Madras High Court
Lipotec vs Deputy Controller Of Patents And ... on 28 November, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
(T)CMA(PT)/114/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 28.11.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR
RAMAMOORTHY
(T)CMA(PT)/114/2023
(OA/1/2019/PT/CHN)
LIPOTEC, S.A.
Poligono Industrial Cami Ral,
C/Isaac Peral, 17,
Barcelona-08850, Gava
Spain. ... Appellant
-vs-
Deputy Controller of Patents and Designs,
Government of India, Patent Office,
Intellectual Property Rights Building,
GST Road, Guindy,
Chennai - 600 032. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Patents) filed under
Section 117-A of the Patents Act, 1970, praying to the Hon'ble Court that
the order dated 10th August 2018 be set aside and Application
No.7314/CHENP/2009 for patent be allowed to proceed to grant.
For Appellant : Mr.P.V.Balasubramanian, Senior Counsel
1/7
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/114/2023
for Mr.P.Siddharth
for M/s.De Penning and De Penning
For Respondent : Mr.P.R.Ramesh Babu, SPC
JUDGMENT
The appellant impugns an order dated 10.08.2018 by which Indian
Patent Application No.7314/CHENP/2009 for the grant of patent for an
invention entitled “Regulatory Compounds For Pigmentation” was rejected.
2. The above mentioned application was filed by the appellant on
14.12.2009. The complete specification contained about 15 claims
consisting of both substance and process claims. In the First Examination
Report (FER), objections were raised inter alia under Section 3(d) and
Section 2(1)(ja) of the Patents Act, 1970 (the Patents Act), the latter on the
ground that the claimed invention lacked an inventive step. The appellant
responded thereto and asserted that the substance claims are in respect of a
novel compound and that, in any event, the compound exhibited enhanced
therapeutic efficacy. As regards the objections on the ground of obviousness,
the appellant differentiated the cited prior arts and contended that the cited
prior arts would not lead to the claimed invention. The appellant also
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/114/2023
amended its claims. Eventually, pursuant to a hearing on 10.10.2017, the
application was rejected on the same grounds that were set out in the FER
and the hearing notice.
3. Learned senior counsel for the appellant referred to the impugned
order and pointed out that the operative portion thereof is contained only in
paragraphs 4 and 5 of the order. As regards paragraph 4, learned senior
counsel submitted that the Controller has recorded the conclusion that the
claimed compound is the mere discovery of a new derivative of known
compounds disclosed in prior art documents D1 and D4. Learned senior
counsel submits that the said conclusion has been reached without engaging
with the experimental results set out in the complete specification,
particularly at pages 138 to 151 of the paper book. He also submits that the
appellant's response to the FER and written submissions were completely
disregarded.
4. As regards the conclusion in paragraph 5 of the impugned order
that the claimed invention lacks an inventive step, learned senior counsel
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/114/2023
submits that each of the cited prior arts were distinguished in detail in the
written submissions. By referring to pages 166 to 171 of the paper book,
learned senior counsel submits that the reasons set out therein were not
considered by the Controller in paragraph 5. By submitting the comparative
extracts from the FER and hearing notice vis-a-vis the impugned order,
learned senior counsel submits that for the most part, the impugned order is
a reproduction of the FER and hearing notice. Therefore, he concluded by
submitting that the impugned order is liable to be set aside.
5. Mr.P.R.Ramesh Babu, learned SPC, submits that the impugned
order was issued on the basis of prior arts D1 to D6, which were referred to
therein. In addition, he submits that the claimed invention falls squarely
within the prohibition in Section 3(d) of the Patents Act.
6. As contended by learned senior counsel for the appellant, the entire
discussion in the impugned order is confined to paragraphs 4 and 5 thereof.
In paragraph 4, a conclusion is drawn that the claimed compound is the
mere discovery of a new derivative of compounds disclosed in prior arts D1
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/114/2023
and D4. In the complete specification, the appellant has set out the details of
the studies carried out with regard to the claimed compound, including the
enhanced therapeutic effect with regard to depigmentation. In the light of
such data, the conclusion that there is absence of experimental data is
unfounded.
7. As regards the conclusion on obviousness, the appellant has
differentiated the cited prior arts in considerable detail in response to the
FER and, particularly, in the written submissions filed after the hearing.
Paragraph 5 does not engage with the said submissions and record reasons
for rejecting such submissions.
8. Therefore, the impugned order calls for interference and is hereby
set aside. Consequently, (T)CMA(PT)/114/2023 is remanded for
reconsideration on the following terms:
(i) In order to preclude the possibility of pre-determination, an officer
other than the officer who issued the impugned order shall undertake
reconsideration;
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/114/2023
(ii) Upon providing a reasonable opportunity to the appellant, a
reasoned decision shall be issued upon such reconsideration within a period
of four months from the date of receipt of a copy of this order; and
(iii) It is made clear that no opinion is being expressed herein on the
merits of the case.
9. Therefore, (T)CMA(PT)/114/2023 is disposed of on the above
terms, without any order as to costs.
28.11.2023
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
https://www.mhc.tn.gov.in/judis
(T)CMA(PT)/114/2023
SENTHILKUMAR RAMAMOORTHY,J
kj
(T)CMA(PT)/114/2023
(OA/1/2019/PT/CHN)
28.11.2023
https://www.mhc.tn.gov.in/judis
