Case Title: Taiho Pharmaceutical Co. Ltd. Vs Controller of Patents Case No.: C.A. (COMM.IPD-PAT) 6/2022 Date of Order: 15 May 2025 Court: High Court of Delhi Judge: Hon’ble Mr. Justice Amit Bansal Neutral Citation: 2025:DHC:3777
Facts:
Taiho Pharmaceutical Co. Ltd., a Japanese entity, filed a patent application in India for a novel piperidine compound, claiming priority from a Japanese patent. The application was filed under the Patent Cooperation Treaty (PCT) and designated for national phase entry in India. The Indian Patent Office conducted substantive examination and rejected the application, citing lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d), primarily on the grounds that the claimed compound was considered a new form of a known substance without enhanced efficacy, and that the invention was obvious in light of prior art D1.
Procedural Details:The Patent Office issued a First Examination Report (FER) in March 2018, raising objections regarding Sections 2(1)(ja), 3(d), and 3(i).The applicant responded with detailed submissions in September 2018.A hearing was held in November 2019.The Patent Office’s Controller decided to reject the application on 18 June 2021.The applicant, Taiho Pharmaceutical, filed an appeal before the Delhi High Court challenging this order.
Issue:The main issues were whether the claimed compound was patentable under Indian law, specifically:Whether the claims involved an inventive step as per Section 2(1)(ja)?Whether the compound was patentable under Section 3(d), considering it was a new form of a known substance but lacked enhanced therapeutic efficacy?
Decision:The High Court upheld the appeal in part, setting aside the Patent Office’s rejection under Sections 2(1)(ja) and 3(d). It remanded the case back to the Patent Office for a fresh hearing, emphasizing the need for proper identification of the ‘known substance’ against which the claims are assessed. The Court highlighted that the prior art did not specifically identify the ‘known substance’ and that the applicant was not given a fair opportunity to demonstrate enhanced efficacy.
Summary: The Court ordered a re-examination of the patent application, allowing the applicant to substantiate their claims effectively, thus reinforcing procedural fairness and proper identification of prior art in pharmaceutical patent examination.
