OppositionInfringement_Hyderaba process and procedured.ppt

patent processing under the Indian law and its procedures

1. Patent Opposition &
Infringement
Dr. S. K. Mitra
Kolkata

2. INVENTION
NEW PRODUCT OR PROCESS
involves
INVENTIVE STEP (NON OBVIOUS)
&
CAPABLE OF INDUSTRIAL APPLICATION
SKM

3.  Frivolous or contrary to well-established natural laws
 Contrary to law or morality or injurious to public health
 Scientific principle or formulation of abstract theory
 New property or use of known substance
 Mere use of known process, machine or apparatus
 Substance by mere admixing
 Mere arrangement/rearrangement/duplication of known devices
 Method of agriculture/horticulture
 Method of treatment of human beings, animals
 Plants & Animals in whole or any part other than microorganisms
SKM
Inventions Not Patentable

4.  Mathematical/Business method/Computer program per se/
Algorithms
 Mere scheme/Rule/Method of performing mental Act/ Playing
game
 Presentation of information
 Topography of integrated circuits
 Invention on traditional knowledge/Aggregation or duplication
of known properties of traditionally known components
 Related to atomic energy
Inventions Not Patentable
SKM

5. Pre-Grant Opposition
Pre-grant Representation
Any person before grant after publication U/S 11A(1) or (2)
With the grounds available like Post-Grant Opposition
Procedure:
Rule 55(1) – Representation for opposition u/s 25(1)
Rule 55(1A) – No Patent granted before expiry of 6 months
from above publication
Rule 55(2) – Consideration of representation after filing of
request for examination
Rule 55 (3) – Notice to the applicant
Rule 55(4) – Reply statement & evidence within 3 months
Rule 55 (5) & (6) – Hearing & Passing order ordinarily within
One Month
SKM

6. Not opposed U/S 25(1)
Opposed but decided in favour of applicant
 Not refused U/S 15 or not in contravention of
any of the provisions of the Act U/S 43(1)(b)
Criteria for Grants
SKM

7. Post-Grant Opposition
Procedure:
Rule 55(A) –Notice of opposition u/s 25(2) in Form-7 with
prescribed fees of Rs. 6,000- (Legal Entity)
Rule 56 – Constitution of opposition board & Conduct
Examination of the documents filed u/r 57-60
Rule 57 – Filing of written statement
Rule 58 – Filing of reply statement within 2 months
Rule 59 – Reply evidence by opponent within one month
Rule 60 – Further evidence with leave of Controller
Rule 61 – Authentication of document &Eng. Translated copy
Rule 62 - Hearing with 10 days advance notice SKM
Any interested person enters within 12 months Grant Notification

8. Grounds of Opposition
(1)Wrongful obtaining
(2)Prior publication
(3)Prior claiming
(4) Prior public knowledge and use in India
(5) Obviousness
(6) Not an invention or not patentable invention
(7) Insufficiency
(8) Information regarding foreign filing not filed or false
(9) Convention application not made within 12 months
(10) Not disclosed or wrongly mentioned source/geographical origin
(11) Anticipated by knowledge, oral/otherwise
SKM

9. Effectively Reduces the Profits of Patent Holders & the
Phenomenon Lowers the Price of the Product in
Situation where the Buyers Exports the Product at a
Lower Price
SKM
Parallel Import
A sells product for $ 5 in Country M and at $ 10 in Country N,
then A is said to be Practicing Price Discrimination. Now
buyers B bought the Product in Country M and Exports to
Country N at $ 7. A faces situation where his Own Product sold
in Country M is reducing his Profits in Country N
Example :

10. This term losses control over the actions performed
on it by the buyers – so, the buyer may sell it or
import it to other countries without any hindrance
from the Patent.
SKM
Exhaustion of Intellectual
Property Right
A has a Patent over a digital pen when he places the
Patented Pen in the market subsequently he losses
control over the actions performed by the buyers of
the digital pen and the buyer may even sell or export
the digital pen at a higher price
Example :

11. Use of Technical Information
without infringement
• Lapsed Patent
• Patent granted from countries other than India
• Non-patent literature
• Product not patentable under Indian Law
• Compulsory licence
SKM

12. Research Exemptions
 Exception to Infringement – sec. 47(3)
 Inventions may be used without infringement for
Research
Experiments
Education and training
SKM

13.  Literally to break a rule or agreement or to
encroach.
 In patent parlance violation of the exclusive
rights of the patentee by unauthorised making,
using, offering for sale or selling a patented
invention.
also includes importation of the product into
India.
SKM
INFRINGEMENT

14.  Direct (Actively makes, uses or sells)
 Indirect (Actively encourages another to
make, use or sell)
 Contributory (Selling or supplying an item
for which the only use is such that it encroaches
on the patented invention)
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INFRINGEMENT

15. Decided on the basis of claims
Immaterial variations, colourable imitations
and combinations also constitute
infringement
Absolute similarity is not necessary-------it
is enough if “pith and marrow” of the
invention has been infringed
( Birmingham Sound Reproducers v Collaro 1956 RPC 232 )
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HOW TO JUDGE NFRINGEMENT ?

