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As an ISA & IPEA authority, Indian Patent Office can now search or examine a particular

international application as per the agreement signed with International Authorities and

the International Bureau. If another Authority is competent to perform the same search

or examination of any particular application, the PCT applicant will choose the desired

Authority in the request or demand. IPO will abide by PCT Regulations and Guidelines

for execution of its new role and that will definitely make the search reports issued by

Indian Patent office world-class.

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Indian Patent office to Function as ISA & IPEA From 15th October 2013, Indian Patent office started functioning as the International Search

Authority (ISA) and International Preliminary Examining Authority (IPEA) under PATENT

COOPERATION TREATY (PCT).

The International Searching Authorities and International Preliminary Examining

Authorities are national Offices or inter-governmental organizations entrusted with a

number of tasks under the PCT, especially the establishment of international search and

preliminary examination reports.

Vol-8, Date: 28st October, 2013

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Purpose of International Preliminary Examination –

The purpose of international preliminary examination is not grant or refusal of a patent, but provision of a preliminary and non-

binding opinion on whether the claimed invention appears to be novel, to involve an inventive step and to be industrially

applicable as defined in Article 33 PCT. It depends on the international application concerned and, especially, on the result of the

international search.

It is carried out on condition that the applicant has (validly) filed a “demand” and paid the fees due and provides applicant with a

good basis on which to evaluate the chances of obtaining patents before entering in national phases of various designated patent

offices.

Besides, this news is definitely a reason for delight for all Indian PCT applicants who can now select the Indian Patent Office as the ISA

while filing a PCT application. This will reduce the Indian patent filing cost to ~50%. Earlier, PCT application fee was around 4000

US$ (when EP was chosen as ISA). Now, with IPO serving as ISA, PCT filing fees has come down to ~1800 US$ (which includes PCT filing

fees along with 10,000 INR – Indian ISA fees).

Our readers can get more insight into PCT International Search and Preliminary Examination Guidelines,

http://www.wipo.int/export/sites/www/pct/en/texts/pdf/ispe.pdf

S O M E O T H E R T O P N E W S I N T H I S C A T E G O R Y:

European Patent Office Abolishes Prior “Short” Divisional Guidelines Read: http://goo.gl/5T7bUF Canada & European Union to Soon Enter in a Free Trade Agreement ‘CETA’ Read: http://goo.gl/YNAIZA Single Trans-Tasman Patent Application & Examination Processes for Patents Approved in New Zealand Read: http://goo.gl/YUYHTb US Congress Introduces Bill for Patent Law Reform in US Read: http://goo.gl/8dxrdl

© 2007 - 2013 Sagacious Research. All Rights Reserved.

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As such, majority of the multi-billion drug market would lose patent protection due to a phenomenon called as a ‘patent cliff’. Majority of

the multi-billion drug market would lose patent protection due to a phenomenon called as a ‘patent cliff’. Patent Cliff refers to the

phenomena of patent expiration dates and an abrupt drop in sales that follows for a group of products capturing high percentage of a

market. Usually, this phenomena are noticed when they affect blockbuster drugs/pharmaceutical products, so called as their sale exceeds 1

billion USD per year. Some examples of blockbuster drugs discovered in the early 1990’s and going off patent between 2013 and 2015 are

Cymbalta, Nexium, Clarinex, Celeberex and Abilify. Patent for others drugs like Rituxan, Humira, Novolog and Avastin are expiring by

2019.

The abrupt drop in sales expected after the date of patent expiration can be estimated with a simple formula:

Sales = A/Y

Where,

- “A” is the peak sales value before the patent expiration

- “Y” the years after the peak sales year (where peak sales year is considered year 0)

The drug industry has been cutting costs to help boost margins and compensate for those patent expirations. However, if we look at the

larger picture, there are some positive facets of patent expirations that we often fail to even consider.

Rise of Generic Drug Makers & Lowering Down of Healthcare Cost

Though the revenue obtained through the sales of these products is at risk of falling drastically within the years of the patent

cliff but that will also open half of this market for aggressive generic majors. As such, companies like Sun Pharma, DRL,

Lupin, Aurobindo, Alembic, Ranbaxy and others in India filed para-IV certifications to get FDA approval to sell their generic

versions at an average of 30% of the price of the brand-name originals. Generics are already available for a number of drugs

including Zyprexa.

