Title: Glenmark Pharmaceuticals v Les Laboratories Servier
Venue: Industrial Property Tribunal, Nairobi
Case ID: IPT No. 58 of 2009
Tribunal Panelists: Moses Kurgat, Maria M. Mutua, Raymond Chelulei
Date of Decision: 16th June, 2011
Applicant(s): Glenmark Pharmaceuticals Limited
Respondent(s): Les Laboratories Servier
Keywords: Prior art, patent infringement
The Applicant was the proprietor of a registered patent on the drug ‘Perindopril Erbumine’ which patent was obtained in the United States. In a preparation to launch the drug in Kenya, the Applicant found an ARIPO registered patent in the name of the Respondent that was believed to infringe on Applicant’s patent. The Applicant thereafter instructed the Respondent to declare non-infringement, although Respondent declined to comply. The Applicant therefore sought to have the Respondent’s registered patent revoked on the grounds that it was not novel and further lacked inventive step as required by statute. The Respondent contended that their patent was novel and not anticipated by prior art.
Whether, the Respondents’ patent was novel and contained an inventive step.
The Tribunal held in favor of the Applicant. The Respondent’s patent was found lacking in novelty and inventive step. The Respondent’s patent claims did not contain anything that was not already contained in the Applicant’s earlier registered patent. The patent was therefore anticipated by prior art making it invalid for registration. The Tribunal declared that the Respondent had purely stated the obvious features of the Applicant’s patent, and such features did not meet the statutory requirements for grant of patent.
1. RE:PPG INDUSTRIES (EXPARTE APPLICATION) TO823/96
2. Hill Vs Evans 186231 LJCH(NS)457, IA IPRI
3. Merck & Co. Inc. Vs Genrx pty Ltd (2006) PCA 1407
4. General Tyre and Rubber Co. Vs Firestone Tyre and Rubber Co. (1972) RPC 457
5. Misc. Civil Application No.661 of 2009, Republic Vs Industrial Property Tribunal Exparte Chemserve Cleaning Services Ltd
6. Windsurfing International Inc. Vs Tabur Mavine (GB) Ltd 1985 RPC 59
7. Pozzoli SPA Vs BDMO SA & Another (2007) EWCA CIV 588.
8. Uniroyal Chemical Company Vs Ondeo Nalco Energy Services (T1060/00)
9. In the Matter of I.G. Farbenindustrie A.G.’s Patents by Justice Maugham, In the Reports of Patents, Design, Trade Mark and Other cases Vol.XLVII, 1930 at page 310 at page 322. Nos.10 to 25
10. Flower Vs Ebbw Vale steel, Iron & Coal Co. (1934) 2KB 132, at 154
11. MMD Design & Consultancy (1998) RPC 131 and Wolard’s Patent (1989) RPC 141
This Tribunal has considered the following pertinent documents in writing the ruling herein:-
(1) The Applicant’s Statutory Declaration by Sanjay Mahajan the Vice President International Business Africa and Middle East for GlenMark Pharmaceuticals Ltd filed in the Tribunal on 30th April, 2010.
(2) The Applicant’s Statutory Declaration in Reply by Sanjay Mahajan filed at the Tribunal on 13th August, 2010.
(3) Applicant’s submissions filed at the Tribunal on 7th March, 2011
(4) Applicant’s Submissions in Reply filed at the Tribunal on 3rd May, 2011
(5) Patent Holders’ Statutory Declaration filed in the Tribunal on 25th June, 2010.
(6) Patent Holder’s Submissions filed at the Tribunal on 18th April, 2011
(7) Case law/precedents submitted by the respective parties in the proceedings herein.
All these capture the issues put across by the parties and are all a subject of our consideration in this case. They represent the totality of the evidence as required by the relevant statutes and the Rules thereon.
The Applicant on its own motion opted or elected to abandon grounds 1,2,5,6,7,8,9 and 10 leaving only grounds 3 and 4 for determination. The loser is jurisprudence on intellectual property. The Patent Holder also chose not to actively pursue certain other grounds in its opposition to the revocation proceedings.
