ISSUE

MONTHLY

01

JOURNAL OF

DECEMBER

Latest Updates by Tech Corp Legal LLP

TECH NEWS

 

2013

 
 

This issue

 

K...
Patent Applicant(s)
should comply with
the legal section
requirements of the
Indian Patent Act  

Serving Tech
Industry ar...
HAWK-EYE
APPROACH
Current Industry
Patent Trends
Relevance of Section 3(e)
of the Indian Patent Act
for Pharmaceutical &
D...
Upcoming Events
The DIY (Do it yourself) Entrepreneur: With Legal Basics for Startups &
Entrepreneurs

Your Legal
Advisor
...
Upcoming SlideShare
Loading in …5
×

Patent prosecution Guidelines by Intellectual Property Patent Law Firm in India| Filing Patent details of Foreign Patent Application Prosecution History Before Indian Patent Office| Section 8 Compliance for Prosecution of Indian Patent Pharma Applications

4,593 views

Published on

Filing Patent details of Foreign Patent Application Prosecution History Before Indian Patent Office| Section 8 Compliance for Prosecution of Indian Pharmaceutical, Biotech, Drug Patent Applications in India| Patent prosecution Guidelines in India
Tech Corp Legal is a global intellectual property and technology research firm.
Our Flagship Patent Services:
Patent landscape report
Patent portfolio Assessment and Management
Patent searches
Market Research

We offer advice to our clients regarding intellectual property law, how to patent an idea, protecting biotech and food technology innovations, software patent infringement, drafting mechanical patent applications and related disciplines focusing on protecting your ideas.
Till date we have conducted over +3000 patent searches for our domestic and foreign clients. We have handled over a hundred matters before the Trademark Registry of the Indian Patent and Trademark Office.
Prity Khastgir is a Biotech and Pharmaceutical Indian Patent Attorney at Tech Corp Legal LLP (www.techcorplegal.com),an Indian Intellectual Property law firm based in New Delhi.
She also serves as Director at Tech Corp International Consultants Pte. Ltd. (Singapore), wherein she advises clients regarding freedom to operate (FTO) studies for their new product or service and search for possible foreign IP rights that could be infringed.
Patent clearance searches are rapidly becoming a necessity for any technology company to enter in India and in any other foreign country. Having multi-jurisdictional experience gives her clients insights in protecting and enforcing their intellectual property rights in several countries.
Our Patent Practice Areas:
Medical Devices
Telecommunications
Computer Science
Biotechnology
Pharmaceuticals
Biochemistry
Pure Chemistry
Applied Chemistry
Industrial Chemistry
Pharmacology
Physics
Electronics
Mechanical Engineering
Electrical Engineering
Chemical Engineering
Computer Engineering

Our clients consists of foreign IP law firms, fortune 100 companies and universities. Our patent analysis reports helps In-house IP counsels, CEOs, foreign patent attorneys, R&D department, and Universities to make effective business decisions and plan the future research and development activities.

Published in: Law
1 Comment
1 Like
Statistics
Notes
No Downloads
Views
Total views
4,593
On SlideShare
0
From Embeds
0
Number of Embeds
2,078
Actions
Shares
0
Downloads
0
Comments
1
Likes
1
Embeds 0
No embeds

No notes for slide

Patent prosecution Guidelines by Intellectual Property Patent Law Firm in India| Filing Patent details of Foreign Patent Application Prosecution History Before Indian Patent Office| Section 8 Compliance for Prosecution of Indian Patent Pharma Applications

