Patents for Chemistry and Chemical Innovations

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Chemical Industry Patents

Innovations in the field of chemistry, pharmaceuticals, life science and chemicals are protected through patents as a combination of process and product patent claims. A general review of global chemical companies reveals top global players as, Mitsubishi Chemicals Corporation (Japan), BASF (Germany), ADEKA (Japan), Akzo Nobel (Netherlands), DuPont (USA), Syngenta (Switzerland), Croda (UK), DyStar (Germany), Henkel (Germany), Rhodla (Belgium), Wacker Metroark (Germany), and, Gomaco Corporation( USA). A similar analysis in India reveals list of top Indian chemical companies as, Pidilite Industries Ltd., Tata Chemicals Ltd., UPL Ltd., Gujarat Fluoro Chemicals Ltd., Solar Industries India Ltd., BASF India Ltd., Aarti Industries Ltd., GHCL Ltd.

 

Chemical industry in India is one of the fastest growing sectors. In terms of output, India is the sixth largest producer of chemicals worldwide and third largest producer in Asia.1 Chemical industry caters to various sub-sectors as well such as construction, leather, agriculture, petrochemicals and pharmaceuticals. Given the extent of R&D involved in the industry, it is not surprising that a robust protection of the intellectual property would be required. 

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PATENTING CHEMICAL INNOVATION

Chemical Patent Rahul Dev Patent Attorney

How to protect chemical inventions?

One of the most popular ways for chemical companies of protecting information such as chemical formulae, manufacturing process and diagrams etc. is by way of trade secrets.

 

Trade secrets can be defined as a formula, process, device or other business information that is kept confidential to maintain an advantage over the competitors. The goal of a trade secret would be to protect such information which has its own independent economic value and is not readily ascertainable.2 

 

Trade secrets are also recognised by the Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). Article 1(2) of TRIPS provides that intellectual property includes protection of undisclosed information.

 

Therefore, there is an obligation cast on the member nations to accord protection to such confidential information. The problem arises because in India, protection of trade secrets is not governed by a legislative framework.

 

A trade secret owner can approach the court for civil remedies on account of unauthorized use and claim damages or file a criminal complaint on the grounds of theft under Section 378 of the Indian Penal Code3.

 

The case Zee Telefilms Ltd v Sundial Communications Pvt Ltd4 has even laid down a three-prong test to be satisfied when alleging any unauthorized use or illegal use of confidential information5. 

 

Firstly, such information shall be of Confidential nature. Secondly, Communication of such information on the basis of confidentiality and Finally, the unauthorized use of such information which has caused damage to the petitioner.

 

Chemical patents – an overview

 

Since there is a lack of statutory protection to trade secrets, the next best alternative for protecting the inventions in the chemical industry is by way of patents and thus exist the chemical patents.

 

As per the data released by the Indian Patent Office6, the total number of patents granted during 2016-17 (the last available data from the Ministry) was 9,847 out of which 2,673 patents were granted to applications relating to the Chemical and related fields.

 

In order to have patent protection, an invention in the chemical industry must demonstrate that, if it is novel, the inventive steps involved and its industrial application/utility.

 

In addition to the above, the invention must not fall within the exception to Section 3 which lists out the innovations which are not inventions. Another important thing to be mindful of is the provisions of Section 3 (d).

 

This provision states that the mere discovery of a new form of a known substance, which does not result in the enhancement of the known efficacy of that substance is not an invention and therefore not patentable.

 

For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substances are to be considered to be the same substances, unless they differ significantly in properties with regard to efficacy.

 

Therefore, to be patent protected, it is important the chemical invention of a substance demonstrates enhancement of known efficacy.

 

Selection inventions in chemical patents

As set out above, novelty is an important criteria to be satisfied in case of grant of patents in India. It is possible that a patent application is filed in relation to a compound that is similar in structure to an existing compound with known activity which enjoys patent protection.

 

It is possible that such a compound while falling within the boundaries of an existing patented compound (and therefore of the same class of compounds) demonstrates efficacy which makes the new compound independently eligible for patent protection.

 

This is called a selection invention where ‘novelty arises due to the unexpected class effect’.7 The patent protection granted would be called selection patent.

 

The Indian Patent Act is silent when it comes to selection patents. However, the Novartis (Glivec) case included several observations of the Intellectual Property Appellate Board in relation to selection patents. The Board noted that8:

 

What we observe is that there is no reference of “selection patent” as such in the Indian patent law i.e. the Act. The patentability of an alleged invention is basically determined by establishment of novelty (anticipation), inventive step and industrial applicability of a product or a process [section2 (1)(j), and 2 (1) (l) of the Act] to the exclusion of inventions which are not patentable listed in section 3 and 4 of the Act. However, in our mind we cannot totally deny that there cannot be any possibility under the Indian law, where the required conditions as above cannot be fulfilled, for the grant of a patent in India where the inventive step is demonstrated by way of an inventive selection.

 

In this case, IPAB also formulated a test to determine when can an invention be considered to be a selective invention. The components of the test are:

 

“(1) Whether there is any statement in the specification where the nature of the invention concerns with some kind of selection.

(2) Whether the selection is from a class of substances which is already generally known.

(3) Whether the selected substance is new.

(4) Whether the selection is a result of any research by human intervention and ingenuity opposed to mere verifications.

(5) Whether the selection is unexpected or unpredictable.

(6 ) Whether the selected substance possesses any unexpected and advantageous property. “

 

From a reading of the above, it is clear that a selective invention in the chemical industry can be eligible for patent protection subject to the satisfaction of the criteria laid down by IPAB.

 

Conclusion

Chemical industry is a fast growing sector and is a key element in the growth story of India. With a 100% FDI permitted in this sector, one can be positive that the growth in the sector will continue.

In the 12th Five Year Plan, the Government also proposed to set up an autonomous USD 100mn Chemical Innovation Fund in order to provide an impetus to the commercialization efforts for innovations9.

Therefore, patents in the chemical industry are also expected to increase.

 

 

 

 

Endnotes

1.  http://www.makeinindia.com/sector/chemicals

2.  Bombay Dyeing & Manufacturing Co. Ltd. v. Mehar Karan Singh, 2010 (112) BOM LR 3759

3.  For more details, please see Sahil Taneja and Samridh Bhardwaj,The Viability of Trade Secret Protection, available at

4.  https://indiankanoon.org/doc/603848/

5.  In India, the terms trade secrets and confidential information is often used interchangeably. As the article by Dr. Mohan Dewan points out : “It can be presumed that all trade secrets are confidential information. However, not all confidential information can be considered as a trade secret.” (http://www.mondaq.com/india/x/735886/Trade+Secrets/Theft+Of+Confidential+Information+And+Trade+Secrets)

6.  The Office of the Controller General of Patents, Designs, Trademarks and Geographical Indications India, Annual Report 2016-17 available at http://www.ipindia.nic.in/writereaddata/Portal/IPOAnnualReport/1_94_1_1_79_1_Annual_Report-2016-17_English.pdf

7.  Rachel Jones and Jonathan Atkinson, Novelty in chemical and pharmaceutical patents: a concise overview, Future Med. Chem. (2011) 3(3), 253–255 available at

8.  Copy of judgment accessed from https://www.casemine.com/judgement/in/5b2c81414a93261f9d353597

9.  http://ficci.in/sector/7/Project_docs/Chemical-Petrochemical-sector.pdf

Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filingspatent services in India and global patent consulting services.

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