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

© 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and Confidential

Ashish Nawani

Tel +1 610 458 [email protected]

Patent Research in IndiaChallenges and Best Practices

© 2009 Evalueserve, Ltd. All Rights Reserved - Privileged and ConfidentialSlide 2

India – Huge marketIndia – Huge market

• World’s second most populated country (1.15 billion people – 17% of world population)

• Economy growing @ 6.5% per annum

• IPR is becoming serious business in India

Rapid growth in patent filings (21% annual growth in 2006-07)

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

• World’s second most populated country (1.15 billion people – 17% of world population)

• Economy growing @ 6.5% per annum

• IPR is becoming serious business in India

Rapid growth in patent filings (21% annual growth in 2006-07)

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: www.financialexpress.com; http://www.technologytransfertactics.com/content/wp-content/uploads/2009/07/key-players-in-pharmaceutical-contract-manufacturing-brochure.pdf


Challenges for searching patents in IndiaChallenges for searching patents in India

Case StudyCase Study

Best Practices for patent research in IndiaBest Practices for patent research in India

Patent StatisticsPatent Statistics

How patent research in India can help your organization?How patent research in India can help your organization?

Presentation Plan


Source: Annual Reports of the IPO

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 2007-08

– 5% annual increase in 2008-09 (impact of global economic recession)

• 20% annual growth in granted patents in 2008-09

• 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 2007-08

– 5% annual increase in 2008-09 (impact of global economic recession)

• 20% annual growth in granted patents in 2008-09

• 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


Source: Evalueserve Research

• Evalueserve has analyzed 112,515 patent applications published by the IPO from 2005-2008 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 2005-2008 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 IPOTop Ten Filers at the IPO

Top Filers at the IPO

Rank AssigneeCount

(2005-2008)

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


Top Filers in IT/Telecom/Electronics domain (2005-08)

(2005-08) Applicant Count of Published appls (2005-08)

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 8% 7%

24 Sony 580 11472 2617 5% 22%

26 Motorola 537 3533 4999 15% 11%

29 LG Electronics 504 6754 3139 7% 16%

32 IBM 452 17403 2846 3% 16%

39 Research In Motion 385 1234 527 31% 73%

48 Intel 350 6320 3268 6% 11%

53 Hewlett-Packard 324 5836 2410 6% 13%

54 Alcatel Lucent 310 3853 1654 8% 19%

58 Sony Ericsson 278 1232 1181 23% 24%

75 Cisco Technology 183 2336 1642 8% 11%

90 Oracle 140 942 127 15% 110%

95 ST Microelectronics 131 2548 250 5% 52%

97 Interdigital Technology 128 1081 1124 12% 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


Patent Applications

• 66% increase in the filings of patent applications in the last 2 years

• 20% of total patent applications filed in 2006-07 were in the domain of computer electronics

Granted Patents

• 74% annual increase in granted patents in Computer/Electronics field in 2006-07

Patent Applications

• 66% increase in the filings of patent applications in the last 2 years

• 20% of total patent applications filed in 2006-07 were in the domain of computer electronics

Granted Patents

• 74% annual increase in granted patents in Computer/Electronics field in 2006-07

Rapid Increase in Patents Related to Computer/Electronics

Patent Applications in Computer/Electronics

Source: Annual Report 2006-07, Indian Patent Office


Top 20 Filers at the Indian Patent Office in 2008

New Rank(2008)

Old Rank (2007)

Change ApplicantCount

Published Appls (2007)

Count Published Appls

(2008)1 1 0 Qualcomm 982 637

2 3 1 CSIR 796 527

3 6 3 Samsung 544 392

4 2 -2 Philips Electronics 880 347

5 5 0 Thomson Licensing 621 334

6 12 6 General Electric 385 317

7 4 -3 Ericsson 666 301

8 8 0 Nokia 518 272

9 7 -2 Bayer 535 260

10 35 25 General Motors 206 245

11 13 2 Siemens 380 230

12 16 4 Novartis 294 226

13 9 -4 Microsoft 432 207

14 14 0 Procter & Gamble 327 198

15 11 -4 Astrazeneca 391 180

16 20 4 BASF 278 151

17 120 103 WOCKHARDT 44 151

18 45 27 Tata Group 150 144

19 33 14 Ranbaxy Laboratories 218 135

20 22 2 Motorola 271 133


Top 10 Domestic Filers

Among these 10 companies, 4 are pharmaceutical companies and 2 research institutes.Among these 10 companies, 4 are pharmaceutical companies and 2 research institutes.

Rank Companies IPO Apps US Apps PCT Apps EPO AppsRevenues (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

47Tata Group (Tata Motors, Tata Steel, Tata Tea, TCS)

355 7 35 16 56541

56Indian Institute Of Technology

288 21 32 6 NA

59Bharat Heavy Electricals

276 4 6 3 12683

66 Cadila Healthcare 219 20 132 45 1276

73 Orchid Chemicals 190 25 91 20 773

74 Larsen & Toubro 188 2 5 0 17129

76 Steel Authority Of India 179 0 0 0 30122



Comparison between Domestic /Global Players

Company

Published Patents in US

(2005-2008)

Pfizer 1213

AstraZeneca 1092

Merck 1074

GlaxoSmithkline 855

Abbott 790

Company

Published Patents in India

(2005-08)

Ranbaxy Laboratories 455

Dr Reddy's Laboratories 369

Cadila Healthcare 219

Orchid Chemicals & Pharmaceuticals

190

Cipla 165


Top Domestic Pharmaceutical Companies

RankIndian 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

31Ranbaxy Laboratories

455 117 531 240 3707 8.1 2.8

45Dr Reddy's Laboratories

369 40 165 62 3287 8.9 5.2

66Cadila Healthcare

219 20 132 45 1276 5.8 3.1

73

Orchid Chemicals & Pharmaceuticals

190 25 91 20 773 4.1 2.4

83 Cipla 165 30 100 44 1845 11.2 5.4

93Sun Pharmaceutical Industries

133 22 89 17 1816 13.7 7.0

• 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.

