The Indian Patent Office (IPO) has passed an order on 3
September 2015 (Order) rejecting patent application no.
991/MUMNP/2003 (Patent Application) to Pfizer Products, Inc.
(Pfizer) for rheumatoid arthritis drug 'Tofacitinib'.
The IPO rejected the Patent Application on the basis of Section
3(d) of the Patents Act (Act). The IPO inter alia cited
document WO0142246 (Cited Document) of Pfizer as the closest prior
art, which was filed prior to the present application but was
published after filing of the Patent Application. The Cited
Document was also filed in India and proceeded to grant under
patent no. IN241773. Pfizer contented that the Cited Document
cannot be accepted for the purpose of assessing patentability as it
was published after the priority date of the present Patent
Application. The IPO found Pfizer's contention unacceptable and
stated that it was Pfizer's duty to reveal the Cited Document
filed by themselves, as the same could be considered to be a
document for anticipation by prior claiming under Section 13(1)(b)
of the Act.
The Intellectual Property Appellate Board (IPAB) in October last
year had, on the ground of violation of principle of natural
justice, set aside an order by the IPO rejecting Pfizer's
patent application and directed them to re-consider the
application. Pfizer contended that the Controller had not raised an
objection under Section 3(d) in the first examination report or in
the hearing notice and stated that the objection was raised first
time during the hearing and such non-communication of said
objection caused grave prejudice as they were not in a position to
respond to the objection.
Reports state that Pfizer is reviewing its options for further
action which includes an appeal at the IPAB within 3 months of the
date of the Order.
It will be interesting to see whether a document filed in
pursuance of an application for a patent made in India and dated
before or claiming priority earlier than the date of patent
application in question can be considered while evaluating a patent
application under Section 3(d).
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