[Commons-Law] "s.3(d) has little effect on patent prosecution": Sampat

[Pranesh Prakash]

Dear all,
Bhaven Sampat of Columbia University recently presented a paper at WIPO,
titled "Institutional Innovation or Institutional Imitation? The Impacts
of TRIPs on Indiaʼs Patent Law and Practice" in which he questions the
radicalness of s.3(d) (subject matter bar on incremental pharma
innovations) which was introduced to limit the harm caused by TRIPS, and
highlights the differences between law (which might be lenient) and
practice (which he finds is not).

The paper: http://goo.gl/rZigz

>From IP Watch:
http://goo.gl/0NFqM
[snip]
The study, titled Institutional Innovation or Institutional Imitation?
The Impacts of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) on India’s Patent Law and Practice [pdf],
examined all patent applications during the transition period allowed
under TRIPS before the implementation of the agreement. India employed
what is known as a “mailbox” option, a transitional provision for
developing countries that did not have previous product patent
protection to hold patent applications from 1995 until their required
implementation of TRIPS on 1 January 2005.

“The laws on the book do not map neatly with laws in practice,” Sampat
said, as it appeared that the Indian patent office lacked resources and
expertise to make the subtle determinations that would determine a
patent falling under the scope of section 3(d).

The study looked at all pharmaceutical patent applications filed in
India during the transition period, with a focus on two international
patent classes commonly used to characterise drugs, and checked the
status of those applications in July 2010 to find out which had been
granted, were pending or had been rejected or withdrawn, Sampat said.

The author then compared the Indian grant rate to the European Patent
Office for similar patent requests. It appears that “rejected
applications at the EPO are much less likely to be granted by the Indian
Patent Office, both because they are more likely to be rejected and to
be pending.”

The study found that “despite much discussion about the novelty and
international uniqueness of India’s patent laws, in practice … the 3(d)
provision has little effect on patent prosecution,” which seems to have
been highlighted by several scholars based on their observation on
implementation of intellectual property rights in practice. In India,
according to the study, “weak intellectual property rights on the books
may be accompanied by strong ones in practice.”

The tailoring of the Indian patent standards to limit patents on
incremental innovations, which “dominate drug patenting in the developed
world,” can be seen as an “institutional innovation”, according to the
study. However, in practice, resource constraints and “other pressures”
may lead to “institutional imitation,” where the IPO would copy
developed-country practices and standards. The “impacts of TRIPS in
India will be determined by the extent to which India sticks to, or
departs from, international patentability standards,” it said.

Empirical analysis presented by the study tends to suggest that “the
pharmaceutical industry … may be overly concerned about 3(d),” and
Indian policymakers not concerned enough “if its patent office is not
enforcing its patent laws.”

According to the study, so-called incremental innovations at the EPO
might be more difficult to obtain than in India, in particular because
of obviousness or inventive step reasons that serve that purpose.
Developing countries aiming at limiting patents on incremental
innovations might consider implementing high inventive step
requirements, Sampat said, and “might be a less politically inflammatory
way for India” to achieve the same goals as 3(d) intends.
[/snip]

Cheers,
Pranesh

-- 
Pranesh Prakash
Programme Manager
Centre for Internet and Society
W: http://cis-india.org | T: +91 80 40926283