Patent controller's draft 'Guidelines for Examination of Patent Applications' evokes good response

The Indian patent controller's draft 'Guidelines for Examination of Patent Applications in the field of Pharmaceuticals', issued in April this year, has evoked tremendous response both within and outside the country as a large number of national and international pharma associations, experts and patent law firms have submitted their suggestions and comments to the patent office. 

After examining these suggestions and comments, the Indian patent controller will incorporate the relevant suggestions before finally issuing the final document on 'Guidelines for Examination of Patent Applications in the field of Pharmaceuticals'. 

Earlier in April this year, the Indian Controller General of Patents, Designs and Trade Marks had issued the draft 'Guidelines for Examination of Patent Applications in the field of Pharmaceuticals' to help the Examiners and the Controllers of the Patent Office in achieving consistently uniform standards of patent examination and grant of patents.

These guidelines are supplemental to the practices and procedures followed by the Patent Office as published in the ‘Manual of Patent Office Practice and Procedure’, “Guidelines For Examination of Biotechnology Applications” and the “Guidelines For Processing of Patent Applications Relating to Traditional Knowledge and Biological Material”.

The major pharmaceutical associations which had submitted their comments included Pharmaceutical Research and Manufacturers of America (PhRMA); European Commission, Directorate-General for Trade; European Federation of Pharmaceutical Industries and Associations (EFPIA); International Federation of Pharmaceutical Manufacturers and Associations (IFPMA); Japan Intellectual Property Association (JIPA); Japan Pharmaceutical Manufacturers Association (JPMA); Assocham; Biotechnology Industry Organization (BIO);  Organisation of Pharmaceutical Producers of India (OPPI); FICPI; US-India Business Council (USIBC); etc. 


http://www.pharmabiz.com/NewsDetails.aspx?aid=82431&sid=1

United States: Whither Bilateral Patent Prosecution Bars?

Patent practitioners involved in both litigation and prosecution might take comfort in the growing trend away from bilateral patent prosecution bars incorporated into protective orders. Defense attorneys have long contended, especially in cases brought by Non-Practicing Entities (NPEs), that any bar against patent prosecution should apply unilaterally to the NPE's counsel. NPEs generally do not develop products, and are therefore unlikely to maintain confidential information about technology that could be inadvertently used by defendant's counsel during prosecution. Courts are now beginning to accept this argument, and patent litigators should consider fighting attempts to impose bilateral prosecution bars where they might otherwise not have.

A recent order in the Eastern District of Texas explains numerous reasons against the imposition of a bilateral patent prosecution bar. Smartflash LLC v. Apple Inc., No. 6:13-cv-447 (E.D. Tex. May 12, 2014). In Smartflash, the magistrate judge found that a unilateral prosecution bar was appropriate, even though the plaintiff argued that a bilateral one was needed because plaintiff's confidential information could contain plans for future products. The magistrate judge explained that the possibility of future product plans potentially being contained in the confidential information is not sufficient to impose a bar on defendants' counsel. The magistrate judge went on to explain that the parties in the case are not similarly situated, and that since the plaintiff does not currently sell any products, there is no corresponding risk of inadvertent disclosure and misuse, limiting the prosecution bar to plaintiff's attorneys who review defendants' highly sensitive information.

A similar result was recently ordered in the District of Delaware, where Judge Stark rejected a bilateral prosecution bar in favor of a unilateral prosecution bar against counsel for plaintiff. DN Lookup Technologies v. Charter Communications, Inc., No. 11-1177-LPS (D. Del. June 11, 2012). In DN Lookup, Judge Stark described how he was not satisfied that the plaintiff was going to produce highly confidential information of a type that would justify making the prosecution bar bilateral. The plaintiff pointed to licensing and strategy documents that the plaintiff was going to produce, but in the court's view, those materials would not be the kind of information that could be of use or misuse by defendants in a presentation or application to the USPTO. The court was also not persuaded by the plaintiff's suggestion that it had some type of source code sought by defendants, or that it would somehow be inequitable to have a unilateral bar. Judge Stark also explained that the parties are not similarly situated, because the plaintiff is a non-practicing entity whereas the defendants make products.

http://www.mondaq.com/unitedstates/x/318622/Patent/Whither+Bilateral+Patent+Prosecution+Bars