A good start: developing Indian patent jurisprudence

The Constitution of India has enshrined the principle of India as a Sovereign Socialist Secular Democratic Republic. Therefore, India is one of the very few nations in this world which has a socialistic outlook. This means that the right to property is not a fundamental right in India, but is only a statutory right.

Besides, the fundamental principles encompassed in the Constitution of India preach the formation of a welfare state, in which the welfare of many is always preferred against the profits of a few. These principles enshrined in the constitution are visible in the Supreme Court Decision involving the pharmaceutical giant Novartis AG in April this year.

In this case, the Hon. Supreme Court has upheld the decision of the Intellectual Property Appellate Board (IPAB) to disallow the grant of a patent for the beta crystalline form of imatinib myselate, commercialised under the trade name Glivec, since Novartis was unable to prove the enhancement in therapeutic efficacy of its drug as compared to the original substance. The IPAB had earlier held that ‘efficacy’ within the meaning of Section 3(d) explanation is ‘therapeutic efficacy’.

Prior to the constitution of the IPAB, the appellate jurisdiction was exercised by four different High Courts. Under the constitution, since one High Court is not bound by decision of another High Court, there have been conflicting decisions by different High Courts on the same point in the past. The constitution of a single national board with a technical member is expected to ensure uniformity and better clarity in the evolution of patent jurisprudence in India.

In 2012, the IPAB pronounced more than 40 orders relating to patents, apart from other IP matters. The IPAB also upheld the compulsory licence for Bayer’s patent for the drug Nexavar.

Other cases decided by the IPAB related to amendment of patents. In one, a patent application was rejected on the grounds of insufficiency of disclosure due to non-submission of drawings. Section 10 of the act enables the controller or examiner to demand drawings. Since the controller or examiner had not made such demand and had directly rejected the patent application, the IPAB held that the applicant should be allowed to lodge additional drawings, and further held that the Indian Patent Office (IPO) must consider the adequacy of disclosure in the light of the new drawings.

In another case concerning patent amendments, Magotteaux Intl. SA v Asst. Controller of Patents & Designs & Others, the IPAB held that, (a) ‘roller’ can be amended as ‘pad’; (b) ‘homogenous solid solutions’ cannot be amended as ‘homogenous solid phase’; (c) substituting the word ‘weight’ by word ‘volume’ is not permissible; and (d) an amendment to substitute words ‘consisting of ’ by ‘comprising’ was also rejected.

In an important case relating to invalidity of patents decided on March 9, 2012, in Travancore Mats & Matting Co. v Controller of Patents & Others, the IPAB held that the burden of proving invalidity is on the person alleging invalidity.

Further, in Hindustan Unilever Ltd v Controller of Patents, decided on June 2, 2011, the IPAB allowed an appeal where the application was abandoned due to non-compliance with Section 15 requirements, namely, putting the application in order for acceptance within the stipulated time. If an application is treated as abandoned by the controller, the same is not an appealable order.

"IN A RARE DEPARTURE FROM THE STANDARD NORMS, THE IPAB DIRECTED THE CONTROLLER TO ISSUE THE APPLICANT A NOTICE BEFORE CONSIDERING THE ABANDONMENT."

However, in a rare departure from the standard norms, the IPAB directed the controller to issue the applicant a notice before considering the abandonment. This order seems to provide a ray of hope for those applications which are treated as abandoned by the IPO, although the IPAB has warned that this decision should not be treated as a positive indication for applicants to file an appeal in all applications which were abandoned.

An analysis of decisions at the IPAB reveals that many challenges to the validity of patents were upheld and quite a few patents of Indian and foreign innovators were revoked. The validity of one granted patent was upheld. The trend indicates that the IPAB has upheld the orders of rejection of patents by the IPO. In the appeals which were allowed, instead of granting the patents, the matters were remanded back to the IPO to reconsider the issue of patentability.

Generally, the IPAB had been strict in condoning delayed applications. The Patents Act is a self- contained legislation prescribing time limits within which formalities have to be complied with. The IPAB, by statute, had been given powers to condone delays of up to 90 days. Even where the delay is less than 90 days, the IPAB had insisted on a credible explanation for condoning delays. When the reasons are not convincing, the delay applications were rejected.

It can be said that the IPAB has contributed to the progressive evolution of patent jurisprudence, which in India is still in the embryonic stage. By law, the IPAB has been barred from issuing interim orders without issuing notice to the opposite party. The present trend of finally concluding important cases within a year of filing is commendable and welcome. But the time taken for posting the appeal for the first time after filing is still unusually long and sometimes takes three to four months.

India has been a founding member of the WTO (World Trade Organization) since January 1, 1995. The Patents (Amendment) Act, 2005 brought India’s patent regime into compliance with the WTO TRIPS Agreement although India had been battling other internal issues, including healthcare.

Patent jurisprudence in India may not be as advanced as in the developed nations. However, as observed from the decisions of the Supreme Court and the IPAB, it is encouraging to realise that patent jurisprudence is taking positive steps towards upholding the principles of IP protection and satisfying its obligations as a member of the WTO, while remaining within the framework of the Constitution of India and the Indian Patents Act.

R. Muralidharan is a patent and trademark attorney and partner at Krishna & Saurastri Associates. He can be contacted at: murali@krishnaandsaurastri.com

Rahul Vartak is a patent attorney and a partner with Krishna & Saurastri Associates. He can be contacted at: rahul@krishnaandsaurastri.com