Technological Innovations 2010


Patent activity in different technological fields is now commonly used as a measure of innovation taking place in those fields. Increasingly the patent databases are becoming global and web-based allowing patent data to be integrated and bench-marked on time series, so that it is now possible to take an overview which of these areas are expanding or contracting.

Derwent World Patents Index (or DWPI), a constituent of Thomson Reuters is one such commercial database containing patent applications and grants from 44 of the world’s patent issuing authorities. By way of value added service, each patent included in this database is supplemented with a short summary by an expert in the field detailing the nature and use of the invention described in the patent. These are also then indexed into alphanumeric technology categories to allow retrieval of relevant patent documents by users.

Each record within the database corresponds to a patent family grouped around a unique invention for which a basic patent is usually filed by an applicant in his / her own country and subsequent applications in other countries will claim priority rights based on this original application and filing date. The worldwide applications and publications for an invention are collectively known as a patent family. DWPI is known to have some 20 million “inventions”, corresponding to tens of millions of patents, with almost a million new inventions added each year.

Key Technological Areas

Since 2009, DWPI began issuing ‘State of Innovation Report’ covering analysis of 12 key technology areas and their global innovation based on the volume of patent activity. ’2010 State of Innovation Report’ issued by DWPI is the second in the series with the same technology areas as before for comparison and benchmarking purposes. This article is essentially a brief review of this ’2010 State of Innovation Report’

An overall state of patent activity in the 12 key technology areas as presented in the report is shown in the following table:

Technology Area Volume 2010 Percent Total Rank 2010 Rank 2009
Computers & Peripherals 212622 28% 1 1
Automotive 88867 12% 2 4
Telecommuni- cations 87920 11% 4 2
Semiconductors 86479 11% 4 2
Pharmaceuticals 59350 8% 5 5
Medical Devices 52117 7% 6 6
Petroleum & Chemical Engineering 42304 6% 7 7
Domestic Appliances 36816 5% 8 9
Food, Tobbacco & Fermentation 36048 5% 9 8
Aerospace 32622 4% 10 10
Agrochemicals & Agriculture 22726 3% 11 11
Cosmetics 6438 1% 12 12


Noteworthy findings, according to this report, include the following.

    • Despite a 6% decline in total patenting volume from 2009, Computers & Peripherals maintained its lead as most innovative technology area
    • Notwithstanding the overall ranking, Aerospace patent activity increased by 25% from its 2009 level; this sudden spurt was due to 108% increase in Space Vehicle and Satellite Technologies, a sector within the Aerospace industry lead by Japanese manufacturer, Sharp and the Korean manufacturers LG and Samsung.
    • Semiconductor patent activity decreased by 9% from its 2009 level in 2010 overall, driven by double-digit decreases in three Semiconductor subsectors: Integrated Circuits; Discrete Devices; and Memories, Film and Hybrid Circuits.
    • Automotive sector maintained the patent activity volume as before but was moved up to the second position in 2010 due to marginal decline in other areas, viz., Telecommunications and Semiconductors industries.

Sectoral Highlights

Snapshots of some important sub-sectors with a list of top ten assignee companies / countries and their patent volumes are shown below.

Space Vehicle and Satellite Technologies

  • Sharp(JP) 166
  • LG(KR) 156
  • Samsung(KR) 119
  • Mitsubishi Electric(JP) 101
  • Sanyo (JP) 89
  • Kyocera (JP) 85
  • Applied Materials (US) 83
  • Dupont (US) 81
  • Toyota (JP) 73
  • Fujifilm (JP) 60



  • Bayer Cropscience (DE) 149
  • BASF (DE) 143
  • Sumitomo Chemical (JP) 109
  • Syngenta (CH) 68
  • Dow Agrosciences (US) 51
  • Univ. S. China Agr (CN) 51
  • Dupont (US) 24
  • Nippon Soda (JP) 24
  • Univ. Nanjing (CN) 33
  • Clariant(CH) 22


Pharmaceuticals (Organic)

  • Seiko Epson JP 385
  • Hoffman La Roche CH 233
  • Univ California US 189
  • Dokuritsu Gyosei Hojin Sangyo Gijutsu JP 183
  • Olympus Optical JP 178
  • Abbott Labs US 165
  • Nikon JP 142
  • Univ Seoul Nat Ind Found KR 139
  • CNRS FR 136
  • Univ Tokyo JP 127


Alternative Powered Vehicles

  • Toyota JP 2179
  • Nissan JP 639
  • Honda JP 467
  • Nippon Denso JP 340
  • Matsushita JP 287
  • Hyundai KR 284
  • GM US 243
  • Robert Bosch DE 217
  • Daimler DE 209
  • Aisin JP 166


Smart Media (Computers)

  • Samsung KR 274
  • Matsushita JP 156
  • Toshiba JP 139
  • NEC JP 127
  • Brother JP 111
  • Toppan Forms JP 109
  • Sony JP 91
  • Mitsui Chemical JP 85
  • Electronics & Telecom Res. Inst. KR 82
  • Dainippon Printing JP 76


Diagnosis / Surgery

  • Fujifilm JP 529
  • Olympus Optical JP 456
  • Toshiba JP 453
  • Toshiba Medical JP 396
  • Siemens DE 361
  • Konica Minolta JP 269
  • Philips NL 258
  • Tyco Healthcare Group US 243
  • GE Medical Systems Global Tech. US 197
  • Hitachi Medical JP 175


Chemical Engineering

  • Toyota JP 515
  • China Petro-Chem Corp CN 267
  • Univ Zhejiang CN 240
  • Matsushita JP 198
  • Univ Nanjing CN 163
  • BASF DE 152
  • NGK Insulators JP 133
  • Nippondenso JP 132
  • Dokuritsu Gyosei Hojin Sangyo Gijutsu JP 128
  • Robert Bosch DE 127


Semiconductor materials and processes

  • Samsung KR 1566
  • Hynix Semiconductor KR 1435
  • Toshiba JP 1429
  • Matsushita JP 977
  • NEC JP 925
  • Canon JP 822
  • Seiko Epson JP 717
  • Sony JP 673
  • Sharp JP 663
  • IBM US 591


Mobile Telephony

  • Samsung KR 1627
  • LG KR 1251
  • NEC JP 1146
  • Seiko Epson JP 1051
  • Matsushita JP 1035
  • Sony JP 930
  • Sharp JP 857
  • Kyocera JP 851
  • Qualcomm Inc US 824
  • ZTE Corp CN 776


Further Reading


Inventorship Disputes


Inventorship is a fundamental issue in patent law. Identifying inventorship in a patent application is usually a routine task administered by the lead inventor or an appropriate group of the assignee institutions. With vast majority of patents and patent applications, even where research and development work proceeds through teams of large number of individuals who all have a common obligation to assign the invention to their employer, inventorship is frequently not a concern, and the inventors are identified without conducting an in depth investigation of the nature of the contribution of each “inventor” to the claimed invention. Inventorship disputes, when they occur, are usually surrounded by emotional issues difficult to resolve, and may result in lengthy litigation.

An enquiry into the question of ‘inventorship’ assumes importance from two angles. Firstly, a justice to patent policy demands that inventorship should be correct for all patents irrespective of the fact that inventio n is commonly assigned. Secondly, the ‘inventorship’ titles not identified correctly before filing the patent application could lead to a ‘muddy’ mess that cannot be easily resolved later and the stakes could really be enormous when things go wrong. While patent applications with incorrect ‘inventorship’ can be corrected in some cases, particularly at the pre-grant prosecution stage relatively easily in many jurisdictions, it must be realized that such applications run the risk of getting eventually invalidated. Many court proceedings are reported, however, where inventorship has been directed to be corrected instead of invalidating the patent.

Indentifying Inventors

The patent statutes almost everywhere require that a patent application be filed only in the name of the inventor or inventors. Section 6(1)a of Indian Patent Act specifies that a patent application be filed by any person claiming to be the ‘true and first inventor’ of the invention. Ironically, no definition has been provided for the ‘true and first inventor’ in the Indian Patent Act. It also does not state if two or more persons can apply jointly for a patent as co-inventors while it does have provisions to deal with co-owners of the patent (Section 48 and 50). Nevertheless, occurrence of co-inventors in India is as common as elsewhere in the world; it is believed that of all patent applications globally more than 80% have co-inventors. Inventorship disputes in India are not yet, however, as common as these are abound in US and other jurisdictions of Europe, Australia etc. But there is no doubt that this issue could assume greater significance as the patent filing grows with time in India.

US Patent law is more explicit on the issue of ‘co-inventors’; 35 USC § 116 states, ‘When an invention is made by two or more persons jointly, they shall apply for a patent jointly and each make the required oath. It further states that inventors may apply for a patent jointly even though: i) they did not physically work together or at the same time; ii) each did not make the same type or amount of contribution; or iii) each did not make a contribution to the subject matter of every claim. This statute also establishes that patent application with erroneous inventorship can be corrected, if any omissions or commissionshave been made without any deceptive intention by the applicant.

It must be realized that, in the United States unlike in every other country, only an inventor can apply for a patent (35 USC §111). The EPC also recognizes that there can be more than one inventor on a patent application (Article 59); the rules determining joint inventorship, however, are governed by the national laws in each European member country.

