IPAB allows Bayer to appeal in oral contraceptive case

The Intellectual Property Appellate Board (IPAB) has issued an order allowing Bayer Schering Pharma AG to proceed with its appeal in the board against the patent office’s decision in 2010 to refuse patent for its oral contraceptive brand Yasmin/Yaz.

The order comes on a Condonation of Delay (COD) petition filed by Bayer Schering, placing reasons for its two months delay in preferring an appeal against the assistant controller of Patents & Designs’ refusal of patent.

Under COD, an appeal may be admitted even after the prescribed time limit if the appellant or the applicant can satisfy the court with sufficient cause for not making the appeal or application during the stipulated period.

The assistant controller for Patents & Designs had refused the patent on Dec 2, 2010, stating the claimed invention was not novel and did not involve an inventive step in view of the preceding observations.

India’s Cipla Ltd and Natco Pharma had objected to the COD petition of the German pharma company, arguing it had enough time to file the appeal with the IPAB after the patent was refused.

It may be noted that it was on the pre-grant opposition of these two firms, the patent office had refused the grant of patent for the contraceptive product.

The counsel for these companies argued that the evidence were very much available even before filing the appeal and there was no reason for taking much time. The counsel further stated the petitioner company filing an additional evidence to srengthen its case as a reason for the delay was unacceptable.

However, the IPAB bench comprising chairman Justice KN Basha and technical member (Patents) DPS Parmar, observed the appellant/petitioner (Bayer Schering Pharma) has assigned a valid reason and showed sufficient cause condoning the delay.

“In view of such a valid reason assigned by the appellant/petitioner (Bayer Schering Pharma), we were unable to countenance the contention of the learned counsel for the respondent (the two domestic pharma firms) that the petitioner has assigned the only reason of collecting the materials, for the delay,” said the bench.

Bayer Schering Pharma has filed a national phase application for patent for its invention titled ‘Pharmaceutical Combination of Ethinylestradiol and Drospirenone for use as a Contraceptive’.

According to information available, the generic version of the product with Cipla and Natco are named as Crisanta and Tarana, respectively.