Origiin Newsletter April 2013

7/28/2019 Origiin Newsletter April 2013

1/8

All rights reserved (c) Origiin IP Solutions LLP 2013

Apatent is a form ofintellectual property,

consisting of a set of

exclusive rights granted

x

this issue

tentability of Micro-organisms ............P.1

tent Talk: Dr S Singh ...........................P.4

teresting patent of the month............P.5

News Bulletin ...........................P.6

ews from Indian Patent Office ...............P.7

dian Patent Agent Examination ........... P.7

A monthly

Newsletter

on issues

relating to

Intellectual

Property

Rights

S U E ( V o l u m e )

MONTH

Apri l

YEAR

2013

3 (2) Origiin Newsletter

Patentability of Micro-organisms

by a Government to an inventor or its

assignee for a limited period of time in

exchange for the public disclosure of an

invention. In order to get patent rights,

the invention must fulfil three

fundamental statutory conditions of

patentability, such as, novelty,

inventiveness and industrialapplicability. Often, subject matter of a

patent to be claimed is either a product

or a process to prepare a product or

both. However, more precisely, as per

Indian Patents Act, 1970, the invention

means a new product or process

involving an inventive step and capable

of industrial application. Further, the

inventive step means a feature of an

invention that involves technical

advance as compared to the existing

knowledge or having economic

significance or both and that makes the

Contact us

#35, First Floor

First Main, Vysya Bank Colony

BTM 2nd Stage

Bangalore-560076

Email: [email protected]

ebsitesww.origiin.com

ww.origiinipa.com

ogsp://origiinipae.blogspot.com

p://inventorshub.blogspot.com

itorsita Kalia

hira A

Dr. Swaranjit Singh Cameotra

Deputy Director in Institute of Microbial

Technology,Chandigarh


Bindu Sharma

Founder and CEO

Origiin IP Solutions LLP, Bangalore


invention non-obvious to a person skilled in

the art.

The micro organisms as a subject matter of

a patent have always been fascinating,

primarily for their being a living form.

Conventionally a micro-organism is

considered as an organism that is

microscopic or too small to be seen by the

naked human eye though there are various

algae and fungi that are visible by naked

eye. Micro-organisms include bacteria,

fungi, virus, protists and other prokaryotesas well as some microscopic plants

(phytoplankton) and animals (zooplankton).

In order to understand patentability of

micro organism, it is important to know that

Article 27(3) (b) of TRIPS Agreement, that

allows member states to exclude from

patentability plants and animals, other

than micro-organisms, and essentially

biological processes for the production ofplants or animals other than non-biological

and microbiological processes. This clearly

indicates that TRIPS makes it obligatory for

No amount of experimentation

n ever prove me right; a

ngle experiment can prove me

rong.

bert Einstein
http://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/authors/a/albert_einstein.htmlhttp://www.brainyquote.com/quotes/authors/a/albert_einstein.htmlhttp://www.brainyquote.com/quotes/authors/a/albert_einstein.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.htmlhttp://www.brainyquote.com/quotes/quotes/a/alberteins100017.html


2/8


all its member states to extend patent protection for

micro-organisms, non-biological, and microbiological

processes. However, the plant and animals have clearly

been indicated to be not patentable.

As far as Indian patent laws are concerned, in order to be

compliant with TRIPS agreement, the third amendment

to the Patents Act, 1970 was introduced through the

Patents (Amendment) Ordinance, 2004 w.e.f. 1st

January, 2005 that extended product patents to all fields

of technology including food, drugs, chemicals and micro

organisms provided such inventions fulfil statutory

conditions of patentability. It is worth noting here that

micro organism that exists in nature is products of nature

and mere identification of micro organisms cannot

amount to invention but a discovery which is not

patentable. Therefore, a naturally occurring micro

organism fails to fulfil the critical conditions of

patentability, i.e., novelty and inventive step.

What differentiates an invention from a discovery is

human intervention, thereby, the most critical issueregarding patentability of micro organisms is assessment

of human intervention that draws line between

discovery and invention. However, Genetically Modified

Micro organisms (GEMs), creation of which involves

human effort, resulting in enhancement of its known

efficacies compared to state of the art, are patentable.