Authorship versus Inventorship

While the terms ‘author’ and ‘inventor’ are not synonymous, yet it is generally assumed that the right to inventorship comes automatically if one is a co-author in publication on the subject matter of the patent. Authors of journal articles in the scientific world, however, are typically those who are involved in designing or performing scientific experiments and / or analysing and writing the resulting manuscript. It is also generally granted for recognition of hard work put in by the graduate students and it is also customary to grant first authorship to such graduate students who substantially contribute in designing and carrying out the experimental work in the interest of their career advancement. There is a strong tradition of gifting the authorship in the scientific work for the reasons enumerated above.

In contrast, inventors of subject matter in patents are identified on the basis of their involvement in the original conception of the invention and as per the patent law and the order of inventorship imply nothing. Therefore, inventors in the patent application need not be the same set of people as in scientific publication. The justification of inventorship in a patent application is often linked to the individual contribution leading to the claims in the patent application. In many jurisdictions, the names of proposed co-inventors are also sometimes sought to be removed when claims corresponding to their contributions are not admitted by the Patent Examiner at the prosecution stage. Nonetheless, in many institutions, co-inventorship in a patent is given as much weight as to the first-authored publication in a good scientific journal. This motivates the graduate students and other minor contributors also linked to a project related to the subject matter of the patent on routine tasks to seek inventorship.

While an erroneously identified “inventor” not actually involved in any way in the conception of an invention, or an omitted inventor who should have been named may spell a great deal of the trouble for the patent owner, gifting inventorship by way of courtesy may have serious negative consequences leading up to patent being invalidated. Inventorship is therefore a crucial issue in the patent law in many countries and therefore must be dealt with seriously.

As a practical guide, it is recommended that the inventorship should be determined based on the contribution of conception of invention and reduction to practice by each co-inventor in relation to the claims in the patent. Even though, the claims themselves do not describe the invention, they are basically drafted to distinguish the invention from the prior art and set the boundaries in legal terms to exclude potential infringers. Thus, the claims which lie at the core of a patent should be basis in determining the co-inventors.

Besides risking invalidation of a patent, other unwanted consequences can hurt a patent owner who does not name an inventor. In a real-life example of the patent on transgenic cotton held by Monsanto, it is reported that a university graduate student who contributed to an invention was not named as an inventor while other named inventors assigned the patent to Monsanto. This was discovered by Monsanto’s competitor, Aventis, who sought to have her correct the inventorship on the patent and then transfer her rights to the technology to Aventis. She did exactly the same and thus Aventis received the same ownership rights as Monsanto which would have not been possible without a license from Monsanto.

Investigating Inventorship

The responsibility of determining correct inventorship often falls on Patent Attorneys duly qualified in the field related to subject matter of invention, especially when a dispute arises. An appreciable body of knowledge as practical guidelines to conduct such inventorship inquiries exists today. It has been suggested that such inquiries should as far as possible be conducted in writing and the line of questioning be set in a series of ‘who’, ‘what’ and ‘where’ questions to help understand the true nature of invention and respective contribution of potential inventors whether named or not.

The possible ‘Who’ questions could be – who conceived the invention, who directed the work, who followed directions etc. Similarly, the ‘What’ questions could be – what was the role of each individual in the invention, what experiments were conducted, what proto-types were developed etc. And similarly, the ‘Where’ questions could be – where was the invention developed, where are the records of invention, where are the inventors and witnesses etc. In inventorship determination exercise, a ‘but for’ or a ‘material effect’ test has also been suggested. In this exercise, one needs to gauge the ‘material effect’ on the state of invention in absence of the stated contribution of each potential co-inventor. In other words, it requires visualization of the state of invention, ‘but for’ the contribution of the potential co-inventor. In any case, such findings are advised to be seen together with corroborating evidences of laboratory notebooks, experimental data, reports, technical presentations, etc.

Resolution of Inventorship Disputes vis-à-vis Inventorship Correction

Inventorship disputes are often difficult to resolve satisfactorily because each party involved is usually emotionally charged. Some possible sources of inventorship disputes in different collaborative arrangements are shown below.

Collaborative Arrangement Inventorship Issue
Academic Collaboration: Graduate Students and Academic Supervisor Whether the graduate students contributed in some way to the conception of the invention, or merely acted as a pair of hands to carry out the research plan of the PI. In addition, the graduate students leaving the group may join industry and pursue research as extension of their previous work. Care is required to avoid such conflict with clear understanding, preferably in writing.
Academic Collaboration: Between two or more groups headed by Professors of the same department Such collaborations are usually with no written agreement and enquiry would be required to directed to find nature and significance of contribution each individual or group involved.
Industrial Collaboration: Industry sponsored research carried out by a research group based at university department Such collaborations are usually with written agreement on assignment in favour of the sponsoring company but most often the question of determining inventorship or a methodology to be adopted for this is ignored. Moreover, industry staffs closely monitor the research progress at the university and are seen as an integral part of the research team. In this scenario, industry may downplay the role of university collaborators as inventor(s).
Industrial Collaboration: Between two or more industries out of necessity Industrial parties generally proceed to collaborate with an appropriate agreement to avoid possible misgivings. Sometimes, however, the parties conclude the agreement on inventorship and leave out the question of sharing ownership of the patent. When inventorship dispute erupt s due to unforeseen developments on research front, such an agreement puts the question of ownership in jeopardy.
International / Bilateral Collaboration: Between two research groups of Government owned laboratories from different countries Research cooperation proceeds under an umbrella agreement between the two Governments having a clause on IPR sharing between the two sides in a very broad sense. Sometimes, ownership of IPR between the two bilateral groups is agreed upon in the specific research project for cooperation. But the question of inventorship is generally left open. In fact, the question of involvement of individual scientists is also considered in the context of visit abroad rather than the element of research program and potential IPR resulting there from.


Most patent laws tend to have certain provisions to correct inventorship details. In the US law, correction of inventorship is allowed during the pendency of a patent application and also after a patent has issued provided the patent applicant proves that the omitted person was a true joint inventor or the joint inventor was omitted by error as the case may be and that the omission was without deceptive intent on the part of the inventors. There also is an ‘interference’ provision in the US law which is sometimes invoked in the context of ‘inventorship dispute’. The interference proceedings are directed to identify the party that first invented who is recognized as the true inventor as per US law.

The ‘declaration of inventorship’ is obligatory in the Indian patent law and the applicant is obliged to furnish correct details on the prescribed form along with the patent application or within a month there from. Further Section 28 of Indian Patent Act provides that a request may be made at the pre-grant stage in the prescribed manner by the applicant or an interested party for mention of the names of relevant individuals as inventors or conversely for removing those names who ought to have been mentioned in a patent application. Such requests are permitted to be made not later than two months after the date of advertisement of acceptance of the complete specifications. The decision of the Controller of Patents in such cases is subject to a judgment (about the inventors and those involved in substantial inventive activity) arrived at through prosecution proceedings including notifications, clarifications, hearings etc. and may take a long time with uncertain outcome.


It has been generally suggested that in resolving inventorship disputes, arbitration by an independent neutral arbitrator having due credibility, knowledge and scientific and legal background relevant to the field of invention tends to me most advantageous and cost-effective. Arbitration is a subtle and quickest way of settling the dispute while a typical court case might take years to close. The parties who usually agree to appoint a mutually acceptable arbitrator are at ease to present their case for inventorship in an organized forum. A scientist arbitrator who understands the technical significance of contributions made by alleged co-inventors tends to make fine distinction between those involved in conception of an idea and those that are simply engaged in reducing to practice.


‘The patent owners can change but inventors cannot’ is the underlying concept of most patent laws and must be understood well. Simply participation in the reduction of the invention, without contributing in the final conception of the invention, does not make an individual an inventor. Furthermore, an individual involved in reduction of the invention by way of making a proto-type or production process, is not regarded an inventor even if he / she makes changes to the production method while reducing the invention to practice unless the contribution is leading to complete conception. If a person involved in the proto-type development or production process for reduction of the invention to practice contributes a feature resulting into an additional useful purpose leading to an additional specific claim in the invention then that individual is clearly a co-inventor.

Patent savvy organizations and industry should maintain the records of research projects and experimental notebooks tidy and up-to-date and carry out collaborative works under well defined agreements with due regard to patent ownership as well as inventorship details. Most often there is no consideration to inventorship issue and how to resolve disputes on the identity of the correct inventors. A well-drafted scientific collaboration agreement should also contain a dispute resolution mechanism, such as neutral arbitration

Further Reading

  1. Remus, Edward W., and Laura M. Personick, “Clearing Up The “Muddy Metaphysics” Of Patent Inventorship (Or — How To Conduct An Inventorship Determination)
  2. Seymore, Sean B., “My Patent, Your Patent, or Our Patent? Inventorship Disputes within Academic Research Groups” Albany Law Journal of Science and Technology, Vol. 16, pp. 125-167, 2006.
  3. Goldstein, Jorge A and Timothy J Shea, Jr, “Inventorship disputes don’t have to be costly”, Managing Intellectual Property, July/August, 2006
  4. Patent Lens, “I am an author on the paper… … why am I not an inventor?”

Searching Patents for Medicines


If you are on an expensive brand name drug, the chances are that the basic ingredients and / or their processes of making are patented. And if you are required to regularly take such life-saving drugs; again chances are that you have already learnt the difference between the patented drugs and their generic versions which are many times more affordable. Well, if you’re taking an expensive brand-name drug and just do not know if a generic copy of it is available, you can check up with your doctor who would probably know. If not, however, you can look it up online at sites such as You can easily find an available generic version of the drug in which you are interested or of another patented drug in the same class that works equally well.

What is the difference between ‘patented’ and ‘generic’ drug? A patented drug is usually the original drug discovered and developed by research-oriented pharmaceutical company. Such a new drug is invariably marketed after patent protection has been sought. Patent protection ensures for the company a virtual monopoly for about 20 years (to help recover its investment on developing the drug). Patent protection, however, is not a necessary condition to put the drug into the market but more of a commercial prudence. It is, however, necessary to get necessary clearance for marketing from the Government by providing required safety and clinical data. In US, the Department of Food & Drug Administration (FDA) is the concerned Government agency to which the drug manufacturers submit a ‘New Drug Application (NDA)’. Once the FDA is convinced about the drug’s safety, the company is allowed to market its product under a desired ‘brand name’ till the drug’s patent is valid.

Generic drugs are essentially equivalent to patented drugs that have gone off-patent or where there is no patent protection available to the original drug. They have the same active ingredients, dose, dosage forms etc. and are bioequivalent. Thus, drugs that were once on patent can have generic versions no sooner the original ceases to be under patent protection. The generic drugs work much the same way as original and have similar therapeutic properties but are relatively quite cheap since generic producers do not have large enough initial investments and usually work under market competition.

The Big News

The big news is that the biggest generic switch from the patented drugs is just about to come as an unprecedented wave very soon. A number of prescription-drugs that were patented in 1990s by pharma majors are about to go off patent. Generic producers all over the world are just getting ready to take the plunge not just in countries like India but in many developed countries as well. It is reported that Japanese companies are getting ready to enter the generics market in a big way. Indian pharma companies are also hoping to suitably benefit by joining hands with their Japanese counterparts in this game under the new trade agreement taking shape currently between the two countries. A recent survey report from Reuters also predicts a wave of mergers and acquisition in the pharma sector among the top global pharma producers in the wake of developing situation around the exploding generics market.

The best-selling prescription medicine, Lipitor of Pfizer which is used for lowering the cholesterol level, will soon lose the patent protection clearing the way for host of generic producers to produce quite legally inexpensive copies. The proportion of generic drugs versus patented drugs in your daily dose has, in fact, been steadily climbing up for several years now. But in the next couple of years it is predicted to jump several notches up. Lipitor is not the only big-selling brand that will go generic soon; there are many others such as Plavix, a blood thinner, and Actos, for diabetes etc.

Medicines in Patent Databases

Searching patents and related information on medicines is not only of interest to scientists, patent consultants and examiners but also to health authorities in many developing countries who are required to procure sizable quantities of various medicines for their in-country public health programmes. They are invariably compelled to search for cheaper but equally potent versions of the known drugs, due to limited budgetary resources, from all around the world without the risk of patent infringement. This is easier said than done, mainly because the commonly known drugs are rarely described by ‘brand names’ in the patent literature. Moreover, as is often the case, one single medicine may be protected under several different patents. Identifying and matching patents available in various free databases even with known generic names of branded drugs is generally non-obvious and one has to learn the art of getting around this problem. This knowledge and access to up-to-date patent information can also help countries to exercise the flexibilities available under TRIPS on compulsory licensing and / or promote their local generics industry.

A drug generally has three categories of names:

    1. Chemical name: It is the IUPAC name of the drug that describes the substance chemically. Example: Acetyl salicylic acid.
    1. International non-proprietary name (INN) / generic names: It is the name accepted and approved by the World Health Organization. It has been preferred for the main title of a new drug substance over other names. Example: Aspirin is generic name for Acetyl salicylic acid.
    1. Proprietary name / brand name: It is the name assigned by the manufacturer as a ‘brand name’ of the drug for marketing purposes, which could as well be a registered or unregistered ‘Trademark’ of the drug. Thus a generic drug with a single universally valid specific INN approved by WHO may have multiple proprietary names representing different formulations from one producer or similar and equivalent products from different producers.

To illustrate the above point, it may be pointed out that the popular drug sold under the brand name ‘Dispirin’ has its generic name as ‘Aspirin’ and a chemical name under the IUPAC system as ‘Acetyl Salicylic Acid’. Since most medicines are generally based on new chemical entities (except the biological), they tend to be described in various databases with their chemical names and also with generic names when available and would perhaps never be mentioned with their brand names. Hence the trick lies in finding out first the equivalent generic and chemical names of the expensive prescription-drugs that are under patent protection.

A guide to patent searching in medicines brought out recently by WHO provides a clever solution to this complex problem of identifying and matching patents in databases with branded drugs of interest. Since, USA continues to be the most important market for all new drugs that usually would be among the first few countries where an innovator company of a new drug would obtain both marketing permission and the patent protection. As already mentioned above, in US, FDA is the agency which grants the use and marketing of a new patented drug, a reference to its ‘Orange Book’ has been suggested as the first step. Like ‘Orange Book’ of US, the ‘Patent Register’ of ‘Health Canada’ is another important and similar source for such information in next door Canada.

All new drugs that are approved for marketing in the United States have to be necessarily listed in the ‘Orange Book’. The companies seeking to market new drugs are required to provide information regarding relevant patents and their expiry dates along with the new drug applications (NDAs). If some patents are not granted till the time of submission of NDA, they could be submitted within 30 days of the issuance of the patents.

In Canada, however, submission of patent information is optional for the originator company to submit along with filing of New Drug Submission (NDS) or Supplement to New Drug Submission (SNDS). Most often, however, companies use their discretion to have their patent listings in Patent Register of Health Canada which they are required to submit within 30 days of patent issuance.

Both FDA’s ‘Orange Book’ and Patent-Register of Health Canada are incidentally online and one can search required information freely. Both these resource, therefore, are extremely useful as starting points, even though these databases are far from comprehensive for searching a complete inventory on any medicine. Both these allow searching through various fields, most importantly through ‘active ingredient’, formulation, composition and provide relevant patent data. The Patent-Register of Health Canada also provides information on ‘biological’ products used as medicines.

The FDA’s ‘Organge Book’ and the ‘Patent-Register of Health Canada’ can be accessed from here by clicking on the relevant links. One can easily find the relevant patent numbers for an ‘active ingredient’ of interest in either of the databases, provided it is listed there-in. Along with relevant patent information, one can also find the patent-expiry data. Heath Canada’s Patent-Register gives an option to choose the generic name of the active ingredient from a drop down menu and also provides an option to search by ‘brand name’ as well as ‘patent number’, if known.

If the above exercise does not result into achieving the objective or is only partially successful, one would be required to search patents in the usual manner through key-word search or through ‘inventor’, ‘assignee’ and ‘international patent classification’ etc. After one has identified relevant patents through any of the above means, one may be required to download full-text pdf files of the patents. Following are the prime sources to locate these patents through ‘number search’ and download the full-text patents.

United States Patent and Trademark Office (USPTO)

Canadian Intellectual Property Office (CIPO)

European Patent Office (EPO), esp@cenet

Another useful source for downloading full-text pdf files of known patents besides extensive search from US, WIPO and European databases is ‘’. It’s active link and search window is provided here.

Expanding / Narrowing the Scope of Search

It must be realized that patent searching is essentially an iterative process that must be continually repeated to include newer patents in the inventory. While it is important to look for all new patents coming into the fray, many of which can be easily located through the known ‘generic names’ without much difficulty, it goes without saying that the task remains incomplete and virtually meaningless unless the key initial patents are identified on which the originator company based its production and marketing. In this respect, the teaching of the above WHO guide assumes great significance.

As an example, the guide helps locate the initial patents for ‘abacavir’, an HIV drug. The very first patent in this series is US5034394 (23 July 1991) of Burroughs Welcome under the title of ‘Therapeutics Nucleosides’ which is a key patent with a few others. The generic name ‘abacavir’ for a group of nucleosides under the IUPAC system was not known when the product was launched. One of its formulations is sold under the brand name ‘ziagen’ in the US ascribing the generic name ‘abacavir’ in the parantheses. The drug for its therapeutic use as well as its chemical composition is now fairly well known by its generic name ‘abacavir’, so that one can easily find thousands of patents which mention ‘abacavir’ as a reference in their description. But there is no way, one can find the above key patent by searching on ‘abacavir’.

Stretching the above argument a little bit, one can also find some US patents with the term ‘abacavir’ in their abstracts but the earliest of these patents is US6514979 (04 Feb. 2003) of University of Maryland investigating synergistic combinations with ‘abacavir’. A few other patents are as late as the year 2009. It must be noted that these patents refer to new research on the same molecule and identify it by the ‘generic name’ almost after more than 15 years, the drug was introduced. The thousands of other patents which cite ‘abacavir’ have all come much later and refer to it for various reasons.

Further Reading

How to conduct patent searches for medicines: a step-by-step guide : WHO – 2010

Patenting Nanotechnology

Introduction and Genesis

Nanotechnology is a new technological frontier with exciting promise for new solutions in a wide range of fields. It essentially deals with controlling matter at sub-atomic levels. ‘Nano’ derived from Greek wherein it refers to ‘dwarf’ is taken in the scientific parlance as very small; one nano-meter is a billionth of a meter and in terms of the dimensions of known physical objects, it could be around 40,000 times smaller than the width of human hair.

