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© 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Ashish Nawani Tel +1 610 458 2179 Patent Research.

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Presentation on theme: "© 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Ashish Nawani Tel +1 610 458 2179 Patent Research."— Presentation transcript:

1 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Ashish Nawani Tel Patent Research in India Challenges and Best Practices

2 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 2 India – Huge market Worlds second most populated country (1.15 billion people – 17% of world population) Economy 6.5% per annum IPR is becoming serious business in India Rapid growth in patent filings (21% annual growth in ) 75+ patent infringement cases in Delhi High Court IPR reforms reflect seriousness of the government IP is becoming an important business strategy for Indian companies India continues to lead in the number of drug master files (DMF) filed with the US Food and Drug Administration (FDA). Out of the total 246 DMFs filed in the first quarter of 2006, Indian companies like Ranbaxy, Aurobindo Pharma and Cipla accounted for 78 DMFs (31.7%). This is a continuation of the trend witnessed in the past couple of years according to which Indian companies account for 1/3rd of the DMFs filed with the USFDA. Highest number of FDA approved plants (75) outside of the US Worlds second most populated country (1.15 billion people – 17% of world population) Economy 6.5% per annum IPR is becoming serious business in India Rapid growth in patent filings (21% annual growth in ) 75+ patent infringement cases in Delhi High Court IPR reforms reflect seriousness of the government IP is becoming an important business strategy for Indian companies India continues to lead in the number of drug master files (DMF) filed with the US Food and Drug Administration (FDA). Out of the total 246 DMFs filed in the first quarter of 2006, Indian companies like Ranbaxy, Aurobindo Pharma and Cipla accounted for 78 DMFs (31.7%). This is a continuation of the trend witnessed in the past couple of years according to which Indian companies account for 1/3rd of the DMFs filed with the USFDA. Highest number of FDA approved plants (75) outside of the US India : Big Markets, R&D Hubs, and IP Filings Source: players-in-pharmaceutical-contract-manufacturing-brochure.pdfwww.financialexpress.com

3 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 3 Challenges for searching patents in India Case Study Best Practices for patent research in India Patent Statistics How patent research in India can help your organization? Presentation Plan

4 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 4 Source: Annual Reports of the IPO Three fold increase in the number of patent applications filed at the Indian Patent Office (IPO) during the last six years –21% annual increase in –5% annual increase in (impact of global economic recession) 20% annual growth in granted patents in PCT is the favorite filing route –~60% applications filed with the IPO were national phase filings under PCT Majority of filers are foreign residents –~80% patent applications belong to foreign residents –~81% filed in 2007–08 were filed by taking priority from other countries Three fold increase in the number of patent applications filed at the Indian Patent Office (IPO) during the last six years –21% annual increase in –5% annual increase in (impact of global economic recession) 20% annual growth in granted patents in PCT is the favorite filing route –~60% applications filed with the IPO were national phase filings under PCT Majority of filers are foreign residents –~80% patent applications belong to foreign residents –~81% filed in 2007–08 were filed by taking priority from other countries Patent Filing Trends in India (w.r.t. Invention Patent Apps) Design Registrations at the IPO Patent Filings at the IPO

5 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 5 Source: Evalueserve Research Evalueserve has analyzed 112,515 patent applications published by the IPO from to identify the top filers. Only 19 of the top 200 filers are pure-bred Indian entities. –Includes nine pharmaceutical companies and five research institutes Evalueserve has analyzed 112,515 patent applications published by the IPO from to identify the top filers. Only 19 of the top 200 filers are pure-bred Indian entities. –Includes nine pharmaceutical companies and five research institutes Top Ten Filers at the IPO Top Filers at the IPO RankAssignee Count ( ) 1Qualcomm2068 2CSIR2050 3Philips Electronics1619 4Bayer1571 5Samsung1293 6Hindustan Unilever1201 7Ericsson1152 8Microsoft1115 9Thomson Licensing Honda1056

6 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 6 Top Filers in IT/Telecom/Electronics domain ( ) ( )Applicant Count of Published appls ( ) IPOUSPCT% of US% of PCT 1Qualcomm %45% 3Philips Electronics %12% 5Samsung %49% 7Ericsson %36% 8Microsoft %41% 15Nokia %15% 20Siemens %7% 24Sony %22% 26Motorola %11% 29LG Electronics %16% 32IBM %16% 39Research In Motion %73% 48Intel %11% 53Hewlett-Packard %13% 54Alcatel Lucent %19% 58Sony Ericsson %24% 75Cisco Technology %11% 90Oracle %110% 95ST Microelectronics %52% 97Interdigital Technology %11% Qualcomm, Ericsson, Research in Motion and Sony Ericsson are filing good % of applications as compared to their US applications Qualcomm, Ericsson, Research in Motion and Sony Ericsson are filing good % of applications as compared to their US applications

7 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 7 Patent Applications 66% increase in the filings of patent applications in the last 2 years 20% of total patent applications filed in were in the domain of computer electronics Granted Patents 74% annual increase in granted patents in Computer/Electronics field in Patent Applications 66% increase in the filings of patent applications in the last 2 years 20% of total patent applications filed in were in the domain of computer electronics Granted Patents 74% annual increase in granted patents in Computer/Electronics field in Rapid Increase in Patents Related to Computer/Electronics Patent Applications in Computer/Electronics Source: Annual Report , Indian Patent Office

8 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 8 Top 20 Filers at the Indian Patent Office in 2008 New Rank (2008) Old Rank (2007) ChangeApplicant Count Published Appls (2007) Count Published Appls (2008) 110Qualcomm CSIR Samsung Philips Electronics Thomson Licensing General Electric Ericsson Nokia Bayer General Motors Siemens Novartis Microsoft Procter & Gamble Astrazeneca BASF WOCKHARDT Tata Group Ranbaxy Laboratories Motorola271133

9 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 9 Top 10 Domestic Filers Among these 10 companies, 4 are pharmaceutical companies and 2 research institutes. RankCompaniesIPO AppsUS AppsPCT AppsEPO Apps Revenues (2005–08) (in USD million) 2CSIR NA 31Ranbaxy Laboratories Dr Reddy's Laboratories Tata Group (Tata Motors, Tata Steel, Tata Tea, TCS) Indian Institute Of Technology NA 59Bharat Heavy Electricals Cadila Healthcare Orchid Chemicals Larsen & Toubro Steel Authority Of India Source: Evalueserve Research

10 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 10 Comparison between Domestic /Global Players Company Published Patents in US ( ) Pfizer1213 AstraZeneca1092 Merck1074 GlaxoSmithkline855 Abbott790 Company Published Patents in India ( ) Ranbaxy Laboratories455 Dr Reddy's Laboratories369 Cadila Healthcare219 Orchid Chemicals & Pharmaceuticals 190 Cipla165

11 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 11 Top Domestic Pharmaceutical Companies Rank Indian Pharma Companies IPO Published Patent Apps US Published Patent Apps PCT Published Apps EPO Published Apps Revenues (2005–07) in USD million Revenue/ No. of Patent Publications at the IPO (Ratio) Revenue/ No. of Patent Publications at the IPO, US, EP and PCT 31 Ranbaxy Laboratories Dr Reddy's Laboratories Cadila Healthcare Orchid Chemicals & Pharmaceutic als Cipla Sun Pharmaceutic al Industries The ratio of revenue to the number of patent publications at the IPO seems reasonable. Whereas Dr. Reddys Laboratories files a large proportion of its patent applications at the IPO, Ranbaxy Labs files the majority of its applications in jurisdictions outside India. The ratio of revenue to the number of patent publications at the IPO seems reasonable. Whereas Dr. Reddys Laboratories files a large proportion of its patent applications at the IPO, Ranbaxy Labs files the majority of its applications in jurisdictions outside India. Source: Evalueserve Research

