PERMITTING A U-TURN IN THE INTERESTS OF JUSTICE: MADRAS HC ALLOWS APPELLANT TO REVERT TO ORIGINAL CLAIMS

In an appeal filed under Section 117-A of The Patents Act, 1970 [hereinafter referred to as ‘the Act’] against a refusal order issued by the Controller of Patents [hereinafter referred to as ‘the Respondent’], the Hon’ble Madras High Court, in the case of Srinivas Jegannathan v. The Controller of Patents [(T)CMA(PT)/38/2023], delved into the grounds of refusal and meticulously examined them, setting aside the impugned order.

The application filed by Srinivas Jegannathan [hereinafter referred to as ‘the Appellant’] for an invention titled 'Formulation of Ceftazidime, Tazobactum and Linezolid for Enhancement of Antibacterial Activity' was refused by the Respondent primarily on the ground of lack of inventive step in view of cited prior art D1-D6, and for being outside the scope of the original claims, thus, not allowable under Section 59 of the Act.

Noteworthily, the original claims of the application related to a pharmaceutical composition of ceftazidime in a fixed dose combination with linezolid (a class of antibiotics called oxazolidinones), along with an enzyme inhibitor such as tazobactum to enhance antimicrobial activity. The claims were amended to recite ‘A Drug Delivery System’ while filing written submissions subsequent to the oral hearing held in the matter.

Contentions of the Appellant

With respect to the ground that the claims lacked an inventive step, the Appellant asserted that the inference drawn from the combination of the cited prior art was erroneous. Presenting exhaustive arguments and highlighting the differences with respect to each prior art, they contended that the prior art did not render the claimed invention obvious to a person skilled in the art (PSITA).

With respect to the objection that the amendments were outside the scope of Section 59, it was averred that the amendments were made based on the discussion during the hearing. Further, the Appellant accentuated that they were willing to submit the original claims for consideration if the matter were to be remanded, thus also negating the relevance of cited prior art D4-D6 which related to drug delivery systems.

Contentions of the Respondent

The Respondent argued that the claims had been voluntarily amended by the Appellant and the refusal order was issued after consideration of the last amended claims on the basis of the cited prior art. Emphasising on the order passed in Genomatica Inc. v. The Controller of Patents and Designs, CMA(PT)/4/2023, they contended that the amended claims get superimposed on the previous set of claims and, therefore, the Respondent was required to examine the last amended claims and not the original claims.

They also provided a detailed analysis of the cited art and explained how a combination of the same rendered the invention obvious to the skilled person.

Hon’ble High Court’s Analysis

The Hon’ble Court examined the original claims and the amended claims, and observed that independent claim 1 of the original claim set was broadly in line with independent claim 4 of the amended claim set, the difference being that the concentration of each ingredient was specified in claim 4 of the amended claim set while being absent from claim 1 of the original claim set.

Scrutinizing each prior art in detail, it assessed the rejection under inventive step and adduced that since even a combination of cited art D1-D3 do not combine a cephalosporin such as ceftazidime, with an oxazolidinone such as linezolid, and tazobactam, the person skilled in the art would not be able to arrive at the claimed invention based on said combination. It thus opined that the impugned order was deficient for want of proper reasoning and liable to be set aside on this ground.

With respect to the prior art D4-D6, the Hon’ble Court stated that since the Appellant was willing to revert to the original claims for consideration, the relevance of prior art D4 to D6 was rendered moot. Based on the same reasoning, it concurred with the Appellant’s submissions that Section 59 would also not be applicable in that scenario.

Consequently, the Hon’ble Court allowed the appeal in view of the observations made therein and set aside the impugned order, remanding the matter to the Patent Office for consideration on the basis of the original claims.

Conclusion

This case underscores the critical importance of vigilance during prosecution of a patent application. It represents the proactive approach adopted by the Indian judiciary towards removing procedural hurdles if warranted by the situation, to serve the interests of justice. Further, it signals a broader shift toward accountability within the IP framework and the need for transparency and reasoned orders, upholding the principles of natural justice.

Having said that, while it reinforces that if an Applicant makes a reasoned and bona fide request, returning to the original claims may be allowed, the Applicant needs to be careful while amending claims as it may not be possible to routinely revert to the earlier claims due to prosecution history estoppel. Such allowance is discretionary based on the circumstances peculiar to a case, and is reserved for bona fide exceptional cases only.