SCHERING-PLOUGH LTD , (A SWISS COMPANY) WEYSTRASSE 20 P O BOX CH-6000 LUCERNE 6 SWITZERLAND Vs. INTELLECTUAL PROPERTY APPELLATE BOARD, AND ASSISTANT CONTROLLER OF PATENTS & DESIGNS, GOVERNMENT OF INDIA, PATENT OFFICE

JUDGEMENT

(1.) This writ petition has been filed seeking a writ of certiorarified mandamus to call for the records of the 1st respondent and quash the order dated 13.06.2011 in C.O.D.No. 4/2009 in S.R.No. 405/2009/PT/IPAB and consequently direct the 1st respondent to consider on merits the appeal filed against the order of the 2nd respondent dated 05.01.2009 in Patent Application No. 2376/CHENP/2006.

(2.) It is stated that the petitioner is a Swiss Pharmaceutical Company having huge investments in Research and Development (R&D) for developing new and innovative drugs for the benefit of the consumer public. As part of its R&D programme, the petitioner-company embarked on research to provide Growth Differentiation Factor 8 (GDF8) peptides comprising a specific neutralizing epitope for GDF8. After coming out with the process for isolating these GDF8 peptides, the petitioner applied for an international patent in respect of these peptides vide Application No. PCT/US04/43125 dated 21.12.2004. In India, the petitioner-company filed an application for patent on 29th June, 2006 and it was numbered as 2376/CHENP/2006. On the very same day, the petitioner-company made a request for examination under Form-18 in accordance with Section 11B of the Patents Act, 1970 (for short "Act"). After the examination of the petitioner's application for patent the First Examination Report (FER) was issued on 08.10.2007 asking the petitioner to clarify the objections raised therein. In response to the same, the petitioner-company submitted its response to the FER on 08.08.08 claiming objections 1 to 11 raised in the FER as incorrect and it also carried out some minor amendments to the patent application. Thereafter, the 2nd respondent examined the amended specification under Section 13(3) of the Act and issued his examination report on 07.10.2008. The petitioner alleges that in the said report also the 2nd respondent merely repeated that Claims 1 to 14 cannot be allowed as they lack both novelty and inventive step, and the nucleic acid and the peptide claimed by the applicant are not novel. There was no reason stated in the report in favor of the view taken by the 2nd respondent. On 10.10.2008 reply under Section 14 of the Act was also submitted. Finally, on 05.01.2009 the 2nd respondent passed the final order under Section 15 of the Act refusing patent on the ground that none of the claim was novel or inventive. In the said order the 2nd respondent went beyond the objections already raised in the FER (First Examination Report) and wholly new grounds and reasons were given in the order.

(3.) Aggrieved against the order of the 2nd respondent, the petitioner filed an appeal before the 1st respondent on 05.10.2009 with a delay of 183 days. Therefore, the petitioner filed a separate application along with the appeal giving details as to why such delay occurred and praying condo nation of the delay. The 1st respondent vide its order dated 13th June, 2011 dismissed the application on the ground that no sufficient cause is shown for the condo nation of delay. Aggrieved against the same, the petitioner has preferred the present writ petition.