Thursday, August 31, 2006

Ranbaxy: Where there is a will…

Norwegian Court has ruled in the favor of Ranbaxy in a patent infringement lawsuit against Pfizer, contending that Ranbaxy’s proposed generic product would not infringe two of Pfizer’s Norwegian patents --- # 177,566 and # 180,199 --- covering a particular intermediate compound. However, this judgment does not have any immediate practical effect to Ranbaxy but will allow Ranbaxy to launch generic version of Lipitor by February 2009 rather than 2010. Pfizer has already planned to make an appeal against the decision. Pfizer has shown confidence in its Norwegian Patent # 177,706 expiring in February 2009 which was earlier upheld by Norwegian Court as valid and infringed by Ranbaxy’s proposed product. However, Ranbaxy has already made an appeal against the decision to the Norwegian Court of Appeals which is scheduled to be heard next March.

Wednesday, August 30, 2006

Teva Too Zeroed Down to Patent Settlement

Following Endo and Purdue settlement move, Teva too settled its pending patent litigation with Purdue over the Oxycodon extended-release tablets, marketed as OxyContin. Under the deal, Teva has agreed to stop selling its generic OxyContin at an undisclosed future date. And in exchange, Purdue has agreed not to pursue damages against Teva for past infringement of Purdue’s patents. This lawsuit was pending in the U.S. District Court for the Southern District of New York.

Tuesday, August 29, 2006

Endo, Purdue Zeroed Down to Patent Settlement

Endo Pharmaceuticals has settled long-running patent infringement litigation with Purdue Frederick over three U.S. Patents, namely, 5,656,295 (the ‘295 patent); 5,508,042 (the ‘042 patent); and 5,266,331 (the ‘331 patent) listed with O.B. for oxycodone extended-release tablets, marketed as OxyContin. Under the settlement deal, Endo will continue to market its generic product until December 31, 2006 and will be released from all liability for infringement in connection with Endo’s prior and future sales of generic oxycodone extended-release tablets. However, the deal is subject to approval by the U.S. Federal Trade Commission and the Antitrust Division of the Department of Justice. Endo launched its generic oxycodone extended-release tablets on June 07, 2005 after the U.S. Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the Southern District of New York ruling that Purdue’s patents were unenforceable due to inequitable conduct before the USPTO and sent the case back to the District Court for further considerations. Following CAFC ruling, Purdue filed a petition for rehearing which was granted on February 01, 2006 withdrawing its earlier decision. In its revised decision, the CAFC vacated the inequitable conduct judgment and sent the case back to the District Court for further proceedings in accordance with its revised opinion. The CAFC also affirmed the District Court ruling that Endo proposed product would infringe Purdue’s patents. After almost 6 years of legal tussle, Endo and Purdue finally zeroed down to patent settlement leaving behind the trace of unsettled patent dispute, particularly the critical balance of materiality and intent in determining inequitable conduct.

Friday, August 25, 2006

Believe in Innovation!

Singapore-based company Creative not only made news recently by settling patent dispute with Apple for U.S. $ 100 million but also made a substantially bold move by suing one of leading IT giant company – Apple for infringing its U.S. Patents, particularly U.S. Patent No. 6,928,433 famously known as “Zen” patent, involving the software menus used to find and play back music on portable music players. Steve Jobs, CEO Apple is his statement admitted that “Creative is very fortunate to have been granted this early patent.” Even though Apple iPod covers major percent of U.S. market, Creative dared to sued Apple to enforce its patents and keeping its believe in Innovation!

Thursday, August 24, 2006

Do You Know!

The first U.S. patent was issued to Samuel Hopkins for a process for making potash and pearl ash, types of potassium compounds used to make soap and fertilizer. The patent was issued on July 31, 1790 and signed by President George Washington and Secretary of State Thomas Jefferson. Surprisingly, even though, this was the first patent issued, it wasn’t U.S. Patent # 1. Why? Prior to Patent Act of July 04, 1836, U.S. patents were issued by name and date rather than number. The U.S. Patent Office had already issued nearly 10,000 patents, when a fire destroyed many of the original records in December 1836. Using private files, the U.S. Patent Office restored 2,845 patents records, and issued a number beginning with an “X” and called the “X-Patents.” Thus the first patent ever issued was actually designated Patent X1. U.S. Patent 1, the first patent issued under new numbering system, was issued to Senator John Ruggle for a cog mechanism for locomotive wheels which was, in fact, reinvention of the wheel. Ruggle designed a new train wheel that yielded more traction and prevented sliding.

