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PRATHIBA M. SINGH
Novartis Ag – Appellant
Versus
Controller Of Patents And Designs – Respondent
JUDGMENT
Prathiba M. Singh, J. - This pronouncement has been done through hybrid mode.
2. The present appeal under section 117A of the Patents Act, 1970 (hereinafter 'Act') challenges the impugned order of the Asst. Controller of Patents dated 28th September, 2020. Vide the said order, the divisional application of the Appellant being 7863/DELNP/2014 (hereinafter 'divisional application') has been rejected on the ground that the subject matter of the granted claims of the parent application being 8114/DELNP/2007 (hereinafter 'parent application') and the subject matter of the divisional application belong to the same broad class and group of inventions linked so as to form a single inventive concept. Thus, the Controller has held that the divisional application is not maintainable.
Factual Background
3. The background of the present appeal is that the Appellant filed four U.S. priority applications being 60/681, 684, 60/681, 722, 60/681, 723, and 60/681, 772 on 17th May, 2005 in respect of various pharmaceutical preparations for compositions and methods for treatment of eye disorders. The Appellant filed PCT application bearing number PCT/US2006/019327 dated 17th May, 2006 taking prior
The requirement of a plurality of inventions in the parent application does not apply when the Divisional Application is filed suo moto. The plurality of inventions need not be reflected in the claim....
A divisional patent application must be filed before the grant of a parent application; filing post-grant is impermissible under Section 16(1) of the Patents Act.
The main legal point established in the judgment is that a divisional patent application must be distinct from the parent application, and the reasons for rejection of a patent application should be ....
The requirement of 'plurality of inventions' should be tested based upon the disclosure made in either the provisional or complete specifications.
A claimed patent must demonstrate novelty and an inventive step, which cannot be established by mere derivations that lack enhanced efficacy.
The court allowed the amendment of claims at the appellate stage and found that the invention satisfied the criteria of inventive step.
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