The court allowed the amendment of claims at the appellate stage and found that the invention satisfied the criteria of inventive step.

JUDGMENT

Amit Bansal, J.

Background

1. The present appeal under Section 117A of the Patents Act, 1970 (hereinafter referred as "Act") impugns the order dated 29th December, 2021 passed by the Assistant Controller of Patents and Designs, Patent Office, Delhi (Patent Office) refusing the application for grant of patent application No.201817040811 for an invention title "Composition for use in the Prophylaxis of Allergic Disease".

2. Oral submissions in the matter were heard on 29th November, 2022 and 30th November, 2022. Vide order dated 30th November, 2022, the judgment was reserved in the appeal, giving liberty to the parties to file written submissions. Written submissions were filed on behalf of the appellant as well as the respondent.

Brief Facts

3. Brief facts necessary for deciding the present appeal are set out below:

I. On 10th March, 2017, the appellant filed PCT international application No.PCT/EP2017/055680 claiming priority from a European Patent Application, i.e., EP16172431.5 dated 1st June, 2016.

II. On 29th October, 2018, the appellant filed the National Phase Application in India as Indian Patent Application No.201817040811 titled as "Composition for use in the Prophylaxis of Allergic Disease".

III. On 22nd February, 2019, the patent application was published in the official Journal of Patent Office and subsequently, the appellant filed a Request for Examination of the Patent Application on 20th May, 2020.

IV. On 29th January, 2021, the first examination report (FER) containing objections to the grant of the patent was issued by the respondent no.2.

V. On 28th July, 2021, the appellant filed response to the first examination report.

VI. On 23rd August, 2021 and 23rd September, 2021, hearing notice were issued by the respondent no.2. Hearing notice dated 25th October, 2021 was issued by the respondent no.2, fixing the date of hearing on 23rd November, 2021.

VII. On 23rd November, 2021, arguments were advanced on behalf of the appellant.

VIII. On 7th December, 2021, the appellant filed written note of submissions in support of the arguments advanced during the hearing.

IX. On 29th December, 2021, the impugned order was passed by the Assistant Controller of Patents and Designs refusing the application for grant of patent filed on behalf of the appellant under Section 15 of the Act.

4. The impugned order passed by the Patent Office held that:

(i) Claims of the patent application of the appellant defined a method for `treatment of human body' and were therefore, not patentable as the scope of the Claims fell under Section 3(i) of the Act.

(ii) The amended Claims filed by the appellant were not permissible in terms of Section 59 of the Act, as the amended Claims sought to confer greater scope of protection, in comparison to the originally filed Claims, which Section 59 of the Act prohibits.

(iii) The data given by the appellant for the claimed composition was not demonstrating stabilized synergism and the appellant failed to provide data comparing individual effects of each drugs/active ingredients with combination of them so as to prove synergy. Therefore, the patent application did not meet the requirements of Section 2(1)(ja) and Section 3(e) of the Act.

5. The appellants being aggrieved by the decision of the Assistant Controller of Patents and Designs have filed the present appeal.

Submissions

6. Counsel appearing on behalf of the appellant assails the impugned order on the following grounds:

(i) The original set of Claims, specifically Claim 4, was directed towards a `composition' and not towards a `method of treatment..Therefore, the amendment did not enlarge the scope of Claims and description.

(ii) In any event, the amendments were carried out to overcome the objections raised by the Patent Office in the FER dated 29th January, 2021 and the hearing notices dated 23rd August, 2021 and 25th October, 2021. Therefore, the same were within the scope of the originally filed Claims and therefore, permissible under Section 59 o