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Court Case Bulletin (CCB): Subject Matter Of A Prior Patent Forming A Single Inventive Concept Cannot Be Granted Another Patent
Author: Intern - Gaurvi Arora
In a common (joint) appeal against the two Orders of the High Court of Delhi refusing AstraZeneca’s interim injunction applications against 9 Defendants in different lawsuits [AstraZeneca AB and Ors. v. Intas Pharmaceuticals Ltd. and Ors., FAO(OS) (COMM) – 139/2020, and 8 others], the division bench of the High Court of Delhi [Rajiv Sahai Endlaw, J. and Amit Bansal, J.], vide its Order dated July 20, 2021, dismissed the appeals while refusing the interim injunctions in all 9 matters and granted costs of Rs. 5,00,000/ against Plaintiff/Appellant in each suit. The Court held that one invention can be protected by only one patent.
Appellant’s patent IN 147, a genus patent, claiming a Markush structure, along with a disclosure of eighty examples. Dapagliflozin (DAPA), a compound used in anti-diabetic drugs, while covered under the Markush structure, was not specifically disclosed in the examples of IN 147. The term of IN 147 expired on October 2, 2020. Appellant’s patent IN 625, a species patent, which specifically claimed DAPA, is valid till May 15, 2023. In some of the suits, which were filed before October 2, AstraZeneca relied upon both the patents to allege infringement.
As per Section 10(5) of the Patents Act, 1970, “The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept…”. The underlying question, in this case, is whether there could be two patents with respect to the same invention.
Appellant contended that IN 147 bearing the Markush structure covered DAPA but did not disclose it and that DAPA was only explicitly claimed as a separate invention in IN 625. Hence, the Respondents could not manufacture it until its expiry, which is May 15, 2023. The Appellant asserted that merely because a particular compound falls within the scope of a particular claim, it does not amount to the said compound being disclosed with specificity. The Respondents argued that since it was the Appellant’s case that manufacture and sale of DAPA was infringement of IN 147, the Appellant was deemed to have admitted that DAPA was fully and particularly described in IN 147. Moreover, IN 625 was vulnerable to challenge, as it lacked inventive step, based on what was published and publicly known from IN 147.
While dismissing the Appeal, the Court opined that “with respect to one invention, there can be only one patent. The appellants/plaintiffs herein, however, while claiming one invention only i.e. DAPA, are claiming two patents with respect thereto, with infringement of both, by the respondent(s)/defendant(s). The same alone, in our view, strikes at the very root of the claim of the appellants/plaintiffs and disentitles the appellants/plaintiffs from any interim relief.” Further, the division bench acknowledged that a single formulation, such as DAPA, cannot be protected under two separate patents with distinct validity periods.
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