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Narendra Bhatta HL, Founder & CEO of Intellocopia IP Services (www.ipcopia.com) presented this talk on January 29th 2013 at Global IP Convention 2013 (http://iprconference.com/)
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NARENDRA BHATTA HLFOUNDER & CEO
INDIAN PATENTOLOGY A SAGA OF
EVOLUTION, COMPLIANCE AND HARMONISATION
GIPC 2013, 23-30th January 2013
2ITAG-IPCONF/BHATTA/IPCOPIA04/08/2023
04/08/2023 ITAG-IPCONF/BHATTA/IPCOPIA 3
Harmonization
evolutioncompliance
INDIAN PATENTOLOGY
04/08/2023 ITAG-IPCONF/BHATTA/IPCOPIA 4
Harmonization
evolution
compliance
INDIAN PATENTOLOGY
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PREAMBLE OF INDIAN CONSTITUTION:
WE, THE PEOPLE OF INDIA, having solemnly resolved to constitute India into a
SOVEREIGN SOCIALIST SECULAR DEMOCRATIC REPUBLIC
FIVE YEAR PLAN OBJECTIVES:to provide for the basic infrastructural facilities like education for all, safe drinking water, primary health care, transport, energy
04/08/2023 ITAG-IPCONF/BHATTA/IPCOPIA 6
THE GREAT INDIAN BALANCING ACT
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• First Legislation in India was Act XV of 1859.• Enforced by the British Empire
on all the states ruled by the British, not entertained by the Princely States.
• The Act of 1859 provided protection for invention only and not for designs.
• The Indian Patents and Designs Act of 1911.
• Justice Rajagopala Ayyangar Committee Report of 1957 (Restrictive Patent Regime)
EVOLUTION
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EVOLUTION
• The Patents Act, 1970• Designs Act of 2000• Patent Amendment Act 2005
(Amended in order to be compliant with the TRIPS Agreement ratified by India in 1995)–Patent granted for both
product and process–Term of Patent extended to
20yrs– Incorporation of Section
3d
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EVOLUTION
1 2 3 4 5 6 7 8 9 101856 1859
18721883 1888
1911
1972
1999 2002 2005
Evolution of Indian Patent Act
year of amendment
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PATENTS:
•The Patent Office Increased its
workforce through massive
appointment of Examiners.
•IPAIRS 2.0- An Improved Search
Engine for Patents released
•Comprehensive E-filing of All
Patent Forms online ENABLED
EVOLUTION
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•CGPDTM published draft treaty
on Industrial Design Law
•Publication of Patent Applications
classified as• Ayurvedic;•Herbal;• Food;• Pharmaceuticals; and • Traditional Knowledge
EVOLUTION
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•Compulsory License issued,
to NATCO, in respect of Patent
for anti-cancer drug ‘Sorafenib’
granted to Bayer.
•Revocation of Patent no.
252093, Granted to Avesthagen,
related to ‘Ayurvedic
composition’ by Central
Government under S.66 of the
India Patent Act.
EVOLUTION
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•Publication of Processing and
Examination Guidelines in
respect of applications related to:
• Traditional knowledge and
Biological Material;
• Biotech Applications
EVOLUTION
FILING TRENDS OF VARIOUS IPR IN INDIA
2006-07 2007-08 2008-09 2009-10 2010-11
28940
3521836812
34287
3940014119
11751 10296
6069
112087539
15316 16061
6168
7509
TREND OF PATENTS
FILED EXAMINED REGISTERED/GRANTED
FILING TRENDS OF VARIOUS IPR IN INDIA
2006-07 2007-08 2008-09 2009-10 2010-11
55216402 6557 6092
7589
4976
6183 6446 62666277
4250
4928 4772 6025
9206
DESIGN TREND
DESIGNS FILED DESIGNS EXAMINEDDESIGNS REGISTERED/GRANTED
EVOLUTION
sustained
staggered
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complianceINDIAN PATENTOLOGY
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Article 27 of the TRIPS Agreement elaborates the scope of patentable subject matter as follows:1. patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.
compliance
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2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
compliance
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3. Members may also exclude from patentability: •diagnostic, therapeutic and surgical methods for the treatment of humans or animals;•plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.
compliance
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Section 3 :(a), (b), (c), (h), (i), (j) – as per TRIPS
(k), (m)- compliant with EP
compliance
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1.Article 7 states:
’’The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights of obligations.”
compliance
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WORKING OF PATENTS S146(2)
GROUNDS FOR OPPOSITION S25(1), S25(2)
REVOCATION OF PATENT IN PUBLIC INTEREST S66.
compliance
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Article 8 states:
’’1. Members may, in formulating or amending their laws and regulations, adopt measures, necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio economic and technological development, provided that such measures are consistent with the provisions of this Agreement.’’
compliance
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(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which, in effect, is traditional knowledge of which is an aggregation or duplication of known properties of additionally known component or components.
compliance
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Section 3d:
(d) 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 and 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
compliance
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SAMPLE LIST OF PATENTS GRANTED BY
PATENT OFFICE WHICH ARE
1.NEW USE OF A KNOWN SUBSTANCE
2.COMBINATION
SOURCE: www.nipoonline.org/Section-report.doc
compliance
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NEW USE OF A KNOWN SUBSTANCE:
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COMBINATION:
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compliance
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Harmonization
INDIAN PATENTOLOG
Y
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CGPDTM allowed third party observation in respect of published PCT International Applications, as per WIPO guidelines.
