25 November 2008

Update: chapter 13 – opposition proceedings

13.66 In Enkay (India) Rubber Co Ltd’s Application/ Opposition by Paradise Rubber Industries [No 193339 (1342/DEL/1999)] order dated 17 May 2006, the Controller observed that the opponent had at every point of time requested for an adjournment and had adopted various ways to delay the proceedings and granted compensatory costs of Rs 32,000 for delay in the grant of patent caused by the opponent.

13.165 a Some amendments are made in response to the objections raised in the FER. In Eli Lilly’s Application/Opposition by Ajanta Pharma Ltd (No 85/DEL/1995), the patent application as originally filed had 16 claims. Eight years after filing the application, the applicant voluntarily added 44 additional claims to the application. The Patent Office raised certain objections in its FER: that the invention was not patentable under ss 2(1)(j), 3(d), 3(e) and 3(i) of the Patents Act; that product claims could not be allowed as the compound was invented prior to 1995 as the application was filed under WTO category. In response, Eli Lilly amended the application to reduce the number of claims to 28.