Category Archives: News & Updates

United States district court upholds the validity of two Horizon Pharma patents covering VIMOVO®

Horizon Pharma plc, an Irish specialty biopharmaceutical company, on 27 June 2017, reported that the United States district court for the district of New Jersey upheld the validity of two Horizon Pharma patents covering VIMOVO®, a pain relief treatment for arthritis patients, and that the ANDA applicants viz. Lupin Limited, Dr. Reddy’s Laboratories and Mylan Inc. would infringe at least one of the two patents with their proposed generic version of VIMOVO®.

What is VIMOVO®?

            VIMOVO® is a fixed dose combination of naproxen, a nonsteroidal anti-inflammatory drug (NSAID), and esomeprazole magnesium, a proton pump inhibitor (PPI). VIMOVO is used to relieve signs and symptoms of osteoarthritis, rheumatoid arthritis, and ankylosing spondylitis and to decrease the risk of developing stomach (gastric) ulcers in people who are at risk of developing gastric ulcers with NSAIDs.

            The two Horizon Pharma patents which cover VIMOVO® and have now been upheld as valid by the US district court are:

  1. US6926907B2 – expires in February 2023. The US’907 patent claims a pharmaceutical composition in unit dosage form comprising therapeutically effective amounts of an acid inhibitor and a non-steroidal anti-inflammatory drug (NSAID), which unit dosage form provides for coordinated release of the acid inhibitor and the NSAID.
  2. US8557285B2 – expires in May 2022. The US’285 patent claims a pharmaceutical composition in unit dosage form comprising therapeutically effective amounts of: (a) esomeprazole, wherein at least a portion of said esomeprazole is not surrounded by an enteric coating; and (b) naproxen surrounded by a coating that inhibits its release from said unit dosage form unless said dosage form is in a medium with a pH of 3.5 or higher; wherein said unit dosage form provides for release of said esomeprazole such that upon introduction of said unit dosage form into a medium, at least a portion of said esomeprazole is released regardless of the pH of the medium.

            On April 21, 2011, July 25, 2011, and June 28, 2013, Horizon Pharma filed patent infringement lawsuits at the New Jersey District Court against Lupin Limited, Dr. Reddy’s Laboratories and Mylan Inc., seeking adjudication for patent infringement by these companies of one or more claims of the US‘907 and US’285 Patents. The infringement lawsuit came after these companies filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration (FDA) seeking regulatory approval to market a generic version of VIMOVO before the expiration of the US‘907 patent in February 2023 and the US’285 patent in May 2022. At trial, the ANDA applicants alleged that the claims of the US‘907 and US’285 patents, listed in the Orange Book for VIMOVO were invalid.

            The announcement from Horizon Pharma came on the same day the U.S. district court for the district of New Jersey ruled in favor of Horizon Pharma and upheld the validity and enforceability of the patents at issue. Horizon Pharma says the outcome of the infringement lawsuit will prevent the launch of generic VIMOVO, which is being developed by Indian drug makers Lupin Limited and Dr. Reddy’s Laboratories as well as American generic drug maker Mylan Inc., in the United States.

TAKEDA PHARMACEUTICAL’S PATENT ON CANCER DRUG VELCADE® UPHELD BY THE US COURT OF APPEALS FOR THE FEDERAL CIRCUIT

On July 17, 2017, the United States Court of Appeals for the Federal Circuit ruled that the U.S. Patent No. 6,713,446 (“the ‘446 patent”) covering Takeda Pharmaceutical’s cancer drug Velcade® is valid and enforceable. The appellate court decision overturned an earlier 2015 decision from a US District Court which ruled the ‘446 patent was invalid as the compound it covered was the result of an obvious process. The lawsuit came on the heels of ANDA submissions by generic companies, including Sandoz Inc, Accord Healthcare Inc, and Actavis LLC, to the FDA for a generic version of Velcade® prior to the expiration of the ‘446 patent in 2022.

VELCADE®:

Velcade® (bortezomib) is approved for the treatment of people with multiple myeloma (a cancer of the plasma cells). Velcade® is also approved for the treatment of people with mantle cell lymphoma (a cancer of the lymph nodes). The drug generated U.S. sales of $1.13 billion in 2016.

In 2003, the Food and Drug Administration (“FDA”) granted “accelerated approval” to New Drug Application No. 21-602 for VELCADE® for Injection, for the treatment by intravenous administration of patients with multiple myeloma who have received at least two prior therapies and have demonstrated disease progression on the last therapy. VELCADE® for Injection was subsequently approved in 2005 for treatment by intravenous administration of patients with multiple myeloma who had received at least one prior therapy; in 2006 for treatment by intravenous administration of patients with mantle cell lymphoma who had failed at least one prior therapy; in 2008 for frontline treatment by intravenous administration of patients with multiple myeloma; in 2012 for subcutaneous administration; and in 2014 for treatment of adult patients with multiple myeloma who had previously responded to VELCADE® for Injection therapy and relapsed at least six months following completion of prior VELCADE® for Injection treatment.

The ‘446 patent has been listed in connection with VELCADE® for Injection in the FDA’s Orange Book.

 

US District Court ruling related to VELCADE® patent:

On August 2, 2012, November 19, 2012, and December 21, 2012, Millennium Pharmaceuticals Inc filed patent infringement lawsuits in the United States District Court for the Delaware against Sandoz Inc, Accord Healthcare Inc, and Actavis LLC (collectively, “defendants”) respectively, alleging that the ANDA applications filed by the defendants infringe on claims 20, 31, 49, and 53 of the ‘446 patent. The defendants argued, and the District Court agreed, that asserted claims 20, 31, 49, and 53 of the ‘446 Patent were invalid as obvious.