The Grounds left for determination are set out verbatim:-
“……(3) “The Patent lacks novelty as defined under S.23 of the Industrial Property as its claims are anticipated by prior art.
“……(4) There is no inventive step, established by the invention as described under section 24(1) of the Industrial Property Act.”
Our ruling shall hence be restricted to the said grounds, given the events stated above.
The Applicant has developed and manufactured for sale a generic drug containing polymorph Perindopril Erbumine hereinafter for ease of reference, known as “Perindopril”. It is useful for the treatment of patients with hypertension.
The Applicant stated that in the course of conducting due diligence before an intended launch in Kenya of its product, it found out after a search at Kenya’s Patent Registry that there existed Patent No.AP1537 in the names of Les Laboratories Servier having been registered on the 6th July, 2001 under ARIPO with a priority date from an earlier French Application No.00108973 of 6th July, 2000.
The Applicant then wrote to the Patent Holder on the 15th of October, 2009 demanding a declaration of non-infringement under S.107 of the Industrial Property Act. The Respondent did not acknowledge nor indicate whether it would do anything within the time lines given. The Applicant sought to disprove the claims made thereon as laid out in paragraph 18 of its statement of facts.
The Applicant’s case or argument is that there is no novelty in the Patent Holder’s claims as more particularly set out in paragraph 18(i) to (vii). The Patent Holder stood its grounds that there is novelty and inventive step in the patent sought to be impugned.
The Applicant’s main argument is that there is sufficient prior art that discredits the novelty of the claims made by the Patent Holder as more particularly represented by the claim in the US 4,914,214, herein after referred to as the ‘214’ patent. According to the Applicant, the ‘214’ patent is the prior art of the subject matter claimed in the Patent Holder’s Patent AP.1537. The Applicant further states that the ‘214’ patent disclose a process of the Industrial Synthesis of Perindopril in the form of Erbumine salt that is equally claimed in AP 1537 by the Patent Holder.
Under the provisions of S.23 (1) of the Industrial Property Act of 2001, an invention is new if it is not anticipated by prior art. The later is defined in S.23 (2) of the Industrial Property Act as everything made available to the public in the world by means of written disclosure etc. The ‘214’ patent for purposes of this case is a prior art made public by written disclosure. The ‘214’ patent meets the twin requirements of prior disclosure and enablement. We agree with the Applicant when it quotes the decision in RE:PPG INDUSTRIES (EXPARTE APPLICATION) TO823/96, in which the Board of Appeal of the European Patent Office defines disclosure to encompass both explicit and implicit disclosure. The Board went further to explain the term implicit disclosure to mean ‘solely to matter which is not explicitly mentioned, but is a clear and unambiguous consequence of what is explicitly mentioned.
The invention in the ‘214’ patent was made available to the public as there had been an enabling disclosure. This fact could enable an ordinary skilled person armed with general knowledge of the art to perform the subject matter of the invention without undue burden.
In the case of Hill Vs Evans 186231 LJCH(NS)457, IA IPRI quoted substantially in Merck & Co. Inc. Vs Genrx pty Ltd (2006) PCA 1407 Lord Westbury described the disclosure needed in an earlier publication necessary to destroy a later patent for want of novelty as that:
“Involving a statement such that a person of ordinary knowledge of the subject matter would once perceive, understand and be able practically to apply the discovery without necessity of making further experiments and gaining further information before the invention could be made useful”
The Patent Holder in this case has not demonstrated that it would not be possible for an ordinary person with knowledge of the subject claimed in the ‘214’ Patent to perceive, understand and be able to practically apply the discovery thereof and obtain the results it claims in AP 1537 without the necessity of making further experiments easily.
The Patent Holder has not shown convincingly the difficulty within which the results cannot be obtained without the need for further experiments. What is considered ‘the difficulty’ in its evidence is not convincing to this Tribunal. Its explanations and claims in AP 1537 do not pass the test of novelty as required under S. 23(1) of the Industrial Property Act.
