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Patent Research in India

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1 Patent Research in India
Challenges and Best Practices Ashish Nawani Tel 1 1

2 India : Big Markets, R&D Hubs, and IP Filings
India – Huge market World’s 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 Source:

3 Presentation Plan Patent Statistics
How patent research in India can help your organization? Challenges for searching patents in India Case Study Best Practices for patent research in India 3

4 Patent Filing Trends in India (w.r.t. Invention Patent Apps)
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 Filings at the IPO Source: Annual Reports of the IPO Design Registrations at the IPO Source: Annual Reports of the IPO

5 Top Ten Filers at the IPO
Top Filers at the IPO 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 Rank Assignee Count ( ) 1 Qualcomm 2068 2 CSIR 2050 3 Philips Electronics 1619 4 Bayer 1571 5 Samsung 1293 6 Hindustan Unilever 1201 7 Ericsson 1152 8 Microsoft 1115 9 Thomson Licensing 1065 10 Honda 1056 Source: Evalueserve Research

6 Top Filers in IT/Telecom/Electronics domain (2005-08)
Applicant Count of Published appls ( ) IPO US PCT % of US % of PCT 1 Qualcomm 2068 3259 4568 63% 45% 3 Philips Electronics 1619 8530 13691 19% 12% 5 Samsung 1293 36322 2621 4% 49% 7 Ericsson 1152 2107 3213 55% 36% 8 Microsoft 1115 13383 2726 8% 41% 15 Nokia 864 5376 5593 16% 15% 20 Siemens 722 9555 10460 7% 24 Sony 580 11472 2617 5% 22% 26 Motorola 537 3533 4999 11% 29 LG Electronics 504 6754 3139 32 IBM 452 17403 2846 3% 39 Research In Motion 385 1234 527 31% 73% 48 Intel 350 6320 3268 6% 53 Hewlett-Packard 324 5836 2410 13% 54 Alcatel Lucent 310 3853 1654 58 Sony Ericsson 278 1232 1181 23% 24% 75 Cisco Technology 183 2336 1642 90 Oracle 140 942 127 110% 95 ST Microelectronics 131 2548 250 52% 97 Interdigital Technology 128 1081 1124 Qualcomm, Ericsson, Research in Motion and Sony Ericsson are filing good % of applications as compared to their US applications

7 Rapid Increase in Patents Related to Computer/Electronics
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 in Computer/Electronics Source: Annual Report , Indian Patent Office

8 Top 20 Filers at the Indian Patent Office in 2008
New Rank (2008) Old Rank (2007) Change Applicant Count Published Appls (2007) Published Appls (2008) 1 Qualcomm 982 637 2 3 CSIR 796 527 6 Samsung 544 392 4 -2 Philips Electronics 880 347 5 Thomson Licensing 621 334 12 General Electric 385 317 7 -3 Ericsson 666 301 8 Nokia 518 272 9 Bayer 535 260 10 35 25 General Motors 206 245 11 13 Siemens 380 230 16 Novartis 294 226 -4 Microsoft 432 207 14 Procter & Gamble 327 198 15 Astrazeneca 391 180 20 BASF 278 151 17 120 103 WOCKHARDT 44 18 45 27 Tata Group 150 144 19 33 Ranbaxy Laboratories 218 135 22 Motorola 271 133

9 Top 10 Domestic Filers Among these 10 companies, 4 are pharmaceutical companies and 2 research institutes. Rank Companies IPO Apps US Apps PCT Apps EPO Apps Revenues (2005–08) (in USD million) 2 CSIR 2050 388 461 297 NA 31 Ranbaxy Laboratories 455 117 531 240 3707 45 Dr Reddy's Laboratories 369 40 165 62 3287 47 Tata Group (Tata Motors, Tata Steel, Tata Tea, TCS) 355 7 35 16 56541 56 Indian Institute Of Technology 288 21 32 6 59 Bharat Heavy Electricals 276 4 3 12683 66 Cadila Healthcare 219 20 132 1276 73 Orchid Chemicals 190 25 91 773 74 Larsen & Toubro 188 5 17129 76 Steel Authority Of India 179 30122 Source: Evalueserve Research

10 Comparison between Domestic /Global Players
Company Published Patents in US ( ) Pfizer 1213 AstraZeneca 1092 Merck 1074 GlaxoSmithkline 855 Abbott 790 Company Published Patents in India ( ) Ranbaxy Laboratories 455 Dr Reddy's Laboratories 369 Cadila Healthcare 219 Orchid Chemicals & Pharmaceuticals 190 Cipla 165

11 Top Domestic Pharmaceutical Companies
The ratio of revenue to the number of patent publications at the IPO seems reasonable. Whereas Dr. Reddy’s Laboratories files a large proportion of its patent applications at the IPO, Ranbaxy Labs files the majority of its applications in jurisdictions outside India. 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 455 117 531 240 3707 8.1 2.8 45 Dr Reddy's Laboratories 369 40 165 62 3287 8.9 5.2 66 Cadila Healthcare 219 20 132 1276 5.8 3.1 73 Orchid Chemicals & Pharmaceuticals 190 25 91 773 4.1 2.4 83 Cipla 30 100 44 1845 11.2 5.4 93 Sun Pharmaceutical Industries 133 22 89 17 1816 13.7 7.0 Source: Evalueserve Research