  1. 1. ISSUE MONTHLY 01 JOURNAL OF DECEMBER Latest Updates by Tech Corp Legal LLP TECH NEWS   2013     This issue   Kibow Wins Patent Battle P.1   IPAB Case Study P.2   Patent Prosecution Tips P.3   Upcoming Event P.4     Kibow Biotech Wins Patent Battle in India   Prity Khastgir is a Biotech 2013 The inventive composition of the patent Intellectual Property Appellate Board (IPAB) comprises at least one probiotics bacteria of a   upheld Patent Revocation Petition filed by   certain kind, in a certain composition and it is and Pharmaceutical Indian   Recently, Patent Attorney at Tech Gujarat based La Renon Health Care Pvt. Ltd not a mere admixture and is patentable under for patent No.224100 granted to Kibow the Indian Patent Act, 1970. As stated by Biotech invention IPAB “the invention covers a new and Kidney inventive composition comprising at least one New Delhi. Function” under the provisions of the Indian probiotic bacteria of a certain kind, in a She also serves as Director Patents Act, 1970. However, on the same certain composition and along with other at Tech Corp International day, Intellectual Property Appellate Board Consultants Ltd. (IPAB) revoked Indian Patent granted to she Kibow Biotech INC, titled “A process of Corp Legal LLP (www.techcorplegal.com) ,an Indian Intellectual Property law firm based in Pte. (Singapore), wherein advises clients regarding on Inc., “Compositions making 13th for for November, the patent Augmenting pharmaceutical composition” freedom to operate (FTO) bearing patent grant number IN205478 under studies additives (such as vitamins etc) that confer synergistic impact, enabling the augmentation of kidney function. By no stretch of imagination can this unique composition be labeled as mere IPAB Dismisses admixture.” the provisions of the Indian Patents Act, for their new product or service and search for possible foreign IP rights that could be 1970. The US based Biotech Company Kibow the Revocation Biotech specializes in breakthrough patented Petition filed by La Renon Health Care and proprietary probiotic dietary supplements An order placed by IPAB Vice Chairman S. for kidney and immune health. Usha and Technical Member DPS Parmar, infringed. agreed with Kinow Biotech that the impugned Patent clearance searches Who filed for Patent Revocation? patent aids in carrying out the kidney function are A Gujarat based Indian company La Renon per se. Particularly, in some embodiments of Health Care Pvt Ltd had filed for the patent the revocation alleviates the symptoms of uremia; the rapidly becoming a necessity for any technology company to enter in India and in any other foreign country. Having the Intellectual Property Appellate Board (IPAB) has upheld the Patent Revocation Petition filed by probiotic composition increased creatinine or BUN levels in subjects undergoing chemotherapy cancer, HIV treatment; the or AIDS increased multi- Gujarat based La Renon Health Care Pvt. Ltd creatinine or BUN levels in subjects with for patent No.224100 granted to Kibow Biotech metabolic syndrome; or the symptoms of Inc., for increased creatinine or BUN levels in subjects Augmenting Kidney Function”. The IPAB found that consuming high protein and low carbohydrate the granted invention is not obvious in view of the diets. Subsequently, it makes the invention the prior art documents cited by La Renon Health not obvious to a person skilled in the art. gives her clients insights in their and the experience jurisdictional protecting petition invention, and intellectual enforcing property rights in several countries. Care. for the invention “Compositions
  2. 2. Patent Applicant(s) should comply with the legal section requirements of the Indian Patent Act   Serving Tech Industry around the World India's Patent Ecosystem: Encouraging Strong Patent Innovation Patent Prosecution in India is highly procedural. Compliance is Mandatory!! Facts of the Present Case: Intellectual Property Appellate Board (IPAB) Kibow Biotech Inc. is a foreign company The WIPO publication number of the patent application was upheld Patent Revocation based in United States and had filed a WO/2005/032591. Petition filed by Gujarat Civil Suit No.498 of 2011 before the On based La Renon Health Hon’ble alleging 351/MUMNP/2006 bearing the title “COMPOSITIONS AND Care infringement of the impugned patent No. METHODS FOR AUGMENTING KIDNEY FUNCTION” was 224100 making filed in India as a national phase application of PCT pharmaceutical composition” in order to application No. PCT/US2004/032250 filed on September curb the competition in the Indian market 30, 2004 before the WIPO. The patent application filed in from Gujarat-based La Renon Health Care India is based on PCT application claiming priority from four Pvt Ltd company who would be the major US patent applications. Section 3 of the Indian Patent Act Section 3 of the Indian Patent Act is related to non-patentable inventions and it is very important section cited by the patent examiners during the patent prosecution stage in India. Madras titled High “A Court process of competitor in the same field in the Indian market. The said suit was dismissed by the Hon’ble Madras High Court vide order dated 22.08.2011 due to non- maintainability of the suit under section 599 of the Companies Act as per the March 28, 2006 the patent application No. On September 29, 2008 the patent application was granted patent by the Indian Patent Office.   