GIPC 2013, 23-30th January 2013
2/5/2013   ITAG-IPCONF/BHATTA/IPCOPIA   2
Harmonization           compliance            evolution2/5/2013                ITAG-IPCONF/BHATTA/IPCOPIA   3
Harmonization           compliance                                       evolution2/5/2013                ITAG-IPCONF/BHAT...
FIVE YEAR PLAN OBJECTIVES:     to provide for the basic infrastructural     facilities like education for all, safe drinki...
2/5/2013   ITAG-IPCONF/BHATTA/IPCOPIA   6
EVOLUTION2/5/2013       ITAG-IPCONF/BHATTA/IPCOPIA   7
EVOLUTION2/5/2013       ITAG-IPCONF/BHATTA/IPCOPIA   8
EVOLUTION                  Evolution of Indian                                 Patent Act                                 ...
PATENTS:  EVOLUTION •The   Patent          Office         Increased   its            workforce through massive appointment...
EVOLUTION •CGPDTM published draft treaty on             Industrial Design Law             •Publication       of      Paten...
•Compulsory                License         issued,    to  EVOLUTION   NATCO, in respect of Patent for anti-              c...
•Publication          of         Processing       and  EVOLUTION Examination Guidelines in respect of              applica...
TREND OF PATENTS               FILED      EXAMINED           REGISTERED/GRANTED                  15316              16061 ...
DESIGN TREND  DESIGNS FILED       DESIGNS EXAMINED       DESIGNS REGISTERED/GRANTED                                       ...
EVOLUTION            sustained               staggered
compliance2/5/2013       ITAG-IPCONF/BHATTA/IPCOPIA   17
Article 27 of the TRIPS    compliance                 Agreement       elaborates   the                 scope of patentable...
2.       Members may exclude from    compliance   patentability      inventions,       the                 prevention with...
3.       Members may also                 exclude from patentability:    compliance   •diagnostic, therapeutic and        ...
Section 3 :    compliance   (a), (b), (c), (h), (i), (j) – as per                 TRIPS                 (k), (m)- complian...
1.Article 7 states:    compliance                 ’’The protection and enforcement of                 intellectual propert...
compliance                 WORKING OF PATENTS S146(2)                 GROUNDS        FOR                 OPPOSITION       ...
Article 8 states:    compliance                 ’’1. Members may, in formulating or                 amending their laws an...
(m) a mere scheme or rule or                 method of performing mental act or    compliance   method of playing game;   ...
Section 3d:                 (d) The mere discovery of a new form of    compliance                 a known substance which ...
SAMPLE LIST OF PATENTS    compliance           GRANTED BY PATENT                         OFFICE WHICH ARE                 ...
NEW USE OF A KNOWN SUBSTANCE:2/5/2013            ITAG-IPCONF/BHATTA/IPCOPIA   28
COMBINATION:2/5/2013          ITAG-IPCONF/BHATTA/IPCOPIA   29
compliance2/5/2013         ITAG-IPCONF/BHATTA/IPCOPIA   30
Harmonization2/5/2013        ITAG-IPCONF/BHATTA/IPCOPIA   31
CGPDTM        allowed     third    party       Harmonization                       observation in respect of published PCT...
Harmonization                       DECISIONS OF CONTROLLER, IPAB                       BASED    ON    INTERNATIONAL      ...
1. Decision : (MERCK) Schering Corp’s                       Patent Revoked in Cipla’s Post Grant                       Opp...
2. Decision :Patent no. 209251 owned by Sugen                       Inc. & Pharmacia & Up John co.                       (...
3. Decision: Patent no. 198952 owned by                       F.Hoffman La-Roche AG for “pegasys” was                     ...
Harmonization2/5/2013               ITAG-IPCONF/BHATTA/IPCOPIA   37
Harmonization           compliance            evolution2/5/2013                ITAG-IPCONF/BHATTA/IPCOPIA   38
WHO ALL           NEEDS TO           EVOLVE           COMPLY           AND           HARMONISE2/5/2013       ITAG-IPCONF/B...
Advocates/                                IP Attorneys2/5/2013   ITAG-IPCONF/BHATTA/IPCOPIA          40
2/5/2013   ITAG-IPCONF/BHATTA/IPCOPIA   41
ABOUT US:   The word INTELLOCOPIA stands for abundance of   intellect. Intellocopia IP Services is a full service   establ...
