Guidelines for Examination ofPatent Applications in the
Field of Pharmaceuticals

Office of the Controller General of Patents,
Designs and Trademarks
October 2014

Guidelines For Examination Of Patent Applications In The Field Of Pharmaceuticals

Table of Contents

Paragraphnos.

Page nos.

1

Development of the pharmaceutical patenting in India

2-5

2

The scope of the present guidelines

5-53

Provisions Covered

5-6

4

Claims Of Pharmaceutical Inventions

6-7

Markush claims

8-8

5

Prior Art Search

9-9

6What is an invention: Section 2 (1) (j)

9-10

7

Assessment of Novelty

10-17

8

Assessment of Inventive Step

17-26

9

Industrial applicability

26-27

10

Inventions not patentable

27-37

11

Sufficiency of description, clarity and support of the claims

37-45

12

Unity of invention

45-50

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Guidelines For Examination Of Patent Applications In The Field Of Pharmaceuticals

1.

Development of pharmaceutical patenting in India
1.1 Pharmaceutical patenting is an extremely important aspect of India’s Patent system.
At the time of Independence, India’s patent regime was governed by the Patents andDesigns Act, 1911, which had provisions both for product and process patents. It was
felt that there was a need for a change in the existing patent law since it had nothelped in the promotion of scientific research and industrialization in the country.
1.2 Immediately after independence, a Committee headed by Justice (Dr) Bakshi Tek
Chand, a retired judge of the Lahore High Court, was constituted to undertake acomprehensive review of the working of the 1911 Act (1948-50). The Committee
submitted its interim report on August 4, 1949 and the final report in 1950 making
recommendations for prevention of misuse or abuse of patent rights in India. The
Committee also recounted that the Patent Act should contain a clear indication thatfood and medicine and surgical and curative devices were to be made available to the
public at the cheapest price while giving reasonable compensation to the patentee.
Based on the recommendations of the Committee, amendments were made in the
Patents and Designs Act, 1911, first in 1950 (by Act XXXII of 1950) in relation to
working of inventions, including compulsory licensing and revocation of patents, andthen in 1952, (by Act LXX of 1952) to provide for compulsory license for food andmedicines, insecticide, germicide or fungicide, and for the process for producing
substance or any invention relating to surgical or curative devices.
1.3 Subsequent to that, another Committee under Justice Ayyanger (1957-59) wasconstituted. Justice Ayyangar’s report specially discussed (a) patents for chemical
inventions and (b) patents for inventions relating to food and medicine. After
thoroughly examining the contemporary law of patents governing inventions on
chemical substances of different countries, the Committee recommended that only
process claims be allowed. For foods and medicines, the Committee recommended
that inventions related to foods and medicines including insecticides and fungicides
should not be patentable as such and processes for their productions should alone bepatentable.
1.4 On the basis of these reports and other deliberations, the Patents Act 1970 was
enacted and came into force from 1972. The Patents Act 1970 allowed process patents
for drugs, foods and products of chemical reactions but no product patents wereallowed for inventions related to such substances [erstwhile Section 5 of the Patents
Act 1970]. The definition of Drugs included pesticides and insecticides. Also, the termof patents, for processes related to drugs and foods, was reduced to a maximum ofseven years as opposed to fourteen years for the general category patents. During
the Indian pharmaceutical industry became nearly selfthe period 1970-1994,
sufficient and one of the largest exporters of generic medicines. A large number ofdeveloping countries depend upon the supply of cheaper generic medicines from India.
1.5 The 1990s marked the beginning of a new era in the world economy. From the
Uruguay round of General Agreement on Tariffs and Trade, emerged the World Trade
Organization (WTO), which also integrated IPR laws in international trade in a

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comprehensive manner. The WTO agreement, of which India is a signatory, cameinto force from 01.01.1995. TRIPs (Trade Related Aspects of Intellectual Properties)
agreement (Annexure 1C of the WTO agreement) under Article 27, required
introduction of both product and process patenting in all fields of technology including
drugs, foods, products of chemical reactions and micro-organisms.
1.6

To introduce product patents, TRIPs, under Article 65, allowed a ten years transition
period for developing countries which did not have product patenting. However, forsuch developing countries like India, an interim measure was required to be adopted
for pharmaceutical and agrochemical product related applications. Article 70.8 of
TRIPS stipulated that such countries were required to introduce mail-box provisions
for receiving applications claiming products in the relevant field. Also Article 70.9
mandated that Exclusive Marketing Rights (EMR) were to be made available for suchapplications subject to certain conditions for a term of five years from the date of
grant of such rights or till the grant or rejection of patents claiming such products.

1.7 Accordingly, after the WTO agreement, the Patents Act 1970 was amended in a phasedmanner in 1999, 2002 and 2005 in conformity with the TRIPs agreement.
1.8 In 1999, mail-box and EMR provisions were introduced in India with a retrospective
effect from 01.01.1995. Erstwhile Section 5 of the Patents Act 1970 was bifurcated tocreate a new Section 5(2) (mail-box provision) to receive applications claiming
pharmaceuticals and agrochemicals product and a new chapter IVA was introduced todeal with EMR applications.
1.9 By the 2002 amendments, the term of all patents was uniformly made twenty years.
1.10 After the introduction of product patenting in 2005, mail-box and EMR provisions[Section 5 and Chapter IVA of the Patents Act 1970] were deleted and consequently
product patents have been made available for inventions related to pharmaceuticals,
agrochemicals, foods and products of chemical reactions since 01.01.2005.
1.11 While introducing the amendments, utmost care was taken to protect the publichealth and nutrition. Also, provisions for both pre and post-grant oppositions wereengrafted in the Patents Act.
1.12 Other than the WTO agreement, India is signatory to various international agreements
which, inter alia, have bearing on patenting in pharmaceuticals. These include Paris
Convention (since 1998), Patent Cooperation Treaty (since 1998) and Budapest Treaty
on the International Recognition of the Deposit of Microorganisms for the Purposes ofPatent Procedure (since 2001), Convention on Biological Diversity (since 1992). The
amendments of the Patents Act 1970 were also calibrated to recognize India’s
accession to these treaties.
1.13 In the wake of the public health crisis afflicting many developing and least-developed
countries, especially those resulting from HIV/AIDS, tuberculosis, malaria and otherepidemics, the ministerial conference of WTO adopted ‘The Doha declaration on TRIPS
and Public Health’ (2001). The Doha declaration provided a mechanism for compulsory
licensing to supply medicines to countries with insufficient or no-manufacturing
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capacities. The declaration also explicitly stressed that t h e TRIPs Agreement can andshould be interpreted and implemented in a manner supportive of WTO members
right to protect public health and, in particular, to promote access to medicines for all.
Consequently, a provision (Section 92A) was introduced in the Patents Act for
Compulsory Licensing for the purpose of export of pharmaceuticals products to any
country having insufficient or no manufacturing capacity.
1.14 Convention of Biological Diversity (CBD) acknowledged the sovereign right of thenations on their genetic resources and mandated that the access to the genetic
resources and any intellectual property derived therefrom should be subject to thebenefit sharing accrued from such access. The CBD also warranted that the member
states should protect their traditional and indigenous knowledge.
1.15 In consequence of the CBD, India passed the Biological Diversity Act, 2002 which
provides a mechanism for access to the genetic resources and benefit sharing accrued
therefrom. Section 6 of the Biological Diversity Act came into force on 1st July 2004,
and prescribes that obtaining IPRs from the utilization of biological resources in India issubject to the approval of the National Biodiversity Authority (hereinafter referred toas NBA). To facilitate this access and benefit sharing and in order to prevent any
unauthorized use of the biological resources of India, in 2005 suitable amendments
were made in Section 10 of the Patents Act, 1970, wherein disclosure of the source
and geographical origin of the biological material was made mandatory in an
application for patent when the said material was used in an invention.
1.16 Pharmaceutical patenting in India is of utmost concern not only to the people of India,
but also for the world community as India has emerged as "the pharmacy of theworld". While traversing the history of the development of the legislation related topharmaceuticals, Honorable Supreme Court referred to a letter written by the
HIV/AIDS Director of the WHO, dated December 17, 2004, to the then Minister of
Health and Family Welfare, Government of India. A part of the said letter is quoted
herein below:“As India is the leader in the global supply of affordable antiretroviral drugs and otheressential medicines, we hope that the Indian government will take the necessary steps
to continue to account for the needs of the poorest nations that urgently need accessto anti-retrovirals, without adopting unnecessary restrictions that are not required
under the TRIPS Agreement and that would impede access to medicines”.
1.17 Pharmaceutical patenting in India is therefore, an extremely important and sensitive
issue since, while a bad patent is a burden to society, good patents are also essential
for promoting innovation and technological development in the country. Quality,
consistency and uniformity of examination and grant of patents thereafter are,therefore, the top most priority concerns for the Patent Office. In order to achievethese targets the Patent Office is continuously upgrading its internal resources. Apartfrom updating its physical resources like revamping its internal work modules or its
public interfaces, the Office, in an attempt to bring in quality, consistency anduniformity, has introduced guidelines for examination in certain key areas liketraditional knowledge and biotechnology. Further, many of the issues related to the
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product patenting in the field of pharmaceuticals are now becoming clear through thedecisions o f t h e C o u r t s . Therefore, there is a need to develop guidelines for
examination of pharmaceutical patents, incorporating the analysis of the Courts, withthe objective that the guidelines will help improve the examination standard and will
introduce harmonious practice amongst the technical Officers of the system.

2.

Scope of the present guidelines
The guidelines as set out below are supplemental to the practices and procedures
followed by the Patent Office as published in the ‘Manual of Patent Office Practice andProcedure’, “Guidelines For Examination of Biotechnology Applications” and the“Guidelines For Processing of Patent Applications Relating to Traditional Knowledge
and Biological Material”. The present guidelines are prepared with the objective that
the Guidelines will help the Examiners and the Controllers of the Patent Office inachieving consistently uniform standards of patent examination and grant. The
guidelines set out below contain, where feasible, certain illustrations. These illustrations
are not intended to exhaust the manner in which the relevant guidelines are to be appliedin practice. Examiners are requested to examine applications on a case-to-case basis,
without being prejudiced by the specific illustrations being provided herein. In case of any
conflict between these Guidelines and the Patents Act, 1970 and the Rules madethereunder, the provisions of the Act and Rules will prevail. The Guidelines are dynamic
and Patent Office will update the same as and when required.

3.

Provisions covered
The following sections of the Patents Act, 1970 are emphasized in the context of
examination of applications in pharmaceuticals and allied fields:
Section 2 (1) (j): "invention" means a new product or process involving an inventive
step and capable of industrial application;
Section 2(1)(j)(a): "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a person skilled in
the art;
Section 2(1)( (ac) "capable of industrial application", in relation to an invention,means that the invention is capable of being made or used in an industry;
Section 3 specifies that the following are not patentable inventions within themeaning of the Act:(i)

Section 3 (b): an invention the primary or intended use or commercial
exploitation of which could be contrary to public order or morality or whichcauses serious prejudice to human, animal or plant life or health or to theenvironment;(ii) Section 3 (c): the mere discovery of a scientific principle or the formulation

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of an abstract theory or discovery of any living thing or non-living substanceoccurring in nature;(iii) Section 3 (d): the mere discovery of a new form of a known substance which
does not result in the enhancement of the known efficacy of that substanceor the mere discovery of any new property or new use for a known
substance or of the mere use of a known process, machine or apparatus
unless such known process results in a new product or employs at least one
new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers,
polymorphs, metabolites, pure form, particle size, isomers, mixtures ofisomers, complexes, combinations and other derivatives of known substanceshall be considered to be the same substance, unless they differ significantly
in properties with regard to efficacy;(iv) Section 3 (e): a substance obtained by a mere admixture resulting only inthe aggregation of the properties of the components thereof or a process
for producing such substance;(v) Section 3 (i): any process for the medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings or any process
for a similar treatment of animals to render them free of disease or toincrease their economic value or that of their products.
(vi) Section 3(j): plants and animals in whole or any part thereof other than
micro-organisms but including seeds, varieties and species and essentiallybiological processes for production or propagation of plants and animals;(vii) Section 3 (p): an invention which in effect, is traditional knowledge or which
is an aggregation or duplication of known properties of traditionally known
component or components.
Section 10 (4): Sufficiency of disclosure, the best method of performing the invention
and claims defining the scope of invention, andSection 10 (5): Unity of invention and clarity, succinctness and support of the claims.

4.

