On Patent Protection In BRIC. Part 3

The successful grant of a patent nowadays does not necessarily mean the end of prosecution for a pending application; many applicants prefer to continue obtaining protection for other inventions disclosed in the materials. The most common way of continuing such prosecution is by filing at least one divisional application that claims the priority of recently granted parent one. Divisional applications are also used to renew prosecution for any rejected invention in case of a decision of refusal of grant being issued.

The patent legislations of the BRIC countries have very different approaches regarding divisional applications practice. What is similar is that in all BRIC patent offices divisional applications are treated as regular ones to the extent they receive their own serial numbers, are examined separately from their parent applications and, if granted, become independent patents from those granted for parent applications. Differences are in the circumstances and time frames within in which divisional applications can be filed.

The simplest approach giving broadest opportunities to applicants are the provisions of the Russian patent legislation. According to it a divisional application can be filed at any time during pendency of its parent priority-giving application, before the patent for the parent application is registered with the Russian PTO or before the possibility of appealing against rejection of the parent application has expired. Those are indeed large time frames taking into account that the average period of expectation for the letters patent being registered and then published by the Russian PTO is about two-three months after the date when the grant and publication fees were paid, and also that on appeal an applicant has six months from the date that the rejection decision is received. According to the Russian law, a divisional application can be filed whenever the applicant decides and for any invention disclosed in the parent application. However, no independent claim of any granted divisional and parent applications shall literally coincide because otherwise both such patents become invalid with regard to coinciding claims.

Very similar provisions regarding divisional applications exist in the Brazilian patent legislation differing merely in the timeframe for filing which is shortened by the end of examination which is the date of the final report on patentability of inventions claimed in the parent application or the thirtieth day prior to publication of the decision of acceptance, rejecting or shelving the application whichever occurs last.

The practice of filing divisional applications during prosecution with the Chinese Patent Office is quite common and mostly because of the provisions of the Chinese Patent Law restricting the applicant’s ability to file voluntary amendments to the pending claims. Amendments can be made on the applicant’s initiative only at the time examination is requested or within three months from receiving the notification that substantive examination has begun. Other amendments can be introduced by the applicant only if the examiner requires them. However, restricting the circumstances under which amendments can be made on the sole applicant’s initiative, the Chinese patent law does not restrict the number of divisional applications that may be filed. Deadlines for the filing of divisional applications are within two months from receiving the notification on grant and no later than three months after receiving a decision of rejection of the parent application.

Indian patent practice imposes the strictest requirements by the Patent Office on divisioning of applications. The provisions of the Indian Patent law do not look that frightening, at least on the first sight. Indeed, the law states that «a person… may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller that the claims of the complete specification relate to more than one invention, file a further application…». Therefore, it was quite natural that majority of applicants as well as many examiners in the Indian Patent Office (IPA) have interpreted this provision as referring to two equally admissible situations, wherein the first one allows filing of divisional application at any time if the applicant sees its necessity while the second relates to non-observance of unity of invention requirement when the applicant has to file it, if examination of inventions not united by a single inventive concept within those of parent application is desired. This understanding was what guided LG Electronics when it filed a divisional application from their rejected application and surprisingly the divisional application was rejected by the Controller as an invalid divisional with the further conclusion of the Intellectual Property Appellate Board (IPAB) that the applicant’s right to file a divisional application is not unconditional but is subject to existence of a plurality of inventions in the parent application.

Here it is worth mentioning that the Indian Patent law allows filing divisional applications only from the parent application which is undergoing prosecution. That means in contrast to the divisioning provisions of Brazil, China, and Russia allowing continuing prosecution by filing a divisional application from already rejected parent one, in India it is necessary to very carefully anticipate a prospective rejection since after receiving a rejection decision the current prosecution plus potential divisional filing are over. Returning to the unfortunate for LG Electronics case where the IPAB opined that a divisional application should only be filed from claims that are existing in the parent application, it is critically important to prepare yourself for rejection by adding all possible claims to those of the parent application before latter is rejected, so as to be able to file a subsequent divisional application covering all desired subject-matters. Perhaps basing on the distinctly strict approaches of IPA and IPAB to divisional practice, some practitioners have begun questioning the possibility of cascading divisional applications during prosecution with the IPA, in contrast with other BRIC countries, particularly owing to the case with Roche AG, its application was directed to the breast cancer drug Herceptin where divisional application of a divisional application was rejected. Some commentators on this case even conclude that a divisional application filed from a divisional application was held by IPAB as impermissible by the Indian patent law. However, such comments and conclusions appear may be too harsh and although the Controller’s reasoning is indeed rather complicated, the facts show that cascading was attempted from an already withdrawn divisional application for which an examination request had not finally been made. No other BRIC countries similarly allows divisioning from already withdrawn applications — regardless where parent or previously divisioned. The cascading of divisional applications, therefore, may be recognized as equally possible in all BRIC patent offices.

In both Brazil and India, patents for addition can be granted but such type of patents are not available in China and Russia. Patents for addition (termed Certificates for Addition in Brazil) are used to protect a matter introduced to the invention in the pending main application as well as in a granted main patent, the matter being an improvement, a development, or a modification of the invention in the main application. The assignee for main and additional patents should coincide; patents for additions are granted after the main patent is granted or together with its grant and become valid simultaneously with the main patent.

