Category: Patents

ISSUE:

Whether “clones” which are identical genetic copies of a cell, cell part, or organism are statutory subject matter under 35 U.S.C. 101?

RULE:

In general, “clones” which are identical genetic copies of a cell, cell part, or organism are non-statutory subject matter under 35 U.S.C.101, unless the claims “describe clones that have markedly different characteristics from the donor animals of which they are copies”.

Any existing organism or newly discovered plant found in the wild is not patentable.

ISSUE:

Whether the invention of the drug is in consistent with the Section 3(d) of the patent act?

What is the meaning of ‘Efficacy’ according to Section 3(d) of the Patents Act, 1970?

RULE:

‘Efficacy’ in section 3(d) refers only to ‘Therapeutic Efficacy’ in the case of medicines and drugs. To grant of patent, inventions of medicine and drugs under S. 3(d) must have ‘therapeutic efficacy’

This is to prevent evergreening of patent which is the tactic used to extend the "market exclusivity of a drug beyond the life of its original patent, a drug company will often obtain multiple patents that cover various aspects of the drug, such as the active ingredient, formulations, manufacturing methods, chemical intermediates, mechanisms of action, packaging, screening methods, and biological targets.

ISSUE:

Whether the Petitioner had consented to a summary adjudication regarding the validity of their patent?

Whether the Division Bench was correct in invalidating the patent without so much so a trial?

RULE:

Article 3(j) of the Indian Patents Act states that plants and animals, including seeds, varieties and species are not patentable.

Contractual Obligations, an important philosophy in Contract Law is the record of commitment both or all involved parties hold to each other.

ISSUE:

Whether, to determine the obviousness of a patent claim, the Courts should consider the
(a) prior art
(b) differences between prior art and the subject matter of the said claim
(c) ordinary skill level required of a person in the subject matter of said claim
before considering secondary factors and tests for teaching, suggestions or the patentees motivation?

RULE:

The Teaching – Suggestion- Motivation Test is a method to determine obviousness of inventions, wherein a claimed invention is rendered obvious when either of the three factors may be found in prior art, or when a person with ordinary skill in the relevant field has the knowledge to combine or create the said invention. The Principle can be used to prevent obvious inventions from being patented and avoid “Chalk and Cheese” disputes.

ISSUE:

Whether Transkaryotic Therapies Inc’s EPO excluded the claims of Amgen’s Patent suit due to the difference in manufacturing processes?

RULE:

The Doctrine of Equivalent and Purposive Construction holds that a claim must not be limited to exact and literal interpretations and a party can be held accountable for Patent Infringement even if the device or process of invention does not fall under the literal interpretation of the claim.

ISSUE:

Whether the substitution of a similar material not claimed in the patent itself would save the Defendants from being held liable for infringements?

Does the doctrine of equivalents apply to chemical equivalents in compositions or to mechanical equivalents in devices?

RULE:

The doctrine of equivalents is a legal rule that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention.

The doctrine of equivalents is applied to chemical equivalents in compositions or to mechanical equivalents in devices.

ISSUE:

Whether higher forms of life can be considered inventions as “manufacture” or “composition of matter” within the existing definition of “inventions” under Section 2 of the Patent Act?

RULE:

Section 2 of the Patent Act (Canadian Law) states that an invention is any new and useful art, process, or machine or any new or useful improvement contributing to the principle of prior art and enhancing or simplifying processes.

ISSUE:

Whether Cipla’s product, ‘Erlocip’ which is Polymorph B of the compound ‘Erlotinib’ encroaches Roche’s patented compound ‘Erlotinib’.

Whether Roche’s patented compound ‘Erlotinib’ is a legitimate patent?

RULE:

The compound of a drug might exist in different polymorphic designs; nonetheless, any such designs will be subsumed inside the patent.

ISSUE:

Whether any amendment to a patent application that narrowed a patent claim to comply with the Patent Act, creates an absolute bar to equivalents for the particular claim limitation that was narrowed by the amendment?

RULE:

The narrowing of an amendment to satisfy any requirement of the Patent Act may result in estoppels. However, estoppel does not prevent the Patentee from claiming infringement against any equivalent to the narrowed element.

ISSUE:

Whether a patentee has an automatic right to a permanent injunction once infringement is found?

RULE:

The four-factor test was laid down: (i) the plaintiff has suffered irreparable injury (ii) remedies available at law are inadequate to compensate that injury; (iii) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; (iv) the public interest would not be disserved by an injunction.

Upon the finding of a patent infringement, an injunction should not be awarded automatically, nor should one be denied merely because the Plaintiff does not use the claimed invention.