Claims of Pharmaceutical Inventions
4.1 The details of wording of claims, clarity, support and sufficiency of the disclosure are
discussed under appropriate headings. However, for better understanding of theissues related to novelty and inventive step and other patentability criteria, apreliminary reference is made hereunder on claims of pharmaceuticals and allied
inventions which are usually filed in patent applications of the relevant fields.
4.2 Generally, applications pertaining to pharmaceutical and allied subject-matterscomprise the claims relating to the following subject matters, but not limited to:
I. Product claims:i.

Pharmaceutical product:

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a.
b.
c.
d.

New Chemical Entities;
Formulations/Compositions;
Combinations/ dosage/dose;
New forms of known substance such as:
salts, ethers and esters; polymorphs; solvates, including hydrates;
clathrates; stereoisomers; enantiomers; metabolites and pro-drugs;
conjugates; pure forms; particle size; isomers and mixtures thereof;
complexes; derivatives of known substances; andii. Kits;iii. Product-by-process.
II. Claims for process/method of manufacturing;
III. Claims related to new property, new use of known substance or use claims,
including second indications;IV. Claims for method of treatment and/or diagnosis of human beings and animals;
V. Claims related to selection inventions (relating to product and process)
The Guidelines have been designed In such a manner that the explanations given with regard
to the separate concepts such as novelty, inventive step, industrial use etc would beapplicable generally to all the types of claims given above but where there seems to be arequirement of additional clarification or a different approach, an attempt has been made to
explain it separately under the same conceptual head in the context of the pertinent
provisions of law.

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Markush claims
Often broad (“generic”) patent claims are drafted covering a family of a large number (sometimes
thousands or millions) of possible compounds. The so-called ‘Markush claims’ refer to a chemical
structure with plurality of functionally equivalent chemical groups in one or more parts of thecompound. The Markush claims are drafted to obtain a wide scope of protection encompassing a large
number of compounds whose properties might not have been tested, but only theoreticallyinferred from the equivalence with other compounds within the claim. Quite often the Markush
claims generate confusions regarding the novelty, non-obviousness and industrial applicability of a groupof compounds covered within the said Markush formula. Also, the Markush claims may invoke thequestions of sufficiency and plurality of distinct group of inventions surrounding such claims.
Illustrative example:
Claim 1: The compounds of the general formula:

Wherein, R1 is selected from phenyl, pyridyl, thiazolyl, thioalkyl, alkoxyl and methyl; R2-R4 are methyl, tolyl
or phenyl the compounds are used as a pharmaceutical for increasing the oxygen intaking capability ofblood.
While examining above said Markush claims, the complete specification should be critically examined
whether: (i) it discloses best representatives, as known to the applicant, of the possible embodiments;(ii)such embodiments share a common use or property; (iii) such possible embodiments share common
structure; (iv) physical and/ or chemical properties of best representatives of such embodiments known tothe applicant are disclosed; (v) test conducted for the representatives of such embodiments known to theapplicant is provided; (vi) in case of product claims at least one process for preparing the compounds has
been disclosed enabling the whole scope of the invention.
Moreover, if any one of (i) to (vi) are not met such a Markush claims may be objected depending upon
the circumstances of the application so examined under 'Unity of invention' and insufficiency of disclosure
suitably. Compounds can be said to have a common structure where the compounds share a common
chemical structure which occupies a large portion of their structures, or in case the compounds have incommon only a small portion of their structures, the commonly shared structure constitutes a structurally
distinctive portion in view of existing prior art. The structural element may be a single component or a
combination of individual components linked together.

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5.

Prior Art Search
5.1

While conducting a prior art search, the Examiner should design/frame acomprehensive search strategy by combining various search parameters including key
words, IPC, compound searches, etc. and thorough search should be carried out inpatent as well as non-patent databases.

5.2

The compounds can be searched and identified from the various databases by using
several methods1:a) Molecular formula and structural formula searching;b) Name searching using IUPAC nomenclature;c) Compound searching using CAS Registry Numbers;d) Generic name searching (INN); ande) Search using International Patent Classification (IPC).

6.

5.3

It is to be noted that quite often the claims of the pharmaceutical compounds involve
derivatives of known compounds having established pharmaceutical activities. Also, it
has been observed that such pharmaceutical substances have already been assigned
generic names (International Non-Proprietary Names, INN). When the patent
specification under examination disclose such INNs, the examiner should search theprior art on the basis of such INNs as well.

5.4

In case it is found that the applicant claims the second use/indication in the form of a
product claim of an already known pharmaceutical compound/new form of a known
substance or compound, the examiner should follow the same methodology and ask
the applicant to inform the INN of the said pharmaceutical substance. If the applicant
does not inform the INN even on the request, the examiner should try to find out the
INN and use the same in the search strategy.

What is an invention: Section 2 (1) (j)6.1

According to Section 2 (1) (j) of the Act, an "invention" means a new product orprocess involving an inventive step and capable of industrial application. An invention
will be patentable only if it is new in the light of prior art, or is not anticipated by priorart. From the plain reading of section 2(1)(j), it is amply clear that only products
and/or processes for making pharmaceutical compounds are considered to beinventions under the said clause. Sometimes, it is observed that applicants file claimsin the following manner:
1) Use of compounds in the treatment of ------------------2) A product or a substance (which is known) for the treatment of new disease (which
is nothing but use/application claim).

1

Page 32 of Patent Information and Transparency: A Methodology for Patent Searches on Essential Medicines in
Developing Countries, Published by United Nations Development Programme304 E 45th Street New York, NY
10017, USA ,www.undp.org
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Guidelines For Examination Of Patent Applications In The Field Of Pharmaceuticals

The above two categories of claims are not to be considered as inventions, since theclaimed subject matter neither pertains to product nor to process. Further, anobjection with regard to Section 3(i) and Section 3(d) would be invoked.
6.2

Also, it may be noted that sometimes such claimed inventions relate to the second useof already known compounds which have fallen in the public domain. Necessary care
may be exercised to examine those cases in the light of Section 2(1)(j) and Section 3.
Further, it should be borne in mind that finding the new property of an already known
substance does not make the substance novel and/or inventive.
Illustrative example: In an Order, Hon’ble Intellectual Property Appellate Board (IPAB)
rejected one such application. The application initially claimed the use of known
Fumaric acid derivatives for a second medical indication. The examiner raised
objections on two counts i.e. claims are not allowable under section 2(1)(j) in that theclaims relate neither to product nor process and the compounds of the invention wereadmittedly known 2.Facing the objections the claims were amended to product claims,
but the question of lacking in novelty was maintained. The Controller refused theapplication on the ground of lacking in novelty. Later, the IPAB upheld the decision of
the Controller.

7.

Assessment of Novelty:
7.1

Section 2 (1)(l) of the Act states that ‘”new invention" means any invention or
technology which has not been anticipated by publication in any document or used in
the country or elsewhere in the world before the date of filing of patent application
with complete specification, i.e., the subject matter has not fallen in public domain orthat it does not form part of the state of the art’. For the purpose of ascertaining thenovelty during the examination, the prior art is to be construed as prescribed under
Section 2 (1)(l) and Section 13 (read with Sections 29 to 34) of the Act. The Manual of
Patent Office Practice & Procedure has set out the guidelines for assessment ofnovelty of inventions (Chapter 8, Para 08.03.02) that may be referred to.

7.2

Documents: It should be noted that while assessing novelty (as distinct frominventive step), it is generally not permitted to combine separate items of prior art
together. It is also not permissible to combine separate items belonging to different
embodiments described in one and the same document, unless such combination has
specifically been suggested or essentially linked to one another. If a Markush formula
covers innumerable compounds and if some of the compounds fall within one priorart and certain other compounds fall within another prior art, in such cases allthese prior art documents are to be cited. A generic disclosure in the prior art
may not necessarily take away the novelty of a specific disclosure. A specificdisclosure in the prior art takes away the novelty of a generic disclosure.

2

In FUMAPHARM AG vs THE CONTROLLER OF PATENTS & DESIGNS, OA/6/2009/PT/KOL and Miscellaneous
2
Petition No. 34/2011 in OA/6/2009/PT/KOL, ORDER (No. 73 of 2013)

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7.3

Relevant date of a prior document: According to Section 2 (1) (w) of the Act, “priority
date” has the meaning assigned to it by Section 11. In determining novelty, a priordocument should be read as it would have been read by a person skilled in the art on
the relevant date of the document. An invention will be patentable only if it is new inthe light of prior art, or is not anticipated by prior art. The prior art includes all
information and knowledge relating to the invention, which is available in any
publication before the date of priority of the patent application. For the purpose of
examination, an invention will not be new; if it forms part of the prior art or hasentered in public domain. For anticipation, such publication must be before the dateof priority of the claim under consideration. Also, any application for patent filed inIndia, but published after the date of filing of a subsequent application for patentin India claiming the same subject-matter shall be treated as a prior art (i.e. priorclaiming) to the said subsequent application provided that the previous application has
earlier priority date. The prior art document must be enabling i.e. there should be aclear and unmistakable direction for the invention in the prior art.

7.4

Implicit disclosure: The lack of novelty must normally be clearly apparent from theexplicit teaching of the prior art. However, since the prior art is read through the eyesof the person skilled in the art, the implicit features of a document may also be taken
into account for determining novelty. Thus, if the person skilled in the art would read a
disclosure as including a particular feature without it being specifically mentioned, itwould be considered an implicit feature of that disclosure and lack of novelty may be
implicit in the sense that, in carrying out the teaching of the prior document, the skilled
person would inevitably arrive at a result falling within the terms of the claim.
Therefore, if the said prior art discloses the claimed subject-matter in such implicit
manner that it leaves no doubt in the mind of examiner as to the content of the priorart and the practical effect of its teaching, an objection regarding lack of novelty shouldbe raised.

7.5

Inherent anticipation: Sometimes the prior art may inherently disclose the subject
matter of an invention. In one case before the IPAB, it was held that “ patent isinvalid for anticipation if a single prior art reference discloses each and every
limitation of the claimed invention. The prior art reference may anticipate without
disclosing a feature of the claimed invention if that missing characteristic isnecessarily present, or inherent, in the single anticipating prior art. It is notnecessary that inherent anticipation requires that a person of ordinary skill in the art at
the time would have recognized the inherent disclosure. But it is necessary that theresult is a necessary consequence of what was deliberately intended in the invention” 3.

3[paragraph 58 of the decision of the IPAB in Enercon (India) Limited vs Aloys Wobben ORA/6/2009/PT/CH,ORDER (No. 18 of 2013)].

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7.6

Illustrative examples for determination of novelty
Example 1:
The claimed invention relates to a class of heterocyclic compounds of Formula I
which are used as mGluR1 enhancers. Prior art disclosed compounds with following
general formula II having similar biological properties.
Following substituents are selected from list of substituents disclosed in prior art toclaim compound of formula I;
R1 is hydrogen;
R2, R2’hydrogen or halogen (as R3 and R3’ of present invention);
X is O;
A1, A2 is phenyl;
B is 4,5-substitued oxazole

where R4 and R5(as R1 and R2 of present invention) is hydrogen or trifluoromethyl,with the proviso that at least one of R4 or R5 has to be hydrogen.
Present Invention

Prior Art

1. Compounds of generalformula

1. A compound of general formula

Formula II

Formula I
one of R1 and R2 signifies
trifluoromethyl, and theother one signifieshydrogen;
R3, R 3’ signify,
independently from eachother, hydrogen or
halogen;as well as pharmaceutically
acceptable salts thereof.

