RECENT PATENT TRENDS

BY:
NISHANT KEWALRAMANI
PORTFOLIO MANAGER
BRAIN LEAGUE IP SERVICES
 AGENDA

Patent prosecution history

Speaking Order
Patent Application- Abandonment v. Rejection
Patent Law- Linkage with other laws
BILSKI- US decision on process claims

© 2010 Brain League IP Services Pvt. Ltd.

 Prosecution History

 Prosecution History
 All communication that takes place between the applicant and
the patent office.

 Traditionally this communication was treated by the patent

office as confidential.

 Complete Specifications of only granted patents were

available.
 Prosecution History (cont…)
 RTI-
 Right to Information applications versus confidentiality
 Controller of Patents, Designs & Trademarks issued an office
instruction on April 15, 2010 to supply upon request all
correspondence between the applicant and patent office.
 Rationale- helpful for pre grant opposition
 Prosecution History Estoppel
(PHE)
 Originated from the US
 If an applicant narrows the claims during examination he
cannot claim infringement for the pre-amendment patent
claims
 No case regarding applicability of PHE in India- law not
clear on the point.
 Circular of April 15, 2010- may lead India in the same
direction.
 Taking Cue
 Initial claim:
 I claim a ceiling fan comprising of a base, connected to a rod
which in turn is connected to a rotor with three wings.

 During prosecution history an amendment is made in order

to respond to an Examination report
 I claim a ceiling fan comprising of a base, connected to a solid
rod which in turn is connected to a rotor with three wings.
 Speaking Order
 Patent application for a molecule used in the treatment of
diabetes

 First Examination Report

 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”
 Applicant responds by giving a detailed explanation of
differences between the extract disclosed in the text and the
molecule.
 Applicant further states that a hearing must be given before
making an adverse decision.
 Second Examination Report-
 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”
 First Examination Report
 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”

 Second Examination Report-

 “…The molecule lacks novelty and inventive step because it
forms part of a publication in a text that discloses a herbal
extract for diabetes treatment.”
 Not a speaking Order

 Hearing must be given- adherence to principles of natural

justice
 Magical Sentence- “Kindly provide hearing in case of
adverse decision on the application.”
 Valencia CTT v. Union of India (decided on 26 th
Feb 2010)
 Patent Process
Filing
mo nths
48
18 months

Publication Request for

6 months
Examination

6 mo
FER nths

12 months

Putting app in order for grant

 Abandonment v. Refusal
 Abandonment
 Application considered abandoned if all requirements not
complied with
 Cannot be appealed
 Refusal
 General power of the Controller to Refuse
 Can be appealed
 Patent Office Practice-
 Application abandoned whether reply to examination report
filed or not.
 Ericsson v. UOI (Decided on March 11, 2010)
 29th July 2005- Ericsson filed national phase patent application
 8th October 2007- First Examination report issued and defects
pointed out which was replied on 10th Dec. 2007
 25th July 2008- Another examination report sent by controller
restating points already mentioned in first information report.
Replied on 22nd Sept 2008
 10th October 2008- Patent office wrote a letter to the petitioner
stating that despite response of the petitioner on 22nd September
2008, the specification of the petitioner was still defective on
various grounds and the application was deemed to be abandoned
under section 21(1).
Delhi High Court Held:

Abandonment-
When reply to examination report is not filed at all.

Refusal-
If reply is filed then the application cannot be abandoned and has
to be refused.
 Patent Law and Linkage
 Bayer Corporation v. Union of India
 Decided on 9th Feb 2010

 CIPLA filed for a drug license for the generic drug ‘Soranib’.
 Bayer corporation sent a letter to the drug controller
requesting him not to grant approval as Bayer holds a patent
on ‘Sorafenib Tosylate’ and Soranib is a substitute of their
patented drug.
 Drug Controller granted the drug license.
 Bayer filed a petition in the Delhi High Court against the
approval granted by the Drug Controller.
 Bayer’s contention- If drug controller had previous
knowledge of potential patent violation he should not grant
approval.
 Decision- Drug Controller doesn’t have to travel beyond the
scope of Drugs & Cosmetics Act and rules. Shouldn’t refuse
license on the pretext of possible violation of a patent.
 BILSKI- US Supreme Court
 Decision- June 28, 2010
 Hedging of risks related invention
 CAFC- Machine or Transformation test
 Tied to a machine/change in a physical tangible object
 Supreme Court
 Machine or Transformation test not sufficient
 There are only three exceptions under US law
Physical Phenomenon, laws of nature and abstract ideas
 Machine or transformation is not the sole test for determining
patentability of process claims.
 However it is a very important inquiry.
 Process and method claims are patentable if they are not directed
towards an abstract idea.

Examination policy memo to examiners-

 Examiners will reject process claims that do not satisfy the machine or
transformation test unless there is a clear indication that the claims is
not directed to an abstract idea.
THANK YOU

nishant@brainleague.com