S. Chandrasekaran, Member (T) - (1.) THIS is an appeal under Section 117A of the Patents Act, 1970 (hereinafter referred to as the Act) by the appellant against the order of the Controller of patents dated 23.08.2007.
(2.) AN international PCT application No. PCT/DK 01/00633 was filed by M/s. Novo Nordisk A/S, Novo Alle, DK - 2880 Bagsvaerd, Denmark on 2 -10 -2001 in the Denmark Patent Office claiming priority from the Denmark applications No. PA 2000 01456 (dated 2.10.2000), PA 2001 00262 (dated 16.2.2001), PA 2001 00430 (dated 14.3.2001), PA 2001 00751 (dated 14.5.2001). The Applicant (appellant herein) entered the national phase in India on 1 -4 -2003 and the application was numbered 451/CHENP/2003. The Applicant viz., M/s. Novo Nordisk A/S, had assigned the invention to the appellant by way of an assignment deed dated 22 -9 -2003 and on a request made by the claimant under Section 20 of the Act on 1 -12 -2003, the application was allowed to proceed in the name of the claimant. The appellant filed a request for examination on 12.09.2005. The respondent after the examination issued the First Examination Report (FER) on 09.06.2006 and the last date for placing the application in order for grant was 09.06.2007. In the FER the respondent has raised the major technical objections regarding "invention lacking an inventive step Under Section 2(1) (j) of the Act" and also lacking in novelty anticipated by more than dozen documents, together with the objections that most of the claims are neither patentable under Section 3 nor allowable under Section 2(1)(j) of the Act. The appellant for the first time filed a response to the FER almost at the end of the period, viz., on 7 -6 -2007 giving elaborate observations over the citations against the novelty and also requested that an opportunity of hearing under Section 14 of the Act should be afforded if the respondent desired to take any adverse decision to the applicant's interest. The respondent refused to proceed with the application under Section 15 of the Act by his letter dated 23.08.2007 in the form of a letter of communication signed by the Examiner of Patents for and on behalf of the respondent. The respondent in the impugned order dated 23.08.2007 maintained the technical objections that the invention still lacks in novelty, inventive step and insufficient disclosure of material information to support the claims. Finally the respondent concluded in his communication with the following 2 objections: 1) Due to the response filing on last date, applicant cannot be given a chance for hearing under Section 80. 2) Since technical objections of FER are still maintained, the patent application may be refused under Section 15 of the Patents Act, 1970. Hence this appeal by the appellant against the impugned order.
(3.) THIS appeal was listed before us on 11.09.2008. Shri Vijay Anand learned Counsel appeared for the appellant and Shri G. Desingu, learned Counsel appeared on behalf of the respondent.;