AKEBIA THERAPEUTICS Vs. CONTROLLER OF PATENTS AND DESIGN

JUDGEMENT

(1.) This appeal is directed against the order dtd. 26/11/2021 rejecting Patent Application No.201647000423.

(2.) The appellant filed the above mentioned application as the national phase application derived from the original PCT application. The application pertains to an invention titled "composition and methods for treating anemia". As obligated by Sec. 138(4) of the Patents Act, 1970 (the Patents Act), the application mirrored the PCT application. By examination report dtd. 8/1/2019, the respondent raised objections inter alia on grounds of lack of novelty and inventive step and on the ground of non patentability under Sec. 3(i) and 3(d) of the Patents Act. The appellant replied to the FER on 7/10/2019. By second extended hearing notice dtd. 5/10/2021, the respondent maintained objections under Sec. 59, Sec. 2(i)(j) and Sec. 3(i) and 3(e) of the Patents Act. The objection under Sec. 59 was on the ground that amended claim 1 recites a pharmaceutical composition in contrast to the original claim 1, which pertained to a method of treating anaemia. On that basis, the objection was that it does not meet the requirements of Sec. 59. The appellant filed written submissions pursuant to the hearing. The order impugned herein was issued thereafter on 26/11/2021.

(3.) By inviting my attention to the impugned order, learned senior counsel for the appellant submitted that the claimed invention was eventually rejected solely on the ground that the amended claims do not fall within the scope of Sec. 59 of the Patents Act. By emphasizing the fact that the appellant was constrained to make the national phase filing by retaining the complete specification from the PCT application, learned counsel submitted that the amended claims fall substantially within the scope of the original claims and clearly within the scope of the complete specification. In particular, he referred to the table set out in the written submissions, wherein a comparison is made between original claim 1 and amended claim 1. By referring to decisions such as Allergan Inc. v. The Controller of Patent, 2023 SCC OnLine Del 295 (Allergan), learned senior counsel submitted that re-consideration is necessary since the principles formulated in such decisions apply squarely to this case.