IPO stresses comparative studies for patentability
19 October, 2012
Two recent decisions of the Indian patent office highlighted the importance of experimental data and comparative studies in trying to prove the surprising or synergistic effect of the new compounds over prior art compositions.
While revoking the patent granted to a pharma major on grounds of obviousness and lack of inventive step, the Indian patent office observed that only if the new compound produces unexpected, improved results as compared with the closest prior art, such result can be used as evidence of non-obviousness. The IPO held that to establish inventive step, comparative test must be carried out between compounds of the claimed invention having maximum structural similarity with the compounds of the closest prior art. The patentee had argued that the group in ‘closest prior art’ was one of the possibilities of a Markush claim and there was no onus to provide further data.
In another order refusing grant of patent for pharmaceutical foam composition the IPO found that the application only provided individual components in grams and there was no supportive data evidencing surprising or synergistic effect which distinguished it from a mere admixture.