Pre-grant Opposition against Novo Nordisk’s Patent application dismissed

A pre-grant opposition filed by Intepat IP services in respect of Novo Nordisk’s Patent Application number 2940/DELNP/2007 has been refused by the Ld. Controller, Mr. Naveen Mathur and a patent (No. 299153) granted to Novo Nordisk after examination.

As provided in the decision, the invention covered by the application relates to an injection device/injector pen for administering a medical dose to a patient. In said device the numerals indicating the dose to be ejected from the injection device are displayed over an angle of rotation exceeding one revolution. Further, the numerals indicating the dose to be ejected are arranged along the helical path and displayed on a counting device thus increasing the accuracy in dose setting. Further, the invention uses torsion spring which accumulates and releases energy in an automatic manner.

The Opposition was filed on the following grounds:

(A) Claims 1 to 3 of the Application lack novelty.

(B) Claims 1 to 13 lack inventive step.

A hearing was fixed on 10/01/2018. The applicant’s agent attended the hearing but the opponent did not attended the hearing. The Controller however took the opposition and documents filed alongwith the same on record and considered the same. After considering the submission of the Applicant, the Ld. Controller held that the claim 1,2,3 are novel in view of the cited documents which relate to the use of compression spring which is different as compared to the present invention that uses torsion spring.

Also the opponents ground that Claims 1 to 13 lack inventive step was held to be not maintainable as the Controller held that the citations D1 to D15, alone or in combination, do not teach or suggest to a person skilled in the art, the claimed invention.

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Post grant Opposition filed on or before one year of publication under of grant is maintainable

In a recent decision, Asstt. Controller of Patents and design, Dr. Rachna Yadav has held that a post grant Opposition filed at the Indian Patent office on or before the expiry of one year of publication of grant under section 43(2) is maintainable.

Two Oppositions were filed on 30.03.2017 and 31.03.2017 by the Opponents, Shantha Biotechnics Private Limited and Biological E. Limited, respectively, under Section 25(2) of the Patents Act against Panacea’s Patent number IN272351. On 5th April, 2017, the Patentee was served with a copy of the notice of opposition and evidence by courier service, by e-mail on 27th April 2017 and by speed post on 1st May 2017 (agent of Patentee) and 2nd May 2017 (Patentee).

The Patentee filed an Interlocutory petition that the opposition is not maintainable as the Patentee has been served with the post grant opposition by email as well as speed-post by letters dated 28th April, 2017 which are beyond the prescribed time.

The Controller noted that section 25 (2) requires that a post grant opposition be filed at the Indian Patent Office on or before the expiry of one year of publication under section 43(2) i.e., before 1st April 2017. The same has been done in the present case.

Further, the Controller held that the Patentee has admitted to the fact that the copy of Opposition (including written statement, evidence and notice) was received on 5th April 2017 by courier, and later by e-mail and speed post. The Controller held that the Patentee has admitted that they have received the Opposition, by not one but several modes and the opposition has been timely filed at the Indian Patent Office as per the timeline of Section 25(2), the opposition is therefore maintainable.

 

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.

WIPO Digital Access Service (DAS) started by IPO

Indian Patent office (IPO) has started the WIPO Digital Access Service (DAS) with effect from 31/01/ 2018 for priority documents submitted by the applicants from the participating Patent offices under the WIPOINDIA Cooperation agreement.

WIPO Digital Access Service (DAS) facilitates easy, secure, quick and inexpensive procedure for submission of certified copies of Priority documents: Some of the salient features of WIPO DAS as available on the Indian Patent office website are as under;

Applicants can simply request the office of first filing to deposit/add the priority document into the WIPO DAS  system, and request offices of second filing to use the service for obtaining access of such documents.

Use of an access code provided by WIPO DAS to authorize access;

Documents are exchanged via secure channels;

The DAS Service is hosted and administered by WIP0.

No need to provide a certified copy of a priority document separately to each office of second filing.

No need to pay for multiple copies of paper priority documents;

Accordingly, IPO as a depositing Office will now upload certified copies of patent and industrial design applications as priority documents, including International Patent applications under PCT filed at the Office (RO/IN) filed on and after 31/ 01/ 2018, which the applicant specifically requests to make such priority documents available to the WIPO DAS.

“Disturbing Trend” Of Long Interim Orders In IPR Suits

The issue of long and delayed interim orders attracted the Supreme Court’s (SC) attention in a Petition challenging an order passed by the Delhi High Court in march this year (In M/S. INTEX TECHNOLOGIES (INDIA) LTD. & ANR.  VERSUS M/S. AZ TECH (INDIA) & ANR).

The Apex Court noticed that the order, despite being an interim order was a decision based on the merits of the case. The respondents had filed the suit seeking a permanent injunction against the appellants restraining them from using the mark “AQUA‟ in respect of mobile phones / cellular phones.

It was held by the court that improper and unexplained delay, particularly in IPR cases is fatal to an application for an interlocutory injunction.

The court notes that the interim order is virtually a decision on merits of the suit. According to the Court this is a disturbing trend which the Registrar General of the Delhi High Court should take note of. The SC has ordered the Registrar General of the Delhi High Court to report  total number of pending IPR suits, in the following manner:

  1. Divided into different categories;
  2. stage of each suit; and
  3. the period for which injunction/interim orders held/holding the field in each of the suits.

The Registrar General of the Delhi High Court will also indicate to the Court a reasonable way of ensuring  speedy disposal of the suits involving intellectual property rights which are presently pending.

 

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:-