Frivolous patents/applications related to pharmaceutical science are dealt by the Indian Patent Office by the provisions available in the Indian Patents (Amendment) Act, 1970.
As per the current provision, frivolous inventions disclosed at the Indian Patent Office can be opposed both before the grant of patent (u/s 25(1)) and after the grant (u/s 25(2)). Frivolous patent applications are scrutinized by the patent office examiners during examination. Section 3(d) of the Act plays an important role in this regard.
As reported by the “Live Mint”, the National University of Judicial Science (NUJS), Kolkata, had conducted a study on the provisions available in the Indian Patents Act to deal with frivolous patents.
It is revealed from their study that the said three provisions, sections 25(1) , 25(2), and 3(d), were the basis of rejecting 7 out of 10 patents rejected in the area of drugs, and 15 out of 20 rejected in other areas in recent years.
Section 3(d) of the Act strictly bars from patenting inventions related to salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance, unless they have significant synergistic effect over the prior art. This provision of the Act also restricts pharma giant from “ever greening” their already granted patents.
Pre-grant opposition and post-grant opposition are other two instruments by which frivolous patenting are prevented.
It seems that the number of opposition is very less in India against the frivolous patent, although there are very effective provisions available in Indian Patents Act to oppose the frivolous patent and subsequent rejection by the Indian Patent Office.
Pre-grant opposition is known as 'opposition by way of representation' under section-25(1) of the Indian Patent Act, 1970. Any individual or legal entity having interest can file an opposition on the ground mentioned in this section after the publication of application, but before the grant of the patent.
Even if a patent is granted, any individual or legal entity having interest over the subject matter as disclosed in the granted patent, can file post-grant opposition. Post-grant opposition is filed under section-25(2) of the act by filing Form-7. The patented matter is laid open for opposition by third party for a period of 1 (one) year from the date of publication of the patent.
As per the recent report of “livemint.com”, patent opposition in India is very less due to insufficient understanding of available provisions by local companies and patient groups.
It is also noted that the number of patents rejected by the Indian patent office during the examination procedure is more than the number of opposition in India. It indicates that the filing of frivolous patent in India is increasing day by day. This is so greatly because of the insufficient understanding and lack of awareness regarding prevailing Indian Patents Law among the people as well as corporate managers.
Thursday, January 21, 2010
Idea Patenting
The subject matter of an idea shall satisfy a numbers of parameter to get a patent protection. The conditions of patenting an idea are-
a. It shall be ‘novel’.
b. It shall involve an ‘inventive step’ (followed by India and Europe) or it shall be ‘non-obvious’ (followed by United States) to a person skilled in the art.
c. There must be some ‘industrial application’ (followed by India and Europe) or ‘usefulness’ (followed by U.S.)
Now, in India and in Europe ‘use claim’ in a patent drafting is not allowable while in US the use claim is allowed for Utility patent application. On the contrary the definition of ‘industrial application’ as defined under section-2(1) (ac) of Indian Patent Act, 1970 (amended) “capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry”. Similarly, according to Article-57 of the European Patent Convention, 1973 defines ‘industrial application as “an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture”. So as per applicable patent law in India and Europe the subject matter of a patent application shall be capable or susceptible of being ‘used’ in the industry.
Coming to the US patent law where there are 3 types of utility of an Idea that has to be satisfied at the time of filing ‘utility’ patent and these utilities are-
a. There must be a ‘specific’ utility of that patent application
b. There must be some ‘credibility’ and,
c. That patent application shall have some ‘substantial utility’
Carefully if you go through the matter you will observe that India and Europe directly is not allowing use claim in the specification, but in an other way round India and Europe allows product claim by process where there are two probability exists. First of all that process might be known to the prior art and secondly the process might be a new idea at all, but in both cases product is patentable. Product patent is basically granted because it shows some industrial use or application. Subsequently, a product patent by process may be granted for new use although there is another product which uses the same process. On the other hand a product by process may be granted although the same products exist which uses the same process, but later product shall show substantial modification or improvement of the former product. You can get a fresh product patent if you incorporate some new technologies into old product.
Now, in my opinion under section-2(1) (ac) and Article-57 of the Indian and European Patent Law there is a loophole which is capable of granting a product patent on the basis of different use. It is mentioned above that India and Europe dose not allow use claim in the specification, but in directly the product is basically made only for use. We don’t mention the term ‘use’ in the specification. What we claim in the specification is that the independent claim for product with the help of defendant process claim or independent process claim.
a. It shall be ‘novel’.
b. It shall involve an ‘inventive step’ (followed by India and Europe) or it shall be ‘non-obvious’ (followed by United States) to a person skilled in the art.
c. There must be some ‘industrial application’ (followed by India and Europe) or ‘usefulness’ (followed by U.S.)
Now, in India and in Europe ‘use claim’ in a patent drafting is not allowable while in US the use claim is allowed for Utility patent application. On the contrary the definition of ‘industrial application’ as defined under section-2(1) (ac) of Indian Patent Act, 1970 (amended) “capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry”. Similarly, according to Article-57 of the European Patent Convention, 1973 defines ‘industrial application as “an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture”. So as per applicable patent law in India and Europe the subject matter of a patent application shall be capable or susceptible of being ‘used’ in the industry.
Coming to the US patent law where there are 3 types of utility of an Idea that has to be satisfied at the time of filing ‘utility’ patent and these utilities are-
a. There must be a ‘specific’ utility of that patent application
b. There must be some ‘credibility’ and,
c. That patent application shall have some ‘substantial utility’
Carefully if you go through the matter you will observe that India and Europe directly is not allowing use claim in the specification, but in an other way round India and Europe allows product claim by process where there are two probability exists. First of all that process might be known to the prior art and secondly the process might be a new idea at all, but in both cases product is patentable. Product patent is basically granted because it shows some industrial use or application. Subsequently, a product patent by process may be granted for new use although there is another product which uses the same process. On the other hand a product by process may be granted although the same products exist which uses the same process, but later product shall show substantial modification or improvement of the former product. You can get a fresh product patent if you incorporate some new technologies into old product.
Now, in my opinion under section-2(1) (ac) and Article-57 of the Indian and European Patent Law there is a loophole which is capable of granting a product patent on the basis of different use. It is mentioned above that India and Europe dose not allow use claim in the specification, but in directly the product is basically made only for use. We don’t mention the term ‘use’ in the specification. What we claim in the specification is that the independent claim for product with the help of defendant process claim or independent process claim.
Subscribe to:
Posts (Atom)