Patentability of

Biotech/Pharma

By
Dr. Kalyan and Ms. Vinita
Blog: www.indianipinfo.blogspot.com

© 2009 Brain League IP Services Pvt. Ltd

“Biotechnology can transform humanity
provided humanity wishes to be
transformed.”
-Geoffry Carr
 Arguments
Ignore
Deny
Balance
Advantage
A is accused of stealing
diamonds from B
Available evidence

A was seen running from B's house at the time

of theft.
A was caught by police in possession of
Diamonds.
A had asked B to sell the diamonds about ten
times before the theft.
W hy is
Biotechnolog y
Unique?
 Why is Biotechnology
Unique?
Involves living organisms
Diverse fields
Long gestation period
Morals and Ethics
Fear of the unknown
Thin line between discovery and inventions
Patentability of Biotechnology and
Pharmaceutical Inventions
 Patentability
Requirements

Patentable Subject Matter

Industrial Applicability
Novelty
Non-obviousness
Specification
Patentable Subject Matter

Eligible Subjects
Exclusions

India
USA
Europe
 Case 1
Invention - Innoculum of mutually non-
inhibiting Rhizobium Bacteria

(Funk Bros case)

Is it patentable subject matter?

 Case 2
Invention - Pseudomonas Bacteria
capable of degrading oil spills. Four
different plasmids inserted into it.

(Chakrabarty case)

Is it patentable subject matter?

 Case 3
Invention - Oncomouse - cancer
induced into the mouse.

Is it patentable subject matter?

 Case 4
Invention - Genetically modified corn
plant, which produces sweet corn.

Is it patentable subject matter?

 Case 5
Invention - Gene sequence responsible
for Retinitis Pigmentosa

Is it patentable subject matter?

 Case 6
Invention - Human/Animal Chimera

Is it patentable subject matter?

 Case 7
Invention -A method of enhancing skin
complexion by inserting the gene
responsible for fairness.

Is it patentable subject matter?

 CASE 8
Invention - Benzomorphine when
morphine has been patented.

Is it patentable subject matter?

 Case 9
Invention - Mixture of turmeric, milk
and pepper for throat problems.

Is it patentable subject matter?

 Industrial Applicability
Make
Use
Repeat

Substantial
Credible
Specific
 CASE 1
Invention - Express Sequence Tags of
maize

Is it Industrially Applicable?
 Case 2
Invention - Intermediate for a
compound used for cancer treatment

• Thiazole
• 2-chloro-5-chloromethyl-thiazole

Is it Industrially Applicable?
 Novelty/Non-obviousness

Single Prior Art Reference

Combination of prior art
POSA
 Case 1
Invention - cDNA sequence for Epo

Prior art

First 19 amino acids of n-terminal sequence

of Epo
General gene sequence technique

Is it Novel and Non-obvious?

 Case 2
Invention - Alpha-Levo-Benzo-Morphine for
analgesia without addiction

Prior Art

Morphine - addictive

Is it Novel and Non-obvious?

 Case 3
Invention - Paracetomol and Flunerzine

Prior Art

Paracetomol
Flunerzine

Is it Novel and Non-obvious?

 Case 4
Invention - Stent coated with taxol

Prior Art

Stent
Taxol

Is it Novel and Non-obvious?

Questions
?
Contact :
Kalyan C. Kankanala
Chief Knowledge Officer,
Brain League IP Services
Email: kalyan@brainleague.com
Ph: 91-80-41489502/4
Url: www.brainleague.com