Archive | 2012, November | (3) posts

Poverty versus patenting in India – round two

Earlier this year the first compulsory license, regarding the anti-cancer drug Sorafenib, was granted in India. (See previous blog post.) The compulsory license was granted inter alia on the ground that the patented invention was not available to the public at a reasonable affordable price.

The battle towards affordable medicaments in India continues. In a decision issued 2 November 2012, the Intellectual Property Appellate Board (IPAB) of India came to a decision in favour of the patients in India by the revocation of Patent No. 198952 (Roche). The patent concerns PEG derivatives of IFN?. Roche’s product was sold under the name Pegasys® and used for the treatment of Hepatitis C.

The process began when two post-grant oppositions were filed against the grant of the patent, one by M/s. Wockhardt Ltd. and the other by an NGO (non-governmental organization) named Sankalp Rehabilitation Trust. Both oppositions were disallowed, resulting in an appeal filed by the NGO.

During the appeal, Roche challenged the right of an NGO to oppose a patent in a post-grant proceeding, since, acording to S.25 (2) of the Patents Act, 1970, only “any person interested” may challenge a patent after grant. Roche meant that Sankalp was neither a competitor nor a researcher in the sector, and that a non-profitable organization working for the benefit of drug users cannot be said to have any interest of the nature as required by the act.

The IPAB stated: “We must take a common sense approach to construe the interest that the opponent has in opposing the grant of the patent. In the present case, the appellant claims that it is a society which works for the community of HCV and HIV sufferers. This is not challenged. The invention is admittedly for the use in the case of hepatitis-C. The continuance or removal of the patent will definitely affect the interest of the community for whom the appellant claims to work………We therefore hold that the appellant who works for a community which needs the medicine is definitely a “person interested” The locus standi objection is rejected”.

The IPAB held that the invention was obvious in view of prior art. The appeal was allowed and the grant of Patent No. 198952 was set aside.

This case is of great importance since NGOs are given the status of “interested person” under the Patents Act, giving them the possibility to challenge granted patents in India.

The decision in this case is seen as a victory for public health and for affordable drugs in India. The immediate effect of a revocation like this is the availability of cheaper generic products for the people in India.

The drug companies, however, consider that intellectual property is not being valued in India. This might result in them changing their plans regarding development of drugs well needed in for instance India. Thus, the long-term effects of this decision are still to be seen.

Jeanette Jakobsson, European Patent Attorney

Is it worth the effort to appeal a decision made by the DKPTO?

Danish case law regarding patents shows that in a vast majority of cases, the Danish Board of Appeal (BoA) for Patents tend to follow the recommendation of the DKPTO. This has caused reason to pose the question of whether the Danish BoA for Patents tends to put too much weight on the recommendations of the DKPTO and too little weight on the submissions of the parties.

The Danish BoA for Patents has recently pronounced an interesting decision in case no AN 2011 00037 regarding the Danish part of European patent no. 1639556 (the Patent) relating to an electronic parking disc, showing that this is, however, not necessarily the case.

Following re-examination proceedings the Danish Patent and Trademark Office (DKPTO) had declared the Patent invalid in its entirety for lack of novelty. No new prior art was brought forward, and the appeal was thus decided based on the same prior art as the re-examination proceedings.

Nonetheless, the Danish BoA for Patents came to the opposite conclusion and thus chose to remit the case to the DKPTO for reinstatement of the Patent in its entirety.

Particularly, in the present case the Danish BoA for Patents, as virtually always, requested an opinion from the DKPTO. The DKPTO stated in their opinion that they maintain their previous assessment and conclusion, and recommended to the Danish BoA for Patents that the Patent be declared invalid in its entirety. Furthermore the DKPTO stated that the submissions made by the parties during the appeal proceedings did not cause reason for any further remarks.

As mentioned, the Danish BoA for Patents chose to go against the recommendation of the DKPTO. This confirms that the Danish BoA for Patents takes their time to listen both to the DKPTO and to the parties of the case and based thereon form their own opinion on the case.

Hence, the present decision shows, that it may actually be worthwile to appeal a decision made by the DKPTO.

Troels Peter Rørdam, European Patent Attorney and Certified Danish Patent Agent

The decision of the DKPTO Board of Appeal for Patents is available (in Danish) here.

Elementary, my dear Watson

When reading a novel the other day, I came across a statement by a consulting detective. What one man can invent another can discover.” (Sherlock Holmes, The Adventure of the Dancing Men) Having newly entered the IP world, I began to wonder if Holmes would actually qualify as a patent consultant. 

Let’s start by listing a few qualities of a full-blood IP consultant, identified by someone having just spent the first couple of weeks at his home office. It should be safe to state that a consultant would need at least one of the following qualities; logic reasoning, technical knowledge, language skills, and last but not least business skills.

Now to Holmes. His deductive and logic powers are widely known, and like Watson recalls in A Study in Scarlet Holmes has profound knowledge of chemistry as well as good practical knowledge of British law. We learn that Holmes knows German, French, and Latin so providing him with ‘Swedish for Beginners’ together with ‘Introduction to Swedish Law’ should do the job. Finally, let’s consider one of his own accounts: It has long been an axiom of mine that the little things are infinitely the most important.” (A Case of Identity) Surely a good mind set for dissecting an IP problem.

We may conclude that Holmes indeed would be suitable as an IP consultant and for all of us following the patent path there is much to learn about sound reasoning and tactics from Watsons accounts of the triumphs of the consulting detective.  Perhaps a novel or two should be compulsory reading and just like The Annotated European Patent Convention be found on every IP consultant’s bookshelf. But then again, how hard can it be really. “I listen to their story, they listen to my comments, and then I pocket my fee.(Sherlock Holmes, Baker’s Bread)

Ulf Håkansson, Associate