WhereinR1 signifies hydrogen or lower alkyl;
R2, R2’ signify, independently from each other,hydrogen, lower alkyl, lower alkoxy, halogen or
trifluoromethyl;X signifies O, S or two hydrogen atoms not forming abridge;A1, A2 signify, independently from eachother,phenyl or a 6-membered heterocycle

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B is a group of formulaR4 and R5 signifies hydrogen, lower alkyl, lower
alkoxy, cyclohexyl, lower alkyl¬ -cyclohexyl or
trifluoromethyl, with the proviso that at least one of
R4 or R5 has to be hydrogen; as well as theirpharmaceutically acceptable salts.
R4 and R5 signifies hydrogen, lower alkyl, lower
alkoxy, cyclohexyl, lower alkyl¬ -cyclohexyl or
trifluoromethyl, with the proviso that at least one of
R4 or R5 has to be hydrogen; as well as theirpharmaceutically acceptable salts.
Analysis: It may be noted that the compound of the present invention as well asprior art compound is represented by Markush formulae. It is to be checked from theprior art, whether compounds disclosed specifically in the prior art are of such
structure so that they can unambiguously take away the novelty of the compound(s)in question. If the compounds of prior art disclosed specifically do not take away thenovelty of the compounds in question, then the generic disclosure in the prior art
may still be cited for the purpose of inventive step.
Example 2:
The invention relates to the fumarate salt of (2S)-1-{[1,1-Dimethyl-3-(4-(pyridin-3yl))-imidazol-1-yl)-propylamino]-acetyl}-pyrrolidine-2-carbonitrile useful for thetreatment of diabetes mellitus, having the structure
N

N

N
N

HN

N
O

Prior art specifically discloses methanesulfonic acid salt of (2S)-1-{[1,1-Dimethyl-3(4-pyridin-3-yl-imidazol-1-yl)-propylamino]-acetyl}-pyrrolidine-2-carbonitrile.
Further, it discloses "many pharmaceutically acceptable salts" of the said compoundand also mentions many salt forming acids, among which fumaric acid was

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mentioned as one of the pharmaceutically acceptable salt forming acid. However, it
does not specifically disclose the fumaric acid salt.
Analysis: The subject-matter of the claimed invention claiming fumaric acid salt of acompound(2S)-1-{[1,1-Dimethyl-3-(4-pyridin-3-yl-imidazol-1-yl)-propylamino]acetyl}-pyrrolidine-2-carbonitrile, the implicit disclosure of prior art anticipates thenovelty of claimed subject-matter.
7.7

Combination/Composition Claims
Quite often, the claims of combination of pharmaceutical products escape thequestion of novelty and are dealt under the inventive step or relevant clauses ofSection 3 of the Act. However, sometimes it may happen that the combination has
already fallen in the public domain and hence, should be dealt under novelty also.

7.8

Illustrative Examples for determination of novelty for combination/composition
claims:Example 1:
Claimed invention relates to a composition for enhancing corneal healing said
composition comprising vitamin A and a sterile buffer administered to the eye.
Prior art discloses the use of the eye-drops to rewet contact lenses, wherein said eyedrops comprising Vitamin A , the sterile buffer and other exciepients.
Analysis: The claim lacks novelty, as being anticipated by the said prior art, which
discloses all the features of claimed composition useful for enhancing corneal healing.
Thus, the claimed subject matter lacks novelty.
Example 2:
Claim: A pharmaceutical formulation comprising a substantially clear aqueous solution
characterized in that it has a viscosity of less than 10 mPa.s and contains 3.5 to 5% w/v
of 1,3-bis(2-carboxychromon-5-yloxy)-propan-2-ol, or a pharmaceutically acceptablesalt thereof as active ingredient, glycerol, and ions of metals of groups IA, IB, IIB andIVB of the periodic table or transition metals having the concentration of the ions lessthan 20 ppm.
The prior art (D1) describes a pharmaceutical formulation comprising an aqueous
solution containing 2% w/v of 1,3-bis(2-carboxychromon-5-yloxy)-propan-2-ol sodium
salt (sodium cromoglycate) as active ingredient and glycerol and method of preparing
the same. Further, D1 indicates that the concentration of sodium cromoglycate may
be from 0.1% w/v to 10% w/v and that it is preferred that the concentration of sodium
cromoglycate be less than 5% w/v.
D1 does not mention expressis verbis that this pharmaceutical formulation is a
substantially clear aqueous solution which has a viscosity of less than 10 mPa.s andthat the concentration in the formulation of ions of metals of groups IA, IB, IIB and IVB

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Guidelines For Examination Of Patent Applications In The Field Of Pharmaceuticalsof the periodic table or of transition metals is less than 20 ppm. However, thesefeatures were not distinguishing features over D1. There was a clear-cut similarity ofthe method of preparation of the pharmaceutical formulation according to application
under question with that of D1, there was no reason to expect a different viscosity ora different metal content in the two formulations. Accordingly, the question waswhether the range of 3.5 w/v to 5% w/v of sodium cromoglycate, could be regarded as
novel over the disclosure of D1. D1 indicates that the concentration of sodium
cromoglycate may be from 0.1% w/v to 10% w/v and that it is preferred that theconcentration of sodium cromoglycate be less than 5% w/v.
Analysis: The skilled person will inevitably read the value of 5% w/v for theconcentration of sodium cromoglycate. Accordingly, the claimed range of 3.5% w/v to
5% w/v is anticipated.
7.9

Product-by-process claims:
A claim to a product obtained or produced by a process is anticipated by any priordisclosure of that particular product per se, regardless of its method of production. In
a product-by-process claim, by using only process terms, the applicant seeks rights to
a product, not a process. The IPAB held in ORDER No. 200/2012 “…….product-byprocess claims must also define a novel and unobvious product, and that its
patentability cannot depend on the novelty and unobviousness of the process
limitations alone. Therefore, the patentability of a product by process claim is basedon the product itself if it does not depend on the method of production. In otherwords, if the product-by-process claim is the same as or obvious from a prior product,
the claim is un-patentable even if the prior art product was made by a different
process. Accordingly the product by process claim must define a novel and unobvious product and the patentability in such claim cannot depend on the novelty andun-obviousness of the process limitation alone” 4.
Therefore, in product-by-process claims, the applicant has to show that the productdefined in process terms, is not anticipated or rendered obvious by any prior art
product. In other words the product must qualify for novelty and inventive step
irrespective of the novelty or inventive step of the process.

4

The Research Foundation Of State University Of New York Vs Assistant Controller Of Patents[OA/11/2009/PT/DEL (ORDER No. 200/2012)]

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7.10 Illustrative Examples for determination of novelty for Product-by-process claims:
Example 1:
The patent application relates to “Ceramic based nanoparticles for entrapping
therapeutic agents for photodynamic therapy and method of using the same”. The
specification disclosed, in one embodiment, that the invention provided a method forthe synthesis of photosensitizer dye/drug doped silica-based nanoparticles (diameter~30 nm), by controlled alkaline hydrolysis of a ceramic material [such as
triethoxyvinylsilane (VTES)] in micellar media and in another embodiment, thephotosensitive drug/dye used was 2-devinyl-2-(1-hexyloxyethyl) pyropheophorbide(HPPH), an effective photosensitizer.
Claims 1 to 6 were for method of preparing ceramic nanoparticles loaded with drugs
and claims 7 to 13 being composition claims.
Claims 1 and 7 are reproduced below:1. A method of preparing ceramic nanoparticles loaded with one or more
photosensitive drugs comprising the steps of:a) preparing micelles entrapping the photosensitive drugs;b) adding alkoxyorganosilane to the micelles to form complexes of silica andthe micelles;c) subjecting the complexes of silica and micelles to alkaline hydrolysis toprecipitate silica nanoparticles in which the photosensitive drug, molecules
are entrapped; andd) isolating the precipitated nanoparticles by dialysis
7.
A composition comprising ceramic nanoparticles in which one or more
photosensitive drugs are entrapped by a method comprising; the steps of:a) preparing micelles entrapping the photosensitive drugs;b) adding alkoxyorganosilane to the micelles to form complexes of silica and themicelles ;c) subjecting the complexes of silica and micelles to alkaline hydrolysis toprecipitate silica nanoparticles in which the photosensitive drug, molecules are
entrapped; andd) isolating the precipitated nanoparticles by dialysis
Prior art (D1) is directed to use of photoluminescent nanoparticles for photodynamic
therapy to address the problem of application of light of a suitable wavelength to a
photodynamic drug (PDT). The solution suggested in D1 was the use of Light-Emitting
nanoparticles to be administered in addition to PDT in order to activate the drug. It istaught that the Light Emitting Nanoparticles absorb light from the light source and reOffice of the Controller General of Patents, Designs and Trademarks

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emit lights at a different wavelength, which is suitable to activate the PDT drug in thevicinity of Light Emitting Nanoparticles. Thus, the role of nanoparticles is to absorb thelight from a light source and re-emit the light of different wavelength to activate the
PDT drug.
To achieve this purpose, firstly, a PDT drug is to be administered;
thereupon nanoparticles are administered and thereafter light source become active.
The time gap between administration of PDT drug and administration of nanoparticles
has been highlighted in the specification. The Controller refused the application on the
ground of lacking in novelty.
Analysis of IPAB: IPAB found that D1 did not teach or formally suggested a method ofsynthesizing ceramic based nanoparticles entrapped with photosensitive drugs where
the method involve steps restricted in claim 1. Thus, the method claims could beallowed. However, regarding the product-by- process claims, the IPAB was of theopinion that in the present case the PDT drug is same but only the carriers aredifferent. Difference between prior art composition and claimed composition is in theuse of non-bio-gradable carrier. In the prior art, the carrier is polyacrylamide nondegradable nanoparticles but in the claimed invention the carrier is ceramic based,
which is also non-bio-degradable. The composition claimed has known constituentsand beyond understanding to have any enhanced effect. The composition claims wererefused by the IPAB.
Example 2:
Claim: Compound C obtained by a process X
Prior art (D1) teaches the same compound C with same characteristics. However, in D1
the compound C was prepared by process Y.
Analysis:
As the compound C is already identified in D1, it lacks novelty despite the fact that it has
been prepared by a different method.

8.

ASSESSMENT OF INVENTIVE STEP:
8.1

An invention should possess an inventive step in order to be eligible for patent
protection. As per the section 2(1)(j)(a) of Patents Act, an invention will have inventive
step if the invention is (a) technically advanced as compared to existing knowledge or(b) having economic significance or (c) both, and that makes the invention not obvious
to a person skilled in the art. Further, the Manual of Patent Office Practice &Procedure has set out the guidelines for assessment of Inventive Step of inventions(Chapter 8, Para 08.03.03).

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8.2

The invention that creates the product must have a feature that involves technicaladvance as compared to the existing knowledge or having economic significance orboth and this feature should be such as to make the invention not obvious to a person
skilled in the art 5.

8.3

Prior art for determining inventive step constitutes any “state of knowledge existing
before the priority date of the claim under consideration.” In other words, inventive
step is determined vis-à-vis any matter published in any document anywhere in theworld or any use before the priority date of the claim. Unlike the novelty, mosaicing
of prior art documents is permissible in the context of inventive step.

8.4

In the case of Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries ( AIR1982 SC 1444), Hon’ble Supreme Court observed on inventive step as :“The expression "does not involve any inventive step" used in Section 26(1) (a) of the
Act and its equivalent word "obvious", have acquired special significance in theterminology of Patent Law. The 'obviousness' has to be strictly and objectively
judged. For this determination several forms of the question have been suggested.
The one suggested by Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite. It is:"Whether the alleged discovery lies so much out of the Track of what was known
before as not naturally to suggest itself to a person thinking on the subject, it mustnot be the obvious or natural suggestion of what was previously known (AIR 1982 SC
1444)”paragraph no.25.
“Whether an alleged invention involves novelty and an 'inventive step', is a mixed
question of law and fact, depending largely on the circumstances of the case.
Although no absolute test uniformly applicable in all circumstances can be devised,certain broad criteria can be indicated. Whether the "manner of manufacture"patented, was publicly known, used and practised in the country before or at the dateof the patent ? If the answer to this question is 'yes', it will negative novelty or 'subject
matter'. Prior public knowledge of the alleged invention which would disqualify the
grant of a patent can be by word of mouth or by publication through books or othermedia. "If the public once becomes possessed of an invention", says Hindmarch on
Patents (quoted with approval by Fry L. J. in Humpherson v. Syer, "by any means
whatsoever, no subsequent patent for it can be granted either to the true or firstinventor himself or any other person; for the public cannot be deprived of the right touse the invention........ the public already possessing everything that he could give(AIR 1982 SC 1444)”Paragraph 24.

5

SC in Novartis vs Union of India, SUPREME COURT OF INDIA Civil Appeal Nos. 2706-2716 of 2013 (Arising out
of SLP (C) Nos. 20539-20549 of 2009)paragraph 89

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8.5 “Another test of whether a document is a publication which would
negative existence of novelty or an "inventive step" is suggested, as under: "Hadthe document been placed in the hands of a competent craftsman (or engineer as
distinguished from a mere artisan), endowed with the common general knowledge at
the 'priority date', who was faced with the problem solved by the patentee but
without knowledge of the patented invention, would he have said, "this gives me
what I want?" (Encyclopaedia Britannica; ibid paragraph 26). To put it in another form:"Was it for practical purposes obvious to a skilled worker, in the field concerned, inthe state of knowledge existing at the date of the patent to be found in the literaturethen available to him, that he would or should make the invention the subject of theclaim concerned ?" [Halsbury, 3rd Edn, Vol. 29, p. 42 referred to by Vimadalal J. of
Bombay High Court in Farbwrke Hoechst & B. Corporation v. Unichem
Laboratories](AIR 1969 BOM 255)”( AIR 1982 SC 1444) paragraph 26.
8.6 Skilled person: The meaning of a person skilled in the art is extremely important in thecontext of inventive step analysis. This hypothetical person is presumed to know all
the prior arts as on that date, even non-patent prior art available to public. He has
knowledge of the technical advancement as on that date, and the skill to perform
experiments with the knowledge of state of the art6. He is not a dullard and has
certain modicum of creativity7. The IPAB has made a distinction between the person
skilled in the art (the obviousness person) and the person who has average skill(enablement man)8.
IPAB, further clarified in Enercon vs alloys Wobbens (order no.123/2013, paragraph30) “We do not intend to visualize a person who has super skills, but we do notthink we should make this person skilled in the art to be incapable of carrying out
anything but basic instructions”. Choosing a better alternative/substitute from the
known alternative from the prior art to obtain the known results would not go beyond
what may be normally expected from person skilled in the art.
8.7

Hindsight analysis: The 'obviousness' has to be strictly and objectively judged9. To
judge obviousness objectively, the skilled person needs to eliminate the hindsightanalysis. The prior art needs to be judged on the date of priority of the applicationand not at a later date.

