Schering Corp (Merck & Co) Vs Sun Pharma

A patent infringement complaint was filed by Schering Corp a subsidiary of a Multi national pharma company Merck & Co against Sun Pharma Indian Pharma Company last week in the district court for New Jersey.

This complaint was filed in relation to the generic version of the most widely used brain cancer drug Temodar. Sun Pharma filed an Abbreviated New Drug Application (ANDA) to launch a Generic version of Temodar in the US Market.

Temodar, which Merck acquired through the acquisition of Schering-Plough last year, has annual global sales of about $1 billion. It has sales of about $380 million only in the US market.

Interestingly Merck & Co has the patent protection for Temodar in US till 11^th August 2013. The world's leading generic company, Israel's Teva Pharmaceutical-owned Barr Laboratories, had succeeded early this year in invalidating patent rights of the same drug so Sun Pharma assuming the significance of the above decision filed an ANDA.

The patent litigations were very common in generic drug business in the US. According to the US rules for generic drug launches, the generic company which files a patent-infringing ANDA has to be sued by the innovator within 45 days to prevent the FDA from approving the generic for the next 30 months. In most such cases, the companies settle the litigation out of court.

YouTube Vs Spanish TV Channel

YouTube is a one-year old internet sensation which has a huge collection of videos in it. A suit was filed against YouTube by a local Spanish TV channel (Telecinco) alleging that YouTube is violating its intellectual property rights by broadcasting videos that belonged to it.

The court in its provisional decision ordered the YouTube to suspend the broadcasting of the videos belonging to that Spanish TV channel. But in its final decision the court ruled against the Spanish TV channel saying that “YouTube cannot be held responsible for screening images uploaded on its site.”

The court in its decision made the following things very clear:

• YouTube is not a supplier of content and therefore has no obligation to control ex-ante the illegality of what is on its site

• YouTube just provides a free tool known as Content ID "designed to prevent copyright abuses and give owners control over their content" which is used by more than 1,000 media companies

• Its only obligation is to cooperate with the holders of the rights in order to immediately withdraw the content once the infraction is identified

But it is "physically impossible to control all the videos that are made available to users, as there were in fact more than 500 million.

Dabangg’s Controversy

Emami Ltd’s has served a Legal Notice to the producer of Dabangg for using ZANDU BALM in the song “Munni Badnaam Hui” with out the permission. The song line goes like “Main Zandu balm hui, darling tere liye”

In view of this a legal notice was sent to Arbaaz Khan, his partner and wife Malaika Arora (Munni in the movie), Shri Ashtavinayak Cinemas Ltd, and director Abhinav Kashyap on 17^th September 2010 claiming that they are the sole copy right holders of the name “Zandu Balm”.

The Notice points out “My clients are in the business of producing and marketing various ayurvedic and other medicines including a popular product known as Zandu balm, which is a very common word used by the people, since it is commonly used for pain and related complaints.” The notice adds, “In the song, the name Zandu balm has been used continuously at various places. By using the brand name in the song, you have not only violated the copyright of my clients, but you have also made an attempt to defame the reputation of my clients and the product manufactured by them.”

Now Emami Ltd’s has asked the producers either to withdraw the song or delete the brand name from it. Till now the any reaction from Dabangg’s producers on this case is not stated.

The Youtube Link for the Video song:

Munni Badanaam Hui Video Song

Pfizer Sues Actavis

Pfizer Inc., the world’s largest drug manufacturing company, sued Actavis Group (an Iceland based Company) for infringement of Lipitor patent. Pfizer demanded the judge to block sales of a generic version of the cholesterol drug Lipitor until the patent expires. The expiry date of the aforesaid infringed patent is till 2017.

New York based Pfizer contends that Actavis has applied to the U.S. Food and Drug Administration to make copies of the drug in violation of the patent filed in 1999.

According to a complaint filed today in federal court in Wilmington, Delaware it can be inferred that “Plaintiffs will be irreparably harmed” if Actavis markets its product before the patent-protection expires, Pfizer lawyers demanded legal fees and expenses in the complaint.

Lipitor is the best-selling medicine worldwide, with sales of $11.4 billion in 2009. Pfizer said that on July 6 it has received approval from the European Commission for a new chewable form of Lipitor for children over age 10.

Source: www.bloomberg.com

Trademark Journal on Every Monday

The Controller General of Patents, Trademarks and Designs, in a public notice dated 30-08-2010 announced that the Trademarks Journal will be published on all Mondays starting from 06-09-2010.

Hope this time the Patent Office will be successful in keeping its promise, if IPO does so it will be really helpful for the people who will be waiting for the journal for days together.

Interestingly in that Public Notice they have highlighted All Mondays, so I think they are going to publish it even on those Mondays that comes as Holidays.

Source: http://www.ipindia.nic.in/iponew/public_notice_30August2010.pdf

Hyderabadi HALEEM gets GI status

The Hyderabadi Haleem was given a GI protection on 3rd September 2010. It was the first delicacy from Hyderabad to be granted the GI status. There were many GI’s that has been granted so far such as Tirupati Laddu, Darjeeling Tea and Banarasi Silk etc.

