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2025 Supreme(Online)(Mad) 33236
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Honourable Mr Justice SENTHILKUMAR RAMAMOORTHY
The appellant – Appellant
Versus
The respondent – Respondent
T(CMA)(PT) No.46 of 2023
For the Appellants/Petitioners: learned senior counsel
For the Respondents: learned counsel
A patent application must be examined for patentable distinction over prior arts, including unexpected effects, and adequate consideration must be given to applicant’s contentions and prior grants to avoid procedural defects.
Headnote:(A) Patents Act, 1970 - Section 3(e) - Objections on grounds of lack of novelty and inventive step - Application for patent relating to compositions for treating allergic skin diseases containing GPCR19 agonist - Prior arts cited D1 to D4 - Principles of obviousness applied as per Windsurfing and Pozzoli tests.
(B) Patentability Criteria - The claimed invention must demonstrate patentable distinction over prior arts, including showing unexpected effects or advantages - Intended use alone does not confer patentability.
Facts of the case:
An application for patent relating to a pharmaceutical composition containing GPCR19 agonist for preventing or treating allergic skin diseases was rejected on grounds of obviousness and lack of novelty based on prior arts D1 to D4. The applicant challenged the rejection alleging failure to consider distinctions and unexpected therapeutic effects.
Findings of Court:
The court observed that the impugned order did not address the appellant's specific contentions distinguishing prior arts nor consider evidence of unexpected therapeutic effects or the grant of patents in other jurisdictions, including Europe. A remand was ordered for reconsideration by a fresh officer.
Issues: Whether the claimed invention was patentably distinct considering the prior arts; and whether the impugned order adequately considered appellant’s rebuttal and evidence including prior grants abroad.
Ratio Decidendi: The court held that the impugned order was deficient in addressing crucial contentions distinguishing the prior arts and evidence of unexpected effects, and it failed to consider grants in other jurisdictions, hence remand for fresh consideration was necessary. (Paras 12-16)
Result: Impugned order set aside; matter remanded for reconsideration by a different officer with opportunity to appellant; no opinion on merits expressed.
| Table of Content |
|---|
| 1. background: patent application and invention details (Para 1 , 2 , 9) |
| 2. appellant's arguments distinguishing prior art and asserting inventive step (Para 3 , 4 , 5 , 8 , 10 , 11 , 14) |
| 3. respondent's arguments and relevant legal tests on obviousness (Para 6 , 7 , 15) |
| 4. court’s analysis: obviousness findings and gaps in reasoning (Para 12 , 13) |
| 5. consideration of foreign patent grants in decision-making (Para 16) |
| 6. court’s direction for remand and reconsideration (Para 17) |
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 taurodeoxych
