資料講義講稿12nov19th11r

1、 Nuances ofIndian Patent Prosecution1JAYANTA PALNovember 19-20, 2015BIPF -2015, Shanghai, PRC2 With 1.3 billion people India is one of the largest consumer markets with an emerging middle class more than the population of USA 70% of disposable income expected to be spent on entertainment, healthcare

2、, communication, personal products, services Youngest workforce - 50% of population below the age of 25 and 70% below the age of 35 easy availability of qualified workforce/professionals in all spheres of business Infrastructure, automobiles, consumer products, industrials, technology, media and tel

3、ecom (TMT), and life-sciences sectors set to drive Indias growth over the next two years In the last 5 years, economy has grown at an annual average rate of 7.4 percentEmergent India - An Overview23Recent change in Government - First time in 24 years Government not reliant on coalition partners for

4、policy decisionsThe changing scenario:Make in India initiative to push research and manufacturing in IndiaProposal to provide impetus to Agriculture, Health and Education, Rural Roads and National Highways Infrastructure, Railways network, clean energy initiativesStress on development of renewable e

5、nergy sector particularly Solar PowerProposal to set up National Industrial Corridor and Industrial Smart citiesHuge investment opportunities in infrastructure, manufacturing, metallurgy, pharmaceuticals and other sectorsGovernment committed to providing single window clearance to investorsEmergent

6、India - An Overview34Highlights Make in India program launched in September 2014 Make in India is an initiative to push research and manufacturing in India To cover major 25 sectors including automobiles, chemicals, textiles, pharmaceuticals, aviation, railways etcResponse Samsung to manufacture its

7、 Smartphones in India Huawei opened R&D center in Bangalore Xiaomi started manufacturing Redmi 2 Prime Smartphone in India Boeing indicated that they will assemble fighter planes and helicopters in IndiaEmergent India Make in India45Patent Filings IndiaSource Annual Reports of the Patent Office2

8、8940352183681234287394064319743674429510500010000150002000025000300003500040000450002006-072007-082008-092009-102010-112011-122012-132013-14No. of Applications5BR-CS filing in IndiaSource Annual Reports of the Patent Office602004006008001000120014002009-102010-112011-122012-132013-14Brazil RussiaSou

9、th AfricaChina Filings Based On Field Of InventionsSource Annual Reports of the Patent Office1768221112189231975120751106631224910542110501031005000100001500020000250002009-102010-112011-122012-132013-14Chemical including Drugs, Food, BiotechEngineering7Distinctive features of Indian Patent System P

10、roof of Right Non-patentability under Section 3(d) and 3(k) Section 8 Section 16 Divisional Applications Pre-grant and post-grant opposition Restrictions to amendments Working of Patent8Proof of Right requirement and practice Section 7(2) read with Rule 10: Proof of right to make the application to

11、be furnished: Where an application is made by virtue of assignment of right to apply for patent for invention Along with the application or within six months of actual date of filing the application in India Required, when: Inventor is not the applicant Applicant in Convention country is not the sam

12、e as in India Previous practice: If applicant in India is same as applicant in the priority convention country - the Patent Office did not insist for a proof of right9Proof of Right requirementBest Practice:Proof of right an essential statutory requirement - non-compliance is a ground for revocation

13、 of patent Relevant document: Executed Form 1Deed of assignmentForm PCT IB 371 (only for PCT applications) Should be filed for all newly filed applications within six months of filing date For all other applications file at the earliest along with petition or upon communication from the Controller F

14、or granted applications - no explicit provision for submission of proof of right Granted cases unlikely to be re-opened - Patent granted after consideration that all requirements under the Act have been complied10Inventions not patentable Section 3(d) “Mere discovery of a new form of a known substan

15、ce which does not result in the enhancement of the known efficacy of that substance or mere discovery of any new property or new use for a known substance” Policy rationale behind Section 3(d) - to prevent evergreening and extended monopolies while keeping the door open for true and genuine inventio

16、ns A new form of a known substance can become patentable only if it results in significant enhancement of known efficacy Term “efficacy” not defined in the Patents Act Clarified to an extent by the Apex Court in Novartis case pertaining to Glivec drug11Inventions not patentable Section 3(d)Novartis

17、(Glivec) Case: Supreme Court held: Efficacy in Section 3(d) means “therapeutic efficacy” Improvement in physico-chemical properties would not contribute to increased efficacy Improved bioavailability can qualify, if evidence is provided to establish that such an increase leads to greater therapeutic

18、 efficacy No material offered to indicate that higher bioavailability of beta crystalline form of imatinib mesylate will produce an enhanced or superior efficacy (therapeutic) on molecular basis Invention held to be falling within the ambit of Section 3(d) Shortcoming in the decision: The ambit of t