6

Please see decision of IPAB in Fresenius Kabi Oncology Limited vs Glaxo Group Limited, ORA/22/2011/PT/KOL
AND M.P. NO.140/2012 IN ORA/22/2011/PT/KOL, ORDER (No.161 of 2013) [Paragraph 52], quoting therein
IPAB Order No.128 of 2013 in ORA/08/2009/PT/CH AND Miscellaneous Petition Nos. 7/2010, 31/2010,
51/2011, 86/2012, 142/2012 & 143/2012 in ORA/08/2009/PT/CH Enercon (India) Limited vs. Aloys Wobben,
on the basis of Judgment of Delhi High Court in F. Hoffmann-La Roche Ltd, vs Cipla Ltd, CS (OS) No.89/2008 andC.C. 52/2008,
7
IPAB in In Sankalp Rehabilitation Trust vs Hoffman–Roche [OA/8/2009/PT/CH) Oder No. 250/2012]8
in Enercon, vs Aloys Wobben, [ORA/08/2009/PT/CH] (Order No. 123 of 2013) [Paragraph 30]
9Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries, op.cit
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8.8

10

Reasonable expectation of success: With respect to what is obvious, it must beborne in mind that “the mere existence in the prior arts, of each of the elements in theinvention, will not ipso facto mean obviousness For after all most inventions are builtwith prior known puzzle-pieces. There must be a coherent thread leading from theprior arts to the invention, the tracing of the thread must be an act which follows
obviously”. This “coherent thread leading from the prior art to the obviousness” or inother words, “the reasonable expectation of success embedded in the prior art which
motivates the skilled person to reach to the invention, is the most crucial determining
factor in ascertaining inventive step”. Obviousness cannot be avoided simply byshowing of some degree of unpredictability in the art so long as there w a s areasonable probability of success 11. Obviousness d o e s n o t r e q u i r e absolute
predictability of success. All that is required is a reasonable expectation of success12.
In the matter of pharmaceutical inventions structural and functional similarity of the
product provides this motivation to combine the teachings of the prior arts. A
surprising effect, synergistic outcome of the combinations, prior art prejudice e t c .
usually demonstrates t h e non-obvious nature of the invention. However, it isreiterated that choosing a better alternative/substitute from the known alternativefrom the prior art to obtain the known results would not go beyond what may benormally expected from person skilled in the art. Thus, when the solution is from alimited number of identified predictable solutions, which is obvious to try, even thedemonstration of surprising effects etc. do not provide any answer to the obviousness.

8.9

Method for objectively analysing the inventive step:a) Identify the inventive concept of the claim in questionb) Identify the "person skilled in the art",c) Identify the relevant common general knowledge of the person skilled in
the art at the priority date;d)Identify what, if any, differences exist between the matter cited as
forming part of the "state of the art" and the inventive concept of theclaim;e) Viewed without any knowledge of the alleged invention as claimed, do
those differences constitute steps which would have been obvious to
the person skilled in the art or do they require any degree of inventive
ingenuity?
10

IPAB in Enercon vs Aloys Wobben [ORA/08/2009/PT/CH,Oder No. 123 of 2013] [Paragraph 43]
IPAB in M/s. BECTON DICKINSON AND COMPANY vs CONTROLLER OF PATENTS & DESIGNS,[OA/7/2008/PT/DEL) [280-2012], [Paragraph 32]

1112

IPAB in Ajanta Pharma Limited vs Allergan Inc., ORA/20/2011/PT/KOL, ORDER (No.172 of 2013) [Paragraph 93]

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8.10 Illustrative examples for assessment of inventive step:
Example 1:
Invention: Compound represented by the formula Py-B3, in which Py stands for a
specific pyrazolone skeleton and B stands for ethyl. The compounds of the invention
possess analgesic properties.
Prior Art: Closest prior art describes Py-B3, wherein B stands for methyl. The
compound of the prior art was not known to possess any therapeutic activity.
Analysis:
Step 1: identifying the inventive concept embodied in the patent: the inventive
concept is Py-B3, B stands for ethyl; where the compounds of invention possess
analgesic properties
Step 2: Imputing to a person of ordinary skill having ordinary creativity what wascommon general knowledge in the art at the priority date:This test requires two activities, namely, identifying the skilled person and thecommon general knowledge.
Skilled person: In this case the skilled person is a medicinal chemist or may be acomposite team of an organic chemist and a pharmacologist.
Common general knowledge: The skilled person has a thorough knowledge of thestate of the art related to the organic chemistry of pyrazolones and also a thoroughknowledge of the state of the art of the compounds or classes of compounds having
analgesic activity. The knowledge must be of the date of the priority of the patentapplication in question, and not later than that. That is, the person must not consider
any document published subsequent to the date of priority.
Step 3: Identifying the differences if any between the matter cited and the alleged
invention; the difference between the prior art and the invention is the replacementof three methyl substituents at the annular positions and the pharmaceutical activityof the resultant compound.
Step 4: Deciding whether those differences, viewed without any knowledge of thealleged invention constituted steps which would have been obvious to the skilled
man or whether they required any degree of invention: (or whether there wasreasonable expectation of success or coherent thread leading from the prior art)
The prior art compound, although structurally very close, does not provide any clue tothe skilled person that the resultant compounds with a very nominal change would be
successful as a pharmaceutical product. Changing from methyl to ethyl would havebeen obvious to the skilled person but the said change would not suggest achieving
any pharmacological property of the modified compound. In other words there was nocoherent thread leading from the prior art to arrive to the invention. Alternatively, it
may be said that there was no prior art motivation.
Conclusion: The invention is therefore non-obvious.
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Example 2Invention: Selective COX-II inhibitor NSAIDs represented by the formula Hy-X. Hy
represents a complex heterocyclic structure, whereas X represents substituents.
Background: Cyclooxygenase I and II play vital roles in pharmacological activities of
NSAIDS. Early NSAIDS are known to cause gastric irritations and life threatening ulcers.
Selective COX II inhibitors, developed later, are shown to inhibit gastric secretions andthereby proved to be a better choice as NSAID. The object of the invention is toprovide a class of COX II inhibitors.

Q stands for S and O
Prior Art: D1 teaches compounds with following structures:

D2 teaches compounds with following structures:

Both the compounds of D1 and D2 are non-steroidal anti-inflammatory drugs and havedisadvantage of gastric acid secretions. D2 is known to display higher level of gastricacid secretion as compared to D1.
Analysis:
Step 1: Identifying the inventive concept embodied in the patent: the inventive
concept is the replacement of an annular C atom in the left hand aromatic ring withthe resultant finding of a class of selective COX II inhibitor with analgesic properties.
Step 2: Imputing to a person of ordinary skill having ordinary creativity what wascommon general knowledge in the art at the priority date:

Skilled person: In this case the skilled person is a medicinal chemist or may be acomposite team of an organic chemist and a pharmacologist.
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Common general knowledge: The skilled person has a thorough knowledge of thestate of the art related to the organic chemistry of heterocyclic compounds and also athorough knowledge of the state of the art of the compounds or classes of compounds
having analgesic activity. The knowledge must be of the date of the priority of thepatent application in question, and not later than that. That is, the person must notconsider any document published subsequent to the date of priority.
Step 3: Identifying the differences if any between the matter cited and the alleged
invention; the difference between the prior art and the invention is the replacementof C atom at the annular position as said above and the pharmaceutical activity of theresultant compound.
Step 4: deciding whether those differences, viewed without any knowledge of thealleged invention constituted steps which would have been obvious to the skilled
man or whether they required any degree of invention: (or whether there wasreasonable expectation of success or coherent thread leading from the prior art)
In the instant case, the invention required two successive changes in the annular
positions if viewed from D1. However, after reaching to D2 and after finding that theresultant compound does not display any selective COX II inhibiting properties, theskilled person would not feel motivated to make any further change in D2 to reach tothe compound of the present invention. In other language the prior art teaches awayfrom the invention.
Conclusion: The invention is therefore non-obvious.
Example 3Invention: Besylate salt of a compound A (A-B) with blood pressure lowering
properties.
Background: Conversion of A-M to A-B significantly improves the processability in the
manufacturing of the drug, and improves its stability, while the pharmacologicalproperty of A-B remains same as that of A-M.
Prior Art:
D1: The closest prior art D1 teaches Maleate (A-M) salt of compound A having same
physiological properties.
D2: D2 shows a list of 53 pharmacologically acceptable anions as salt forming
candidates from the list of drug approval authorities. However, the most commonlyused anion is hydrochloride, whereas besylate is used for 0.25% of the approved
drugs. Other than hydrochloride, which was used in approximately 43% of approved
drugs, almost all other salts could be categorized as “seldom used.” 40 out of 53
anions were used in less than 1% of drugs and 23 out of 53 were used in 0.25% or lessof drugs.

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D3: Prior art D3 shows that besylate salts impart excellent stability and otherproperties.
Analysis:
Step 1: Identifying the inventive concept embodied in the patent: besylate salt of acompound A with better processability.
Step 2: Imputing to a person of ordinary skill having ordinary creativity what wascommon general knowledge in the art at the priority date:
Skilled person and common general knowledge: the skilled person is either a
medicinal chemist or a composite team comprising a medicinal chemist and apharmacologist. The skilled person has a common general knowledge, has a thoroughunderstanding of processability of drugs. He is capable of undertaking experiments
within a limited area and is capable of choosing a better alternative/substitute fromthe known alternative from the prior art to obtain the known results. He is aware ofboth D1 , D2 and D3.
Step 3: Identifying the differences if any between the matter cited and the alleged
invention; the difference is the replacement of maleate anion with besylate anion as
salt forming agent.
Step 4: deciding whether those differences, viewed without any knowledge of thealleged invention constituted steps which would have been obvious to the skilled
man or whether they required any degree of invention: In the present case, theperson skilled in the art had to try from a list of 53 anions. He would not have been
dissuaded by the fact that besylate is used for 0.25% of the approved drugs as he had
knowledge that other anions were also used rarely. Rather D3 would have motivated
him to undertake the trials from within this set of 53 anions particularly keeping inview the better properties of the besylate salts. Considering that the besylate salts
would have been obvious to try and having reasonable expectation of success hewould go for such alterations.
Conclusion: The invention is therefore obvious.
The inventive step in the subsequent examples has been analysed by following thesteps as prescribed above.
Example 4:
The claimed invention relates to a process for the preparation of Compound C bytreating Compound A and Compound B in the presence of platinum catalyst. All thefeatures of the invention are disclosed in the prior art except the platinum as acatalyst explicitly, but it was mentioned as noble metal catalysts.
Analysis: Prior art generically disclosed platinum as noble element which is also an
equivalent element used in the art for similar purposes and obvious to the skilled
person. Therefore, it is application of known feature in the prior art into claimed
invention in an obvious way.
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Example 5:
The claimed invention relates to monoester of a known diol compound for treating
cancer diseases using amino acids selected from lysine, valine, leucine and the like, as
an esterifying agent. Due to poor oral bioavailability, the diol was unable to use asoral delivery system. To improve the oral bioavailability one of the hydroxyl group in
the diol was converted into a monoester using said amino acids.
Prior art disclosed monoalcohol with similar structure having poor oral bioavailability
was converted into an ester using amino acids selected from lysine, valine, leucine andthe like, as an esterifying agent, which exhibit improved oral bioavailability in thetreatment of cancer diseases. Amino acid used in the prior art as well as in theclaimed invention is lysine.
Prior Art

Claimed Invention

R-CH2-OH

HO –CH2-R-CH2-OH

R-CH2-OR’

HO –CH2-R-CH2-OR’

R’ is lysine, valine, leucine and the like

R’ is lysine, valine, leucine and the like

Analysis: Object of the claimed invention was to provide a solution to overcome thepoor oral bioavailability of diol, when administered as oral delivery system. One of thealcohol groups in the diol was converted into ester using lysine for improving the oral
bioavailability of the diol.
Prior art addressed poor oral bioavailability for substantially similar structure ofmonoalcohol. The problem was solved by converting the monoalcohol into ester using
lysine as an esterifying agent. Therefore a person skilled in the art can be motivatedwith teachings of the prior art to use the amino acid for improving the oral
bioavailability by converting diol into monoester ester of diol to solve similar kind ofproblem. Therefore there is no technical advancement involved in the claimed
invention.
Example 6:
A pharmaceutical composition comprising first active agent in an amount from about
2 mg to about 4 mg corresponding to a daily dosage and second active agent in an
amount from about 0.01 mg to about 0.05 mg corresponding to a daily dosage
together with one or more pharmaceutically acceptable carriers or excipients. The
composition consists of a number of separately packaged and individually removabledaily dosage units placed in a packaging unit and intended for oral administration for aperiod of at least 21 consecutive days.
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The first active agent present in the composition is in micronized form or sprayed froma solution onto particles of an inert carrier.
D1: The first and second active agents together with combination of those agents are
known in the art. D2: Micronisation for poorly soluble similar drugs is also known in
the art for improved drug delivery.
Analysis: Micronized form of first active agent is novel aspect in the present
composition. Dose and dosage regimen of first and second active agents incombination and micronisation for poorly soluble similar type of drugs are known in
the art. Therefore, it is obvious to a person skilled in the art to convert poorly soluble
active ingredient into micronized form for improved drug delivery. Further, changing
the particle size is mere modification in the physical form of the active agent for
improved and anticipated effect and therefore the claimed invention is obvious.

