SYNTONIX PHARMACEUTICALS, INC., (A UNITED STATES CORPORATION) Vs. THE CONTROLLER OF PATENTS & DESIGNS & ANOTHER

JUDGEMENT

(1.) CHALLENGE in this appeal is the order passed by the Assistant Controller of Patents & Designs dated 21.03.2013 dismissing the divisional application preferred by the appellant herein seeking for the relief of patent in respect of Group - 1 claim consisting of 1 to 28 claims. 2. Shri. Shukadev Khuraijam, the learned counsel for the appellant would vehemently contend that the impugned order of the Assistant Controller is liable to be set -aside on the sole ground of illegality to the effect that in the First Examination Report it is clearly and categorically stated that the claims numbering 1 to 28 under group 1 are distinct inventions and the same contains plurality of invention and as such on the basis of the original patent application, the patent was granted by the Controller only in respect of the Group -IV claims from No.61 to 84. The learned counsel would point out that only because of the objection raised by the Controller and more particularly the patent was granted only for Group -IV claims No.61 to 84, the appellant has been compelled and necessitated to file a divisional application as per the provisions of Section 16 of the Patents Act, 1970.

(2.) It is contended that instead of rejecting the application, the Assistant Controller ought to have directed the appellant to file an amended application as per the Provision under Section 16(3) of the Patents Act. Therefore it is contended that the divisional application was filed only at the instance of controller and it is not open to the Assistant Controller to reject the divisional application on the ground that the inventions for which the patent was granted already under Group -4 are similar and identical to Group -1 which is self contradictory.

(3.) The learned counsel would also submit that the principles of estoppel is applicable in this matter as the Assistant Controller himself raised objection earlier holding that Group - 1 Claims 1 to 28 are distinct and now he is estopped from holding that both the inventions namely under Group -1 claims 1 to 28 and under Group -IV claims 61 - 84 are identical.