The Patent Holder has not demonstrated that there was something remaining to be ascertained in the ‘214’ Patent which is necessary for the useful application of the alleged discovery to provide room for another valid patent.
We agree with the Applicant that while in the prior art contained in the US 4,914,214 lacks explicit disclosure on product recovery, it has an implicit disclosure that provides a clear and unmistakable direction on obtaining the alpha crystalline form of Perindopril tert butylamine, in that a skilled person in the art possessed with the knowledge of the art to perform the subject matter of the invention shall inevitably obtain the same product as claimed in AP 1537 patent. The Patent Holder relies on the same reaction conditions and uses the same solvent, molar ratio and concentration as used in the ‘214’ patent.
The expert witnesses of the Applicant have demonstrated what a person skilled in art can do. Their evidence went largely uncontroverted. It is not the scale of the experiment that matters as urged by the Patent Holder. The evidence and submissions by the Applicant are convincing and this Tribunal duly accepts the same. The implicit enabling disclosure in the US 4,914,214 is sufficient to obtaining of the alpha crystalline form of perindopril tert-butylamine and in the circumstance major claims 1 and 2 by the Patent Holder are not novel as they are anticipated by prior art contained in the ‘214’ patent.
We agree with the Applicant that claims 3 to 13 by the Patent Holder being dependent on either claims 1 or 2, are therefore not novel. They cannot stand on their own and the Patent Holder did not explain it any better. We find no merit in the Patent Holder’s contention in paragraph one, 1.1 to 1.5 of its submissions that the Applicant could have misread and misinterpreted the full specifications of the AP 1537. There is no requirement that any other prior art should be considered before accepting the applicant’s or even the Patent Holder’s contention.
The Patent Holder did not provide any worthwhile evidence to support its arguments that its Patent AP 1537 represents or relates to a new crystalline form of tert-butylamine salt (the erbumine salt) not anticipated by the prior art contained in the ‘214’ patent. The Patent Holder has also failed to prove with empirical scientific evidence that its Patent AP 1537 relates to a process for the preparation of the said crystalline and or that its pharmaceutical composition is any different anticipated explicitly or implicitly by ‘214’ patent.
The Patent Holder did not explain, apart from stating without cogent evidence, the process how claims in AP 1537 are novel and not anticipated by prior art. The rapid filtration and drying are not new phenomena at all as they are anticipated by prior art by skilled person in art with general knowledge. The evidence of Dr. Mubeen Khan on behalf of the Applicant went unscathed in support of the applicant’s contention. The Patent Holder’s contention contained in paragraph one, 1.1 to 1.5 could be undertaken by a person skilled in the art without undue burden. There can be no need for experiment or discovery in respect to the claims by the Patent Holder. The alleged new crystalline form of erbumine salt of Perindopril in a well defined, perfectly reproducible, crystalline form that exhibits valuable characteristics of filtration, drying and ease of formulation are nothing new or novel or at all.
There is no new ceiling broken that has been established by the alleged claims in AP 1537. The prior art contained in the ‘214’ patent is quite certain. We agree with the holding in General Tyre and Rubber Co. Vs Firestone Tyre and Rubber Co. (1972) RPC 457 quoted with approval in Merck & Co. Inc. Vs Genrx pty Ltd. (2006) FCA 1407 that:
“Prior publication must contain clear and unmistakable directions to what the patentee claims to have invented. A sign post, however clear, upon the road to the patentee’s invention was not sufficient. The prior inventor must be clearly shown to have planted his flag at the precise destination before the Patentee”.
It is our considered view that the ‘214’ patent had given clear directions and had its flag at the precise destination. The Patent Holder in the present case has not shown any better destination. Its claims are akin to one who tarmacs a road but whose destination remains the same! It is not about shortening or straightening of the bends that matters! Claims for novelty must be beyond question. It must be impeccable and this shall go a long way in establishing respect for innovation in intellectual property. This shall in turn spur new developments and applications that are useful to human race. The Patent Holder has not broken any new grounds at all to justify novelty claims.
