31 August 2010

Ahmedabad and Tech Transfer 2010

Ahmedabad is just like any other city. Starts from a railway station situated in a noisy old area, moves into a clean and organized new area, and extends into the glitterati of malls. I have no doubts Ahmedabad can be easily counted in the league of Tier A cities, which includes our four metros, Banglore and Hyderabad. The people are helpful, cultured, and when it comes to doing business: "Guju ne khabar che ke dhando kem karo" [A guju knows how to go about doing business].    

The people of Ahmedabad have yet again displayed their ingenuity by hosting a first of the kind event in the country, The Tech transfer 2010. As I have already blogged, this event focused at auctioning patented/patent pending technologies. In fact, the event auctioned 48 technologies covered by 50 patents. I was fortunate to be the part of the event, and had a chance of meeting people academics and industry, who were serious about technology and highly aware about protecting technologies using the instrument of patents.

The event started with welcome addresses by Dr. Subodh Adeshara, Ex-commissioner food and Drugs Control  Administration, followed by introductory speeches from organizers. The event then moved into presentations on the 48 technologies from domains, such as API, Medical Devices, Herbal Drugs, and Biotechnology. A major attraction at the auction was a novel process for producing Gefitinib (Iressa), a drug which is used in treatment of non-small cell lung cancer. The novel process already has a granted patent in India. Other interesting technologies at the auction included a herbal drink that tastes like beer, a bio-insecticide product that attracts and kills mosquitoes using bird feather, an informational device for the blind, a transdermal patch for contraceptives drug delivery and a technology that can make a snake venom into analgesic that can help cure neuropathic pain. 

Before attending the event, I had an impression of a road show, wherein innovators will put up dedicated stalls displaying their inventions. Therefore, being presented technologies on power point slides by organizers came as a surprise. In my experience, no one can explain an invention better than the inventor. Hence, the event would have been better served if the innovators themselves explained their inventions to the buyers.

However, overall I would rate the event as a success. Wishing the organizers all the best for their future plans of holding such event at even grander stage. 

1. Novel concept neatly put together
2. Great stage for innovators to showcase their technologies
3. Increased awareness in industry regarding patents. It was a pleasant surprise to meet people from other industries, such as software, and telecom attending the event.

1. Lack of publicity
2. Small scale of the event
3. Unwelcoming and apprehensive organizers. Registrations were highly restrictive. Further, the organizers refrained from sharing details about innovators, and even patent numbers of the technologies. I think the organizers should appreciate that finding out these details from what all details they provided is not a very difficult task.

Inohelp Consulting Solutions Pvt. Ltd.

26 August 2010

Off to Ahmedabad for TECH TRANSFER 2010

Yes, finally decided to attend this first of this kind exhibition. I am off to Ahmedabad for the weekend. Thanks to Abhishek Pandurangi, Founder of Closer2patents.com for all the help.

Will reserve an entire post describing the event.

Take Care
Inohelp Consulting Solutions Pvt. Ltd.

25 August 2010

Exhibition showcasing patented inventions

While reading today's news bits, I was in for a surprise. The first ever exhibition on patented inventions is being held in the city of Ahmedabad. The exhibition named as Promoting Innovative Cluster – TECH TRANSFER 2010" is organized by Skyquest Tech Groupa Global Technology Aggregator & Accelerator working in the areas of Life Sciences and Green Technologies.

Interestingly, the exhibition is a first of its kind patent showcase that has been organised in the country, where patent holders (sellers) and companies (potential buyers) will come face-to-face on the same platform to discuss, negotiate and strike a deal.

I could have attended the exhibition if my google alerts could have captured this event on time, too late to get the reservations in place it seems. I need to revise my google alert strategy to include keywords for capturing events like these.

