GENMAB Vs. ASSISTANT CONTROLLER OF PATENTS AND DESIGNS

JUDGEMENT

(1.) The appellant assails an order dtd. 30/5/2016 by which Indian Patent Application No.4718/CHENP/2007, which is the national phase application derived from PCT Application No. PCT/DK06/00166, was rejected.

(2.) The appellant filed the above mentioned application dtd. 23/10/2007 for grant of patent in respect of an invention titled "Antibodies against CD38 for Treatment of Multiple Myeloma" by claiming its priority date from US Application No.60/667,579 dtd. 1/4/2005. Originally, the appellant had made 84 claims. Upon a request being made, the respondent issued the first examination report (FER) on 27/2/2013. In the FER, objections were raised inter alia on the grounds that the claimed invention is obvious in view of prior arts D1-D7; patent ineligible under Sec. 3(j), 3(e), 3(i) and 3(c) of the Patents Act, 1970 (the Patents Act) in respect of specific claims; and does not comply with Sec. 10(4) thereof. By response dtd. 17/1/2014, the appellant dealt with each objection in the FER, revised its claims and submitted a set of 63 amended claims. Page No.2 of 31 https://www.mhc.tn.gov.in/judis

(3.) In the hearing notice issued on 9/4/2014, the respondent maintained many of the objections set out in the FER and, in particular, raised the objection that amended claims 1-44 fall within the scope of Sec. 3(c) of the Patents Act. Pursuant to a hearing on 28/4/2014, written submissions were filed as an enclosure to communication dtd. 17/7/2014, and the claims were amended further to a set of 29 claims. Eventually, by order dtd. 30/5/2016, the application was rejected.