‘There’s Plenty of Room at the Bottom’, a talk given by Richard Feynman, an American Physicist (who got Nobel Prize in Physics in 1965) at American Physical Society Meeting at Caltech on 29 December 1959 is credited to have caught the imagination of scientists to focus their efforts on manipulation of matter at atomic levels. In his ground breaking lecture, Feynman considered the possibility of direct manipulation of individual atoms as a more powerful form of synthetic chemistry than those used at the time. Feynman’s provocative talk of 1959 lead Eric Drexler to come out with his book, ‘Engines of Creation: The Coming Era of Nanotechnology’ in 1985 what later became known as ‘molecular nanotechnology’.

The enormous interest in this field by the scientific community is not for a simple reason of being able to deal with the matter at sub-atomic scale but for the fact that most nano-particles have shown radically different and unusual physical, chemical and biological properties than their counter-parts as bulk material hitherto known to us. At the nano-scale, the laws of quantum physics take over and new physical properties emerge enabling exciting new applications. This grand opportunity of exploring the unknown and finding solutions to the known problems keeps the discovery wheel moving.

It has been reported that besides above developments the inventions of the scanning tunnelling microscope (US Patent 4,343,993) in 1981 and that of atomic force microscope (US Patent 4,724,318) in 1986 helped greatly to master the techniques to control and restructure matter at nano-scale; no wonder, therefore, these have been cited by thousands of other researchers. Other key inventions that are not yet off-patent are as follows:

Key Nanotechnology Patents

      US 5,747,161 (1991): Multiwall carbon nanotubes
      US 5,475,341 (1992): Integrating mol. & semiconductor electronics
      US 5,260,957 (1993): Quantum dot laser
      US 5,424,054 (1993): Single walled carbon nanotube
      US 5,773,921/RE 38,561(1995): Carbon nanotube electron emitter
      US 7,132,994 (1997): Carbon nanotube optical antenna
      US 6,891,744 (1999): Reconfigurable nanowire crossbar electronics
      US 6,740,910 (2000): Vertical nanowire field effect transistor
      US 7,321,188 (2002): Carbon nanotube yarn light source


Hundreds of nanotechnology-based products are commercially available today. A range of nano-material and nano-composites are finding applications in consumer products such as cosmetics, sunscreen lotions, stain-resistant clothing, car parts, and sports equipment as well as in drug delivery systems and photo-voltaic cells. Having enjoyed a phenomenal growth during the last two decades, the market for nanotechnology based products is predicted to be worth a trillion US$ by 2015.

Growth of Nanotechnology

As many as 60 countries have launched national programmes in nanotechnology with significant R&D budgets. Government of India has also recently launched a major initiative on nanotechnology, known as ‘Mission on Nano Science and Technology’ ( with an allocated fund of Rs. 1000 crore (approx. 217 million US$) for 5 years. An online mechanism for project submission to seek funding has also been started since 1 July 2010; majority of projects submitted so far appear to be for establishing infrastructure for carrying out research in different areas nanotechnology even though the objectives of the mission are stated to be for development of products and processes for national development, viz., safe drinking water, materials development, sensors development, drug delivery, etc.

A recent study on trends in nanotechnology patents covering an analysis of 30 years of data on patent publications from the USPTO, EPO and JPO shows an exponential growth in nanotech patents since 1990 with a small drop around 2005 attributed to stricter definition of nanotechnology by USPTO and administrative delays in JPO. This global data and its growth trajectory confirms the dominance of multinational corporations like, IBM, Nippon Electric, Eastman Kodak, Micron Technology, Hewlett-Packard, Xerox Corporation, 3M Company, Rohm & Haas, Samsung, BASF, L’Oreal, Sony, Canon, Seiko Instruments, Matsushita Electric, Tokyo Shibaura Electric etc. Among the universities and scientific research institutions, University of California, Massachusetts Institute of Technology, Rice University, Japan Science and Technology Agency, CNRS (France), National Institute for Materials Science, National Institute of Advanced Industrial Science and Technology, the Agency of Industrial Science and Technology figure in prominently.

A study undertaken by NISTADS, a science policy research institute of CSIR in India has compared the nanotechnology publications vis-à-vis patents emanating from Indian institutions and industry between 1990 and 2007. Obviously, two different sources of these data have been taken for this study; scopus database ( for publications and the delphion ( for patent data. Using appropriate keywords as employed by domain experts, the study inferred that the unique publications (11,000) on nanotechnology from India outnumber the patents (167) with a wide margin during this period, though both show exponential growth in later years.

Another study carried out at the Georgia Institute of Technology in USA on the status of Indian patents in nanotechnology between 1996 and 2006 that sourced its data from the database of Micropatent quotes a number of 177 Indian patents as against 337 Chinese patents and 20000+ US patents. This study also compares the patent / 1000 publications and shows the Indian situation in a better light as compared to the Chinese statistic on this in view of large number of Chinese publications. It has been shown based on the distribution of IPC codes across the patent data from different countries, that while nanotechnology patents from USA is dominated by the field of physics, the same from India is dominated by the chemistry and metallurgical field. Major nanotech inventors from India have also been identified such as BM Choudhary, ML Kantam, KV Raghavan and Murali Shastri, all scientists from CSIR laboratories in India among others.

Another Indian Nonotech facility dubbed as ‘Centre for Knowledge Management of Nanoscience and Technology’ of the Hyderabad based International Advanced Research Centre for Powder Metallurgy and New Materials provides a concurrent list and trend of nanotechnology research publications emanating from India extracted from the ‘Web of Science’ (

Nanotechnology in Patent Offices

While the field of nanotechnology presents an unprecedented exciting opportunity for scientists to move on the discovery path, it also presents new challenges to deal with in the Patent Offices and in courts. These difficulties are due to several factors, of which the lack of experts with adequate domain knowledge in the offices dealing with patent applications is the chief. Since nanotechnology is essentially a multi and inter-disciplinary specialist field, the experts from conventional technical fields with necessary add-on knowledge from one subject area are not likely to be equipped to deal with nanotechnology applications from other areas.

The other difficulties are related to a precise definition of the term ‘nanotechnology’ and the comprehension of the ‘nanoscale’. More often than not, the inventions in nanotechnology do not deal with precise dimensions of the size of matter but with a range. In the scientific research, while experts tend to regard a material belonging to nano-range, if the particle size is well below 30 nm; practically, however, a material with a particle size ranging between say 30 to 80 nm would still be regarded as nano-material. Patent Offices in US, Europe and Japan have, thus, already defined nanotechnology inventions in terms of scale as anything below 100 nm. For example, the EPO definition for ‘nanotechnology’ is defined as follows:

“The term nanotechnology covers entities with a controlled geometrical size of at least one functional component below 100 nanometres in one or more dimensions susceptible of making physical, chemical or biological effects available which are intrinsic to that size. It covers equipment and methods for controlled analysis, manipulation, processing, fabrication or measurement with a precision below 100 nanometres.”

Even with such uniform and simplistic definition, the situation could remain compounded when patent applcations use terminology like nano-agglomerates which simply defy the above definition. The size deterministic definition of nanotechnology as adopted by the Patent Offices, however, has also been refuted by many experts as flawed. According to them many biological systems, e.g., virus etc. have sizes within the nano-range and have been known and in use even before the advent of term ‘nano’ and may be known in the prior art.

On the executive level, assessing the novelty of an invention in this emerging field is yet another major bottleneck since little prior art is generally available. When downsizing is claimed as the basis for a patent in nanotechnology, it is not often easy to conclude if the same would be obvious to the person skilled in the art. Size is, however, not a sufficient condition to establish the novelty of an invention. Nanoscale inventions are also expected to exhibit properties that are, in some measure, unanticipated otherwise. However, problems remain when nanoscale formulations of the materials from the prior art are presented with properties which are not entirely unanticipated.


Nanotechnology Patents in Legal Landscape

The situation with regard to nanotechnology patents in legal landscape tends to be as complex as in the Patent Offices. Appellate and courts are frequently faced with disputes of nano-particles of given range claiming in the realm of prior art that would destroy the ‘novelty’ of subsequent inventions. For example, in BASF v Orica Australia, a prior patent on polymer nano-particles larger than 111 nm was claimed to destroy the novelty of a subsequent application by Orica for nano-particles smaller than 100 nm. However, in the final judgement, it was upheld that Orica’s smaller particles exhibited remarkably improved technical properties resulting into a better and glossier coat.

Another related problem most often confronted in legal disputes is the ‘overlap of the range of particle sizes’. Going by strict interpretation of legal provisions, even the slightest overlap is sufficient to destroy novelty. However, exceptions have been liberally made with the objective of promoting inventions in this field. For example in a case of Smithkiline Beecham’s patent application on a Hepatitis B vaccine adjuvant with particles measuring 60-120 nm in the light of similar prior patent of Wyeth with particles measuring 80-500 nm, the new invention was regarded as ‘novel’ for the following reasons:

  • the overlap of particle size was narrow – only 10% of the larger range in the earlier patent
  • exhibited significantly improved adjuvancy with smaller particles resulting into unexpected and favorable shift in immune response, and
  • technical teachings in the prior art were not sufficient to produce the product of the latter invention

As with regard to ‘novelty’, similar arguments with regard to ‘non-obviousness’ also abound but objective teachings of the prior art have often been relied in deciding about the patentability of new inventions. A proliferation of patents being granted for inventions falling within such overlapping ranges in nanotechnology is, however, supposedly leading to a chaotic situation of multiple “blocking” around the same or similar patents. Such patent thickets are believed to threaten innovation and adversely affect further development of the nanotechnology sector.