19、erm “efficacy” not defined limits the same to therapeutic efficacy only 12Inventions not patentable Section 3(k) The Statue:“a mathematical or business method or a computer program per se or algorithms;” is not patentable Policy behind this provision was to avoid patenting of algorithms, mathematica

20、l equations and software codes Restrictive interpretation by Patent Office. Claims related to computers, having implementation on computer or lacking hardware limitations objected to Lack of guidelines led to refusal of several applications and applicants were reluctant to file applications relating

21、 to computers/algorithms No conclusive judicial precedent - inconsistency amongst decisions of the Patent Office13Computer Related Invention (CRI) Guidelines August 2015Highlights: Finalized after seeking comments from the stakeholders and public Several relevant terms “algorithm”, “computer program

22、”, “computer system/network”, “business method ”, “mathematical method”, “technical advancement” defined or explained Meaning of “per se” used in the statue clarified by relying upon a Joint Parliamentary Committee Report Goes beyond the ideology of “novel hardware” and provides a wide scope to “tec

23、hnical advancement” Several positive examples cited in the guidelines, highlighting allowable subject matter: “a method for granting an access to a computer-based object” “a computer-implemented method” “a method for tracking a mobile electronic device”“an apparatus for eigen value decomposition and

24、 singular value decomposition of matrices”The guidelines interpret Section 3(k) to broaden the scope of patentable subject matter. However, guidelines not binding on Patent Office. 14Inventions not patentable Section 3(k)Inventions not patentable Section 3(k) Best Practice: Claims should clearly rec

25、ite the technical advancement rather than focusing to functionality and implementation Physical features to be clearly highlighted in claims by help of reference numerals from the drawings Claims reciting, “a computer readable medium”, “a program”, “a software” etc to be avoided Characterize the mai

26、n claims, if possible, to highlight the technical advancement Corresponding granted application with similar claims in a foreign jurisdiction, preferably EPO, to be highlighted during prosecution Derive support from the guidelines to argue for allowance of CRIs15Section 8 Details Of Corresponding Ap

27、plicationsSection 8(1) An applicant prosecuting an application for patent in any country outside India in respect of the same or substantially the same (corresponding) invention, shall file along with his application or subsequently within the prescribed period (a) a statement setting out detailed p

28、articulars of such application (b) an undertaking that up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of every other application filed outside India1617Time lines: For all corresponding applications filed until the filing of the India

29、n application: Within six months of filing the Indian patent application For all corresponding applications filed subsequent to filing of the Indian application: Within six months of filing the corresponding application Controller to be updated of status of corresponding applications by filing Form

30、3 periodically until grant of the Indian patent application Details to be furnished under Section 8(1) on prescribed Form 3: Name of the CountryDate of ApplicationApplication no.Status of the applicationPublication no. & Date of PublicationPatent no. & Date of Grant17Section 8 Details Of Cor

31、responding Applications18Best Practice: File details of all available corresponding applications within six months of filing the Indian patent application File details of all subsequently filed corresponding applications within six months of such filings Apprise Indian agent as soon as there is any

32、change/update in details or at least periodically, e.g. every six months18Section 8 Details Of Corresponding Applications19Section 8(2) After an application for patent is filed in India and till the grant of patent or refusal to grant of a patent made thereon, the Controller may also require the app

33、licant to furnish details, as may be prescribed, relating to processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed19Section 8 Details Of Corresponding Applications

34、20 Time line:Six months from date of communication by the Controller Details to be furnished under Section 8(2)“Processing” not defined in the ActIncludes:Prosecution history Amendments to the claims/specificationDecision of grant/refusalCopy of granted patent Along with English translation, as appl

35、icable20Section 8 Details Of Corresponding Applications21 Communications received from the Patent Office the evolution:major Patent Offices such as USPTO, EPO and JPO etc.all countries outside India.all the major Patent Offices. “Major Patent Offices” not defined in the Act May include:USPTOEPOJPOSI

36、POKIPO21Section 8 Details Of Corresponding Applications22Best Practice: File Section 8(2) details of all applications prosecuted in other countries within six months of communication from the Controller At least file documents related to :Processing of the application in all major Patent Offices (US

37、, EP, JP) along with English translations as appropriateClaim amendments made in any prosecuting country in case such amendment results in narrowing the scope of claimsAdverse decisions/rejections received in any countryOffice action citing a new prior artProcessing of divisional/continuation applic

38、ations for same or substantially same invention Volunteer to file such further details as may be specifically called for by the Patent Office22Section 8 Details Of Corresponding Applications23Contravention of requirement under Section 8:Ground for pre and post grant oppositionGround for Revocation o

39、f patent23Section 8 Details Of Corresponding Applications24Section 8 Judicial Pronouncements Chemtura Corporation vs. Union of India, Delhi High Court(2009): Chemtura instituted infringement suit against infringers Defendants challenged validity of patent inter-alia on the ground of non-compliance o

