Patent Prosecution in India – Restoration of Lapsed Patent

Patent is an important, but an expensive way to protect our invention, product and/or process according to its originality, practicality and utility. However, the end financial gain from a patented invention is quite high, if the invention is of good commercial value. Term of a patent is 20 years that starts with earliest filing date of a patent application (i.e. from the filing date of a provisional application or the filing date of a complete application in case the provisional application is not filed). To maintain a patent, a maintenance fee or a patent renewal fee needs to be paid... Read More

Guide to Patent Filing in India

Guide to Patent Filing in India The Indian Patent system is being governed as per the Patents Act, 1970. The Patent Office comes under the purview of  Department of Industrial Promotion & Policy (DIPP) which is under Ministry of Commerce & Industry. Membership in International Treaties India is signatory to the following governing international covenants relating to patents: TRIPS Agreement which comes under the World Trade Organization Convention establishing the World Intellectual Property Organization (WIPO) The Paris Convention for the Protection of Industrial Property with effect from December 7, 1998. Patent Cooperation Treaty (PCT) with effect from December 7, 1998.... Read More

Patent Prosecution in India- Post-grant Opposition

According to section 25(2), at any time after grant of a patent, but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give a notice of opposition to the Controller in a prescribed manner on any of the grounds mentioned under sub-section 2 of section 25 of the patents act, 1970. An interested person (Opponent) may be a company or an organization or an individual whose manufacturing and/or trading interest in the goods is connected with the patented product or who is financially affected in manufacturing... Read More

Hetero’s Subsidiaries not infringing Roxane’s patent on PhosLo

In Roxane Laboratories, Inc. (hereinafter referred to be as “Roxane”) v. Camber Pharmaceuticals Inc., et al. (hereinafter referred to as “Camber”) decided by United States Court of Appeals for the Federal Circuit on November 17, 2016, Roxane had appealed against decision of district court in an infringement suit against Camber and Invagen Pharmaceuticals Inc (collectively referred to as “appellees”), both of which are subsidiaries of Hetero Drugs Ltd. (hereinafter referred to as “Hetero”). The infringement suit was in respect of US patent number 8563032 (hereinafter referred to be as “032” patent). This appeal was from  the  United  States  District  Court ... Read More

Does Focusing on Single Embodiment Limits the Patent Specification?

This issue was handled by the United States Court of Appeals for the Federal Circuit in the SCRIPTPRO LLC, SCRIPTPRO USA, INC., Plaintiffs-Appellants v. INNOVATION ASSOCIATES, INC., Defendant-Appellee decided on August 15, 2016. This was an appeal from the United States District Court for the District of Kansas in No. 2:06-cv-02468-CM, Judge Carlos Murguia. United States District Court for the District of Kansas had granted summary judgment that claims 1, 2, 4, and 8 (“asserted claims”) of U.S. Patent No. 6,910,601 are invalid for lack of written description. This decision was appealed by ScriptPro, LLC and ScriptPro USA, Inc. (collectively... Read More

Only Common Sense Not Sufficient to Prove Obviousness Over Prior Art

Can the grant of patent be rejected on the obviousness criteria based only on common sense? This issue has been handled by United States Court of Appeals for the Federal Circuit in the case of ARENDI S.A.R.L., Appellant v. APPLE INC., GOOGLE INC., MOTOROLA MOBILITY LLC, Appellees, decided on August 10, 2016. On December 2, 2013, Apple Inc., Google, Inc. and Motorola Mobility LLC (collectively “Appellees”)) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 7,917,843 (the “’843 patent”), which is owned by appellant Arendi S.A.R.L. (“Arendi”). On June 9, 2015, the Patent Trial and Appeal Board... Read More

Can Inventors Who Contribute to Only One Claim or One Aspect of One Claim of a Patent, may be Listed on Patent?

This question was handled by United States Court of Appeals for the Federal Circuit in the case of VAPOR POINT LLC, KEITH NATHAN, KENNETH MATHESON, Plaintiffs-Cross-Appellants DON ALFORD, JEFFEREY ST. AMANT, Counterclaim Defendants-Cross-Appellants v. ELLIOTT MOORHEAD, NANOVAPOR FUELS GROUP, INC., BRYANT HICKMAN, Defendants-Appellants, decided on August 10, 2016. Vapor Point, L.L.C., Keith Nathan (“Nathan”), and Kenneth Matheson (“Matheson”) (collectively “Vapor Point”) had sued Elliott Moorhead (“Moorhead”), NanoVapor Fuels Group, Inc., and Bryant Hickman (“Hickman”) (collectively “NanoVapor”) in the United States District Court for the Southern District of Texas, seeking to have Nathan and Matheson recognized as joint inventors under 35... Read More

Federal Circuit Rules 180-Day Post-Licensure Notice is Mandatory in Biosimilar Litigation

In Amgen v. Apotex (No. 2016-1308), the US Court of Appeals for the Federal Circuit on July 5, 2016 affirmed a district court’s ruling that a biosimilar applicant must provide a reference product sponsor with 180 days’ post-licensure notice before commercial marketing of a biosimilar product begins, regardless of whether the applicant provided the § 262(l)(2)(A) notice of USFDA review.             In Amgen v. Apotex, the Federal Circuit rejected Apotex’s contention that the 180-day pre-marketing notice requirement does not apply to biosimilar applicants who participated in the “patent dance” procedure of the Biologics Price Competition and Innovation Act ("BPCIA"), expanding... Read More

Intersection between Intellectual Property (IP) and Competition Law

With a growing buzz around how IP and Competition law interface with each other, instances when they can be coupled by Defendants to raise concerns/defense arguments, as to how and when investigations can be initiated through the Competition Commission of India (CCI), are becoming critical and hence need clarity at all ends. This piece is a small step towards the same. Introduction Covered under the Competition Act, 2002, a key objective of the CCI is to prevent practices having adverse effect on competition, to promote and sustain competition in markets, to protect the interests of consumers and to ensure freedom... Read More

Division Bench of Delhi High Court passed an interim order in Glenmark v. Symed (July 2015)

The High Court of Delhi has passed an interim order wherein the  Justices have made it clear that the appellant (Glenmark) may use any other process which may be a development of Glenmark process / Upjohn process so long as it does not infringe the patented processes of the respondent (Symed). Background: Symed Laboratories Ltd. is an Indian bulk drug manufacturer based in Hyderabad. Among other drug products, it manufactures Linezolid, an antibacterial used to treat skin and blood infection including pneumonia. Symed owns two process patents (IN213062 and IN213063) for the manufacture of intermediates for linezolid. The product patent... Read More