Patent Office keeps Novartis Vaccines' application under temporarily refusal

Order is liable to change in accordance with the direction of the divisional patent issue pending with the Calcutta High Court

The Indian Patent Office has kept a divisional patent application of Novartis Vaccines and Diagnostics Inc, on a claimed invetion related to HIV treatment temporarily under refusal status as it contains the same set of claims in the parent application, among other reasons. This comes in the backdrop of a pending case in the High Court of Calcutta against an earlier IPAB order refusing certain type of divisional applications.

A divisional patent application is an application filed by an applicant if there are more than one invention in a parent application.

According to a recent order from the Patent Office, the said application was filed as a divisional application to mother application filed in 2004 with the Patent Office, Kolkata, having the title of invention as HIV Envelope-CD4 Complexes and Hybrids. The application was published on August 1, 2008 and the first examination report (FER) was issued on September 6, 2010.

 

Following the examination of the amended documents received after the FER, the authority issued a letter to the applicant to attend a hearing, as there were objections were pending. The main objection mentioned in the hearing letter was regarding non allowability of the instant application as a divisional application under Section 16 of the Patnts Act, 1970, said the authority.

S R Gupta, attorney of the applicant, Novartis, attened the hearing and argued in favour of the allowability of the divisional application. A Writ Petition, filed before the High Court of Calcutta challenging an order of Intellectual Property Appellate Board (IPAB), in 2011, which refuses this type of divisional applications on the ground of lack of plurality of inventions, informed the attorney.

Soumen Ghosh, assistant controller of patents & designs, Patent Office, in an order issued on November 30, observed that the matter is pending before the High Court of Calcutta and no bar or restriction has been imposed to the office from issuing order or decision in respect of pending divisional applications.

"The decision of hearing held on November 21, 2012 has already been delayed and it would not be proper to keep it pending further. Therefore this order has been issued but liable to be changed in accordance with the direction that they may be received from the Hon'ble High Court of Calcutta," said the official.

Ghosh added that the application is temporarily kept under refusal status due to a couple of reasons. The reasons include, that the application has been filed with the same set of claims, along with some additional claims as that of the mother or parent application and although called a divisional application but no division has actually been made from the parent application and exactly the same parent application has been filed.

The order added that there is no plurality of inventions found in the mother application and "therefore, in the absence of more than one inventionl, applicant's suo moto action of filing the 'divisional' application is not understood except for the continuation of the withdrawn parent application in the disguise of 'divisional' application."

However, the decision is reviewable and liable to be changed as per the opinion of High Court of Calcutta, added the official.

According to Section 16(1) of the Patents Act, 1970, a patent applicant, before the time of grant of patent can file a further application (divisional patent) if he so desires or in order to address the objection of the Controller of Patent that the claim in the first patent application relate to more than one invention. In such instance, the patent applicant can file a further application, but has to ensure that the main application and the divisional applications may be amended to ensure that neither of the complete specifications include a claim for any matter claimed in the other.