Roche vs CIPLA: Some Dates

Dr Gopakumar Nair, an expert on patent issues and founder of the reputed Patent Gurukul site has sent us some great details on the dates re: the patent applications in the Tarceva case. The dates are very critical to issues such as novelty, time for filing post grant opposition etc. He writes as below:

“Indian Patent Application No. 537/DEL/1996 A filed on 13th March, 1996 has been granted as 196774 and published on 13th July, 2007 in the Official Journal Of The Patent Office. The above Application in India which led to the grant of a patent has priority date of 30th March, 1995. The priority document for the Indian Application is US 08/413,300 filed on 30th March, 1995, through the publication in the Official Journal of the Patent Office does not specify the priority document.

We would expand the events as follows.
Original US Application (first priority document) US 08/413,300 has been filed on 30th March, 1995. The priority document is mentioned in bracket as CIP (Continuation-In-Part). However, no record of the US priority document is available.

Based on the US Priority document US 08/413,300, a PCT International Application was filed at the International Bureau as PCT Application no. PCT/IB95/00436 on 6th June, 1995. The PCT application was published as WO/1996/30347 on 3rd October, 1996.

Based on PCT/IB95/00436, a US Application was filed on 28th May, 1996 having Application no. 653,786.

Based on US Application no. 653,786 dated 28th May, 1996, US Patent no. 5,747,498 was granted on 5th May, 1998.

The Indian Patent Application is filed on 13th March, 1996 having a priority of 30th March, 1995 (however, not mentioning in the Official Journal of the Patent Office of any other priority data as such priority document).

It is however surprising that the contents of the priority document no. US 08/413,300 is not available anywhere including in the WIPO, US and other sites. It maybe worthwhile to locate priority document which is mentioned as CIP and only referred to as the priority date in the Indian Application.

The relevant (or irrelevance?) of the priority date (30th March, 2005) is that the prority date claimed in Gefitinib application by Astra (841/DEL/1996) is 27th April, 1995. It is therefore important to verify the existence or filing of the Priority document (US 08/413,300) having priority date of 30th March, 2005.”

Varun Chhonkar of the popular Patent Circle blog has written to let us as below:

“There is a correction regarding Erlotinib patent details as posted on SpicyIP taken from Sandeep Rathod’s Blog.

The Indian Patent No. 196774 for Erlotinib hydrochloride issued against mail-box application No. 537/DEL/1996 was published in the Patent Office Journal dated July 13, 2007 not September 14, 2007. You can download the Patent Journal Issue No. 28/2007 and scroll down to check the details. Also, I pasted the details below for your reference. Please correct the date as it is crucial date used for calculating valid period for filing a post-grant opposition.”

We thank Dr Nair and Varun immensely for sending us useful facts and for helping further our cause of “accurate reporting”.

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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