The granted patent has 10 patent claims India's Patent ecosystem: and the independent claim relates to a Fostering composition for augmenting kidney function in a subject. Innovation provisions of Order 7 Rule 13 Code of Civil The patent claims relates to at least one probiotic Procedure. The Hon’ble Court however bacterium wherein said probiotic bacterium selected from said the plaintiff is entitled to bring a fresh Streptococcus thermophilus at about 5 billion to about 20 suit after curing the defects of Section 599 billion colony forming units of said at least one probiotic of the Companies Act. bacterium other ingredient being selected from vitamin, Subsequently, the domestic company Le mineral, carbohydrate, protein and fats. The dependant Renon Health Care filed the revocation patent claims from claim 2- claim 5 depend on the plea before Intellectual Property Appellate independent patent claim 1, dependant patent claim 6- Board (IPAB). La Renon Healthcare has a patent claim 9 depend on claim 1 and dependant claim For Healthcare Focused product under the brand name CUDO with 10 depends on patent claim 9. Intellectual Property similar composition and has filed for patent Strategy, Legal & registration Regulatory Consulting Office, which is pending approval. After Indian patent examination, only ten claims were Services: Historical Facts of Indian Patent “IN224100” granted for a composition for augmenting kidney function On April 14, 2005, the International Patent wherein Application number PCT/US2004/032250 Streptococcus thermophilus at about 5 billion to about 20 titled “COMPOSITIONS AND METHODS billion colony forming units of said at least one probiotic FOR AUGMENTING KIDNEY FUNCTION” bacterium other ingredient being selected from vitamin, was published by WIPO. mineral, carbohydrate, protein and fats. Therefore applicant the patent should take proactive steps during the patent prosecution stage and comply with the legal requirements of the Indian patent act. www.biocorplegal.com before the Indian Patent Details of the Present Case: in a subject comprising at least one probiotic bacterium said probiotic bacterium selected from
  3. 3. HAWK-EYE APPROACH Current Industry Patent Trends Relevance of Section 3(e) of the Indian Patent Act for Pharmaceutical & Drug Companies As per Section 3(e) of the Indian Patent Act “a substance obtained by a mere admixture Originally filed patent claim were very broad and related to “A composition for augmenting kidney function in a subject comprising at least one probiotic bacterium wherein said probiotic bacterium reduces creatinine and BUN levels in the subject”. However, the patent claims were narrowed down after patent examination. The granted independent patent claim 1 has following essential elements the prosecution the aggregation of the properties of is KB4, KB19, or KB25. impugned patent application the the components thereof or a patent claim 2 as filed originally process for producing such has been merged with claim 1 substance.” above is limited to composition comprising a probiotic bacterium selected Streptococcus from thermophilus at about 5 billion to about 20 billion cfus of KB4, KB19 or KB25. In addition, the composition further history patent in Streptococcus thermophilus strain illustrated the only After The independent granted claim as analysing resulting In dependent patent claim 2, the of which narrows down the scope of The above mentioned section probiotics only to Streptococcus is a major obstacle for new thermophilus. Further, patent claim forms 7 is also merged and reworded (salts, polymorphs, with claim 1 to include about 5 solvates, billion to about 20 billion cfu of pharmaceutical probiotic substances, unless until the limitation in the etc) of drugs includes other ingredient being composition. patentee illustrates improved selected from vitamin, mineral, None of these limitations were effectiveness carbohydrate, protein and fats. The taught in any of the cited prior art selected composition is a food and has 5-20 document Streptococcus billion cfus. Additionally it claims combination and hence the ground that of and limitations: A composition for augmenting kidney comprising (a) probiotic function at least one bacterium from thermophilus (b) at about 5 it is a composition for either alone obviousness or can’t product. in over For existing e.g., a composition of two drugs, i.e. Paracetamol and Ibuprofen for be billion to about 20 billion colony augmenting functions. determined in the present case. It curing forming units of said at least