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Coverage-Disclosure Conundrum and Future of Species Patents in India


Affiliations
1 Faculty of Law, University of Delhi, Delhi — 110 007,, India
 

Innovations are mostly derived from already existing technologies that may or may not have been patented. What could one think of, about the patentability of a product, let‟s say a pharma product that is made from the group of previously known compounds, some of which are already patented? The answer to this question lies in the very technical field under patent law known as „Selection Patents‟ or „Genus-Species Patents‟. Predominantly this concept of selection patent or species patent is seen mostly in the domain of chemical compounds or species, but certainly is not limited to that only, as the same can be applied in other technological areas, such as engineering, biotechnology, material science and telecommunications. Selection patents/inventions are said so as they overlap with the disclosures in the preexisting art. Such aforesaid disclosures generally do not hamper the novelty of the latter invention unless the latter one does not encompass a new embodiment of feature or property. But this isn‟t as straight forward as it seems to be. The critical issue in this domain is how to determine the novelty and inventive step of the selection inventions which are entangled in the dichotomy of coverage and disclosure. Off late there have been chunk of cases in India deciphering the coverage-disclosure conundrum in the field of species patents. This paper will foray as to what is this coverage-disclosure conundrum in selection patents, what are the legal framework that are prevalent across other jurisdictions to deal this and what is the future of specie patents in India especially in light of recently filed Dapagliflozin Appeals.

Keywords

Coverage-Disclosure, Genus-Species, Patents, Dapagliflozin, Markush claims, Self collision.
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  • https://www.mondaq.com/india/patent/719486/selection-patents-a-developing-area-of-indian-patent-law(accessed on 3 February 2022).

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  • Novartis AG v Union of India, (2013) 6 SCC 1.

  • Astrazeneca Ab &anr vIntas Pharmaceuticals Limited &ors, (2021).

  • https://www.mondaq.com/india/patent/1117710/genus-species-patents-patentability-in-india (accessed on 10 February 2022).

  • FMC Corporation & ANR v Natco Pharma Limited. (CS (COMM) 69/2021).

  • What exactly is the industrial applicability of a Markush? Why do we grant Markush or genus patents if they are mere research tools with no real-world applicability? -this is where the Carlos Correa‟s distinction between utility and industrial applicability comes into play- Markush might sit well in US jurisprudence since utility is broad to cover inventions which are research tools- but can we use Markush in an industry? No because it is just a structural concept- a conceptual invention where substitution is required but if a court kills the concept of Markush today it will disrupt years of practice in patent office of granting Markush patents in India.

  • Holman C M, In defense of secondary pharmaceutical patents: A response to the UN's guidelines for pharmaceutical patent examination, ILI Law Review, 50 (2017) 761.

  • Veldsquez G, Guidelines on Patentability and Access to Medicines (S. Ctr. Working Paper No. 61, 2015)(citing commentary from parties such as the Minister of Health of Argentina, Secretary-General of Thailand's Food and Drug Administration, and the Minister of Health of Brazil, expressing gratitude, appreciation, and congratulations to the WHO for drafting and publication of the Guidelines).

  • Butriy O, „Self-collision‟ of European patent applications under the European Patent Convention: What about partial priority? Journal of Intellectual Property Laws & Practice, 11 (2016) 682.

  • Sulphur Mills Ltd. vDharmaj Crop Guard Ltd. &Anr. [CS (COMM) 1225/2018, 2 August 2021].

  • Wyld O, High Court considers Markush claims and the doctrine of UK selection patents, Journal of Intellectual Property Laws & Practice, 4 (2009)148.

  • The Guidelines for Examination of Patent Applications in the field of Pharmaceuticals, October 2014. The guidelines are not law- and that any change in interpretation by court or change in law by legislature will require the guidelines to be amended.

  • This is from an infringement point of view, for the patentability point of view an inventor can pick from a mosaic and show that it is inventive since Person Skilled in the Art couldn‟t do it, but inventor can.


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  • Coverage-Disclosure Conundrum and Future of Species Patents in India

Abstract Views: 227  |  PDF Views: 141

Authors

Ashwini Siwal
Faculty of Law, University of Delhi, Delhi — 110 007,, India
Prashant .
Faculty of Law, University of Delhi, Delhi — 110 007,, India

Abstract


Innovations are mostly derived from already existing technologies that may or may not have been patented. What could one think of, about the patentability of a product, let‟s say a pharma product that is made from the group of previously known compounds, some of which are already patented? The answer to this question lies in the very technical field under patent law known as „Selection Patents‟ or „Genus-Species Patents‟. Predominantly this concept of selection patent or species patent is seen mostly in the domain of chemical compounds or species, but certainly is not limited to that only, as the same can be applied in other technological areas, such as engineering, biotechnology, material science and telecommunications. Selection patents/inventions are said so as they overlap with the disclosures in the preexisting art. Such aforesaid disclosures generally do not hamper the novelty of the latter invention unless the latter one does not encompass a new embodiment of feature or property. But this isn‟t as straight forward as it seems to be. The critical issue in this domain is how to determine the novelty and inventive step of the selection inventions which are entangled in the dichotomy of coverage and disclosure. Off late there have been chunk of cases in India deciphering the coverage-disclosure conundrum in the field of species patents. This paper will foray as to what is this coverage-disclosure conundrum in selection patents, what are the legal framework that are prevalent across other jurisdictions to deal this and what is the future of specie patents in India especially in light of recently filed Dapagliflozin Appeals.

Keywords


Coverage-Disclosure, Genus-Species, Patents, Dapagliflozin, Markush claims, Self collision.

References