The Indian Patent Office (IPO) has passed an order on 3 September 2015 (Order) rejecting patent application no. 991/MUMNP/2003 (Patent Application) to Pfizer Products, Inc. (Pfizer) for rheumatoid arthritis drug ‘Tofacitinib’.

The IPO rejected the Patent Application on the basis of Section 3(d) of the Patents Act (Act). The IPO inter alia cited document WO0142246 (Cited Document) of Pfizer as the closest prior art, which was filed prior to the present application but was published after filing of the Patent Application. The Cited Document was also filed in India and proceeded to grant under patent no. IN241773. Pfizer contented that the Cited Document cannot be accepted for the purpose of assessing patentability as it was published after the priority date of the present Patent Application. The IPO found Pfizer’s contention unacceptable and stated that it was Pfizer’s duty to reveal the Cited Document filed by themselves, as the same could be considered to be a document for anticipation by prior claiming under Section 13(1)(b) of the Act.

The Intellectual Property Appellate Board (IPAB) in October last year had, on the ground of violation of principle of natural justice, set aside an order by the IPO rejecting Pfizer’s patent application and directed them to re-consider the application. Pfizer contended that the Controller had not raised an objection under Section 3(d) in the first examination report or in the hearing notice and stated that the objection was raised first time during the hearing and such non-communication of said objection caused grave prejudice as they were not in a position to respond to the objection.

Reports state that Pfizer is reviewing its options for further action which includes an appeal at the IPAB within 3 months of the date of the Order.

It will be interesting to see whether a document filed in pursuance of an application for a patent made in India and dated before or claiming priority earlier than the date of patent application in question can be considered while evaluating a patent application under Section 3(d).