Section 3 (j) of Indian patent act 1970 states that micro

organisms are patentable but it doesnt categorically

mention that only GEMs are patentable. However,

relating patentability of micro organism to the statutory

definition of an invention depicts that micro organism

shall be a new product that involves an inventive step

and is capable of industrial application.

The most discussed and landmark case on micro

organism is Diamond vs Chakrabarty. A genetic engineer

Ananda Mohan Chakrabarty, working for General

Electric, developed a bacterium (derived from the

Pseudomonas genus) that is capable of breaking down

crude oil and hence was used in treating oil spills.

Chakrabarty filed for a patent for the bacterium in the

United States. There were three main claims in the

patent specification that related to inoculums, bacterium

itself and the process to prepare the genetically modified

bacterium. Examiner had no problems granting rights

over claims related to inoculums and the process but as

the law dictated that living things were not patentable,

rights were refused for the bacterium as a product. The

Board of Patent Appeals and Interferences agreed with

the original decision of patent examiner.

Drawing line between discovery and

invention is extremely critical to assess

patentability in case of micro organisms.

Extent of human intervention is one of the

most critical factors to determine

patentability.

However, the United States Court of Customs and Patent

Appeals overturned the case in Chakrabarty's favor,

stating that "the fact that micro organisms are alive is

without legal significance for purposes of the patent

law." Sidney A. Diamond, Commissioner of Patents and

Trademarks, appealed to the Supreme Court. The

Supreme Court case was argued on March 17, 1980 and

decided on June 16, 1980.

Drawing line between discovery and invention is

extremely critical to assess patentability in case of micro

organisms. Extent of human intervention is one of the

most critical factors to determine patentability of

microorganisms. In Dimminaco A.G v. Controller of

Patents & Designs, the issue was the patenting of the

process for preparation of infectious bursitis vaccine,

which was invented for protecting poultry against

infectious bursitis. The Controller held that the process of

separation of the vaccine which has living entity cannot

2


3/8


under Article-7 of the Budapest Treaty and accessibility of

that micro-organism from the depositories. As per section

10(4) (d) (ii) of the Indian Patents Act, 1970, the micro-

organism if not being described fully and is not available to

public, it to be deposited before the IDA under the

Budapest Treaty before filing of application in India. All the

characteristics of the micro-organisms and details of

depositary institutions along with accession number shall be

mentioned in specification for correctly identifying the

same.

Due to short life cycle, rapid growth, easy to culture, micro

organisms have been used widely in industry today for

producing high value compounds such as enzymes,

hormones, polymers, organic acids etc. Various industries

like brewery, dairy products are primarily based on various

micro organisms. However, microbes are also well known

for their vital role in degradation of toxic compounds by

transforming them into less toxic forms. It is interesting to

note that more than half of the worlds oxygen is produced

by the activity of the micro-organisms. Many algae and

cyanobacterial strains produce and release oxygen in theatmosphere by means of oxygenic photosynthesis.

Thus, there is a changing trend in the research on the

microbial world around the globe and many more new ways

to use the power of the single celled micro-organisms will

come up in different fields like medicine, drugs, high value

compounds production and in removal of toxic pollutants

from the environment. In India, we have an IDA in IMTECH,

Chandigarh and good progress is made in the conservation

of microbial diversity. The IDA also has a Patent Depository

where the facility can be availed as per the norms.

In India there are two Hotspots of Biodiversity, the

Western Ghats and the seven states in the Indo-Burma

Region. Thus, it is all the more important to have a well

defined system for the conservation of the important

biodiversity. In Pune a culture collection and an IDA (MCC:

Microbial Culture Collection) has been set up so that the

rich and new microbial diversity that is isolated is properly

manufacture and hence not patentable. He also held that

since the vaccine contains living organism, it cannot be

patented. The court held that the matter involved is of a

new process of preparation of vaccine under specific

scientific conditions and the said vaccine is useful for

protecting poultry against contagious bursitis infection

and there is no statuary bar to accept a manner of

manufacture as a patentable even if the end products

contain living organism.

Figure 1: Essential requirements for patents on micro-

organisms

Apart from basic criteria of patentability, i.e., novelty,

inventiveness and industrial use, sufficiency of disclosure

of the invention is extremely important and the subject-

matter of the invention shall be described in a manner

sufficiently clear and complete to be carried out by the

person skilled in the art. In case of an invention, claiming

micro organism as a product, completely describing the

invention in the description to enable a person skilled in

the art to carry it out is usually impossible. This is why, in

the particular case of inventions involving micro-

organisms, where such micro organism is not available in

public, a deposition of such micro organism material has

been made necessary in the institute recognised by

Budapest Treaty.