12 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 12 Challenges for searching patents in India Case Study Best Practices for patent research in India Patent Statistics How patent research in India can help your organization? Presentation Plan

13 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 13 PlatformType of DisputeStage Patent Enforcement Pre Grant Opposition Post Grant Opposition Challenging Decisions of Patent Office Challenging decisions of Appellate Board Patent Office Appellate Board Supreme Court Patent Invalidation Appellate Board High Court Patent Infringement Courts Patent Revocation India Allows Pre-grant and Post-grant Opposition Patent Prosecution

14 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 14 Pre-grant Opposition Post-grant Opposition YearOppositions received Oppositions disposed (incl pervious years) Pre Grant and Post Grant Opposition Statistics YearOppositions received Oppositions disposed (incl pervious years) Hints at large no. of oppositions by domestic pharma companies to mailbox applications

15 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 15 Pre grant Opposition –Allows third parties (any person) to oppose a patent application on its publication, when a patent application is under examination –Parties will be entitled to a hearing, if requested and considered necessary, by examiner Post Grant Opposition –Any interested person can file opposition within one year of post grant publication Grounds of the Oppositions –Wrongful obtaining –Prior Publication –Claimed in an Earlier Application –Publicly Known –Obvious without Inventive Step –Not a Patentable Invention under the Indian Laws –Not sufficiently described –Details of Corresponding Applications not Disclosed Pre grant Opposition –Allows third parties (any person) to oppose a patent application on its publication, when a patent application is under examination –Parties will be entitled to a hearing, if requested and considered necessary, by examiner Post Grant Opposition –Any interested person can file opposition within one year of post grant publication Grounds of the Oppositions –Wrongful obtaining –Prior Publication –Claimed in an Earlier Application –Publicly Known –Obvious without Inventive Step –Not a Patentable Invention under the Indian Laws –Not sufficiently described –Details of Corresponding Applications not Disclosed Pre Grant and Post Grant Opposition

16 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 16 Patent Prosecution: Timeline for Pre-Grant and Post-Grant Opposition Publication Patent Application Grant Representation (After publication, till grant) Representation (After publication, till grant) Examination Rejection Notice of opposition Opposition proceedings Patent Revoked Patent valid Opposition Overruled Opposition Successful Representation overruled Accepted Representation 18 months or later Publication Of Grant Pre-grant Post-grant 12 months

17 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 17 Indian Patent Office granted a patent to Roche for Tarceva, an anti-cancer drug An opposition proceeding was initiated by Cipla, an Indian Pharmaceutical Company, which was refused by the Indian Patent Office Roche, patentee of the drug, filed an infringement suit in Delhi High Court Indian Patent Office granted a patent to Roche for Tarceva, an anti-cancer drug An opposition proceeding was initiated by Cipla, an Indian Pharmaceutical Company, which was refused by the Indian Patent Office Roche, patentee of the drug, filed an infringement suit in Delhi High Court Case Study: Roche vs. Cipla The multinational companies need to be prepared before hand about the prima facie case for infringement Indian Patent Office and Courts are fast in resolving the issues Indian Patent office interprets the non patentable clause (section 3 (d)) very strictly in case of pharmaceutical inventions The multinational companies need to be prepared before hand about the prima facie case for infringement Indian Patent Office and Courts are fast in resolving the issues Indian Patent office interprets the non patentable clause (section 3 (d)) very strictly in case of pharmaceutical inventions Patent Enforcement System Supreme Court Patent Office (4 branches) Responsibilities of the Patent Office Formulating rules and implementation Patent examination, granting and renewal Foreign-related IP issue coordination Handle patent-related disputes –Patent ownership –Pre grant Opposition –Post grant opposition –Compulsory licensing Responsibility of IP Appellate Board Appeal against the decision of patent office in case of patent rejection, opposition Hearing of Revocation (invalidation) proceedings Responsibility of the Courts Judicial enforcement of IPR (infringement) Supreme Court: Appeal against decision of lower courts/ IP Appellate Board High Court IP Appellate Board District Court

