If you outsource IPR (patent) work, what are your major reasons?

a) Lack of in-house resources
b) Cost containment
c) Time crunch for deliveries
d) Helps control IP investments
e) None of the above
Please specify any others
Vote and see at: http://polls.linkedin.com/poll-results/67295/tfldm

Omnibus Claims

Omnibus is the Latin word meaning "for all, for everyone," and as per the dictionary, one of the meaning is “a printed anthology of the works of one author or of writings on related subjects”. Patent claims are expressions, usually follow the description of the invention in a patent or patent application, and define, in technical terms, the extent of the protection conferred by a patent or by a patent application, when applicable. They are of the utmost importance both in examination proceedings and in litigation, for instance during infringement actions. There are two basic types of claims: independent claims and dependent claims. Claims further can be defined as Jepson claim, Markush claim, Means-plus-function claim, Product-by-process claim, Swiss-type claim and Omnibus claim based on the structure.
Omnibus claims are common in UK and Indian patent practice. They are worth including while filing a patent application. They do have to be drafted carefully to avoid including prior art embodiments. Omnibus claims are not allowed in U.S. patent applications and should be rejected by the patent examiner because such claims are indefinite. See MPEP § 2173.05(r).

An omnibus claim is usually added as the last claim in order to include the drawings and description within the scope of the claims. So, while the claims put boundaries of what is being claimed as invention, the omnibus claim expands those boundaries to include the parts of the invention mentioned in the specification and drawings but not expressly mentioned in the claims. The omnibus claim is usually used in order to ensure that nothing that has been mentioned in the description and drawings has been left out of the claims. In India, it is possible to exclude an omnibus claim. The Indian Patent Office does not require the inclusion of omnibus claims, and in fact, specifies in its Manual of Patent Procedure that omnibus claims are allowed only if the specification includes a statement of invention. However, omnibus claims are very useful in ensuring that any aspect of the description that has been omitted by accident will be incorporated by reference. For this reason, it is recommended to include omnibus claims for the sake of protecting whatever is disclosed in the drawings and specification apart from the claims. Probably it’s just a tool used by patent drafters now to 'feel' safe that they have covered everything.

Lab Auctions ..................................................

We have heard of art auction site to merchandise auction site but did we anytime heard about industrial equipment auction site, the answer might be "No". Yesterday while I was browsing through some site I saw some we blink for lab auction, we can access this site through http://www.equipnet.com/, here you have webinar auction of varied system for industrial use, and mode of payment is like general auction sites like eBay and rediff auctions.

But what about the guarantee of the product, that is the main issue which comes in my mind, how can we rely on such sites?

Pfizer: offering Prescription drug to Unemployed

During this current recession Pfizer came forward with a new initiative named MAINTAIN program which stands for "Medicines Assistance for Those who Are in Need" For those who have lost their job from January 1st 2009 and having financial need and have been taking Pfizer medication for at least three months before losing their job and have no prescription drug insurance.Enrollment and acceptance in the program will help the unemployed and their family’s s to access and receive Pfizer prescriptions free for one year.

It’s great to know that world's largest conglomerate is working for a cause :)

Technology licensing vs. Product licensing

License are granted for business, products and technology. Business licensing is only concerned with manufacturing, sales and marketing of goods. IP professional are not much concern with this class of licensing. Product licensing relates to transactions that enable a buyer to duplicate and produce molecule or a device that has already been proven by the seller. In this kind of situations, the buyer will need essential surroundings to make profit from the license.
Technology licensing in itself a huge field, actually deals with licensing of non-tangible property rights generated by R&D activity a company and in most of the cases protected by one or another kind of IP. This kind of transactions mainly designate transactions for pre-commercials designs, data, R&D concepts, business plans, method of manufacturing and patents covering them. Technology licensing is becoming an increasingly important transaction category.
As we discussed, technology rights are usually expressed in three important form of IP such as patent, trade secret and copyrights. One of the requisite for technology licensing is technology valuation. It would be assumed that IP protection exists when considering the valuation of technology. Hence, we actually value IP. The extent and strength of IP protection are dimensions of a technology valuation.

Measure of R&D, patenting and licensing is available through Association of University technology managers (AUTM) http://www.autm.org/. But off course, there are some issues with technology licensing. In technology licensing, there is no past history. The issue of forecasting play a major role, all data needs to be developed from sketch. Over all uncertainty in technology licensing is higher then product or business licensing. This difference can be narrowed by skillful due diligence and analysis.

World IP Day Celeberation in India

It was the occasion of celebrating word IP day in India. The joint secretary of DIPP, Ministry of Commerce and Industries, Government of India, Mr. N.N Prasad was addressing the IP community. He told that India is making right move in development of robust IP system and very soon patent office is going to operationalize authority for ISR and IPEA. It is a movement of proud for IP community that India has been awarded such a status.