In India, an essential requirement for filing an application

for patent wherein the invention is based on a

microorganism, deposition of microbial sample is

necessary in the International Depository Authorities

(Institute of Microbial Technology, Chandigarh) formed

3


4/8


4maintained. The strains are identified for supply to

users in academic institutes and industries. The MCC

was recognized by the World Intellectual Property

Organization (WIPO), Geneva, Switzerland as an

International Depository Authority (IDA) on April, 2011.

Setting up of two IDAs in India demonstrates that

conservation of microbial diversity isolated from

different environmental niches and its detailed study

for products and processes is a very important activity.

Further reading:

1. Indian Patents Act 19702. Manual of Indian Patent Office, 20083. Preservation of micro-organisms as deposits in

Patent Applications. Swaranjit Singh Cameotra.

BBRC 353(4): 849-850, 2007.

4. Can Microbes be patented? Swaranjit SinghCameotra. BBRC, Online November 2012.

Dr Swaranjit Singh is Deputy Director at Institute of Microbial Technology, Chandigarh.He is an active scientist who has made significant contributions in the field of

Environmental Biotechnology and Biosurfactant production. He is Adviser to the

Himachal Pradesh Government for starting Biotechnology, Environmental Science and

Microbiology in the colleges and Dental Colleges of the State. Consortium Member of the

ICAR NAIP Project- Development of non-destructive systems for evaluation of microbial

and physico-chemical quality parameters of mango. Organizing Committee Member of

many National/International Conferences. Currently in the Scientific Committee

constituted for the International Biotechnology Symposium - IBS 2009 to be held in Italy.

Origiin: Please tell us something about Budapest treaty. What is purpose of this treaty?

Dr Singh:The Budapest Treaty on the international recognition of the deposit of microorganisms for the purpose of

patent procedure. It recognizes International Depositary Authorities (IDA) for microorganism, sets out the minimum

standards for such collecting authorities, and also sets out the guidelines for the deposit of microorganisms. It

started on August 9, 1980. The treaty was amended on September 26, 1980. Budapest treaty is administered by the

World Intellectual Property Organization (WIPO).

The purpose of this treaty is to deposit the microorganism in order to satisfy the terms required for the patenting

the modified microbes/processes/products. Deposit of the biological material is needed only at one recognized

institution, and this deposit is acceptable and recognized in all the countries that follow the Budapest Treaty.

Origiin: As micro organisms are living organisms, are they patentable in India?

Dr Singh:The answer is no, in their native or original form. However, if the microbe is genetically modified it is

ready to be accepted as a Patent deposit, it may be patentable. Even though one has to patent a microbial process

or a product, the respective microbe has to be deposited in a Patent depository.

Origiin: What is the procedure of deposition of micro organism?

Dr Singh:The procedure for the deposition of cultures can be made in four categories;

PATENTALK: DR. SWARANJIT SINGH CAMEOTRA

On deposition of microbial samples at IMTECH Chandigarh


5/8


1. General Deposits: There is no fee for deposit of cultures in the general category. The details of the culture need to

fill in a culture data sheet.

2. Safe Deposits: These cultures are handled with confidentiality and are kept under security. Only the depositor has

access to these cultures. There is an annual fee for such a deposit. An agreement needs to be signed between the

depositor and the Collection.

3. Patent Deposits: These cultures are not listed in the catalogue / database. Since a depositor needs to declare

accession number in the patent application, the information about the culture is also in public domain. These cultures

are handled with confidentiality and kept under security and are given to the depositors or authorized persons as per

patent regulations. There is one time fee for such a deposit.

4. The Patent Deposits under the Budapest Treaty (IDA): One can deposit cultures under the Budapest Treaty (IDA)

for filing international patents or for filing patents in India.

Origiin: Is the applicant required to deposit samples in hand or there are other modes of delivery?

Dr Singh:After getting the go ahead signal from the Collection, the samples can be deposited by hand or through

Registered Post/Courier.

Origiin: How much time does it take to get accession number after microbial sample is submitted?

