NOVARTIS AG Vs. CONTROLLER OF PATENTS & DESIGNS

JUDGEMENT

(1.) This pronouncement has been done through hybrid mode.

(2.) The present appeal under sec. 117A of the Patents Act, 1970 (hereinafter 'Act') challenges the impugned order of the Asst. Controller of Patents dtd. 28/9/2020. Vide the said order, the divisional application of the Appellant being 7863/DELNP/2014 (hereinafter 'divisional application') has been rejected on the ground that the subject matter of the granted claims of the parent application being 8114/DELNP/2007 (hereinafter 'parent application') and the subject matter of the divisional application belong to the same broad class and group of inventions linked so as to form a single inventive concept. Thus, the Controller has held that the divisional application is not maintainable.

(3.) The background of the present appeal is that the Appellant filed four U.S. priority applications being 60/681, 684, 60/681, 722, 60/681, 723, and 60/681, 772 on 17/5/2005 in respect of various pharmaceutical preparations for compositions and methods for treatment of eye disorders. The Appellant filed PCT application bearing number PCT/US2006/019327 dtd. 17/5/2006 taking priority from the above-mentioned applications. The said PCT application entered the national phase in India with application number 8114/DELNP/2007, filed on 19/10/2007. The application had a total of 56 claims. A request for examination was filed by the Appellant, for examination of the application, on 28/4/2009. The First Examination Report (FER) was issued by the Patent Office on 15/5/2013. One of the objections raised in the FER was that the claims show plurality of distinct inventions. The said objection is set out below: