- Indian Patent Office concedes to Calcutta High Court ruling on interpretation of the Indian Patent Law
- Pending applications for drug and pharmaceutical patents filed under the old law and facing rejection, to get the benefit of new patentability provisions under the Patents (Amendment) Act, 2005
We are most pleased to advise that our office has, once again, challenged, successfully, the illegal stand of the Indian Patent Office in the honourable Calcutta High Court, and obtained a favourable order that will benefit all drug and pharmaceutical applicants in India as well as all patent applicants hit by the provisions of Section 5 of the old Act whose applications were still pending on 01 January 2005, before the date of enactment of the Patents (Amendment) Act 2005.
The amendments pertain to Section 5 of the old Act (Patents Act 1970), which read as follows:
"In the case of inventions -
a. claiming substances intended for use, or capable of being used, as food or as medicine or drug, or
b. relating to substances prepared or produced by chemical process (including alloys, optical glass, semi-conductors and inter-metallic compounds),
no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable.
Section 5 has been deleted from the Patents (Amendment) Act 2005 with effect from 01 January 2005.
However, the Patent Office continued to maintain objections against such “products” per se claims (in spite of novelty) in respect of applications, filed/examined before the 01 January, 2005, with the result that thousands of such applications faced rejection.
The basis for such unlawful practice was a Patent Office Internal Circular maintaining the defunct Section 5. This Circular and resultant practice of the Patent Office was challenged in Court in an "appellate" matter related to a patent application being prosecuted by our firm. The Honourable Calcutta High Court has held that the concerned application which was filed before 1st January, 2005, shall be considered taking into consideration the change in Law. A copy of the Order is enclosed.
The impugned Patent Office Circular has now been withdrawn and the Patent Office had conceded that all applications filed under the old Act and which were pending when the new amendments came into force, will be examined and governed by the new law. A copy of the new Circular is enclosed.
For example - if under the old Act, new pharmaceutical and drug products were not patentable, and patent applications claiming such products were pending on the date of enactment of the new provisions allowing patenting of novel pharmaceutical products, then such applications would now get the benefit of this Calcutta High Court ruling and such inventions would be patentable.
Please note, our initiative in contesting the Patent Office's illegal stand and obtaining the ruling of the High Court is another manifestation of the proactive, pro-applicant stand we continue to take in India. Our office has obtained the most progressive rulings pertaining to Patent Office practice.
This matter was also handled and argued by Mr. Samaresh Chakraborty, head of our firm's Patent department. |