Inohelp Consulting Solutions

24 August 2010

Cipla on a patent knock down spree - Successfully opposes Novartis’ Dulera patent

Cipla has continued its knocking down spree by successfully opposing Novartis’ Dulera patent. Dulera is an anti-asthma drug, which includes a combination Formoterol, and Mometasone furoate in a weight ratio of 1:1 to 1:1000. The drug was granted an Indian patent numbered 202350 in 2007. The grant of patent was opposed by Cipla by way of a post grant opposition filed in February 2008 on grounds including: Lack of inventive step and Insufficiency of Description. It is interesting to note that the drug has valid patents in jurisdictions including Europe, United States, Korea and Israel.

            Lack of Inventive Step or Obviousness

The drug was challenged on count of obviousness on basis of US patent nos. 5874063 (D1), 5674860 (D5) and WIPO publication no. WO9520393 (D2). The patent office acknowledged the following:
  1. The prior art D1 teaches already an anti-asthmatic drug having Formoterol, and Mometasone furoate.
  2. The weight ratio of 1:1 to 1:1000 as suggested in the impugned patent is obvious in light of D5, which teaches a combination therapy comprising Formoterol and Budenoside (steroid similar to Mometasone furoate) combined in a weight ratio of 1:60.
  3. The prior art D2 teaches administration of Mometasone furoate along with other drugs including bronchodilator, such as albuterol. Accordingly, any skilled person will be motivated to combine the teachings of D1 with teachings of D2 to achieve the therapeutic results as taught by the impugned patent.
The ground of obviousness as contended by the patent office though seem easily deducible, might not be reasonable. However, I would like to reserve an entire post on an analysis of the same.

            Insufficient Description

Interestingly, the opponent submitted that the impugned patent though mentions about unexpected therapeutic benefits of the combination as claimed, there is no disclosure or data in the specification to substantiate the same. Accordingly, the claims of the impugned patent are not sufficiently described and ought to be revoked on this ground alone. The patent office seems to have agreed to the contention of the opponent.
This ground of Insufficient Description further highlights the importance of amending or altering a patent application based on requirements of Indian patent laws. In the present case, inclusion of data showing synergistic effects of the combination of Formoterol, and Mometasone furoate in a weight ratio of 1:1 to 1:1000 was absolute necessary not only to prevent insufficiency requirements, but also, to circumvent all doubts that may arise under section 3 (e) of the Indian patent act. However, seldom do patent law firms follow such practices. A mere forwarding of an application written by a foreign patent attorney to the Indian patent office may result in problems such as the one illustrated above. Although, the patent attorney handling this case may be let off the hook as the application was filed way back in 2001, before the introduction of the critical 2005 amendments.

We at Inohelp, follow a strict practice of reviewing all national phase or convention patent applications, and suggesting our client possible amendments in the complete specification before filing the application at the IPO. The acceptance of these amendments is on the discretion of the client, who we find seldom disagrees with the suggestions. 

Inohelp Consulting Solutions Pvt. Ltd.

21 August 2010

India’s efforts to protect traditional knowledge - Foils Danish and Chinese attempts of bio-piracy

India's effort to digitize its traditional knowledge in form of Traditional Knowledge Digital Library (TKDL) is paying rich dividends. Recently, Council of Scientific and Industrial Research (CSIR), the proprietor of the database, foiled the attempts of a Danish firm, Claras ApS, and a Chinese Firm, Livzon, of bio-piracy. The Danish firm tried to patent in Europe an invention relating to turmeric, cumin, ginger and onion as slimming agents. On the other hand, the Chinese firm tried to patent in Europe an invention relating to use of medicinal plants 'pudina' (mint) and 'kalamegha' (andrographis) for the treatment of H5N1 avian influenza or bird flu.  These efforts come after CSIR uploaded 900 yoga postures in the library in June to prevent attempts of patenting these postures anywhere in the world.

15 August 2010

When in India, do what Indian Patent Offices (IPOs) do - Inohelp explores the necessity of amending PCT national phase or convention applications according to practices at IPO

Last year, close to 25,000 patent applications were filed in the Indian Patent Office by foreign applicants. Most of these applications either came through the Patent Cooperation Treaty (PCT) route, or came through the Paris convention route.
These PCT national phase or convention applications are usually forwarded by foreign patent attorneys to their Indian associate, which may be a patent filing and prosecuting firm, a law firm or an individual patent agent. The Indian associate prepares prescribed forms, and files the application along with prescribed fees at the Indian Patent Office (IPO).