Millennium Pharmaceuticals Inc, the Takeda Oncology Company, is the exclusive licensee of the ‘446 patent which covers a D-mannitol ester of bortezomib, the active ingredient in Velcade®. This active ingredient is claimed in claim 20 of the ‘446 patent:

[Claim 20] The lyophilized compound D-mannitol N-(2-pyrazine)carbonyl-L-phenylalanine-L-leucine boronate.

Claims 31, 49, and 53 of the ‘446 patent recite method of preparing the D-mannitol ester of bortezomib via lyophilization, a lyophilized cake comprising the D-mannitol ester of bortezomib, and reconstitution of the lyophilized mixture with a pharmaceutically acceptable carrier, respectively.

[Claim 31] The method of claim 23, wherein the compound of formula (1) is D-mannitol N-(2-pyrazine)carbonyl-L-phenylalanine-L-leucine boronate.

[Claim 49] A lyophilized cake comprising the compound of claim 20.

[Claim 53] The method of claim 31 further comprising (c) reconstituting the lyophilized mixture with a pharmaceutically-acceptable carrier.

Bortezomib and its esters were already described and claimed in U.S. Patent No. 5,780,454 (“the ‘454 patent”). The ‘454 patent also identified bortezomib as a very potent, promising lead candidate with the highest in-vivo activity of all the compounds disclosed in the ‘454 patent. The ‘454 patent was considered as the closest prior art document by the defendants as well as the district court.

At trial, the defendants predominately argued that the asserted claims were obvious because the ‘446 patent claims the inherent result of an obvious process-namely, that freeze-drying bortezomib with mannitol produces an ester. Specifically, the defendants argued that lyophilization is a standard formulation option and that one skilled in the art would have chosen lyophilization process in order to stabilize bortezomib. In response, Millennium Pharmaceuticals argued that a person of ordinary skill would avoid lyophilization in developing a formulation involving bortezomib because bortezomib was known to be unstable even in the dry state as a freestanding solid compound. Millennium Pharmaceuticals also argued that a person of ordinary skill would not have expected a lyophilized mannitol ester of bortezomib to provide dramatic improvements in stability, solubility and dissolution as compared to bortezomib. The district court however agreed with the defendants that lyophilization was well-known in the field of formulation and often utilized when a liquid formulation provided limited success, and that the decision to attempt a lyophilized formulation of bortezomib was routine application of a well-known problem-solving strategy. The district court also concluded that mannitol was among the “finite number of identified, predictable solutions” to freeze-drying investigational anti-cancer drugs like bortezomib, and one skilled in the art would have found it obvious to choose mannitol for the lyophilization process. As such, the asserted claims of the ‘446 patent were found invalid under 35 U.S.C. § 103.

 

US Appeals Court reverses the District Court’s obviousness determination:

The US Court of Appeals for the Federal Circuit first analyzed the District Court’s obviousness determination by framing the relevant question as whether a person of ordinary skill, seeking to remedy the known instability and insolubility and to produce an efficacious formulation of bortezomib, would obviously produce the claimed and previously unknown D-mannitol ester of bortezomib. In its analysis, the Federal Circuit found error in the District Court’s obviousness determination because (1) there is no teaching or suggestion in the prior art references to produce the claimed mannitol ester, (2) no reference or combination of references provide a reason to make the claimed mannitol ester of bortezomib, and (3) no reference shows or suggests ester formation at freeze-drying conditions, or that any such ester might solve the problems of instability and insolubility of the free acid while dissociating rapidly in the bloodstream.

The Federal Circuit agreed with the defendants that lyophilization was generally known in formulating pharmaceutical products, bulking agents were known for use in lyophilization, and mannitol was a known bulking agent. However, the Federal Circuit explained that for the compound to be obvious, the prior art must teach or suggest that lyophilization of bortezomib in the presence of mannitol would produce a chemical reaction and form a new chemical compound (i.e. mannitol ester of bortezomib), or provide a reason to make this specific new chemical compound, or describe that this new compound would solve the previously intractable problems of bortezomib formulation. The Federal Circuit also stated that “[a]lthough mannitol was a known bulking agent, and lyophilization was a known method of drug formulation, nothing on the record teaches or suggests that a person of ordinary skill should have used mannitol as part of a synthetic reaction to make an ester through lyophilization.”

With regard to the District Court’s conclusion concerning the unexpected results and commercial success of the lyophilized mannitol ester of bortezomib, the Federal Circuit made the following ruling:

“We conclude that the district court should have treated bortezomib as the closest prior art compound, and acknowledged the unrebutted evidence that the D-mannitol ester of bortezomib exhibited unexpected results compared with bortezomib, including unexpectedly superior stability, solubility, and dissolution.”

 

“The district court clearly erred in attributing Velcade®’s commercial success to bortezomib alone, as bortezomib is not a viable commercial product and had been denied FDA approval because of its instability. The D-mannitol ester was responsible for Velcade®’s successful results, for the D-mannitol ester is necessary to provide the required solubility and stability.”

Accordingly, the Federal Circuit reversed the District Court’s ruling that the asserted claims of the ‘446 patent are invalid due to obviousness. The appellate court’s ruling will help Takeda to put off the risk of generic competition until the ‘446 patent expires in 2

GST IMPLICATION ON INTELLECTUAL PROPERTY

GST IMPLICATION ON INTELLECTUAL PROPERTY

  1. Once upon a time . . .

Before the Goods and Services Tax (GST) regime,the Union government exclusively used to levy tax on transactions relating to Intellectual Property (IP) rightsif such were classified as services[1] (under Service Tax, Chapter V, Finance Act, 1994), while the State governments used to levy tax on IP rights if the transaction involving such were classified as sale/deemed[2] sale of goods[3] (under State Sales Tax/State Value Added Tax or Central Sales Tax which was collected and retained by the originating State). The aforesaid indirect tax system required interpretation on the classification of the transaction.This often led to double taxation when the same transaction was subjected to both sales tax and service tax due to the industry being cautious so as to avoid penalties of avoiding tax.

