Patent granted for Prevnar13

Two pre-grant oppositions filed by Panacea Biotech and Medecins Sans Frontieres (MSF)have been dismissed and a patent has been granted in favour of Wyeth for Prevnar 13.

Stay tuned for detailed analysis of the order!

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Applicants can correct inadvertent errors by fixing them in time

The Petitioner sought quashing of the “deemed to be withdrawn” status of the application No. 5272/DELNP/2008 under section 11B and sought restoration of the said application and for proceeding further with the same. The Petitioner also sought direction to the respondents to correct the clerical/typographical error in the number of the Patent application in request for examination and other documents to read as 5272/DELNP/2008 instead of 6272/DELNP/2008.

According to the Delhi High Court (DHC) (M_S._Iritech_Inc_vs_The_Controller_Of_Patents_on_20_April,_2017 ), applicants can correct inadvertent errors, provided that they are fixed in time. It was held that –

when the error in Form 18 was an apparent clerical error… and… the request for examination was filed within the 48-month period and even the request for correction of the clerical error was made prior to the expiry of the period of 48 months and prior to the application for grant of patent being deemed to have been withdrawn… the action of the Respondents in deeming the Indian National Phase application No. 5272/DELNP/2008 as deemed to be withdrawn, is set aside.

The court interpreted the provisions of Section 78 relating to the power of the controller to correct the clerical error and held that:

Section 78 of the Act, inter-alia, empowers the controller to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register. The correction can be made either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

The ruling further states that –

Since there is no form prescribed by the Act or the Rules for seeking correction under Section 78 of the Act, even a letter would be sufficient. The petitioner along with the letter had enclosed the corrected Form 18 and the corrected covering letter. The request was made prior to the expiry of the period of 48 months. The requisite fee was also paid thereon. There is no reason as to why the Respondents should not have considered the same.

In view of this, The “Deemed to be withdrawn” status of the application was accordingly quashed.

A new era in India: Patent granted within 9 months of requesting examination

Indian Patent Office (IPO) has now started granting patents under expedited examination system (Rule 24C of the Patent Amendments Rule 2016) within 9 to 12 months.

One such patent granted is IN2885091 for “A PROCESS FOR THE PREPARATION OF APIXABAN“. A request for expedited examination was filed on 24th October 2016 and the same was converted into an expedited request on 21st March 2017. A patent has been granted to Optimus Drugs Private Limited within 9 months of filing of request for examination and 4 months of converting it into an expedited request, on 12th July 2017. The other factual details are as follows:-

 

Method of hair removal- not a method of treatment

The IPO has allowed claims directed to method of removal of hair considering such method to be a cosmetic method resulting only in improvement of the appearance of the skin. The claimed method was considered as not resulting in treatment or enhancement of economic value of the subject as compared to the conventional methods, therefore not falling within the ambit of section 3(i). The order can be found here.

Mid year IPO decision analysis

From January to June the IPO has disposed off 19 oppositions. Out of the 19 decisions, three are in relation to post grant oppositions and the remaining 16 are in respect of pre grant oppositions.

Out of the 16 decisions rendered in pre-grant oppositions, in nine cases either the applicant abandoned the case or the opposition was withdrawn. Similarly, out of the three decisions rendered in post-grant oppositions, in one case the applicant abandoned the case. For details see  Jan-June 2017.

For summary of the remaining 9 decisions (7 pre-grant and 2 post grant), wherein the Opposition grounds and Applicants/patentees submissions have been discussed in detail in the decision, refer: Pre grant Decisions Jan-June 2017and Post grant Opposition decision – Jan to June 2017 .

Electronic Patent Certificate

The process relating to  issuance of Patent certificates has been fully automated by the Indian Patent Office.

As per the notification of the Patent office, from 3rd July 2017 the patent certificates will be generated through an automated system after the patent is granted by the Controller and shall be made available to the applicants concerned or their authorized patent agents on record. The patent certificate so generated will be transmitted to the applicant concerned or his authorised patent agent on record on his email address recorded and would also be made available on the official website (www.ipindia.gov.in) along with status of the application concerned.

