OCT 2012

VOL. 2 ISSUE 17

ORIGIIN NEWSLETTER
A monthly Newsletter on issues relating to Intellectual Property Rights

Certain acts that are not deemed to be infringement
Santhoshi Basuthkar (santhoshi@origiin.com)
A patent gives exclusive rights to the patentee to use, sell, manufacture and import the product into the country where the patent is granted. While a process patent gives the rights to exclusively use the process and prevents everyone else to use, sell and manufacture the product that is developed through this process. Any violation to these rights without the permission from the patentee would cause patent infringement. However there are certain exceptional Acts where the use of patented invention without consent of the patentee doesn’t constitute infringement. Section 107 of Indian

Inside this Newsletter
 Certain acts that are not deemed to 1

Patents Act details such exceptions.

In certain countries including India, the generic drug makers are allowed to use the patented invention without the consent and of the patentee of for

be infringement  Interesting Patent of the month  Patent news 4 3

development

submission

information

required under law. This provision is called Bolar-like provision or Regulatory provision. This provision

came into existence from the case of Roche Products v. Bolar Pharmaceuticals. Roche is a discovery based pharmaceutical whereas Bolar is a genetic drug maker. Roche holds a patent over the drug Valium. Bolar intended to submit an Abbreviated New Drug Application (ANDA) to the FDA for a similar drug containing the same active ingredient as to Valium.

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Hence Bolar used the patented chemical in its experiments, before its patent expiry in order to determine if the generic

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version is bioequivalent to Valium. Roche responded to this by filing a suit for patent infringement. The District court of Eastern District of New York declined Roche’s appeal saying that no infringement had taken place owing to the experimental nature of Bolar’s work. The Court of Appeal for the Federal Circuit however disagreed with Bolar’s argument as it intended to sell its generic product in competition with Roche’s Valium, soon after its patent expiry and stated that the exemption does not apply to experiments which have commercial objective. Bolar argued that such violation of exemption would extend the monopoly of Roche over Valium even after its patent expiry.

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Thus in 1984, in response to Roche v Bolar judgement, and in an attempt to promote competition by simplifying authorisation for generics while maintaining appropriate protection for the

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interests of research-based pharmaceutical manufacturers, the US Congress passed the Drug Price Competition and Patent term Act (known as Hatch-Waxman Act). This law permits the use of patented products in experiments for the purpose of obtaining FDA approval and it established the modern system for FDA

Editors
Santhoshi Basuthkar Bindu Sharma

approval of generic drugs.

Another instance where an exception made for infringement is in the case of Parallel import. A parallel import is said to occur when a product sold by a patent holder in one country is exported by a buyer to another country with the price for the same patented product being higher. The purpose of the parallel import is to check the abuse of patent rights and to control the price of the patented product. Pharmaceutical companies follow

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the practice of differential pricing of drugs according to the purchasing capacity of the prospective consumer in a target country. As a result, the same drug may be expensive in a developed country and relatively cheap in developing countries. This principle of differential pricing forms the basis of parallel trade. It enables countries in which drugs are expensive to import them from cheaper markets. On March 23, 1995, a decision regarding parallel imports was delivered by the Tokyo High Court. BBS Kraftfahrzeug Technik A.G. ("BBS") of Germany held both German and Japanese patents for certain aluminum automobile hubcaps. The hubcaps were legitimately purchased in Germany by a Japanese company which was engaged in the export of the relevant goods to Japan where an affiliated Japanese company was engaged in the sale of the goods. These two companies were virtually under the same management when the goods were imported into Japan for sale at a price lower than that charged by BBS dealerships in Japan. Subsequently, BBS filed suit for patent infringement in Tokyo District Court in June of 1994. The district court found that the two companies had infringed the BBS Japanese patent. However, on appeal the judgment in favor of BBS was reversed. In reversing the district court, the High Court held that the patentee's right to enforce its Japanese patent against the imported goods had been exhausted since the patentee had legally transferred title to a rightful purchaser of the patented product. By enlarge though the patentee enjoys exclusive rights for his product/process, Indian Patent Act also contains certain exceptions for the public benefit and prevent the abuse of patent rights by the patentee. United States Patent No: US39305310 Inventor: Paul R Johnston Date of Patent: Jan 6, 1976 Abstract: A cigarette holder ring consisting of a resiliently contractible ring band operable to fit snugly on any portion of the wearer's finger, and a cigarette holding clip adapted normally to be folded extremely inconspicuously into the crown portion of the ring band, but to be extended there from to hold a cigarette, the clip being universally movably relative to the ring band to hold the cigarette in any position relative to his finger most suitable to any individual user.

"Education is what remains after one has forgotten everything he learned in school” - Albert Einstein

Interesting Patent of the month
Cigarette holding ring

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Patent News
Patent on Smartphone Diary
Samsung Electronics Co. is seeking patent protection for a way to have an electronic device like a smartphone record and summarize the operations of a user’s daily life and present the results in story form, according to a patent application the U.S. Patent and Trademark Office published last week. The invention, entitled “Apparatus and method for generating story according to user information,” includes an information collection unit, an analysis unit, a story generator, and a display unit, according to the patent abstract. The information gathered and presented in story form could include data on the weather, GPS latitude and longitude information, blog and social media data, call records, text and multimedia messages, schedules and calendars, address book entries and more. Video recordings, lists of recently played music files, TV viewing information and other records of habits could also be monitored and included.

Trademark infringement in Ad commercial!
In September a Bridgestone made a commercial advertisement in connection with a tire promotion in which a customer could receive a Wii video game system upon the purchase of select Bridgestone tires. The commercial featured actor Jerry Lambert as a Bridgestone engineer playing a Wii. Lambert is principally known for the many Sony television commercials and ads in which he has played the character of Kevin Butler, a fictional Sony vice president whose stated mission is to bring “glory” back to video gaming. Sony owns the distinctive Kevin Butler character, and has used him for years as a trademark in commercials advertising Playstation products. Sony says, “With the intent of unfairly capitalizing on the consumer goodwill generated by ‘Kevin Butler,’ Bridgestone has used and is using the same or confusingly similar character, also played by the same actor, to advertise its products or services in the commercial.” Sony is also asserting claims for unfair competition, misappropriation and breach of contract.

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