 

  1. Growing Stronger Together

With the advent of GST, the need to classify transactions involving IP as either relating to rendering of service or sale/deemed sale of goods was absolved. This is due to GST being concurrent[4] in naturewith the Centre and the States simultaneously and seperately levying it on a common base or transaction irrespective of its classification. It is pertinent to note that GST would be applicable on supply of goods or services[5] as against the previous concept of tax on the manufacture of goods or on sale of goods or on provision of services.

The GST to be levied for intra-state supply of goods and services by the Centre would be called Central GST (CGST) and that to be levied by the States [including Union territories with legislature] would be called State GST (SGST). On inter-state supply of goods and services, Integrated GST (IGST) is to be collected by the Centre.[6] IGST would also be applicable on imports.[7] GST is a destination based consumption tax, that is, the tax is received by the state in which the goods or services are consumed and not by the state in which such goods are manufactured.

 

  1. Rates in relation to Intellectual Property

Section 9 of the CGST, 2017 [corresponding section 9 of SGST] states that the CGST (or SGST as the case may be) shall be levied on the transaction value[8] or the price actually paid or payable for the said supply of goods and/or services and at such rate to be notified on the recommendations of the GST Council. Subsequently, the rates have been notified as follows[9]:

Under Sl. No. 17, Heading 9973-

  • Temporary or permanent transfer or permitting the use or enjoyment of Intellectual Property (IP) right in respect of goods other than Information Technology software at the rate of 12% (6% CGST and 6% SGST).
  • Temporary or permanent transfer or permitting the use or enjoyment of Intellectual Property (IP) right in respect of Information Technology software at the rate of 18% (9% CGST and 9% SGST).

“Information Technology software” means[10] any representation of instructions, data, sound or image, including source code and object code, recorded in a machine readable form, and capable of being manipulated or providing interactivity to a user, by means of a computer or an automatic data processing machine or any other device or equipment.

  • Transfer of the right to use any goods for any purpose (whether or not for a specified period) for cash, deferred payment or other valuable consideration at the same rate of central tax as on supply of like goods involving transfer of title in goods.
  • Any transfer of right in goods or of undivided share in goods without the transfer of title thereof at the same rate of central tax as on supply of like goods involving transfer of title in goods.
  1. Brief Analysis

It is pertinent to note that under the GST regime, permanent transfer/sale of a particular intellectual property right would be considered as supply of service and a 12% tax (6% CGST and 6% SGST) would be levied on the transaction price provided such IPR is not in respect of software. Temporary transfer or permission to use or enjoy (license or assignment) any IPR would also be taxable at the same rate provided it is not relating to IT software.

Earlier, permanent transfer was not considered as declared service and hence not exigible under service tax. It is also to be noted that earlier the exclusivity test (whether transfer/assignment/license is exclusive to the transferee) as laid down in the BSNL judgment[11] was the standard for determining whether the transfer would amount tosale (and hence, subject to sales tax) or license (and hence, subject to service tax). Under the GST it is immaterial for the purpose of taxation whether the said transfer is exclusive or for that matter temporary since it will be subjected to the same concurrent tax.

It is also pertinent to note that sale or licensing of intellectual property pertaining to software would be charged 18% tax (9% CGST and 9% SGST). Even though GST has done away with the need to classify transactions in respect of goods and services, the Centre has in a way reversed the TCS judgment[12] which had held that transactions relating to shrink wrapped software (software bound with product) was to be considered as transfer of the right to use such software goods (and hence deemed sale of goods[13]) while the same is to be treated as service due to the notification.[14]

It may also be noted that the Constitution (One Hundred and First Amendment) Act, 2016 [by which the GST was introduced in the constitutional framework] did not amend Article 366(29A)(d) which specifies that the transfer of the right to use any goods is to be deemed as a sale of those goods. However with the aforesaid notification[15], the Centre while notifying the taxation rate, has in a way classified the transfer of the right to use any goods to be treated as service.

  1. Reverse Charge on Copyright

GST is to be levied on the person supplying the goods and/or services. However, Section 9(3) of the CGST Act, 2017 states that the Centre may specify certain categories of supply of goods andservices on which the tax is to be paid on reverse charge basis by the recipient of the supply. Therefore, as per notification[16], the tax on the supply of services by an author, music composer, photographer, artist, etc. by way of transfer or permitting the use or enjoyment of a copyright relating to original literary, dramatic, musical or artistic works to a publisher, music company, producer etc., shall be borne by the said publisher, music company or producer.

  1. “Registered Brand Name” in the context of GST

It is to be noted that the supply of certain goods, such as chena or paneer, natural honey, wheat, rice and other cereals, pulses, flour of cereals and pulses, other than those packed in unit container and bearing a registered brand name, is exempted from CGST[17]. Supply of such goods, when put up in unit container and bearing a registered brand name attracts 2.5% CGST rate[18].

Subsequently, doubts were being raised as to the meaning of “registered brand name”. On July 5, 2017, the Finance Ministry issued a press release[19] clarifying the same. The statement noted that “registered brand name” has been defined in the notifications[20] and the same would mean brand name or trade name which is registered under the Trade Marks Act, 1999. In this regard, registered trade mark means a trade mark which is actually on the register and remaining in force[21].

