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Bayer Intellectual Property Gmbh vs The Controller Of Patents on 29 July, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                          $~5
                          *     IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +                   C.A. (COMM.IPD-PAT) 27/2021
                                BAYER INTELLECTUAL PROPERTY GMBH ..... Appellant
                                             Through: Mr. Debashish Banerjee & Mr.
                                                      Ankush Verma, Advocates (M-
                                                      9810948290)
                                             versus
                                THE CONTROLLER OF PATENTS                ..... Respondent
                                               Through: Mr. Harish V. Shankar, CGSC with
                                                        Mr. Srish Kumar Mishra, Mr. Sagar
                                                        Mehlawat, Mr. Alexandar Mathai
                                                        Paikaday, Advocates.
                                CORAM:
                                JUSTICE PRATHIBA M. SINGH
                                         ORDER

% 29.07.2022

1. The present appeal under Section 117A of the Patents Act, 1970 (hereinafter 'Act') challenges the impugned order passed on 25th March, 2021 rejecting the Appellant's patent application No. 201918027661 dated 10th July, 2019. The subject application was a divisional application arising out of the parent application being 7318/DELNP/2011 which had ten claims. In the parent application, the First Examination Report was issued on 29th June, 2017 and the response was filed by the Appellant on 21st December, 2017. In the response, the applicant chose to restrict the parent application to 'Nematicidal active ingredient combinations comprising of formula N-{2-[3- chloro-5-(trifluoromethyl)-2-Pyridinyl]ethyl}-2trifluoromethylbenzamide (I-

1)' along with cyazypyr (II-36). All the remaining combinations of (I-1) with (II-1) to (II-43) except (II-36) were thus not part of the parent application as granted finally by the Patent Office on 23rd October, 2019.

Four divisional applications were filed by the Appellant prior to the grant of the parent application. Out of these four divisional applications, one divisional application is the subject of the present appeal which was filed by the Appellant on 10th July, 2019.

2. The present divisional application relates to formula (I-1) along with (II-28) being 4-{[(6-chloropyrid-3-yl)methyl](2,2-difluoroethyl)amino}furan- 2(5H)-one. The same has been rejected by the Patent Office on the ground of lack of inventive step, Section 10(4) of the Act and lack of adequate experimental result of exact data.

3. In order to fully appreciate the issues and the patentability of the subject application, it is deemed appropriate to direct either of the parties to place on record the copy of full file wrapper of the parent application being 7318/DELNP/2011 as also the subject application being 201918027661, including the efficacy data, which is stated to have been submitted to the Patent Office by the Appellant both in the parent application and in the subject application.

4. List for further hearing on 14th October, 2022.

PRATHIBA M. SINGH, J.

JULY 29, 2022 Rahul/SK Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:03.08.2022 14:57:33