Searching Nanotechnology Patents

Patent searching for nanotechnology as in other fields can be accomplished with a combination of keyword text searching, patent classification searching, and citation analysis. The USPTO has established class 977 as a cross-reference art collection for nanotechnology searching. The EPO has established class Y01N as a cross-reference art collection for nanotechnology searching. The IPC has established class B82B a cross-reference art collection for nanotechnology searching. These cross-reference art collections are still new and many relevant documents remain undesignated. Extended search based on ‘citations’ is strongly recommended to uncover the hidden patents.

There are quite a few blogs on the internet that are good sources for recent patents and other information related to nanotechnology. A subscription based internet journal, ‘Recent Patents on Nanotechnology’ ( publishes review and research articles by experts on recent patents on nanotechnology.

Cross-Reference Art Collection of USPTO

To help address the peculiar problem of classifying and searching nanotechnology patents, USPTO introduced a new Class ’977′ in 2004 which has since been expanded to an elaborate cross-reference art collection of 263 new subclasses (from 700-963). Thus it is now rather straight forward to search patent publications and granted patents in narrow areas of nanotechnology using the appropriate sub-class with 977 class. The complete list of sub-classes can be seen at the USPTO website (

Since US is currently leading the nanotechnology developments and since US represents as most important market for products of nano-materials and nano-devices, patents granted by USPTO to assignees from different countries can be regarded as the strength of these countries in nanotechnology. As retrieved from the USPTO database through class ’977′ on date, the total number granted patents was 6484. Against this the patents granted to some of the other nanotech active countries are as shown below. We can see here that Japan is closely following USA in this technology race and other major countries are S. Korea, Germany, Taiwan, France and Canada.

USA 1556, Japan 1169, S. Korea 317, Germany 222, Taiwan 176, France 118, Canada 110, UK 62, China 61, Netherlands 41, Italy 37, Switzerland 36, Sweden 34, Israel 32, Belgium 26, Australia 25, Singapore 16, India 14, Norway 13, Spain 13, Ireland 12, Denmark 10, Nertherlands 41, Hong Kong 5, Russia 4, New Zealand 3

Nanotechnology Patents in European Database

The European Patent Office world-wide database (Espacenet) of patents is another important source for patent retrieval. In fact, this is one of the most up to date and versatile source of patents that covers patent data from more than 80+ countries. Recognising the problem associated with searching prior patent literature, EPO introduced as early as in 2003 an internal tag of a label ‘Y01N’ in addition to usual classification codes signifying that the patents so tagged cover some aspects of nanotechnology. A detailed description of the evolution of ‘Y01N’ and its six sub-classes has been given in a paper published in World Patent Information (2006), please see the reference below. For public use, however, the European classification (ECLA) code ‘B82′ allocated to ‘Nanotechnology’ works quite effectively. As on date more than 100,000 results can be found in the European worldwide database for: B82 as the code in European classification field.

International Patent Classification for Nanotechnology

IPC codes which are maintained by World Intellectual Property Organisation (WIPO) are closely related to ECLA code of EPO. IPC code for Nanotechnology is thus also ‘B82′ with further sub-classification as follows:

B 82 Nano-technology

B 82 B1/00 Nano-structures

B 82 B3/00 Manufacture or treatment of nano-structures

Approximately 1,992 results as on date could be found in the WIPO database for: B82 as the IPC code. Since IPC codes are also assigned by various Patent Offices besides WIPO to the patents published and / or granted by them, approximately 20,274 results could also be found in the worldwide database for: B82 as the IPC code. Despite elaborate cross-reference art collection for nanotech related patents as practiced by various Patent Offices, it must be borne in mind that these classification codes are still quite new and many could as well be undesignated. In an exercise of screening nanotech-related patents, one may use a key-word search (of the full-text or only certain sections of the patent document) in combination with search by classification (if the sub-class sufficiently defines the area of interest). To illustrate this point, one may refer to a US patent (6,316, 674) on ‘Process for the preparation of acyl aromatic ethers’ granted to scientists of CSIR from India in 2001 that utilizes nano and microcrystalline zeolite beta catalyst in this process. This has been classified in four sub-classes of ’977′ and cannot be missed when searched in USPTO database. But it does not yet have any ECLA/IPC code of ‘B82′ or EPO tag ‘Y01N’ can thus be located in EPO worldwide database only through other means e.g., number search or ‘nano’ keyword in ‘Abstract’ field.

Derwent World Patents Index

Derwent World Patents Index (DWPI) produced by Thomson Reuters Scientific,is another important value added service for searching nanotechnology patents. This database containes information from more than 41 million patent documents and sourced from more than 41 countries of the world. This services is now subscribed by all important scientific institutions, including the laboratories of CSIR in India and can therefore be utilised easily by the scientific community


Concluding Remarks

As with any new technology, there is an excitement and anxiety all over as to how relevant nanotechnologies will be developed, protected and commercialised. Processes are at work in establishing research infrastructures for developing new nanotechnologies, new adaptation in Patent Offices and Appellate Authorities to deal with significantly different infringement cases and above all within scientific communities to embark on a new discovery path. Nanotechnology is a special case as it applies to almost any area of science and engineering: it is just as relevant to biotechnologists and physicists as it is to electrical and mechanical engineers or materials scientists. All in all, however, it seems that the race has just begun!


Further Reading


Enigma of Data Exclusivity


‘Data Exclusivity’ has emerged as a contentious and a hotly debated issue in bilateral / multilateral trade agreements and the imbroglio turns out to be a tussle between developing countries’ interests vis-à-vis the powerful pharmaceutical and agro-chemical innovator companies backed up by their Governments in USA and EU. It seems inevitable that the countries caught up in this ongoing war of words would have to provide some form of legal provision of data protection and exclusivity as being sought the satisfaction of the other block.

We focus our attention in this article on what actually is ‘data exclusivity’ and / or ‘data protection’ and how these are related to new drug / chemicals development which are also usually protected with patents for long enough periods in most countries. And more importantly, what issues and claims of various interest groups confront us in harmonising legal provisions around this at par with international norms.

Data Requiring Protection / Exclusivity

The discovery of a new molecule (chemical moiety) follows a rigorous schedule of laboratory and field testing before the same could be regarded as usable as a drug or pesticide. Most of these tests are carried out on animals, plants or in the field for pharmacological, toxicological and environmental studies. The proof of safety and efficacy as a drug requires additional testing of the new substance in varied formulations and dosages on human volunteers known as clinical trials with appropriate evaluation of any side effects. The required number of tests and the manner in which these are required to be carried out are governed by rules set by the regulatory authorities in each country. These regulatory authorities are statutory bodies and prescribe the data and results mentioned above for submission to their satisfaction before marketing permission of the new substances (drugs / agrochemicals) can be granted to the applicant companies.

In the United States the regulatory authority for medicines and vaccines is the Food and Drug Administration (FDA) and in India, it is the Drug Controller General of India (DCGI). Similarly, the Environmental Protection Agency (EPA) is the regulatory authority for agrochemicals in USA and the Central Insecticides Board, Faridabad is its counterpart regulatory authority in India.

Meeting statutory requirements to the satisfaction of such regulatory authorities is necessary for grant of permission to place the new products on the market in the country in question and these involve considerable costs. It has been estimated that these development costs alone could be of the order of US$800 and US$180 million for a new drug or vaccine and agrochemicals respectively which are additional to the costs incurred for carrying our research and development for making the discoveries.

These test results generated for such statutory requirement are the key elements that are being sought for data protection and / or exclusivity against any (unlawful commercial) use. The objective of getting introduced such legal provision is to prohibit the use of this data by the regulatory authority and others for a given period of time as permissible under the law that ensures extension of market monopoly for the originator company that much more.

The Article 39(3) of TRIPS

It is important to refer to Article 39(3) of TRIPS which precisely deals with this issue and is a usual reference point for divergent arguments on either side of the wedge. It says -

Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shallprotect such data against unfair commercial use. In addition, Members shall protect such data against disclosure, except where necessary to protect the public or unless steps are taken to ensure that the data are protected against unfair commercial use.

Thus this Article devolves several obligations on the member governments which essentially requires i) providing protection to test data for marketing new chemical entities, the collection of which involved considerable effort, ii) protecting such data against disclosure, except where necessary to protect the public and iii) protecting such data against disclosure, unless steps are taken to ensure that the data is protected against unfair commercial use.

Clearly much has been left on the member countries, with substantial flexibility in their command to determine the scope and kind of protection of undisclosed test data of the originator company. It must also be remembered that TRIPS agreement does not set forth a uniform law on intellectual property or on data protection / exclusivity; rather it stipulates a set of minimum standards that may be differently implemented in member countries in conformity to their own national laws.

Patents versus Data Exclusivity

The protection of new inventions is now provided through ‘patents’ which in most countries are for a maximum of 20 years from the date of submission of final specifications. Patent protection is available for products and processes having convincing inventive steps that are new and useful. This protection does not extend to the test data generated for commercial and marketing purposes as statutory requirement. Thus the concept of patents and exclusivity of propriety test data are distinctly different, but complement each other.

The concept of granting monopoly rights through grant of patents is now well established, the prime objective of which is to provide incentive to companies to invent and innovate. Most successful companies take full advantage of the patent regimes that are getting more and more harmonised after the issue of ‘intellectual property rights’ brought under the aegis of World Trade Organisation through TRIPS. These originator companies which are responsible for introduction of new products in the global market with the active support of their respective Governments justify introduction of legal provisions to exclude the subsequent use of their test data on the grounds that the data essentially is ‘proprietary’ in nature and they invested enormous sums for their generation in the first place.

