Controller General of Patents directed to reassess application by Hanmi Pharm. Co. Ltd., ensuring process claims are properly evaluated.
In a significant ruling, the Delhi High Court has set aside the decision by the Controller General of Patents and Designs to reject a patent application from Hanmi Pharm. Co. Ltd., citing the failure to consider process claims integral to the application. The judgment, delivered by Justice Tushar Rao Gedela, mandates a fresh evaluation of the patent application, focusing on both compound and process claims.
The appeal, filed under Section 117A of the Patents Act, 1970, challenged the Controller's order dated April 25, 2022. Hanmi Pharm. Co. Ltd. had initially submitted their patent application as part of a National Phase Application on July 21, 2014, which claimed priority from a Korean application dated December 30, 2011. The application sought patent protection for a thieno[3,2-d]pyrimidine derivative, including its pharmaceutically acceptable salts and the methods for its preparation.
The Controller of Patents had rejected the application citing a lack of inventive step under Section 2(1)(ja) and non-patentability under Section 3(d) of the Patents Act. The rejection was based on an examination of prior art documents, which concluded against claims 1 to 13, concerning the novelty and inventive step of the compound itself. However, claims 14 to 22, which pertain to the process of preparing the said compound, were not addressed in the impugned order.
Justice Gedela emphasized the necessity for the Controller to consider all aspects of a patent application, including process claims, before arriving at a decision. The court noted that ignoring these claims could lead to an incomplete analysis, rendering the order unsustainable. During the proceedings, the respondent's counsel admitted that the process claims were indeed overlooked in the original assessment.
In light of these findings, the Delhi High Court has remanded the matter back to the Patent Office for reconsideration. The Controller is instructed to conduct a comprehensive review, taking into account all claims presented in the application, uninfluenced by prior observations. The court has set a timeline of six months for the Patent Office to conclude the proceedings, ensuring Hanmi Pharm. Co. Ltd. receives a fair opportunity to present their case.
This judgment underscores the importance of thorough examination by patent authorities, particularly in complex applications involving both product and process claims. Legal experts believe this decision could set a precedent for future patent evaluations, advocating for more detailed scrutiny to uphold the principles of innovation and fairness.
Bottom line:-
Patents - Controller of Patents must consider all claims, including process claims, before rejecting a patent application. Failure to address process claims in the impugned order renders it unsustainable, and the matter requires fresh consideration.
Statutory provision(s):
Patents Act, 1970 Sections 117A, 2(1)(ja), 3(d)
