When planning to file a patent in India or any other country, one might wonder why patent examiners consider inventions and publications from other countries. Shouldn’t the focus be solely on what has been invented locally?
The answer is, ‘Not necessarily!’ Let us now understand, why global prior art matters when filing for a patent and what is the role of the prior art from around the world in the patent process.
A. GLOBAL NOVELTY REQUIREMENT
Novelty is a fundamental requirement for a patent to be granted. To be considered novel, an invention must be new and not disclosed anywhere in the world before the filing date of the patent application. This means that if the invention has been disclosed in any prior art, whether in India or any other country, it cannot be patented. An invention must be something the world hasn’t seen before, and when they say “world,” they mean it! If an idea or a similar one has already been disclosed in a research paper from Germany, a product launch in Japan, or a patent application in the U.S., then the idea doesn’t qualify as new. Because for an invention to be considered as patentable, it has to be truly new, globally! So, a worldwide prior art search helps ensure that the invention isn’t just new in our country, but genuinely novel on a global scale.
When patent examiners look at prior art from other countries, they perform their due diligence to ensure the invention is novel. It is not enough for the invention to be new only in India, but it needs to stand out globally. This global approach ensures that patents granted in India aren’t challenged later because of existence of any old article or research paper from another country that describes the same invention.
B. HARMONIZATION OF PATENT LAWS
Many countries, including India, are signatories to international treaties and agreements like the Patent Cooperation Treaty (PCT) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). These agreements aim to harmonize patent laws across countries of the world, ensuring that patents are examined based on global standards. Considering prior art from other countries helps maintain consistency with international patent practices. Thanks to the harmonized patent rules, whether we are filing for a patent protection in India, Europe, or the U.S., the rules for examining patents, like identifying the prior arts are pretty similar.
C. AVOIDING DOUBLE PATENTING
If prior art from other countries were not considered, it could lead to a situation where the same invention is patented in multiple jurisdictions by different inventors, leading to double patenting issues. Imagine, a patent application has been filed for an invention in India, and at the same time, a person in France files for patent protection for the exact same invention. Without determining international prior art, both patents might get approved, and the true first inventor might not enjoy the fruits of their hard work. By considering global prior art, the patent office ensures that an invention is truly novel on a global scale, and helps avoid the issue of double-patenting, ensuring there aren’t multiple patents granted for the same invention in different places.
D. COMPREHENSIVE EXAMINATION
The purpose of including prior art from other countries allows for a more comprehensive examination of the patent application. This ensures that the invention is not just new in the local context but also globally, and helps prevent the granting of patents for inventions that might already be known or used elsewhere in the world.
E. LEGAL AND COMMERCIAL IMPLICATIONS
In order to keep the patentable subject matter of an inventor safe and strong, considering the international prior arts is highly critical. If the international prior arts are not considered during the application stage, the competitors might use it later to challenge our patent’s validity, leading to expensive legal disputes or, even revoking the patent. If a patent is granted without considering international prior art, it could lead to legal challenges or disputes later on. Considering global prior art during the examination process and by addressing the potential issues upfront, we can help mitigate these risks and strengthens the enforceability of the patent.
By considering prior art from other countries, the Indian patent office ensures that the patents granted are robust, globally competitive, and less likely to be invalidated due to the existence of prior art elsewhere.
In order to understand the perspective of the patent examiners in this context, let us understand some of the case laws in India that address the importance of considering prior art from other countries in patent examination.
1. Bristol-Myers Squibb Company vs. Controller General of Patents (2015)
In this case, Bristol-Myers Squibb, a pharmaceutical company, filed a patent application in India for an anti-cancer drug. During the examination process, the Indian Patent Office considered prior art from various international sources. The patent application was eventually rejected on the grounds that the invention was not novel, as similar prior art existed in other countries.
Court’s Decision: The Intellectual Property Appellate Board (IPAB) upheld the decision of the Indian Patent Office, affirming that the prior art from other countries was rightly considered. The court emphasized that for an invention to be patented in India, it must be novel and non-obvious not just in India but globally. Therefore, considering prior art from other jurisdictions is crucial to ensuring that patents are granted only for truly novel inventions.
2. F. Hoffmann-La Roche Ltd. vs. Cipla Ltd. (2008)
This case involved a patent dispute over the drug Erlotinib. Cipla, an Indian pharmaceutical company, challenged the validity of Roche’s patent, arguing that the drug was not novel as similar inventions had already been disclosed in prior art outside India.
Court’s Decision: “In 2015, the Hon’ble Division Bench of Delhi High Court held that Cipla’s product ‘Erlocip’, which is professed to be a polymorph B type of the compound ‘Erlotinib’, infringes Roche’ patent and confirmed its legitimacy too. It put away the Single Adjudicator choice excusing the suit for injunction recorded by Roche. The bench additionally expressed that this compound might exist in different polymorphic designs; nonetheless, any such designs will be subsumed inside this patent. Hence, ‘Erlocip’ (Polymorph B) by Cipla will encroach this patent. The judgment set out a few guidelines and steps that ought to be continued in each encroachment of patent suit.
The Delhi High Court recognized the importance of global prior art in determining the novelty of an invention. The court considered prior art from multiple countries and eventually ruled that Roche’s patent was valid, as the prior art cited by Cipla did not sufficiently prove a lack of novelty.
3. Novartis AG vs. Union of India (2013)
In this case, Novartis applied for a patent on the beta crystalline form of the drug Imatinib Mesylate, but the Indian Patent Office rejected the application based on prior art from other jurisdictions.
Court’s Decision: The Supreme Court case hinged on the interpretation of section 3(d), and also emphasized that the invention lacked an inventive step, and was obvious in light of prior art, including those from other countries. The Supreme Court decided that the substance that Novartis sought to patent was indeed a modification of a known drug (the raw form of imatinib, which was publicly disclosed in the 1993 patent application and in scientific articles), that Novartis did not present evidence of a difference in therapeutic efficacy between the final form of Gleevec and the raw form of imatinib, and that therefore the patent application was properly rejected by the patent office and lower courts. This case reaffirmed the importance of considering global prior art in patent examination.
CONCLUSION
Considering the global prior art is not a mere formality, but a critical step in ensuring that the invention is both credible and competitive. This practice ensures that the invention can withstand international scrutiny, avoid potential conflicts, and establish a solid foundation for the invention. This is highly essential for guaranteeing that the invention is robust and is recognized not only in India, but also on a global scale.
The above cases demonstrate that the Indian courts and patent office consistently consider prior art from other countries to ensure that the patents granted are truly novel and non-obvious on a global scale. This practice is in line with international standards and helps maintain the integrity of the patent system in India.
As India continues to evolve as a hub of innovation, the role of global prior art in patent law will remain crucial in balancing the interests of inventors, businesses, and the public, ensuring that the patent system serves its purpose of promoting genuine innovation.
Author: Megha Nadiger
Please contact us at info@origiin.com to know more about our services (Patent, Trademark, Copyright, Contract, IP Licensing, M&A of companies)
Subscribe to YouTube Channel HERE
Join LinkedIn Group: Innovation & IPR
WhatsApp: +91 74838 06607