New Drugs versus Generic Drugs

The regulatory authorities usually call for all mandatory test data only when the product is a new drug (not previously known or in use). Such new drugs are often protected through grant of patents, so that when permitted to market, only Originator Company or its licensee can produce and market. When the new drug of the originator company becomes off-patent, any competitor company could produce the same drug without any risk of patent infringement. Nonetheless, the competitor company is still required to obtain marketing approval from the regulatory authority.

Most often, in such cases, the regulatory authority admit applications from competitor companies without detailed test data (as with the originator company) and requires only test data that establishes bio-equivalence of the generic drug with the original new drug to ensure that the generic version is fully comparable to the original for continued therapeutic use.

With legal provision of excluding the subsequent use of its test data as in the above case, the originator company has the right to preclude third parties to obtain marketing approval for a specific period of time and hence delay entry of generic producers maintaining its monopoly. It is also possible for a company in certain cases to rely on ‘data exclusivity’ protection alone, if available without seeking any patent protection e.g., in case of biological which are sometimes difficult to get protected under patent system or when a patent application remains pending for grant of patent or is already off-patent. It is also important to realise that when a patent is in vogue for a certain invention, the right holder can exclude third parties for making, using, selling, offering for sale, or importing the patented product. However, with rights of ‘data exclusivity’, the right holder can prevent the regulatory authorities and generic competitors to rely on his propriety data, but the generic competitor is free to generate another set of data for regulatory purposes, if required. In practice, however, this is seriously discouraged to avoid unnecessary duplication of animal testing and clinical trials on humans already performed by the originator company besides unwarranted delays in expanding the market.

Those opposed to such extended monopoly beyond the patent validity period justify limiting the ‘data exclusivity’ provision on the grounds of global public health and development of market of generic drugs at the earliest. Thus the issue of ‘data exclusivity’ hinges upon the idea of balancing the interests of originator companies and the producers of generic drugs vis-à-vis the larger issue of making affordable life saving drugs to vast majority of poor people as soon as possible. This also appears an issue of balancing the interests of right holders and the wider public interest.

Global Scenario of Data Exclusivity Laws

Protection of data related to test results as undisclosed information gained international attention when it was desired to restrict unfair competition between the member countries of Paris Convention. However, data exclusivity law was first introduced in USA in 1984 and in the EU in 1987 to compensate for insufficient product patent protection in some countries. However, strong product patents are now available in all 27 EU Member States. The erstwhile rules on data exclusivity in EU (Directive 2001/83/EC) have been since amended vide Directive 2004/27/EC dated 31 March 2004 relating to medicinal products for human use. The data exclusivity period among the EU Members States is now harmonised to a 10 years period or more under a new scheme popularly known as ’8+2+1′ replacing a previously variable term between 6 -10 years.

The issue came into the limelight again in 1994 when it found mention in the garb of ‘data protection’ under Article 39(3), in the TRIPS agreement which sets out number of obligations that the member countries of WTO need to comply with when designing their intellectual property regimes. Several countries have introduced trade secret form of protection in compliance of Article 39(3). On the other hand most developed countries have adopted data exclusivity as the mode of protection complying with Article 39(3) obligation.

Most of the WTO Member States seem have recognized and appreciated the role of data exclusivity and implemented provisions for fixed periods protection for regulatory data generated both for pharmaceuticals and agro-chemicals – e.g., USA (5 years for pharmaceuticals and additional 3 years for new indications of existing drugs and 10 years for agro-chemicals), European Union (10 years for both pharmaceuticals agro-chemicals and 1 extra year for new indication in case of drugs). Similarly, both Japan and China chose to provide protection for a fix term of 6 years both in case of pharmaceuticals and agrochemicals, whereas Canada chose 8 years. Some countries like Brazil provide data exclusivity for agro-chemicals only and not for pharmaceuticals yet.

India at the Cross-Road

India provides data exclusivity or fixed period data protection neither to pharmaceuticals nor to agro-chemicals yet. India’s fledgling generic drugs industry, which has emerged as a major support to global public health programmes on HIV/AIDS and other similar intractable diseases is vehemently opposed to the notion of ‘data exclusivity’ of any kind in the wake of anticipated serious dent to supply of affordable drugs from India. Such sentiments have found a strong support from well respected global NGOs, such as MSF – also known as ‘Doctors without Borders’ who claim to obtain 90% of their inventory of drugs from India for distribution amongst the needy poor in other countries, i.e., Africa. Recent protests and violent demonstrations to EU-India Free Trade Agreement talks was a manifestation of this outcry.

Government of India is however otherwise keen to strengthen its regulatory process and concomitant data protection legal provisions. A high powered Government panel in its report submitted in 2007 recognises the need for tightening the regulatory process not just for pharmaceuticals but for agro-chemicals and also for ayurvedic products as well. It has also recognised the need for implementing higher standard of data protection regime to fulfil its obligations under Article 39(3) of TRIPS. It recommends a gradual process of achieving it simultaneously upgrading the physical infrastructure and technical skills of a proposed Central Drug Authority that will encompass the office of Drug Controller General of India (as of now) supported by appropriate high-level advisory boards / committees and cover monitoring, vigilance and enforcement of new drugs, vaccines, biological, diagnostics and medical devices as well as clinical trials besides regulatory affairs. It also suggests a brief ‘transition period’ before moving from the old order to a new one during which time it has been suggested to invoke the flexibility available in TRIPS agreement to comply with the minimum requirements of Article 39(3).

The Government of India clearly wants to adopt a cautious approach to fulfil its international commitments without hindering the growth of its home-grown generics industry. Interestingly, the opposition to ‘data exclusivity’ regime is not limited to Indian generics lobby but also from countries such as Turkey and even Canada.


It seems that India finds it prudent to wait for some more time before implementing a ‘data exclusivity’ regime at par with most developed countries. Hopefully, its innovative pharmaceutical companies that have begun investing in research and development for new drug development after the ‘product patent’ came into force would by then find themselves ready to benefit from the new dispensation of ‘data exclusivity’.

Further Reading


Intellectual Property for Your Cuisine


Getting patent for your invention may not be a cakewalk, yet it is possible for you to get a patent for your cake. This is literally true, if your cake fulfils the requirements for grant of a patent. How often people have wondered if they could patent their favourite dishes and their recipes, they could be minting money by tantalizing the taste buds of millions. It is another matter that they may not have any idea of the intricacies of the patenting world.

Our foods cover a wide range of technical areas from different plant varieties, fruits, vegetables and other edible products such as nuts and their methods of preparation, preservation, processing with unique and differentiated recipes to make them eatables in variety of forms which tend to have both domestic as well as commercial use. At every stage in this chain, human ingenuity plays an important role and hence all of these subjects become amenable to intellectual property protection. Can I get intellectual property protection for my recipe, is therefore all too often quite an expected query. The remainder of this article deals with it in a broader sense.

Suits on Piracy of Menu & Recipes

Law suits by restaurant owners alleging piracy of menu, recipes and dishes by former chefs by come to light quite often which are regarded by the courts as misappropriation of intellectual property. In June 2007, Rebecca Charles, the owner of a New York restaurant, ‘Pearl’ dragged its former chef with such allegations. The key allegation that made headlines was that the recipe of Pearl’s signature dish known as ‘Casear Salad’ was blatantly copied. The settlement was finally arrived at out of the court, but many regarded this law suit as the first of its kind. In the culinary industry, the owners of the restaurants and food joints have traditionally defended particular aspects of their restaurants invoking the concepts of intellectual property, but few had dragged the legal fight in court rooms with strong arguments on intellectual property theft in absolute terms.

Many high profile chefs are now household names in today’s world of high mobility, and many of them are significant innovators attracting investors to build businesses around their creations. It is natural, therefore, for such master chefs and their investors to demand intellectual property protection. As competition and the cost of opening new restaurants continue skyrocketing, experts predict an increase in lawsuits similar to that mentioned above.

Cooking – The Derivative Art

A sizable section of people in culinary industry, however, view cooking as a derivative art and beyond the confines of intellectual property supporting and working in an open-source model and drawing inspiration from a variety of sources. Many renowned and creative chefs believe that “culinary traditions are collective, cumulative inventions, a heritage created by hundreds of generations of cooks.” Much of the fun in food, especially in social gatherings, is in sharing the art of cooking and the recipes. Many professional associations of chefs also prescribe ethical guidelines for members not to infringe upon the intellectual property belonging to others for their own financial or professional advantage.

Molecular Gastronomy – The Science of Novel Cuisine

Despite ethical guidelines of the culinary profession and cherished goal of evolving noteworthy cuisine through traditional learning, sharing and internships in an open source model, there is a growing trend now to bring in a convergence of cooking and technology and demand increased intellectual property protections for the new creations. This upcoming popular style of high-technology cooking using scientific techniques and sophisticated equipment akin to material handling in scientific laboratories is known as “molecular gastronomy” and perhaps adequately justifies suitable intellectual property protection. The techniques may include using lasers, micro-wave, flash freezing with liquid nitrogen, treating emulsions with ultrasound, chemical powders, and enzymes to make unique and imaginative foods that could no longer be regarded as derivative cuisine.

