A claimed patent must demonstrate novelty and an inventive step, which cannot be established by mere derivations that lack enhanced efficacy.

JUDGMENT :

SAURABH BANERJEE, J.

Preface:

1. This judgment addresses the issue of refusal of Indian Patent Application No.3630/DLNP/2011 titled “A COMPOUND REPRESENTED BY FORMULA (5a)”, filed on 13.05.2011 as a divisional patent application out of Indian Patent Application number 1090/DELNP/2007, [Hereinafter referred to as the “subject application], by the Assistant Controller of Patents & Designs[ Hereinafter referred to as the “Controller]. vide order dated 20.10.2016, [Hereinafter referred to as the “impugned order] under the provisions of the Patents Act, 1970 (as amended from time to time), [Hereinafter referred to as the “Act]

2. The invention under the subject application relates to a novel intermediate compound formula (5a), represented as A 2- [(2-hydroxy- 4,5-dimethoxybenzoyl) amino]-1, 3-thiazole-4-carboxylic acid methyl ester compound in which is a ring “A” represents a benzene ring/ a 6- membered aromatic heterocycle containing one or two selected from a nitrogen atom, an oxygen atom, and a sulphur atom, containing:-

R1 as a hydrogen atom,

R2 and R3 are each a methoxy group, and

R4 is a hydrogen atom.

Brief Narrative:

3. The Controller issued a First Examination Report, [Hereinafter referred to as the “FER] raising both formal and technical objections to the subject application on 24.02.2015. The major objection was that the subject matter of Claims 1 and 2 did not constitute an invention under Section 2(1)(ja) of the Act in view of prior art document D1: EP 0994 108 A 1(ZERIA PHARMA CO. LTD. [JP] (2000-04-09) and the prior art document D2: US 5981 557 A (NAGASAWA MASAAKI[JP] ET AL.) (1999-11-09) and the other objection was that the subject matter of Claims 1 and 2 fell within the scope of Section 3(d) of the Act.

4. The appellant, upon filing a response thereto on 23.07.2015 was accorded a hearing on 12.06.2016. Thereafter, vide the impugned order the Controller refused the subject application on the grounds that the subject application does not fulfil the criteria envisaged under Section 2(1)(ja) of the Act, since the invention therein lacked novelty and under Section 3(d) of the Act over disclosure made in the prior art document D2 and the inventive step in view of disclosure made in the prior art documents D1 and D2. In effect, in view of the compounds disclosed in the prior art documents D1 and D2, the subject application was held not liable to proceed for grant.

Submissions for and on behalf of appellant:

5. As per Mr. Ankush Verma, learned counsel for the appellant, the impugned order is erroneous since the Controller has not comprehended the technical problem and solution provided by the claimed invention.

6. Mr. Ankush Verma submitted that the Controller has failed to evaluate the merits of the invention by erroneously relying upon the prior art document D1 ignoring the fact that the same has been in “A” category of the International Search Report (ISR) and has not been considered to be relevant to the inventive step of the claimed invention. Further, the prior art document D1 “teaches away” from the claimed invention since it teaches a reaction wherein a compound of formula (5a) is avoided and therefore cannot help a Person Skilled In The Art, [PSITA] to arrive at the compound of formula (5a) in Claim 1 of the subject application.

7. Mr. Ankush Verma submitted that the methyl ester having the methoxycarbonyl group as claimed is not produced in the prior art document D2, and such compound is not specifically described. Also, when starting from the generic disclosure of formula (II) to arrive at the claimed compound it takes a selection from multiple lists, which cannot be considered obvious.

8. Mr. Ankush Verma further submitted that the impugned order suffers from impermissible hindsight analysis in accordance with Chapter 9, paragraph 09.03.03.02 of the Indian Manual of Patent Office Practice and Procedure, 2019 and therefore ought to be remanded to the Indian Patent Office for re-adjudication. Relying upon F. Hoffma