the Applicant that the final set of amended claims which are on record are all claims which are included in Claim Set 3 consisting of claim 1 to 17 which has been supplied to the Opponent.

The Hon'ble High Court of Delhi was pleased to dispose of the said Writ Petition.The Hon'ble Court relied upon the Judgement namely UCB Farchim SA v. M/s Cipla Ltd. [W.P.(C) No. 332/2010 order dated 08th February, 2010] to the effect that a pre-grant opposition proceeding is in aid of the examination of the patent application.

The proceeding in a pre-grant opposition and simultaneous examination of a patent application, however, cannot also result in a situation where the pre grant opponent is kept in dark about the developments taking place in the examination process.

This Judgement will off course pave way for bringing out the transparency in adjudication of examination of patent process as well as pre grant Opposition proceeding. The Opponent can not be put in dark. This order ensures that while hearing the Pre grant Opposition proceeding, the Opponent must be aware of as to what is the final claims, the same is going to meet at the time of hearing. Other wise whole process of pre grant opposition proceeding will become otiose.

Ajay Amitabh Suman, IPR Advocate
Hon'ble High Court of Delhi
ajayamitabh7@gmail.com
9990389539