SERVICES PROVIDED:       Development of IP Policies        IP Analysis and Review        Patent Drafting and Prosecutio...
Disclaimer     VIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THE        AUTHOR –     IF YOU RELY ON THE ABOVE VIE...
ACKNOWLEDGEMENTS:           Prof. R. Muralidharan- Mentor           Smitha HS- Associate2/5/2013               ITAG-IPCONF...
CONTACT US AT                                 Corporate Off:- 29, ‘SHESHASRI’, I ‘C’ Cross, Sn Layout, Basaveswarnagar, Ba...
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Indian Patentology: A saga of evolution,compliance and harmonisation

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Narendra Bhatta HL, Founder & CEO of Intellocopia IP Services (www.ipcopia.com) presented this talk on January 29th 2013 at Global IP Convention 2013 (http://iprconference.com/)

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  • ANY ACT IMPLEMENTED SHOULD MAINTAIN THE SANCTITY OF PREAMBLE AND SYNERGISE WITH THE OBJECTIVES OF THE FIVE YEAR PLAN
  • TEXT IN YELLOW INSERTED DURING AMENDMENT OF 2005; TEXT IN WHITE PRESENT IN THE ORIGINAL ACT OF 1970
  • The controller relied on the chronological order of documents cited and concluded that the documents taken in order taught the importance of usage of a certain compound suggesting the need to incorporate the same in advanced uses, thereby motivating a person skilled in the art to adopt the same in arriving at the invention under opposition.
  • Opposition board relied on the decision of Baxter Travenol Labs (Fed. Cir 1991) , wherein the test of surprise element was emphasized. The test required to state “when improved results are used as evidence of non-obviousness, the results must be shown to be unexpected compared with closest prior art.
  • Decision discussed extensively on interpretation of ‘person skilled in the art’ and the TSM test suggested by KSR V Teleflex
  • A balanced Law emerges out of equal contributions from evolution, compliance and harmony.
  • Everyone who interprets and enforces IP need to evolve, adapt and harmonize issues related to IP. This process is a continuously evolving one.
  • A lot of how an IP evolves, complies and harmonizes is dependent on the reactions of various influencers of IP of whom media, senators/MPs-MLAs, NGOS and common public emerge as significant contributors. The person creating the IP is seldom aware of these influences
  • Indian Patentology: A saga of evolution,compliance and harmonisation

    1. 1. GIPC 2013, 23-30th January 2013
    2. 2. 2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 2
    3. 3. Harmonization compliance evolution2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 3
    4. 4. Harmonization compliance evolution2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 4
    5. 5. FIVE YEAR PLAN OBJECTIVES: to provide for the basic infrastructural facilities like education for all, safe drinking water, primary health care, transport, energy2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 5
    6. 6. 2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 6
    7. 7. EVOLUTION2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 7
    8. 8. EVOLUTION2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 8
    9. 9. EVOLUTION Evolution of Indian Patent Act year of amendment 1999 2002 2005 1972 1911 1883 1888 1872 1856 1859 1 2 3 4 5 6 7 8 9 102/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 9
    10. 10. PATENTS: EVOLUTION •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 ENABLED2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 10
    11. 11. EVOLUTION •CGPDTM published draft treaty on Industrial Design Law •Publication of Patent Applications classified as •Ayurvedic; •Herbal; •Food; •Pharmaceuticals; and •Traditional Knowledge2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 11
    12. 12. •Compulsory License issued, to EVOLUTION 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.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 12
    13. 13. •Publication of Processing and EVOLUTION Examination Guidelines in respect of applications related to: •Traditional knowledge and Biological Material; •Biotech Applications2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 13
    14. 14. TREND OF PATENTS FILED EXAMINED REGISTERED/GRANTED 15316 16061 7509 7539 11208 11751 10296 6168 14119 6069 39400 36812 35218 34287 289402006-07 2007-08 2008-09 2009-10 2010-11
    15. 15. DESIGN TREND DESIGNS FILED DESIGNS EXAMINED DESIGNS REGISTERED/GRANTED 9206 6025 4928 4772 4250 6277 6183 6446 6266 4976 7589 6402 6557 6092 55212006-07 2007-08 2008-09 2009-10 2010-11
    16. 16. EVOLUTION sustained staggered
    17. 17. compliance2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 17
    18. 18. Article 27 of the TRIPS compliance 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.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 18
    19. 19. 2. Members may exclude from compliance 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.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 19