The prior art contained in the ‘214’ patent was already useful and the alleged experiments conducted by the Patent Holder could not make its patent any useful or better as all the claims made therein were already, anticipated by the ‘214’ patent. The experiments conducted by the Patent Holder did not work the invention any better as the final products were already anticipated by prior art. There is no end to this tirade against the Patent Holder’s alleged claims to novelty, what has been said about novelty suffice to justify revocation of the AP 1537 as prayed by the Applicant.
The submissions by the Patent Holder did not convince this Tribunal that there was no evidence to show lack of novelty. It is not true that the Applicant depended on the submission filed as the sole grounds to demonstrate lack of novelty. The expert witnesses called by the Applicant demonstrate that there is evidence which was not successfully controverted by the Patent Holder in any material respect.
There is nothing that has been found in the AP 1537 that was not in the prior art i.e. the ‘214’ patent. Nothing is being forced or imputed in our view to support the lack of inventiveness or novelty. It comes naturally from the documents and evidence proffered by the parties.
We bear in mind the penultimate paragraph in the quote from the case of General Tyre and Rubber Co. Vs Firestone Tyre and Rubber Co. 1992 RPC453 at Page 467 line to 41 to page 468 line 3 where the court held that:
“….. One must not approach the prior document with a predisposition to find in it something which was discovered later”.
The Patent Holder has not demonstrated there is something discovered later after the ‘214’ patent that would entitle it to a valid patent as claimed and registered by ARIPO.
We do not agree with the Patent Holder’s proposition in paragraph 11 of its submission that the Applicant is trying to find in its claimed patent that which is disclosed thereof. It is not true that there is an inevitable result that distinguishes AP 1537 from the ‘214’ patent and in the process an alleged novelty is founded. We admire the zeal with which the Patent Holder has put its case but it does not go far. The evidence of Dr. Renaud on behalf of the Patent Holder especially in paragraphs 45 and 46 have made a poor attempt to explain the so called distinguishing features and the evidence of alleged selective choosing of examples by the Applicant. He fails miserably.
The Applicant has discharged the onus required in showing that there is no new invention as required by S. 23(1) of the Industrial Property Act, 2001. Even without relying on the alleged new evidence of alleged further experiment introduced by the applicant in its Statutory Declaration in Reply, the Patent Holder’s claims do not measure up in terms of novelty. This is in consideration of the Patent Holder’s submission contained in paragraph 15, 16, 17, 18 19 and 20. We note that Rule 24(6) of the Industrial Property Rules does allow further evidence to be filed but which should be confined to matters strictly in reply and hence no evidence can be disregarded as prayed for by the Patent Holder. The Applicant’s Submission in reply was confined to issues raised by the Patent Holder in its submission. There is no new evidence being put forth or at all.
LACK OF INVENTIVE STEP
The Applicant is further hinging its case for revocation on lack of inventive step. If there is no inventive step then a patent should not be granted and according to the Applicant, the Patent granted by ARIPO should be revoked for lack of essential ingredients in law to wit:- inventive step.
In paragraphs 21, 22 and 23 of the applicant’s statement of facts, it is demonstrated why there is lack of inventive step. The Respondent did not respond to these assertions in any appreciable manner.
Any patent registered unjustifiably ought to be revoked. The applicant has demonstrated adequately that AP1537; an ARIPO registration should be impugned. Leaving it in existence shall impact negatively on the trade, amounts to unfair trade practice and blocks competition unjustly. It lacks all the ingredients required of a patent to pass the test for registration.
This court has power to revoke an ARIPO patent by virtue of the provisions of the Industrial Property Act and as more particularly declared by Justice Musinga of the High Court of Kenya in Misc. Civil Application No.661 of 2009, Republic Vs Industrial Property Tribunal Exparte Chemserve Cleaning Services Ltd.
