Shamnad Basheer
Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's 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 Prof. Basheer joined Anand 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. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore.
Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.
Dear Shamnad:
The Indian and US patents have no direct corelation.
As you noted, the US patent is what is the composition of matter -or for Indians – the compound patent. This is the patent that got invalidated in US by Teva’s efforts. US5206244 had no Indian corresponding file – for reasons noted by you.
Now let us come to patent being litigated in India – the Indian patent that is being litigated is a much latter patent- which we can put either as a disguised method of use or an apparent composition/ range patent. This Indian patent IN213457 comes from later US patent – US6627224.
Regards,
Freq. Anon.
Dear Shamnad,
One question that arises considering that the animal test model was a woodchuck is : “How much wood would a woodchuck chuck if a woodchuck could chuck wood:
On a more serious note, I wonder this would mean a dilution of the levels of Sec 3(d) challenge in similar Indian cases.
Warm regards,
Nataraj
for Freq. Anon
This raises another interesting question – why did BMS state in the US that the ‘244 patent is for Baraclude… but litigate in India on 213457 which corresponds to US’224!!!!
Also, i see from the decision, that the operative finding is with respect to claim 8 for the compound per se.
Interesting times ahead on this case.
Regards,
Nataraj
Thanks for your comments FA and Nataraj,
The US decision is also illustrative of how the “inventive step” standard can be deployed in India to keep the filter high. With pharma, we’ve had an excessive focus on 3(d)…and less on the other patentability standards…
@ Shamnad:
I am not really sure of Indian generic companies can bring in the US inventive step argument – positioned in present US dist ct order – to India – since the BMS team is appealing this to Fed Ct. More so, I do NOT think that this Order will help Indian generic companies at all on the 3(d) front.
@ Nataraj ji:
Arre aap yeh sawaal puch rahe hain ya meri khichayi kar rahe hai?
They are litigating the formulation patent in India since that’s the only patent that they have granted in India. Incase you are asking why was this formulation patent not litigated in US – the answer seems to be that the US patent is NOT listed on the FDA Orange book and so Teva would apparently not have challenged it in the initial litigation.
Regards,
Freq. Anon.
Dear FA:
I think you’ve misunderstood my point. The District court ruling, while not final, is indicative of the fact that a very patent friendly jurisdiction, can deploy a rigorous inventive step threshold. The framework deployed and the analysis has some merit for countries wishing to deploy strict patent standards …it could well be appealed to the CAFC or even the SC…but surely that does not matter in terms of some lawyer who wishes to bring the “framework” to the notice of an indian court as a point of reference.
3(d) is completely irrelevant to the main US patent and its decision and i think my post makes that amply clear..
Also Natarajs’ point and your reference to the Orange book listed patents is an interesting one. We need to dig a bit deeper. What does the current Baraclude product correspond to? Does it correspond with the later “dosage” patent in any way? If so, why was it not listed? And if Teva has only succeeded in knocking off the basic patent, can it introduce any product with this alleged “dosing” benefit?