9.

Industrial applicabilitys
9.1

As per Section 2(1)(ac) of the Act, the expression “capable of industrial application”, inrelation to an invention, means that the invention is capable of being made or used in
an industry”. Further, Section 64 (1) (g) of the Act provides that a patent is liable to be
revoked if the invention is not useful. To be patentable an invention must be usefuland capable of industrial application. The specification should disclose the usefulness
and industrial applicability of an invention in a distinct and credible manner unless theusefulness and industrial applicability of the invention is already established, either in
explicit or in implicit manner. The patent specification must disclose a practicalapplication and industrial use for the claimed invention wherein a concrete benefit
must be derivable directly from the description coupled with common generalknowledge. Mere speculative use or vague and speculative indication of possible
objective will not suffice.

9.2

Illustrative examples for industrial applicability:
Example 1:
Invention: Synthetic analogues of a steroid. The steroids possess certain medicinal
properties. However, the compounds of the invention, as asserted, are subjects ofserious investigation, being the analogue of compounds known for medicinal
properties.
Analysis: The claimed compounds are not patentable as they lack any credible andspecific utility. A mere scientific interest does not make something eligible forpatentability.
Example 2:Invention: The application comprises three sets of claims:
1. A compound of formula A
2. A compound of formula B

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3. A process of making A and B, wherein, C and D are reacted at m to n
degree centigrade, in an aprotic solvent Y, the said aprotic solvent being
selected from a, b, c, d, e and subsequently distilled and purified toisolate A from B
The specification describes the use of compound of formula A as having certain
pharmaceutical applications. However, the specification does not disclose any use of
the compound of formula B.
Analysis: Claim 2 is not allowable in so far that the compound is not shown topossess any utility. Just because it is a by-product of a reaction for the preparationof the compound of formula A, does not make it a patentable subject matter.
10.

Inventions not patentable:
10.1

Section 3 (b): Inventions contrary to morality or which cause serious prejudice tohuman, animal or plant life or health or environment are not patentable. Any
invention, the primary or intended use or commercial exploitation of which is against
the public order or morality or is capable of causing serious damage to the human,
animal or plant life or cause damage to the environment or public health is notallowable under this section. Since an invention is a reward to the owner of an
invention in the form of monopoly, such rewards are not justified from the public
policy angle, if they are prejudicial to the public interest.

10.2 Section 3(c): Scientific principles or abstract theory or discovery of living things or nonliving substances are not patentable inventions. Section 3 (c) of the Act, excludes themere discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substance occurring in nature from thescope of patentability. Compounds which are isolated from nature are not patentablesubject-matter. However, processes of isolation of these compounds can beconsidered subject to requirements of Section 2 (1) (j) of the Act.
10.3 Illustrative examples for section 3(c):Example 1:
Claim: A compound for cardiac disorder related activity, wherein the compound is
obtained from the cerebrospinal fluid of horseshoe crab, Tachypleusgigas.
Analysis: The subject-matter is not patentable under Section 3 (c) of the Act, because
the application attempts to claim a compound, which is isolated from cerebrospinal
fluid of embryos of horseshoe crab, Tachypleusgigas(i.e. a compound which is nonliving substance occurring in nature). As per Section 3 (c) of the Act, a non-living
substance occurring in nature is statutorily non-patentable subject-matter.

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Example 2:Invention: An extract of Calotrophis gigantea containing cardiac glycosides having
antineoplastic effect, which exhibit in vitro cytotoxic activity on human carcinoma cellline without exhibiting cytotoxicity on a normal human cell line, wherein the extract iseffective against human lung carcinoma cell line A549 and human colon
adenocarcinoma cell line COL0205 without showing cytotoxicity on a normal humancell line W138.
Analysis: The claimed extract of C. gigantea containing cardiac glycosidesis statutorily
excluded from patentability under Section 3 (c) of the Act, as being directed to a
discovery of non-living substance occurring in nature.
10.4 Section 3(d) : The mere discovery of a new form of a known substance which does not
result in the enhancement of the known efficacy of that substance or the mere
discovery of any new property or new use for a known substance or of the mere useof a known process, machine or apparatus is not a patentable invention unless suchknown process results in a new product or employs at least one new reactant.
Explanation:- For the purposes of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance shall be considered to be thesame substance, unless they differ significantly in properties with regard to efficacy.
10.5 In the context of the pharmaceutical inventions, Section 3(d) deserves special
attention. Section 3(d) stipulates that an incremental invention, based upon an
already known substance, having established medicinal activity shall be deemed to betreated as a same substance, and shall fall foul of patentability, if the invention inquestion fails to demonstrate significantly improved therapeutic efficacy with respect
to that known compound. After analysing the legislative history of Section 3(d), theHon’ble Supreme Court commented, “We have, therefore, no doubt that theamendment/addition made in section 3(d) is meant especially to deal with chemical
substances, and more particularly pharmaceutical products. The amended portion ofsection 3(d) clearly sets up a second tier of qualifying standards for chemical
substances/pharmaceutical products in order to leave the door open for true andgenuine inventions but, at the same time, to check any attempt at repetitive patenting
or extension of the patent term on spurious grounds” 13.

13

SC in Novartis AG Vs. Union of India (UOI) and Ors, op.cit, MANU/SC/0281/2013,Paragraph 103

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10.6 While interpreting what is “efficacy”, the Hon’ble Supreme Court in the Novartis caseheld that in the context of the pharmaceutical patenting the “efficacy” should beunderstood as “therapeutic efficacy”. 14 In Paragraph 180 of the order it was held:
What is “efficacy”? Efficacy means “the ability to produce a desired or intended result”.
Hence, the test of efficacy in the context of Section 3(d) would be different, depending
upon the result the product under consideration is desired or intended to produce. In
other words, the test of efficacy would depend upon the function, utility or the
purpose of the product under consideration. Therefore, in the case of a medicine thatclaims to cure a disease, the test of efficacy can only be “therapeutic efficacy”. ………It
may be noted that the text added to Section 3(d) by the 2005 amendment lays down
the condition of “enhancement of the known efficacy”. Further, the explanation
requires the derivative of “differ significantly in properties with regard to efficacy”.
What is evident, therefore, is that not all advantageous or beneficial properties are
relevant, but only such properties that directly relate to efficacy, which in case of
medicine, as seen above, is its therapeutic efficacy. While dealing with the
explanation as provided in Section 3(d) it must also be kept in mind that each of
the different forms mentioned in the explanation have some properties inherent tothat form, e.g., solubility to a salt and hygroscopicity to a polymorph. These forms,
unless they differ significantly in property with regard to “therapeutic efficacy”, areexpressly excluded from patentability. Hence, the mere change of form withproperties inherent to that form would not qualify as "enhancement of efficacy" of aknown substance. In other words, the explanation is meant to indicate what is not tobe considered as therapeutic efficacy 15.

14“Efficacy means “the ability to produce a desired or intended result”. Hence, the test of efficacy in the context of section
3(d) would bedifferent, depending upon the result the product under consideration is desired or intended to produce. In
other words, the test of efficacy would depend upon the function, utility or the purpose of the product under consideration.
Therefore, in the case of a medicine that claims to cure a disease, the test of efficacy can only be “therapeutic
efficacy”.[ibid, Paragraph 180]
15
Ibid, paragraph 181

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10.7 Also, the Supreme Court explained what would mean a “new product” in the context
of Section 3(d): “…………the new product in chemicals and especially pharmaceuticals
may not necessarily mean something altogether new or completely unfamiliar or
strange or not existing before. It may mean something “different from a recent
previous” or “one regarded as better than what went before” or “in addition toanother or others of the same kind”. However, in case of chemicals and especiallypharmaceuticals if the product for which patent protection is claimed is a new form ofa known substance with known efficacy, then the subject product must pass, inaddition to clauses (j) and (ja) of section 2(1), the test of enhanced efficacy asprovided in section 3(d) read with its explanation” 16.
10.8 According to the Supreme Court, whether or not an increase in bioavailability leads toan enhancement of therapeutic efficacy in any given case must be specifically claimed
and established by research data 17.
“The position that emerges is that just increased bioavailability alone may notnecessarily lead to an enhancement of therapeutic efficacy. Whether or not an increasein bioavailability leads to an enhancement of therapeutic efficacy in any given casemust be specifically claimed and established by research data. In this case, there isabsolutely nothing on this score apart from the adroit submissions of the counsel. No
material has been offered to indicate that the beta crystalline form of Imatinib
Mesylate will produce an enhanced or superior efficacy (therapeutic) on molecularbasis than what could be achieved with Imatinib free base in vivo animal model. Thus,in whichever way section 3(d) may be viewed, whether as setting up the standards of“patentability” or as an extension of the definition of “invention”, it must be held thaton the basis of the materials brought before this Court, the subject product, that is, thebeta crystalline form of Imatinib Mesylate, fails the test of section 3(d), too, of the Act”.
10.9 However, it is important to note that Supreme Court has clarified further that the testof Section 3(d) of the Act does not bar patent protection for all incremental inventionsof chemical and pharmaceutical substances18.
Para 191 of the Judgment mentions “We have held that the subject product, the beta
crystalline form of Imatinib Mesylate, does not qualify the test of Section 3(d) of the
Act but that is not to say that Section 3(d) bars patent protection for all incremental
inventions of chemical and pharmaceutical substances. It will be a grave mistake toread this judgment to mean that section 3(d) was amended with the intent to undo thefundamental change brought in the patent regime by deletion of section 5 from the
Parent Act. That is not said in this judgment”.

16

Ibid, paragraph 192

17

ibid[Paragraph 189]

18“We have held that the subject product, ……does not qualify the test of Section 3(d) of the Act but that is not to say that

Section 3(d)bars patent protection for all incremental inventions of chemical and pharmaceutical substances. It will be a grave
mistake to read this judgment to mean that section 3(d) was amended with the intent to undo the fundamental changebrought in the patent regime by deletion of section 5 from the Parent Act. That is not said in this judgment”. [ibid, Paragraph191].

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10.10 The term “combination” as appearing in Section 3(d) has been explained by IPAB as“The combination mentioned in the Explanation can only mean a combination of two
or more of the derivatives mentioned in the Explanation or combination of one ormore of the derivatives with the known substance which may result in a significant
difference with regard to the efficacy” 19.
10.11 Illustrative examples for section 3(d):Example 1:
The invention relates to a β-crystalline form of methanesulfonic acid addition salt of
imatinib and processes for the preparation thereof. The application was filed with thetitle: Crystal Modification of A N-phenyl-2-pyrimidineamine Derivative, Processes for
Its Manufacture And Its Use. The substance claimed was a medicine for the treatmentof chronic myeloid leukemia (CML).
The specification asserts that the claimed β-form has (i) more beneficial flow
properties: (ii) better thermodynamic stability; and (iii) lower hygroscopicity than thealpha crystal form of Imatinib Mesylate. No experimental data related to efficacy isprovided in the specification for β-crystalline form imatinib mesylate or imatinib
mesylate.
Claims: A form of the methanesulfonic acid addition salt of a compound of formula
comprising crystals of the β-modification.

