Controller can not raise new objection(s) in Hearing without giving intimation or time to respond to Applicant

Pfizer filed patent application No.991/MUMNP/2003 for “CHIRAL SALT RESOLUTION” of “3-{(3R, 4R)-4-Methyl-3-[methyl-(7H-pyrrolo [2,3-d]pyrimidin-4-yl)-amino]-piperidin-1-yl}-3-oxo-propionitrile” on Oct 27, 2003. Subsequently FER was issued on Mar 13, 2008 with objections such as clarity of claims, distinctiveness and section 3(i). Applicant then filed response to FER with amended set of claims. The learned Controller issued official letter on Mar, 14, 2011 regarding intimation about Hearing on Mar 29, 2011 with new objections of section 2(1)(j) on the ground of lacking novelty, inventive step and section 3(d).

Applicant apprised the Controller during hearing about new objections. Controller agreed but he held that objection can not be ignored at this stage. Applicant then submitted written submission and amended claims. Surprisingly the instant application refused u/s 15 of Indian Patent Act under those new grounds section 3(d) and novelty. Applicant then submitted review petition to set aside the order passed by Controller but ultimately that was also denied.

Then Applicant filed appeal and challenged the order at IPAB by summarizing all above facts. IPAB said that, “objections raised under section 3(d) of the Act was neither contained in the first examination report nor mentioned in the hearing notice and the same was taken for consideration at the time of actual hearing and relied on by the Assistant Controller while passing the impugned orders. In view of this serious lapse on the part of the learned Assistant Controller we are of the considered view that the impugned orders are vitiated on the sole ground of flagrant violation of the principles of natural justice.”

IPAB citing the decision (OA/18/2011/PT/DEL – Telefonaktiebolaget LM Ericsson. vs. The Controller General of Patents, New Delhi) said- “it is better that the notice of hearing indicate what are the prior art that the Controller will be referring to which the inventor has to explain and prove the patentability of the invention.”

Consequently IPAB directed that the Assistant Controller shall reconsider the matter afresh by furnishing the objections well in advance to the appellant enabling the appellant to give their response both in respect of section 3 (d) of the Act and as well as in respect of novelty. It is made clear that some other Assistant Controller other than the Assistant Controller who passed the orders impugned shall reconsider the entire matter afresh by affording reasonable opportunity to the appellant as stated above.

High court of Delhi granted permanent injunction in trademark infringement of pharmaceutical products

In two separate proceeding, Merck KGA successfully brought permanent injunction against LA LIFESCIENCE and EMIL PHARMACEUTICAL for trademark infringement “EXFLAM/EMFLAM” and “COSOME” respectively.

Plaintiff had filed the present suit for permanent injunction restraining infringement of trademark and rendition of accounts, damages and delivery up, etc. against the defendant in the High Court of Delhi. Judge Mr. S.P.GARG handed down these two decisions.

“EXFLAM” and “EMFLAM” are under registration Nos. 471455 & 467598. It is pleaded that the defendant is engaged in the manufacture and sale of pharmaceutical and medicinal preparations and had adopted the trademark “LAFLAM” with respect to its medicinal preparations.

“COSOME” is under trademark registration No. 147029. It is pleaded that the defendant is also engaged in the manufacture and sale of pharmaceutical and medicinal preparations and had adopted the trademark “COZOLE” with respect to its medicinal preparations.

While delivering the decision in theses 2 cases, court considered “whether rival marks are deceptively similar and are likely to cause confusion in the mind of unawary purchasers. The purchasers are not expected to be well-versed with the chemical compositions of the medicinal preparations. It is well settled that while considering whether a mark is likely to deceive or to cause confusion, the question has to be approached from the point of view of a man of average intelligence and imperfect recollection”.

Also court said - citing ‘Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.’, 2001 (5) SCC 73, the Supreme Court after considering a large number of judgments of Foreign Courts and Indian Courts cautioned that strict measures to prevent confusion and lesser degree of proof is required for a Plaintiff to prove infringement in pharmaceutical cases if the marks are similar.

Finally court concluded that in these instant cases, the defendant’s mark in respect of medical preparations is phonetically and visibly similar to the registered trademark of the plaintiffs. It is, therefore, evident that the defendant has infringed the registered trademark of the plaintiffs’ and has passed of his goods as those of the plaintiffs.

International applications filed to the Indian Patent Office as Receiving Office may be filed electronically using ePCT

On 3 November 2014, the Indian Patent Office, in its capacity as receiving Office, notified the International Bureau, that it is prepared to receive and process international applications in electronic form (e-PCT)with effect from 15 November 2014. Standard fees such as transmittal fees, filing fees, search fees have to be paid (see PCT Applicant’s Guide, Annex C (IN)). But interestingly online payment is not available. One can file – international applications, subsequently filed documents for international applications, to the extent supported by the relevant software. In case of failure of the electronic systems when an international application is filed with it, the Office will use all means available, such as fax or e-mail, to inform the applicant about procedures to follow as alternatives. It’s another good initiative by Indian patent office to streamline the process, albeit many difficulties in online filing system at IPO. Hope for seamless system in future..

Next on target…..Patented Drugs !!!

It seems 2014 would be in very much focus with respect to affordability of medicine as Indian Government is considering bringing the patented drugs under price control. According to news, after sitting on it for years, the government is finally initiating steps to regulate the price of patented medicines and medical devices, a move that may provide relief to patients suffering from life-threatening diseases.

A committee comprising representatives from the health ministry, pharmaceuticals department, the drug price regulator and department of industrial policy and promotion is scheduled to meet early next month to discuss at least three options, said an official familiar with the development. While negotiated price mechanism, that was recommended by an earlier panel and junked, is one of the options, the inter-ministerial committee will also explore the possibility of reference pricing and differential pricing.

Under a system of reference pricing, the domestic price is linked to those in comparable markets. In case of differential pricing, the government can fix separate prices for its procurement programme and for purchase by others, including individual buyers.

Various countries, including developed ones, use various tools to regulate prices, India controls prices of only a handful of medicines and patented ones are not covered, often resulting in complaints of over-pricing. During the period of a patent, only one company, which has invented the medicine has rights to manufacture it and uses its monopoly rights to fix the price.

Although a proposal to regulate the price of patented medicines was floated several years ago, the government has refused to move forward. In fact, an internal committee of the department of pharmaceuticals had recommended a negotiated price mechanism for government purchases and for use by insurance companies. The proposal was to link the domestic rate with those at which governments in the UK, France, Canada, Australia and New Zealand purchase drugs from the company that holds the patent. The actual price was to be linked to the purchasing power in India.

But, this mechanism was only going to apply to 23% of the market, leaving a vast majority outside the proposed regime and opening the proposal to criticism.