After conducting a series of meetings and inspections the Controller of Chennai Patent Office and the registrar of GI’s, presented the GI certificate to the Haleem Makers association on Saturday.

This presentation of GI status to Hyderabad Haleem implies that no shops outside the territorial limits of Hyderabad can be able to sell their product as Hyderabadi Haleem. Even in Hyderabad city those who are complying with the standards will only be allowed to use the GI tag, Hyderabadi Haleem.

Some Specific standards have been laid down by the GI officials like it has to be made by using goat meat, cooked in pure ghee and it has to be done over firewood for 12 hours etc.

IPO Realized and Re-classified TM

A notice dated 23-08-2010, gives out re-classification of Trademarks. This notice suggests that

Pre-Exiting Marks -

1. Marks already registered in class 42 as on date will remain registered in class 42, irrespective of which services their classes now fall in.
2. However, this will not preclude proprietors in class 42 to voluntarily apply for conversion into separate classes under Rule 101 of the TM Rules.
3. Renewal of such registered marks (in class 42) will also be made in the same class.
4. Marks already advertised in the journal in class 42 shall proceed to be registered in the same class, and upon registration, shall be treated in the same manner for the purpose of registration, classification and renewal, as the existing registered trademarks.


Pending Applications –

1. With regards those marks awaiting examination, the Examiner is expected to inform the applicant of the appropriate class/es into which their goods fall, and make amendments or restrictions accordingly.
2. Where the application is to be split into multiple classes, the priority date of the application shall stay.
3. Where applications have been examined and responded to already, there will be a reexamination to check for classification of services, which the Examiner will inform the applicant about.


So re-classification of Pre-existing registrations seems not mandatory, it remains some work for the Examiner though, who will have to examine each application in any of the new classes in light of registrations in class 42 as well.

US Patent Office updated KSR Examination Guidelines

KSR, a Canadian company, manufactures and supplies auto parts, including pedal systems. In 2000, KSR was chosen by General Motors Corporation (GMC or GM)to supply adjustable pedal systems for Chevrolet and GMC light trucks that used engines with computer-controlled throttles. KSR holds a US patent for “adjustable pedal system for cars with cable-actuated throttles” and KSR decided to include a modular sensor to its design to make it compatible with GMC trucks

As KSR’s competitor, TELEFLEX also designs and manufactures adjustable pedals. TELEFLEX is the exclusive licensee of U.S. Patent No. 6,237,565 (the "Engelgau patent") and sued KSR for patent infringement (claim 4)

TSM Test has been laid down by the Federal Circuit which means Teaching/Suggestion/Motivation test for deciding the obviousness in the invention.

The update to KSR vs TELEFLEX was published in the Federal Register on 1st day of September 2010. These updated guidelines are intended primarily to be used by the office personnel’s along with the manual of patent examination procedure during examination. The USPTO is interested in receiving suggestions on this update which has been evolved recently in the field of obviousness.

This update has been developed as an internal matter of office management but not as a substantive rule. This update doesn’t have any effect under law.

More info: http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf

Training Programs at NIIPM, Nagpur

The National Institute of Intellectual Property Management (NIIPM) is conducting Training Programme to bring awareness relating to Intellectual Property Rights (IPR).

Who can join?
Professionals from Industries,
Research & Development and Scientists etc.
IPR related persons from IPR cell,
Knowledge process outsourcing (KPO) / LPO
Attorneys, Legal Professionals,
Patent / TMR Agents,
Advisors, consultants etc.
Professors, Lecturers, Students, Research scholars etc.
Doctors, Engineers, Pharma related persons OR Any interested person

Venue: - NIIPM, ‘C ‘Block, CGO complex, Near TV tower, Seminary Hill, Nagpur-440006, Maharashtra.

The tentative schedule for the training program was given in: http://www.ipindia.nic.in/NIIPM/TrainingSchedule_26August2010.htm

Revised list of Pharmaceutical Product patents

Here is the revised list of Pharmaceutical Product Patents granted by Indian Patent Office during the years 2005-06 to 2009-10.
In total there were 3,488 Product patents granted in favor of various Pharmaceutical Industries and individual inventors across the world.
An important note in specific was made by the Indian Patent Office suggesting that the 20years term must be calculated from the date of filing of application and not from the date of grant of patent.

List Source: http://www.ipindia.nic.in/iponew/Patent_PharmaProduct_2005_06_2009_10.pdf

Call for Suggestions regarding Amendments in Trademark Rules

This time the opportunity of amending the rules has been given to all Stakeholders, Advocates and Trademark Attorneys. In view of that The Controller General of Patents, Designs and Trademarks has invited opinions from all Stakeholders for amending Trademark rules 2002.

This proposal was made in order to

1. Bring the Trademark Rules in conformity with the current trading practices.
2. Simplifying the existing Rules and Schedules
3. Dispose off the Trademark cases in speedy way.

This public notice also contemplates that all the suggestions recommending amendment in the rules must contain a justification.

The pubic notice has been issued on 12-08-2010 and the last date for receipt of such suggestions is 15-09-2010.

Source: http://www.ipindia.nic.in/iponew/PublicNotice_TMRSuggestion_12August2010.pdf