Wednesday, August 23, 2006

Who Invented and Who Cashed Telephone?

For 113 years, Alexandra Graham Bell was considered to be inventor of Telephone and famously referred as Father of modern mass communication but in June 2002 U.S. Congress officially passed an unprecedented resolution crediting Antonio Meucci as the rightful inventor of telephone. Why such a blunder happened in the history of telecommunication? The Answer is Patent. Yes, it was the issuance of U.S. Patent 174,465 which changed the fortune of Bell and deprived Meucci from crediting his invention in his name. Following the U.S. resolution, one of the Italian newspaper la Repubblica wrote down that justice had finally been served – 113 years after Meucci’s death. The newspaper also referred to Bell as an imposter, profiteer and a “cunning Scotsman” who usurped Meucci’s spot in history, while Meucci died poor and unrecognized. Meucci, who first demonstrated his invention in 1860, also filed a patent application for telephone but couldn’t afford the US $ 250 needed for a definitive patent for his “talking telegraph” so in 1871 filed a one-year renewable notice of an impending patent. Three years later he could not even afford the US $ 10 to renew it. However, he sent a model and technical details to the Western Union telegraph company but could not succeed to attract company’s executives. Moreover, when he asked for his materials to be returned, in 1874, he was told they had been lost. Two years later Bell, who shared a laboratory with Meucci, filed a U.S. patent for a telephone against which U.S. Patent was issued on March 07, 1876, and went on to became a celebrity and made lucrative deal with Western Union. On June 11, 2002 the U.S. Congress in its resolution recognized that in the past number of years, historical records and scholarly research have concluded that Meucci was the original inventor of the telephone, long before Bell. The resolution also recognized that Meucci filed a caveat on his early telephone on Dec. 28, 1871, which gave notice of an impending patent. But the Italian inventor couldn't afford the $10 to renew the caveat in 1876. If he had, Alexander Graham Bell would not have been granted his patent two years later. This is how a single patent changed the fortune of Alexandra Graham Bell, and documented his name in the history as the inventor of telephone which, unfortunately, he wasn’t.

Gilead grants non-exclusive licenses to Indian Cos.

Gilead Sciences has signed non-exclusive license agreements with three Indian pharma companies, namely, Emcure Pharmaceuticals, Hetero Drugs and Strides Arcolabs for manufacturing and marketing generic versions of its anti-AIDS drug --- Viread, generically known as Tenofovir Disoproxil Fumarate, for which patent application is pending for grant with Indian Patent Office. According to terms of agreement these companies would legally manufacture and market generic versions of Viread to 95 low-income countries around the world including India. Earlier in February 2006, Pune-based Emcure has also entered into a royalty-free technology deal with Bristol-Myer Squibb to make AIDS drug --- Atazanvir Sulphate for India and the African countries. For Hetero Drugs, this is the second deal after Roche signed a sub-license agreement in December 2005 for Tamiflu, generically known as Oseltamivir Phosphate.

Tuesday, August 22, 2006

GSK withdraws Combivir Indian Patent Application

GlaxoSmithKline has withdrawn its patent application for anti-AIDS drug --- Combivir. Earlier, GSK also has withdrawn Combivir patent application in Thailand after facing a strong opposition from thousands of AIDS patients. Back in India, the Combivir patent application was also facing strong opposition from NGOs who filed pre-grant opposition in the Kolkata Patent Office contending that the Combivir as such is not an invention rather a mere combination of existing drugs, namely, Zidovudine and Lamivudine. GSK sources, however, said the company’s move is in public interest and is part of its policy routine review of patent applications.

