Srinivas Jegannathan Vs The Controller of Patents: 01.07.2025: (T)CMA(PT)/38/2023 (OA/61/2014/PT/CH):High Court of Madras: Hon’ble Mr. Justice Senthilkumar Ramamoorthy
The appellant challenged the order dated 26.03.2014 passed by the Controller of Patents, which refused Patent Application No. 122/CHE/2006 relating to a pharmaceutical composition combining ceftazidime, tazobactum, and linezolid for enhanced antibacterial activity.
The factual background of the case reveals that the appellant, Srinivas Jegannathan, filed the patent application for a combination therapy designed to treat infections caused by multi-drug-resistant bacteria, including MRSA and VRSA. The composition involves ceftazidime (a cephalosporin), linezolid (an oxazolidinone class antibiotic), and tazobactum (a beta-lactamase inhibitor).
The appellant aimed to enhance the antimicrobial spectrum and activity by combining these agents. After filing the application, the First Examination Report (FER) was issued on 03.12.2012. The appellant responded by amending the claims on 24.09.2013 and further after a hearing held on 10.02.2014. Despite these efforts, the Controller rejected the application on 26.03.2014.
The procedural background includes multiple rounds of claim amendments by the appellant, with the last set of amended claims focusing on a drug delivery system using biodegradable polymers for sustained release of the active ingredients. The Controller rejected the application, citing lack of inventive step and reliance on prior arts D1 to D6. The appellant contended that the Controller erroneously concluded the invention was obvious without proper reasoning, leading to the present appeal.
The core dispute involves whether the combination of ceftazidime, tazobactum, and linezolid constitutes an inventive step or is obvious to a person skilled in the art (PSITA).
The appellant argued that prior art D1 disclosed combinations of linezolid with other antibacterial agents but not with a beta-lactamase inhibitor like tazobactum. Prior art D2 combined an oxazolidinone with ampicillin and sulbactum but not cephalosporins. Prior art D3 involved clavulanate, another beta-lactamase inhibitor, but did not disclose the specific combination of the three drugs claimed. The appellant maintained that no cited prior art taught or suggested combining a cephalosporin, a beta-lactamase inhibitor, and an oxazolidinone for enhanced antibacterial efficacy.
The respondent, however, argued that the appellant had voluntarily amended claims, and as per the decision in Genomatica Inc. v. Controller of Patents and Designs, CMA(PT)/4/2023 (Madras High Court, 19.03.2024), the Controller rightly evaluated the last amended claims, which allegedly overlapped with known compositions.
The Court’s discussion focused on the absence of a clear, reasoned finding in the Controller's order on why a skilled person would combine the three specific agents. While D1 disclosed linezolid and cephalosporins, it did not mention beta-lactamase inhibitors. D2 disclosed oxazolidinones with ampicillin and sulbactum, but not cephalosporins.
D3 disclosed clavulanate use but not the claimed combination. The Court noted that the Controller’s conclusion—that the combination was obvious—lacked detailed reasoning or explanation of how a skilled person would arrive at the claimed invention from the prior art references. Moreover, since the appellant offered to revert to the original claims rather than the last amended ones, the objections under Section 59 of the Patents Act, 1970 regarding claim amendments and the relevance of D4 to D6 became moot.
In its decision, the Court set aside the impugned order dated 26.03.2014 and remanded the matter for reconsideration by a different officer of the Patent Office. The reconsideration was directed to proceed based on the original claims filed with the complete specification. The Court instructed that a fresh speaking order be passed within three months after providing the appellant with an opportunity of hearing. The respondent was also permitted to cite new prior art references during this reconsideration process if required. The Court clarified that no opinion was expressed on the merits of the patent application and that the remand was solely for proper examination and reasoned adjudication.
This case highlights the judicial insistence on detailed reasoning when rejecting patent applications on the ground of lack of inventive step and affirms the procedural rights of inventors during patent prosecution.
