EXCLUSIVE MARKETING RIGHTS

&MAIL-BOX APPLICATIONS

BYManish Kumar Prusty

T. Harish

Origin• Dunkel Draft of WTO- Countries not offering

patents - 1st Jan 1995- provision for pipeline system

– accept patent applications (‘mailbox provision) –

grant EMR

• Article 65.4 – TRIPS – Developing Countries –

Introduce – PPR – 10yrs - 2005

• Provide pipeline protection – to bridge gap

TRIPs and the adoption of EMR• TRIPs came into force as per first amendment of Indian Patents

Act (1970) in 1999.

• Section 5(2) provided for mailbox provision

• Chapter IVA introduced EMR with 5yr validity

• EMR precedes a patent.

• Conditions to satisfy for grant of EMR Invention to be filed in ‘Convention country’ after 1.1.1995 and patent be

issued Invention to be filed in India after 1.1.1995 and patent be issued for the same & Marketing approval is obtained from appropriate authority - IPO, CGPDTM

EMR Claim• Grant of EMR did not guarantee grant of patent

• EMR - claimed for any invention – related to drug for

medicinal or agro purpose – after 1.1.2005

• EMR cannot be claimed for inventions based on traditional

system of medicine.

• The applicant has the exclusive right to sell or distribute the

product

Mail-box

‘Mail-box’ provision implies that inventors be allowed to file patent

applications for pharmaceuticals and agricultural chemicals from 1

January 1995, even though the decision on whether or not to grant any

patent itself need not be taken until the end of the transition period

The date of filing is significant, which is why the mailbox provisions

were set up

It is used for assessing whether the application meets the criteria for

patenting, including novelty (“newness”)

These applications are filed under section 5(2) of the Indian Patents Act

The Mail-box system Product patent application

Applications stored separately (with allotted filing date, serial number

& title)

Are only examined after the amendment of Indian Patent Act of 1970

Priority is given in granting patents –product patent regime

Applications

Source: The Financial Express, March 21 2005

•Since, 20th May 2003, India has adopted a three-phase system of patenting. In the

first phase anybody can file an application. The second phase involves the eighteen-

month publication from the date of filing the application or the priority date. All

mailbox applications qualify for eighteen months publication. The mailbox

applications have been published by the Indian Patents Office in the ‘Patent

Journal’, a public document, available in printed and electronic formats.

•There are 7100 applications and

nearly 80% are foreign applications

• Only a minority of these relate to products patents, while

the rest relate to process patents, different forms of an

already known product, combinations of already known

drugs, different use or dosage patent applications, and

different drug deliver forms

Product Patent

Madras High Court vs Novartis A.G.• Novartis A.G., filed a patent application for Glivec in 1998 and was

granted 1st ever EMR in the country during November 2003 by CGPDTM

• Novartis then filed infringement suits at Bombay High Court – got

injunction orders in Jan 2004 against 5 generic companies against

manufacturing, selling, distributing or exporting the drug.

• After the injunction, the price of the drug shot up from 10000/- to

120000/-,whereas Indian counterparts were selling @ 8000/-

• Generic manufacturers such as Cipla & Ranbaxy filed a representation

under IPA 1970, Section 3(d) against Novartis.

• In 2006, Chennai Patent Controller rejected Novartis Patent for Glivec saying that

the application was insufficiently innovative - Sec 3(d)

• Novartis challenges provision –Sec 3(d)- Indian Patents Act- which denies patents

for minor changes in known drugs – allowing cheaper drugs to be made available

• Indian Patent law allows provision for making affordable drugs, especially

antiretroviral.

• MSF – argued – this provision would affect access to medicines by poor – like AIDS

patients who depended on less expensive, good quality drugs made in India.

• Madras High Court rejected the challenge on 06.08.2007

made by Novartis on a provision in IPA sec 3(d).