Monday, August 21, 2006

Who Took Away The Better Half? Lipitor Patent Battle III

The ‘281 Patent: Challenging Statutory Validity Ranbaxy in its second action challenged the ‘281 patent validity, particularly claim 1 covering hemicalcium salt of atorvastatin on the grounds of: (1) anticipation by the WO Application, and (2) obviousness in the light of the Application. Here, yet again, Judge Pumfrey followed a much careful and meticulous approach while dealing with both the anticipation and obviousness issues. Anticipation Issue Before deciding anticipation issue, the court laid down the principles of anticipation and went on addressing the WO Application in great detail. The court acknowledged that the WO Application is directed for ways of making particularly, Formula (I) –

which is same of formula (I) of the ‘633 patent save that group X is explicitly ethyl, (-CH2CH2-) and more particularly directed to Formula Ia.

The court further went on addressing the WO Application with particular emphasis on (1) Compound XII –

which is the ring-opened dihydroxy acid form of Formula Ia, and (2) a statement from the WO Application stating that “the preferred isomer of this invention is the 4R, 6R-isomer of the compounds of Formula I, Ia and XII.” The court also addressed a paragraph from the WO Application quoting – ‘In the ring-opended dihydroxy acid form, compounds.” With this, the court followed that the material claimed in claim 1 is an expressly specified salt (calcium) of the preferred isomer of one of three materials explicitly specified. The court after carefully addressing the WO Application disclosure and the ‘281 patent, concluded that the final structure formula of the ‘281 patent and compound XII of the WO Application are identical, save that the ‘281 patent refers calcium salt whereas the WO Application refers the acid form. The court further concluded that the WO Application gives specific directions to make the three preferred enantiomers, and one of which falls within the claim 1 of the ‘281 patent, and thereby making a clear case of anticipation of claim 1 of the ‘281 patent. To be continued…

Saturday, August 19, 2006

Who Took Away The Better Half? Lipitor Patent Battle II

The ‘633 Patent: Determining Structural Scope With respect to the ‘633 patent, Ranbaxy contended that its atorvastatin calcium will comprise the single optically pure enantiomer of atorvastatin calcium trihydrate salt and would not constitute infringement of any of the claims of the ‘633 patent. In particular, Ranbaxy argued regarding the scope of structural Formula (I) of claim 1 of the ‘633 patent which is reproduced below for supportive reference. 1. A compound of structural formula (I) wherein X is -CH2-, -CH2CH2-, -CH2CH2CH2- or -CH2CH(CH3)-; R1 is 1-naphthyl; 2-naphthyl; cyclohexyl; norbornenyl; 2-, 3-, or 4-pyridinyl; phenyl, phenyl substituted with fluorine, chlorine, bromine, hydroxyl; trifluoromethyl; alkyl of from one to four carbon atoms, alkoxy of from one to four carbon atoms, or alkanoyloxy of from two to eight carbon atoms; either of R2 or R3 is -CONR5R6 where R5 and R6 are independently hydrogen; alkyl of from one to six carbon atoms; 2-, 3-, or 4-pyridinyl; phenyl; phenyl substituted with fluorine, chlorine, bromine, cyano, trifluoromethyl, or carboalkoxy of from three to eight carbon atoms; and the other of R2 or R3 is hydrogen; alkyl of from one to six carbon atoms; cyclopropyl; cyclobutyl, cyclopentyl, cyclohexyl; phenyl; or phenyl substituted with fluorine, chlorine, bromine, hydroxyl; trifluoromethyl; alkyl of from one to four carbon atoms, alkoxy of from one to four carbon atoms, or alkanoyloxy of from two to eight carbon atoms; R4 is alkyl of from one to six carbon atoms; cyclopropyl; cyclobutyl; cyclopentyl; cyclohexyl; or trifluoromethyl; or a hydroxy acid or pharmaceutically acceptable salts thereof, derived from the opening of the lactone ring of the compounds of structural formula I and having the formula X

where X, R1, R2, R3 and R4 are as defined above. During hearing Ranbaxy further argued that although two structural formula (I) and (X) appear to show (R*, R*) compound but in context of claim construction is only limited to the racemate and does not cover the single enantiomers as it is common in organic chemistry to use the structural formula of a single enantiomer to denote the racemate. Ranbaxy further supported its contention by addressing the specification disclosure, contending that the specification makes it clear that the compound of claim 1 is concerned is the racemate, and that in its context formula (I) is being used to refer exclusively to the racemate. However, before construing the scope of structural claim the Judge Pumfrey acknowledged that claim is couched in highly technical language and uses the device of the chemical structure formula to convey its meaning. The judge further explained that illustrated structural formula shows, in highly schematic way, how the chemical bonds are located between atoms of the molecule. The judge also admitted that apart from the myriad of different substitutions that are permitted by reference to the components X and R1-4, the questions is what possible 3-dimensional arrangements of the molecule are covered by the claim, that is, its stereochemical interpretation. Before reaching his conclusion, the judge carefully went on to identify the skilled person to which the ‘633 patent is addressed and the relevant part of the common knowledge regarding stereochemistry and statins prevailing at the time of filing the application for the ‘633 patent. In identifying skilled person, the court acknowledged that the EP ‘633 patent is intended for those who will synthesis an active ingredient and formulate it for use in therapy as a hypolipidaemic or hypocholestrolaemic agent, and thus the EP ‘633 patent is directed towards medicinal chemists with skills in organic synthesis. After determining the level of skilled person, the court further went on to state common general knowledge regarding the subject-matter and acknowledged that the case is concerned with stereochemistry and explained few technical terminologies used during the court hearing and trial, namely, enantiomers, diastereoisomers, and racemate. The court also acknowledged that different enantiomers of a chiral molecule react differently with other chiral molecules and which is particular importance in natural systems since enzymes, which are proteins responsible for all the chemical reactions carried out by the cell, are chiral molecules and are present only as a single enantiomer. The court further acknowledged that within a chiral environment the two enantiomers of a racemate are totally different compounds and very often the majority of the biological activity observed for a racemate resides within a single enantiomer (citing the example of Thalidomide). The court further moves on, to state common general knowledge in relation to statins addressing that the first statins, mevinolin and compactin, were natural products that existed as single enantiomers. The court critically analyzed and addressed the specification disclosure of the ‘633 patent, pointing out a short but significant paragraph at page 4 lines 8 to 12 quoting – “The compounds of structural formula I above possess two asymmetric carbon centers, one at the 4-hydroxy position of the pyran-2-one ring, and the other at the 6-position of the pyran-2-one ring where the alkylpyrrole group is attached. This asymmetry gives rise to four possible isomers, two of which are the R-cis- and S-cis-isomers and the other two of which are the R-trans- and S-trans-isomers. This invention contemplates only the trans- form of the compounds of formula I above.” Further, the court also acknowledged that exemplified examples, particularly Examples 1, 3 and 4 of the ‘633 patent produce racemate form of atorvastatin. Finally, the court pointed out that the dependent claims 3, 4 and 5 denotes compound rather than a structural formula where only claim 3 include the (±) symbol to denote the racemate. Indeed, a small but legally relevant point to consider. Judge Pumfrey, after carefully applying applicable principles of claim construction, and meticulously identifying the skilled person to which the ‘633 patent is addressed and the common general knowledge regarding stereochemistry and statins, in his judgment ruled that “every time the skilled person go through formula I or formula X he will see it with eyes that tell him that in that racemate, there is a single enantiomer that is the effective compound, and that he can resolve the racemate using conventional techniques to extract that enantiomer” and thereby concluded that claim covers both the racemate and the individual enantiomers, and refused the declaration for non-infringement sought by Ranbaxy. To be continued…

Friday, August 18, 2006

Who Took Away The Better Half? Lipitor Patent Battle

Beyond Para IV Litigation! By this time, you would probably be well-read about Para IV battle between Ranbaxy and Pfizer, over the world’s biggest blockbuster drug – Lipitor, with latest in news that the U.S. Court of Appeals for the Federal Circuit (CAFC) has ruled partially in the favor of Pfizer and partially favor of Ranbaxy, and thereby yet again repeating last year’s the U.K. High Court split judgment concerning infringement dispute over Pfizer’s corresponding European patents protecting atorvastatin (EP247633 or the ‘633 patent) and atorvastatin calcium (EP409281 or the ‘281 patent), famously referred as genus and species patent. But this time, the concluding parameters seems to be different with Ranbaxy finally getting a taste of euphoric success by getting a rightful chance to make an early move into US Lipitor market, around 15 months prior than the expected June 2011 deadline while Pfizer likely to approach the USPTO to rectify its technical defect in writing dependent claim of the U.S. Patent No. 5,273,995 (the ‘995 patent) which eventually cost Pfizer the critical Para IV litigation. Apart from these distinctive parameters, there are few appealing questions that still need to be encountered. First, is there any difference of opinion in the U.K. and U.S. judgments? Secondly, who really hits the bottom-line? Is it Ranbaxy or is it Pfizer? Thirdly and the most important, who really took away the better half? Is it Pfizer or is it Ranbaxy? Let’s try to figure out these intriguing questions in light of earlier decided the U.K. High Court, U.K. Court of Appeals and U.S. District Court judgments, and recently decided CAFC ruling! Targeting Lipitor! Ranbaxy became the first generic company to attack Pfizer’s key patents protecting the best-selling drug – Lipitor, challenging their validity in number of jurisdictions including U.S. and U.K., even though, it tasted very limited success and that too with no commercial interest as Pfizer went on defending its patents in Finland, Norway, Romania and Peru but loses Austrian patent covering atorvastatin calcium to Ranbaxy. A number of these decisions are being later appealed by Ranbaxy with higher courts in respective countries. However, Ranbaxy tasted its major victory on October 12, 2005 when the Judge Nicholas Pumfrey of the U.K. High Court invalidated the ‘281 patent but subsequently found that the Ranbaxy’s proposed atorvastatin calcium would infringe the ‘633 patent. This ruling, as such, was of no commercial value to Ranbaxy but gave Ranbaxy a much-needed moral victory for its parallel Para IV litigation in the U.S. District Court for the District of Delaware. Battle I Round 1: The U.K. High Court Earlier in the High Court of Justice Chancery Division Patents Court, Ranbaxy brought two actions against Warner-Lambert (subsidiary of Pfizer) seeking declaration of non-infringement in respect of the ‘633 patent and distinctively seeking revocation of the ‘281 patent. During trial Judge Pumfrey dealt with the following issues – Claim construction with respect of the ‘633 patent. In specific, does the claim illustrating structural compound of Formula (I) cover the single enantiomers, or does in only cover racemic atorvastatin which according to Ranbaxy was illustrated by Formula (I) when properly construed. Obviousness and Anticipation issues with respect to the ‘281 patent. In specific, whether the ‘281 patent is (a) obvious over the application for the ‘633 patent (the Application), and (b) anticipated by Warner-Lambert’s application with PCT publication number WO 89/07598 (the WO Application). To be continued…

Thursday, August 17, 2006

Novartis Surprised Indian Patent Scenario, Filed Petition with High Court

In one of the surprise move, Novartis AG has moved to Madras High Court challenging constitutional validity of section 3 (d) of the Patents Act, 1970 and further contending India’s breach of obligation under the TRIPS agreement. On August 16, 2006 Novartis filed a petition in the Madras High Court seeking a stay on the Assistant Controller of Patents & Designs’ order of January 25, 2006 invalidating its patent application for the b-crystalline form of imatinib mesylate, famously known as Glivec. However, it is still very early to comment but this move may turn out to be critical move which may change the face of patent scenario in India.

Thursday, August 10, 2006

Apotex Unleash Generic Plavix

Apotex in a surprised move is lastly launching generic Plavix, chemically known as clopidogrel bisulphate, in the US Plavix market which worth around US $ 3 billion. However, this move will put Apotex at risk because the patent infringement situation is still yet to be decided by the U.S. District Court for the Southern District of New York. Earlier, Sanofi and its US partner Bristol-Myer Squibb in March 2006 reached an out-of-court settlement with Apotex as result of which Apotex agreed not to sell a generic Plavix until 2011. Later, U.S. authorities rejected the deal in July, after which the Sanofi and Apotex has to restart their unsettled patent lawsuit.

