The court emphasized the necessity for a thorough examination of patent applications, particularly regarding novelty and inventive step, and the importance of considering decisions from other jurisdictions.

JUDGMENT :

The appellant applied for grant of patent for a claimed invention titled “COMPOSITIONS FOR PREVENTING OR TREATING ALLERGIC SKIN DISORDERS, CONTAINING GPCR19 AGENTS AS ACTIVE INGREDIENTS”. Such application was rejected by impugned order dated 22.04.2020.

2. The above mentioned application was lodged on 05.03.2014. Pursuant to a request for examination, the First Examination Report (FER) dated 25.05.2018 was issued. In the FER, objections were raised inter alia on grounds of lack of novelty and inventive step by citing prior arts D1 to D4; and non-patentability under Section 3(e) of the Patents Act, 1970 (the Patents Act). The appellant responded to the FER on 22.02.2019 and filed amended claims. A hearing notice was issued on 06.02.2020. Pursuant to a hearing on 11.03.2020, the appellant filed written submissions on 25.03.2020 and submitted further amended claims on 25.03.2020. These were the claims rejected under the impugned order.

3. Learned senior counsel for the appellant referred to the FER and pointed out that the prior arts cited therein were distinguished in reply dated 22.02.2019. With regard to prior arts D1 and D3, he submitted that the GPCR19 agonist referred to therein was intended as a therapeutic agent for the treatment of sepsis, whereas the appellant's claims are limited to and target infectious skin disorders. As regards prior art D2, he pointed out that it relates to a new GPBAR1 agonist compound intended to treat inflammatory disorders. As regards prior art D4, he submitted that it discloses the GPCR19 agonist, chenodeoxycholic acid and ursodeoxycholic acid, and not sodium taurodeoxycholate compound.

4. In spite of such reply, learned senior counsel contends that the same objections were retained in hearing notice dated 06.02.2020 and that substantially similar language is used in the impugned order. By referring to the impugned order, learned senior counsel submitted that conclusions were recorded therein that the external preparation of claim 1 is not patentably distinct from the product disclosed in D1. While recording such conclusion, he contends that the Controller did not discuss or record any findings with regard to the appellant's reply wherein prior art D1 was distinguished. Likewise, he submits that the basis on which prior arts D2 to D4 were distinguished was also not discussed in the impugned order. Instead, he states that a conclusion was recorded that the claimed invention could have been arrived at through routine experimentation by a person skilled in the art on the basis of the disclosures made in prior arts D1 to D4.

5. As regards the conclusion that no details were provided by the appellant for the advantages or surprising effects/unexpected effects of the claimed invention in comparison to the prior arts, learned senior counsel referred to the affidavit of Seong, Seung-Yong (the inventor) to submit that the GPCR19 agonist has a very short half-life, if administered orally in the form of an injection, whereas, if administered topically, it exhibits advanced therapeutic effect. For these reasons, learned senior counsel submits that the matter requires reconsideration.

6. In response to these contentions, learned counsel for the respondent submitted that the claimed invention would be obvious to a person skilled in the art on the basis of the cited prior arts. By referring to a translated copy of prior art D1, learned counsel submitted that the preferred GPCR19 agonist, as per D1, is sodium taurodeoxycholate. In support of this contention, he refers specifically to paragraph [0042]. By referring to claim 25 of prior art D1, he submits that the composition disclosed therein is intended to treat a range of inflammatory conditions, including atopic dermatitis. By referring to paragraph [0038] of D1, he submits that it recites administration of the GPCR19 agonist through multiple modes, including transdermal administration. As regards prior art D2, by referring to claim 8 thereof, he point