A key aspect that may be involved in filing a PCT national phase or a convention application is modification or amendment of the parent application according to the best practices followed at the IPO. The parent application is usually drafted by a foreign attorney, who drafts the parent application according to the requirements and best practices accepted at the receiving patent office.

Accordingly, it becomes a strict duty of the Indian associate to amend the parent application according to the best practices of the IPO, which significantly differ from say practices at United States Patent and Trademark Office (USPTO).

At Inohelp, we conducted a study to determine a set of best practices followed at the IPO. For this, we analyzed the prosecution history of close to 50 granted patents to identify the set of best practices, and tried to determine examiner objections, which could have been easily avoided by making minor or appropriate amendments at the time of filing the PCT national phase or convention patent application.  Table 1 classifies practices in 3 categories related to sections of a complete patent specification: Description, Claims, Figures, and a category: Filing Formalities.

 The study concluded that if these minor and appropriate amendments are made to the PCT national phase or convention patent applications at the filing stage itself, a lot of examination time could be saved, leading to better and timely grants of the patents.

Unfortunately, the practice of modifying or amending the patent application according to the best practices is not religiously adopted by attorneys in India. The attorneys only amend sections, such as figures, or abstract, and refrain from amending claims and description section. The main reasons for such non-amendment may be inhibition on the part of an attorney to approach clients and suggest voluntary amendments. Moreover, such amendments may additionally involve efforts and separate formalities in terms of preparing additional forms, which attorneys may try to avoid. Therefore, attorneys may resort to a well accepted practice of filing the application as it is, allowing the patent office to raise the objections in the FER, and traversing the objections later. This wasteful effort may be avoided by adopting the patent application according to the best practices, some of which are as cited above, leading to speedy grant of a patent.

We at Inohelp, follow a strict practice of reviewing all national phase or convention patent applications, and suggesting our clients possible amendments in the complete specification before filing the application at the IPO. The acceptance of these amendments is on the discretion of the client, who we find seldom disagrees with the suggestions.

Inohelp Consulting Solutions Pvt. Ltd.

13 August 2010

High Court cracks down on frivolous pre-grant opposition practice - Orders patent office to publish grant of patents on its website

The High Court of Delhi cracked down heavily on the practice of filing frivolous pre-grant oppositions in the Indian patent system.

Section 25 (1) of the Indian Patent Act allows any interested party to oppose grant of a patent to an applicant, provided the opposition is instituted anytime before the grant of the patent. The pre-grant opposition could be on any of the 11 grounds mentioned in the act including lack of novelty, obviousness, and wrongful obtaining of an invention.

The court observed in (Snehlata V. UOI) that there has been a rampant exploitation of the mechanism of pre-grant oppositions to the detriment of a patent applicant. The court noticed that opponents use additional time (arising due to bureaucratic delays in issue of ‘certificate of grant’ to the applicant) to institute pre-grant opposition proceedings. The Indian patent laws mandate the patent office to dispose all pre-grant opposition proceedings before granting the patent. Consequently, institution of pre-grant oppositions in this additional time puts the patent applicant in disadvantage by further delaying the issue of certificate of grant.

The High Court order clarified that a patent is deemed to be granted on the date, when an order of grant is signed by controller of the patent office. Further, the court ordered the patent office to immediately place the order of grant on the patent office website so as to eliminate any such detrimental time gap. However, its been 2 weeks, still there seems to be no signs of any such orders uploaded on the Indian patent office website.

The decision is considered to be a landmark judgment in the Indian patent prosecution practice. For the first time, any court has interpreted what the date of grant is? This interpretation also clarifies that the patentees could enforce their patent rights from the date the order is passed by the patent office, rather than after the issue of certificate of grant.

Inohelp Consulting Solutions Pvt. Ltd.