BOEHRINGER INGELHEIM INTERNATIONAL Vs. CONTROLLER OF PATENTS

JUDGEMENT

(1.) The present appeal arises out of the impugned order dtd. 25/3/2022 by which the Controller of Patents (hereinafter 'Controller') has rejected the request of the Appellant-Applicant (hereinafter 'Applicant') for pursuing a divisional application bearing no.20178031279 dtd. 4/9/2017, titled A medicament of a DPP inhibitor'. The Controller, while rejecting the divisional application has stated that the divisional application had similar claims, as had already been proffered in the refused amendment applications and the divisional application does not fall within the scope of the parent application. Factual background

(2.) The background of this appeal is that the Applicant had filed a National Phase PCT Application on 14/11/2008, for 'Use of DPP IV Inhibitors'. The patent specification had a total of 1 to 18 Claims, with two claims numbered as 15. For the sake of clarity, the same are renumbered as 15 and 15A at the outset. The First Examination Report (hereinafter 'FER') was issued on 24/3/2014, in response to which the Applicant amended its Claims on 24/10/2014 (hereinafter 'Amendment No.1'). In the said Amendment No.1, the Applicant sought to delete all Claims except Claims 14, 15 and 15A.

(3.) Thereafter, the application remained pending. Sometime in 2015-2016 i.e., on 20/3/2015 and 18/2/2016, two Forms-13 were filed by the Applicant seeking two further amendments (hereinafter 'Amendment No.2' and 'Amendment No.3' respectively). These two amendments were, thereafter, sought to be converted into a divisional application filed on 4/9/2017. This application has been rejected by the impugned order.