Patent Trends

Dr. Kalyan Kankanala

kalyan@brainleague.com
url: www.brainleague.com
Blog: www.indianipinfo.blogspot.com
 Intorduction
 Meaning
 Protection
 Exclusive Rights
 Species of IP

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 Patents
 Inventions

 Requirements

 Subject Matter
 Industrial Applicability
 Novelty
 Inventive Step
 Patentability Requirements
 Section 3(d)
 Novartis case - IPAB

 Inherent anticipation
 Maturity of the art
 Predictability and Motivation
 Selection patent
 Analysis mode

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 Example
 Stent Coated with Taxol

 Prior Art

 Stents
 Taxol
 Prosecution

Speaking Order and Hearing

Valencia case

Speaking Order
Hearing before rejection

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 Example
 Patent application for a molecule used for treatment of
diabetes
 First Examination Report
 "... The molecule lacks novelty and inventive step
because it forms part of a publication in a text that
discloses a herbal extract for diabetes treatment."
 Example
 Applicant responds by giving a detailed explanation of differences
between the extract disclosed in the text and the molecule. In the
response the applicant states that a hearing must be given before
making an adverse decision.
 Second Examination Report
 "... The molecule lacks novelty and inventive step because it forms
part of a publication in a text that discloses a herbal extract for
diabetes treatment."

 Not a speaking order

 Hearing must be given
 Prosecution
 Abandonment Vs. Rejection

 Telefonaktiebolaget case

 Section 15 - Refusal - Appealable

 Section 21 - Abandonment - Not Appelable
 Responded to objections of examiner
 Request for hearing before adverse decision is taken.
 Rejection not abandonment

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 Prosecution
 Pre-grant Representation

 UCB FARCHIM Case

 Section 25(1) - Pre-grant Representation

 Rejection of application based on such
representation - Section 15 rejection
 Appealable to Appellate Board

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 Prosecution
 Office Circular
 Prosecution History
 Published applications

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 Amendment
 AGC Flat Glass case

 Amendment - Disclaimer, Correction or

Explanation
 Allowed to overcome prior art cited
during litigation
 Validity of the claim not considered at
the time of amendment
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 Patent Linkages

 Bayer case

 Patents Act and Drugs and Cosmetics

Act
 No linkage under the law
 Drug approval cannot be rejected based
on patent grant

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 License

 NRDC case
 License validity
 Unregistered

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Thank You.

For more information please visit

Website: www.brainleague.com
Blog:www.indianipinfo.blogspot.com

Copyright, Brain League, 2010.