Instigating Innovation & Business Growth

Eli Lilly Co., a global pharma major, lost major patent protection on its all-time best-seller Zyprexa, an antipsychotic drug in

2011. This dropped its $4.6 billion sales in 2011 to cheaper-priced generics. In December, Lilly will also lose U.S. patent

protection on its current No. 1 drug, the antidepressant Cymbalta, which generated $1.37 billion in sales in the last quarter.

Yet, Eli Lilly is in the pursuit of launching of perhaps a half dozen new drugs by 2015 to offset much of the sales hit. Lilly has

four new diabetes drugs scheduled to go on sale in 2014 and 2015, assuming they’re all approved by U.S. regulators.

Ramucirumab, an experimental treatment for gastric cancer could soon reach the market too. The drug is in final-stage

testing. Moreover, Lilly drastically expanded its business in China and in 2012 half of its revenue came from outside the U.S.

Scaling Ahead of The Problem of

Patent Cliff Patent Cliff refers to the phenomena of patent

expiration dates and an abrupt drop in sales that

follows for a group of products capturing high

percentage of a market.

An outbreak of patent expirations that started

since 2010 is expected to continue till 2020.

L I F E S C I E N C E S

Sales = A/Y

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Way Forward – Biosimilars

The biosimilar segment is fast growing (as per an estimate it will grow from $172 million in 2010 to an estimated $3.927 billion by 2017)

and if biopharma companies take initiatives in this direction, they can greatly benefit and boost their sales and growth despite of patent cliff

besides compensating for huge losses incurred upon them due to patent expirations of blockbuster biologic compounds by 2020 that

generated a combined sale of $67 billion for them.

Biosimilars are officially approved subsequent versions of a biological medicine

that has already been patented or authorized and are made by a different

sponsor following patent and exclusivity expiry. In US, FDA and in Europe,

European Medicines Agency (EMA) regulates the approval procedure for

biosimilars.

Conclusion

So basically, patent cliff isn’t that big an issue that it is perceived as. It is just a

transitory phase in the global business climate wherein the financial future of pharmaceutical companies will depend on how they manage

the transition of many of their brand drugs to the generic market and on their ability to develop novel therapeutics with significant profit

potential and finding alternatives like biosimilars.

Smartphone War- Nokia vs. Blackberry

Nokia Corporation has sued Blackberry for infringing its “WLAN patents”

One of the most prolific patent war happened between Nokia and Blackberry in 2012.

Finnish mobile giant accused Research in Motion for infringing WLAN patents that

enable the handsets to connect to wireless local access network or WiFi. Wi-Fi allows

cheaper deployment of local area networks (LANs) and thus, manufacturers are

building WLAN or wireless network adapters into most of the devices including

laptops and mobiles. If a smartphone is capable of using built-in Wi-Fi, it gives its

users the opportunity to connect easily from hotels, home, offices, book stores and

client sites. WLAN boosts business efficiency as research, invoicing, email and project

development can be handled without having to return to a desktop computer at the

main office.

S O M E O T H E R T O P N E W S I N T H I S C A T E G O R Y:

The 3 Best-Selling Drugs in the World: Read: http://goo.gl/wRH3aQ Myriad Sues GeneDx on BRCA & Other Genetic Diagnostic Patents Read: http://goo.gl/7Ywnml Are Patents Blocking Access to Life-Saving Drugs in India? Read: http://bit.ly/HcKID1 Eli Lilly’s Profit Soars as US Patents on Anti-depressent Drug “Cymbalta” Nears Expiration Read: http://goo.gl/KVMifb

T E C H N O L O G Y

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In 2012, a smartphone war broke out in German, UK and US courtrooms between smartphone manufacturing giants costing billions of

dollars to fighting companies. Nokia accused Blackberry manufacturer of infringing WLAN patents that enable the handsets to connect to

wireless local access network or WiFi. The company had earlier lost a patent dispute to Nokia for infringing WLAN patents and agreed to

pay them a hefty royalty. But the two companies could not negotiate and agree on license fees. RIM, then mistakenly thought it would

benefit from triggering an arbitration proceeding, which it initiated in April 2011. This backfired. Then, Nokia, who settled its infringement

lawsuits on reasonable licensing fees with other companies like Apple, became hell bent on seeking the ban of Blackberry devices in US, UK

and Canada. Later in December, two companies could reach to an agreement but its terms were not disclosed. The two mobile companies

were also battling in German courts in a separate patent infringement case dealing with media tags, software update methods and data

sharing.

