Thursday, December 04, 2008

High Court Ordered Re-Examination for Valcyte Patent

The Madras High Court has ordered the Chennai Patent Office to re-examine Indian Patent No. 207232 issued to Roche in June 2007 for antiviral drug Valcyte, generically known as Valgancyclovir. The decision delivered by a bench comprising Chief Justice A.K. Ganguly and Justice Ibrahim Kalifulla is in response of petition filed by the Indian Network of Positive People and the Tamil Nadu Network of People with HIV/AIDS against the Chennai Patent Office decision to grant patent for Valgancyclovir without been given an opportunity for hearing (read earlier post). Recently, Roche also filed a lawsuit against Cipla for alleged infringement of the ‘232 patent (read earlier post). There is considerable likelihood that the decision may impact ongoing case in the Mumbai High Court between Roche and Cipla, possibly going in favor of Cipla. Girish Telang, Managing Director of Roche Scientific India said that “the court wants the patent granted on Valgancyclovir to be re-examined before January 31, 2009.”

Earlier in July 2006, Indian Network of Positive People and the Tamil Nadu Network of People with HIV/AIDS filed a pre-grant opposition before the Chennai Patent Office against the grant of a patent to Roche for Valgancyclovir and requested hearing under section 25 (1) of the Patents Act, 1970. Under the Indian patent law, an opponent may also request a hearing during pre-grant opposition. Also the Indian patent law seems to give the Controller a discretionary power to consider or not to consider the pre-grant opposition but if pre-grant opposition once considered by the Controller then section 25 (1) mandatory obligate the Patent Office to hear the opponent, if requested.

The Patent Office considered the pre-grant opposition and sent to Roche and later received a reply from Roche. Satisfied that the objections raised by pre-grant opposition had been met by Roche, the Chennai Patent Office went ahead and granted the ‘232 patent without hearing to the opponent. In October 2008, the opponent filed a petition in the Madras High Court alleging violation of the mandatory requirements of the patent law.

5 comments:

  1. Hi Varun,

    Would appreciate if you can let me know the status about the Cipla injunction by Roche in the Mumbai HC which was scheduled for hearing somewhere in the 3rd week of November?

    Also would love to know your view points on the merits of the present case; vis-a-vis the much debated concept of "Innovation, Reward and People's need".....

    Thanks in advance

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  2. Latest what we know from reliable sources is that the infringement suit between Roche and Cipla will come up for hearing before the Mumbai High Court on December 10, 2008.

    I will take your second question in my new section Q Corner and will soon answer in one of my next post.

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    VC | Patent Circle

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  3. Your view point on the significance/impact/relevancy of the Mumbai HC hearing taking into consideration the latest Madras HC decision against Roche patent....


    Thanks in advance.

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  4. I do not have great expectation with Indian patent system which is slowly becoming nonsense and making mockery of patent law. We must accept as a country we do not have respect for intellectual property rights and innovation. In fact, patent and other IP laws has become more a headache for India where from small and big companies are just engage in copying and making money. As far as Chennai High Court order is concerned, surely it will make a huge impact on Mumbai High court hearing. There is likelihood that Mumbai HC will further delay hearing till patent office is done with re-examination or there is also a possibility that Mumbai HC may dismiss the case (you never know).

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    VC | Patent Circle

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  5. Thanks Varun, sharing your viewpoint.... It seems that you and me are on the same thinking hats....

    Will post you more concerns....


    Enjoy the weekend

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