19 January, 2016
In another recent decisionthe Indian Patent Office rejected an application of Abraxis Bioscience LLC on the grounds that the application does not meet the requirements of Section 59(1). Abraxis had filed a national stage Indian Application No. 2662/KOLNP/2007 dated July 17, 2007 for their PCT Application No. PCT/US2006/006167, wherein the claims were directed towards method of treating a proliferative disease by administering a composition comprising nanoparticles of taxane and albumin along with another chemotherapeutic agent. Subsequent to filing of the Application the applicant carried out amendments in the claims (dated February 16, 2009) wherein it replaced the original filed claims with composition claims.
The Controller in his decision found that composition (and kit) claims filed during the prosecution, replacing the method of treatment claims, changed the scope of the original claimsunacceptable under Section 59 of the Patents Act. The Controller therefore refused to accept the amended claims. The Controller in his decision pointed out that there was not a single claim pertaining to the composition or kit in the original set of claims and for this he relied on the test of disclaimer, citing the decision in Electric and Musical Industries, Ltd. et al. v. Lissen, Ltd. et al., (1939), 56 R.P.C 23 where it was held that“What is not claimed is disclaimed”. Accordingly, the Controller opined that any subject matter which is not originally claimed is actually disclaimed and in this particular application, the applicant had only claimed the subject matter pertaining to the method of treatment and not a composition.
Particularly, the Controller opined that, there is no doubt that the specification recites about composition but such composition was not covered in the originally filed claims; therefore amended claims are not allowable under Sections 57 and 59 of the Indian Patents Act, 1970.
In view of the aforesaid opinion, the Controller proceeded to examine the application with original set of claims pertaining to the method of treatment, and found those claims were not allowable being non-patentable subject matter under Section 3(i) of the Indian Patents Act, 1970.
For further information, please contact:
Vivek Kashyap, LexOrbis
mail@lexorbis.com
