post Friday July 20, 2012
At an International IP forum in China, Indian lawyer Essenese Obhan of Obhan & Associates warned Indian patent owners, who are litigating their rights, to try to obtain interim relief. If they don’t, he said, they face protracted and expensive patent battles.
The Indian lawyer explained that India’s patent law has one important feature under section 13(4) of the Act, there is no presumption of patent validity even if there has been a substantive examination. Given this feature, patent applicants must prepare carefully in the case of pre-grant or post-grant opposition. “In litigation, you will need a strong procedural case, as well as strong technical support for your patent”, he said.
To obtain the interim relief such as an injunction against the opposing party, Obhan said, the rights holder must establish a prima facie case as to the patent’s validity.
One important pre-grant requirement is submitting information about parallel applications in other countries, Obhan said. The statement must include a list of the countries in which the patent has been filed, date of application, application number, status, and the publication and grant dates. In addition, the applicant may be required to provide information about the application status in other countries, including if there were objections to the novelty and patentability of the invention.
The submission of this information must be done within six months of filing and must be periodically updated until the patent is granted.
Obhan also said procedural correctness is extremely important in building a post-grant case for prima facie validity. Companies often find trouble with the requirement “statement of working”, which must be filed by March 31 of each year. The filing must state whether the patent is being worked, and if so, details such as the “quantum and value” of the product, Obhan explained, as well as whether it is manufactured in India and whether it is being imported elsewhere. The statement must also give information such as whether licenses have been granted.
If the patent is not being worked, Obhan said, the applicant must explain why that is, and what steps are being taken to commercialise the innovation. If this statement is not implied, it means that the patent is “non- working” and also creates grounds to grant a compulsory licence, said Obhan. It may also lead to a fine of up to INR 1 million ($17,551.83)
Despite the dangers of not filing, Obhan warned rights holders who are tempted to submit false information could result in a fine of up to NRI 1 million as well as six months in prison.
Source: Managing IP: China - International IP forum (June 20-21, 2012 Beijing)
Image Source: Managing IP