 

A new day for computer inventions – Novel hardware not a requirement anymore

The Indian patent office has published the revised guidelines for examination of Computer related inventions (CRIs). The guidelines, while still being silent on the technical effect, do away with the thrust on “novel hardware” feature, which comes as a breather after a long, dry spell.

Also summarized below are the new guidelines, which do not show any tangible shift from what was published earlier.

  • Novelty: For novelty the guidelines state that no matter disclosed before the date of priority is patentable. The guidelines rely on the Manual of patent practise for the same.
  • Inventive step: The guidelines rely on law laid down by Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd and F.Hoffman la Roche v Cipla for inventive step analysis. Essentially the steps for inventive step analysis are stated to be as follows:-
  1. Identify the “person skilled in the art”, i.e competent craftsman or engineer as distinguished from a mere artisan;
  2. Identify the relevant common general knowledge of that person at the priority date;
  3. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
  4. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
  5. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of inventive ingenuity?
  • Industrial applicability: The guidelines state that the patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge to meet this requirement. Mere speculative use or vague and speculative indication of possible objective will not suffice.
  • Sufficiency: The guidelines state that in cases of patent application concerning computer related inventions (CRIs), Sufficiency requirements are considered as fulfilled if the specification addresses the following:
  •  Each and every feature of the invention shall be described with suitable illustrative drawings.
  •  If the invention relates to “method”, the necessary sequence of steps shall clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.
  •  The working relationship of different components together with connectivity shall be described.
  •  The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described.
  •  The best mode of performing and/or use of the invention shall be described with suitable illustrations. The specification should not limit the description of the invention only to its functionality rather it should specifically and clearly describe the implementation of the invention.
  • Not Patentability under Section 3(k): The guidelines discuss not patentability under section 3(k)in great length. The guidelines also state to be overriding the chapter of the Manual, containing provisions pertaining to section 3(k) of the Patents Act, 1970. The guidelines state as follows:-  
  • COMPUTER PROGRAMMES
  • The guidelines state that the invention should be analysed in substance to determine if it falls under the excluded category. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.
  • The exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.
  • However, if in substance, the claim, taken as whole, does not fall in any of the excluded categories, the patent should not be denied.
  • The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports performing the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se. 
  • MATHEMATICAL METHODS
  • Method of calculation, formulation of equations, finding square roots, cube roots and all other similar acts of mental skill are, not patentable.
  • Similarly mere manipulations of abstract idea or solving purely mathematical problem/equations without specifying a practical application also attract the exclusion under this category.
  • Mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.
  • Also, such exclusions may not apply to inventions that include mathematical formulae and resulting in systems for encoding, reducing noise in communications/ electrical/electronic systems or encrypting/ decrypting electronic communications.
  • BUSINESS METHODS
  • When a claim is “business methods” in substance, it is not to be considered a patentable subject matter. However, if the claimed subject matter specifies an apparatus and/or a technical process for carrying out the invention even partly, the claims shall be examined as a whole.
  •  However, mere presence of the words such as “enterprise”, “business”, “business rules”, “supply-chain”, “order”, “sales”, “transactions”, “commerce”, “payment” etc. in the claims may not lead to conclusion of an invention being just a “Business Method”, but if the subject matter is essentially about carrying out business/ trade/ financial activity/ transaction and/or a method of buying/selling goods through web (e.g. providing web service functionality), the same should be treated as business method and shall not be patentable.
  • ALGORITHMS
  • Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.
  • COMPUTER PROGRAMMES
  • The computer programmes as such are not intended to be granted patent. The following are essentially not patentable:-
  • Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” stored in a computer readable medium.
  • Claims directed at “computer programme products” / “Storage Medium having instructions” / “Database” / “Computer Memory with instruction” stored in a computer readable medium.