Madras High Court Sets Aside Rejection of US Company's Patent For Pet Appetite Drug

The Madras High Court has set aside the Patent Office's rejection of Elanco US Inc.'s patent application for an oral pharmaceutical composition for treating chronic inappetence and chronic weight loss in companion animals and remanded the matter for fresh consideration.

Justice K. Kumaresh Babu observed that while the Controller's order concluded that the claimed invention was substantially the same as an earlier invention, the analysis in the same order recorded that the invention differed because the prior art did not provide safety data on the maximum dose of the drug for continued use and that the drug had no adverse clinical side effects on companion animals.

"In that regard, this Court is of the view that, having given such a reasoning, the rejection simpliciter that there is no inventive step is smacked by arbitrariness.", the court observed.

Elanco challenged the May 20, 2024 order of the Assistant Controller of Patents and Designs rejecting its patent application.

The court noted that the impugned order itself recorded that the invention "differs from the closest prior art document under D1, as the prior ones do not provide any safety data on the maximum dose of the drug for continued use."

It also recorded that the drug "has no adverse clinical side effects on the companion animals."

In light of those findings, the court held that "the rejection simpliciter that there is no inventive step is smacked by arbitrariness" and set aside the impugned order.

The court directed that the application be reconsidered by an officer other than the one who passed the impugned order to preclude any possibility of pre-determination.

It also directed that Elanco be given a reasonable opportunity of hearing and that a reasoned decision be issued within four months from the date of receipt of a copy of the order.