By Devinder Singh Rawat

Indian patent application number 6000/DELNP/2007 claiming the compound Luseogliflozin, was opposed in a series of four pre-grant oppositions. The Controller of Patents has granted a patent on said application and has dismissed the four pre-grant oppositions vide order dated 19^th November 2020.

The application was opposed on the grounds of lack of inventive step, non-patentability under Section 3(d), insufficiency and non-compliance of Section 8 of the Patents Act.

On the ground of inventive step, the Controller held that the cited documents “… do not explicitly disclose the compound of the claimed invention. And it is not easy for a person skilled in the art to conceive of modifying the prior art O-glucoside compound to arrive at Luseogliflozin, the C-glucoside compound. The cited documents do not ascertain clear and definite directions to make the compound in the claimed invention.”

Holding that prior art documents should be read as a whole and not in isolation and that a person skilled in the art would not randomly select particular substituents on particular positions of prior art molecules, the Controller emphasized that “….. a compound’s chemical and pharmacological properties do not result solely from its core or from individual substituents, but rather from the entirety of the molecule and how all its component atoms interact. Thus, the biological activity of a compound is based on the structure of the molecule as a whole. (Merck vs Glenmark 2015).” On the ground of non-patentability under Section 3(d), recognizing that the claimed invention cannot be derived from any prior art compounds, the Controller held that the claims relate to a new chemical entity, Luseogliflozin and not to a mere discovery of a known substance.

Intellectual Property, Patent Prosecution, Luseogliflozin