Dr Singh:About 4-6 weeks.

Origiin: What are the security requirements of a Patent depository?

Dr Singh:As the strains are of very high value, care must be taken that the strains are not misused. Only authorized

people can enter the Patent depository by punch cards/thumb impressions. The location is under strict electronic

surveillance with CCTV etc.

INTERESTING PATENT OF THE MONTH

Motorized ice cream cone

Patent number: US 5971829

Filing date: Mar 6, 1998

Issue date: Mar 30, 1993

Abstract: A novelty amusement eating receptacle for

supporting, rotating and sculpting a portion of ice cream or

similarly malleable food while it is being consumed

comprising: a hand-held housing, a cup rotatably supported

by the hand-held housing and adapted to receive and

contain a portion of ice cream or food product of similar

consistency, and a drive mechanism in the hand-held

housing for imparting rotation upon the cup and

rotationally feeding its contents against a person'soutstretched tongue


6/8


Main claim of the patent

1. A novelty amusement eating device for supporting,

containing, rotating and sculpting a food portion of

malleable consistency during consumption comprising:

a) a housing adapted to be grasped and supported by a

person's hand, said housing being substantially cone-

shaped simulating the appearance of a common edible

pastry cone;

b) a cup rotatable supported by said housing, said cup

being adapted to receive and contain a food portion of

substantially malleable consistency, said food portion

having a periphery or outer surface; and

c) a drive mechanism supported by said housing, said drive

mechanism including rotating means for imparting a rotary

motion upon said cup, said rotary motion providing feeding

means for rotationally feeding said periphery of said food

portion against a person's outstretched tongue.

IP NEWS BULLETIN

Supreme Court rejects patent for cancer drug

from pharma giant Novartis

The Supreme Court finally dismissed Swiss drugmaker

Novartis AG's attempt to win patent protection for its

cancer drug Glivec. This long awaited judgement from the

Supreme Court sets a benchmark for several intellectual

property disputes in India, where many patented drugs

are unaffordable for most of its billions of people, 40

percent of whom earn less than Rs. 70 a day.

Novartis had applied for a patent for the beta-crystalline

version of the drug, on the basis of increased safety due

to the modifications in the chemical entity. However, on

the basis of Section 3 (d) of the Indian Patent Act, it was

initially rejected by the Controller of Patents in 2006,

after hearing 5 pre-grant oppositions filed by various

generic pharmaceutical companies including Ranbaxy,

Cipla, Hetero and Cancer Patient Aid Association (CPAA).

Novartis filed an appeal with the Madras High Court

which subsequently transferred the appeal to the

Intellectual Property Appellate Board (IPAB). In 2009, the

IPAB upheld the rejection by the Controller and

thereafter, Novartis appealed directly to the Supreme

Court.

A bench of justices Aftab Alam and Ranjana Prakash Desai

dismissed the claim of the Swiss firm for getting exclusive rights for

manufacturing the cancer drug on the ground that a new

substance has been used in the medicine.

Section 3 (d) of Indian Patents Act states that inventions that are a

mere discovery of a new form of a known substance and do

not result in increased efficacy of that substance are notpatentable. This effectively means that if there is an old molecule

in a new substance you cannot patent it by making a minor

modification, and passing it off as a completely new invention. The

act reads as follows:

the mere discovery of a new form of a known substance which

does not result in the enhancement of the known efficacy of that

substance or the mere discovery of any new property or new use

for a known substance or of the mere use of a known process,

machine or apparatus unless such known process results in a new

product or employs at least one new reactant.

Micromax sued by Ericsson for Rs. 100 crore over

patent infringement

Micromax, an Indian handset manufacturer has been sued by

Ericsson on charges of patent infringement, asking for 100 crore

rupees in damages. The company also claims that it has been

negotiating with Micromax for about three years now and has

finally moved the Delhi High Court to seek legal remedy. The

disputed devices are Micromax' Ninja series, Funbook Talk and the

Canvas 2. Micromax is one of the most popular handset brands in

India and the company has recently churned out Android-based

smartphones like A110 Canvas 2 and A116 Canvas HD.

