Two Patents Cannot Be Granted For One Invention- One for Genus and The Other for Species: Delhi High Court Dismisses Plea By AztraZeneca

The Delhi High Court has held that two patents cannot be granted for one invention- one for genus and the other for species. A claim of two patents for one invention only strikes at the very root of the appellants' claim and disentitles the appellants from any interim relief. Dismissing the plea by affixing Rs.5,00,000/- costs, a division bench of Justices Rajiv Sahai Endlaw and Rajiv Bansal observed that the rights of a patentee, unlike that of the proprietor of a trademark, are not natural or common law rights but are a creation of law, i.e., are statutory rights. Thus, for a patentee to enjoy protection, the rights must be within the four corners of the statute, i.e., the Patents Act, and there are no rights independently thereof or inherent or common law rights of an inventor or patentee.In a batch of nine pleas by AstraZeneca seeking an injunction against the sale of anti-diabetes drug 'Dapagliflozin' by generic Pharma companies- Torrent, USV, Micro Labs, Zydus, and others. It was challenging two separate judgments of single judge benches of Delhi High Court passed on the same facts, dismissing their plea independently of each other.Given the proximity of the date of pronouncement, the Court apprehended that the hearings were ongoing simultaneously. However, it noted that instead of pleading to club both the proceedings, it went ahead, wasting judicial time, hoping to take a 'chance.' However, they failed in both the courts. The petitioner's claim for infringement arises after the expiration of the patent for IN 147 (genus patent; expired on October 2020), thus claiming the infringement of IN 625 (species patent; expiring in May 2023), the subject matter of both being DAPA.Two Patent Claims- One Invention:The Court studied the relevant statutory provisions and the 'invention' claimed in each of the two patent claims(IN 147 & IN 625) based on one invention, i.e., DAPA. It remarked that on an inquiry of both the claims, it appears completely identity, without any difference whatsoever, between the field of invention. A 'new product' involves an inventive step, i.e., a feature involving a technical advance compared to existing knowledge, including of IN 147 or having economic significance, not anticipated by earlier publication or use. The invention in IN 625 did not describe the technical advancement or the difference in efficacy from IN 147. The Court also noted that the inventor of both the claims IN 147 & IN 625 was the same. As there is no advancement or difference in efficacy of the new products, the subject matter thereof over the product subject matter of IN 147 is mentioned, nor any economic significance of the new invention claimed. Once the inventor himself, while writing and seeking the patent, has not mentioned so, the subsequent claims of the assignee of the patent, in this regard, at least at the stage of judging prima facie case, cannot be accepted and have to be necessarily put to trial, the Court noted. It remarked that the standard tests of "obvious to a person skilled in the art" and "anticipation by publication" and "use before the date of filing of patent application with complete specification," in the context of an earlier patent and its specifications, have to be different when the inventor of both is the same. It laid down the test of "person in the know," to be used when the inventor is the same instead of the test of "person ordinarily skilled in the art." In such a situation, the inquiry has to be guided by whether the inventor, while writing the first patent, knew of the invention claimed in the subsequent patent, the Court noted.Can Patent Be Granted More Than Once? The appellants argued that because of delays in obtaining approvals of Drug Regulators in different jurisdictions, for marketing of a new drug/medicine, after obtaining the patent concerning it, results in the inventor not being able to enjoy the exclusivity granted under the Patent Laws for the full term of the patent. However, the Court noted that mere delays are no reason for the Court to give the patent a longer life than provided in the statute. The Legislature can cure the arising issue and not the Courts by allowing more than one patent concerning the same invention. Discussing the legislative intent behind the limited life of the patent, the Court noted, "If patents with respect to the same invention can be granted more than once, successively in time, the same will negate the legislative intent of limiting the life of the patent and enable the patentee to prevent others from making, using or offering for sale, the new product invented by the patentee, till the time patentee successively keeps on obtaining patent therefor."The petitioners argued that DAPA was only covered and not disclosed in IN 147 and disclosed for the first time in IN 625. It also argued that DAPA being not obvious from and capable of being anticipated from IN 147. However, the Court noted that their suit claiming infringement admit...

Two Patents Cannot Be Granted For One Invention- One for Genus and The Other for Species: Delhi High Court Dismisses Plea By AztraZeneca

Shrutika Pandey

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