Sunday, September 30, 2012

Breaking News: Controller of Patents Revokes Patent on Sunitinib

In a 60-page order dated September 24, 2012 delivered in a post-grant opposition instituted by Cipla, the Indian Patent Office revoked Sugen Inc’s patent on Sunitinib IN209251. The drug is used to treat Renal Cell Carcinoma (RCC), which is a kind of kidney cancer. The patent was revoked on grounds of lack of inventive step. 

I thank a senior practitioner, a well-wisher of the blog, for sharing the order with me.

Interestingly, this is the second patented drug this year that treats kidney cancer against which the Patent Office has taken action. The first one was on Sorafenib Tosylate (Nexavar) of Bayer in which a compulsory license was issued this March.

I will shortly blog on the highlights of the decision. 


  1. Could you please upload decision of IPO, if available

    1. Dear Guna,
      I have provided a hyperlink (in the first line of the post) to a word document of the order which I have uploaded on Google docs. In case, you are unable to view it on Google docs, it gives you the option to download the document. Please let me know if you still are not able to access it.

      Best Regards,

  2. From what I can see, the first 51 pages are mere copy paste averments from the Opponent’s and Patentee’s side. What is striking is that the Controller has at the beginning of the “Conclusion” stated the conclusion and then tried to write a few arguments to support her stance. She particularly refers to the Tables submitted by the Opponent in their written statement and concludes abruptly that the impugned invention lacks inventive step.

    In fact, if I look at the analysis that the Controller has made concerning the obviousness aspect, I see nothing but a repetition of Opponent’s written submissions in respect of the hearing,it is again surprising that nothing has been said about the Patentee’s pleadings and the supporting evidences. The issue of what constitutes “closest prior art” has been dealt with in a fleeting manner and a sweeping statement made with regard to the Patentee having “miserably” failed to provide a comparison with the closest prior art. On the whole, there is no “analysis” but I can only see the Opponent’s pleadings taking up all the space in the order.

    There is something very peculiar about this order which is both intriguing as well as bothersome. The order gives a feeling as if it was an ex-parte hearing and the Patentee did not argue the case. While I was browsing through the documents available online on the Patent Office website, one more thing that I noted was that while all the Opponents’ documents are available on the website, the Patentee’s written notes on the hearing are mysteriously missing. I could have thought of this as a usual Patent Office faux pas, but looking at the flavor of the order, I cannot but think of something fishy here.

    I just wish the Learned Controller could have had given a little more logic (her own) to her conclusion.