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1. B Y :
N I S H A N T K E W A L R A M A N I
P O R T F O L I O M A N A G E R
B A N A N A I P C O U N S E L S
RECENT PATENT TRENDS

2. AGENDA
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 Patent prosecution history
 Speaking Order
 Patent Application- Abandonment v. Rejection
 Patent Law- Linkage with other laws
 BILSKI- US decision on process claims

3. Prosecution History
 Prosecution History
 All communication that takes place between the applicant and
the patent office.
 Traditionally this communication was treated by the
patent office as confidential.
 Complete Specifications of only granted patents were
available.

4. Prosecution History (cont…)
 RTI-
 Right to Information applications versus confidentiality
 Controller of Patents, Designs & Trademarks issued
an office instruction on April 15, 2010 to supply upon
request all correspondence between the applicant
and patent office.
 Rationale- helpful for pre grant opposition

5. Prosecution History Estoppel
(PHE)
 Originated from the US
 If an applicant narrows the claims during
examination he cannot claim infringement for the
pre-amendment patent claims
 No case regarding applicability of PHE in India- law
not clear on the point.
 Circular of April 15, 2010- may lead India in the
same direction.

6. Taking Cue
 Initial claim:
 I claim a ceiling fan comprising of a base, connected to a rod
which in turn is connected to a rotor with three wings.
 During prosecution history an amendment is made
in order to respond to an Examination report
 I claim a ceiling fan comprising of a base, connected to a solid
rod which in turn is connected to a rotor with three wings.

7. Speaking Order
 Patent application for a molecule used in the
treatment of diabetes
 First Examination Report
 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”

8.  Applicant responds by giving a detailed explanation
of differences between the extract disclosed in the
text and the molecule.
 Applicant further states that a hearing must be given
before making an adverse decision.
 Second Examination Report-
 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”

9.  First Examination Report
 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”
 Second Examination Report-
 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”

10.  Not a speaking Order
 Hearing must be given- adherence to principles of
natural justice
 Magical Sentence- “Kindly provide hearing in case of
adverse decision on the application.”
 Valencia CTT v. Union of India (decided on 26th Feb 2010)

11. Patent Process
Filing
Publication
18 months
FER
Putting app in order for
grant
6 months
12 months
Request for
Examination

12. Abandonment v. Refusal
 Abandonment
 Application considered abandoned if all requirements not
complied with
 Cannot be appealed
 Refusal
 General power of the Controller to Refuse
 Can be appealed
 Patent Office Practice-
 Application abandoned whether reply to examination
report filed or not.

13.  Ericsson v. UOI (Decided on March 11, 2010)
 29th July 2005- Ericsson filed national phase
patent application
 8th October 2007- First Examination report issued
and defects pointed out which was replied on 10th
Dec. 2007
 25th July 2008- Another examination report sent
by controller restating points already mentioned in
first information report. Replied on 22nd Sept 2008
 10th October 2008- Patent office wrote a letter to
the petitioner stating that despite response of the
petitioner on 22nd September 2008, the specification
of the petitioner was still defective on various grounds
and the application was deemed to be abandoned
under section 21(1).

14. Delhi High Court Held:
Abandonment-
When reply to examination report is not filed at all.
Refusal-
If reply is filed then the application cannot be abandoned and
has to be refused.

15. Patent Law and Linkage
 Bayer Corporation v. Union of India
 Decided on 9th Feb 2010
 CIPLA filed for a drug license for the generic drug
‘Soranib’.
 Bayer corporation sent a letter to the drug controller
requesting him not to grant approval as Bayer holds
a patent on ‘Sorafenib Tosylate’ and Soranib is a
substitute of their patented drug.
 Drug Controller granted the drug license.

16.  Bayer filed a petition in the Delhi High Court against
the approval granted by the Drug Controller.
 Bayer’s contention- If drug controller had previous
knowledge of potential patent violation he should
not grant approval.
 Decision- Drug Controller doesn’t have to travel
beyond the scope of Drugs & Cosmetics Act and
rules. Shouldn’t refuse license on the pretext of
possible violation of a patent.

17. BILSKI- US Supreme Court
 Decision- June 28, 2010
 Hedging of risks related invention
 CAFC- Machine or Transformation test
 Tied to a machine/change in a physical tangible object
 Supreme Court
 Machine or Transformation test not sufficient
 There are only three exceptions under US law
 Physical Phenomenon, laws of nature and abstract ideas

18.  Machine or transformation is not the sole test for
determining patentability of process claims.
 However it is a very important inquiry.
 Process and method claims are patentable if they are not
directed towards an abstract idea.
Examination policy memo to examiners-
 Examiners will reject process claims that do not satisfy
the machine or transformation test unless there is a clear
indication that the claims is not directed to an abstract
idea.

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