S.USHA,VICE -CHAIRMAN - (1.) THE instant appeal is preferred against the order of the Assistant Controller of Patents dated 12/06/2009 in respect of Patent No.197'822 (178/MUM/2004) granted on 21/04/2006 under Section 25(4) of the Patents Act, 1970 pursuant to a post -grant opposition dated 21/04/2007.
(2.) THE facts of the case are - The 1st respondent filed a Patent application No. 178/MUM/2004 on 16/02/2004. The patent was granted on 21/04/2006 as Patent No. IN 197'822. The appellant herein filed a post grant opposition under Section 25(2) of the Act. The appellant also filed expert affidavit of Dr. Nagarsenkar. The 1st respondent filed their reply statement to the statement of opposition. The 1st respondent had not filed their evidence though sought time to file evidence.
(3.) THE 2nd respondent passed the impugned order rejecting the opposition filed by the appellants. Being aggrieved by the said order, the appellants preferred the above appeal on various grounds. (1) that the impugned order is against law, right of evidence and probabilities of the case; (2) that the impugned order is bad in law as it reduced an opposition under Section 25(2) to a mere review; (3) that the impugned order is bad in law as the Opposition Board was not constituted properly; (4) that the learned Controller erred in rejecting the evidence filed by the appellant and passed the impugned order without considering the materials placed on record; (5) that the order demonstrates non application of mind as the Controller has dealt with grounds of wrongfully obtaining [Section 25(2)(a)] and prior claiming [Section 25(2) (c)] which were not raised by the appellants; (6) that the Controller erred in rejecting the ground that the invention was obvious and lacked inventive step; (7) that the Controller failed to differentiate the arguments on anticipation and lack of inventive step; (8) that the Controller erred in holding that combining two drugs with significantly different half lives and plasma protein binding activity would have been obvious to a person skilled in the art when the half lives of Cefixime and Cloxacillin were known and the common general knowledge had sufficient material on combining drugs with different half lives by devising delayed or sustained release formulations; (9) that the Controller erred in holding that the problem solved by the invention ie. the preparation of the antibiotic formulation with piobiotic organism such as lactobacillus sporogenes, was not specifically disclosed in the prior art; (10) that the Controller erred in holding that if the ground for ancipation failed the ground for obviousness should also fail if it is based on the same document. (11) that the Controller erred in rejecting every pleaded prior art; (12) that the Controller appears to have adopted the EPO standard on obviousness where obviousness is considered on the basis of prior art alone; (13) that the Controller while quoting from Johns -Manville Corporations Patent 1967 RPC 479 failed to consider the ratio of the decision which was squarely applicable to the case; (14) that the Controller erred in giving importance to secondary aspects of obviousness ie. technical advancement and economic significance while not considering whether it would have been obvious to a person skilled in the art, which is the primary aspect for considering obviousness; (15) that the Controller failed to consider the Expert affidavit and as such illustrates non application of mind; (16) that the Controller failed to uphold the ground of opposition that the impugned patent is not an invention under section 25(2)(f) and that it does not constitute an invention within the meaning of section 3 (e) of the Act; (17) that the Controller failed to reason how, in the absence of the use of a new reactant or the process resulting in a new product, the process could get over the bar in section 3(d) of the Act; (18) that the Controller erred in rejecting the ground of opposition on insufficiency under section 25(2) of the Act; (19) that the Controller erred in ordering the respondent to amend the specification during the pendency of the infringement suit filed by the 1st respondent in contravention of section 57 of the Act; (20) that the Controller exceeded his powers in awarding the costs and (21) that the Controller failed to consider the pending infringement suit despite the fact being brought to his notice. ;