Monthly Archives: February 2016

Make the Most of Dynamic Patent Utilities from Indian Patent Office (IPO)

This article discusses at length the importance of each dynamic patent utility from IPO so that each reader can make most out of it. Order in which they are discussed do not signify anything and have been discussed in random order.

  1. RQ status of issued FERs

Utilization:

Indian Patent Office examines the patent applications in the order in which request for examination was filed. There is no provision for request for early examination under Indian Patent laws. ‘RQ status of issued FERs’ utility lets one know month and year of request for examination for which FER is being issued. This facility covers all the four patent offices i.e. Delhi, Mumbai, Kolkata and Chennai. Further for each location, status can be obtained for all four examination groups i.e. Electrical/Electronics, Biotechnology, Chemistry and Mechanical. If FER is not received for the RQ that are 3 months prior to currently displayed month & year of any group for any location, one can submit grievance stating the Application number, RQ number, RQ Date and other particulars at the message board which can be accesses at the hyperlink provided. Any discrepancy may be notified to respective Patent Office on the following Email Addresses: delhi-patent@nic.in, mumbai-patent@nic.in, chennai-patent@nic.in, and kolkata-patent@nic.in.

  1. Dynamic FER View

Utilization:

This utility enables one to understand FERs being issued for any given month from the year 2013. This utility gives output of each of the four examination groups for any of the four patent offices in India. The output given by this utility dynamic and actual output should be referred in RFD documents published by Indian Patent Office. Any discrepancy may be notified to respective Patent Office on the following Email Addresses: delhi-patent@nic.in, mumbai-patent@nic.in, chennai-patent@nic.in, and kolkata-patent@nic.in.

  1. Information u/s 146 (Working of Patents)

Utilization:

This dynamic utility gives information on the working on patented information on commercial scale in India as required to be furnished by patentee or licensee U/S 146 of the Indian Patents Act, 1970.  This information is required to be furnished in accordance with the section 146 of the Indian Patents Act, 1970 and rules under patent rules, 2003. This utility provides data for the years 2012 and 2013. One can search for the data by submitting either of the patent number or application number or name of patentee. One can also choose to see complete data for any of the four patent offices. Note has to be taken here that data under processing may not appear here. Any discrepancy may be notified to respective Patent Office on the following Email Addresses: delhi-patent@nic.in, mumbai-patent@nic.in, chennai-patent@nic.in, and kolkata-patent@nic.in.

  1. Disposal of Patent Applications

Utilization:

One can use this utility to get number of patent applications granted, refused or abandoned under section 21 (1) for each examination group for any of the four patent offices for any month starting from April of year 2012 to December of year 2015. With this utility one can also understand disposal of patent applications between two dates starting from April 01, 2012. The output given by this utility dynamic and actual output should be referred in in RFD documents published by Indian Patent Office. Any discrepancy may be notified to respective Patent Office on the following Email Addresses: delhi-patent@nic.in, mumbai-patent@nic.in, chennai-patent@nic.in, and kolkata-patent@nic.in.

  1. Expired Patents

Utilization:

With this utility, one can search for the patents for which term has been expired. One can also search for the expired patents separated according to the field of invention available in the dropdown list. One can also search for patents which have been ceased due to non-payment of renewal fees with or without selecting filed of invention from the dropdown list. The list may be updated on restoration of lapsed/ceased patents. One can also search for the status by patent number or title of invention. It is to be noted that this utility does not provide legal status and actual status needs to be confirmed from the respective patent office. The list is dynamic and subject to digitization status of patents. This utility can be used to understand which inventions can be used publicly without infringement. Any discrepancy may be notified to respective Patent Office on the following Email Addresses: delhi-patent@nic.in, mumbai-patent@nic.in, chennai-patent@nic.in, and kolkata-patent@nic.in.

  1. Stock and Flow of Patents

Utilization:

This utility allows one to understand stock and flow for the current month or even date-wise also. This gives idea about inflow to and outflow from publication stock, allotment stock, examiner’s stock, controller’s FER stock, controller’s disposal stock, patent register stock. The data made available is dynamic in nature and subject to digitization of records, availability of backlog records in proper format and network traffic. Any discrepancy may be notified to respective Patent Office on the following Email Addresses: delhi-patent@nic.in, mumbai-patent@nic.in, chennai-patent@nic.in, and kolkata-patent@nic.in.

  1. Dynamic Status of Patent Applications as per field of invention

Utilization:

We are not being able to access this utility due to unidentified problem. We shall be updating this article with information on this utility sooner we are able to access the same.

The information provided in this article is subject to change as IPO updates its data so dates provided may change and may not hold true depending on date of access to article.

As all the above utilities are available free of cost, applicants and agents can make most out of it. In the coming time, we expect more utilities from Indian Patent Office especially in light of the more and more steps being taken from government these days to improvise Indian IP system.

Happy Reading!!!

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

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Make the Most of Dynamic Trademark Utilities from Trademark Registry (TMR) India

This article discusses at length the importance of each dynamic trademark utility from TMR so that each reader can make most out of it. Order in which they are discussed do not signify anything and have been discussed in random order.

  1. Disposal & Notices

With this utility, one can understand expedited, normal and total applications examined, disposed through show cause hearing, published, registered, other applications disposed branch-wise, notices generated, International Applications Designated India for any given month from January 2012 to December 2015. Search can also be done to understand expedited, normal and total applications examined, disposed off through show cause hearing, published, registered, other applications disposed branch-wise, notices generated, International Applications Designated India during two dates.