A number of pre-grant oppositions were filed. The application for patent was refused
under Section 25(1) on the ground that the invention was•

anticipated by US Patent no: 5521184 (Zimmerman Patent, disclosing Imatinib andsalts ), "Nature Medicine' of May 1996, and the Patent term extension certificate forthe 1993 patent issued by the USPTO which specifically mentions imatinib mesylate
as the product;•

obvious vis-à-vis US 5521184•

not allowable u/s 3(d): Applicant fails to prove enhanced efficacy (thirty percent
bioavailability was held not meeting the requirement of “therapeutic efficacy”).

19

Ajantha Pharma Limited Vs Allergan Inc. and Others,ORA/21/2011/PT/KOL of Order no. 173 of 2013, Paragraph 84

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Decision of Supreme Court: After several rounds of litigations in different forums, thematter reached before the Supreme Court.
It was argued on behalf of the appellant that
There is certainly no mention of polymorphism or crystalline structure in theZimmermann patent. The relevant crystalline form of the salt that was synthesizedneeded to be invented. There was no way of predicting that the beta crystalline formof Imatinib Mesylate would possess the characteristics that would make it orally
administrable to humans without going through the inventive steps.
It was further argued that the Zimmermann patent only described, at most, how to
prepare Imatinib free base, and that this free base would have anti-tumour
properties with respect to the BCR ABLkinase.
Thus, arriving at the beta-crystalline form of Imatinib Mesylate for a viable treatmentof Chronic Myeloid Leukemia required further invention – not one but two, startingfrom Imatinib in free base form, (formation of mesylate and then beeta crystalline
thereof).
The Court mainly focussed its analysis on(1) whether imatinib mesylate was already known, and then(2) if it is a known substance, it must meet the criteria of enhanced efficacy as in
Section 3(d).
The Court after analysing the documents held that, “Imatinib Mesylate is all there in
the Zimmermann patent. It is a known substance from the Zimmermann patent” 20.
After finding that Imatinib Mesylate is a known substance from the Zimmermann
patent itself……its pharmacological properties are also known in the Zimmermann
patent and in the article published in the Cancer Research journal (Cancer Research,
January 1996) 21. “The subject product , that is beta crystalline form of Imatinib
Mesylate, is thus clearly a new form of a known substance, i.e., Imatinib Mesylate, of
which the efficacy was well known. It, therefore, fully attracts section 3(d) and must
be shown to satisfy the substantive provision and the explanation appended to it” 22.
“It is noted, in the earlier part of judgment, that the patent application submitted by
the appellant contains a clear and unambiguous averment that all the therapeutic
qualities of beta crystalline form of Imatinib Mesylate are also possessed by Imatinibin free base…..”[Paragraph 162]“..the appellant was obliged to show the enhanced efficacy of the beta crystalline
form of Imatinib Mesylate over Imatinib Mesylate (non-crystalline).There is, however,no material in the subject application or in the supporting affidavits to make any
comparison of efficacy, or even solubility, between the beta crystalline form of
Imatinib Mesylate and Imatinib Mesylate” (non-crystalline). [Paragraph 171]20
Ibid, [paragraph 131]
21ibid, [paragraph 157].
22ibid[Paragraph 161]

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On the question of bio-availability the Court held that“…….the position that emerges
is that just increased bioavailability alone may not necessarily lead to an
enhancement of therapeutic efficacy. Whether or not increase in bioavailability leads
to an enhancement of therapeutic efficacy in any given case must be specificallyclaimed and established by research dataIn this case, there is absolutely nothing on
this score apart from the adroit submissions of the counsel. No material has beenoffered to indicate that the beta crystalline form of Imatinib Mesylate will produce anenhanced or superior efficacy (therapeutic) on molecular basis than what could beachieved with Imatinib free base in vivo animal model” 23.
The Court, therefore rejected the appeal.
Example 2 :In yet another case, No.162 of 2013 in Fresenius Kabi Oncology Limited vs . Glaxo
Group Limited, the IPAB determined the issue of Section 3(d).
Claimed compound: A quinazoline derivative having anticancer activity.
Prior Arts: two prior arts were cited by opponent. The respondent admitted theprior arts, but argued that the compound as claimed was a new chemical entity.
Decision of IPAB24: While rejecting the argument of Section 3(d) IPAB held that “It istrue that it is the patentee who must prove the enhanced therapeutic efficacy of his
invention.
But in a revocation the applicant must plead and prove that it is hit by S.3(d) andthat it has the same therapeutic efficacy as the known substance. Then the
respondent will counter it either by proving that it is not a derivative of a known
substance or by proving that though it is only a new form of a known substance hehas shown that it has enhanced therapeutic efficacy. In the present case, there areno such pleadings. It is not enough to plead that because Ex1 and 2 are admitted
prior arts, this is only a new form of those compounds. That is vague. It is only when
the pleadings show how the invention is one kind of a derivative of known substancethe patentee will have to explain how the grant of patent is justified because of theenhancement of therapeutic efficacy. In this case the pleadings are not adequate.
We hold that the S.3(d) ground has not been proved”.

23
24

Ibid [Paragraph 189].

Fresenius Kabi Oncology Limited vs . Glaxo Group Limited ORA/17/2012/PT/KOL, Order No.162 of 2013, paragraph 56.

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10.12 Section 3 (e): Mere Admixture Resulting only in Aggregation of The Properties Or A
Method Of Making Such Mere Admixture
10.13 It is a well-accepted principle of Patent Law that mere placing side by side of oldintegers so that each performs its own proper function independently of any of theothers is not a patentable combination, but that where the old integers when placed
together has some working interrelation producing a new or improved result, thenthere is patentable subject matter in the idea of the working inter relations brought
about by the collocation of the integers.
10.14 In Ram Pratap v Bhaba Atomic Research Centre (1976) IPLR 28 at 35, it was held that amere juxtaposition of features already known before the priority date which havebeen arbitrarily chosen from among a number of different combinations which could
be chosen was not a patentable invention.
10.15 Section 3(e) of the Act reflects the legislative intent on the law of patenting of
combination inventions in the field of chemical as well as biotechnological sciences.
10.16 Claims related to compositions obtained by mere admixture resulting in aggregationof the properties of the individual components are not patentable under section 3(e)of Act. However, in a composition if the functional interaction between the features
achieves a combined technical effect which is greater than the sum of the technicaleffects of the individual features, it indicates that such a composition is more than amere aggregation of the features.
10.17 : Illustrative examples for section 3( e):Example 1:
Claim: A composition of Paracetamol (Antipyretic) and Ibubrufen (analgesic)] tocontrol pain and inflammation.
Analysis: The compounds used in the alleged invention are known for their activity.
The application is silent on a combinative effect of these two compounds over thesum of their individual effects. Thus, the claimed subject-matter is non-patentable
under Section 3 (e) of the Act.
Example 2:Invention : A pharmaceutical composition exhibiting anti-phlogistic, antipyretic andanalgesic activity and high gastro-enteric tolerance in unit doses form whichcontained imidazole salicylate as the active ingredient in the amount of 100-600 mg
and an inert carrier was claimed .
The active compound imidazole salicylate and carriers are known in the art. Thus theclaimed composition is merely an aggregation of the ingredients involved, wherein the
carrier is not playing any role in enhancing the activity of imidazole salicylate.

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10.18 Section 3 (i): Method Of Treatment
10.19 According to Section 3 (i) of the Act, any process for the medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic or other treatment of human beings or any
process for a similar treatment of animals to render them free of disease or toincrease their economic value or that of their products is not an invention. Under thissection, the Manual of Patent Office Practice & Procedure states that the followings
are excluded from patentability:(a) Medicinal methods: As for example, a process of administering medicines orally,or through injectables, or topically or through a dermal patch;(b) Surgical methods: As for example, a stitch-free incision for cataract removal;(c) Curative methods: As for example, a method of cleaning plaque from teeth;(d) Prophylactic methods: As for example, a method of vaccination;(e) Diagnostic methods: Diagnosis is the identification of the nature of a medical
illness, usually by investigating its history and symptoms and by applying tests.
Determination of the general physical state of an individual (e.g. a fitness test) is
considered to be diagnostic;(f) Therapeutic methods: The term “therapy’’ includes prevention as well as
treatment or cure of disease. Therefore, the process relating to therapy may beconsidered as a method of treatment and as such not patentable;(g) Any method of treatment of animal to render them free of disease or to increase
their economic value or that of their products. As for example, a method of treating
sheep for increasing wool yield or a method of artificially inducing the body mass ofpoultry;(h) Further examples of subject matters excluded under this provision are: any
operation on the body, which requires the skill and knowledge of a surgeon andincludes treatments such as cosmetic treatment, the termination of pregnancy,
castration, sterilization, artificial insemination, embryo transplants, treatments forexperimental and research purposes and the removal of organs, skin or bonemarrow from a living donor, any therapy or diagnosis practiced on the human or
animal body and further includes methods of abortion, induction of labour, controlof estrus or menstrual regulation;(i) Application of substances to the body for purely cosmetic purposes is nottherapy;(j) Patent may however be obtained for surgical, therapeutic or diagnostic
instrument or apparatus. Also the manufacture of prostheses or artificial limbs andtaking measurements thereof on the human body are patentable.
10.20 In the field of pharmaceuticals, it is noticed that method of treatments are often
claimed in the guise of composition claims. Sometimes, such claims are converted to
product claims during examination procedure. Such amendments shall be examined as

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per Section 57 read with section 59 of the Act.
10.21 ILLUSTRATIVE EXAMPLE:
Claim 1: A method of treating cancer in a subject, the said method comprisingadministering simultaneously or sequentially a combination of Gemcitabine and P27600 or the combination of Gemcitabine and P1446A, wherein the said cancer isselected from a group comprising of pancreatic cancer, lung cancer, colorectal
carcinoma and head and neck cancer.
Analysis: The claimed subject-matter falls within the scope of statutorily nonpatentable inventions under Section 3 (i) of the Act, as being directed to a method oftreatment of human beings or animals.
10.22 Section 3(j) and 3(p): To avoid unnecessary repetition, relevant sections of the“GUIDELINES FOR EXAMINATION OF BIOTECHNOLOGY APPLICATIONS” and“GUIDELINES FOR PROCESSING OF PATENT APPLICATIONS RELATING TO TRADITIONALKNOWLEDGE AND BIOLOGICAL MATERIAL” are hereby incorporated by reference.
10.23 According to Section 3(j), plants or animals including its parts like seeds etc. are notpatentable subject matter. The only exception to this rule is micro-organisms. Fromthe conjoint reading of Section 3(c) and 3(j), the micro-organisms,which occur innature are not patentable subject matter. Accordingly, only genetically modified
micro-organisms qualify for patentability. In the GUIDELINES FOR EXAMINATION OF
BIOTECHNOLOGY APPLICATIONS FOR PATENT, Section 3(j) has been discussed withspecific examples. According to Section 3(p) of the Act, an invention which, in effect,
is a traditional knowledge or which is an aggregation or duplication of known
properties of traditionally known component or components is not a patentablesubject matter. “GUIDELINES FOR PROCESSING OF PATENT APPLICATIONS RELATINGTO TRADITIONAL KNOWLEDGE AND BIOLOGICAL MATERIAL” already issued by the
Office discusses in details, the manner in which cases related to traditional knowledge
may be handled. However, in the following, an example related to Section 3(p) is
given:
10.24 Illustrative Example for Section 3(p):Claim: A method of treating an inflammatory bowel disease (IBD) in a subject in need
thereof, comprising administering to the subject an effective amount of an extract ofAndrographis paniculata, wherein said extract contains andrographolide, 14-deoxyandrographolide,
14-deoxy-11,
12-dehydrogen-andrographolideandneoandrographolide.
Analysis: The claimed subject-matter falls within the scope of statutorily nonpatentable inventions under Section 3 (p) of the Act, as being directed a traditional
knowledge in effect. This is clearly evident from an article published in the Journal of
Natural Medicine (Kakrani et al., “Traditional treatment of gastro-intestinal tract
disorders in Kutch District, Gujarat State, India”, Journal of Natural Medicine, Vol.
2/1(2002), pages 71-75). The cited article describes traditionally known treatments ofgastro-intestinal tract disorders in Kutch district of Gujarat. In this article, 41 species of
37 genera belonging to 22 families are reported along with plant parts used for the
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medicinal treatments, including Andrographis paniculata and its medical indication.
Thus, the claimed subject-matter, in effect, is traditional knowledge and nonpatentable under Section 3 (p).
10.25 Illustrative Example for Section 3(j):Claim 1: A pharmaceutical composition comprising an antigen-presenting cell that
expresses a polypeptide comprising at least an immunogenic portion of a breast
tumor protein, or a variant thereof in combination with a pharmaceutically acceptable
carrier or excipient, wherein the antigen presenting cell is a dendritic cell or amacrophage.