18 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 18 Challenges for searching patents in India Case Study Best Practices for patent research in India Patent Statistics How patent research in India can help your organizations Presentation Plan

19 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 19 No existing database covers all granted patents and published applications –Existing IPO patent database can search patents only by Title, Abstract and IPC class –Legal Status of Patents not available online –Coverage 2005 onwards: Title, Abstract and Bibliographic info available online for all patent applications (No full text and drawings) 1995 to 2004: Only Title and Bibliographic information available online. Abstract available in printed Gazettes offline Prior to 1995: Only hard copies available Existing databases severely limited in features and capability –Cannot perform complex searches using boolean operators –Full text search and claims search not available Manual procurement of patent copies from the Indian Patent Office –Tedious and time consuming procedure Need to submit request and fees at one of the four patent office branches where the application was filed (involves travel time & cost) Regular follow-up required to obtain the copy of the patent May take three to four weeks for a small bunch of patents No existing database covers all granted patents and published applications –Existing IPO patent database can search patents only by Title, Abstract and IPC class –Legal Status of Patents not available online –Coverage 2005 onwards: Title, Abstract and Bibliographic info available online for all patent applications (No full text and drawings) 1995 to 2004: Only Title and Bibliographic information available online. Abstract available in printed Gazettes offline Prior to 1995: Only hard copies available Existing databases severely limited in features and capability –Cannot perform complex searches using boolean operators –Full text search and claims search not available Manual procurement of patent copies from the Indian Patent Office –Tedious and time consuming procedure Need to submit request and fees at one of the four patent office branches where the application was filed (involves travel time & cost) Regular follow-up required to obtain the copy of the patent May take three to four weeks for a small bunch of patents Searching Indian Patents – A BIG Challenge

20 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 20 No option of searching in claims or full specifications No advanced search: Can not form complex queries No option of searching in claims or full specifications No advanced search: Can not form complex queries Limitations of Online Database in India (1 of 2)

21 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 21 Claims, drawings and full specifications are not available online No way of checking legal status online Claims, drawings and full specifications are not available online No way of checking legal status online Limitations of Online Database in India (2 of 2) Details available online

22 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 22 None of the databases provide full text search of indian patents/patent application None of the databases provide full text of Indian patent applications Full text is available online only for patents Granted between , rest of the patents are in the process of being uploadedGranted Full text is available online only for patents Granted between , rest of the patents are in the process of being uploadedGranted One database that provides maximum coverage is STN (1946-till date). STN people accept some minor gaps in their coverage It is redundant to search Bigpatent /TMP searchers after searching Indian Patent Office 18 Months Publication Gazette and journals are common in all the four covering all four (Delhi, Mumbai, Kolkatta, Chennai) patent offices Legal status of a patent is available only from the patent office (Delhi or Mumbai or Kolkatta or Chennai) where it was filed Granted patent search using Website of National Informatics Centre is not recommendedNational Informatics Centre Granted patent search using Website of National Informatics Centre is not recommendedNational Informatics Centre None of the databases provide legal status of the Indian patent/patent application Indian Patent Search Points to Remember while Conducting Indian Patent Search

