When Words Kill

The right to appeal of a patent applicant whose application is rejected persuant to a pre-grant opposition has been illusory at best. For a legal mind, it is unthinkable to envisage a situation where the first order becomes the final order. My article "How to destroy an invention - the patent office way" appeared in DNA Newspaper today. The same can be read in full at The Vanishing Point.

Neither Here Nor There

Patent Agents are a unique breed. They are expected to know something about both law and science. As many gear up to take the patent agent examination on 23rd January 2010, here is a little piece titled "The Curious Case of Patent Agents" which appeared in today's The Hindu. The article raises certain questions on the current system of selecting patent agents based on a two paper examination followed by viva-voce. The full article can be read at The Vanishing Point.

Talk on Patents, Traditional Knowledge and the Pharmaceutical Industry

Graham Dutfield, Professor at the University of Leeds will be speaking at the Madras Law College (adjacent to Madras High Court) on "Patents, Traditional Knowledge and the Pharmaceutical Industry" on Thursday, 21st January, 2010 at 10:00 am. Those interested can assemble at the Law College campus by 9:45 am. I hope to be there too.

Pharma Patents is Moving to 'The Vanishing Point'

Pharma Patents blog is changing for the better. We are moving to a new blog, The Vanishing Point, a place like the point in perspective drawing where parallels appear to meet. The Vanishing Point Blog discusses issues at the intersection of law and technology. This will give us the room to discuss issues beyond patents and pharmaceuticals which affect technology-based enterprises. Some of the popular posts of pharma patents have been re-posted there. Please subscribe to The Vanishing Point here and continue to get email updates on pharmaceutical patents, law and technology issues and much more.

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.

Patents and Medical Tourism

THE ISSUES SURROUNDING the Erlotinib patent present an ideal illustration of the complexities that embrangle patent law. 'Public health', 'public interest', 'access to life-saving medicines', 'compulsory licences' are some of the issues that have cropped up in what should have otherwise been a run-of-the-mill patent infringement case. And the fact that the consequences which result from the case are 'far-reaching' needs no further testimony than the proposed plan to obtain an involuntary licence for export to Nepal. The sale of the drug in Nepal may lead to interesting economic consequences which I have discussed in a short piece which appeared in the FICCI's Spotlight magazine. My article titled "Patents and Medical Tourism - How Compulsory Licences can Trigger Travel Seeking Affordable Health Solutions" appeared in the Guest Column at page 3 in the March Issue. The same can be read here.

Roche v Cipla - Delhi High Court Order

THE DELHI HIGH COURT order in the Roche-Cipla patent infringement case has been posted in http://indianpatentoppositions.blogspot.com/ in which I am a co-blogger. The decision can be found here and here.

Courts' Approach in Granting Interim Injunctions

THE APPROACH FOLLOWED by the courts in granting or refusing interim injunctions has not been a consistent one, especially when the matter pertains to 'heavy' intellectual property cases, like the ones involving patents. That new technology can be mind-boggling seems to have bothered the judiciary which now spends considerable time (at the expense of other pending matters) hearing these heavy matters even at the interim stage. Such exclusive attention may be good for the litigants whose get undivided attention of the court in matters where their business interests are at stake. But from a systemic level, it portrays a sad state of affairs. My article in today's The Hindu Business Line brings forth the problems we will face if we follow the traditional approach of deciding a prima facie case, balance of convenience and irreparable hardship (the three elements to be satisfied for the grant of an interim injunction) and proposes a more efficient, equitable and time-saving approach in granting injunction. The article is available here.

Patent Office Releases New Draft Manual

THE PATENT OFFICE has released the latest (2008) version of its draft manual for patent practice and procedure. The same is available here. One can see that it is a larger (368 pages in pdf format) and improved version of the earlier one with a good amount of detail on the practice followed by the Patent Office. Here's what the Patent Office has to say on "efficacy":

4.5.3 The examiner makes comparison with regard to properties or enhancement of efficacy between the known substance and the new form of known substance. In case the new form is further converted into another new form, the comparison is made between the already existing form and another new form but not between the base compound and another new form.

4.5.4 The comparison with regard to properties or enhancement of efficacy is required to be made at the time of date of filing of the application or priority date if the application is claiming the priority of any earlier application but not at the stage of subsequent development.

4.5.5 The efficacy need not be quantified in terms of numerical value to determine whether the product is efficacious because it is not possible to have a standard numerical value for efficacy for all products including pharmaceutical products.

Like any effort, there is scope for improvement and the good thing is that the Patent Office believes so. Please send your comments to the Patent Office on any suggestion and improvements by 25 March 2008. It is a good effort and your participation will certainly make things better.

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.