PRABHA SRIDEVAN,CHAIRMAN - (1.) THE appellant claimed an invention regarding the use of atleast one over expression inhibitor of DNA repairing genes and/or oncogenes for producing a drug to increase the apoptotic effect of cytostatics after chemotheraphy.
(2.) THE application No.4282/DEL/NP/2005. A request for examination of the said application was filed on 7.3.2006. After examination and a hearing, the Controller refused to grant patent and this appeal is filled against that order. The invention claims priority from 22.09.2005. It relates to a Drug Comprising (E) -5 - (2 -Bromovinyl) -2' -Deoxy Uridine (BVDU). Originally there were 12 claims relating to the use of the drug. On 24.01.2008, the first examination report was issued giving the applicant 12 months time from the said date. 11 objections were given, one related to subject matter of claims 1 -7, as worded they do not constitute an invention under Section 2(1)(j). It also indicated that the claims were not clearly worded, not sufficiently defined and that the question of novelty would be considered after the specification was amended to avoid the objections. It also indicated compliance with Section 8 (1) and 8(2) of the Indian Patent Act, 1970. On July 17, 2008, the appellant replied stating that the revised title of the invention is to make it consistent with the claims. They also added additional experimental results to establish the novelty and inventive step. Compliance with Section 8 that has been alleged was made and the claims were amended claiming invention in a drug instead of use and the claims reduces to 7.
(3.) ON 23.01.2009, that is the last date on which the patentee had to put the invention in order, a second examination report was issued stating that the claims do not sufficiently define the invention and claims 1 - 7 fall within the scope of Section 3(d). To this, a reply was given on 27.01.2009, 24.01.2009 to 26.01.2009 being holidays. Hearing was fixed on 10.02.2009 and the impugned order was passed. The learned counsel submitted that the applicant is aggrieved on merits and above all due to the lack of opportunity. The Controller rejected the patent on the ground that the claims are not definitive. A claim falls within the scope of Section 3 (d). The claimed invention relates to the new use that is 2nd use of the known substance. We are not going into the merits of the case. We feel that the matter should be heard again for the reasons which we will point out hereunder. Five documents appear to have been cited in the ISA report, they are : (i) In ANTI CANCER RESEARCH Vol. 6 no.4, pp 549 (ii) In ANTI -CANCER RESEARCH 6:1077 - 1084 (1986) (iii)In NTI CANCER DRUG DESIGN (2000), 15, PP 307 - 312 (iv)In (WO96/23506) Fahrig et al. (v)In the PCT/US 00 / 20007;