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UCB Pharma S.A. v. Controller General, Draft Amendment Rules, 2021 and Drafting a Preamble

The LexCampus Weekly Newsletter No. 8

24th February, 2021

 

This week we look at a judgement by the IPAB, Delhi dealing with divisional applications under Section 16 and when such an application may be filed by an interested patent applicant. This week, our blogpost discusses the amendments proposed to the Patent Rules, 2003. The Draft was published by the DPIIT on 9th February, 2021 and suggestions have been asked for. We offer a few tips on drafting a preamble and conclude with an FAQ by Dr. Feroz Ali.

Patent Case Summary

UCB Pharma S.A. v. Controller General of Patents and Designs & Anr.

OA/3/2015/PT/MUM 

An application for a patent was made with 84 claims which was later changed to 67 in response to objections raised in the First Examination Report. However, the Controller was not satisfied and ordered for further amendments. Following this, the applicant UCB decided to file a divisional application under Section 16 of the Act. However, the Controller eventually dismissed the divisional application and the parent application for lack of inventive step.  The crux of the issue before the IPAB was whether the divisional application was maintainable as under Section 16 and whether the Controller was right in ruling that the claims lacked an inventive step. Read more

From our patent blog

Draft Patent (Amendment) Rules, 2021

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry published the draft for the Patent (Amendment) Rules, 2021 on 9th February, 2021. The State has asked for objections and feedback to be sent in by all those concerned and has set a time limit of thirty days for the same. Major amendments were made to the Patent Rules, 2003 in November 2020 and our previous newsletter discussed the same. While those amendments were regarding small entities, this amendment introduces “eligible educational institutions” as a separate category of applicants. This article explains the amendments proposed in this draft regarding eligible educational institutions and patent applications made by them. Read more

Drafting a patent – preamble

  • If the preamble provides antecedents to elements laid out in the  body of claims, then their impact on the scope of the claims is significant. They narrow down the scope of the claim while scrutinising the accused device for infringement, making it more difficult to prove infringement.
  • Mere recitation of structural claim does not integrate the preamble into body of claims, even if used in the claim recital. “Merely stating the intended use of a claim device” does not amount to a limitation by the preamble

Patent Q & A

QUESTION: What if we fail to file a divisional and the parent application is granted?

ANSWER: See if nobody notes it, you just have one invention, you can still enforce it, okay? It only becomes a problem if somebody notes it and you have the time to do it. So there will be many cases where two inventions were there in an application, it got granted, nothing can be done. I mean, nothing; you can enforce it, that is absolutely fine; because it is not a ground for opposition. It is not a ground for revocation. So your patent stands, you can enforce it. Take a practical view, divisional is just an office management process. Rather than having two invention in one application, it now has two applications, it is just an office management process. It doesn’t affect the enforcement, your patent can still be enforced. You cannot say that there is a provision which says this. Just because there are more than one invention in an application, it doesn’t mean that the invention is invalid or unenforceable. Watch the video explanation here.

 

That’s all folks for this week.

Team LexCampus

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