Prosecution of pharmaceutical patents in India without attracting an objection under Section 3(d) of the Indian Patents Act, 1970 (hereinafter “the Act”) is a rare occurrence. The Applicant adopts various strategies to overcome the objection of Section 3(d) of the Act. This Section was introduced into the Act in the post-TRIPS (Trade-related aspects of intellectual property rights) scenario, along with the product patents, to prevent the evergreening of patents.
Recently, the Hon’ble Delhi Court had an opportunity to hear an appeal against the decision of the Controller of Patents refusing a patent application involving rejection, inter alia, the ground of Section 3(d) of the Act. The Hon’ble Court remanded the matter back to the Patent Office, considering that the Appellant filed an amended set of claims that completely changed the patent application’s nature. Therefore, this case becomes very interesting from the perspective of amendments to claims after the refusal of the patent application.