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  • Writer's pictureRoyzz & Co

Could discontinuation of a divisional application impact the enforceability of its parent patent?

The Delhi High Court granted an interim injunction to Novartis AG [Plaintiff] against Natco Pharma Ltd., [Defendant] in a patent infringement suit. The plaintiff had filed the suit against the Defendant, seeking injunctive relief for infringing its Indian Patent In 276026 titled "Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors”. This injunction barred the Defendant from manufacturing and distributing its generic version of Ceritinib, a medication employed in treating lung cancer.  Consequently, the defendant filed an Interim Application and sought vacation of the interim injunction granted by Delhi High court. 

The defendant’s  alleged that the Plaintiffs have suppressed material facts from the court at the time of hearing of the interim injunction.   The Plaintiffs had failed and neglected to inform the court at that time that they had filed a Divisional Application pertaining to the suit patent. The Controller raised objections to the Divisional Application in the First Examination Report [FER]. However, the plaintiff later chose to discontinue the divisional application which ultimately led the controller to refuse the Divisional Application under section 15 of the Indian Patent Act, 1970. 

 It was the defendant’s case that their arguments were concurrent with the objections raised by the Controller in the First Examination Report.  

The defendant submitted that since the application was rejected under section 15 of the Patents Act, which states that “the Controller has the authority to reject an application for not meeting statutory criteria,” it should be interpreted that the refusal was based on the merits of the case rather than Novartis' abandonment of the division application. 

The defendant contended that the plaintiff had a responsibility to reveal both the submission of the Divisional Application and its ultimate rejection by the patent office, as this would have significantly impacted the plaintiff's case at the time of securing an interim injunction.

Order and Analysis by the Court :

The court refused to accept the contentions of the defendants and dismissed its application for vacating the interim order of injunction.

The Court held as under :

  1. Divisional application refusal was not based on the merits of the case

The court determined that there was no adjudication by the Patent Office on the objections raised in the First Examination Report (FER) against the divisional application. The plaintiff themselves decided to abandon the divisional application. However, it does not prevent the Plaintiffs from defending the grounds on which the validity of the parent patent was questioned.

  1. Decision of the Controller is not binding on the Court: 

The court held that a decision made by a hierarchically lower court cannot be binding on it. The court had independently analyzed the merits of the case at the time of granting the interim injunction and concluded that the parent patent was not vulnerable to invalidity under section 64 of the Patent Act, 1970.

Therefore, the plaintiffs' failure to disclose the filing and rejection of the divisional application cannot be considered adequate defense to revisit the interim order. 

  1. No change in circumstances justifying revising the injunction order

The Court asserted that, except in the cases where there is a change in circumstances or the order has caused undue hardships to the defendant, there cannot be re-visitation of the injunctions order. 

The court held:

“………inasmuch as the divisional application and its outcome were much prior to passing of the order dated 9 January 2023, they cannot constitute “change in circumstances” within the meaning of Order XXXIX Rule 4 of CPC.”

  1. Suppression of facts

The court held that only suppression of a material fact which, if revealed, would change the case's outcome, is seen as significant and would justify the recall of the interim injunction order.

The refusal of the divisional application does not, either in fact or in law, extinguish the suit/parent patent.

The court’s Judgment helps in understanding the effects of refusal of divisional applications on the parent patent in patent disputes. The detailed analysis of the Hon’ble Delhi High Court in this case has clarified that the validity and enforceability of a parent patent will not be affected by the discontinuation of the divisional application.

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