BYNISHANT

KEWALRAMANI

RECENT IP TRENDS

AGENDA

Patent prosecution history

Speaking Order

Patent Application- Abandonment

v. Rejection

Patent Law- Linkage with

Dilution in Trademarks

other laws

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Prosecution History

Prosecution History All communication that takes place between the

and the patent office.applicant

Traditionally this communication was treated by thepatent office as confidential.

Complete Specifications of only granted patents wereavailable.

ProsecutionRTI-

History (cont…) Right to Information applications versus confidentiality

Controller of Patents, Designs & Trademarks issued anoffice instruction on April 15, 2010 to supply upon request all correspondence between the applicant and patent office.

Rationale- helpful for pre grant opposition

Prosecution History Estoppel(PHE)

Originated from the US

If an applicant narrows the claims during examination he cannot claim infringement for the pre-amendment patent claims

No case regarding applicability of PHE in India- law notclear on the point.

Circular of April 15, 2010- may lead India in the samedirection.

Speaking Order Patent application for a molecule used in the

of diabetestreatment

First Examination Report “…The molecule lacks novelty and inventive step

because it forms part of a publication in a text thatdiscloses a herbal extract for diabetes treatment.”

Applicant responds by giving a detailed explanation ofdifferences between the extract disclosed in the text and the molecule.

Applicant further states that a hearing must be givenbefore making an adverse decision.

Second Examination Report- “…The molecule lacks novelty and inventive step

because it forms part of a publication in a text thatdiscloses a herbal extract for diabetes treatment.”

First Examination Report “…The molecule lacks novelty and inventive step

because it forms part of a publication in a text thatdiscloses a herbal extract for diabetes treatment.”

Second Examination Report- “…The molecule lacks novelty and inventive step

because it forms part of a publication in a text thatdiscloses a herbal extract for diabetes treatment.”

Not a speaking Order

Hearing must be given- adherence to principles ofnatural justice

Magical Sentence- “Kindly provide hearing in case ofadverse decision on the application.”

Valencia CTT v. Union of India (decided on 26th Feb 2010)

Patent Process

18 months

6 months

12 months

Putting app in order for grant

FER

Request forExamination

Publication

Filing

AbandonmentAbandonment

v. Refusal Application considered abandoned

complied with

Cannot be appealed

if all requirements not

Refusal

General power of theCan be appealed

Controller to Refuse

Patent Office Practice- Application abandoned whether reply to examination

report filed or not.

Ericsson v. UOI (Decided on March 11, 2010)

29th July 2005- Ericsson filed national phase patent application

8th October 2007- First Examination report issued and10thdefects pointed out which was replied on Dec. 2007

25th July 2008- Another examination report sent by controller restating points already mentioned in first

22ndinformation report. Replied on Sept 2008

10th October 2008- Patent office wrote a letter to thepetitioner stating that despite response of the petitioner on22nd September 2008, the specification of the petitioner was still defective on various grounds and the application was deemed to be abandoned under section 21(1).

Delhi High Court Held:

Abandonment-When reply to examination report is not filed at all.

Refusal-If reply is filed then the application cannot be abandoned

and has to be refused.

Patent Law and Linkage Bayer Corporation v. Union of India Decided on 9th Feb 2010

CIPLA filed for a drug license for the„Soranib‟.

generic drug

Bayer corporation sent a letter to the drug controllerrequesting him not to grant approval as Bayer holds patent on „Sorafenib Tosylate‟ and Soranib is a substitute of their patented drug.

Drug Controller granted the drug license.

a

Bayer filed a petition in the Delhi High Court against theapproval granted by the Drug Controller.

Bayer‟s contention- If drug controller had previousknowledge of potential patent violation he should notgrant approval.

Decision- Drug Controller doesn‟t have to travel beyondthe scope of Drugs & Cosmetics Act and rules. Shouldn‟t refuse license on the pretext of possible violation of a patent.

DilutionInfringement of trademark

Similarity of marksSimilarity of goods and services

Likelihood of confusion

Dilution

Well Known markJunior mark similar to well known

Dissimilar goods and servicesmark

Likelihood of Dilution? (Traditional approach in India)

ITC v. Philip Morris Linkage or mentalassociation between two marks should be established.

(decidedon 7th Jan, 2010)

Actual Dilution shouldbe proved.

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