Wednesday, August 09, 2006

National Law University Jodhpur

Recently, I saw an article regarding booming demand for and career in Intellectual Property experts in post-product patent regime. Further, mentioning that premier institutions like IIT are catching the buzz of Intellectual Property education with private-sector institutions to follow the trend. Article also mentioned that public sector institutions are conducting regular IP courses to cater the need of the hour, institutions such as IIT-Kharagpur, National Law School in Hyderabad (NALSAR), and the Universities of Allahabad and Pune. Surprisingly, the article totally missed out National Law University Jodhpur (NLUJ) which is the first University in India (probably in whole Asia) to have formal IP course modules, Masters in Intellectual Property Laws (M.I.P.) and LL.M. (IPR). Both these modules are post-graduate regular programme with specialization in IPR and started in 2000 under the guidance of Prof. (Dr.) N.L. Mitra (Ex Vice Chancellor, NLUJ). NLUJ also offers five-year integrated LL.B. course with B.Sc. plus LL.B. pattern which further has extensive IP courses as their five-year course module. The education pattern of NLUJ is dynamic and well-tailored to meet current requirements with rich library to include books like Chisum on Patents, Nimmer on Copyright, World Patent Law and Practice (LexisNexis), Patent Licensing Transactions (LexisNexis), American Jurisprudence, and so on. Apart from this, NLUJ has 24x7 accesses to Westlaw and Manupatra and in addition to in-house faculties, has regular well-known visiting faculties from India and abroad. Unlike other institutions, NLUJ has kept itself away from publicizing their IP course modules and strongly believe in word-of-mouth approach. NLUities has already started making presence in the vibrating IP market with students’ penetrating both in law firms and corporate sectors to unleash their expertise and potential. Today, NLUities are working with leading law firms, KPOs, Pharmaceuticals, and MNCs. NLUJ is emerging as a centre to congregate law, science, and management with an aim to produce finest IP and Patent Attorneys/experts. Demand for IP/Patent Attorneys and experts will keep on rising in coming years but what is important to know, is that, what are the right sources that will meet the growing demand? NLUJ is right there to deliver and who can better express it than me as I am too part of NLUitie family.

Thursday, August 03, 2006

Pfizer Wins, Ranbaxy takes away 180-day exclusivity for Lipitor

Same Game – Patent Infringement Litigation Same Players – Pfizer (World’s leading Pharmaceutical Major) & Ranbaxy (India’s leading Generic Company) Same Results – Invalidating species patent covering atorvastatin calcium and affirming the validity of genus patent covering atorvastatin per se. But --- Different Year – 2005 (in UK) and 2006 (in US) Different Market – Europe and US Different Impact – In UK, even though Pfizer loses atorvastatin calcium (EP409281) but succeeds to cover maximum patent protection period for Lipitor (EP247633) till 2011 whereas in U.S. Ranbaxy even though lost atorvastatin to Pfizer but succeeds to get away with 180-day exclusivity period with early entry in US Lipitor market prior to 2011. To sum up, Win-Win situation for both Pfizer and Ranbaxy but for me it is Ranbaxy which gets away with the Game. Why? Because US Lipitor market matters the most – worth US $ 8 billion in 2005. Ranbaxy challenged Lipitor patents’ in number of countries with very limited success but really hit the bottom-line where matter the most – the US market. It’s celebration time for India’s biggest pharmaceutical company --- Ranbaxy.

