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The Delhi High Court has issued an order in favour of a UK-based pharmaceutical company setting aside an order by the Indian Patent Office, which rejected the patent application for an invention related to preserving the integrity of peptides in the gut.
The patent application titled 'Bile acids and biguanides as protease inhibitors for preserving the integrity of peptides in the gut', was refused by the Deputy Controller of Patents and Designs through an order on April 27, 2020. The company approached the Delhi High Court challenging this order.
In an order on September 13, Justice Saurabh Banerjee ordered that the amended claims are permissible since it is well within the scope of the original PCT claims. Since the detailed description supports the same amendment concerning the composition as a product, observed the Court.
The company filed amended claims on April 20, 2018 to the Patent Cooperation Treaty (PCT) original claims on April 1, 2011 and an amended set of claims on December 18, 2017.
While the company claims that the amended claims fall within the scope of the specifications and the claims originally filed, the patent office issued an order in contrary to this argument.
The Patent Office claimed that the amendments by the company was submitted post-hearing and they are beyond the scope of the original claims and the complete specifications disclosed by the company.
After identifying certain portions of complete specifications to show that the scope of the subject application is limited to new use of a known compound or composition, the Controller has in the impugned order held that the amendment sought to be made by the appellant to a product claim should not be permitted under Section 59(1) of the Patent Act, 1970.
The Court, after hearing both sides, observed that a co-ordinate bench of the Court while dealing with similar issues related to the amendment of claims made in the complete specification earlier this year, held that the amendments to the original application can be only made by way of disclaimer or correction or explanation.
"Applying the same parameters to the facts involved herein, this Court has no hesitation in inferring that the amended claims in the latest complete specification filed by the appellant to the original/initial claims made by it are well within the scope of the original PCT claims. More so, since the detailed description supports the same amendment concerning the composition as a product," said Justice Banerjee, quoting the previous order.
Following this, the Court set aside the order passed by the Patent Office rejecting the patent application of Axcess Ltd and restored the application.
The controller shall issue a fresh hearing notice clearly delineating the objections and grant fresh hearings to the company and decide the same by passing a fresh order preferably within a period of four months from the date of conclusion of the hearings," the Court directed.
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