Silences in the TRIPS Agreement

THE STANDARD OF patentability in the TRIPS Agreement is a matter that eludes consensus. When the vital constitutents of patentability ie 'novelty', 'inventive step' and 'industrial application' were left undefined in the TRIPS, it was almost certain that member countries of the WTO would take liberties in defining them. One instance of the exercise of such liberty is our own definition of 'inventive step' in section 2(1)(ja) which adds 'technical advancement' and 'economic significance' over and above the classic requirement of 'obviousness to a person skilled in the art'. Neither do the open list of exceptions to patentability in the TRIPS Agreement help in defining the standard. When the standard of patentability advocated by the TRIPS is unclear, the question of domestic laws confirming to that standard has to be viewed more critically. My article on this issue appeard in today's DNA Money and the same can be read here.

Selection Patent and its Discontents

SELECTION PATENTS PRESENT a problematic area for patent law. Now that section 3(d) of the Patents Act 1970 remains in the statute book, it would be interesting to see how the said provision has an impact on selection patents. My article exploring this topic appeared in today's The Hindu Business Line which can be read here.

Copy of Madras High Court decision in Novartis case

MANY THANKS TO my friends at Lawyers Collective for providing me with a scanned pdf copy of the recent decison of the Madras High Court in the Novartis case challenging the constitutional validity of section 3(d) of the Patents Act 1970. If you are patient enough (the 7MB pdf file with a not so eye-friendly background and the quickness of your internet connection are bound to come between you and your reading), you should be able to read the judgment here and here.

Do indian patent laws stifle research?

DO INDIAN PATENT laws stifle research is a question that has been repeatedly posed ever since the Madras High Court rendered its decision on the constitutional validity of section 3(d) of the Patents Act 1970. I have contributed a piece to this debate which appeared in today's The Hindu which can be read here.

Novartis decision and flexibilities in TRIPS

THE RECENT DECISION of the Madras High Court rejecting the challenge to section 3(d) of the Patents Act 1970 can be viewed as a positive step in upholding the flexibilitis available under the TRIPS Agreement. The link to my article that appeared in today's DNA Money on this issue can be found here.

IPAB rejects objection by Novartis

IN AN ELABORATE order, the IPAB (Intellectual Property Appellate Board) dismissed Novartis's objection raised against the continuance of Mr S Chandrasekhar as the technical member in the Gleevec appeal. The objection was based on Mr Chandrasekhar involvement in the Novartis's application as the Controller of patents (See earlier post here). The IPAB relied on the 'doctrine of necessity' in arriving at its conclusion to continue hearing the matter. Many thanks to a resourceful colleague, Mr A Ramesh Kumar, Advocate for providing a copy of the order copy which can be found here (in as is where is condition).

IPAB’s competence-competence

By raising the issue of whether Mr Chandrasekar, the Technical Member of the IPAB can sit on appeal in a matter in which he was involved as a Controller, Novartis has put the IPAB in a fix as it now has to decide its own competence that too in its very first case. What is now raised before the IPAB is a jurisdiction issue and whichever way the IPAB, which reserved orders after hearing the parties on 10^th July 2007, decides will have a bearing on the way the institution functions in the future. While the IPAB has reserved its verdict, subject to whatever it would have to say, the following issues must be looked into.

The scheme of the Patents Act 1970 and the Patents Rules 2003 shows that the Controller acts in two capacities – acts done directly by the Controller and acts done on behalf of the Controller. First, all actions taken by the officers (examiners) shall be done under the 'superintendence and directions of the Controller such functions of the Controller under this Act as he may, from time to time by general or special order in writing, authorise them to discharge'[s 73(3)]. These actions represent delegated actions carried on behalf of the Controller. Then there are the actions carried on directly by the Controller [s 73(4), where the Controller may 'deal with such matter himself…'].

The Act and the Rules takes care to avoid conflict of interest. As per rule 56(3), an examiner who has dealt with the application for patent during the proceeding for grant of patent is made ineligible to be a member of the Opposition Board. It would be futile to argue that the examiner discharged a function of the Controller and hence the decision amounts to a decision by the Controller. Such arguments do not find a place in an Act which provides for post-grant opposition before the Controller.

Section 116(2) of the Patents Act which deals with the qualifications of the Technical Member clearly leans in favour of appointing person who has been a Controller for at least five years. That being the case, it would be quite natural for a Controller who was involved in the grant or rejection of a patent application to preside in appeal at a later point of time as a member of the IPAB. Then, the challenge, if any, must be directed to section 116 (2)(a) itself.

Book on the Law of Patents

My book “The Law of Patents – With a Special Focus on Pharmaceuticals in India” published by LexisNexis is finally out. The book is the first one of its kind to concentrate on the critical and hitherto unexplored area of pharmaceutical patents, especially in the Indian context. The book covers the general law of patents and has a special focus on pharmaceuticals. As a counsel who was involved in the Novartis-Gleevec cases (EMR, challenge to constitutional validity of section 3(d), rejection of patent application), I have tried to give a closer view on various aspects of the case. The book covers opposition proceedings in great detail (over 60 pages of commentary). There is also a separate chapter on exclusive marketing rights.

I have started a blog for the book with the hope that readers will give contribute to the development of this book. I hope to provide timely updates to the book, citing relevant paragraph numbers, on this blog. You may subscribe to the updates by entering your email id here.

Anyone who will be interested in reviewing my book may write to me here.

Read the book’s introduction here.

Read the detailed table of contents here.

Read about the book and author here.

Download order form here.

Bibliographic details: ISBN 978 81 8083 150 8. Price Rs 1595. Hardback, xliv + 1161 pages. Rupture factor: not critical.