Clash of the Titans

Novo Nordisk, the world leader in diabetes care has filed a patent infringement lawsuit against the world leading pharmaceutical company – Pfizer alleging that the Pfizer’s inhalable insulin product Exubera, infringes over Novo Nordisk’s patents. The lawsuit is filed in the United States Federal Court in the Southern District of New York asserting willful infringement of patents by Pfizer and seeking compensatory damages. After filing lawsuit, Novo also stated that it intends to file a motion for preliminary injunction seeking a court order that would prohibit Pfizer from selling Exubera while the lawsuit is in progress. Exubera is developed by Nektar Therapeutics which later granted exclusively license to Pfizer to market Exubera. However, this infringement move is still in the initial stage and most likely to be resolved outside court but in case, if it process further into deep patent litigation than it may well turn out to be Clash of the Titans.

Wednesday, August 02, 2006

Microbial Type Culture Collection and Gene Bank

Microbial Type Culture Collection and Gene Bank (MTCC) was established back in 1986 jointly by the Department of Biotechnology (DBT), Government of India and Council of Scientific and Industrial Research (CSIR). On October 04, 2002 World Intellectual Property Organization recognized MTCC as an international depository authority under Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedures making MTCC India’s first, seventh in Asia and 34th in the world to acquire international depository authority status. MTCC is situated at the Institute of Microbial Technology (IMTECH), Chandigarh and is an affiliate member of the World Federation of Culture Collection (WFCC) and is registered with World Data Centre for Microorganisms (WDCM: Reg. No. 773). For further information contact: The Curator MTCC Institute of Microbial Technology Sector 39-A, Chandigarh 160 036 India Email:

India’s Presence on Global IP Platform

Recently, Guatemala joined the Patent Cooperation Treaty to become 133rd contracting state. Like Guatemala, India too joined PCT on September 07, 1998 to become a contracting state to the Treaty which subsequently came into force on December 07, 1998 with designated Country Code: IN. Apart from being a PCT Contracting State, India is contracting party to number of Treaties/Conventions which are as follows. Berne Convention Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) came into force on April 01, 1928 and subsequently signed revised editions on July 24, 1971. India ratified Article 22-38 on October 07, 1974 which later came into force on January 10, 1975 and ratified Article 1-21 on February 01, 1984 which subsequently became effective from May 06, 1984. Rome Convention India became signatory to International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention) on October 26, 1961. Phonograms Convention India became signatory to Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (Phonograms Convention) on October 29, 1971 and later ratified on November 01, 1974 which subsequently became effective from February 12, 1975. WIPO Convention India later became contracting party to WIPO on January 31, 1975 which came into force on May 01, 1975. Nairobi Treaty After WIPO, India became signatory to Nairobi Treaty on the Protection of the Olympic Symbol (Nairobi Treaty) on June 30, 1983 and later ratified on September 19, 1983 which subsequently became effective from October 19, 1983. Film Registry Treaty India became signatory to Treaty on the International Registration of Audiovisual Works (Film Registry Treaty) on April 20, 1989. Washington Treaty India became signatory to Treaty on Intellectual Property in Respect of Integrated Circuits (Washington Treaty) on May 25, 1990. Paris Convention Surprisingly India adopted to become contracting party to Paris Convention for the Protection of Industrial Property (Paris Convention) on September 07, 1998 which came into force on December 07, 1998. PCT On the same day (September 07, 1998) when India adopted to become contracting party to Paris Convention, India also joined the Patent Cooperation Treaty (Remember only countries which were contracting party to Paris Convention are eligible to become contracting party to PCT). PCT came into force on December 07, 1998. Budapest treaty India became contracting party to Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (Budapest Treaty) on September 17, 2001 which came into force on December 17, 2001. Microbial Type Culture Collection and Gene Bank (MTCC) is the designated International Depository Authority under Budapest Treaty situated in Bhopal, India. Till date, India is not a contracting party to – Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement) Trademark Law Treaty

Guatemala joins PCT to became 133rd Contracting State

Last month on July 14, 2006 Guatemala became the 133rd contracting state of the Patent Cooperation Treaty. The Treaty will enter into force for Guatemala (Country Code: GT) on October 14, 2006. Recently, Malaysia and El Salvador also joined PCT to become 131st and 132nd contracting state. The Treaty will enter into force for Malaysia (Country Code: MY) and El Salvador (Country Code: SV) on August 16, 2006 and August 17, 2006 respectively.