By Lucy Rana
What happened
The Madras High Court set aside a Patent Office refusal of an Elanco application (an oral composition for chronic in appetence and weight loss in companion animals), which had been rejected for lack of inventive step over the closest prior art. The refusal order itself acknowledged that the invention differed from that prior art no safety data on the maximum dose for continued use, and no adverse clinical side effects yet rejected it without explaining why those advantages did not amount to an inventive step. The Court held the bare refusal arbitrary, set it aside, and directed a different officer to issue a reasoned decision within four months. The merits were left open; the patent was not granted.
Why it matters to us
- Inventive step in life sciences often rests on demonstrated advantages safety, tolerability, dosing for continued use, unexpected effects the very features at issue here.
- A refusal that concedes an advantage but does not reason it through is vulnerable on appeal under Section 117A.
- A successful appeal usually means reconsideration, not immediate grant; remand timelines should be factored into launch and portfolio planning.
- The evidence that supports inventive step also strengthens the patent’s resilience if it is later challenged.
What good practice looks like
- Put the technical advantages, with supporting data, squarely on the prosecution record, so any refusal must engage with them.
- Track the reasoning quality of adverse orders; conclusory or self-contradictory refusals are appealable.
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Source: Elanco US Inc. v. Assistant Controller of Patents and Designs, CMA(PT) No. 37 of 2024, High Court of Madras, 14 July 2026, under Section 117A of the Patents Act, 1970. For general information only; not legal advice.