Revocation application U/S 64 of The Patents Act filed by Ajanta Pharma limited against Patent no. 212695 granted to Allergan Inc. has been accepted by the Intellectual Property Appellate Board (IPAB) and patent has been revoked.
Allergan Inc. owned a patent granted on 14th December 2007 for invention "Hypotensive Lipid (prostaglandin derivatives) and Timolol composition and method of using the same". In particular the patent was related to combination of Bimatoprost and Timolol. Revocation petition was filed by the applicant on 12th August, 2011. Here the revocation of patent issue was looked on main three features which are as follows;
1. Revocation Petition was barred by the time.
2. Grounds to file revocation of patent i.e, Sections 8, 59 and 117D of the Patents Act-1970.
3. Filing of evidence supporting revocation petition filed by the applicant.
The patent was granted on 14th December 2007 and revocation petition was filed by the applicant on 12th August, 2011 after almost four years later. Respondant's counsel argued on almost four year bar of application by citing the reference of Limitation Act. In response of that the Applicant has argued that "there is no time bar for the revocation application as per the Act" and further added that "the Law of Limitation is applicable to Courts and the Hon'ble IPAB is not a court but a techno-legal quasi-judicial authority and hence the law of Limitation would not be applicable and petition application is not at all a time barred".
Secondly, the arguments towards said patent raised by the Applicant's counsel were focused on obviousness and lacking of inventive step in view of the documents cited. A number of citations were relied on but principle basis of obviousness argument was rested on the previous combined fixed dose containing Latanaprost and Timolol. However, the issue related to the obviousness was minutely argued by both parties but in the end IPAB has observed that prior art documents provided by the Applicant were sufficient to decide the case. Further, amendments presented by the patentee were beyond the scope and other documents have clearly showed that the patented combination was obvious. Moreover report and all other documents were after priority date of the invention and not relevant to determine the inventive step and it was observed by the board that Invention as whole otherwise was appeared obvious in view of prior arts and therefore the revocation petition succeeded on the ground of obviousness.
Stepping stone of this case was issue of Violation of section 8 of the Act which was honorarily observed by the IPAB. The Indian Patents Act vide says that "It is duty of the patentee to disclose information as per the requirement of section 8 of the Act and it is mandatory under section 8 (1) of the Act which was also not performed by the patentee". In the said matter the Hon'ble IPAB has emphasized that "The Act says failure to disclose the information required by Section 8 is a ground of revocation. It does not indicate the failure must be deliberate nor are there any words to indicate that the failure must be in regard to material particulars." By considering such facts the violation of section 8 has put the other strong case of Applicant.
As the Respondents failed to prove any of their points about time barred, obviousness of invention, amendments and violation of section 8; by setting aside the grant of patent No. 212695, patent has been revoked with no costs.
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