Thus, unless the brand name or trade name is actually on the Register of Trade Marks and is in force under the Trade Marks Act, 1999, GST rate of 5% (2.5% CGST and 2.5% SGST) will not be applicable on the supply of such goods.[22] It is pertinent to note that this may lead up to a situation wherein a particular company selling, say, cereals in unit containers bearing a brand name but such brand name is not on the Trade Mark Register and hence not in force, would be exempted from GST. Such situation would also extend to new players in the cereals (or other exempted goods) industry who have applied for trademarks and whose marks have not been registered. The relevant question posited by this clarification is that whether smaller players would now be discouraged from filing for trademark registration due to availing tax exemption which in turn would reduce their costs? This might go against the objective of the National IPR Policy 2016, which encourages commercialization of IP at the grass-root level. Still considering the importance of Intellectual Property, such manufacturers need to understand the gravity of the matter that non registering of Trade Mark is not favourable to them considering the market for their products which is ultimately identified by their brand name and hence they cannot afford to not protect their brand name only to save some minor percent of GST. Thus, importance/benefits of Trade Mark Registration when compared to the applicable GST for products under Trade Mark which is not on register, it is indeed crystal clear that manufacturers should protect their IP which in all circumstances should be of paramount interest which help reap profits by leaps and bounds.

  1. Conclusion

With the introduction of GST at nascent stage, it is still to be seen as to how the implementation is carried forward. At the very least, the GST has brought about a positive change by doing away with the need to classify transactions as either relating to goods or services since all transactions would now be concurrently levied tax by both the Centre and the States (provided transaction is intra-state supply; inter-state to be levied exclusively by Centre). The GST has also subsumed numerous central, state and municipal taxes and by doing so, will ensure that indirect tax rates and structures are common across the country thereby increasing certainty and ease of doing business.

About the Author: Pratik Das, Legal Intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at abhijeet@khuranaandkhurana.com

References :

[1] Intellectual Property Service meant the temporary transfer or permission to use or enjoy any intellectual property right.

[2] Article 366 (29A) (d) of the Constitution specifies that the transfer of the right to use any goods to be deemed as a sale of those goods.

[3] Supreme Court in Tata Consultancy Services v. State of Andhra Pradesh,  (2005) 1 SCC 308 held that the term “goods” under Article 366 (12) of the Constitution includes intangible/incorporeal property which is capable of abstraction, consumption and use, and which can be transmitted, transferred, delivered, stored, possessed, etc.

[4]Article 246A, Constitution (One Hundred and First Amendment) Act, 2016.

[5]Articles 366(12A), 286(1A), 286(1B), 286(2), Constitution (One Hundred and First Amendment) Act, 2016.

[6]Article 269A, Constitution (One Hundred and First Amendment) Act, 2016.

[7]Ibid.

[8]Section 15, CGST, 2017.

[9] Notification No. 11/2017-Central Tax (Rate), dated 28th June, 2017 [which notify the rates for supply of services under CGST Act].

[10]Ibid at Explanation (v).

[11]Bharat Sanchar Nigam Ltd. v. Union of India, (2006) 3 SCC 1.

[12]Supra at 3.

[13]Supra at 2.

[14]Supra at 9.

[15]Ibid.

[16]Notification No. 13/2017-Central Tax (Rate), dated 28th June, 2017 [which notify the categories of services on which tax will be payable under reverse charge mechanism under CGST Act].

[17] Notification No. 2/2017-Central Tax (Rate), dated 28th June, 2017 [which exempts intra-state supply of the specified goods from CGST].

[18] Notification No. 1/2017-Central Tax (Rate), dated 28th June, 2017 [which notifies the CGST rates of intra-state supply of goods].

[19]Available at http://pib.nic.in/newsite/PrintRelease.aspx?relid=167146.

[20]Supra at 17, 18.

[21]Section 2(w), Trademarks Act, 1999.

[22]Supra at 19.

Revolutionizing Gesture Recognition Technologies: Project Soli

Google has been a pioneer of a number of leading inventions and projects that have not only changed the way we perceive science and technology but has also made out lives easier and leisurelier. From Google Cardboard to Driverless cars to Google glasses, Google has never disappointed us when it comes to show casing its talent in the world of technology and innovation.

Have you ever fantasied of lowering the volume of your system or changing the time on your phone by making just tiny movements with you hands in air without even touching the screen, like Minority Report and Iron Man movies? Yes? Then Google’s next project has come as an answer to all your fantasies. In June 2015, Google, during it annual developer conference announced the world’s first radar based key technology project, Project Soli that would change the way shoppers interact with wearable devices.

About the project

Soli is a creation of Google’s research and development lab, ATAP (Advanced Technology and Projects), headed by Dr. Ivan Poupyrev, an award-winning scientist, inventor and designer in the field of design and technologies who is famous in blending the realities of digital and physical world. Mr. Poupyrev was Principal Research Scientist at the Walt Disney Imagineering research division.

Soli is a new sensing technology that makes movements or detects touchless gesture with the help of miniature radar. The entire sensor and antenna array is incorporated into an ultra-compact 8mm x 10mm chip (size of a finger-nail). The Soli chip can be embedded in wearable, phones, computers, cars and IoT devices in our environment[1]. Soli has no moving parts; it gets attached onto a chip and consumes little energy. The chip does not get bothered by light conditions and works through most materials.

The radars emitted by the chip, keeps a track of movements with sub-millimeter accuracy, helping you control the volume of a speaker, or dialing number in mid-air. Google’s Soli radars are so accurate that they not only detect the exterior of an object, but also its internal structure and rear surface, helping you to know what the thing is.

How does Soli work?

The Soli Sensor:

Project Soli is based on the concept of touchless interactions, which can be achieved with radar system. The device used in the project is RadarCat (Radar Categorization for Input and Interaction) and functions like any normal radar system. It is a small, versatile radar-based system to identify material and object classifications that help you interact with digital devices.

