India: new decisions from the Patent Office

I hope you enjoyed reading the earlier decisions.

The IPO has recently posted some new decisions.

Particularly, this post grant decision for patent IN208718 is very interesting. Assistant Controller K. S. Hariram has penned decision worth reading. What I personally like is that he has put forth Opponent's views, Patentee's views and the Opposition Board's views against every ground raised, before giving his decision.

SpicyIP did a detailed post on the decision, here.

There are some other decisions as well.
a) 1169/MUMNP/2006 is decision u/s Section 15 involving phenantridine compounds. The Assistant Controller held that 'minor modifications such as an OH group at a different location in the same structural framework' does not involve inventive merit.

b) 416/MUMNP/2007 is also a decision under section 15 involving a process to make Atenolol. The Assistant Controller held that the process claims do not involve an inventive step.

c) IN212032 (coming from 657/MUMNP/2005) is an interesting decision. The Opponent filed a post-grant opposition u/s 25(2) and the Patentee filed a response. Post submission of additional evidence by Opponent, the Patentee decided to abandon the patent and communicated the same, to the Patent Office. The proceedings ended.

Colorcon and Ideal cures - patent revocation

Pharmabiz carried a new item on a revocation of Colorcon patent by Ideal Cures.

The details of patent are:
Assignee - Colorcon Inc.
Patent # IN191636
Nature of action: revocation
Adjudicating authority: IPAB
Order citation: order 90 of 2010

The news report also mentions that Ideal and Colorcon had been engaged in a pre-grant tussle, earlier in 2009- which Ideal had won.

If any of our readers have either the revocation order (not yet available on IPAB site) or the pre-grant order, then please share it with us.

India: Recent patent decisions

I have written a couple of posts on decisions.

a) The IPO has uploaded 2 interesting post grant decisions. Details, here.

b) A decision related to the Cadila/ Glochem matter has been posted. Details, here.

c) The Delhi High Court has recently issued a great order on transparency at Patent Office. Details, here.

d) The post on revocation of Valganciclovir compound claims, here.

Decisions from Patent Controller?? a long wait...

The following comment comes from a friend and very observant fellow patent practitioner, who wishes to be anonymous:

"The Indian Patent Office decision section shows a whole bunch of decisions uploaded in the last two weeks pertaining to S.15 (refer pages 22/23/24 of the decision segment), and while the hearings for almost all these S. 15 cases were held more than 2 years ago; the decisions are released only now..."

Two years of waiting- after completion of final hearings is a very long time, and it effectively is a loss of precious possible 'patent term' for the Applicant.

I myself am aware of a similar situation- in this case, a post-grant opposition- wherein hearing was completed in June 2009, but the decision is not yet out!

I am often asked by friends/ non Indian IP professionals on how long will it take the Indian patent office to come out with its decision - be it S. 15, s.25(1) or S.25(2). I try not to hazard a guess since I know that these cases [like above exaamples] may take upwards of 2-3 years for a decision.

I, personally think, that such unusually long decision time lines are not beneficial to patent applicants or the opponents.

Indian Patent Applications - status now available on-line

The Indian Patent Office has today launched the [free] on-line status check facility for patent applications.

It is now possible to know whether a patent application was abanoned [or not] or when was an examination report issued OR whether an opposition was filed for the application.

Please click here to visit the site.

It seems that the current site only works for the numbers with format '1234/XXX/YYYY', where XXX is the patent office city code and YYYY is the filing year, take for example - 124/Che/2007. It does not seem to work for applications having the PCT reference in filing number.

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This follows the earlier positive developments like searchable decisions site, reported here.
After that note, the Indian Patent Office had also moved to giving the granted patent specifications on-line. This is an on-going project.

Kudos to the Indian Patent Office team and its new and dynamic leadership!

Cancer drugs - pre-grant oppositions rejected

Indian patent - IN237430 covers Novatris' anti-cancer drug Nilotinib {Tasigna(R)}. Patentcircle reported on the grant, here. However, it is interesting to note that the underlying application - 3003/CHENP/2004 faced a pre-grant opposition.


Cipla had filed a pre-grant opposition against this application, at the Chennai Patent Office in February 2009. However, in December 2009, the Controller rejected the pre-grant opposition. The Patent Office pre-grant decision for Nilotinib is available here.


This reminds me of Erlotinib {Tarceva (R)}. Indian patent IN196774 covers this drug. The patent comes from application - 537/DEL/1996. Natco had filed a pre-grant opposition to this Application in April 2007. However, the Controller rejected the pre-grant opposition in July 2007. The Erlotinib pre-grant decision is available here.

Rejections from pre-grant- appealable to IPAB by Patent Applicant

I had earlier written on the Tadalafil rejection by the Patent Office in the midst of a pre-grant opposition by Ajanta, here.

After that rejection, Lilly had approached the Delhi High Court and finally, the Delhi High Court has now said that Lilly should instead go to the IPAB.

I have written briefly on this matter on my other blog, here.
The copy of the Delhi High Court order asking Lilly to go to IPAB, is here.