Delhi High Court Overturns Rejection of Patent Application for Pharmaceutical Composition

Court Remands Case for Fresh Examination, Emphasizing Proper Interpretation of Patent Claims

In a significant ruling, the Delhi High Court has set aside an order by the Controller of Patents that had rejected a patent application filed by Medilabo RFP INC. The application, concerning a pharmaceutical composition aimed at treating neurodegenerative diseases, was initially refused under Section 3(i) of the Patents Act, 1970. This section excludes methods of treatment from patentability. However, the Court, presided over by Justice Tejas Karia, found that the patent application was improperly dismissed, as it pertains to a composition rather than a method of treatment.

The patent application in question was for a drug composition intended for the treatment and prevention of neurodegenerative diseases, comprising compounds of rifampicin and resveratrol. The Controller of Patents had rejected the application, interpreting the claims as related to a method of treatment due to references to dosage regimens in the original claims.

Medilabo RFP INC argued that their claims were focused on a pharmaceutical composition, not a method, and that the amended claims submitted after a hearing had removed references to administration methods. The Court agreed with Medilabo, stating that the Controller failed to consider these amended claims and had not properly interpreted the scope of the invention in accordance with Section 10(4)(c) of the Act, which requires claims to be interpreted in light of the description and examples provided.

The Court also criticized the Controller for not addressing other objections related to the patent application under Sections 2(1)(ja), 59, and 3(d) of the Act, which were mentioned in the hearing notice. The Court emphasized the necessity for the Controller to examine all objections comprehensively when deciding on patent applications.

In light of these findings, the Court remanded the case back to the Controller for fresh consideration, directing that all objections be properly addressed and that the amended claims be evaluated. The Court stipulated that the application should be re-examined within six months and granted Medilabo RFP INC a new hearing.

This judgment underscores the importance of accurately interpreting patent claims and ensuring that all procedural requirements are met in the examination of patent applications. The decision marks a notable development in the field of patent law, particularly concerning pharmaceutical compositions, which often straddle the line between product and method claims.

Bottom Line:

Patent Law - Patent application for a pharmaceutical composition cannot be rejected under Section 3(i) of the Patents Act, 1970, if the claims are directed to a composition and not a method of treatment or dosage regimen.

Statutory provision(s): Patents Act, 1970 Sections 3(i), 10(4)(c), 15, 2(1)(ja), 59, 3(d)

Medilabo RFP INC v. Controller of Patents, (Delhi) : Law Finder Doc Id # 2812422