Apple Faces Siri Patent Lawsuit

Apple is facing a patent lawsuit in China over its Siri voice activated

service, after Shanghai Zhi Zhen Internet Technology filed a lawsuit

in Shanghai. The Chinese firm says that it filed its patent in 2004

and was granted it in 2006. Siri is man-machine interaction rather

than speech recognition, and that is based on the word chat robot

system xiaoi patented. Zhi Zhen filed a suit on June 21, 2012

seeking a declaration that patent infringement is taking place - it is

leaving the issue of damages to a later action. Apple has in turn

applied to have Xiaoi's patent invalidated


7/8


IMPORTANT NEWS FROM INDIAN

PATENT OFFICE MARCH 2013

Last date for PAE application extended

The last date for making online application for Patent

Agent Examination 2013 has further been extended upto

15th March 2013 (5:00PM) Notification. All other deadlines

will remain unaffected. In case of any technical

problem in accessing the service, kindly contact the system

administrator at [email protected] For any other query

kindly contact:[email protected]

Guidelines for biotech inventions

Controller General of Patents, Designs & Trade Markslaunches GUIDELINES FOR EXAMINATION OF

BIOTECHNOLOGY APPLICATIONS FOR PATENT.

One day session of patent specification drafting (including claims)

Origiin IP Academy announces one day session of basics of patent specification drafting including formulation of

claims. Exercises will be provided in the class for practice and tips to attempt specification drafting question in the

examination.

Duration: 5 hours (one day), Cost: 5,000 INR

Date: 12th

April 2013

Dictionary of Indian Patent Law authored by Bindu Sharma and Anita Kalia as well as assignments will be provided.

Kindly note that the purpose of this session is only to enable candidates understand basics of specification drafting to

attempt questions relating to drafting patent specifications or claims for Indian Patent Agent Examination. This is not

a comprehensive course to learn patent specification drafting.

Two days session for revision of important questions

This session will provide complete revision of previous year question papers, tips for viva, group discussions and

interactions, clarification of doubts and revision of important sections and rules.

Duration: 10 hours (two day), Cost: 8,000 INR

Date: 13th and 14th April 2013

Module III, Dictionary of Indian Patent Law authored by Bindu Sharma and Anita Kalia as well as assignments will

be provided.

For more info please mail [email protected] or call at9845693459.
mailto:[email protected]:[email protected]:[email protected]:[email protected]


8/8

Certificate Courses on Patent Search

Certificate Course onPatentability/Novelty search

Course Code: 1201

Patent filing is a tedious and expensive process and hence it is important to check patentability of

invention on the scale of Novelty, Non-obviousness and Industrial utility before filing the patent

application. During a patentability search, the invention is accessed and a report is produced on its

patentability, based on which the client can decide whether to file a patent or not.

Duration: 15 hr (contact class 8 hr, project 7 hr)

Time period: 1 month

Cost: 20,000 INR (all inclusive)

Number of Seats: 6-8

BATCH DATES FOR THE CLASS PROJECT

SUBMISSION

EXAMINATION DATE

Batch

P01

Theory classes will be held on

11th

(Saturday), 12th

May (Sunday) 2013

8th

June 2013 22nd

June (Saturday)

2013

Batch

P02

Theory classes will be held on

24th

(Saturday), 25th

Aug (Sunday) 2013

5th

October 2013 12th

October (Saturday)

2013

Certificate Course onFreedom to Operate Search

Course Code: 1202

Freedom-to-operate analysis or FTO analysis is used to determine whether a particular action, such

as testing or commercializing a product, can be done without infringing valid intellectual property

rights of others.

Duration: 25 hr (contact class 13 hr, project 12 hr)

Time period: 1 month

Cost: 33,000 INR (all inclusive)

Number of Seats: 6-8.

BATCH DATES FOR THE CLASS PROJECT

SUBMISSION

EXAMINATION DATE

Batch F01 Theory classes will be held on

25th

( Saturday), 26th

May (Sunday) 2013

13th

July 2013 20th

July (Saturday)

2013

Batch F02 Theory classes will be held on

7th

(Saturday), 8th

September (Sunday)

2013

26th Oct 2013 2nd Nov (Saturday) 2013

HOW TO REGISTER?: Download the registration form fromwww.origiinipa.comand send us the

filled form along with payment to register. For more info please mail [email protected]
http://www.origiinipa.com/http://www.origiinipa.com/http://www.origiinipa.com/http://www.origiinipa.com/

Documents

Origiin Newsletter April 2013