High Court Ordered Re-Examination for Valcyte Patent

The Madras High Court has ordered the Chennai Patent Office to re-examine Indian Patent No. 207232 issued to Roche in June 2007 for antiviral drug Valcyte, generically known as Valgancyclovir. The decision delivered by a bench comprising Chief Justice A.K. Ganguly and Justice Ibrahim Kalifulla is in response of petition filed by the Indian Network of Positive People and the Tamil Nadu Network of People with HIV/AIDS against the Chennai Patent Office decision to grant patent for Valgancyclovir without been given an opportunity for hearing (read earlier post). Recently, Roche also filed a lawsuit against Cipla for alleged infringement of the ‘232 patent (read earlier post). There is considerable likelihood that the decision may impact ongoing case in the Mumbai High Court between Roche and Cipla, possibly going in favor of Cipla. Girish Telang, Managing Director of Roche Scientific India said that “the court wants the patent granted on Valgancyclovir to be re-examined before January 31, 2009.”

Earlier in July 2006, Indian Network of Positive People and the Tamil Nadu Network of People with HIV/AIDS filed a pre-grant opposition before the Chennai Patent Office against the grant of a patent to Roche for Valgancyclovir and requested hearing under section 25 (1) of the Patents Act, 1970. Under the Indian patent law, an opponent may also request a hearing during pre-grant opposition. Also the Indian patent law seems to give the Controller a discretionary power to consider or not to consider the pre-grant opposition but if pre-grant opposition once considered by the Controller then section 25 (1) mandatory obligate the Patent Office to hear the opponent, if requested.

The Patent Office considered the pre-grant opposition and sent to Roche and later received a reply from Roche. Satisfied that the objections raised by pre-grant opposition had been met by Roche, the Chennai Patent Office went ahead and granted the ‘232 patent without hearing to the opponent. In October 2008, the opponent filed a petition in the Madras High Court alleging violation of the mandatory requirements of the patent law.