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Volume XI, Number 271

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One Product Cannot Be Covered by More than One Patent: Delhi High Court Holds Against Astrazeneca

INTRODUCTION

The recent decision of the Delhi High Court (“Court”) in Astrazeneca Ab & Anr v. Intas Pharmaceuticals Ltd.1 makes some significant findings on the issue of double patenting. The decision deals with Astrazeneca AB’s (“Astrazeneca”) patents IN 205147 (“IN 147”) and IN 235625 (“IN 625”) (together, the “Patents”) which cover the product compound ‘Dapagliflozen’ (“DAPA”). Below is a brief summary of the decision and its key takeaways.

FACTS

In both the suits, separate benches of Single Judges denied injunction. However, the Defendants were directed to place on record (i) the details, quantum and value of the drug manufactured and sold; (ii) indirect and direct taxes paid; as well as (iii) their assets, from which the damages, if any awarded against them, could be recovered. Plaintiffs challenged the decisions in appeal.

The Division Bench refused to reverse the decisions of the Single Judge and dismissed appeals for the following reasons:

In addition to the above, the Court also noted that the tests of "obvious to a person skilled in the art", "anticipation by publication" and "use before the date of filing of patent application with complete specification", in the context of an earlier patent and its specifications have to be different when the inventor of both is the same. The tests have to be in the context of the “person in the know”, and not of a "person ordinarily skilled in the art". The inquiry, in such a situation, has to be guided by whether the inventor, while writing the first patent application, knew of the invention claimed in the subsequent patent.

CONCLUSION

KEY TAKEAWAYS

1 In FAO(OS) Comm No. 139/2020; 140/2020; 155/2020; 156/2020; 157/2020; 158/2020; 159/2020; 160/2020 and 161/2020

CS(COMM) No.410/2020; CS(COMM) No.411/2020; CS(COMM) No.323/2020; CS(COMM) No.346/2020; CS(COMM) No.414/2020; CS(COMM) No.418/2020; CS(COMM) No.419/2020; CS(COMM) No.426/2020; CS(COMM) No.154/2020

Nishith Desai Associates 2021. All rights reserved.National Law Review, Volume XI, Number 211
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About this Author

Aniruddha Majumdar Lawyer Nishith Desai Assoc. India-Centric Global Law Firm
Member

Aniruddha is a member of the TMT, IP and Education practice at Nishith Desai Associates, Mumbai. Prior to this, he worked with Talwar Thakore and Associates in Mumbai with their finance, corporate and financial regulatory practices. Aniruddha graduated from the National Law School of India University, Bangalore (NLSIU) in 2019. As part of the student exchange program, he studied a semester at the Faculty of Law of the University of Groningen, Netherlands. He has a keen interest in law and technology and was the Chief Editor of the Indian Journal of Law and Technology, a...

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Gowree Gokhale Lawyer Nishith Desai Assoc. India-centric Global Law Firm

A practicing lawyer for 24 years, Gowree Gokhale leads the IP, Technology, Media and Entertainment, data protection law practice of research and strategy driven international law firm, Nishith Desai Associates. She has assisted several international businesses in India entry strategy, corporate and strategic deals, litigation and arbitration in TMT and Pharma sector. She has spearheaded several policy initiatives for the TMT and Pharma industry including for online content companies, gaming industry, IT industry as also for privacy and data protection laws.  She has also...

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Aparna Gaur IP Lawyer Nishith Desai Law Firm
Senior Member IP & TMT Teams

Aparna is a senior member of the IP and TMT team at Nishith Desai Associates. She is integrally involved in IP transactional and advisory work and handles patent prosecution and IP litigation. She has vast experience in advising clients over a wide spectrum of industries in relation to protection and enforcement of their IP. Aparna has authored several articles on complex IP issues in India.

Aparna has represented clients in IP disputes before the Supreme Court of India, the Delhi High Court and lower courts, the Intellectual Property Appellate Board and the Indian Patents Office....

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