The term ‘Molecular Gastronomy (MG)’ is stated to have been coined in 1988 by an Oxford Professor who became interested in applying his scientific knowledge to chemical transformations that take place during cooking. This new science of cooking seems to be thriving, however, in France since then where MG workshops are conducted periodically and attended by chefs, scientists and food technologists together. While food industry representatives usually discuss culinary matters that they often find intriguing such as how to avoid cracks on macaroons, the chemists and scientists usually discuss the molecular basis of various transformations such as protein or collagen structures at different temperatures. The molecular basis of food science is not only giving rise to new knowledge and insight about the foods we cook in a known way but also to variety of new foods with hitherto different tastes.

Innovative Chocolate Dispersion Cake: One notable example of the MG research is the ‘Chocolate Dispersion Cake’ developed by Herve’ This (pronounced as ’tis’), who is regarded as a pioneer and father of research in molecular gastronomy. Accordingly, a small amount of chocolate is melted first and then added to egg white while whipping the mixture when the chocolate melt is below 61°C. This is finally placed in a microwave oven for one minute. The initial dispersion of cocoa butter turned into a semi-solid mass or chemical gel, on heating – like a chocolate cake without flour. Using his knowledge about how the network of protein molecules holds the chocolate droplets in a jellified emulsion through microscopic studies, This manages the dispersion of chocolate twice: first in the emulsion and then in the gel. The resulting cake, according to him, has a powerful aroma of chocolate and a ‘very tender texture’. It is not known if any intellectual property was ever sought for such a product.

Herve’ This who has authored countless scientific publications and popular articles and runs a blog on the internet is, nevertheless, a popular TV personality by now. The details of his work and passion are described on Wikipeadia and a number videos depicting him as a crazy scientist are doing the rounds on the internet. A link to his youtube video is (here). He has also been dubbed as ‘a man who unboiled the egg’ and discovered that the perfect temperature for cooking an egg is around 65°C, when the white coagulates, but not the yolk. How the cocoa can easily be dispersed in a mixture of alcohol and water, which is rather non-dispersible in plain water can also be seen in a video, whose link is provided here (Cocoa powder does not disperse easily in water!). – (Chocolate Dispersion)

Surge for New Experimental Foods

Many known and hitherto unknown substances are appearing as worthy of experimenting for developing new food products or managing the tastes, textures and flavours of known and traditional foods. Hydrocolloids, for example, a class of compounds and substances that are used as additives for forming gels and thickening agents, stabilizing foams, emulsions and dispersions and preventing crystallization of saturated water or sugar solutions are being re-invented for newer uses. Agar, gelatine, guar gum, xanthan are some of the well known hydrocolloids. A blog named as ‘Khymos’ which in Greek refers to ‘Syrups’ is a repository of information on hydrocolloids. A valuable compilation of hydrocolloid recipes is available in pdf format and can be downloaded free from the blog site (Texture – A Hydrocolloid Recipe Collection).

According to one report, Miraculin, the extract of a West African fruit and many other such substances are attracting much attention of researchers of gastronomy as taste modifiers and enhancers. Miraculin is obtained through freeze-drying the flesh of the fruit and is available as a lumpy powder in dull red colour. It is not sweet though, but makes the sour foods taste sweet. This is said to be doing so by being able to trick the taste buds into misreporting the flavour of the foods. The discovery of such substances is likely to manipulate the tastes of many of our foods in future.

The interest and understanding of chemical and physical basis of cooking, however, is not all too new phenomenon. An excellent treatise on the subject was published as early as 1937 whose reference is given below in bibliography. The book is now in second edition and accessible online for anyone who is keen to learn more and improve his cooking skills. The principal function of this volume is to present the knowledge of food preparation and cookery processes from a chemical and physical basis. It presents the knowledge and data on cookery collected from around the world and covers a wide range of subjects, i.e., chemistry of colloids, their properties viz., fluidity, viscosity, and plasticity and dispersion in food, role of electrolytes, and coagulation of proteins, energetic, sugars: different types and properties viz. solubility, melting point etc., bound and free water (i.e., the extent of hydrogen bonding), crystallisation, fondants (i.e., sugar syrups), fudge (i.e., the extent of crystal in fondant), caramels, ice-creams, plant acids, pigments, enzymes, sulphur compounds of plants, flavours, cellulose, legumes, pectin, gelatine, glue etc.

Possible Protection of Intellectual Property for Foods and Cuisine


As per copyright laws in most countries, mere listings of ingredients as in recipes, formulas, compounds or prescriptions are not subject to copyright protection. To be copyrightable, the recipe must accompany substantial literary expression in the form of an explanation or directions, such as in a cookbook. Thus, no significant competitive advantage can be drawn by chefs from copyright law for their creations. Many, however, believe that a truly magnificent dish created by a chef can hardly be stolen by anyone else. They feel that a recipe alone is sufficient for a skilled cook to prepare almost any dish. However, individual cooking techniques, and the manner in which ingredients are used coupled with the experience can result into vastly different dishes, which cannot be reduced to writing and also can not be easily stolen.

No significant infringement claims are known to have been sought either on the basis of copyright of recipes. Moreover, it may not be easy in most cases to argue that the copied recipe or material was not really in public domain before or after the copyright. Due to sharing norms prevalent in the culinary industry, an infinite number of dishes and their variants are in the public domain all the time and belong to everyone. The signature dish ‘Casear Salad’ of Rebecca Charles mentioned above is also stated to have been learnt by her from her mother. Thus, the bar for originality under copyright law is low and so is the protection for creative recipes through this mode.

Trademark and Trade Dress

Trademark is the most widely used form of intellectual property in any business. A trademark (or simply ‘mark’) could be any word, name, symbol, device, or combination thereof, which a business registers to indicate the source of his products and services to distinguish from other manufacturers or sellers in the same trade. Marks may be obtained for the entire business as a whole or for specific products or services for branding and marketing purposes.

Trade dress is yet another intellectual property form that is widely used in all businesses, including bakery, confectionary, fast food and other food related services. It refers to characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers. In culinary businesses, signature packagings are quite common with their signature dishes. Traditionally, trade dress applied to the overall appearance of labels, wrapping or containers in which the product was offered for sale or consumption. Today, however, this has come to assume a much stronger definition implying that the combination of various elements of trade dress creates a visual image for the consumer. The trade dress can include features such as size, shape, colour, textures, or graphics and is registrable.

It is important to realise that neither trade dress nor trademark laws protect an underlying product or service, only the way in which these are presented to consumers. However, like trademarks, a product’s trade dress can be legally protected in the US under the Lanham Act. In India, though, no specific provision exists for registration of a trade dress; the amended Trademark Act of 1999 that came into being in 2003 does cover essential elements of packaging along with mark. The Indian courts have, however, been recognising the importance of trade dress in many a disputes even prior to the amended act under common law.

Trade dress seems to be most effectively employed in wines and spirits businesses. Trade dress weather registered or not seems to be an effective tool to protect intellectual property in the culinary business. Trademark and trade dress infringement cases between rival groups in eateries, food joints, restaurants and many other areas are quite common these days. In order to succeed on a claim of infringement, one must be able to argue convincingly that the alleged infringer’s actions (.i.e., employing similar dress) are likely to cause consumer confusion. Therefore trade dress by itself needs to be inherently distinctive and should not depend on functional features.


Patents have been generally favoured for all new inventions and innovative creations including truly new cuisine. Based on the fundamental requirements of patent grant, the new cuisines and culinary creations will have to be judged on the basis of i) novelty / prior art, ii) non-obviousness and iii) industrial use. Food companies and restaurant chains are commonly seen to obtain patents to protect their edible creations, but a majority of chefs are found to ignore the system as they see not much merit in the system.

Like in patent protection to inventions in other fields, the claims of the new culinary creations are also required to be precisely defined on the basis of incremental innovations and inventive steps. This could very often result into vary narrow claims, depending on how these are stated. With plenty of equivalent substitute ingredients available, no worthwhile protection against copy-cat recipes using alternative ingredients can be enforced. In 1989, a typical case of infringement of a patent held by Procter & Gamble (“P&G”) for a recipe and process of making a dual textured cookie that was “crispy on the outside and chewy on the inside” came to light. The defendants argued, in part, that P&G’s patent was invalid as anticipated by a recipe published in a 1968 cookbook. Thus, many innovative culinary creations also fail to get due intellectual property from patent system for the simple reason that the requisite novelty feature is fairly difficult to prove. Most successful chefs also believe that they rose on the shoulders of chefs who came before them.

The non-obviousness requirements as well as high cost of patenting are also major bottlenecks on the way of exploitation of patent system for culinary creations.

As opposed to conventional avant-garde chefs, researchers in MG stand a better and exciting opportunity to take shelter under the patent systems for their inventions since many of their creations tend to be absolutely novel. The title of a recently published patent application (CA2711067A1 dated 3 Feb 2011) which reads like, ‘Method of Processing Food Material using a Pulsed Laser Beam’ gives a fair indication of the kind of inventions we are likely to see from this field in future.

Trade Secrets

Trade Secrets of recipes and specific cooking techniques are perhaps the most favoured route for exploiting the intellectual property for those who are keen to commercialise their creations. In many countries, it is possible to obtain legal protection to such business secrets but there is no specific law in India that protects trade secrets and confidential information. These are safe guarded generally by appropriate agreements with employees under the contract law or through the equitable doctrine of breach of confidentiality. Indian courts have usually upheld trade secret protection in favour of the intellectual property owner.