About WLAN Technology

Wi-Fi allows cheaper deployment of local area networks (LANs) and thus, manufacturers are building WLAN or wireless network adapters

into most of the devices including laptops and mobiles. If a smartphone is capable of using built-in Wi-Fi, it gives its users the opportunity

to connect easily from hotels, home, offices, book stores and client sites. It boosts business efficiency as research, invoicing, email and

project development can be handled without having to return to a desktop computer at the main office. As such, use of WiFi equipped

devices like laptops and mobile phones helps tremendously in day-to-day activities.

Here are two exemplary patents that were granted to Nokia Corporation in WLAN technology area-

1. US 8363626 B2 – Patent on Mechanism to enable discovery of link/network features in WLAN networks

2. WO 2004034714 A8- Patent on Network selection in a WLAN

In general, patents are open to interpretation but if the company owing those patents believes that its rival has copied its patent without

paying royalties for it, then it can attempt to sue for patent infringement. If successful, the firm found guilty of infringing may be ordered to

pay damages and royalties for the use of the patent. In extreme cases, it can also request a ban on those patents. It is illegal if standard

essential patents (or SEP’s) are used without entering in a licensing deal with the inventor on fair, reasonable and non-discriminatory

(FRAND) terms. As far as Nokia’s WLAN patents are concerned, they are required by every phone to work and thus, these are standard

essential patents.

Nokia sued Blackberry for patent infringement as it found that their mobile phones were using this technology without paying royalties for

it. When Nokia could not be satisfied with the terms of licensing, it requested a ban on the sale of the infringing products.

Here, it is also important to note that the patent portfolio of Nokia is quite strong. Nokia has aggressively defended its patent portfolio

while its handset business has fallen on tough times. Recently, it hitched its smartphone wagon to Microsoft’s Windows Phone platform in

a bid to recapture some of market lost to Apple and Google’s Android-based mobile offerings. But it continues to generate around £400m

of revenue from patent royalties each year and thus, company’s royalty payments are of special interest. Like Nokia, RIM has been losing

market share since the introduction of the iPhone and Android devices and the company is struggling to reverse the current trend but has

failed to do that so far. The poor sales performance of the BlackBerry Z10 embedded with new Blackberry 10 operating software was also a

major blow to the corporation’s fortunes.

One of the strongest drawbacks of Blackberry has been the lack of foresight in matters related to securing rights over some essential

technologies. While Nokia proactively secured their patent rights in a timely manner over some really important technologies (like WLAN)

and managed to reap good profits from their patent portfolio, Blackberry who also owes a patent portfolio worth millions of dollars, failed

to do so. If the company would have managed its patents strategically, which it could have done by investing its resources as in technology

watch services that help in keeping track of all the technologies that may be patented in this domain, it could have averted such unfortunate

losses on litigation matters related to intellectual property.

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An insightful patent search report produced by a professional patent search service provider is an effective tool against infringement

lawsuits that incurs losses of millions of dollars to the technology firms, such as Blackberry. It is time that Blackberry, regardless of the

path that it choose to follow, understand that the company’s patent portfolio is its primary asset and it needs to be managed in a

professional manner.

BB- Patent Age

Blackberry’s patent portfolio’s average patent age is just 3.4 years. Patents last 20 years from the date of their application, making

BlackBerry’s 3.4-year average appealing. In the typical portfolio, just about 5 percent of patents have any real value because not all patents

are created equal. Yet, a 15-plus year of useful life of Blackberry’s portfolio, makes it quite significant.

An Insight into a Few Important Patents of BB

BB Patents for QNX technology

QNX technology, also used in BlackBerry 10 operating system, is a platform for devices that manage nuclear-power plants, car

infotainment systems and unmanned aerial drones for the U.S. military. Premium companies, including Porsche, Cisco, General Electric

Co. and Caterpillar Inc., are using this technology in their products.