Think that you are walking in dark and you use torch to see the objects. The light beam that travels out from the torch, reflects off objects in front of you, and bounces back into your eyes, which helps you see the objects lying near you. RadarCat also functions in a very similar manner. The base units fires electromagnetic waves at its target, some of which gets bounce back and return to the radar antenna helping in detecting the movement and gesture of the hands.

It is just not the bouncing back of the radar that helps Soli in analyzing the hand movements, size, shape, orientation, material, distance, and velocity of the object but properties such as energy, time delay, and frequency also help in analyzing the work.

So in short, the radar base emits a broad beam of electromagnets, which in turn gets reflected because of the hand gestures. The sensor then receives motion of signals as a series of reflections, which in turn is detected by the radar chip and are transformed into multiple representations. From these representations, engineers can extract features, such as “range doppler distance”. The features are then passed to machine learning algorithms, which interpret them and approximate hand motions based on the signals received.[2]A device that is capable of classifying and interpreting gestures, perceives all the motion signals. For example:-

  • A pinching motion can indicate the press of a button.
  • Rubbing a finger along the length of a thumb can indicate moving a slider, say for volume control.
  • Pulling your thumb across your pointer knuckle simulates dragging a screen.

The radar sensors used in Soli does not require large bandwidth and high spatial resolution like the traditional radars. Rather Soli’s evaluation board has juts two transmit antennas and four receive antennas. It’s spatial resolutions rely on motion resolution that can be perceived by subtle changes from signals that are received over time. It is because of this signal variation that Soli can distinguish complex finger movements and deforming hand shapes within its field.

Limitations of RadarCat

  • RadarCat does occasionally confuse objects with similar material properties (eg. Glass of mirror or a class of a mug),
  • It takes longer to detect a hollow object as compared to the solid objects with flat surfaces.
  • It also needs to be taught how exactly each object looks like before it can recognize it.

How is Project Soli helpful?

The project Soli is futuristic interface that will forever change the way we use all the technological devices, and not just wearable. A smart watch with a Soli chip wouldn’t need a digital crown as you could just wave your fingers in the air to get things done. The work forth going by ATAP is not marvelous but commendable too as to how they transformed a briefcase size radar system into a fingernail sized chip that fits any smart watch. Soli in no time, after its release, will be get updated and could be worked from meters away, which would mean that with a snap of a finger you could control your devices.

This comes as boon for that area of medical field that are under a constant threat of infections and contamination. The benefit of gesture recognition feature over the present multi touch inputs would be that we no longer would be requiring screens. Which would be all new accomplishment in the world of machine and electronics.

Gesture recognition inputs will be a revolutionary and groundbreaking feature in the field of VR devices and play station. This project can further help in improving operator safety at work place. If the operator’s hands aren’t near moving parts of the machine then there are great chances of reducing onsite accidents.

Conclusion

The pace at which developments in technology and digital world is moving is faster than expected. The Project Soli will forever change our perspective on how we interact with machines, specially the wireless ones. Soli was initiated not just with the aim to quantify and interpret human gestures, but it also aimed to refine it to that extent that they could make use of gestures without receiving any interference from the environment.

Project Soli would be seen having major impact on the virtual and augmented reality. Today, where while using VR headsets we have to hold the controller, with this revolutionary project, we can simply use gestures movement to define how a user roams a virtual world.

Google, later this year, would start shipping development kits worldwide for its project, confirmed the ATAP officials at the Game Developer Conference. It would be interesting to see where developments in interface of Soli will take us

ABOUT THE AUTHOR: Ms. Shireen Shukla, intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at  swapnils@khuranaandkhurana.com.

Disclaimer:

Views expressed in this article are solely of the intern and do not reflect the views of either of any of the employees or employers.

[1] ATAP: Google: Soli; What are the potential applications of Soli? <https://atap.google.com/soli/#how-it-works&gt;

[2] Kate Smith: The Tiny Radar Chip Revolutionizing Gesture Recognition: Google ATAP’s Project Soli; All about Circuit < https://www.allaboutcircuits.com/news/radar-chip-revolutionizing-gesture-recognition-google-atap-project-soli/&gt;

MYANMAR: NEW TRADEMARK LAW EXPECTED TO BE ENACTED IN 2017

For the past few years, the nation of Myanmar has been proactively working on the implementation of its first ever formal trademark law, keeping in mind that the new law will overhaul the nation’s legal framework to encourage and motivate the industries and businesses to come and invest and grow in the country [1].

The implementation of this new Trademark law has been projected for this year. Hopefully once this new trademark law becomes effective, the practices which are currently followed by the practitioners i.e. the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which is followed by the cautionary notices published in the newspaper, will then be replaced by the new modern Trademark system which will stick to International standards set by WIPO.

The new Trademark law will prove to be greatly beneficial to the brand owners and businesses as the new law will bring proper clarification to the whole trademark application process. Since the Myanmar market is on an economic rise, the new trademark law, once implemented, will be a welcome move for the businesses and their brands, thereby encouraging further growth and prosperity of their brands in Myanmar.

The New Trademark System

The new Trademark Law will be based on the first-to-file principle. The new law will have the following features:

  1. The new Trademark law will include following marks which can be protected [2]:
  • Smell and touch signs,
  • Visual marks, and
  • Perceivable sound.

The above mentioned marks are categorized further into service, trade, collective marks, and certification. Registration as a group/collection of marks will also be allowed.

  1. The new law will allow both domestic and global/foreign brand owners to apply for registration of trademarks in Myanmar. Having said that, the global/foreign applicants will have to appoint an authorized agent and this agent must be domiciled in Myanmar [2]. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office on their behalf.