  1. Stock & flow of Trademarks

With this utility one can get summary as on date for new applications received, awaiting examination, under examination, post examined, under show cause hearing, published and awaiting opposition, under opposition, under registration, registered. The data available is further divided to give idea about all five offices of registry i.e. Delhi, Mumbai, Kolkata, Chennai, and Ahmedabad. Details can also be sought branch-wise for all 45 classes of goods and services for each of the above mentioned stages of application as on date. One can also get summary for the period of 01/01/2012 to current date of inflow from filing to new applications received, outflow from new applications received to awaiting examination, outflow from awaiting examination to examination, outflow from examination to post examination or publication, outflow from post examination to show cause hearing, outflow from show cause hearing to publication, outflow from publication to opposition or registration, outflow from under opposition to under registration process, outflow from under registration process to registration. Details can also be sought branch-wise for all 45 classes of goods and services for each of the above mentioned inflows and outflows for the period of 01/01/2012 to current date.

The information provided in this article is subject to change as TMR updates its data so dates provided may change and may not hold true depending on date of access to article.

As all the above utilities are available free of cost, applicants and agents can make most out of it. In the coming time, we expect more utilities from TMR India especially in light of the more and more steps being taken from government these days to improvise Indian IP system.

Happy Reading!!!

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Indian Patent Office Rejected Compulsory License Application (C.L.A. No.1 of 2015) for “Saxagliptin” Filed by Lee Pharma Ltd.

In an order dated 19th January 2016, the Controller of Patents rejected the compulsory license application of Hyderabad based drug maker Lee Pharma Ltd. to manufacture generic version of AstraZeneca’s anti-diabetic drug Saxagliptin. The Controller of Patents rejected the application on the grounds that substitutes to the drug Saxagliptin are readily available in the Indian market and the Lee Pharma’s claim that requirements of public with respect to the patented invention are not being satisfied has not been proven.

Lee Pharma filed an application under Section 84 (1) of the Patents Act 1970 on 29th June 2015, seeking grant of a compulsory license for manufacturing and selling the compound Saxagliptin (an anti-diabetic drug), which is protected by Patent number 206543 titled “A cyclopropyl-fused pyrrolidine-based compound” granted on 30th April 2007 to Bristal Myers Squibb (BMS). BMS transferred the ownership rights in the Indian patent 206543 to AstraZeneca by virtue of an assignment deed.

While the patent office had heard Lee Pharma’s case in August 2015 and denied a compulsory license, the application was heard afresh after Shri. O P Gupta, the new controller general of patents, assumed office in November 2015. In August 2015, Shri. Rajiv Aggarwal, the then Controller of patents had rejected the compulsory license application. “The applicant has failed to prima facie show that the patented invention is not worked in the territory of India…I am therefore of the view that a prima facie case has not been made out for the making of an order under Section 84,” Aggarwal said in his Aug. 2015 order.

Lee Parma made the compulsory license application on the grounds that the reasonable requirements of the public with respect to the patented invention have not been satisfied, the patented invention is not available to the public at a reasonably affordable price and that the patented invention is not worked in the territory of India.

Lee Pharma submitted that out of all DPP-4 inhibitors presently available in India, Saxagliptin is the latest and the best option for the treatment of Type-II diabetes while the others have side effects, and there is more than 99% shortage of Saxagliptin in the Indian Market, therefore the reasonable requirements of the public with respect to the patented invention under Section 84 (1)(a) were not satisfied by the Patentee.

However, the Controller observed that Lee Pharma’s submission has not demonstrated the reasonable requirements of the public in respect of Saxagliptin and also the exact quantitative requirement of Saxagliptin in India in terms of number of patients requiring it by way of any authentic data or concrete evidence.  The Controller noted that in the absence of any authentic evidence from any statutory authority, it is difficult to conclude whether or not the Patentee is meeting the reasonable requirements of the public in respect of the patented invention.

The Controller further noted that the availability and affordability of Saxagliptin in India could not be determined as Lee Pharma, in their application or in their submissions, has not furnished the details of the reasonable requirements of the public in respect of Saxagliptin, the comparative requirements of Saxagliptin and other DPP-4 inhibitors such as Linagliptin, Sitagliptin and Vildagliptin, or any authentic data/statistics on Saxagliptin prescription by the doctors over other DPP-4 inhibitors.

In addition, under clause (c) of Section 84 (1), Lee Pharma submitted that the Patentee has not taken adequate steps to manufacture Saxagliptin in India and make full use of the invention in India to an adequate extent that is reasonable practicable even after the lapse of a long period of about eight years from the date of grant (30th April 2007). Lee Pharma also submitted that the working of the patented product in the country was hindered by the importation from abroad.

This ground was rejected on the basis that manufacturing the drug in India is not a precondition to establish working in India. The Controller noted that it was difficult to conclude whether manufacturing in India was necessary or not since Lee Pharma failed to show the exact quantitative requirement of Saxagliptin in India in terms of number of patients requiring it.

In the latest order of 19th 2016, Gupta said, “As the applicant has failed to provide evidence along with application or during hearing or by supplementary submissions and failed to satisfy the controller regarding any of the grounds as specified in Section 84(1) of the Act, I am therefore of the view that a prima facie case has not been made out for making of an order U/S 84 of the Act. Therefore, the application for grant of compulsory license by the applicant is hereby rejected.”

About the Author: Antony David, Senior Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: antony@khuranaandkhurana.com.