Geographical Indications

Geographical Indications (GIs) are signs used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. Many food preparations, besides agricultural products and manufactured products, mainly handicrafts that have acquired distinct recognition associated with their place of origin and have thus been granted GI status. Dharwad Pedha, Tirupathi Laddu, Goan Feni, Hyderabadi Haleem and Scotch Whisky are some of the food items that have acquired GI status in India. There are many other unique food items that have been granted similar status in other countries around the world. A detailed treatment on GIs was provided in one of our earlier articles entitled, ‘Uganda Chocolates’.

GIs typically convey an assurance of quality and distinctiveness essentially attributable to the origin as defined by geographical locality, region or country of the product. GI is also a form of intellectual property which is granted to the produce of entire geographical location on collective basis and can not be thus exploited for individual innovations.


We have seen that the world of food has arrived at a stage where one of the oldest arts, i.e., cooking is being passionately manipulated by the latest and modern concepts of science to turn out ground breaking dishes of different tastes the mankind has ever known or tasted. This makes a strong case for strengthening intellectual property provisions so that chefs, scientists and entrepreneurs could unhesitatingly give utilitarian expression to their creations and discoveries. A seven billion global population of indulgent consumers, anyway, ensures a great market for these new ventures.

Further Reading

  1. Protecting Cuisine Under The Rubric of Intellectual Property Law: Should The Law Play A Bigger Role In The Kitchen? by Emily Cunningham, Journal of High Technology Law (2009)
  2. Cooking with Chemistry by Maria Burke, Royal Society of Chemistry
  3. Experimental Cookery From The Chemical And Physical Standpoint by Belle Lowe, John Wiley & Sons, 1937

Foot Note: Functional Foods which are essentially foods fortified with vitamins and nutrients is yet another important area attracting attention of researchers all over the world. That is another area of large number of new potentially patentable inventions which has been deliberately kept outside the scope of present article.

Model IPR Support Services for SMEs : Part III


We have thus far covered in our previous two articles some of the best and noteworthy practices in providing public IPR support services from several countries, viz., Japan, South Korea, Denmark, Australia, Canada and United States of America. We wish to conclude our topic with some more noteworthy best practices in other countries, e.g., Switzerland, United Kingdom, Austria, and France in this first issue of Volume 2 of our newsletter in 2011.

It must be kept in mind that the IPR support service systems for SMEs are invariably faced with considerable challenges even in those countries such as those described in these articles which have, by comparison, good offerings in place.

Swiss Federal Institute of Intellectual Property (IPI)

This institute with its headquarter in Berne, is known as national competence centre and regarded as the first major source of information regarding IPR and the protection of technology and know-how in Switzerland. It is the federal agency for intellectual property matters, yet distinctly different from other national patent offices. The IPI, like all other national patent offices receives applications for patents, trademarks and designs and grants them to the applicants. However, it does not examine a patent application with regard to its novelty or inventive step. Furthermore, the Institute is (i) responsible for drafting legislation in the field of IPR, (ii) acts as a consultant to the Federal Council and other federal bodies concerning IPR matters, and (iii) represents Switzerland in IPR matters at the international level (WIPO, OECD, TRIPS etc.).

The IPI is operated as a legal entity, registered with the Switzerland’s Commercial Register, and acts autonomously but its budget is largely independent from the Swiss federal budget. Its funding is provided through the income generated by way of IP services and registration fees. The present structure of IPI is the result of a reform process started in 1996.

An outstanding feature of the working of IPI is the extensive support actions for SMEs and IPR awareness raising initiatives through the publication of booklets and documents, public seminars, lectures and workshops. Some of the important services offered by IPI, especially for SMEs are described in the following paragraphs:

Platform for Small and Medium Enterprises

 An online portal on IP matters for SMEs at the above site is functional for use of SMEs. The visitors to the site can easily learn the basics of patent, design, trademark, copyright and geographical indications. The web-pages have been designed very tastefully and are easy to understand and provide contact numbers for any questions on protection of innovations and creations.

The IP Advisory Network

This is perhaps one of the most interesting and useful services not known to exist anywhere else. Patent attorneys from Switzerland and Liechtenstein, as part of this network, offer advice to small and medium-sized enterprises as well as individuals, free of charge for up to 45 minutes, on questions concerning patent protection and the copyright protection of software. The initial consultation takes place in the chambers of the participating attorney and is conducted by a qualified person. For this free consultation available only once, one can contact the Patent Attorney of one’s choice who is a member of the IP Advisory Network which is a joint project of the IPI and the three Swiss patent attorney associations.

IP Search

One of best professional services from IPI is the ‘IP Search’ for IP professionals and others from variety of databases with additional support services both for patents and trade marks. Regular training programmes are offered in various secondary schools and universities in order to promote the usage of IPR. Similar programmes, sometimes moderately priced, in association with local business development agencies, chambers of commerce etc. are also offered periodically.

A special noteworthy programme of the IPI is the service “Assisted Patent Search” for SMEs, through which entrepreneurs may conduct, with the help of an IPI employee, up to half a day of research in free patent databases at the premises of the IPI.

Intellectual Asset Centre, Glasgow (IAC)

IAC is a unique centre supported by the Scottish Government that assists businesses in deriving value from their intellectual assets in a holistic view. It came into being as a realisation of the fact that the value of unexploited intellectual assets (IA) lying in Scottish companies were judged to be worth several billion pounds. The centre therefore terms it core activity as ‘Intellectual Asset Management (IAM)’ bringing focus on capturing and managing knowledge, and exploiting it for commercial gain through protection of both tangibles and intangibles.

The Centre has produced a range of tools that can be downloaded and used freely; the tools available include questionnaires, diagnostics, glossaries and lexicons, business simulations, IA registers and audit tools.

Support to companies is provided by way of information booklets, simulations games and case studies in a variety of events and workshop programmes, which are often run in conjunction with other partner organisations.

INPI, the National Industrial Property Institute (Institut national de la propriété industrielle), France

The French INPI is the national intellectual property office of France, in charge of patents, trademarks and industrial design rights. It provides a wide range of services to enterprises, directly, through an extensive web-based information system and through regional offices. These services cover all forms of intellectual property and are offered by way of information provision, training and counselling.

Pre-diagnosis of Industrial Property

Since 2004, INPI has been offering ‘pre-diagnostic’ audit that consists of an evaluation of the potential of an enterprise in terms of its industrial property. This service seems to me a most pro-active approach of a national patent office anywhere. The pre-diagnoses are made by INPI experts together with those trained in industrial property from regional chambers of commerce and industry or other consultants specially recruited by the INPI. The cost of producing a pre-diagnosis study amounts to upwards of 1500 € which is entirely funded by the INPI or co-financed by the Regional Council; the service to the company is, however, totally free.

Each pre-diagnosis study is carried out in key four steps. In the first step, the internal and external environment of the target company is studied along with the competition it faces. In the second step, analysis of company’s products and services, organizational set up and its financial situation is carried out with a visit to the company. In the third step, a report is generated highlighting the potential progress the company could make and the possible courses of action, resources and tools for implementation. In the last and final step, a discussion with company representatives is held to clarify the consequences of the action identified as part of pre-diagnosis.

The results of a pre-diagnosis are kept confidential and consume about two half-day interactions. The result of such intellectual property audit is that enterprises are not only pointed in the right direction, in terms of registering industrial property, but the enterprise management is helped to develop a whole new perspective on the significance of IP management.

Several thousand IP pre-diagnostic analyses are reported to have been carried out since 2004 and each pre-diagnosis is regularly monitored resulting into a high satisfaction rate among clients many of whom have already sought protection of their IP.

Austria Wirtschaftsservice (AWS)

AWS is a state-owned bank of Austria specifically geared to supporting small and medium enterprises and to strengthen their competitiveness.

Innovation Protection Programme (IPP), Austria

IPP was established by AWS in 2006 as a response to the needs of SMEs in relation to the international protection of their intellectual property. It therefore provides its clients from SME sector both the funding for IPR protection in emerging markets and with regional expertise. The “Emerging markets” are defined as all non-OECD member countries, though the emphasis is on China, India, and Russia. Fluent speakers of Mandarin and Russian provide regional and legal knowledge, both through the Vienna headquarters and the Shanghai branch office. AWS has also built up a network of specialized lawyers in the IP field in China, India, and Russia.

IPP Services

While AWS is geared to raise IPR awareness among Austrian entrepreneurs through training and to help them protect and manage their IPR portfolios, IPP provides risk assessment, monitoring and investigation of infringements and support for legal and administrative action in complex environments such as China, India, and Russia. Essentially, however, the programme provides support and assistance for Austrian small and medium sized enterprises in protecting their intellectual property rights in these countries keeping an eye on the IPR regimen and prospects of enforcement of IP.

Lobbying with governments in the target countries is also considered an important background activity by these institutions. Further details of these services can be seen on the websites of AWS and INNOVACESS, which is a consortium of a network of the national patent offices of the European Union, the European Patent Office and the Office for Harmonization in the Internal Market. INNOVACESS is supported by the European Commission.

The main objective with the INNOVACESS network is to provide general information on domestic, foreign and international intellectual property rights to small and medium-sized companies and academia in Europe.

Further Reading

Foot Note: In this three part series, we have covered the best practices on public IPR services for SMEs from Japan, South Korea, Denmark, Australia, Canada, United States of America, United Kingdom, Switzerland, France and Austria. These are by no means the only noteworthy examples of IPR services aimed at helping the SMEs in intellectual property space but are certainly worth emulating to augment the efforts in this challenging area by number of other countries.