12 Presentation Plan Patent Statistics
How patent research in India can help your organization? Challenges for searching patents in India Case Study Best Practices for patent research in India 12

13 India Allows Pre-grant and Post-grant Opposition
Stage Type of Dispute Platform Patent Prosecution Pre Grant Opposition Patent Office Post Grant Opposition Patent Office Challenging Decisions of Patent Office Appellate Board Challenging decisions of Appellate Board Supreme Court Patent Revocation Patent Invalidation Appellate Board High Court Patent Enforcement Patent Infringement Courts 13

14 Pre Grant and Post Grant Opposition Statistics
Pre-grant Opposition Year Oppositions received Oppositions disposed (incl pervious years) 155 100 6 4 Hints at large no. of oppositions by domestic pharma companies to mailbox applications Post-grant Opposition Year Oppositions received Oppositions disposed (incl pervious years) 44 19 27

15 Pre Grant and Post Grant Opposition
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 - Wrongful obtaining of invention by the applicant - Invention as claimed, has been published before the priority date of application - anywhere in the world - The claimed invention has been claimed in an earlier application filed in India (which has earlier priority date but which may be published after applicant’s priority date) - The invention was publicly known/used in India before priority date of claimed invention - The invention is obvious and involves no inventive step in light of already published patents/non patents documents - The invention is not patentable under the Indian patent Act (Section 3 of Indian Patent Act which includes software and business methods claims) - The invention is not sufficiently described - The applicant has failed to disclose to the Controller, required information of the corresponding applications filed in other countries

16 Patent Prosecution: Timeline for Pre-Grant and Post-Grant Opposition
Patent Application 18 months or later Publication Representation (After publication, till grant) Examination Representation Rejection Pre-grant Accepted Representation overruled Grant Publication Of Grant Notice of opposition 12 months Post-grant Opposition proceedings Opposition Overruled Opposition Successful Patent valid Patent Revoked

17 Case Study: Roche vs. Cipla
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 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 The injunction suit was overruled by the Court The grounds for denying the injunction to Roche was mainly ‘public interest’ as the Cipla was selling the alleged drug in one third prince of Roche an appeal to the Appellate Bench of Delhi High Court, the Division Bench prevail the judgment of the trial court on the ground of lack of prima facie case and imposed a hefty fine of INR 5 lacs The Courts found that Roche had concealed some important information regarding an earlier application which was rejected by the IPO Cipla’s contention was that had Roche disclosed about the refusal of earlier application the present application would have not been granted Roche may appeal in the Supreme Court 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

18 Presentation Plan Patent Statistics
How patent research in India can help your organizations Challenges for searching patents in India Case Study Best Practices for patent research in India 18

19 Searching Indian Patents – A BIG Challenge
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

20 Limitations of Online Database in India (1 of 2)
No option of searching in claims or full specifications No advanced search: Can not form complex queries

21 Limitations of Online Database in India (2 of 2)
Claims, drawings and full specifications are not available online No way of checking legal status online Details available online

22 Points to Remember while Conducting Indian Patent Search
None of the databases provide full text search of indian patents/patent application None of the databases provide legal status of the Indian patent/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 uploaded 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 recommended

23 Indian Patent Search 1912-Onwards 1963-Dec, 2004 1995-Dec, 2004
Jan 2005-Till date Jan 2006-Till date Options available Government of India, Controller General of Patents Design and Trade Marks, 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 Weblink (1-80,000), Weblink (80001 to 1,53,697) Coverage: Search options available: Patent Number Weblink (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 Weblink (New Records) Limitations: Only Granted patents are available Their seems to be a gap from (Not confirmed) 23

24 Gazette of India (Part III, Section 2)
Indian Patent Search 1912-Onwards 1963-Dec, 2004 1995-Dec, 2004 Jan 2005-Till date Jan 2006-Till date Options available Gazette of India (Part III, Section 2) 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 – 24

25 Indian Patent Search 1912-Onwards 1963-Dec, 2004 1995-Dec, 2004
Jan 2005-Till date Jan 2006-Till date Options available Ekaswa A 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 25

26 Indian Patent Office 18 Months Publication
Indian Patent Search 1912-Onwards 1963-Dec, 2004 1995-Dec, 2004 Jan 2005-Till date Jan 2006-Till date Options available Indian Patent Office 18 Months Publication 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 26

27 Indian Patent Search 1912-Onwards 1963-Dec, 2004 1995-Dec, 2004
Jan 2005-Till date Jan 2006-Till date Options available BigPatents India 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 27

28 Indian Patent Search Commercial Databases STN 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) 28

29 Presentation Plan Patent Statistics
How patent research in India can help your organization? Challenges for searching patents in India Case Study Best Practices for patent research in India 29

30 Sample Case Study (1/6) Project Objective Research Methodology
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

31 Sample Case Study (2/6) 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 TMP searchers.com 2006 onwards

32 Sample Case Study (3/6) 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.

33 Sample Case Study (4/6) 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

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

35 Sample Case Study (6/6) 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.

36 Presentation Plan Patent Statistics
How patent research in India can help your organization? Challenges for searching patents in India Case Study Best Practices for patent research in India 36

37 Strategy for India : Identifying Barriers
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 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 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 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 37

38 Performing FTO Study in India
Stage Process Steps Sources Output 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 List of Relevant patents that are valid (not abandoned or expired) Time and Cost

39 Thank you


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