Patents vs Patients: Cipla's Victory and the Evolution of New 'Compulsory Licensing' Norms


Presented below are excerpts from a net blog by Mr Shamnad Basheer, who was till recently the Frank H Marks visiting Associate Professor of Intellectual Property Law at the George Washington University Law School, Washington, USA. He was formerly with Anand and Anand, an intellectual property law firm in New Delhi.

Extremely well researched judgment …..We finally have an Indian judgment that refers explicitly to the “Windsurfer” test on obviousness - long due, as Indian courts are often prone to citing British case law-and one always wondered why Windsurfer was left out.

Importantly, the court castigates the patent office for not rendering a reasoned decision at the pre-grant opposition stage (recollect that Natco had filed a pre-grant opposition and this was decided by the patent office in favour of Roche). In particular, the court takes the patent office to task for relying blindly on the "suggestion, motivation, teaching" test in the US - a test deployed by the Court of Appeals for the Federal circuit in the US for a great number of years and one which owe red the bar for patentability considerably. The US Supreme Court came down heavily against a formalistic application of this test in KSR vs Teleflex.

Little wonder then that Roche's argument that the pre-grant opposition would render the patent immune from attacks on validity did not sway the court much. The court does not deal explicitly with whether or not Cipla ought to have availed of the post grant opposition mechanism (instead of resorting to infringement and then counterclaiming validity). It seems to have agreed with Cipla's argument that so long as the patents act independently recognises the right to ask for a revocation at any stage (and counterclaim invalidity), the lack of a post-grant opposition by the “revoker” is not critical.

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