Legislative provisions regarding patents for addition are somewhat more detailed in India compared to Brazil, but generally the requirements and opportunities that they give to how applicants may use such protection of their innovations are similar. They provide that an invention in the patent of addition shall be new but shall not necessarily demonstrate an inventive level over the inventions of the main patent. An invention in the patent for addition shall be united with the inventions in the main patent by the same inventive concept but if not, then the application for the patent for addition shall be converted into a regular application for an invention (or utility model — in Brazil). No separate renewal fees are paid for the patent for addition, but if renewals are not paid for its main patent, then the validity of both is terminated; a patent for addition expires together with its main patent. If the main patent is revoked for some reason, the patent of addition may be converted into an independent patent upon the assignee’s request for the remainder of the main patent term. However, when the patent of addition becomes an independent patent the renewal fees should be paid for the rest of the term.

The term for a patent in Brazil, China, India, and Russia is 20 years, although according to Brazil patent legislation a patent term available after grant shall be no less than 10 years what is quite reasonable due to length of examination currently demonstrated by the Brazilian Patent Office. In Russia the main 20-years patent term may be extended for maximum of five years if the patented solution relates to a medicine, pesticide or agrochemical which market introduction requires a governmental body authorization.

Being granted as a temporary monopoly the patent rights may become subject to compulsory licensing in certain circumstances. Legislation of each BRIC country does contain provisions on compulsory licensing allowing each country to grant compulsory licenses for preventing negative impact from the exclusive rights given by a granted patent, particularly keeping invention not used and preventing it for using by others. Capability of any member state to grant compulsory licenses was first given by the Paris Convention and TRIPS agreement then sets forth further requirements on compulsory licenses. Provisions of Brazilian and Russian patent legislations on compulsory licensing set forth two situations in which such licenses may be granted. First situation is when non-use or insufficient use of a patented invention leads to lack of manufacture and market offer. The second situation occurs when a patented invention provides substantial technical or economical advance but cannot be used without permission of the assignee of an early granted patent, but no agreement can be reached to permit such use. For aiding both situations the non-exclusive compulsory licenses may be granted.

In China first two conditions for granting compulsory licenses are associated with the assignees action or inaction being correspondingly an exercising the granted patent rights in a manner recognized as a monopolizing act requiring elimination of its effect on competition and non-exploitation of a patented invention without justified reason. Two other conditions are associated with significance of a patented invention for the state, according to them compulsory licenses may be granted in situations of national emergency or extraordinary affairs occurs, and when public interest or public health so require. The Chinese law provisions on compulsory licenses are quite broadly stated but yet no compulsory licenses have been granted.

With regard to India compulsory licensing became a much debated issue after the first such license was granted to local generic manufacturer Natco for a patented Bayer cancer-treating drug. Provisions of Indian law regarding compulsory licenses state the conditions under which they may be granted in case reasonable requirements of the public with respect to the patented invention have not been satisfied; when the patented invention is not available to the public at a reasonable affordable price, and if the patented invention is not worked in the territory of India. In situation with Bayer cancer-treating drug the reason for granting compulsory license was allowing the generic version of the drug to be offered in India for a reasonable affordable price — the generic version cost was about 32 times less than the Bayer’s patented drug. This case was one much discussed all over the world and still is cited in whatever discussion about Indian compulsory licensing system. However, quite noteworthy for taking into account is the third reason of compulsory licensing which is non-working a patented invention in India. Working invention means its commercial exploitation in India in relation to manufacture and sale of the patented product/process by the patentee or a licensee. Working shall be reported annually by submitting a Statement of working every calendar year by March 31. Failure to report working raises presumption of «non-working» which enables any interested party to apply for a compulsory license. Absence of proper working statement may even be a subject for financial penalty of 25,000 USD, although yet never imposed. What reasons for non-working may be recognized as excusive? Answer to this question shall in no way be considered as a legal advice, but trustworthy commentators of Indian patent practice name the following among appropriate reasons: undergoing a regulatory review with regard to invention, market research still being in progress, commercialization study being initiated, undergoing negotiation with an Indian party for a license for manufacture in India, and experienced continuing difficulties in working the patent in India. Once again these reasons are neither exhaustive nor recommended, moreover there is no definite answer to the question of how long any of reasons for non-working may be used and positively accepted by the Indian patent Office.

At the end of this comparative review some words should be said about regional and global cooperation of BRIC countries patent offices. Only Russia is a member of a regional patent convention, which is the Eurasian patent convention, uniting eight countries on which territory protection can be provided by a regional patent having similar force as the national ones. One of the recent trends is the Patent Prosecution Highway (PPH) that allows acceleration of patent examination basing on patentability considering product prepared by another patent authority. PPH continuously passed through several steps of its development starting from bilateral agreement and now resulting in Global PPH phase uniting 17 patent offices. The Russian PTO was involved into PPH from nearly its beginning and moved step by step to becoming a party in Global PPH. Chinese patent office also actively participates in PPH, but mostly in the frames of bilateral agreements one of which exists with the Russian PTO. Neither Brazil, not India is a member of any PPH form of cooperation, although it may give at least for Brazil a tool for accelerating examination to an appropriate duration, and only Russian PTO participates in the Global PPH.

BRIC recently received one more member which is South Africa, an important economy in African continent and a country with a developed patent system. All together BRICS countries have about 42% of world population, cover 30% of world territory and get a share of more than 15% of all patent applications filed annually in the world. It is expected that the number of applications filed with the BRICS countries patent offices will continuously grow up and therefore bringing knowledge of these systems to their potential users is of critical importance. It is expected that this article which main purpose was to present a comparative overview of BRIC patent systems will open a series of publications focusing on various aspects of each of the systems, their updates, and important decisions, being certainly expanded over other protective rights such as trademarks and industrial designs.