23 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 23 Options available Government of India, Controller General of Patents Design and Trade Marks, Indian Patent Search 1912-Onwards 1963-Dec, Dec, 2004 Jan 2005-Till date Jan 2006-Till date Availability: Online Coverage: Search options available: Title of Invention, Patent Number, Date of Filing, Application Number, Applicant Name Data retrieved: Full text in pdf format WeblinkWeblink (1-80,000), Weblink (80001 to 1,53,697)Weblink Coverage: Search options available: Patent Number Data retrieved: Full text in pdf format WeblinkWeblink (1,53,698 to 1,69,500) Coverage: till date Search options available: Title, Abstract; Application No., Applicant name, Inventor, Patent Number, Patentee Data retrieved: Patent Application Number, Date Of Filing, PCT Filing Date, Patentee, Patent No., Date Of Grant, Title, Abstract, Inventors Details, Priority Details, Conventional Country Priority Date, IPC WeblinkWeblink (New Records) Limitations: Only Granted patents are available Their seems to be a gap from (Not confirmed) Availability: Online Coverage: Search options available: Title of Invention, Patent Number, Date of Filing, Application Number, Applicant Name Data retrieved: Full text in pdf format WeblinkWeblink (1-80,000), Weblink (80001 to 1,53,697)Weblink Coverage: Search options available: Patent Number Data retrieved: Full text in pdf format WeblinkWeblink (1,53,698 to 1,69,500) Coverage: till date Search options available: Title, Abstract; Application No., Applicant name, Inventor, Patent Number, Patentee Data retrieved: Patent Application Number, Date Of Filing, PCT Filing Date, Patentee, Patent No., Date Of Grant, Title, Abstract, Inventors Details, Priority Details, Conventional Country Priority Date, IPC WeblinkWeblink (New Records) Limitations: Only Granted patents are available Their seems to be a gap from (Not confirmed)

24 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 24 Indian Patent Search Options available Gazette of India (Part III, Section 2) 1912-Onwards 1963-Dec, Dec, 2004 Jan 2005-Till date Jan 2006-Till date Availability: Available as hard copy in any Indian patent office Coverage: Dec, 2004 Data Availability: Application No, filing date, Publication date, IPC class, Applicant, Inventors, Abstract, drawings and first 2-3 claims Patent office address: Limitations: One can visit any Indian patent office to screen patents. After finding the relevant patents request has to be placed for Xerox copies. Patent publications are not arranged according to their domain. Patents of all domains are given together. Only patent publications are available Does not cover patent data before 1995, data reliability-Good Availability: Available as hard copy in any Indian patent office Coverage: Dec, 2004 Data Availability: Application No, filing date, Publication date, IPC class, Applicant, Inventors, Abstract, drawings and first 2-3 claims Patent office address: Limitations: One can visit any Indian patent office to screen patents. After finding the relevant patents request has to be placed for Xerox copies. Patent publications are not arranged according to their domain. Patents of all domains are given together. Only patent publications are available Does not cover patent data before 1995, data reliability-Good Patent Office, Delhi Boudhik Sampada Bhawan Plot No.32, Sector-14, Dwarka New Delhi – Patent Office, Mumbai Boudhik Sampada Bhawan S.M. Road, Antop Hill Mumbai – Patent Office, Chennai Intellectual Property Building G.S.T. Road, Guindy Chennai – Patent Office, Kolkata Boudhik Sampada Bhawan CP-2, Sector V, Salt Lake City Kolkata –

25 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 25 Indian Patent Search Options available Ekaswa A 1912-Onwards 1963-Dec, Dec, 2004 Jan 2005-Till date Jan 2006-Till date Availability: Online Coverage: Dec, 2004 Search options available: Title only, Application No, Applicant, Inventors, Data retrieved: Title, Application No, Application filed on, Publication date, IPC class, Applicant, Inventors, Gazette date, Convention data Weblink Limitations: Abstracts not available. One can visit any Indian patent office for obtaining abstracts, drawings & First few claims Text searches are limited only to title Does not cover patent data before 1995, data reliability-Good Availability: Online Coverage: Dec, 2004 Search options available: Title only, Application No, Applicant, Inventors, Data retrieved: Title, Application No, Application filed on, Publication date, IPC class, Applicant, Inventors, Gazette date, Convention data Weblink Limitations: Abstracts not available. One can visit any Indian patent office for obtaining abstracts, drawings & First few claims Text searches are limited only to title Does not cover patent data before 1995, data reliability-Good

