OA/2/2013/PT/KOL. Case: Cima Labs Inc. Vs The Controller of Patents. Intellectual Propery Appellate Board Cases

Case NumberOA/2/2013/PT/KOL
CounselFor Appellant: Nitin Masilamani
JudgesK.N. Basha, J. (Chairman) and D.P.S. Parmar, Member (T)
IssuePatents Act, 1970 - Sections 25(1)(b), 25(1)(e), 3(d), 3(e), 3(i)
Judgement DateFebruary 26, 2015
CourtIntellectual Propery Appellate Board Cases


K.N. Basha, J. (Chairman)

  1. The challenge in this appeal is to the order dated 22/5/2012 passed by the Assistant Controller of Patents and Designs, Kolkata in respect of Indian Patent Application No. 1818/KOLNP/2006, rejecting the application filed by the appellant herein.

  2. The appellant raised various grounds on merits as well as in respect of the procedure adopted by the Assistant Controller of Patents and Designs by considering the claims and rendering findings ultimately rejecting the claims made by the appellant herein.

  3. Mr. Nitin Masilamani, the learned counsel representing Amarchand & Mangaldas & Suresh A Shroff & CO. for the appellant put forward elaborate contentions both on merits and on procedural lapses on the part of the Assistant Controller of Patents and Designs in passing the impugned order. However, the learned counsel for the appellant confined his contentions mainly on the procedural lapse and non-consideration of dependent claims along with the main claims made under claim-1 and claim-13 and contented that the impugned order is liable to be set aside and the matter may be remanded for fresh consideration.

  4. The learned counsel would point out the following procedural lapses.

    (1) That the objections originally raised in the first examination report dated 11/09/2009 were not raised thereafter in the subsequent office action or during the date of hearing in respect of the lack of novelty and inventive steps which deprived the appellant to put forward their contentions and explanations for those objections. It is contented that the findings rendered on those aspects without affording opportunity to the appellant would amount to violation of principles of natural justice.

    (2) In the impugned order itself, the Assistant Controller pointed out the objections numbering 4 in respect of the claims made by the appellant stating that the claims are not supported by the descriptions, revised claims 1-12 fall under section 3(d) and section 3(e) of the Patents Act and claim 13 and its dependent claims do not sufficiently define the invention. But the Assistant Controller has framed the issues to be considered for taking the decisions contrary to the objections pointed out by him in the very same impugned order.

    (3) The Assistant Controller having given a finding after discussion and consideration in respect of the claim-1 has failed to consider and discuss and thereafter to render findings in respect of claims 2 to 21.

  5. ...

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