A divisional application of Merck for a process for producing tiacumicins B granted

A divisional application (1146/KOLNP/2007) of Merck for a process for producing tiacumicins B was rejected as being not-maintainable by the Indian Patent Office (IPO). Said decision has now been reversed and a Patent granted.

The divisional application (1146/KOLNP/2007) claimed a process for producing tiacumicins comprising: culturing a microorganism in a nutrient medium to accumulate tiacumicin B in the nutrient medium; and isolating the tiacumicinvB from the nutrient medium, wherein the nutrient medium comprises 0.5% – 15% by weight of an adsorbing resin capable of adsorbing the tiacumicin B.

The controller refused the divisional as being not maintainable and made the following observations:-

  • the application (1146/KOLNP/2007) is a divisional application and is divided out of parent application 105/KOLNP/2005.
  • parent application was examined as per provisions of the Patents Act and First Examination Report (FER) was issued on 04/04/2006. The applicant submitted the reply to FER dated 04/04/2006 (with respect to parent application) on 20/03/2007 and filed the divisional application (1146/KOLNP/2007) on 03/04/2007. Subsequently a request of withdrawal of the parent application (105/KOLNP/2005) was filed on 04/04/2007
  • the original application 105/KOLNP/2005 was filed (in PCT as well as national phase) with 26 claims. claims (1-12) of parent application (105/KOLNP/2005) filed in response to first examination report, which was subsequently withdrawn are identical with claims (1-12) of present application (1146/KOLNP/2007) as filed. The amended claim-1 and dependent claims (filed on 20/03/2007) of the withdrawn parent application related to a process for producing tiacumicins comprises: culturing a microorganism in a nutrient medium to accumulate tiacumicin B in the nutrient medium; and isolating the tiacumicin B from the nutrient medium, wherein the nutrient medium comprises an adsorbent resin capable of adsorbing the tiacumicin B.

A writ was filed by the applicant before the Calcutta high Court. The Calcutta High Court held that the divisional application was made pursuant to an observation made by the Predecessor‐in‐office of the adjudicating authority examining the parent application and even if the divisional application was made voluntarily, then also, the same was a curable defect at best and that, the adjudicating authority ought to be have allowed the petitioner to take curative measures while considering the application for grant of patent. The Calcutta High Court quashed the order and asked the Patent office to reconsider the application for grant of patent. The Controller reviewed the case and allowed the application.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s