26 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 26 Indian Patent Search Options available Indian Patent Office 18 Months Publication 1912-Onwards 1963-Dec, Dec, 2004 Jan 2005-Till date Jan 2006-Till date Availability: Online Coverage: 2005 onwards Search options available: Application No, Applicant, Inventors, Title & Abstract Data retrieved: Application No, Application filed on, Publication date, IPC class, Applicant, Inventors, Title & Abstract, Convention data Weblink Limitations: Text searches are limited only to title and abstract Does not cover patent data before 2005, data reliability-Excellent Availability: Online Coverage: 2005 onwards Search options available: Application No, Applicant, Inventors, Title & Abstract Data retrieved: Application No, Application filed on, Publication date, IPC class, Applicant, Inventors, Title & Abstract, Convention data Weblink Limitations: Text searches are limited only to title and abstract Does not cover patent data before 2005, data reliability-Excellent

27 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 27 Indian Patent Search Options available BigPatents India 1912-Onwards 1963-Dec, Dec, 2004 Jan 2005-Till date Jan 2006-Till date Availability: Online Coverage: 2006 onwards Search options available: Application No, Applicant, Inventors, Title & Abstract Data retrieved: Application No, Application filed on, Publication date, IPC class, Applicant, Inventors, Abstract Weblink Limitations: Does not cover patent data before 2006, Text searches are limited only to title and abstract, Data reliability-Average, Full text not available Availability: Online Coverage: 2006 onwards Search options available: Application No, Applicant, Inventors, Title & Abstract Data retrieved: Application No, Application filed on, Publication date, IPC class, Applicant, Inventors, Abstract Weblink Limitations: Does not cover patent data before 2006, Text searches are limited only to title and abstract, Data reliability-Average, Full text not available

28 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 28 Indian Patent Search STN Commercial Databases Availability: Online Coverage: till date (CAS Registry) Data Availability: Complete bibliographic data Limitations: High cost to obtain bibliographic data Data coverage is almost complete except a few gaps which STN is working on Availability: Online Coverage: till date (CAS Registry) Data Availability: Complete bibliographic data Limitations: High cost to obtain bibliographic data Data coverage is almost complete except a few gaps which STN is working on Thomson Innovation Availability: Online DWPI Coverage: till date Data Availability: Complete bibliographic data of granted patents and applications Limitations: Data coverage appears to be incomplete (assumption made after comparing the number of hits with STN using a common keyword) Availability: Online DWPI Coverage: till date Data Availability: Complete bibliographic data of granted patents and applications Limitations: Data coverage appears to be incomplete (assumption made after comparing the number of hits with STN using a common keyword)

29 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 29 Challenges for searching patents in India Case Study Best Practices for patent research in India Patent Statistics How patent research in India can help your organization? Presentation Plan

30 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 30 Project Patent search for a drug patent in India Objective To identify patents/published applications for an anti-viral drug in Indian jurisdiction Research Methodology Online Searches –Keyword based search Online Indian patent database Commercial Databases –STN CAS Registry Number Search Structure Search –Thomson Innovation Derwent Text Search Manual Search –Title, Abstract based Screening –Legal Status Check and Procurement Project Patent search for a drug patent in India Objective To identify patents/published applications for an anti-viral drug in Indian jurisdiction Research Methodology Online Searches –Keyword based search Online Indian patent database Commercial Databases –STN CAS Registry Number Search Structure Search –Thomson Innovation Derwent Text Search Manual Search –Title, Abstract based Screening –Legal Status Check and Procurement Sample Case Study (1/6)

