Interesting Patent Case in India on Diagnostic Testing


I’ve been informed that Justice Sanjay Kishen Kaul (of the Bilcare fame) has reserved judgment in a very interesting patent matter involving a patented diagnostic testing kit for Hepatitus C. For those interested, the case is J Mitra vs Span Diagnostics. The facts briefly are as follows:

J Mitra applied for patent. Pregrant filed by Span, is decided in favour of J Mitra. Upon the grant of patent, J Mitra sues Span for infringement and asks for temporary injunction. Span counterclaims invalidity and also takes up the Gilette defense. Justice Kaul reserves judgment. And it is expected anytime this month.

Of course, this case hasn’t found any media attention yet, since it does not involve an MNC!! For those of us who are more interested in the jurisprudential aspects of patents than the emotional rhetoric around patents and the bad MNC’s that have come to exploit us, this will prove to be an interesting judgment.
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Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

5 comments.

  1. AvatarShamnad Basheer

    Dear Ravi,

    Please see http://www.wuesthoff.de/pdf/wuesthoff_1175587278.pdf, where it is stated:

    “In the UK, the so-called “Gillette defence” is available to the defendant (accused infringer). Under the “Gillette defence” there is no patent infringement if the patent claim is read so widely to cover the product that the claim becomes invalid over the prior art. In other words, the claim is construed so broadly that it is also so close to the prior art that there is lack ofnovelty or inventive step.”

    Also see http://www.intelleigen.com/en/pdf/200607%20Write%20up%20by%20ckw.pdf which states:

    “In a Gilette defense, the defendant’s argument is that if the plaintiff asserts broad interpretation for its patent claims so as to read onto the allegedly infringing product, the patentee runs the risks of having its patent anticipated by the prior art. If the claims are interpreted too narrowly to avoid a novelty attack, the allegedly infringing product might fall outside the scope of such an interpretation. Either way, the defendant wins if the Gillette defence is effectively deployed.”

    Reply
  2. AvatarAnonymous

    No relief could be obtained in respect of an invalid patent. If the defendant can prove that
    the act complained of was merely what was disclosed in a publication which could be relied
    on against the validity of the patent, without any substantial or patentable variation having
    been made, he has a good defence. This is the so-called ‘Gillette defence’.

    Reply
  3. AvatarAnonymous

    dear shamnad
    it was a infomative piece of information on gilltte defence.thank u.sir is it posible to know the facts of the above mentioned case of j.mitra v span diagnostic.

    Reply

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