He told that the government is also putting efforts to protect our traditional knowledge. There has been misappropriation of Indian traditional knowledge in past for e.g. turmeric, basmati and now Yoga. He also discussed about hurdles coming in the way of transaction of generic drugs to other countries, since Indian is one of the biggest generic drug exporter.

Mr. Madhav Lal, the additional secretary and development commissioner for micro, small and medium size industries also shared his views on this occasion. He advised that Indian SME’s need more orientation for protection of their inventions.

The government has come up with various responses from time to time such as national competitive program with 280 crore rupees. This would help in building awareness for intellectual property and creating sensitization in SME plus conducting training. Ministry also has a plan to organize around 150 IP related programs over the period of 5 year and conducting pilot studies which would be a silent feature to support IP facilitation. He told the government has started another scheme under which concept of idea incubation and funding for its nurture has been introduced. Twenty five institutes have been approved under this scheme, assisting 6.25 lakh rupees per year for each idea and each institute would get fund for 10 ideas per year. Award giving program is also introduced. The objective of award is to promote inventors. Finally, Mr. Lal told that main barrier for SME is lack of resources, confidence, reliability and ministry is helping them to come over it.

The next blockbuster in queue..........

Rapamycin (sirolimus) derivative Everolimus (RAD-001) was developed and marketed by Novratis, Earlier the product was approved as immunosupressant under trade name Certican for rejection in heart transplantation and lately it was approved as an drug for treating kidney cancer and currently many researchers are considering the use of Everolimus and other mTOR inhibitors for different types of cancers...so wait for a new cancer blockbuster is not long :)

Licencing deals leader-Q1 to mid Q2, 09 ............ and the winner is

Merck & Co (NYSE-MRK) company with value and vision has been quite active in licensing in different segments in Q1 to mid Q2 of 2009.

Earlier at the beginning of this year in Jan 2009, Merck & Co signed a global strategic alliance with Galapagos (EURONEXT-GLPG) drug Discovery Company in Belgium to develop potential drug targets for obesity and diabetes. The deal potential is $251.7M. Under this term Galapagos will be responsible for discovery and preclinical development of small molecules and Merck will licence each candidate for clinical studies and commercialization on global scale.

After this deal today Merck & CO has signed a licensing deal with Medarex, Inc. (MEDX) and Massachusetts Biologic Laboratories worth $165M, wherein Merck & CO will have exclusive worldwide license agreement for CDA-1 and CDB-1 (also known as MDX-066/MDX-1388 and MBL-CDA1/MBL-CDB1), an fully human Mab combination developed against Clostridium difficile toxins A and b for further treatment of C. difficile infection (CDI).

These licensing deals clearly indicate Merck's interest in biopharmaceutical market and metabolic disorder segment :)

After Pfizer, merck its now GSK .....

Some time back I was reading about John Mckeen who went on to become CEO of world's largest Pharmaceutical company "Pfizer (NYSE-PFE)", Mckeen once said "idle money was a non-productive sin" and to make more money regardless of business line and till now Pfizer has displayed this pure pragmatic approach of making profits with mergers and acquisition ......and next to follow its path is GlaxoSmithKline (NYSE-GSK)....

After Pfizer’s $68 Billion deal to acquire Wyeth, then long time waited acquisition of Schering-Plough Corp by Merck & Co for $41.1 billion came along..... In queue was GlaxoSmithKline and GSK yesterday announced that it will acquire Stiefel for a cash consideration of $2.9 billion. A potential $0.3 billion cash payment will be there on future performance.

In the coming decades likewise AIDS drug collaboration between Pfizer and GSK, we may expect collaboration of these two giants to capture the overall derma segment of world :)

Outsourcing to India

Outsourcing is a need in current economic scenario. Charles Robert Darwin theory talks about “Survival of the fittest" which is shorthand for a concept relating to competition for survival or predominance. By outsourcing work, companies used to concentrate on more important work. Outsourcing is an outcome of globalization of world. We need to see it with a positive outlook”

Patent troll

Patent troll term was coined in early 90's for companies who used to file patent law suits very aggressively, In 2001 this was popularized by Peter Detkin then former assistant general counsel and later went on to become vice president in Intel, it was he who first used it to describe TechSearch and their lawyer, Raymond Niro, while he was with Intel in defending a patent suit against them. Earlier it was detkin who used the term "patent extortionist" to refer to the companies who were trying to mend millions by suing Intel.

Later Peter Detkin became founders of Intellectual Ventures in late 2002, this is quite ironic as intellectual venture is one of the largest patent troll in world and detkin had described the term “Patent troll” in derogatory way while he was associated with Intel.

At present intellectual venture has started its full fledged operations in Bangalore for quite some time and has appointed ex director of IIT Mumbai for its India operations.

Though IPR heat wave has started a decade back in India, but it's going to stay long as bigger patent trolls are making their hub out here in India :)

Current trends in KPO industry

The term KPO: Knowledge process outsourcing was coined around decade and half back in United States and at present India is a global KPO hub for rich talent pool and cheaper charge rates.

