Patent

Feroz Ali Khader publishes his second book: The Touchstone Effect – The Impact of Pre-grant Opposition on Patents


I’m happy to announce that Feroz Ali Khader, author of The Law of Patents – With a Special Focus on Pharmaceuticals in India, is releasing his second book today. Titled The Touchstone Effect – The Impact of Pre-grant Opposition on Patents and published by LexisNexis – Butterworths Wadhwa the book is priced at a very affordable Rs. 295 and can be ordered online at this link, with the publishers charging only one rupee as delivery charges. As with his previous book Feroz has started an online blog – www.thetouchstoneeffect.blogspot.com in order to facilitate an interactive discussion on the various topics that he has dealt with in his book. A quick visit to the blog reveals that it is a very useful research tool since the author has provided links to the complete text of all the pre-grant decisions of the Patent Office that have been discussed in his book.

A little about the author: The author is a practising advocate at the Madras High Court and an active commentator on patent law in India often writing articles in the Hindu Business Line and also conducting workshops and delivering lectures on patent law. He has been involved in the Novartis litigation at the Madras HC. Over the years he has expanded his field of practice to include arguing in opposition proceedings being conducted by the Patent Office. He thus writes this book as a legal practitioner with a first hand experience of the system. Probably a lesser know facet about Feroz is his mastery over the pen and English prose. As the IPKat once put it Feroz has “a gift for writing English prose which is businesslike, relevant, direct, accessible and supported by authority”.

A little about the book: Feroz was kind enough to send me a complimentary copy of the book and although I haven’t had the opportunity to read the entire book, I have skimmed through it and it does seem to be a very interesting book. As the title of this book suggests it is dedicated to ascertaining the effect of pre-grant oppositions on the quality of Indian patents and by extensions the quality of innovation in India. While most countries with the exception of the U.S.A. have a post-grant opposition mechanism India is one of the few countries to have a pre-grant opposition mechanism and this book represents the first credible effort to study the efficacy of such a system. Most notably however the author has approached the topic of pre-grant opposition through a multi-dimensional lens i.e. he goes beyond law and into the realm of business strategies. He has made a pointed effort to highlight the fact that a patent is not an end in itself but a means to an end. In the first chapter he goes through great pains to point out that not all great inventions necessarily translate into great businesses and that the success of an invention more often than not depends more on the business strategy used to deploy the invention in the market. To this end the book represents a perfect blend of business and legal strategy.
A significant portion of the book seems to be aimed at educating the Indian businesses on the pre-grant opposition mechanism since the efficacy of the pre-grant opposition is highly dependant on the willingness of industry to participate in such proceedings and the author demonstrates in this book how the pre-grant opposition mechanism can be incorporated into the business strategy to increase profits and if not that, atleast minimize losses. At the end of the day only a competitor will have the technological expertise required to challenge a patent and it is therefore of paramount importance that Indian businesses understand the potential of pre-grant oppositions. In a bid to re-inforce the practical importance of pre-grant opposition the author leads us through a couple of case-studies – chief being the TVS-Bajaj dispute which cost TVS Rs. 120 crores in losses.
The focus of the book however remains on the legalities of the pre-grant opposition mechanism. Not only does it give a step by step guide on how to file and argue a pre-grant opposition but also explains in detail, from a policy perspective, as to why such a mechanism is important in distinguishing between a true black swan and a white swan painted to look black. The ‘black swan’ is a metaphor for those revolutionary inventions which are ‘rare, high impact and unpredictable’ unlike those painted white swans which represent those inventions which though not revolutionary, attempt to convey an impression that they are indeed revolutionary and path-breaking. In the backdrop of this contextual framework the author proceeds to study the nature of pharmaceutical innovation through the lens of Section 3(d), which in his opinion, is aimed at distinguishing between the ‘black swan’ and a ‘swan painted to look black’.
The highlight of this book, in my opinion, is the fact that it deals exclusively with decisions of the Indian Patent Office. The only possible drawback of this book as explained by the author in the preface is the fact that he is legally barred from discussing the finer nuances of any of the cases in which he has rendered an opinion.
All in all I would definitely recommend this book for lawyers, policy-makers, students, academics, in-house counsels and most importantly for management level executives. The author has avoided the use of legalese and therefore the book can be read by everyone and not only lawyers. Hopefully Feroz’s latest book will get the Indian industry to take notice of how the pre-grant opposition mechanism can be used as a tool within their over-all business strategy.

Bibliographic details:

Title: The Touchstone Effect: The Impact of Pre-grant Opposition on Patents
Author: Feroz Ali Khader
Publisher: LexisNexis Butterworths Wadhwa Nagpur
ISBN: 9788180385544
Format: Soft Cover
Edition: 2009
Price: INR 295.00 / US$ 14.75
Pages: xx + 166 pages (Appendices starts from pg 137, followed by Chapter Notes and Subject Index)

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

5 comments.

  1. AvatarAnonymous

    Dear Anonymous,

    Before calling this book a ‘compilation’ have you taken the time out to read the book?

    I think Feroz has done a wonderful job and reading it, a person realises that a lot of work has gone into and not just compiling publicly available material.

    Please buy the book, read it and then call it a compilation!

    Frequently Anon.

    Reply
  2. AvatarLavanya Pillai

    “The Touchstone Effect: The Impact of Pre-Grant Opposition on Patents by Feroz A. Khader” is presented in a simple yet catchy language which makes it an interesting book to read.

    This book is rich in Controller’s decisions which makes it a ready reference for opposition.

    It explains the various procedural aspects of the pre-grant opposition and the role played by this mechanism to differentiate between real Black Swans from the ones that are painted black (in the words of the author).

    The author has also pointed out the various issues at our patent office. In Chapter 4, he has referred to ‘lack of transparency in examination’ and ‘Amendments Unlimited’. These deficiencies can be corrected, possibly, if the Patent office makes available the entire prosecution history of the patent application, on their website, as done by the EPO and USPTO. I would like to know whether section 144 or any other provision of the Patents (Amendment) Act, 2005 bars such an availability.

    Besides, in Chapter 2, the author has explained the various stages in the life of a molecule .i.e., from the laboratory to the market, which gives an insight into the expenditure incurred by the innovator companies.

    In Chapter 8, the author has also emphasized on the importance of having inhouse capability for pre-grant opposition.

    There is no doubt that this book will serve as a pathfinder both to a beginner as well as to an experienced professional in this field.

    Some other issues which I feel needs clarity include:

    -Pre-1995 priority issues and convention countries

    -Whether Controller’s decisions in opposition mechanism carry precedent value?

    – Method of testing:
    Section 3(g) of the Indian Patent Act was omitted from the ‘Inventions Not Patentable’ category (w.e.f. 20-5-2003). Can more clarity be brought in by throwing light on the legislative intent behind this omission?

    I look forward to many more enlightening works from the author.

    Regards,

    Lavanya.

    Reply

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