Indian Patent Application No: 201847047153
Indian Patent Application No: 201847047322
All of the above applications pertain to the second medical use of a known carbamate compound across various treatments. The claimed subject matter of each of these applications pertain to second medical use of a known compound. Considering the underlying crux of these inventions, the patentability of examined claims were severely constrained by the statutory non-patentability provisions invoked under Section 3(d) and 3(i) of the Indian Patents Act. As per the current jurisprudence prevalent in India, claims directed to second medical use of a known compound are out rightly rejected for lack of patentable merit. However, considering the commercial significance of these inventions, these applications could not be given up without a contest.
Knowing fully well of the anticipated patentability challenges, these applications were prosecuted devising a well thought-through rebuttal strategy that deviated the focus from the “new use” characterization to the compositional character and its enhanced therapeutic effects. The line of argument was devised in way that the spotlight shifted to the technical merit of the invention and means to amend claims that could navigate the posed non-patentability objections. The grant of not one but three co-pending applications all examined by different examining Controllers is unprecedented considering the prevailing legal position on Section 3(i) and 3(d) in India. This is to be attributed to the sound understanding of the technical and legal complexities involved in the prosecuted matters as well as the adopted divergent rebuttal strategy by the prosecuting attorneys involved.
Author : Divya Shekar, Meera Venugopal