Analysis: Although claim 1 is directed to a pharmaceutical composition, it should beobjected under Section 3 (j) of the Act, since the composition essentially contain an
antigen-presenting cell as an active ingredient and carriers or excipients are obvious
features with the cell while in the composition.

11.

Sufficiency of description, clarity and support of the claims:
11.1 According to Section 10 (4) (a) and (b) of the Act, the complete specification shall fully
and particularly describe the invention and its operation or use and the method bywhich it is to be performed and it should also disclose the best method of performing
the invention which is known to the applicant and for which he is entitled to claim
protection. As per Section 10(c), every complete specification should end with a claim
or a set of claims defining the scope of invention. Section 10(5) prescribes that theclaims should be clear, succinct and fairly based on the description. Also, the claims
must relate to a group of inventions linked so as to form a single inventive concept.
For convenience, unity of invention has been discussed below, under separate head.
11.2 Sufficiency of disclosure with respect to biological material and deposits: If theinvention relates to a biological material which is not possible to be described in a
sufficient manner and which is not available to the public, the application shall becompleted by depositing the material to an International Depository Authority (IDA)
under the Budapest Treaty. The deposit of the material shall be made not later thanthe date of filing of the application in India and a reference of the deposit shall begiven in the specification within three months from the date of filing of the patentapplication in India. All the available characteristics of the material required for it to becorrectly identified or indicated are to be included in the specification including thename, address of the depository institute and the date and number of the deposit.
11.3

In Para 17 of “GUIDELINES FOR PROCESSING OF PATENT APPLICATIONS RELATING TO
TRADITIONAL KNOWLEDGE AND BIOLOGICAL MATERIAL”, it is directed that “if the source
and geographical origin of the biological material used in the invention is not disclosed in
the specification, an objection shall be raised thereof in conformity with section 10 (4) (a)& (b) of the Patents Act.” Therefore, the same is incorporated herein by reference andalso, applicable in the present guidelines. Thus, while accessing the sufficiency of

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disclosure, non-disclosure of the source and geographical origin of the biological materials
used in the invention would be treated as insufficiency of disclosure as per therequirement of Section 10 (4) (ii) (D) of the Act. Nevertheless, in Para 20 of above said
guidelines, it also directed that “On the other hand, if the declaration in Form-1 regarding
the use of biological material from India is cancelled out by the applicant and thespecification also states that the source and geographical origin of the biological material
is not from India, the specification should be amended by way of incorporation of aseparate heading/paragraph at the beginning of the description that the biologicalmaterial used in the invention is not from India and should clearly specify the country ofsource and geographical origin of the same.” Therefore, while processing the patentapplication in which the above declaration is cancelled out by the Applicant, as directed,
necessary amendment shall be sought for. If the invention relates to abiological material which is not possible to be described in a sufficient manner andwhich is not available to the public, the application shall be completed by depositing
the material to an International Depository Authority (IDA) under the Budapest Treaty.
The deposit of the material shall be made not later than the date of filing of theapplication in India and a reference of the deposit shall be given in the specification
within three months from the date of filing of the patent application in India. All theavailable characteristics of the material required for it to be correctly identified orindicated are to be included in the specification including the name, address of thedepository institute and the date and number of the deposit.

11.4 When claims seek to protect things that are not identified by the applicant at the timeof filing the application, but that may be identified in the future by carrying out theapplicant’s process, such claims are not patentable on the ground of insufficiency ofdescription “e.g., claiming many compounds without proper support in the examples
The complete specification must describe “an embodiment” of the invention claimedin each of the claims and the description must be sufficient to enable those in theindustry concerned to carry it into effect without their making further inventions andthe description must be fair, i.e. it must not be unnecessarily difficult to follow”. 25
11.5 Sufficient disclosure of the invention in the patent specification is the consideration
for which a patent is granted. While assessing the sufficiency of disclosure, it must be
ensured that the best method for performing the invention k no w n to t hea p p l i c a n t is described so that the whole subject-matter that is claimed in theclaims, and not only a part of it, must be capable of being carried out by a skilled
person in the relevant art without the burden of an undue amount of experimentation
or application of inventive ingenuity.

25

Raj Praksh v Mangatram Chowdhury (AIR 1978 Del 1 at 9) following Farbewerke Hoechst Aktiengesellschaft Vormals Meister
Lucius & Bruning a Corporation etc. Vs. Unichem Laboratories and Ors”.(AIR1969Bom255)

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11.6 It may be noted that the IPAB has distinguished the person skilled in the art involvedin assessing “Inventive step” and “Enablement”. In one case (please see the discussion
under Inventive Step) the IPAB observed: The Act makes a distinction between the
person skilled in the art (the obviousness person) and the person who has average skill(enablement man)” 26 .In the opinion of the IPAB, in the context of enablement, theperson to whom the complete specifications are addressed is a person “who hasaverage skill and average knowledge.” The description in the specification should
contain at least one example or more than one example, covering the full breadth of
the invention as claimed, which enable(s) the person skilled in the art to carry out theinvention. If the invention is related to product per se, description shall be supportedwith examples for all the compounds claimed or at least all the genus of thecompounds claimed. Method for preparation and experimental data relating toproperties of representatives of each embodiments claimed shall be incorporated in
the description, which enable a person having ordinary skilled in the art can make useof the invention without undue burden.
11.7

Non-technical terms, like trademarks etc. should be discouraged and the applicant
should be asked to replace them with equivalent technical terms.

11.8 The relevant date for complying with the requirement for sufficiency is the date ofcomplete specification. In other words, a complete specification should provide
enough information to allow a person skilled in the art to carry out substantially allthat which falls within the ambit of what is claimed. Specific and substantial use of theinvention along with any test conducted and results obtained for such an effect shallbe disclosed at that time of filing. In case, application claimed substance, composition
or combination, detailed report pertaining to the test, such as in vitro or in vivo,
conducted and experimental results with inference of such a test shall be provided in
the description. Test parameters, choice of testing method, mode of drug delivery,
results obtained with explanation and inference shall be provided. If more than one
genus or pharmacological use claimed in an application, relevant test for the best
representatives of such genus and their pharmacological use shall be incorporated in
the description.
11.9 It is not necessary to describe in the claims to a specification, processes by which a
new chemical compound is discovered, when they are part of the common knowledge
available to those skilled in the science who can, after reading them, refer to thetechnical literature on the subject for the purpose of carrying them into effect 27.
26

Enercon, vs Aloys Wobben ORDER No. 123 of 2013. “….In fact it is clear that in the context of enablement, the person towhom the complete specifications are addressed is a person “who has average skill and average knowledge.” Neither ofthese attributes has been assigned by the Act to the person to whom the invention should be non-obvious. We are notcalled upon in this case to decide the person who is enabled. We are only pointing out to the difference in the words usedin the Act. We do not intend to visualize a person who has super skills, but we do not think we should make this person
skilled in the art to be incapable of carrying out anything but basic instructions. The Act makes a distinction between the
person skilled in the art (the obviousness person) and the person who has average skill (enablement man)”. [Paragraph 30].
27
Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning a Corporation etc. vs Unichem Laboratories and Ors,
AIR1969Bom255, (1974)76BOMLR130

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11.10 While examining the claims with respect to clarity and support as required under
section 10 (5) of the Act, due consideration should be given to the provisions ofsection 10 (4) (a) and (b) as these requirements are complementary to each other.
11.11 Clarity and support of claims: As mentioned in connection with the type of claims, it
was mentioned that in the pharmaceutical applications, claims are often filed as “Useof…”. Such wordings in the claims are not permissible in that a claim should relate
either to a product or to a process.
11.12 A claim may be lacking in support, if it is not fairly based on the description.
Claims may be drafted in non-definitive terms and the scope of claim is often
unreasonably broader than the description and enablement of the specification. Claims
may embrace non-definitive terms like “comprising”, “including”, etc. to indicate
certain components of the invention. Similarly terms like “near to”, “approximately”
may lead to confusion about the scope of the invention. Such terms or any otherterms , should be closely examined vis-à-vis the support in the description and thescope of protection sought for ensuring the definitiveness of the claims.
11.13 Functional claims, i.e. claims where the substances are defined in terms of their
physiological properties/results to be achieved, should be discouraged, as such claims
not only lead to confusion regarding the scope of the invention, all most all the times,
they are much wider in scope and are inconsistent with descriptions.
11.14 In pharmaceutical patenting, the claims are often drafted in terms of Markush
formula. Special care should be given to search and examine such claims. Claims with
Markush formulas may cover innumerable compounds and may be overbroad, thus
leading to conclusion of inconsistency between description and claims. Also, suchformulas can lead to the question of plurality of distinct inventions. Compounds
represented by different alternatives should have a technical interrelation ship.
11.15 Where a single claim defines alternatives of a Markush group, the requirement of atechnical interrelationship is considered met when the alternatives are of a similar
nature. When the Markush grouping is for alternatives of chemical compounds, thealternatives are regarded as being of a similar nature where the following criteria are
fulfilled:(A) all alternatives have a common property or activity; AND(B)(1) a common structure is present, that is, a significant structural element is sharedby all of the alternatives; OR(B)(2) in cases where the common structure cannot be the unifying criteria, allalternatives belong to a recognized class of chemical compounds in the art to which
the invention pertains.
The claims of a specification may be said to be linked with a single inventive concept, if
they are co-related to reach other by a common thread. For example, the specification
may contain a claim for (1) a drug (2) intermediates (3) process of making thecompound of claim (1) and (2). However, the intermediates shall be allowed provided
they are new and non-obvious and the specification does not disclose any other use of
the said intermediates.
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11.16 Illustrative examples for sufficiency of disclosure and support:
Example 1:
The alleged invention claims a compound of the following formula

Wherein, R1 is selected from phenyl, pyridyl, thiazolyl, thioalkyl, alkoxyl and methyl; R2R4 are methyl, tolyl or phenyl, pyridyl… the compounds are used as a pharmaceutical forincreasing the oxygen intaking capability of blood.
Description: the specification embraces innumerable compounds covering formula as
above. The examples however are restricted to the limitation that R1 is always phenyl,
e.g. :
R1

R2

R3

R4

phenyltolyl

PhenylMethylphenyltolyl

PyridylTolylphenylpyridyl

MethylTolyl

In all examples, the definition of R1 is restricted to Phenyl. The claim is much broader
than what has been described and enabled and is therefore lacking in support. It may be
noted that sufficiency and support are two different criteria and serve two distinct
purposes, despite that they are supplemental to each other. In the example given, theexaminer can raise a question of sufficiency also.
Example 2:
An H2 receptor antagonist of formula I
Formula I is depicted as A-Z.
A comprises substituted imidazoles and Z comprises substituted benzimidazoles.
At the first place, the term ‘Comprises’ or ‘substituted’ are open ended terms and there
remains every likelihood that the majority of the compounds claimed would not serve
the purpose of the alleged invention. As in above, the examples are limited to only few
substituents and do not enable (which is not possible also) other classes of substituents.
An objection of insufficiency and support may be raised against such claims anddescriptions.