The new Trademark law will allow the trademark applications to claim priority from foreign applications/registrations.

  1. The registration process under the new trademark law will include [2]:
  • Filing of an application (where, the application must be either filed in either English or Burmese and must have a Declaration of Intention to Use)
  • Substantive examination and other formalities
  • Publication for opposition and
  • Issuance of certificate.
  1. The validity duration of the registered trademarks will be 10 years from the effective filing date and after each renewal will extend the validity by 10 years [2].
  2. The new Trademark law will also have a provision for submitting a request for a non-use cancellation against those registered trademark which are not in use for a period of 3 consecutive years [2].
  3. The new Myanmar Intellectual Property (IP) office will be created [1] to look after the operations in the new Trademark law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.
  4. Enforcement:

The new Trademark law will have both civil as well as criminal liabilities for potential infringements in Myanmar.Such liabilities as far as Trademark infringement in Myanmar is concerned will have a criminal offence punishable by maximum up to 3 years of imprisonment or fines or both [3].

Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark mark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

  1. Transition from the current to new trademark law

All those owners who have their trademarks registered under the current trademark law will be required to, within the period of three years, re-register under the new law [4].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_4.pdf

[2] http://dbav.org.vn/trademark-protection-in-myanmar-and-the-new-draft-trade-mark-law/

[3] www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf

[4] Griffiths, AJ Park -Amanda. “New Trade Mark Laws for Myanmar Coming in 2017.”Lexology.Lexology, n.d.

 

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES (IPOPHL) LAUNCHED PATENT PROSECUTION HIGHWAY (PPH) PILOT PROGRAM WITH THE EUROPEAN PATENT OFFICE (EPO)

European Patent Office (hereinafter “EPO”) had launched the Patent Prosecution Highway (hereinafter “PPH”) program on July 1st, 2017 [1]. The PPH Pilot Program is part of the agreement made between Intellectual Property Office of the Philippines (hereinafter “IPOPHL”), Director General Atty. Josephine R. Santiago and EPO President, Benoit Battistelli on 5 October 2016 [2] at the sidelines of the World Intellectual Property Organization (WIPO) General Assembly. The EPO and the IPOPHL announced on 10 October 2016 [4] their intention to launch a comprehensive Patent Prosecution Highway pilot program.The PPH pilot program between the EPO and IPOPHL starting from 1st July 2017will run for three years ending on 30 June 2020 [4].

What is Patent Prosecution Highway Pilot Program?

Patent Prosecution Highway is a global work-sharing framework that allows patent applicants, whose applications have been considered allowable by a patent office, to request the preferential examination of the corresponding applications in another patent office based on the examination results issued by a PPH office [2]. Patent applicants follow a simple procedure when making the request. Another aspect of this program that eases the prosecution process of patent applications is that another Intellectual Property Office in conducting substantive examination in the corresponding applications can use work products from one Intellectual Property Office as reference. In other words, PPH leverages on the fast-track patent examination procedures alreadyavailable in the IP Offices to allow applicants to obtain corresponding patents faster and more efficiently.

Under the IPOPHL-EPO PPH Pilot Program, the patent applications, which are prosecuted under the PPH Program, shall be subject to certain guidelines present in IPOPHL MEMORANDUM CIRCULAR NO.17-007 [1]. The patent applicants and their agents who desire to make use of this program had to file the duly accomplished Request Form and Claim Correspondence Table present in the Annex B of the circular [1]. This is the minimum requirement for the processing of a PPH Request.

Under this program, patent applicants should file the claims which have been found patentable either by the IPOPHL or by EPO andmay ask for preferential examination of their corresponding patent applications at the former IP Office after following a simple procedure and with minimal documentary requirements. This PPH Program is available for national and PCT applications.

The PPH Program has 45 participating countries worldwide. The IPOPHL became a member of the PPH network on February 2012 when it signed its first PPH agreement with the Japan Patent Office (JPO).The IPOPHL now has bilateral PPH agreements with the JPO, USPTO, KIPO and EPO [3].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

 

[1] http://www.ipophil.gov.ph/images/Patents/MemoCircularNo_17-007.pdf

 

[2]http://info.ipophil.gov.ph/dev/releases/2014-09-22-06-26-21/609-ipophl-commences-patent-prosecution-highway-pph-pilot-program-with-the-european-patent-office-epo

 

[3] http://ipophil.gov.ph/services/patents/patent-prosecution-highway-pph

 

[4] https://www.epo.org/law-practice/legal-texts/official-journal/2017/06/a47.html

 

Intellectual Property Office Singapore (IPOS) wins Architecture Excellence Award in “Business Architecture”

On July 13, 2017 [1], the Intellectual Property Office of Singapore was declared the winner of the Architecture Excellence Award in the “Business Architecture” category at the Architecture Excellence Awards Night held at Sydney, Australia. The award was presented by iCMG International Award certificates and prizes were given to the winners during the dinner gathering on July 13th during Architecture World Summit 2017, Sydney Australia [2].

Evaluation process for these Awards:

There were multiple rounds for evaluating the winners for different categories. Through every round of competition, the Jury was assigned applications in the area of their individual interest and expertise, so that the applications always evaluated by people who appreciate and understand the type of architecture work that the applicants for the awards have done. The whole evaluation process has been described below [3]:

Round 1

In the first round of competition, submission was reviewed by the core committee. The applications which were qualified on the initial criteria were moved to the next round.

Round 2

In the second round of the competition the qualified applications from the first round were reviewed by the members of the Jury independently. Their scores given by the judges determined the finalists in each category.

Round 3

In this round of the competition, top three finalists in each category were identified based on the combined scores of the jury members.

