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.

2.   Novelty

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.

Plaintiff’s case

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.

Defendants case

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.

Court’s ruling

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.