Indian Patentology: A saga of evolution,compliance and harmonisation

NARENDRA BHATTA HLFOUNDER & CEO

INDIAN PATENTOLOGY A SAGA OF

EVOLUTION, COMPLIANCE AND HARMONISATION

GIPC 2013, 23-30th January 2013

2ITAG-IPCONF/BHATTA/IPCOPIA04/08/2023

04/08/2023 ITAG-IPCONF/BHATTA/IPCOPIA 3

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INDIAN PATENTOLOGY


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INDIAN PATENTOLOGY


PREAMBLE OF INDIAN CONSTITUTION:

WE, THE PEOPLE OF INDIA, having solemnly resolved to constitute India into a

SOVEREIGN SOCIALIST SECULAR DEMOCRATIC REPUBLIC

FIVE YEAR PLAN OBJECTIVES:to provide for the basic infrastructural facilities like education for all, safe drinking water, primary health care, transport, energy


THE GREAT INDIAN BALANCING ACT


• First Legislation in India was Act XV of 1859.• Enforced by the British Empire

on all the states ruled by the British, not entertained by the Princely States.

• The Act of 1859 provided protection for invention only and not for designs.

• The Indian Patents and Designs Act of 1911.

• Justice Rajagopala Ayyangar Committee Report of 1957 (Restrictive Patent Regime)

EVOLUTION


EVOLUTION

• The Patents Act, 1970• Designs Act of 2000• Patent Amendment Act 2005

(Amended in order to be compliant with the TRIPS Agreement ratified by India in 1995)–Patent granted for both

product and process–Term of Patent extended to

20yrs– Incorporation of Section

3d


EVOLUTION

1 2 3 4 5 6 7 8 9 101856 1859

18721883 1888

1911

1972

1999 2002 2005

Evolution of Indian Patent Act

year of amendment


PATENTS:

•The Patent Office Increased its

workforce through massive

appointment of Examiners.

•IPAIRS 2.0- An Improved Search

Engine for Patents released

•Comprehensive E-filing of All

Patent Forms online ENABLED

EVOLUTION


•CGPDTM published draft treaty

on Industrial Design Law

•Publication of Patent Applications

classified as• Ayurvedic;•Herbal;• Food;• Pharmaceuticals; and • Traditional Knowledge

EVOLUTION


•Compulsory License issued,

to NATCO, in respect of Patent

for anti-cancer drug ‘Sorafenib’

granted to Bayer.

•Revocation of Patent no.

252093, Granted to Avesthagen,

related to ‘Ayurvedic

composition’ by Central

Government under S.66 of the

India Patent Act.

EVOLUTION


•Publication of Processing and

Examination Guidelines in

respect of applications related to:

• Traditional knowledge and

Biological Material;

• Biotech Applications

EVOLUTION

FILING TRENDS OF VARIOUS IPR IN INDIA

2006-07 2007-08 2008-09 2009-10 2010-11

28940

3521836812

34287

3940014119

11751 10296

6069

112087539

15316 16061

6168

7509

TREND OF PATENTS

FILED EXAMINED REGISTERED/GRANTED

FILING TRENDS OF VARIOUS IPR IN INDIA

2006-07 2007-08 2008-09 2009-10 2010-11

55216402 6557 6092

7589

4976

6183 6446 62666277

4250

4928 4772 6025

9206

DESIGN TREND

DESIGNS FILED DESIGNS EXAMINEDDESIGNS REGISTERED/GRANTED

EVOLUTION

sustained

staggered


complianceINDIAN PATENTOLOGY


Article 27 of the TRIPS Agreement elaborates the scope of patentable subject matter as follows:1. patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.

compliance


2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.

compliance


3. Members may also exclude from patentability: •diagnostic, therapeutic and surgical methods for the treatment of humans or animals;•plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.

compliance


Section 3 :(a), (b), (c), (h), (i), (j) – as per TRIPS

(k), (m)- compliant with EP

compliance


1.Article 7 states:

’’The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights of obligations.”

compliance


WORKING OF PATENTS S146(2)

GROUNDS FOR OPPOSITION S25(1), S25(2)

REVOCATION OF PATENT IN PUBLIC INTEREST S66.

compliance


Article 8 states:

’’1. Members may, in formulating or amending their laws and regulations, adopt measures, necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio economic and technological development, provided that such measures are consistent with the provisions of this Agreement.’’

compliance


(m) a mere scheme or rule or method of performing mental act or method of playing game;