    20. 20. 3. Members may also exclude from patentability: compliance •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.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 20
    21. 21. Section 3 : compliance (a), (b), (c), (h), (i), (j) – as per TRIPS (k), (m)- compliant with EP2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 21
    22. 22. 1.Article 7 states: compliance ’’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.”2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 22
    23. 23. compliance WORKING OF PATENTS S146(2) GROUNDS FOR OPPOSITION S25(1), S25(2) REVOCATION OF PATENT IN PUBLIC INTEREST S66.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 23
    24. 24. Article 8 states: compliance ’’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.’’2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 24
    25. 25. (m) a mere scheme or rule or method of performing mental act or compliance 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.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 25
    26. 26. Section 3d: (d) The mere discovery of a new form of compliance 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 reactant2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 26
    27. 27. SAMPLE LIST OF PATENTS compliance GRANTED BY PATENT OFFICE WHICH ARE 1. NEW USE OF A KNOWN SUBSTANCE 2.COMBINATION SOURCE: www.nipoonline.org/Section-report.doc2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 27
    28. 28. NEW USE OF A KNOWN SUBSTANCE:2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 28
    29. 29. COMBINATION:2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 29
    30. 30. compliance2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 30
    31. 31. Harmonization2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 31
    32. 32. CGPDTM allowed third party Harmonization 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 format2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 32
    33. 33. Harmonization DECISIONS OF CONTROLLER, IPAB BASED ON INTERNATIONAL PRECEDENCES2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 33
    34. 34. 1. Decision : (MERCK) Schering Corp’s Patent Revoked in Cipla’s Post Grant Opposition by Chennai Patent Office – Harmonization P.No. 246328 “An aerosol suspension formulation for inhalation” Parties: Schering Corp v. Cipla Limited Controller: 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)2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 34
    35. 35. 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 Sept Harmonization 2012 following a post grant opposition by Cipla. Parties: Pfizer v. Cipla Limited Controller: 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’ .2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 35
    36. 36. 3. Decision: Patent no. 198952 owned by F.Hoffman La-Roche AG for “pegasys” was revoked on 2nd November 2012 following Harmonization an appeal to IPAB by Sankalpa Rehabilitation Trust. Parties: Sankalpa v. F.Hoffman La-Roche AG Board: 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.2/5/2013 TeleflexITAG-IPCONF/BHATTA/IPCOPIA 36
    37. 37. Harmonization2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 37
    38. 38. Harmonization compliance evolution2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 38
    39. 39. WHO ALL NEEDS TO EVOLVE COMPLY AND HARMONISE2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 39
    40. 40. Advocates/ IP Attorneys2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 40
    41. 41. 2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 41
    42. 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,2/5/2013 Protected Intellect is Wealth. ITAG-IPCONF/BHATTA/IPCOPIA 42
    43. 43. 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 Licensing2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 43
    44. 44. Disclaimer VIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THE AUTHOR – IF YOU RELY ON THE ABOVE VIEWS WITHOUT A PERSONALIZED OPINION, AND IF YOU HAVE BENEFITS, YOU ARE FREE KEEP IT FOR YOURSELF WITHOUT EVEN AN ACKNOWLEDGEMENT !! IF YOU RELY ON THE ABOVE VIEWS, SOME OF IT MAY BE WRONG AND SUFFER LOSES AND YOU SUE ME FOR NEGLIGENCE, I RESERVE not only MY RIGHTS TO RECOVER COSTS(!) but also raise new bill on you for relying upon these views!! 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.2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 44
    45. 45. ACKNOWLEDGEMENTS: Prof. R. Muralidharan- Mentor Smitha HS- Associate2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 45
    46. 46. CONTACT US AT Corporate Off:- 29, ‘SHESHASRI’, I ‘C’ Cross, Sn Layout, Basaveswarnagar, Bangalore-560079 Office at:- 890/4/5 , 3rd A Main, D Block, Rajajinagar II Stage, Bangalore -560010 E-mail: bhatta@ipcopia.com ; Landline: 08023321978; Cell: +919448085810 ONLINE AND SOCIAL MEDIA CONTACT: URL: WWW.IPCOPIA.COM FACEBOOK: http://www.facebook.com/intellocopia TWITTER: http://www.twitter.com/@ipcopia BLOG: http://ipcopia.wordpress.com2/5/2013 ITAG-IPCONF/BHATTA/IPCOPIA 46

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