Round 4

In this round of the completion a video interaction took place between the jury members and business leaders from the finalists. After all the rounds the combined scores of jury members determined the Winners in each category.

There were multiple categories in which awards were given in the Architecture Excellence Awards organized by ICMG International. ‘Business Architecture’ was the category of which IPOS was the winner [4]. As stated in the press release by IPOS [1], this award recognizes architects and enterprises whose work demonstrates a combination of talent, vision and workmanship in creating successful and enduring systems and enterprises. It also serves to highlight remarkable projects and best practices to the global audience. IPOS was recognized for its achievements in re-engineering its business services, information, timing cycle and stakeholders for achieving business goals. This attests to IPOS’ commitment to be an innovation agency that uses its IP expertise and networks to help local and foreign enterprises commercialize their ideas and intellectual property, from Singapore and through Singapore into the world. This award has become a global benchmark of excellence for leading companies from USA, Europe, Asia, Middle East, Africa and South America that have participated in this competition.

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] https://www.ipos.gov.sg/media-events/happenings/ViewDetails/ipos-wins-architecture-excellence-award-in-business-architecture/

[2] http://live.icmgworld.com/anz/architectureworld/2017/

[3] https://live.icmgworld.com/anz/architectureawards/2017/process/evaluation-process.html

[4] https://live.icmgworld.com/anz/architectureawards/2017/winners/2017#

 

Registered Designs (Amendment) Bill of Singapore

Registered Design Act had originally been enacted in 2000 in Singapore. This act has gone through various amendments by formal and informal consolidations in 2001[1], 2005[2], 2012[3], and 2014[4]. Major change has been brought in act in 2001 and 2005 in which this act has been revised. This article includes the proposed reforms that have been tabled in the Parliament of Singapore for the Second reading on 8th May, 2017. The proposed changes aims to support modern business practices while continuing to balance the interests of design creators/owners and users and provide business certainty.

Key features of the Registered Design (Amendment) Bill

  1. Widened scope of registrable Design

The definition of “Design” in the proposed bill has updated to give expand the scope in granting of design right, which clearly aims to incentivize creativity and innovation. It is expected to include an important aspect i.e. colour under the umbrella of important component of design. However, the scope will not extend to colour per se but only to limited colours monopolizing that result in impeding design innovation.

Second important inclusion is of virtual designs of non-physical products that can be projected onto a surface and have useful functions. Those design need to fulfil two requirements (a) be capable of being represented clearly and without subjectivity; and (b) retain the same (or substantially similar) design features irrespective of the surface or medium they are projected on.

  1. Ownership of Rights

Under the current section 4 of the RDA the commissioning party is considered to be owner of rights by default, not the creator/designer. However, this bill gives creator/designer the actual right of ownership. According to proposed change ownership rights shall be vested with commissioning party, subjected to any agreement or liberty of contract between the parties concerned.

  • Extension of grace period for registration

If any designer had disclosed his/her design before registration and designer wish to register it that grace period of 6 month was granted for filing for registration. This grace period has been extended to 12 months as per the amendment under RDA.

  1. Allowance of multiple design of same classification under same application

Before, designer need to file one application for designs of same Locarno sub-classification.  However, each design has its separate application number and treated as individual application with separate fees for registration. The amendment will allow registration of multiple designs under the same broad category and through a single application, which in turn may reduce the costs involved with subsequent designs within the same application.

About the Author: Mohini Sharma, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Sources

  1. Helika Jurgenson,”Upcoming Reform: Registered Designs Regime in Singapore”, available at http://www.youripinsider.eu/upcoming-reform-registered-designs-regime-singapore/
  2. IP newsletter, available at https://f.datasrvr.com/fr1/017/70864/2017Apr17_IP_Newsletter.pdf
  3. Ministry of Law, Singapore at https://www.mlaw.gov.sg/content/minlaw/en/news/press-releases/legislative-changes-introduced-to-update-singapores-registered-d.html
  4. https://www.gov.sg/~/sgpcmedia/media_releases/minlaw/speech/S-20170508-1/attachment/Registered%20Designs%20Amendment%20Bill%20-%202R%20Speech%2008052017.pdf

Cambodia: Declaration on the procedure for applying to register the brand online

On May 4, 2017 [1] the Ministry of Commerce, Kingdom of Cambodia issued a regulation declaring a new online trademark registration procedure. This new online trademark system was launched on May 25, 2017 [2]. The new e-filing system [3] allows an applicant for easy and quick filing for new trademark applications. This system can be used by both local and foreign applicants (either individual or groups).Applicants either local or foreign can now upload the necessary documents and detailed certificates for mark registration online.

The newly launched online-filing portal is used only for filing new trademark applications, but the actions which are performed post-filing are to be filed manually and in person at Intellectual Property Department of Cambodia. However, the traditional paper-filing system for trademark applications still continues alongside the new e-filing system.

According to the ‘disclaimer details’ of the new e-filing system, the user account, i.e. the username & password to access the trademark Filing System is created upon a request to DIP official [4].But the foreign applicants must have a local registered trademark agent from Cambodia itself who can file their applications on their behalf.The payment for the filing fee by the applicants can be made either online or off-line. For offline payment of filing fees, the applicants have to pay to the Ministry of Commerce in one of the three cooperative banksgiven below:

  1. FOREIGN TRADE BANK (FTB)
  2. CANADIA BANK
  3. ACELEDA BANK

The e-filing portal ‘https://efiling.cambodiaip.gov.kh/efiling/’ [3] has been developed with the help of technical experts from World Intellectual Property Organization (WIPO) [5] with the goal of bringing Cambodia’s Intellectual Property department up-to-speed with other developed international patent offices. Yo Takagi, assistant director-general of global infrastructure at the World Intellectual Property Organisation (WIPO), said online filing systems make it easier for individuals and small and medium sized enterprises to register trademarks without physically going to the Commerce Ministry – thus being a huge boost to Cambodia’s burgeoning economy.

