Opposition as a 'creditable challenge'

Strix Ltd v Maharaja Appliances Ltd (6.11.2009) (Delhi High Court order)

If you have an electric kettle at home, there’s probably Strix inside it. SpicyIP had a nice post on the above judgment. The Delhi High Court granted interim injunction restraining Maharaja Appliances from manufacturing and marketing Maharaja Whiteline electric kettle Model No EK 172 as it infringed Strix’s patent (IN 1,92,511, US 6,080,968). In granting injunction, the Court made two critical observations on why Maharaja failed to discharge its burden of raising a ‘creditable challenge’ to the validity of the Strix patent.

First, the court observed that the defendant failed to place on record some acceptable scientific material, supported or explained by the evidence of an expert, that the patent is prima facie vulnerable to revocation. Secondly, the court observed that the burden on the defendant to show that it has put forward a creditable challenge will be greater on account of the fact that there was no opposition filed to challenge Strix’s patent.

Prospective defendants in patent infringement suits may see a new meaning in using pre-grant opposition.

Other Strix cases:

Strix v Otter Controls [1991] F.S.R. 354 (Court of Appeal rebukes mini-trial)

Patenting Research Tools

The research-intensive biotech industry credits its phenomenal growth to the development of ground-breaking research tools like the recombinant DNA technology, polymerase chain reaction (PCR) and the hybridoma technique. Research tools provide the basic foundation for applied downstream research. Many experts have argued that patenting research tools can change the culture of science. The Protection and Utilisation of Public Funded Intellectual Property Bill, 2008 modelled on the Bayh-Dole Act of the US allows universities and research institutions to patent basic research. My article titled "Does Patenting Research change the culture of Science?" appeared in The Hindu and the same can be read here.

Mumbai Workshop on Pre-grant Opposition and Strategy

AIPS (Academcy of Intellectual Property Studies) is conducting an one-day workshop on 26th February, 2009 titled "Challenging Patents: Developing an In-house Strategy on Pre-grant Opposition". I will be the main speaker for the day. Details of the program are available here. The workshop will be structured around my new book The Touchstone Effect.

New Book on Patents: "The Touchstone Effect"

My new book on patents - "The Touchstone Effect: The Impact of Pre-grant Opposition on Patents" is out! Among other things, the book explores the strategic use of pre-grant opposition as a touchstone to check the genuineness of inventions. As with my earlier book, "The Law of Patents - With a Special Focus on Pharmaceuticals in India" which is presently updated free of cost through a blog, this book too has on online companion (click here for the blog) where you can find more about the book - you can search and download more than 55 decisions of the Patent Controller on pre-grant opposition (click here).

The book is available at the LexisNexis Online Bookstore. My publishers will ship the book to any where in India for just Re 1. Keeping the touch with the difficult times that lie ahead of us, the book is priced at Rs.295 /-

Bibliographic details:

Title: The Touchstone Effect: The Impact of Pre-grant Opposition on Patents
Author: Feroz Ali Khader
Publisher: LexisNexis Butterworths Wadhwa Nagpur
ISBN: 9788180385544
Format: Soft Cover
Edition: 2009
Price: INR 295.00 / US$ 14.75
Pages: xx + 166 pages (Appendices starts from pg 137, followed by Chapter Notes and Subject Index).

Symposium on Challenges to India's Patent Regime

NATIONAL LAW SCHOOL, Bangalore is hosting a symposium on "Challenges to India's Patent Regime" on 12th and 13th of April, 2008. The details of the symposium can be found here. I will be speaking at the symposium along with a host of distinguished experts including

Justice AR Lakshmanan, Chairman Law Commission of India; Justice PP
Naolekar, Judge Supreme Court of India; Justice Ravindra Bhat, Judge Delhi
High Court; Justice DV Shylendra Kumar, Judge Karnataka High Court

Dr. Anil Gupta, IIM Ahmedabad; Shamnad Basheer, Oxford IP Research Centre;
Srividhya Raghavan, Oklahoma University; T. Ramakrishna, NLSIU; Sudhir
Krishnaswamy, NLSIU

Aditya Sondhi, Advocate Karnataka High Court; Vinay Aravind, Poovayya & Poovayya

Leena Menghaney, Access Campaign Manager - India, MSF; Mr. Gopa Kumar,
CENTAD; Dr. Anand Grover, Director, Lawyers' Collective

For registration, please contact Apurva Rai, +919886208285 or contact Arghya
Sengupta, +919886023232.

Strategies for Challenging and Defending Patents

DO YOU HAVE a strategy for managing innovation? If you do what is your legal strategy with regard to innovation, be it your own or that of your competitor? Most organisations view innovation strategy as something confined to identifying and developing innovation. The critical part of protecting innovation, after you have developed and marketed it, is an activity which happens outside the confines of an organisation, and is inevitably outsourced. Organisations need to develop strategies for managing innovations - both their own as well as their competitors - if they are to have a comparative advantage in the market. And the essence of strategy, to quote Michael Porter, is choosing to perform activities differently than rivals do. The uniqueness of Indian patent laws gives much scope for pharmaceutical companies - big and small, branded and generic, foreign and local - to develop legal strategies with regard to innovations. My article titled "Needed, legal strategy to protect innovations" appeared in today's The Hindu Business Line and the same can be read here.

American Cyanamid Rules!

THE UNANIMITY WITH which Roche and Cipla agreed on the applicability of the American Cyanamid decision and the manner in which the same was applied by the Delhi High Court in the interlocutory stage of the infringement case, reaffirms our faith in the Cyanamid approach. We had earlier remarked here, in the context of the Bajaj-TVS case, on the courts' approach to granting interim injunctions. The Roche-Cipla order illustrates with great clarity on how the Cyanamid approach is to be applied. Unfortunately, we notice that the court did not make any determination on the 'adequacy of damages' which is a vital cog in the Cyanamid approach. My article analysing this issue titled "It's American Cyanamid again on patents vs access to medicines" appeared in today's DNA Money and the same can be read here.