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2024 Supreme(Online)(DEL) 19448
HIGH COURT OF DELHI
Sanjeev Narula, J
BAXALTA INCORPORATED – Appellant
Versus
THE CONTROLLER OF PATENTS – Respondent
C.A.(COMM.IPD-PAT) 381/2022
SWARUP KUMAR
Product claims must independently establish novelty and inventive steps, and auxiliary claims can be submitted under Section 59(1) of the Patent Act.
Headnote:(A) Patent Act, 1970 - Sections 2(1)(j), 2(1)(Ja), and 15 - Appeal against refusal of patent application for lack of novelty and inventive steps - The impugned order emphasized that product claims must establish novelty independently of the process claims, and failure to demonstrate qualitative differences from prior art led to refusal. (Paras 1, 2, 3)
(B) Auxiliary Claims - The court allowed the appellant to submit an auxiliary claim set restricting claims to method claims, permissible under Section 59(1) of the Act, and remanded the matter for de novo consideration. (Paras 3, 7)
Facts of the case:
The appeal challenges the refusal of a patent application for a product and method related to Factor VIII polymer conjugates, citing lack of novelty and inventive steps. The appellant seeks to limit claims to method claims.
Findings of Court:
The court set aside the impugned order, remanding the matter for fresh consideration, allowing the submission of auxiliary claims, and ensuring a hearing for the appellant.
Issues: The main issues included the novelty of product claims versus method claims and the procedural validity of submitting auxiliary claims.
Ratio Decidendi: The court ruled that product claims must independently establish novelty and inventive steps, and allowed the appellant to restrict claims to method claims under the Act.
Result: Appeal disposed of with directions for de novo consideration.
% 15.03.2024 I.A. 2595/2024 (for submitting an auxiliary claim set)
1. The present appeal impugns order dated 31st July, 2019, passed by Assistant Controllers of Patents and Design, whereby Appellants’ application bearing No.
756/DELNP/2011 titled “FACTOR VIII POLYMER CONJUGATES”, (hereinafter ‘ the subject patent ’) has been refused under Section 15 of the Patent Acts, 1970 (hereinafter ‘ the Act ’), on the ground of lack of novelty and inventive steps under Sections 2(1)(j) and 2(1)(Ja) of the Act respectively.
2. The patent application comprised of both product as well as method claims. The Impugned order while dealing with the application, delves only C.A.(COMM.IPD-PAT) 381/2022 into the product claims which is discernible from the operative part of the impugned order which reads as under:
- “The instant product and its preparation process must establish novelty/ inventive step independent of each other. Irrespective of whether the product in a claim is defined as obtainable, obtained, directly obtained, or by equivalent wording for a product-by-process claim, the claim is still directed to the product per se and has the absolute protection upon the product per se as a scope. If a given product or substance or compound is still substantially the same as the known forms in the prior art, it cannot be rendered novel nor inventive by the simple fact that it has been obtained by a new and inventive process, as long as no qualitative difference has been demonstrated and disclosed. The product claimed here in the instant application claim-5(A modified Factor VIII produced by the method) and claim 6(A proteinaceous construct) are not characterized by their structural features and hence cannot be distinguishable from the cited prior art. In the absence of that the claimed product claim 5(A modified Factor VIII produced by the method) and claim 6(A proteinaceous construct) may be presumed as same as that of prior art product. This product claimed in claim 5(A modified Factor VIII produced by the method) and claim 6 (A proteinaceous construct) here has failed to establish novelty or inventive step on their own compared to cited prior art.
- Order:
- In view of the above, the requirement of objection D of hearing notice is not met and hence, I refuse the instant patent application 756/DELNP/2011 under section 15 of the Act.”
3. However, at this stage, the Appellant has filed the instant application, seeking leave of the Court, to submit an auxiliary claim set as an additional document. Through this application, Appellant seeks to restrict the scope of claims presently on record to only “method claims” in respect of conjugating PEG, PSA or dextran to an oxidized carbohydrate moiety of Factor VIII.
Counsel for Appellant/Applicant contends that such restriction in the scope of claims is permissible under Section 59(1) of the Act by placing reliance on the judgment of this Court in Nippon A&L Inc. v. The Controller of Patents 1 and Societe Des Produits Nestle SA v. The Controller of Patents 1 ( 2022:DHC:2434 ) C.A.(COMM.IPD-PAT) 381/2022 and Design & Anr. 2
4. On the aforenoted application, the Controller of Patents has no objection and accordingly the same is allowed and the auxiliary claim set annexed with the application is taken on record.
5. The application is disposed of. C.A.(COMM.IPD-PAT) 381/2022
6. In light of the above, it would be now appropriate that the Respondent would now look into the auxiliary claim set claim for the purpose of taking a final view regarding the patentability of the invention.
7. Accordingly, the present petition appeal is disposed of with the following directions:
- i) Impugned order dated 31st July, 2019 is set aside and the matter is remanded to the Respondents for de novo consideration.
- ii) The Appellant shall file the auxiliary claim set also with the Respondent within one week from today.
- (iii) The patent application for the subject patent is restore
