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1 - 10 of 52 (2.53 seconds)The Patents Act, 1970
F.Hoffmann-La-Roche Ltd. & Anr vs Natco Pharma Limited on 2 February, 2017
In similar facts and circumstances a Division Bench of this Court in
F. Hoffmann-LA Roche AG and Another v. Natco Pharma Limited85,
has held that such minor modification in the compound of genus patent vis-
à-vis species patent as done in the present case, which is well within the
skillset of the 'person in the know' will result in evergreening and is
therefore vulnerable to credible challenge under Section 64(1)(f) of the
Patents Act. The relevant paragraphs are as follows:
Section 107 in The Patents Act, 1970 [Entire Act]
F. Hoffmann-La Roche Ltd, Switzerland ... vs Cipla Ltd., Mumbai Central, Mumbai on 7 September, 2012
91. The parameters for defining the skill of the said hypothetical person
are referenced in the aforesaid Division Bench judgment of F. Hoffmann-
La Roche Ltd. v. Cipla Ltd78. The relevant paragraph of the said judgment
read as under: -
Novartis Ag vs Union Of India & Ors on 1 April, 2013
68. The aforesaid declaration made by the Plaintiff in Form 27 before the
Indian Patent Office and patent offices in foreign jurisdictions, therefore, is
evidence of the fact acknowledged by the Plaintiff that the Semaglutide
compound is the invention claimed in the Genus Patent/IN'964. The
Plaintiff is bound by its declarations made to patent offices in India and
abroad in light of the law settled in Novartis AG v. Union of India67.
Def.) Kudos Pharmaceuticals Limited & ... vs Natco Pharma Limited on 18 January, 2023
33. The Plaintiff has relied upon the judgment of the Coordinate Benches
of this Court in Novartis AG and Another v. Natco Pharma Limited55,
Kudos Pharmaceuticals Limited and Others v. Natco Pharma Limited56
and FMC Corporation and Another v. Best Crop Science LLP and
Another57 to contend that the challenge on the basis of prior claiming under
Section 64(1)(a) of the Patents Act can only be upheld if there is an enabling
disclosure in the genus patent. The Plaintiff has contended that specific
compounds have been enlisted under Claim 18 and Claim 21 of the Genus
Patent/IN'964, and it is these compounds alone that have been claimed
under the Genus Patent/IN'964. The Plaintiff contends that since the
Semaglutide compound is not listed as a specific compound under Claim 18
and Claim 21, the Semaglutide compound was not claimed in the Genus
Patent/IN'964. The Plaintiff contends that the Defendants must demonstrate
that the Semaglutide compound with the same properties was disclosed in
the Genus Patent/IN'964 to succeed in setting up a credible challenge on the
ground of anticipation by prior claiming under Section 64(1)(a) of the
Patents Act.
Fmc Corporation & Anr vs Best Crop Science Llp & Anr on 21 July, 2022
33. The Plaintiff has relied upon the judgment of the Coordinate Benches
of this Court in Novartis AG and Another v. Natco Pharma Limited55,
Kudos Pharmaceuticals Limited and Others v. Natco Pharma Limited56
and FMC Corporation and Another v. Best Crop Science LLP and
Another57 to contend that the challenge on the basis of prior claiming under
Section 64(1)(a) of the Patents Act can only be upheld if there is an enabling
disclosure in the genus patent. The Plaintiff has contended that specific
compounds have been enlisted under Claim 18 and Claim 21 of the Genus
Patent/IN'964, and it is these compounds alone that have been claimed
under the Genus Patent/IN'964. The Plaintiff contends that since the
Semaglutide compound is not listed as a specific compound under Claim 18
and Claim 21, the Semaglutide compound was not claimed in the Genus
Patent/IN'964. The Plaintiff contends that the Defendants must demonstrate
that the Semaglutide compound with the same properties was disclosed in
the Genus Patent/IN'964 to succeed in setting up a credible challenge on the
ground of anticipation by prior claiming under Section 64(1)(a) of the
Patents Act.
Astrazeneca Ab & Anr. vs Alkem Laboratories Limited on 2 November, 2020
In India, an additional factor has been formulated by the Division
Bench in AstraZeneca AB and Another v. Intas Pharmaceuticals Ltd.79
for determining the level of skill required of a 'person skilled in the art'.
According to the said decision, when a genus-species relationship exists
between prior art and patent under scrutiny, and the inventors are identical,
the inventors of the genus patent/prior art are presumed to have known of
the inventive step required to reach the subsequent species patent. In such
cases, the assessment of the inventive step or obviousness is to be done with
regard to 'person in the know' and not 'person skilled in the art'. The
relevant paragraph of the said judgment is reproduced herein below: