Order rejecting Patent Application must be reasoned order
Facts of the Case:
Jansen Pharmaceutica NV filed an Indian patent application (No. 1337/KOLNP/2008) for a dry formulation of tipifarnib, a composition designed for intravenous administration. The formulation aimed to benefit patients with impaired oral intake. The Patent Office rejected the application under Section 3(e) of the Patents Act, 1970, stating that the invention lacked technical advancement, was merely a mixture of known substances, and did not demonstrate an inventive step.
Procedural Background:
The First Examination Report was issued on August 12, 2014, and the applicant submitted objections on August 11, 2015. A hearing notice was issued on April 2, 2018, and ultimately, the Deputy Controller of Patents rejected the application on July 31, 2018. The applicant challenged this rejection before the Calcutta High Court, arguing that the order lacked reasoning, did not properly analyze prior art, and failed to apply settled legal principles regarding inventive step.
Reasoning of the Court:
The court found that the Patent Office failed to provide detailed reasoning for rejecting the patent, particularly regarding the lack of inventive step, without proper analysis of prior art documents (D1, D2, D3). The conclusion that the composition was a mere admixture was made without evaluating whether it had synergistic properties under Section 3(e). The rejection also failed to apply the principles laid down in F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2016 (65) PTC 1 (DB)) and Agriboard International LLC v. Deputy Controller of Patents (2022 Delhi HC), which require a structured assessment of inventive step.
Decision:
The Calcutta High Court set aside the rejection and remanded the matter to the Controller of Patents for reconsideration. The court directed the Controller to decide the case afresh within three months after granting a right of hearing to the applicant. It clarified that it had not adjudicated on the merits, leaving all questions open for reassessment.
Case Details:
Case Title: Jansen Pharmaceutica NV Vs. Deputy Controller of Patents and Designs
Date of Order: March 4, 2025
Case Number: IPDPTA/30/2023
Name of Court: Calcutta High Court
Name of Hon’ble Judge: Hon'ble Mr. Justice Ravi Krishan Kapur