The cardinal requirements before a patent is granted the world over are the same. Lack of inventive step is devastating as it is catastrophic and one must prove such allegation. The law enjoins the Applicant to prove the allegations to the effect that there is no inventive step and this informs the grounds proffered by the Applicant in this case.
It is our view, as the Tribunal, that the processes floated by the Patent Holder as inventive steps are what had already been suggested in the ‘214’ patent and hence AP 1537 approach lacks any inventive contribution and should not have been registered by ARIPO. The Perindopril Erbumine in our view was already revealed in prior art before AP 1537. It did not deserve to be registered.
We have considered the authorities cited by the applicant and those of the Patent Holder in support of the divergent positions taken by the respective parties in so far as the inventive step issues are concerned.
The starting point in this case is the prior art in the ‘214’ patent disclosing the subject matter which has the most relevant technical features in common in an attempt to assess the inventive step.
By virtue of S.103(3)(d) of the Industrial Property Act, 2001 an interested party can file for revocation of a patent if it is obvious that it involves no inventive step having regard to what was common knowledge in the art at the effective date of the application.
The said section ought to be read together with S. 24(1) of the Industrial Property Act where it is stated that an invention shall be considered as involving an inventive step if having regard to the prior art relevant to the application claiming invention it would not have been obvious to a person skilled in the art to which the invention refers on the date of the filing of the application or if priority is claimed, on the priority date validly claimed in respect thereof.
The prior art in this matter is the US 4,914,214 herein before called the ‘214’ patent. The discussion into the said the ‘214’patent has already been gone to above but for clarity it is good to consider the four(4) approaches that have been established or adopted in assessing the inventive step in relation to obviousness. They are:-
(i) Identity of the notional person skilled in the art” and Identity of the relevant common general knowledge of that person;
(ii) Identity of the inventive concept of the claim in question or if not possible, construing it;
(iii) Identity of the differences existing between the matter cited as forming part of the state of the art and the inventive concept of the claim or the claim as construed;
(iv) Viewing without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
These approaches are as a result of the decision made in Windsurfing International Inc. Vs Tabur Mavine (GB) Ltd 1985 RPC 59 and in Pozzoli SPA Vs BDMO SA & Another (2007) EWCA CIV 588.
The Applicant in this case meets without doubt the notional “person skilled in the art” as demonstrated by the expert witnesses and evidence contained in annexure SM 12 – SM 19 of the Applicant’s Statutory Declaration and more particularly set out in page 9 of the Applicant’s Submission.
The Applicant further embraces the requirement of the second approach stated above by the use of the same reaction conditions, the same solvent, molar ratio and concentration used in the ‘214’ patent which the Patent Holder applied. The ‘214’ patent process is the prior art so what new or inventive step has the Patent Holder indicated? There is absolutely none in our considered view. The applicant’s Submissions in pages 9 & 10 suffice in our view to demonstrate that the four approaches have been explained. The AP 1537 Patent has nothing new. The same is just but a replica of the ‘214’ patent.
The Patent Holder failed to meet the steps set out to establish an invention as more particularly stated in Uniroyal Chemical Company Vs Ondeo Nalco Energy Services (T1060/00) by the European Patent Office Technical Board of Appeal in that though the prior art is identified, the technical results achieved by the invention when compared with the closest prior art are established, the technical problem to be solved as the object of the invention to achieve the results is examined, and finally obviousness of the solution claimed in view of the state of the art having been examined, the result or the final outcome does not change. The product is Perindopril Erbumine. The presumed technical results or benefits are what was anticipated by the ‘214’ patent. The alternative process in AP 1537 is not an inventive step in our considered view and hence the said AP 1537 lacks inventive step in view of the prior art.
