* IN THE HIGH COURT OF DELHI AT NEW DELHI % Judgment Reserved on : 30^th November, 2022 Judgment Delivered on : 03^rd February, 2023 + C.A.(COMM.IPD-PAT) 22/2022, I.A. 5588/2022 (stay), I.A. 5589/2022 (O-XI R-1(4) of CPC) and I.A. 16487/2022 (of waiver of costs)

SOCIETE DES PRODUITS NESTLE SA ..... Appellant Through: Ms. Mamta Jha, Mr. Siddhant Sharma and Ms. Surbhi Nautiyal, Advocates versus THE CONTROLLER OF PATENTS AND DESIGN & ANR. ..... Respondents Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Advocates CORAM:

HON'BLE MR. JUSTICE AMIT BANSAL

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 29^th 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”.

Signature Not Verified

2. Oral submissions in the matter were heard on 29th November, 2022 and 30^th November, 2022. Vide order dated 30^th 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 10^th March, 2017, the appellant filed PCT international application No.PCT/EP2017/055680 claiming priority from a European Patent Application, i.e., EP16172431.5 dated 1^st June, 2016.

II. On 29^th 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 22^nd 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 20^th May, 2020.

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

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

VI. On 23^rd August, 2021 and 23^rd September, 2021, hearing notice were issued by the respondent no.2. Hearing notice dated 25^th October, Signature Not Verified

2021 was issued by the respondent no.2, fixing the date of hearing on

23^rd November, 2021.

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

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

IX. On 29^th 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 Signature Not Verified Controller of Patents and Desi