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27.4 Laurus predicated its challenge to the suit patent on clauses (b),

(e), (f) and (g) of Section 25(2)24 of the Patents Act, by alleging that Ibrutinib is lacking in novelty, lacking in inventive step, not patentable by virtue of Section 3(d) and insufficiently described in the complete specifications of the suit patent.

27.5 The Joint Controller rejected the challenge predicated on clauses (b), (f) and (g) of Section 25(2), but upheld the challenge bsed 24 (2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:--

28.2 The IPAB held that, to arrive at a finding that there was lack of inventive step, the prior art and the suit patent were required to be analogous. The prior arts chosen by Laurus were not analogous to the suit patent and no finding of want of inventive step could be based thereon.

28.3 Insofar as the compounds disclosed in Andrew et al were concerned, the IPAB observed that the findings of the Joint Controller were contradictory. At one point, the Joint Controller stated that the ribose pocket of the Lck protein was filled up with the cyclohexyl group with N-methyl piperazine and, at another, that it was occupied by the N-methyl piperazine moiety alone.

28.7 Having noted these facts, the IPAB concluded thus:

"18.6 Firstly, whether the invention was a combination of hitherto known features is based on "hindsight analysis" and we are not inclined to accept it. Even after the hindsight analysis and permutations/combinations, the person skilled in the art could not reach the subject matter of the present invention. Even if we consider for a while the contention of the Learned Controller, Hon'ble Supreme Court laid down the following criteria for assessing "inventive step" which will be very appropriate in this situation. In M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries25, "It is important that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent." Hence, once the Learned Controller comes to conclusion that invention consists merely a combination of known features, which does not give rise to an inventive technical advance, whether it was judged that this combination is more than a mere workshop improvement or whether the new combination satisfies the test of inventiveness on its own? [Emphasis added]. The order of the Learned Controller is silent on these aspects.

18.8 It is worth mentioning here that the concept of "ordinary" person skilled in the art is not available in the Indian Patent Act, 1970. The determination of "inventive step"

as envisaged in the Patents Act under section 2(1)(ja) clearly stipulates "person skilled in the art". The adjective "ordinary" does not find mention with "person skilled in the art" in the entire Patent Act, 1970. That is why the test of "inventive step"