31 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 31 Online Searches The online search was conducted with the set of keywords mentioned below: –Generic / Proprietary /IUPAC/INN Name of the drug molecule –Broad class of the drug such as antiviral, retroviral, and HIV protease inhibitor were also used for the searches Databases used for the search: –Ekaswa Coverage: Jan 1995 to Dec 2004 Scope: Title –Indian Patent Office website Coverage: 2005 onwards Scope: Title & Abstract –BigPatents Coverage: 2006 onwards Scope: Title & Abstract –TMP searchers.com 2006 onwards Scope: Title & Abstract Online Searches The online search was conducted with the set of keywords mentioned below: –Generic / Proprietary /IUPAC/INN Name of the drug molecule –Broad class of the drug such as antiviral, retroviral, and HIV protease inhibitor were also used for the searches Databases used for the search: –Ekaswa Coverage: Jan 1995 to Dec 2004 Scope: Title –Indian Patent Office website Coverage: 2005 onwards Scope: Title & Abstract –BigPatents Coverage: 2006 onwards Scope: Title & Abstract –TMP searchers.com 2006 onwards Scope: Title & Abstract Sample Case Study (2/6)

32 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 32 Commercial Databases STN Based Search (Coverage: till date) –CAS Number Search: Identifying CAS Registry number for the drug molecule and searching on the CAS REGISTRY database –Structure based search: Formulating a broad query structure of the drug molecule with the help of structure drawing tools and structure based search on CAS registry and MARPAT database Searches on Thomson innovation (Coverage: 1963 onwards) –Derwent Text: Searching keywords on Derwent text through Thomson Innovation –Analysis: The full text of the corresponding US/EP patent family member of the Indian patent was analyzed to check the relevancy. Commercial Databases STN Based Search (Coverage: till date) –CAS Number Search: Identifying CAS Registry number for the drug molecule and searching on the CAS REGISTRY database –Structure based search: Formulating a broad query structure of the drug molecule with the help of structure drawing tools and structure based search on CAS registry and MARPAT database Searches on Thomson innovation (Coverage: 1963 onwards) –Derwent Text: Searching keywords on Derwent text through Thomson Innovation –Analysis: The full text of the corresponding US/EP patent family member of the Indian patent was analyzed to check the relevancy. Sample Case Study (3/6)

33 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 33 Manual Search Screening (Title/Abstract/First Claim): –Manual browsing of official gazettes for the period 2000 to 2004 to identify Indian patents/ published applications. Procurement: (full specifications of the shortlisted patents/ published applications are available with the respective regional offices where the applications were filed) –Travelling to the respective regional (Delhi, Mumbai, Kolkata, and Chennai) patent offices –Checking the legal status of all the shortlisted patents/ published applications in the Register of patents that is available in the respective regional patent offices –Requesting for the copy of the shortlisted patents/ published applications –Conversion of the hard copies of the shortlisted patents/ published applications into digital format by scanning each document Manual Search Screening (Title/Abstract/First Claim): –Manual browsing of official gazettes for the period 2000 to 2004 to identify Indian patents/ published applications. Procurement: (full specifications of the shortlisted patents/ published applications are available with the respective regional offices where the applications were filed) –Travelling to the respective regional (Delhi, Mumbai, Kolkata, and Chennai) patent offices –Checking the legal status of all the shortlisted patents/ published applications in the Register of patents that is available in the respective regional patent offices –Requesting for the copy of the shortlisted patents/ published applications –Conversion of the hard copies of the shortlisted patents/ published applications into digital format by scanning each document Sample Case Study (4/6)

34 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 34 Sample Case Study (5/6) Supplementary Searches Assignee Search: –Identifying key players for the drug molecule by searching in the Orange book, UK IPO, Canadian patent register, etc –Searching for the identified assignees on various Indian databases Family Search: –Identifying patents claiming the drug of interest in other jurisdictions using Delphion, MicroPatent, and Thomson Innovation database –Checking family member of the identified patents to capture the Indian counterpart, if any. General Search: Searching on Google to get some information on the pre-grant/post grant opposition, if any, for the drug of interest Supplementary Searches Assignee Search: –Identifying key players for the drug molecule by searching in the Orange book, UK IPO, Canadian patent register, etc –Searching for the identified assignees on various Indian databases Family Search: –Identifying patents claiming the drug of interest in other jurisdictions using Delphion, MicroPatent, and Thomson Innovation database –Checking family member of the identified patents to capture the Indian counterpart, if any. General Search: Searching on Google to get some information on the pre-grant/post grant opposition, if any, for the drug of interest

