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Patent Slides
Patent Slides
Patent Slides
i. The Court observed that the product was one of the new
forms of the substance and not the whole substance. It has
always existed in the original amorphous form. The product
thus has to qualify the test laid down in Section 3(d) of the
Patent Act.
ii. The Section clearly specifies that a new form of a known
substance is not patentable under Indian law unless it
enhances its “known efficacy”.
iii. Novartis contended that the physico-chemical properties of
the polymorph form of the Imatinib molecule, i.e. better flow
properties (more processable), better thermodynamic stability
(facilitating storage) and lower hygroscopicity (increased shelf
life), resulted in improved efficacy and hence was patentable
under Indian law.
NOVARTIS AG V. UOI (CONTD.)
The Apex Court rejected this contention stating that in the
case of medicines, efficacy meant “therapeutic efficacy”
and these properties while they may be beneficial to
some patients, did not meet this standard.
The Supreme Court held that neither the Act nor the
international practice gave a clear definition of efficacy.
The true intention to enact Section 3(d) was to prevent
the concept of ever-greening and thus if the invention
does not fulfil the test of Section 3(d), it cannot be
granted a patent.
With regard to the field of medicine especially in cases of
life-saving drugs, a great care and caution needs to be
taken so as to protect the right to life of the masses.
DIAMOND V. CHAKRABARTHY (CONTD.)
The patents covered the act of isolating the genes and the
creation of cDNA, giving Myriad exclusive rights to control
those processes for 20 years.
Although the actions described in the patents are part of the
process of Myriad's BRCA1/2 testing, it is important to note
that Myriad's patents did not cover any unique testing
methods.
When scientists at other institutions began offering BRCA
testing after Myriad had discovered the genes, Myriad ordered
them to stop, asserting that the testing infringed Myriad's
patents.
One of the scientists who had been ordered to stop, Dr. Harry
Ostrer, sued to declare Myriad's patents invalid, joined by
other doctors, patients, and advocacy groups.
ASSOCIATION FOR MOLECULAR PATHOLOGY
V. MYRIAD GENETICS (CONTD.)
While asserting these patents to exclude other testing providers, Myriad was the only
company that could administer the BRCA1/2 test, for which it charged $3,000–
$4,000, yielding a profit of $57 million through June 2013.
ASSOCIATION FOR MOLECULAR
PATHOLOGY V. MYRIAD GENETICS
(CONTD.)
The question before the Supreme Court was whether
Myriad's patents pertain to a “new and useful composition
of matter” or simply “naturally occurring phenomena.”
In a unanimous decision of 9-0, the Court ruled that cDNA
is patentable, while segmented natural DNA is not.
“A naturally occurring DNA segment is a product of nature
and not patent eligible merely because it has been
isolated…”
Regarding segmented DNA, the Court explained that...
“Myriad did not create anything. To be sure, it found an
important and useful gene, but separating that gene from its
surrounding genetic material is not an act of invention.”
ASSOCIATION FOR MOLECULAR PATHOLOGY
V. MYRIAD GENETICS (CONTD.)
The Court did appear to leave the door slightly ajar for
other cloned animals, stating that:
“There is nothing in the claims, or even in the specification,
that suggests that the clones are distinct in any relevant
way from the donor animals of which they are copies. The
clones are defined in terms of the identity of their nuclear
DNA to that of the donor mammals. To be clear, having
the same nuclear DNA as the donor mammal may not
necessarily result in patent ineligibility in every case. Here
however, the claims do not describe clones that have
markedly different characteristics from the donor animals
of which they are copies.”
IN RE ROSLIN INSTITUTE: DOLLY THE SHEEP
CLONING CASE (CONTD.)