Recently a new trend is been followed, i.e. of weekend analyst, wherein people with 2-9 years of experience in any stream of science working in business, finance, intellectual property and market research work as freelance analyst in weekend and the price charges ranges from 30 to 80 dollars per hour.

At present there are more than 80 or so small and big KPO's in India but I hope by the end of this year the number's will cross more than 300 :)

"Weekend analyst :Give assignment by Friday and get it on your table by Monday :)"

What is the best domain to outsource intellectual property work to India

What is the best domain to outsource intellectual property work to India.
Business analytics comp(KPO) , Indian Based Law firm, Legal Process Outsourcing,LPO
Limited Liability Partnership or None of the above
Participate in a poll condcuted on following link at linkedin: http://polls.linkedin.com/p/30413/jrcua

Pfizer and GSK deal to paralyze gilead sales

Today's top story Pfizer and GSK pooling up for AIDS and HIV drugs, In this new venture GSk will have 85% stake and Pfizer 15% and will have 11 marketed drugs in its goodie bag including GSK top-sellers Combivir and Epzicom which together generated sales of 1.6 billion pounds ($2.4 billion) in 2008, it also includes six new medicines, of which four are in mid of Phase II development.

this risk sharing partnership will foster pfizer's new drug such as Selzentry entry while filling up GSK older patent portfolio and later pfizer's benefit's from GSK overall global HIV/AIDS market distribution.

The new company will hold nearly fifth of market against HIV/AIDS treatment. This is a clear threat to Gilead which should rather focus in new development and expansion of it's HIV/AIDS portfolio in future to maintain its present market cap of $40 billion.

Today Gilead's profit pills combined sales in $4 Billion but Gilead should straterzise its future in a careful way to upbeat the new alliance.

Different means to get the chemical structure of a compound

Recently I was discussing with my friends and colleagues that what are different means to get the chemical structure of a compound searched using various data bases specially in those cases where we don’t know the molecular formula or substructure or CAS number of a chemical compound. We can’t get them in STN or SciFinder. I mean if we only knows a code for such a compound for e.g. YH008 etc then how will we reach the structure? What will be search strategy? Is there any particular software for the same? The code may be for a pharmaceutically useful chemical moiety and some time we require it to give freedom to operate opinion etc.

The following could be a strategy; we should first start with goggling around to get some more information about the molecule and also collect what other information we have in hand.

It is unlikely that the code would be used in a patent application. Our best bet for finding a compound by a code is to search the chemical literature, the medicinal chemical literature, as well as meeting and conference proceedings. PubMed is a good place to start, then some of the databases available on STN. The scientists involved with the research have probably published.
The chance of presenting in any seminar or making a patent under the code also seen. Though we are not always getting the details about the product through patent or journal search at least we can get some reference which will help to get the structure. Also take advantage of any other information that you have, such as the company involved, and the names of any researchers.

Inventors can use the lab code for compound. Code may be company’s internal code. Usually such coding is given when the research molecule is still under investigation; say for instance if it is in CLINICAL TRIALS.


Apart from CAS you we may also try following European databases: European Inventory of Existing Commercial Chemical Substances European List of Notified Chemical Substances The code structure is XXX-XXX-X.
If after all the efforts, the search results are negative in all three above we can say that the number, like YH008 might is the coding used by a single company to identify their internal intermediate or final product. In this case the structure is usually not public domain. There may be some companies involved in producing various database tools. Those companies could also help.

Your views are invited…………

Indian Patent Agent need Identity Card

As per the Indian Patent Office notice, 15 April is last date to submit two recent size photographs with an application to issue a photo ID card for all Indian Patent Agents. Then onwards only agents with valid ID card would enter the Patent Office premises. In case, Indian Patent Agent sends his repersentative for submitting some documents at Patent office then he has to bring an authorised ID card signed by patent agent with a photocopy of Identity Card.

Intellectual Property Sensitization in India

Recently i got a chance to attended a seminar on intellectual property sensitization programme in India and i was amazed to know the growth achieved by Indian Patent Office in number patent application filing, though large part was due to national phase application filing.

I was listing to Mr. Kurian, the Controller General of Patent and Trademarks (India). He was addressing to Indian IP Intellectuals and scientist from various streams. He revealed that approximately thirty five thousand patent applications were filed last year and out of which eighty percent were from outside, means national phase applications and remaining were from India. He had also claimed that fifteen thousands patents were granted last year. He also shared that around 64 patent oppositions cases (before grant) were also filed in India. This is really a very good news for IP community world wide and i believe that the number patent opposition will grow in future. Its was also proposed from IP community that Indian Patent Office should start work on an idea of establishing an innovation museum.

Newly appointed Controller General of Patents, Designs and Trademarks Mr PH Kurian

We hope that appointment of Mr. PH Kurian will definetly bring some good administrative changes and make the Indian Patent Office more efficent in delivering results. He may not have much expereince in handling complex IP matters but we are sure that he will be good administrator.