Roche vs CIPLA Patent Litigation: Update

Justice Ravindra Bhatt of the Delhi High Court heard the matter today. Justice Bhatt joined as an additional judge in 2004 and had a stellar career as a lawyer prior to this. He then moved to the writ side of the Delhi High Court. And then later to the original side–I learnt that he joint the “original” side of the Delhi High Court just 15 days back. So this could well be his first IP matter!!

As expected, CIPLA filed its response, counterclaiming invalidity (that the patent over Tarceva was not valid). The lawyers representing the parties are as follows:

CIPLA: Arguments by Arun Jaitley (former law minister). Briefing Counsel : Pratibha Singh
Roche: Arguments by Abhishek Manu Singhvi (Congress spokesperson). Briefing law firm Depenning&Depenning

The matter was part heard and will be taken up again tomorrow.

In the meantime, Professor Martin Adelman of GW law school brings to my attention that there are two patents covering Tarceva that have been listed in the Orange Book. US Patent No’s 5747498 and 6900221.

The Indian litigation involves Indian Patent No. 196774 (the ‘774 patent) issued by the Delhi Patent Office against the mail-box Application No. 537/DEL/1996 filed March 13, 1996 (thanks to Varun Chhonkar of Patent Circle for this). Since the ‘498 US patent is a 1996 filing, this must be the one which is equivalent to the Indian Patent for Tarceva (‘221 patent in the US has a 1999 filing). Since we don’t have an Indian Patent Database, for those interested, take a look at the ‘498 patent (US) to see what the patent is really about and what the claims are.

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.


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