35 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 35 Results and Conclusions Online Searches: –Two patent families mentioning the exact drug molecule were identified as relevant from the online searches. –25 patent families identified broadly mentioned antiviral agents, retroviral agents and HIV protease inhibitors in title and abstract without specifying the exact drug molecule. STN searches: Three relevant patent families (Two unique results) were obtained by mapping the structure claimed with the query drug molecule. These results were not identified through other databases. Thomson Innovation: Four patent families mentioning the combination of the query molecule with other active agents were identified through derwent searches. The combination of various searches assured comprehensiveness of the data. Results and Conclusions Online Searches: –Two patent families mentioning the exact drug molecule were identified as relevant from the online searches. –25 patent families identified broadly mentioned antiviral agents, retroviral agents and HIV protease inhibitors in title and abstract without specifying the exact drug molecule. STN searches: Three relevant patent families (Two unique results) were obtained by mapping the structure claimed with the query drug molecule. These results were not identified through other databases. Thomson Innovation: Four patent families mentioning the combination of the query molecule with other active agents were identified through derwent searches. The combination of various searches assured comprehensiveness of the data. Sample Case Study (6/6)

36 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 36 Challenges for searching patents in India Case Study Best Practices for patent research in India Patent Statistics How patent research in India can help your organization? Presentation Plan

37 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 37 Shortlist Patents Using Research from Variety of Sources Use Title/Abstract/IPC search on the granted patents database available on the IPO website Use Title search on Ekaswa database, as the data in IPO website is currently incomplete Use Title/Abstract/IPC search on the granted patents database available on the IPO website Use Title search on Ekaswa database, as the data in IPO website is currently incomplete Strategy for India : Identifying Barriers Study US/EP/PCT patent families of short-listed patents As almost 80% patent filers are foreigners, there are good chances that the patent would have family members in US/EP/PCT Since full texts of all granted patents are not available online, and manual procurement of patents takes time, family members help in quick assessment This strategy may not work for patents of domestic companies as many of them hardly file outside As almost 80% patent filers are foreigners, there are good chances that the patent would have family members in US/EP/PCT Since full texts of all granted patents are not available online, and manual procurement of patents takes time, family members help in quick assessment This strategy may not work for patents of domestic companies as many of them hardly file outside Order full text of patents from relevant branch of the IPO Note the branch of the IPO in the application number, and order the full text from that branch only Presence of local vendor helps in regular follow up with the IPO and quicker delivery of patents Note the branch of the IPO in the application number, and order the full text from that branch only Presence of local vendor helps in regular follow up with the IPO and quicker delivery of patents Order full text of patents from relevant branch of the IPO Note the branch of the IPO in the application number, and order the full text from that branch only Presence of local vendor helps in regular follow up with the IPO and quicker delivery of patents Note the branch of the IPO in the application number, and order the full text from that branch only Presence of local vendor helps in regular follow up with the IPO and quicker delivery of patents

38 © 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential Slide 38 Performing FTO Study in India StageProcess StepsSourcesOutput 1. Online Search Identify key words corresponding to main features of the product Use key word/ title/ assignee/ abstract based search IPO Website Ekaswa-B BigPatent STN Derwent List of potentially relevant patents that lie in same domain 2. Family Member Analysis Find family members in US, EP, PCT Analyze abstract, claims, drawings and specifications of family members to weed out irrelevant patents Micropat Delphion Espacenet Shorter list of potentially relevant Patents 3. Full Text Procurement File a request for procuring full text at the relevant branch of the IPO Analyze claims, drawings and specifications to filter non-relevant results Map features of claims to the product to identify relevant patents IPO Office List of Relevant patents that overlap with key features of the product 4.Legal Status Procurement File a request for procuring legal status of relevant patents at the relevant branch of the IPO IPO Office List of Relevant patents that are valid (not abandoned or expired) Time and Cost

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