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.

 

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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:-

 

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.