SpicyIP Tidbits – Natco’s Request To Vacate Ceritinib Interim Injunction Rejected, Madras High Court Revokes Omega Ecotech’s Patent, And Delhi High Court Upholds IPO’s Patent Rejection

Republished By Plato

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Refuse: (1) to vacate an interim injunction, (2) to remand back to the patent office, and (3) to continue allowance of a patent grant! In the last few days, the Madras and Delhi High Courts have passed a few significant orders on these topics. Let’s take a look at these three orders in this quick tidbit.

DHC Rejects Natco’s Request to Vacate Ceritinib Interim Injunction

In a detailed order passed on January 9, 2023, the Delhi High Court had granted an interim injunction to Novartis against Natco, restricting the latter from manufacturing and selling its generic version of Ceritinib, a drug used in treating lung cancer.

More than a year later, the Ceritinib controversy has popped up again, this time Natco seeking vacation of the interim injunction. Natco argues that since one of Novartis’ divisional applications on Ceritinib was objected to (by the Patent Office) on similar grounds as Natco’s previous arguments on anticipation by prior claiming and obviousness, the interim injunction should be vacated. Natco made a technical argument that since the application was rejected under Section 15- where Controller can reject an application for failing to meet the statutory criteria, it should be seen that the refusal was on merits and not because of Novartis’ abandonment of the division application. But the Court refused to buy this and held that a decision to not pursue an application can be because of a variety of reasons and not only because of the objections in the FER. Further, the Court held that even assuming the Controller’s decision was on merits, since the Court had undertaken an independent assessment of the suit patent’s validity, the Controller’s decision (referred to here as decision of “hierarchically lower Court”) cannot be cited to reverse the same.

2 major concerns stand out here- first, it must be noted that the validity of the suit patent was upheld after a “prima facie” assessment by the Court in the January 2023 order. Thus, by holding Controller’s order on merits at a lower footing in the present case, the Court indirectly states that the Controller’s orders – passed after rigorous examination and perhaps after assessment of meritorious oppositions, can still be undermined by the “prima facie” assessment by the Court. Second, though the Court issued a finding that non-disclosure of the division application by Novartis cannot be regarded as suppression of material facts, I doubt that this simplistic dismissal represents reality and in hindsight if this information would have been disclosed, it would surely have given immense merits to Natco’s arguments during the interim injunction stage.

(Interested readers can read more on the Ceritinib patent litigation here.)

Madras High Court Revokes Omega Ecotech’s Patent

The Madras High Court on March 28, 2024 revoked Omega Ecotech’s Patent on a multistage bio composting kit and method of composting. The invention had a product claim and method claim. The Court held that the product claim, though novel, lacks an inventive step as there is no data to prove that trapezoidal shaped containers lead to faster composting, as asserted in the specification. The Court also said that the use of chimneys in the invention is a mere workshop modification. Regarding the method claim, the Court held that the same was not novel as it was “well known” in the art. However, the Court did not explain how the method claim is well known in the art or what these prior arts were.

Also, surprisingly, the Court did not refer to the Controller’s order anywhere and undertook an independent assessment of the complete specification. Looking at the Controller’s order, one can understand why the Court had to undertake a fresh assessment though. The 1 page order simply summarizes what the Omega Ecotech did in the proceedings and eventually granted the patent, with no discussion on how it overcame the previously cited objections.

Recently, Aarav and I wrote on this issue in light of a 5 line order granting a patent to the applicant. This case offers another perspective to our recent discussion where an “interested party” (Ollios Biotech) who received a cease and desist notice, had to come forth and get its competitor’s patent revoked. But what about the situations where a party decides not to challenge the validity of a patent and instead comply with the C&D notice? Considering the increasing number of grants day by day, such instances offer merit to the argument for more transparency and rigorous examination in the patent prosecution process.

Speaking of revocations, I recently came across another case before the Delhi High Court where Macleod Pharma made a nuanced argument differentiating between the findings of a court while entertaining a revocation petition u/s 64 with that of finding of a civil court on invalidity of the patent as a defence u/s 107. In this case the suit patent had expired and the erstwhile patentee, Boehringer Ingelheim argued that the pending revocation petitions were infructuous. On the issue of validity of suit patent, BI argued that the civil court (where the infringement proceedings are pending) can issue a finding eventually since the defence of invalidity has been raised there. Thus, BI argued that a decision on invalidity of a patent is in rem and no matter where this finding is issued, a patentee cannot assert its rights subsequently. Macleod has sought time to examine the legal position on this issue and the matter is now adjourned till May 09, 2024. I’ll be following this case closely and will hopefully let you all know if anything interesting comes up.

Delhi High Court Refuses to Remand Back an Order to the Indian Patent Office

And lastly, to wrap up this patent orders trifecta tidbit, on 05 April, 2024, the Delhi High Court in Sulzer Mixpac Ag vs Assistant Controller Of Patents refused to remand a matter back to the Indian Patent Office for reconsideration of its previous decision rejecting a patent application. Though in the recent past we have seen numerous orders (see here and here) where the Court has remanded the matter back to the patent controller for reconsidering their rejection order, this order is interesting (and also rare) because here the Court held that the Patent Office was correct in refusing to grant a patent. Seemingly, the appellant was arguing against the decision on the basis of patents it received in foreign jurisdiction. The Court rightly refused to entertain this plea by holding that patents are territorial in nature.