Presentation on Patentability of Biotech/Pharma by Dr. Kalyan and Ms. Vinita Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. Patentability of
Biotech/Pharma
By
Dr. Kalyan and Ms. Vinita
Blog: www.sinapseblog.com
© 2009 Brain League IP Services Pvt. Ltd now BananaIP

2. “Biotechnology can transform humanity
provided humanity wishes to be
transformed.”
-Geoffry Carr

3. Arguments
Ignore
Deny
Balance
Advantage

4. A is accused of stealing
diamonds from B
Available evidence
A was seen running from B's house at
the time of theft.
A was caught by police in possession
of Diamonds.
A had asked B to sell the diamonds
about ten times before the theft.

5. Why is
Biotechnology
Unique?

6. Why is Biotechnology
Unique?
Involves living organisms
Diverse fields
Long gestation period
Morals and Ethics
Fear of the unknown
Thin line between discovery and
inventions

7. Patentability of Biotechnology and
Pharmaceutical Inventions

8. Patentability
Requirements
Patentable Subject Matter
Industrial Applicability
Novelty
Non-obviousness
Specification

9. Patentable Subject Matter
Eligible Subjects
Exclusions
India
USA
Europe

10. Case 1
Invention - Innoculum of mutually non-
inhibiting Rhizobium Bacteria
(Funk Bros case)
Is it patentable subject matter?

11. Case 2
Invention - Pseudomonas Bacteria
capable of degrading oil spills. Four
different plasmids inserted into it.
(Chakrabarty case)
Is it patentable subject matter?

12. Case 3
Invention - Oncomouse - cancer
induced into the mouse.
Is it patentable subject matter?

13. Case 4
Invention - Genetically modified corn
plant, which produces sweet corn.
Is it patentable subject matter?

14. Case 5
Invention - Gene sequence responsible
for Retinitis Pigmentosa
Is it patentable subject matter?

15. Case 6
Invention - Human/Animal Chimera
Is it patentable subject matter?

16. Case 7
Invention -A method of enhancing skin
complexion by inserting the gene
responsible for fairness.
Is it patentable subject matter?

17. CASE 8
Invention - Benzomorphine when
morphine has been patented.
Is it patentable subject matter?

18. Case 9
Invention - Mixture of turmeric, milk
and pepper for throat problems.
Is it patentable subject matter?

19. Industrial Applicability
Make
Use
Repeat
Substantial
Credible
Specific

20. CASE 1
Invention - Express Sequence Tags of
maize
Is it Industrially Applicable?

21. Case 2
Invention - Intermediate for a
compound used for cancer treatment
• Thiazole
• 2-chloro-5-chloromethyl-thiazole
Is it Industrially Applicable?

22. Novelty/Non-obviousness
Single Prior Art Reference
Combination of prior art
POSA

23. Case 1
Invention - cDNA sequence for Epo
Prior art
First 19 amino acids of n-terminal sequence
of Epo
General gene sequence technique
Is it Novel and Non-obvious?

24. Case 2
Invention - Alpha-Levo-Benzo-Morphine for
analgesia without addiction
Prior Art
Morphine - addictive
Is it Novel and Non-obvious?

25. Case 3
Invention - Paracetomol and Flunerzine
Prior Art
Paracetomol
Flunerzine
Is it Novel and Non-obvious?

26. Case 4
Invention - Stent coated with taxol
Prior Art
Stent
Taxol
Is it Novel and Non-obvious?

27. Questions
?
Contact :
Kalyan C. Kankanala
Brain League IP Services now BananaIP
Email: kalyan@bananaip.com
Ph: 080-26860414
Url: www.bananaip.com