Professional Documents
Culture Documents
Decoding Patent Claim Scope (Bayer Pharm vs. CGPD)
Decoding Patent Claim Scope (Bayer Pharm vs. CGPD)
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
JUDGMENT
The issue before me was to decide whether the finally amended claims
falls within the scope of section 3(e) & section 3(i) of the patents Act 1970.
Section 3(e) & 3(i)
“A substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a process for
producing such substances”
The Agents for applicant has stated that the “composition of the invention
comprises a synergistic admixture with improved efficacy and other
enhanced and new properties which are disclosed or taught in any of the
prior art” and also provide the Studies with previous tested
pharmaceutical compositions (2B versus 2C).
but they have failed to substantiate these arguments to prove the
APPELLANT’S CONTENTIONS:
4. Mr. Debashish Banerjee, counsel for the Appellant, contends as
follows:
4.1. The Appellant was deprived of a fair opportunity to address the
objection under Section 3(e) of the Act, as this specific ground was not
mentioned in the notice preceding the hearing. This omission undermines
the procedural fairness owed to the Appellant, preventing them from
preparing a defence against a contention that was never formally raised.
4.2. Respondent’s decision is flawed due to a critical misinterpretation of
Section 3(i) of the Act. The crux of this argument is the Respondent’s failure
to distinguish between a composition and a method of treatment. The claim,
as delineated, underscores that the patent application was directed towards a
product – a composition – rather than a process or method of treatment. This
distinction is critical, as it challenges the basis upon which the subject
application was rejected.
RESPONDENT’S SUBMISSION:
5. Per contra, Mr. Srish Kumar Mishra, counsel for Respondent, argues
that the objections and findings of the Respondent are well-founded, citing
1
Perkinelmer Health Sciences INC and Ors v. Controller of Patents, C.A. (COMM.IPD-PAT) 311/2022;
Dolby International AB v The Assistant Controller of Patents and Designs, C.A.(COMM.IPD-PAT)
10/2021.
2
2023/DHC/000774
SANJEEV NARULA, J
MARCH 13, 2024/as