Patent Infringement Suit by UCB

A patent gives you the right to stop others from selling, offering for sale of your patented invention. It is your own intellectual property. By holding a patent, you bar another person and the whole world from using your patent. But Patent Infringement occurs in every sector of the economy. Patent Infringement means the allegation by the patent owner that another product in the market is infringing his patent. There are two types of infringement in US direct and indirect infringement.  If the infringer uses each element of the patent holders claim it is known as direct infringement. The accused infringer does not use each element of the patent holder’s claim but the product performs the same function as that of patent holder’s then it is known as indirect infringement.

Biopharmaceutical drug developer UCB along with other companies has sued more than 15 drug makers in US including India’s Ranbaxy, Aurobindo, Zydus, Sun Pharma, Glenmark alleging infringement of its epilepsy drug Vimpat (lacosamide). The suit was filed in the US District Court. UCB is planning to stop other companies from entering the market before 2022 when their patent expires. The drug manufactured by UCB is used as an adjunctive therapy in the treatment of partial onset of seizures in people with epilepsy. The patent which was granted on 2004 has US sales of $338 million.

The global market size for the epilepsy drug is estimated to be more than 2 billion with around more than 5 million people suffering from it.

Provisional and Non Provisional Patent Application

A provisional patent application is filed for establishing a filing date and expires after one year of its filing. A non provisional patent application establishes the filing date of the patent application and begins the examination process. The patent application will be examined by USPTO if it is a US application. The non provisional application is known as the utility patent application. Provisional application establishes a filing date and allows claiming the original application when you later file a non provisional patent application. A provisional patent application is inexpensive as compared to a non provisional patent application. The filing of provisional application was introduced in 1995 which offers inventors to file a lost cost utility application.

The major advantages of filing a Provisional Patent Application are:
•    For getting an earlier priority date
•    It is a simplified form of application as compared to non-provisional one.
•   The 12-month time period helps him in deciding whether he want to patent it or commercialize the   invention.
•    Similarly the 12-month time allows an inventor to further work on his invention.
•    Allows the inventor to use his invention with “Patent Pending” applied on it.

History of Patents

The patent system is of 400 years old. A patent is a form of intellectual property rights granted by the government that confers upon the patentee the sole right to make, use, and sell his invention for a certain period of time. The earliest form of patents existed in 500 BC in Sybaris, Greece were monopolies were granted to new dishes for a year period. The first time a patent was granted was for a method of transporting marble more cheaply through a paddleboat way back in 1421. Later on a patent was granted to John of Utynam for his contribution to stained glass. It is believed that the first system of granting patent to invention started in Italy. The word patent is derived from the Latin word 'litterae patentes’. The patent system of every country is formulated in such a way so as to benefit the public. In United States the Congress passed several patent acts one in 1790, 1793 as well as in 1836. Thomas Jefferson was greatly influenced the 1790 US Patent Act. The United States Patent Act was officially announced in 1836. The US introduced the examination process which was very different from the UK registration process. The history of Indianpatent system can be traced to nineteenth century AD where the first patent was granted to a pankha. The most number of patent is owned by a Japanese inventor Shunpei Yamazaki aged 65 mostly in the filed of LCD ‘s memory chips. He holds  1811 US Patents.

How to patent an invention

1) What is an invention?

An invention means a new product or process involving an inventive step and capable of industrial application.

2) What is a patent?

The Indian Patents Act 1970 defines a patent as a grant or right to exclude others from making, using or selling one's invention and includes the right to license others to make, use or sell it.

3) What cannot be considered as inventions?

Laws of nature

Physical phenomena

Abstract ideas

Literary, dramatic, musical, and artistic works (these can be Copyright protected.

Inventions which are:

a) Not useful (such as perpetual motion machines); or

b) Offensive to public morality

4) What are the stages of a successful invention?

a) Identifying a problem that needs to be solved.

b) Inventing a solution for that problem, which should work.

c) Developing a prototype or being able to demonstrate the invention to show its working.

d) Filing a patent application to protect the invention so that it can be disclosed to other people.

e) Arranging the manufacturing and marketing (production) of the invention either through one's own company or through licensing.

f) Each stage requires its own particular expertise and resources. It is essential that the early stages are satisfactorily completed before moving on.

5) What is the process of patenting an invention?

The process of patenting an invention-

Applying for a patent-

1. File a preliminary application

2. Recording the priority date (The date on which the application is recorded)

Noting the Patent specifications-

1. A patent specification is written in a certain format, which may not be immediately obvious to the casual reader.

2. The specification should contain a preamble, which describes the background to the invention.

3. Then you will have to write a statement of invention, which is a legal statement of the scope of the monopoly sought.

4. After this you will have to give a detailed description of the invention which may include drawings and examples.

5. The last step in patent specification is specifying the claims where the patent maker ‘claims’ a territory of technology within which other people cannot stray without infringing the patent.

Eg: Introducing a new type of flavor has a very broad scope where as improving a flavor has comparatively lesser scope in relation to patenting.

Examination of the patent by the examiners

     The examiners look through the previous patent specifications and other literature in  order to ascertain the nobility of the invention.

They also see to the ‘inventiveness’ in comparison to the prior art.

The examiner will then correspond with the patent agent if he is satisfied that the claims are permit able.

Prosecution : the stage of patenting the procedure

The specification filed by the applicant is usually published after 18 months, after the date of priority.

The Patent Office will also publish a list of previous patents, which were found to be of relevance in the patent search so that even if an inventor has not disclosed the invention in any way up to this point, the patent system itself will make a disclosure and destroy its novelty at this time.

Documents required for filing a patent form

1. Application Form (form 1)

2. Specification (Provisional/Complete) [Form 2]

3. Drawings (if any)

4. Undertaking under section 8 (form 3)

5. Power of Authority (if the patent application is filed through a patent attorney) 

Patenting of traditional knowledge

Traditional knowledge is the knowledge that is continually developed, acquired, used, practiced, transmitted and sustained by the communities/individuals through generations.

In India traditional knowledge including the existing oral knowledge cannot be protected under the provisions of the existing IPR laws/acts. Until and unless there is a substantial improvement in the existing traditional knowledge and if it can fulfill the requirements of the definition of the invention, then the patent application can be filed. Example of such traditional knowledge is Ayurveda medicine.

Article prepared by Anisha Susan Baby