Injunction granted even when the Patent was under challenge

Pfizer Inc. filed a suit for permanent injunction restraining infringement of Indian patent no. IN209250 (which covers and claims the commercial product Sunitinib) and IN268331 (which covers the claims the commercial product Tigecycline) against Nagesh Palepu and others. The Defendants list Tigecycline and Sunitinib on their website in their list of pipeline products.

The Defendant argued that the patent is under credible challenge as two post grant oppositions and a revocation are pending in respect of the Patent and that the registration of the patent do not lead to presumption of validity. The Court did not agree with the Defendant and held that if the registration of a patent is not a proof of its validity, it is certainly not a proof to its invalidity. The Court granted a preliminary injunction holding that the balance conveniences is in favour of the plaintiff and if the injunction is not granted, it will suffer irreparable lose and injury.

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Monsanto Technology’s patent for BT cotton held not patentable

The Delhi High Court has dismissed Monsanto Technology’s patent for BT cotton and the claims of the Patent have been held to be not patentable under section 3(j) of the Act. Delhi High court also dismissed Monsanto’s plea to enforce said patent partially allowing the counter-claims of Indian seed companies – Nuziveedu Seeds Ltd, Prabhat Agri Biotech Ltd and Pravardhan Seeds Private Ltd.

Stay tuned for a detailed analysis of the order

A tilt observed towards simplifying Form 27

The Stakeholder Meeting in relation to the issue of working statements was held on April 6, 2018.  The meeting was presided by the Controller General, Mr. O.P. Gupta who was ably assisted by Dr. K.S. Kardam, Mr. B.P. Singh and Dr. Usha Rao. Anand and Anand was represented by Ms. Archana Shanker.

  1. The CG clarified the mandate of the stakeholder meeting which was “revision of Form 27” within the framework of Section 146(2) and Section 122. The meeting was well represented by IP law firms, SME, FICCI, FICPI, Academicians, NGO and industry.
  2. While there were suggestions with regard to having separate form 27 for pharma and non-Pharma patents, majority of the stakeholders were of the view that filing of form 27 is onerous and the consequences for non-compliance is a big deterrent for not filing patents in India.
  3. It was also discussed that From 27 moves on the assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
  4. Several members of the ICT / automobile industry indicated that it was hard and impossible to give this information requested in Form 27 for several reasons such as there is an assumption that every product can be mapped to a patent and the cost /quantum can easily be determined.
  5. Anand and Anand made the following recommendations and also submitted Revised Form-27:
    • That the discrepancies in Form 27 should be removed;
    • A simple format should be prescribed without compromising the requirements prescribed in the law;
    • Introduction of IPC classification so as to analyse the working statements (industry wise) and use is as a tool to clear bottlenecks if any and make recommendations to the government;
    • Confidential information should not be requested and there should be a provision to keep important business information confidential which can be produced on demand under the terms of confidentiality;
    • As there is a difficultly in accurately determining the value of a patented invention that is incorporated into a product or apportioning a value to a patent incorporated into a product that is covered by multiple patents, the requirement of providing the quantum and price be done away with;
    • Expressions such as “quantum and value”, “whether public requirement has been met partially, adequately or to the fullest extent” be deleted as these are all subjective test and the patentees are under no obligation to carry out such an analysis for the purpose of form 27;
    • ‘Reasonable price’ is an ambiguous term and therefore should be deleted. What might be reasonable for an innovator company might not be considered as being reasonable for another company.  Also over the years, as technology evolves, the value of products drop even though the said product might still be covered by said patent(s);
    • There should be an option of filing one form 27 for a cluster of patents;
    • Disclosure of name of licensees should not be mandatory as there are comprehensive/worldwide license agreements including cross license agreements and it may not be possible to provide detailed information as currently required under Form 27.

Request for withdrawal of post-grant opposition not allowed

A patent granted in favor of M/s J. C. Bamford Excavators Ltd. has been revoked by Deputy Controller of patents and Design, Mr. Naveen Mathur in a post grant opposition on the grounds of non-compliance of Section 8 of the Indian Patents Act. The revocation is based on only the formal ground of section 8 and the controller has held the patent to be not only novel but also inventive.

The controller held that the applicant has failed to inform the controller about the Australian application and the Form 3 filed in December 2011 was filed beyond the prescribed period and thus section 8(1) of the Patents Act and the rules have not been complied with.

An interesting fact to note about the decision is that, the same is (1) based only on the pleadings of the parties and (2) has come after the Opponent withdrew the post-grant opposition in view of settlement between parties. The opponent in fact did not attend the hearing appointed in respect of the opposition for final arguments.

A hearing was fixed in respect of the opposition on 07/11/2017. In response to this the opponent sent a letter apprising the controller that there is a decision by the Hon’ble Delhi High Court regarding a pending infringement suit between the parties wherein the parties have come to a settlement. The Patentee attended the hearing but did not argue the matter on merits and only submitted the said Delhi High Court Order.

The controller held that he has been kept in dark and material facts regarding the suit were kept in hiding by both the applicant and the opponent. Further, the Delhi High court order only take cognizance of the settlement terms agreed upon by both the parties regarding the infringement and there is no provision to withdraw a post grant opposition under the Indian Patents Act. The Controller therefore proceeded with deciding the Opposition on merits even after settlement between the parties.

A cost under section 77 of the Patents Act has also been imposed on both the parties for not keeping the controller informed regarding the suit.

Video Conferencing- A Welcome Change initiated by the IPO

Change is the only constant thing and recently, based on the comments provided by the stakeholders, the process of holding hearings saw a welcome move in the form of installation of video conference facility at the Patent office and at the agent’s respective offices which will readily bring down the time and energy spent in travelling to the patent office.

IPO STAKEHOLDERS MEETING – WORKING OF PATENTS

The Indian patent office is holding a stakeholders consultation meeting regarding issues relating to the annual statement of working of Patents under section 146 of the Indian Patents Act on 6th April 2018 at New Delhi.

Prior to the meeting the stakeholders were asked to provide their comments on the issues relating to working of patents. The comments received from various stakeholders (including Anand and Anand) have been published by the Indian Patent Office. 

Stay tuned for more update!

 

 

 

Startups status clarified; Rule 2 of Patent Rules amended

By its Gazette notification dated December 1, 2017, the Central Government amended sub rule (fb) under rule 2 of the Patent Rules, 2003 and clarified that ‘startup’ is any entity recognised as a start up by the Startup India Initiative, and in case of a foreign entity, the criteria of startup would qualify the entity to be

  1. fulfilling the criteria for turnover (as per the reference rates of foreign currency of RBI) and,
  2. period of incorporation/registration as per Startup India initiative (and submitting declaration in relation thereto).