Classification of Indian Patent Applications based on IPC (International Patent Classification)
Formatting of Patent Application in line with PCT format
Harmonization
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DECISIONS OF CONTROLLER, IPAB BASED ON INTERNATIONAL PRECEDENCES
Harmonization
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1. Decision : (MERCK) Schering Corp’s Patent Revoked in Cipla’s Post Grant Opposition by Chennai Patent Office – P.No. 246328“An aerosol suspension formulation for inhalation”
Parties: Schering Corp v. Cipla LimitedController: T.V Madhusudan
Grounds for revocation :1. Lack of inventive step,Obvious S.25(2)(e)2. Insufficient disclosure S.25(2)(g)TEST ADOPTED: TSM (TEACHING SUGGESTION, MOTIVATION)
Harmonization
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2. Decision :Patent no. 209251 owned by Sugen Inc. & Pharmacia & Up John co.(Later acquired Pfizer in 2002-3) for “sunitinib” was revoked on 24th Sept2012 following a post grant opposition by Cipla.Parties: Pfizer v. Cipla LimitedController: Nilanjana Mukherjee
Grounds for revocation :1. Lack of inventive step & Obvious to a person skilled in the art S.2(1)(j)IPO looked at multiple documents to highlight obviousness.Opposition board relied on Baxter Travenol Labs (Fed. Cir 1991) to establish ‘element of surprise’ .
Harmonization
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3. Decision: Patent no. 198952 owned by F.Hoffman La-Roche AG for “pegasys” wasrevoked on 2nd November 2012 following an appeal to IPAB by SankalpaRehabilitation Trust.
Parties: Sankalpa v. F.Hoffman La-Roche AGBoard: JUSTICE PRABHA SRIDEVAN
Grounds for revocation :1. Obvious to a person skilled in the art S.2(1)(j) and non-patentable u/s 3(d)US and UK judgements relied upon for test of obviousness. United States Court of Appeals for the Federal Circuit in Pfizer, Inc. v. Apotex, Inc and KSR v. Teleflex
Harmonization
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Harmonization
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Harmonization
evolutioncompliance
INDIAN PATENTOLOGY
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WHO ALL NEEDS TO EVOLVECOMPLY AND HARMONISE
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IP Rights
Investment Banker/VC
Lender Banker/
Mortgage
Customs Officials
HR Managers
Judge
Advocates/IP Attorneys
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IP
SENATORS
NGOS
COMMON PUBLIC
MEDIA
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ABOUT US:
The word INTELLOCOPIA stands for abundance of intellect. Intellocopia IP Services is a full service establishment providing one stop solution from acquisition of IP to enforcement of IP. Intellocopia has a team of engineers and scientists with excellent industrial experience and adequate law training. Intellocopia focuses on start-ups and SMEs. Key strengths: develop IP strategy specific to a company, sensitize workforce at all levels on nuances in IP Protection; enable in house skill development and provide cost effective solutions.
Our belief is: Protected Intellect is Power,
Protected Intellect is Wealth.
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SERVICES PROVIDED:
Development of IP Policies
IP Analysis and Review
Patent Drafting and Prosecution
Trademark , Copyright and Design
Registration.
Customized Training Sessions
Technology Transfer and Licensing
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Disclaimer
VIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THE AUTHOR –
IF YOU RELY ON THE ABOVE VIEWS WITHOUT A PERSONALIZED OPINION, AND IF YOU HAVE BENEFITS, YOU ARE FREE KEEP IT FOR YOURSELF WITHOUT EVEN AN ACKNOWLEDGEMENT !!
IF YOU RELY ON THE ABOVE VIEWS, SOME OF IT MAY BE WRONG AND SUFFER LOSES AND YOU SUE ME FOR NEGLIGENCE, I RESERVE not only MY RIGHTS TO RECOVER COSTS(!) but also raise new bill on you for relying upon these views!!
This presentation is primary meant for instructional use. Not for Publication. The ownership of the TM & copyrighted material (especially cartoons) appearing in the presentation is acknowledged. Thanks to the Cartoonists, a dull presentation receives an interesting touch.
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ACKNOWLEDGEMENTS:
Prof. R. Muralidharan- Mentor
Smitha HS- Associate
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CONTACT US AT
Corporate Off:-29, ‘SHESHASRI’, I ‘C’ Cross, Sn Layout, Basaveswarnagar, Bangalore-
560079Office at:-
890/4/5 , 3rd A Main, D Block, Rajajinagar II Stage, Bangalore -560010
E-mail: [email protected] ; Landline: 08023321978; Cell: +919448085810
ONLINE AND SOCIAL MEDIA CONTACT:
URL: WWW.IPCOPIA.COMFACEBOOK: http://www.facebook.com/intellocopia TWITTER: http://www.twitter.com/@ipcopia BLOG: http://ipcopia.wordpress.com