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1. RECENT IP TRENDS
BY
NISHANT KEWALRAMANI

2. AGENDA
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Patent prosecution history
Speaking Order
PatentApplication-Abandonment v. Rejection
Patent Law- Linkage with
other laws
Dilution in Trademarks
© 2010 Brain League IP Services Pvt. Ltd.

3. Prosecution History
 Prosecution History
 All communication that takes place between the
and the patent office.
applicant
 Traditionally this communication was treated by the
patent office as confidential.
 Complete Specifications of only granted patents were
available.

4. Prosecution
RTI-History
(cont…)

 Right to Information applications versus confidentiality
 Controller of Patents, Designs & Trademarks issued an
office instruction on April 15, 2010 to supply upon
request all correspondence between the applicant and
patent office.
 Rationale- helpful for pre grant opposition

5. Prosecution History Estoppel
(PHE)
Originated from the US
If an applicant narrows the claims during examination
he cannot claim infringement for the pre-amendment
patent claims

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 No case regarding applicability of PHE in India- law not
clear on the point.
Circular of April 15, 2010- may lead India in the same
direction.


6. Speaking Order
 Patent application for a molecule used in the
of diabetes
treatment
 First Examination Report
 “…The molecule lacks novelty and inventive step
because it forms part of a publication in a text that
discloses a herbal extract for diabetes treatment.”

7.  Applicant responds by giving a detailed explanation of
differences between the extract disclosed in the text
and the molecule.
 Applicant further states that a hearing must be given
before making an adverse decision.
 Second Examination Report-
 “…The molecule lacks novelty and inventive step
because it forms part of a publication in a text that
discloses a herbal extract for diabetes treatment.”

8.  First Examination Report
 “…The molecule lacks novelty and inventive step
because it forms part of a publication in a text that
discloses a herbal extract for diabetes treatment.”
 Second Examination Report-
 “…The molecule lacks novelty and inventive step
because it forms part of a publication in a text that
discloses a herbal extract for diabetes treatment.”

9.  Not a speaking Order
 Hearing must be given- adherence to principles of
natural justice
 Magical Sentence- “Kindly provide hearing in case of
adverse decision on the application.”
Valencia CTT v. Union of India (decided on 26th Feb 2010) 

10. Patent Process
Filing
18 months
6 months
FER
12 months
Putting app in order for grant
Request for
Examination
Publication

11. Abandonment
Abandonment
v. Refusal

 Application considered abandoned
complied with
Cannot be appealed
if all requirements not

 Refusal
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General power of the
Can be appealed
Controller to Refuse
 Patent Office Practice-
 Application abandoned whether reply to examination
report filed or not.

12. 

Ericsson v. UOI (Decided on March 11, 2010)
29th July 2005- Ericsson filed national phase patent
application
 8th October 2007- First Examination report issued and
defects pointed out which was replied on 10th Dec. 2007
 25th July 2008-Another examination report sent by
controller restating points already mentioned in first
information report. Replied on 22nd Sept 2008
 10th October 2008- Patent office wrote a letter to the
petitioner stating that despite response of the petitioner on
22nd September 2008, the specification of the petitioner
was still defective on various grounds and the application
was deemed to be abandoned under section 21(1).

13. Delhi High Court Held:
Abandonment-
When reply to examination report is not filed at all.
Refusal-
If reply is filed then the application cannot be abandoned
and has to be refused.

14. Patent Law and Linkage
 Bayer Corporation v. Union of India
 Decided on 9th Feb 2010
 CIPLA filed for a drug license for the
„Soranib‟.
generic drug
 Bayer corporation sent a letter to the drug controller
requesting him not to grant approval as Bayer holds
patent on „Sorafenib Tosylate‟ and Soranib is a
substitute of their patented drug.
Drug Controller granted the drug license.
a
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15.  Bayer filed a petition in the Delhi High Court against the
approval granted by the Drug Controller.
 Bayer‟s contention- If drug controller had previous
knowledge of potential patent violation he should not
grant approval.
 Decision- Drug Controller doesn‟t have to travel beyond
the scope of Drugs & Cosmetics Act and rules.
Shouldn‟t refuse license on the pretext of possible
violation of a patent.

16. Dilution
 Infringement of trademark
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Similarity of marks
Similarity of goods and services
Likelihood of confusion
 Dilution
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Well Known mark
Junior mark similar to well known
Dissimilar goods and services
mark
Likelihood of Dilution? (Traditional approach in India)

17. ITC v. Philip Morris  Linkage or mental
association between
two marks should be
established.
(decided
on 7th Jan, 2010)
 Actual Dilution should
be proved.

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