16. HAYWARD VS PAVEMENT LIGHT COY (1 RPC 207)
Plaintiff: Owners of patent for “Improvements in pavement
lights. The lights had glass moulded so as to consist of an
angle or series of angles, and could divert rays of light in an
inclined direction into rooms which had to be lighted
Defendant:Made lights using glass moulded so as to
consist of a curve.
Courts held that the Defendant had infringed on the
Plaintiff’s patent
SKM
MECHANICAL COMBINATIONS
IMMATERIAL VARIATIONS

17. SKM
ARE THEY INFRINGERS?
Private use  Acts done privately
Not for commercial use
Experimental use
Roche Products Inc v Bolar Pharmaceutical Co
Roche had a patent on flurazepam.HCl containing sleeping pill
(Dalmane)
Bolar used flurazepam.HCl to make dosage form capsules, to obtain
stability data, blood serum studies etc. with a small quantity of
flurazepam.HCl before the expiry of the patent term.

COURTS HELD THAT BOLAR HAD INFRINGED
“Bolar’s intended experimental use is solely for business reasons and
not for amusement to satisfy idle curiosity, or for strictly
philosophical inquiry. Bolar’s intended use of flurazepam.HCl to
derive FDA required test data is thus an infringement.

18. SKM
FACTORS AFFECTING
DECISION TO SUE
•Cost
•Term of patent
•Duration of Infringement
•Commercial Reasons

19. SKM
Whether infringement is only in India
Loss of profit
Size of infringer
Multiple jurisdictions
Strength of the patent
Timing of action
Choice of availability of counsels
Financial backing
OTHER CONSIDERATIONS

20.  Avoid multiple counsels
 Provide all the information
 Clear communication
 Complete monitoring
SKM
CONTROLLING COSTS

21. SKM
WHO CAN ENFORCE RIGHTS
AGAINST AN INFRINGER ?
 PATENTEE
 ASIGNEE OF THE PATENTEE
 AGENT OF THE PATENTEE
 LICENSEE OF THE PATENTEE
V.B.Mohd Ibrahim v Alfred Schafranek,AIR 1960 Mys 173
Fibre Glass Canada Ltd v Spun Rock Wools Ltd., AIR 1946 PC
147

22.  Patent must be valid
 Patent must be in force
 Name of the patentee, assignee, licensee must
be recorded as owner in the register of patents
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CONDITIONS FOR
ENFORCEMENT OF RIGHTS

23. SKM
REMEDIES
 Injunction
 Delivery up
 Account of profits
 Damages

24.  Prima facie case of infringement has
been made out
 Absence of delay
 Cross undertaking
 Balance of convenience
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INJUNCTION -----when ?

25. SKM
RECENT PATENT
INFRINGEMENT AWARDS
•$125 million for a cookie recipe
(Proctor & Gamble vs Nabisco)
•$56 million for an antibiotic
Pfizer vs International Rectifier)
•$44 million a blood oxygenator
(Pfizer vs American Hospital Supply)
•$$205 million for the design of a rock drive bit
(Smith Industries vs Hughes Tool)
•873 million for the rights to an instant camera
(Polaroid vs Kodak)

26. SKM
 Denial
 Delay tactics
 Damages have been minimal
 Counter claim for revocation of the patent
 Use for experiment, research, instruction to
pupils & on behalf of Govt
DEFENCE

27. SKM
BEECHAM GROUP vs BRISTOL LABORATORIES
(1977 FSR 565)
 Hetacillin (Acetone adduct of ampicillin) (P2)
 Hydrolyses in the body to give Ampillicin (P1)
The claims of P2 fall outside the scope of P1. Sale of
hetacillin was considered to be contributory
infringement as it led to infringing production of
ampicillin in the body.
 Hetacillin = Ampicillin in disguise

28. The court held that such importation and
sale of such substance was an act of
infringement of the patented product
which was temporarily masked
BEECHAM GROUP vs BRISTOL LABORATORIES
(1977 FSR 565)
SKM

29. SKM
If the active metabolite is patented will
sale of the drug infringe the Patent?
Patent (P1) on Terfenadine, sold as an antihistamine had
expired.
MerrellDow (MD) Patented the active metabolite (P2)
MD sued a competitor for selling terfenadine –Contributory
infringement of P2
Patients had been swallowing terfenadine and making the active
metabolite
in their bodies, before P2.
P1 made no reference to the active metabolite, but enabled the
public to
work the invention by making the active metabolite in their livers.
Therefore, a valid patent should include a disclaimer to the
active
metabolite when prepared by ingestion and metabolism of
terfenadine

30. SKM
Plaintiff ’s patent related to tyres for cycles comprising a
combination of
Easily detachable outside flexible tyre or cover
Inner inflatable tube of cloth and India Rubber
Dove tailed metal rim
Arched tube
Defendant’s tyres comprised a combination where
The cover had increased thickness at the sides and was made of
cloth cut on the cross
The inner tube was of India rubber only
Exaggerated dovetailing of the rim
Complete tube
Court held that the Defendants had infringed
NORTH BRITISH RUBBER COY Vs MACKINTOSH
& COY 11 R.P.C. 477

31. THANK YOU
SKM