(n) a presentation of information;

(o) topography of integrated circuits;

(p) an invention which, in effect, is traditional knowledge of which is an aggregation or duplication of known properties of additionally known component or components.

compliance


Section 3d:

(d) The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance and the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant

compliance


SAMPLE LIST OF PATENTS GRANTED BY

PATENT OFFICE WHICH ARE

1.NEW USE OF A KNOWN SUBSTANCE

2.COMBINATION

SOURCE: www.nipoonline.org/Section-report.doc

compliance


NEW USE OF A KNOWN SUBSTANCE:


COMBINATION:


compliance


Harmonization

INDIAN PATENTOLOG

Y


CGPDTM allowed third party observation in respect of published PCT International Applications, as per WIPO guidelines.

Classification of Indian Patent Applications based on IPC (International Patent Classification)

Formatting of Patent Application in line with PCT format

Harmonization


DECISIONS OF CONTROLLER, IPAB BASED ON INTERNATIONAL PRECEDENCES

Harmonization


1. Decision : (MERCK) Schering Corp’s Patent Revoked in Cipla’s Post Grant Opposition by Chennai Patent Office – P.No. 246328“An aerosol suspension formulation for inhalation”

Parties: Schering Corp v. Cipla LimitedController: T.V Madhusudan

Grounds for revocation :1. Lack of inventive step,Obvious S.25(2)(e)2. Insufficient disclosure S.25(2)(g)TEST ADOPTED: TSM (TEACHING SUGGESTION, MOTIVATION)

Harmonization


2. Decision :Patent no. 209251 owned by Sugen Inc. & Pharmacia & Up John co.(Later acquired Pfizer in 2002-3) for “sunitinib” was revoked on 24th Sept2012 following a post grant opposition by Cipla.Parties: Pfizer v. Cipla LimitedController: Nilanjana Mukherjee

Grounds for revocation :1. Lack of inventive step & Obvious to a person skilled in the art S.2(1)(j)IPO looked at multiple documents to highlight obviousness.Opposition board relied on Baxter Travenol Labs (Fed. Cir 1991) to establish ‘element of surprise’ .

Harmonization


3. Decision: Patent no. 198952 owned by F.Hoffman La-Roche AG for “pegasys” wasrevoked on 2nd November 2012 following an appeal to IPAB by SankalpaRehabilitation Trust.

Parties: Sankalpa v. F.Hoffman La-Roche AGBoard: JUSTICE PRABHA SRIDEVAN

Grounds for revocation :1. Obvious to a person skilled in the art S.2(1)(j) and non-patentable u/s 3(d)US and UK judgements relied upon for test of obviousness. United States Court of Appeals for the Federal Circuit in Pfizer, Inc. v. Apotex, Inc and KSR v. Teleflex

Harmonization


Harmonization


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INDIAN PATENTOLOGY


WHO ALL NEEDS TO EVOLVECOMPLY AND HARMONISE


IP Rights

Investment Banker/VC

Lender Banker/

Mortgage

Customs Officials

HR Managers

Judge

Advocates/IP Attorneys


IP

SENATORS

NGOS

COMMON PUBLIC

MEDIA

04/08/2023ITAG-IPCONF/BHATTA/IPCOPIA 42

ABOUT US:

The word INTELLOCOPIA stands for abundance of intellect. Intellocopia IP Services is a full service establishment providing one stop solution from acquisition of IP to enforcement of IP. Intellocopia has a team of engineers and scientists with excellent industrial experience and adequate law training. Intellocopia focuses on start-ups and SMEs. Key strengths: develop IP strategy specific to a company, sensitize workforce at all levels on nuances in IP Protection; enable in house skill development and provide cost effective solutions.

Our belief is: Protected Intellect is Power,

Protected Intellect is Wealth.


SERVICES PROVIDED:

Development of IP Policies

IP Analysis and Review

Patent Drafting and Prosecution

Trademark , Copyright and Design

Registration.

Customized Training Sessions

Technology Transfer and Licensing


Disclaimer

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This presentation is primary meant for instructional use. Not for Publication. The ownership of the TM & copyrighted material (especially cartoons) appearing in the presentation is acknowledged. Thanks to the Cartoonists, a dull presentation receives an interesting touch.


ACKNOWLEDGEMENTS:

Prof. R. Muralidharan- Mentor

Smitha HS- Associate


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Indian Patentology: A saga of evolution,compliance and harmonisation

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