This new system is another milestone achieved by the department of Intellectual Property of Cambodia, having earlier becoming the first country in Asia to recognize European patents on its territory under the European Patent Organization (EPO) by signing a validation agreement with the EPO on 23 January 2017 [6].

About the Author :Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

References:

[1] http://www.cambodiaip.gov.kh/NewsDetail.aspx?id=110048

[2] http://www.akp.gov.kh/?p=103057

[3] https://efiling.cambodiaip.gov.kh/efiling/

[4]https://efiling.cambodiaip.gov.kh/efiling/disclaimerDetails

[5]http://www.wipo.int/edocs/mdocs/mdocs/en/wipo_tm_pnh_16/wipo_tm_pnh_16_t13.pdf

[6] https://www.epo.org/news-issues/news/2017/20170123.html

2016 – Trademark Act of Thailand – The amendments

The Government of Thailand has made several new amendments in their trademark act [1], which have become effective on July 28 2016. These amendments have brought significant changes in structural policy of Thailand. This includes Thailand’s ratification of the Madrid protocol, which allows an application for registration of sound marks. Other changes introduced via these amendments in the Trademark act, include the procedure and prosecution of trademark registration in Thailand, and, thus, the change in Intellectual Property (IP) strategy. Anticipatoryamendments to the registration and prosecution process are mention below.

  1. Multi-Dimensional Applications for Trademarks Allowed[2]

Previously, Thailand did not accepted multi-dimensional, multi-class filings using a single application, but multiple applications of single-dimensional, single-class filings were used instead. The changes via the amendments in the Trademark act of Thailand effective from July 2016, now allows multiple-dimensional, multi-class filings in a single Trademark application. This does not mean that the single class filing applications will not be accepted. They are still accepted.

There are both advantages and disadvantages of multiple-dimensional, multi-class filings [3]for the amended Trademark act. The main advantageis the ease inthe registration process for Trademark filing – same/single application can now be usedfor filing for protection in multiple-dimension, multiple-classes, which results in less paperwork, registration fees, and a more structured/streamlined process.

However, the majordrawback of the amendments is the possibility that complexitiesregarding one of the, multiple-dimensional, multiple-classes applied for could affect the approval process for the entire application as a whole. This is due to the factthat an application for multi-class, multi-dimensional filingsis treated as a single application, with each dimension being only a single component part of the application. This means that, at worst, an opposition or other objections in single class can delay the entire application to lapse altogether.

Because of the Pros and Cons of filing multiple-dimensional, multiple-classes trademark applications under the new Trademark act of Thailand; it has now become very important to devise a well-assessed IP strategy for selecting the type of Trademark application to be used. Some Trademarks can get the benefit of filing a single-class application when the main objective is the timeliness and the priority date of registration, or if the business plan is for short-time monetary gain and does not include future IP portfolio expansion. However, certain other trademarks with the potential for business as far as expanding IP portfolio is concerned would enjoy benefits of these amendments in the new Trademarks Act of Thailand. Therefore, a mixture of pros such as ease and timeliness of registration process and portfolio expansion may prompt IP owners to go for multi-dimensional, multi-class Trademark applications for potential business growth and portfolio expansion.

  1. No requirement of associated marks

In the previous Trademark Act of Thailand, i.e. the single-class filing process, the Intellectual Property department of Thailand used to ask IP owners to associate related/similar marks filed across various other classes. In other words, previously under Trademark Acts section 14 the Trademark registrar wasallowed to order the Trademark applicant of associating identical or similar trademarks [4] that relate to products or goods in same or different classes. This provision was required to avoid misunderstanding in pubic that different IP holders, which are similar or related as judged by the registrar, but, in fact, they belong to the same IP owner.The main drawback for IP holders due to this requirement was that the associated marks cannot be transferred or assigned separately, but must be assigned as a collection of registered “associated” marks, which required additional fees.

The amendments in the new Trademarks act of Thailand have removed the requirement of associated marks completely. After thesechanges have become effective, thetrademarkowners of associated marks are able to transfer and assign each mark single basis. [5]

Other amendments [6]

There has been a reduction in the period for filing amendments, appeals or opposition from previously 90 days to currently 60 days which is calculated from the day of receipt of related order from the Trademark Office.

Increase in time-period – from 30 to 60 days with respect to paying the registration fees.

Introduction of Grace Period for renewals– Renewal is possible within six months from the expiry date against a 20% surcharge.

About the Author: Shilpi Saxena, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

Footnotes 

[1] “Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol.” Trademark Act Amendments Usher in Thailand’s Accession to the Madrid Protocol | Tilleke&Gibbins. Tilleke&Gibbins, 3 June 2016.

[2] “Thailand Update: Trademark Amendment Act Brings Changes for Trademark Law.” Spruson&Ferguson.Spruson& Ferguson, 16 June 2016.

[3]1, 2016 August.”UPDATING NEW THAILAND TRADEMARK ACT.”IP NEWSLETTER (n.d.): n. pag. ILCT, 1 Aug. 2016.

[4] Mirandah. “Thailand – When Trade Marks Must Be Associated.” Mirandah Asia. Mirandah, 19 May 2017.

[5]”Hailand: Amendments to the Trademark Act Information Is Provided by Www.ip-coster.com.” Thailand: Amendments to the Trademark Act. IP Coster, 26 July 2016. Web

[6] European Patent Office: Comprehensive Amendment to the Trademark Act