Further, in the detailed description was further determined that patent process of preparation thereof of the patent application it is stated composition comprises at least is not streptococcus thermophilus is a one probiotic bacteria of a certain reason that the composition is probiotic and detail of the same kind, in a certain composition and a mere admixture of two drug are it is not a mere admixture. one probiotic bacterium (c) other ingredient being selected from vitamin, mineral, carbohydrate, protein and fats. kidney provided in the patent Prosecution Process in pain or patentable for the resulting aggregation This Month’s Patent Prosecution Tip, Section 8(1) Patent and components   application. fever of into properties thereof; since Paracetamol is well known for treatment of A statement which includes detailed particulars fever India: The overall process of patent of treatment of pain. prosecution in India is a bit complicated anywhere outside India before the filing of the However, if the mixture of due to multiple compliances and deadlines Indian patent application; and drugs to follow by the patent applicants. corresponding patent applications filed and Ibuprofen exhibits for some A declaration and undertaking that the patent unexpected Understanding why a research needs applicant of synergistic properties in their patent protection in a particular country, corresponding patent applications filed in any action, then such composition what all processes and drug products can foreign country after the filing of the Indian is considered as patentable be patented or how to build a strong patent within portfolio of patents is very vital for succuss subsequent of any biotech ventures. U n d e r S e c t i o n corresponding patent application. supported with adequate test 8(1) of the Indian Patents Act, a A petition can be filed under Rule 137 for condonation results patent of delay and the patent documents may be taken on synergistic properties of the record subject to the Controller’s approval in India. pharmaceutical provide: applicant is required to will application patent provide filing i.e. the 6 details months after filing results or of the subject matter. Moreover, the of the patent description should be molecule to confirm drug the or
  4. 4. Upcoming Events The DIY (Do it yourself) Entrepreneur: With Legal Basics for Startups & Entrepreneurs Your Legal Advisor Tech Corp Legal is a Leading Advisory & Research Consulting Firm Tech-Corp Legal LLP, is a leading technology-focused commercial law firm that Saturday, December 14, 2013, at 9:45 AM Venue: New Delhi YMCA Tourist Hostel, Conference Room, 1 Jai Singh Road, Connaught Place, New Delhi – 110001, Delhi (map) Here comes the next meetup in the ‘DIY Entrepreneur’ series, which will equip the entrepreneurs and the wannabe entrepreneurs with the legal skills required for their ventures. The knowledge will help you tackle the legal issues encountered during the life cycle of a business. There’ll be discussions on common legal mistakes and the steps to avoid them. We’ll also have our routine sections ‘Ask an expert’ and ‘Startup showcase. The detailed agenda of the program is given below. practices in the dynamic field of Corporate and Technology law in India. Detailed Agenda: 1) Session on legal aspects of Startups: We’ll have our expert partner Rahul Our practice Areas: Dev, an international author,speaker and business lawyer; he’ll talk about the Medical Devices Telecommunications Computer Science Biotechnology Pharmaceuticals Biochemistry Pure Chemistry Applied Chemistry Industrial Chemistry Pharmacology Physics Electronics Mechanical Engineering Electrical Engineering Chemical Engineering Computer Engineering legal Do’s and Don’ts of startups, the right legal business structure, Intellectual Property (IP), the legal aspects of brand names, branding strategy & trademarks, company incorporation etc. In short you’ll be equipped with all the legal basics you need in your entrepreneurial journey. 2) Ask an expert: We’ll have experts from the branding, business strategy and legal domains to answer all your queries about your ventures, start-ups and start-up ideas in this section. Here are our expert partners: Rahul Dev, Founder, Tech Corp Legal LLP With our decades experience, Tech of Corp Legal LLP provides patent, trademark, copyright, (http://www.advocaterahuldev.com/) The “Legal Advisory Partners” for “Wannapreneur To Entrepreneur” 3) Showcase your startup/ideas: You can showcase your startups or startup design, related intellectual property corporate services advisory and to ideas using presentations etc. for spreading the word or soliciting some feedback. clients situated in India, ASEAN countries around the world. Tech Corp Legal LLP Issue 01 2013-12-11 and 4) Networking: In the end it will be open to networking. Go ahead and network as you please. To register for the Startup event: Click Here © 2013, Tech Corp Legal LLP, All Rights Reserved email: info@techcorplegal.com

×