Indian Patent Office issues revised draft guidelines for examination of patent applications in the pharmaceutical sector.
To streamline examination processes in relation to applications pertaining to pharmaceuticals, the Indian Patent Office has released draft guidelines with an objective that the same serve as guidance to examiners with a hope that these would assist examiners and the industry.
Some key elements:
1. No requirement to disclose the INN name
An INN is the generic name of a pharmaceutical drug assigned to it by the WHO. If the INN name is mentioned in the patent specification then non practitioners can easily identify and file oppositions against patents.
Claimed subject matter lacks novelty if the prior art document implicitly discloses or inherently anticipates the subject matter of the invention.
3. Inventive step
The guidelines, in illustrative examples referred to the PEGylated interferon (Pegasys) case wherein invalidation on the grounds of obviousness was declared. The judgement as passed in the matter talked about the test for Obviousness as under:
“The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.”
However, the above judgement has since been stayed and therefore the revised guidelines do not find mention of the same as a guiding principle.
4. Industrial applicability/utility
The patent specification must disclose a practical application and industrial use for the claimed invention wherein a concrete benefit must be derivable directly from the description coupled with common general knowledge. Mere speculative use or vague and speculative indication of possible objective will not suffice.
This has been objected to by the industry given that the guidelines do not provide any case law on the point of “merely speculative” us and moreover the the Act only requires to have an “industrial application” and does not require require commercial viability.
5. Enablement/insufficiency of disclosure
The draft guidelines stipulate that only representative compounds mentioned in the embodiments claimed on the Markush Structure (Markush structures are chemical symbols used to indicate a collection of chemicals with similar structures and allow the patent- holder to be deliberately vague as to the most active/ effective structural formula while concealing relevant information from competitors) need to be tested.
The draft guidelines are still under review by the Patent Office. Stay tuned!!
Trademark Law update
An Officer, a Collector, some Whisky and an Injunction
M/S ALLIED BLENDERS & DISTILLERS are the registered proprietors of the trademark ‘Officer’s Choice’. The mark has been used by the plaintiff to market their brand of Whisky since 1988 and the plaintiff obtained registration in 2007. In 2013, the plaintiff found out that M/S. SHREE NATH HERITAGE LIQUOR PVT. LTD., the defendant, had started selling its brand of whisky under the trademark ‘Collector’s Choice’. Litigation ensued and the Plaintiff prayed for grant of an injunction against the Defendant.
The Plaintiff argued that the Defendant was aware of the Plaintiffs mark (cited awareness of the same in their answer to an objection raised). There was nothing on record to show that the Defendant intended to market their product as a collector’s item. The Defendants had admitted that a Collector is an Officer (A District Collector, also referred to simply Collector, is the chief administrative and revenue officer of an Indian district. The Collector is also referred to as the District Magistrate, Deputy Commissioner and, in some districts, as Deputy Development Commissioner). Hence the plaintiff argued that the defendant dishonestly used a mark similar to its mark.
The defendant contended that Plaintiff did not have any monopoly over the word choice as the same had been disclaimed by the Plaintiff. And since the words Collector and Officer are not phonetically similar or even visually similar for that matter, the only common word is Choice and as such, the marks are not deceptively similar.
The court upheld the plaintiff’s arguments and relied on consumer psychology and associative thinking in order to come to the conclusion that a ‘Collector’ could be confused with an ‘Officer’. The court upheld the arguments of the plaintiff and held that Officer’s Choice and Collector’s Choice could lead to a likelihood of confusion among consumers. Injunction was therefore granted.