40、f Section 8 Accepting Defendants prima facie challenge to validity of patent due to non-compliance of Section 8 requirement - Court refused to grant interim injunction in favor of Chemtura Roche v. Cipla, Delhi High Court (2012) Roche filed infringement suit against Cipla alleging infringement of it

41、s patent Cipla alleged non compliance of Section 8 (1) non-filing of details pertaining to application covering derivative of main molecule i.e. substantially same invention Held that non-compliance of Section 8(1) established - However, Court has power to exercise discretion whether to revoke Valid

42、ity of patent upheld 2425 Koninklijke Philips Electronics N.V. v. MAJ. (Retd) Sukesh Behl & Anr, Delhi High Court (2013)Philips failed to disclose certain filing details under Section 8(1) pleaded it was a clerical errorDefendant, in his counter claim prayed for revocation of patent on the groun

43、d of non-compliance of Section 8(1)Held that whether the non-disclosure of information under Section 8 was deliberate is a matter for evidence The Court also noted that the question whether the withholding of the information was material to the grant of the patent forms a triable issueCourt refused

44、to revoke the patent summarilyMatter is pending and final opinion on the issue will be delivered after completion of the trial Appeal before Division Bench, Delhi High Court (2014)Power of revocation conferred under Section 64(1) is discretionaryNecessary for Court to consider whether non-compliance

45、 of Section 8 was intentional or arose out of clerical and bonafide errorAppeal dismissed25Section 8 Judicial Pronouncements26Section 16 Divisional Applications Section 16(1): Divisional application can be filed Before grant of patent on parent application Voluntarily OR to meet the objection of the

46、 Patent Office regarding presence of plurality of distinct inventions in claims Section 16(3): Amendment of either parent or divisional application may be sought to remove any overlapping claims Judicial interpretation:LG Electronics Vs Controller of Patents, IPAB (2011): Divisional application can

47、be filed voluntarily but on account of “disclosure” of plurality of distinct inventions in the parent application Existence of multiple distinct inventions sine qua non for divisional application whether suo moto or to remedy Controllers objection Divisional application cannot be allowed with same c

48、laims as patent application Patent Office shall seek amendment of the same2627Patent OppositionsPre-grant OppositionHighlights: Any person can file Any time after the publication of the application until the grant of the patent Grounds such as prior publication, lack of inventive step, not an invent

49、ion under this Act, failure to disclose details of corresponding applications etc. available Post-grant OppositionHighlights: Any person interested i.e., a person engaged in, or in promoting research in the same field as that to which the invention relates, can file Any time after the grant of the p

50、atent but before expiry of one year from the date of publication of the grant of the patent Grounds for opposition same as pre-grant opposition An Opposition Board is constituted for conducting the examination submits recommendations to the ControllerDecision of Patent Office in both pre-grant and p

51、ost-grant opposition is appealable to the Intellectual Property Appellate Board2728Amendments of an application Section 57 & 59 Both pre-grant and post-grant amendments possible Post-grant amendments are published and can be opposed Amendment of complete specification is subject to Section 59, w

52、hich says: “No amendment of an application for a patent or a complete specification or any document relating thereto shall be made except by way of disclaimer, correction or explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendme

53、nt of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within

54、 the scope of a claim of the specification before the amendment.” Indian Patent Office is stringent on claim amendments seeking addition of new features - not previously disclosed in the claims No new matter (broadening the scope) can be introduced in the specification2829Amendments Section 57 &

55、 59Best Practice:Cover all the embodiments of the specification in either an independent or a dependent claim at the time of filing Amended claims should not go beyond the scope of original claims Marked copy clearly indicating the amendments is encouraged A voluntary amendment should be filed with

56、the prescribed official fees Depending on nature of amendments- may be introduced at the prosecution stage to reduce cost29Working of Invention in India: Working of patented invention: commercial exploitation of the patent by way of manufacture and sale by the patentee himself or through his license

57、e(s) in India Filing of statement of working: within three months of the end of the calendar year; within two months whenever required by the ControllerDetails to be submitted under statement of working: Quantum and value of patented product (a) manufactured in India and (b) imported in India (count

58、ry-wise details to be provided) for worked inventions Reasons for not working the invention for non-worked inventions Licenses and sub-licenses granted during the year30Consequences of non-compliance of requirement: May raise a presumption of non-working of invention enabling any interested party to

59、 apply for a compulsory license Section 84(c) Non-compliance may attract a financial penalty of Rs. 1 million (approximately US $ 20,000) No case in point .so far! If the information or statement so furnished is false and which the filer either knows or has a reason to believe to be false or does not believe to be true - punishable with imprisonment up to six months, or with fine,