We agree with the Applicant’s submission that an arbitrary choice of any reasonable cooling system when implementing the process in the ‘214’ patent is merely a routine task of a person skilled in that art which requires no explicit indication of the system finally chosen or an indication of the formation of a polymorph and hence no inventive step is demonstrated in the independent claims 1 & 2 and by extension claims 3 to 13 which were dependent on the first two, and hence lack of inventive step is established.
We have considered the Patent Holder’s views in its Statutory Declarations and Submissions but we find no strong and positive arguments to support the propositions thereof and would not place much weight to the same given the circumstances. The authorities cited by all the parties have been considered at length and some even quoted verbatim in this ruling.
The closest prior art in this case is the ‘214’ patent which has been admitted by the Patent Holder. There are no convincing technical results achieved by AP 1537. It is not about the process as urged by the Patent Holder in its submission in paragraph 40 thereof.
The claims by the Respondent are merely repetitive, which is not allowed by law. See the case In the Matter of I.G. Farbenindustrie A.G.’s Patents by Justice Maugham, In the Reports of Patents, Design, Trade Mark and Other cases Vol.XLVII, 1930 at page 310 at page 322. Nos.10 to 25.
There is no real advantage obtained as suggested by the claims of the Patent Holder. There is ambiguity and insufficiency. The claims by the Patent Holder ought to add something of a substantial character to existing knowledge.
The result achieved must not be obvious even to persons skilled in the art and well acquainted with the published information. Mere verification is not an invention. No man can have a patent merely for ascertaining the properties of a known substance. This is what the Patent Holder has attempted but must fail.
The Patent Holder has engaged in mere jargon verbiage and window dressing and we cannot accept such theory. The commercial success of the alleged invention should not blind any one into an erroneous judgment or conclusion. The interpretation given to the expert’s testimonies should be straight and narrow; no additions can possibly be inferred thereon.
The Patent Holder has underestimated the knowledge of the person skilled in the art in its arguments. This led it to complacency in attempts to defend the Patent AP 1537 as granted by ARIPO.
The Patent Holder did not demonstrate clearly that its invention does not form part of the state of the art as contained in the ‘214’ patent.
The Patent Holder did not demonstrate that something remained to be ascertained which is necessary for the useful application of the discovery claimed which would afford sufficient room for another valid patent as more particularly set out in the unquestionable authority by Lord Westbury LC in Hill Vs Evans (1862) 31LJ(NS) 457, 463.
We, too, have considered very deeply the effect of the decision in General Tyre and Rubber Co. Vs Firestone Tyre and Rubber Co. Ltd (1972) RPC 457, 485 – 486 and the application of the facts and the law in the present case at hand. The two cases quoted above are judgments of unquestionable authority and it has helped this Tribunal to reach the decision it has in this case. The ‘214’ patent had the flag planted at the destination notwithstanding that the authors or makers of the prior art may not have been aware that they were doing so. The Patent Holder has not succeeded on both novelty and lack of inventive step parameters.
The registration of AP 1537 by ARIPO gives the Patent Holder exclusive rights to exploit the invention which includes the right to restrict others from selling similar products in the designated state, in this case, Kenya. The said rights must be based on sound legal principles and grounds. They are not, from the evidence in this case. This is a strong case for revocation. Infact it is not about revocation being availed readily as urged by the Patent Holder.
A search carried out by this Tribunal in the International Monthly Index of Medical Specialists (MIMS) reveals that the branded and generic products of the Perindopril Molecule have been marketed side by side in the UK, India, Vietnam, Malaysia Philippines, Hong Kong, China, Taiwan and Australia. While we bear in mind that patents are territorial in nature, the international connection ought to be considered, which we have done in deciding that the AP 1537 ought to be revoked. It does not deserve any recognition or at all.
The selection argument intimated by the Patent Holder in paragraph 47 of its submissions does not take the issue any further than the circumstances obtaining can help. But for the sake of analysis and discourse and hoping that we understand what entail selection patent arguments, we shall briefly deal with the subject. The remarks on selection patents herein are ‘obiter dicta’ in essence and falls on all fours with the holding in the case of Flower Vs Ebbw Vale steel, Iron & Coal Co. (1934) 2KB 132, at 154.