• 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.








Presentation Plan


PlatformType of DisputeStage

Patent EnforcementPatent Enforcement

Pre Grant OppositionPre Grant Opposition

Post Grant OppositionPost Grant Opposition

Challenging Decisions of Patent OfficeChallenging Decisions of Patent Office

Challenging decisions of Appellate BoardChallenging decisions of Appellate Board

Patent OfficePatent Office

Patent OfficePatent Office

Appellate BoardAppellate Board

Supreme CourtSupreme Court

Patent InvalidationPatent Invalidation

Appellate BoardAppellate Board

High CourtHigh Court

Patent InfringementPatent Infringement CourtsCourts

Patent RevocationPatent Revocation

India Allows Pre-grant and Post-grant Opposition

Patent ProsecutionPatent Prosecution


Pre-grant OppositionPre-grant Opposition

Post-grant OppositionPost-grant Opposition

Year Oppositions receivedOppositions disposed (incl pervious years)

2005-06 155 100

2006-07 6 4

Pre Grant and Post Grant Opposition Statistics

Year Oppositions receivedOppositions disposed (incl pervious years)

2005-06 44 19

2006-07 27 0

Hints at large no. of oppositions by domestic pharma companies to mailbox applications


• 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


Patent Prosecution: Timeline for Pre-Grant and Post-Grant Opposition

PublicationPublication

Patent ApplicationPatent Application

GrantGrant

Representation(After publication, till grant)

Representation(After publication, till grant)

ExaminationExamination RejectionRejection

Notice of oppositionNotice of

opposition

Opposition proceedingsOpposition

proceedings

Patent RevokedPatent RevokedPatent validPatent valid

Opposition Overruled

Opposition Successful

Representation overruled

Accepted

Representation

18 months or later

Publication Of GrantPublication Of Grant

Pre-grant

Post-grant

12 months


• 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 SystemPatent Enforcement System

Supreme CourtSupreme CourtPatent Office (4 branches)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 CourtHigh CourtIP Appellate BoardIP Appellate Board

District CourtDistrict Court






How patent research in India can help your organizationsHow patent research in India can help your organizations

Presentation Plan


• 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


• 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)


• 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


None of the databases provide full text search of indian patents/patent applicationNone of the databases provide full text search of indian patents/patent application

None of the databases provide full text of Indian patent applications None of the databases provide full text of Indian patent applications

Full text is available online only for patents Granted between 1912-1988, rest of the patents are in the process of being uploaded Full text is available online only for patents Granted between 1912-1988, 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 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 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 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 filedLegal 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 recommendedGranted patent search using Website of National Informatics Centre is not recommended

None of the databases provide legal status of the Indian patent/patent application None of the databases provide legal status of the Indian patent/patent application

Indian Patent Search

Points to Remember while Conducting Indian Patent SearchPoints to Remember while Conducting Indian Patent Search


Options availableOptions available

Government of India, Controller General of Patents Design and Trade Marks, Government of India, Controller General of Patents Design and Trade Marks,


1912-Onwards1912-Onwards 1963-Dec, 20041963-Dec, 2004 1995-Dec, 20041995-Dec, 2004 Jan 2005-Till dateJan 2005-Till date Jan 2006-Till dateJan 2006-Till date

Availability: Online

Coverage: 1912- 1981

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)


Search options available: Patent Number


Weblink (1,53,698 to 1,69,500)

Coverage: 1995- 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 1988-1995 (Not confirmed)



Search options available: Title of Invention, Patent Number, Date of Filing, Application Number, Applicant Name


Weblink (1-80,000), Weblink (80001 to 1,53,697)


Search options available: Patent Number


Weblink (1,53,698 to 1,69,500)

Coverage: 1995- 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 1988-1995 (Not confirmed)




Gazette of India (Part III, Section 2) Gazette of India (Part III, Section 2)


Availability: Available as hard copy in any Indian patent office

Coverage: 1963- 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


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


Patent Office, DelhiBoudhik Sampada BhawanPlot No.32, Sector-14, DwarkaNew Delhi – 110 075.

Patent Office, MumbaiBoudhik Sampada BhawanS.M. Road, Antop HillMumbai – 400 037.

Patent Office, ChennaiIntellectual Property BuildingG.S.T. Road, GuindyChennai – 600 032.

Patent Office, KolkataBoudhik Sampada BhawanCP-2, Sector V, Salt Lake CityKolkata – 700 091.




Ekaswa AEkaswa A




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




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





Indian Patent Office 18 Months Publication Indian Patent Office 18 Months Publication



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




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




BigPatents India BigPatents India





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




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



STNSTN

Commercial DatabasesCommercial Databases


Coverage: 1907- 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


Coverage: 1907- 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 InnovationThomson Innovation


DWPI Coverage: 1963- 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)


DWPI Coverage: 1963- 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)







Presentation Plan


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)


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



– TMP searchers.com

• 2006 onwards


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



– BigPatents



– TMP searchers.com

• 2006 onwards




Commercial Databases

• STN Based Search (Coverage: 1946- 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: 1946- 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.



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




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


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.








Presentation Plan


Shortlist Patents Using Research from Variety of SourcesShortlist 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 patentsStudy 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 IPOOrder 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 IPOOrder full text of patents from relevant branch of the IPO






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

• IPO Office List of Relevant patents that are valid (not abandoned or expired)

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