BB-Patents for Information Security

Besides that, BlackBerry has 9,268 granted patents and applications including 190 patents related to information security, which

remains the core of its appeal to government, bank and military customers like the North Atlantic Treaty Organization. For example, U.S.

Patent 20130254528 entitled Secure Message Handling on a Mobile Device that maintains efficiency in power use for sending and

forwarding e-mails while improving digital security.

Typically, an e-mail message forwarded from a mobile device doesn’t include an encrypted signature

when directing the e-mail to a messaging server, but this innovation would include the encryption

without increasing bandwidth use.

BB-Patents for Qwerty Keyboards

BlackBerry is still active in claiming patent rights for devices with full keyboards. Likewise, with U.S.

Patent 8537108 entitled Navigation Tool with Audible Feedback on a Handheld Communication

Device Having a Full Alphabetic Keyboard, the company has developed a better system for providing

user feedback of device navigation through a keyboard input. Here, a navigation tool on the keyboard

Why is Blackberry Accruing Patents?

BlackBerry Ltd.’s sales are tumbling and yet the ace smartphone maker is actively accruing

patents.

BB- Patent Portfolio Overview

BlackBerry currently holds 5,236 U.S. patents and approximately 3,730 active patent

applications. According to an estimate given by Intellectual Property Owners

Association, the company received 986 patents last year, a 49% increase from 2011. As

such; it is much evident that Blackberry is hoarding intellectual-property. The

struggling smartphone maker is exploring new strategic options including a sale, and

the buzz is that if that happens, BlackBerry’s patents will certainly make it a fairly

valuable and lucrative buy.

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would provide an audible sound when operated by a user to navigate between icons and other selectable items.

In another patent filing, company reveals a Storable Keyboard having variable angular orientations. A keyboard moves between a stored

position inside the housing and a deployed position just like a matchbox.

A few outstanding patent buy outs and deals that have been signed:

1. In the Nortel auction of July 2011, more than 6,000 patents from Nortel were auctioned for approx. $4.5 billion and BlackBerry

paid about $770 million for its share. Other potential bidders were Apple Inc., Google, Nokia etc.

2. Google paid $12.5 billion for Motorola Mobility, another former mobile-phone pioneer, primarily for a patent portfolio so that it

could use it as a safeguard against litigation involving its Android operating system.

3. Most recent Nokia Microsoft $7.2 billion deal shows that patents still have plenty of value, including their ability to create fresh

revenue. Nokia sold its handset business to Microsoft but kept control of its patents, which now generate more than 500 million

euros ($676 million) a year in licensing revenue.

It is much evident that BlackBerry has a rich patent portfolio. Thus, BlackBerry could drive its bidding price to as much as $5 billion.

Financial Holdings Ltd. has already offered a $4.7 billion buyout proposal to Blackberry but no official deal has been signed.

Negotiations with relevant bidders play a vital role in such a scenario, thus, seeking services from patent research service

providers who provide product-to-patent mapping services is a much thought over and calculated step. These services can help

potential buyers (and/or sellers) in evaluating and understanding what patented technology is behind the product and what all features of a

product can be attributed to its patent. Thus, strategic business decisions regarding segregating patent portfolio into patents with potential

for buying/selling and licensing can be formulated.

Conclusion

It is unlikely that Blackberry commands the same premium as Nortel or Motorola Mobility because market has changed. But it is certain

that if BlackBerry’s portfolio is properly analysed, it can make the company a very lucrative buy. Its licensable patents alone should be able

to earn on an average at least $100 million in licensing revenue annually.

T E C H N O L O G Y

S O M E O T H E R T O P N E W S I N T H I S C A T E G O R Y:

AMD, Altera, ADI Emerges Top 3 semiconductor Innovators: Says Patent Metric Read: http://goo.gl/Hc8Tva Twitter’s Dearth of Patents Could Hinder it Down the Road: Says Report Read: http://goo.gl/4v2eB8 ‘Steve Jobs Patent’ On Multitouch To Blow Off All Android Makers as USPTO Confirms All Its 20 Claims Read: http://goo.gl/YDdAfL Google Plans to Patent DJ’s Favorite Hand Gestures Read: http://goo.gl/dL6Yxu Neonode Wins US Patent for Flush (Bezel-free) Cover-Glass Design, With Potential to Replace Capacitive Touchscreens Read: http://goo.gl/pRrzsm

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