The Respondent has failed in its attempt to claim specific purpose and the use for that purpose. The Respondent did not at all bring out the argument of the selection patent whose principle is that there is no novelty in the process of manufacture but that novelty lies in the selection of certain bodies because they possess or have particular merits. The Respondent ought to have met the following conditions:-
(a) the claim must relate to the basis of the invention and must be co-terminus with it i.e. if one selects for a specific purpose,
one can only make a claim for a use of that purpose, not for other processes,
(b) the special property must be peculiar to the selected group; i.e. it is founded on the basis,
(c) the whole of the selected group must have properties claimed. i.e. it must be based on certainty; not probability,
(d) the result obtained by the patent must be a new result, in that it was not expected and it is not merely an old result obtained in a greater degree.
A selection patent does not in its nature differ from any other patent and is open to attack on the usual grounds of want of a subject matter; want of utility, novelty and so forth; but the argument is vested by three general propositions:-
(a) a selection patent to be valid must be based on some substantial advantage to be secured by the use of the selected members and this includes the case of a substantial and vantage to be thereby avoided;
(b) the whole of the selected members must possess the advantage in question;
(c) the selection must be in respect of a quality of a special character which can fairly be said to be peculiar to the selected group;
The Patent Holder has not defined in clear terms the nature of the characteristics possessed by the selection for which monopoly is claimed. Merely stating that it has advantages is not enough. In selection patents, the inventive step lies in the selection for a useful and special property or characteristic adequately defined. The claims for patent by the Patent Holder fails in all aspects. They are too vague, too uncertain and open to too many exceptions to enable the claims to pass the test for support. See the case of In the Matter of I.G. Farbenindustrie A.G.’s Patents by Justice Maugham, In the Reports of Patents, Design, Trade Mark and Other cases Vol.XLVII, 1930 at page 310 at page 322. Nos.10 to 25. Without sounding repetitive and even if the selection patent argument had been proffered sufficiently by the Patent Holder, this Tribunal is of the considered view that there is no real advantage obtained as suggested by the claims of the Patent Holder. Instead, there is ambiguity and insufficiency. As stated above the Patent Holder’s case is not based on selection patent arguments albeit a far off attempt was made to introduce such argument. However, it is not material in the making of our decision.
Having considered all the pertinent issues raised by the parties herein and after careful consideration of the case law and their applicability and relevance, we are inclined to, which are hereby do, order that the application for revocation by the Applicant has succeeded. The AP 1537 stands revoked as by law required. The requisite steps towards the necessary finality shall be undertaken accordingly.
We shall order that the costs payable to the successful party herein shall be on the higher scale. The higher scale is ordered having taken into consideration the conduct of the Patent Holder in resisting the demand for non-infringement declaration under S.107 of the Industrial Property Act, 2001 and the enormity or magnitude of the issues raised. The cardinal principle behind S.107 aforesaid is that given the cost of and ramification of intellectual property litigation, it is vital for one to establish, before spending huge sums in an activity whether the proposed action is non-infringing or otherwise. The Patent Holder did not take it seriously when it received and ignored a demand from the Applicant altogether. The Applicant showed true and real interest in the subject matter of litigation. This Tribunal takes a deem view of the Patent Holder’s conduct and since litigation has been undertaken, the element of costs must be considered on the higher scale to ensure that parties in litigation in intellectual property matters should attach seriousness and importance to such demands under S.107 of the Industrial Property Act. We have made reference to the case of MMD Design & Consultancy (1998) RPC 131 and Wolard’s Patent (1989) RPC 141 for useful guidance in this aspect. The lesson learned here is that declaration of non-infringement can save on costs and those who ignore it do so at the risk of facing huge costs when litigation is undertaken and especially if unsuccessful in their intransigence.
Title: Glenmark Pharmaceuticals v Les Laboratories Servier