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Example 3:Invention: Discloses a compound of formula 1 having insecticidal property.
G
4

O
G
2

N

G
3
G
7

N
G
5

G
6

G
1

G1 represents oxygen or sulphur,G2 represents oxygen, amino, aminoformyl or aminoacetyl,G3 represents hydrogen, amino, hydroxyl or represents C1-C6-alkyl, CrC6-alkenyl, C2- C6alkynyl or C3-C6-cycloalkyl,
G4 independently of one another represent C1-C6-alkyl, C2-C6-alkenyl, C2-C6-alkynyl, C3C6-cycloalkyl,
n represents 0 to 4,
G5 represents hydrogen, halogen, cyano, nitro, C1-C4-alkyl, C1-C4-haloalkyl, C2-C6alkenyl, CrC6-haloalkenyl, C2-C6-alkynyl, C1-C4-alkoxy, C1-C4-haloalkoxy,
G6 represents C1-C6-alkyl, C3-C6-cycloalkyl, C1-C6-haloalkyl, C1-C6-halocycloalkyl, C2C6-alkenyl, C2-C6-haloalkenyl, C2-C6-alkynyl, C2-C6-haloalkynyl, C1-C4-alkoxy,
G7 represents a 5- or 6-membered heteroaromatic ring optionally mono- or
polysubstituted
The specification and working examples provides support only for compound of
formula I-1 and process for preparing the same.
G4

O
N

G2
CH3

G3

X
N

N
G5

G6

O

Figure I-1

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Where
G1 of Formula I is oxygen
G2 is oxygen, amino, G3 for hydrogen,n of Formula I is 0,
G4 is absent
G5 is hydrogen, Cl, Br and I
G6 CH3 or Cl
Nitro or C3-c6- Trialkylsilylethynylated is available.
G7 for a pyrazole - or Pyrrole

R6 is chloropyridine
R7 is Cl, Br or CF3
R8 is H
Although the applicant claims that the compound has insecticidal property the claimed
activity has not been demonstrated.
Claim:
An insecticidal compound of formula 1

WhereinG1 represents oxygen or sulphur,G2 represents oxygen, amino, aminoformyl or aminoacetyl,G3 represents hydrogen, amino, hydroxyl or represents C1-C6-alkyl, CrC6-alkenyl,
C2-C6-alkynyl or C3-C6-cycloalkyl,
G4 independently of one another represent C1-C6-alkyl, C2-C6-alkenyl, C2-C6alkynyl, C3-C6-cycloalkyl,
n represents 0 to 4,
G5 represents hydrogen, halogen, cyano, nitro, C1-C4-alkyl, C1-C4-haloalkyl, C2-C6alkenyl, CrC6-haloalkenyl, C2-C6-alkynyl, C1-C4-alkoxy, C1-C4-haloalkoxy,
G6 represents C1-C6-alkyl, C3-C6-cycloalkyl, C1-C6-haloalkyl, C1-C6-halocycloalkyl,
C2-C6-alkenyl, C2-C6-haloalkenyl, C2-C6-alkynyl, C2-C6-haloalkynyl, C1-C4-alkoxy,
G7 represents a 5- or 6-membered heteroaromatic ring optionally mono- or
polysubstituted.
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Analysis:
In the present case the disclosure in the description is not considered sufficient for
the entire scope of the subject matter claimed specifically where G1 represents
sulphur.
Even though the description sufficiently discloses the compounds where G1
represents oxygen there is a lack of evidence demonstrating the use (insecticidal) of
the claimed compound.
Hence can be objected under section 10(4)(a).
As compounds where G1 represents sulphur and the process for preparing the same
are not disclosed the specification is not considered enabled for the entire scope ofthe claims and can be objected under section 10(4)(b).
Example 4:
Description: The invention relates to a the compound represented by generalformula I. and a pharmaceutical composition comprising the compound represented
by the formula (I) a salt thereof, a solvate thereof, or a prodrug thereof; in
combination with other drugs. Compound represented by general formula I is usefulin the treatment of cancer.

R and R’ are selected from Mono, di, tri, poly substituted aromatic, heteroaromatic,
cyclic, acyclic, polycyclic groups.
The working examples provides support only for the following compounds andprocess for preparing them along with the assay to show anti cancer activity.
3,6-Bis-(ethyl)-[1,2,4,5]tetroxane
3,6-Bis-(methyl propyl)-[1,2,4,5]tetroxane
3,6-Bis-(tert-butyl-methyl)-[1,2,4,5]tetroxane
3-(Methoxy-methyl)-6-methyl-[1,2,4,5]tetroxane
Claim:
Compound of formula I

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R and R’ are substituted acyclic/aromatic/heteroaromatic/cyclic/ polycyclic groups
Analysis: The complete specification must describe each embodiment of theinvention claimed and the description must be sufficient to enable a person skilled in
the art to carry out substantially all that which falls within the ambit of what isclaimed without undue experimentation.
There is no support for compounds where R and R’ are Mono, di, tri, poly
substituted aromatic, heteroaromatic, cyclic or polycyclic groups. To preparecompounds where R and R’ are Mono, di, tri, poly substituted aromatic,.
Heteroaromatic, cyclic or polycyclic groups and to find the claimed biological activity
involves undue experimentation.
Hence the subject matter of claim 1 where R and R’ are Mono, di, tri, poly
substituted aromatic, heteroaromatic, cyclic or polycyclic lacks groups lacks
support.

12.

UNITY OF INVENTION
12.1 T h e requirement of unity of invention is provides by the following provision in the
Patent Act and Manual of Patent Office Practice and Procedure. As referred above, theprovisions of section 10(5) of Patent Act 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.
12.2 The MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE, at 05.03.16 requiresthat there may be more than one independent claim in a single application if theclaims fall under a single inventive concept. In the Manual, it has been advised “While
there is no restriction as to the number of claims, including independent claims, it isadvisable to limit the number of claims, as well as the number of independent claims ina single application so that the claims are all of cognate character and are linked so as
to form a single inventive concept. If claims relate to a plurality of distinct inventions,
it may be objected on ground of lack of unity of invention”.
12.3 In other words when there is a group of inventions in a specification they should belinked by a single concept or there should be a technical relationship among theclaimed inventions, which makes the inventive contribution over the prior art. To fulfil
the requirement of unity of invention each claim of a complete specification shouldshare a single common technical relationship which is inventive. The single common
technical relationship which is inventive is called the “special technical feature”. This
determination should be done on the content of the claims supported by thedescription in the light of the prior art.
12.4

In the field pharmaceuticals patent applications m ay sometimes claim, huge
number of chemical compounds by Markush structures, chemical compounds asintermediate and final products, compositions comprising different chemicalcomponents, processes for their manufacture, their uses or applications, even devices

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or apparatus used for carrying out specific processes are usually claimed in a single
application. Sometimes it becomes complicated to handle search and examination ofsuch combinations of different categories of claims and variable dependency of claims.
Interpreting such claims whether claims claimed in the application relate to a single
invention or a group of inventions linked so as to form a single inventive concept orlack unity.
12.5 Illustrative example of a priori determination of unity of invention:
Example 1:
Claims1) An antibiotic of formula I for treatment of staphylococcal infection.
2) A steroid of formula A for treatment of staphylococcal infection.
3) A bioactive compound of formula X for treatment of staphylococcal infection.
Analysis: The subject-matter of claims 1-3 does not relate to a single invention, or toa group of inventions linked so as to form a single inventive concept as they relate to
structurally different products. As antibiotic of formula I, steroid of formula A andbioactive compound of formula X do not share any common structural feature,
which could serve as a unifying feature. Each of these claims has to be considered asa separate invention and said to lack unity a priori.
12.6 Illustrative Example of A Posteriori Determination Of Unity Of Invention:
Claims
1. A combination, comprising sulphonamide compound X and a taxane and its use intreatment of cancer.
2. A combination, comprising sulphonamide compound X and a vinca alkaloid
derivative or analogue thereof and its use in treatment of cancer
Prior art: Use of Sulphonamide compound X in treatment of cancer.
Analysis: Claims 1-2 contain the following inventions or group of inventions, which
are not so linked as to form a single general inventive concept as required u/s 10 (5)of the Patents Act.
Group 1: claim 1: A combination, comprising sulphonamide compound X and ataxaneGroup 2: claim 2: A combination, comprising sulphonamide compound X and a Vinca
alkaloid derivative or analogue thereof .They are not so linked as to form a single
general inventive concept in view of the following:
The special technical feature should be an essential structural part common to all of
the embodiments of the claimed invention (and responsible for the inventive effect),
and which is absent in the prior art that provide the same solution. Upon prior art
search, it is found that use of Sulphonamide compound X in treatment of cancer isalready known in the prior art. Taxane, and vinca alkaloid derivative are structurally
different from each other. The only common component is the sulphonamide
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compound X which is already known as an anticancer agent. Hence here it isconsiders that a common technical link in the above mentioned groups is notinventive. The above mentioned groups lack common feature which could be
regarded as the special technical feature providing unity to the application.
Consequently, the application may be objected for lacking unity a posteriori.

12.7 Combinations of Different Categories of Claims
Illustrative examples showing combinations of different categories of claims
Example 1:
Claim 1: A compound of formula I
Claim 2: A method of preparing the compound of formula I.
Claim 3: Compound of formula I for use as a fungicide.
Unity exists between claims 1, 2 and 3as the special technical feature is compound of
formula I.
Example 2
Claim 1: A process of manufacture of compound of formula I comprising steps A and
B.
Claim 2: Apparatus specifically designed for step A.
Claim 3: Apparatus specifically designed for step B.
Unity exists between claims 1 and 2 or between claims 1 and 3. Claims 2 and 3 lackunity since there exists no common special technical feature between the two claims.
Example 3
Claim 1: A compound of formula I
Claim 2: A process of manufacture of compound of formula I comprising step A.
Claim 2: Apparatus specifically designed for step A.
Unity exists between claims 1, 2 and 3 as the special technical feature is compound of
formula I. The process should essentially result in compound of formula I andcontribution over the prior art of the apparatus specifically designed for step A
should correspond to the inventive feature of the process of claim 2. However, if thecompound of formula I is known in the art, unity would be lacking because there
would not be a special technical feature common to all the claims.
12.8 Unity of invention in Markush claims
12.9 In Markush claims the unity of invention shall be considered to be met when thealternatives claimed are of a similar nature. The Markush group of alternative
chemical compounds, can be regarded as being of a similar nature is subjected to thefulfillment of the following conditions:
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Guidelines For Examination Of Patent Applications In The Field Of Pharmaceuticalsa)They have a common property or activity,b) All of the alternatives have a common structure, which is a significant structuralelement shared by all of the alternatives (it includes compounds that share acommon chemical structure which occupies a large portion of their structures, orcompounds that have in common only a small portion of their structures, whichconstitutes a structurally distinctive portion in view of the prior art, and is essential
to the common property or activity),
12.10 Illustrative example showing unity of invention in Markush claims
Example 1:
A compound A of formula:
R1-R2-R3
wherein R1 is indolyl moiety and R2-R3 are methyl, benzyl, or phenyl. The
compounds are useful as pharmaceutical for treatment of asthma.
In this case the compound A has a significant structural element that is shared by allof the alternatives and all the claimed compounds possess the same activity. Thus all
the claimed compounds possess unity.
Example 2
The claim relates compound
R1-R2-R3
Wherein R1 is a heterocyclic moiety comprising diverse molecular species and R2-R3
are methyl, benzyl, or phenyl. The molecular variations of R1 encompass huge numberof moieties which cannot be structurally linked and cannot be said to fall within single
inventive concept.
12.11 Unity of invention in Intermediate and Final Product12.12 The term "intermediate" includes intermediate and starting products which have theability to be used in a process to produce the final product through a physical orchemical change in which the identity of the intermediate is lost. The fulfilment of therequirement of unity of invention between intermediate and final product, is subjectedto the fulfilment of the following conditions:a) the intermediate and final product should have the same essential structuralelement, i.e. the basic chemical structure of the intermediate and the final product are
the same, or the chemical structure of the intermediate and final product aretechnically closely interrelated, with the intermediate incorporating an essential
structural element into the final product,andb) technically interrelated, also meaning that the final product is manufactured
directly from the intermediate or is separated from it by a small number ofintermediates all sharing the same essential structural element.
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12.13 Illustrative example for Unity of invention in Intermediate and Final Product
Example 1:
Claim 1: (intermediate)

Claim 2: (final product)

The chemical structures of the intermediate and final product are technically closelyinterrelated. The essential structural element incorporated into the final product is:

Therefore, unity exists between claims 1 and 2.
Illustrative example 2
Claim 1: I (final product)

Claim 2: II (intermediate)

Compound (II) is described as an intermediate to make (I). The closure mechanism is
one well known in the art. Though the basic structures of compound (I) (final
product) and compound (II) (intermediate) differ considerably, compound (II) is an
open ring precursor to compound (I). Both compounds share a common essential
structural element therefore considered to be technically closely interrelated.
This example therefore satisfies the requirement for unity of invention.

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12.14 To satisfy unity of invention between intermediate and final products when any one orboth the structures are not known, there should be sufficient evidence to conclude
that the intermediate and final products are technically closely interrelated such as
the intermediate contains the same essential element as the final product orincorporates an essential element into the final product.
12.15 Different intermediate products used in different processes for the preparation of the
final product, satisfy unity of invention provided that they have the same essential
structural element.
12.16 To satisfy unity of invention the intermediate and final products should not be
separated, in the process by an intermediate which is not new.
12.17 Different intermediates for different structural parts of the final product, do notsatisfy unity of invention.
12.18 To satisfy unity of invention where the intermediate and final products are families ofcompounds, each intermediate compound should correspond to a compound claimed
in the family of the final products.
12.19 Where unity of invention is recognized the fact that, the intermediates also exhibit
other properties or activities should not affect the unity of invention.
[End of document]

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