Case Analysis of USPTO Patent Grant # 5,401504

K.P.Vani* and R. Kalpana Sastry

*Scientist, FCC, ANGRAU,Hyderabad-500030email:kandivani@yahoo.co.in

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Introduction

• Major challenges-Intellectual Property Management

• Knowledge is an economic tool in trading

• Agriculture is also a trade issue– Building intellectual property in national agricultural system becomes

mandatory and necessity

• But enactment of laws in compliance with the standards set by WTO are becoming increasingly complex

• Analysis of Patent Grant of USPTO #5,401,504 was done to understand its implications on intellectual property management in India

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Methodology

• Descriptive analytical method

• Data collected from primary and secondary sources like internet sources bulletins books,research publications

• Interactions with NGO’s, Lawyers, Policy makers

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Turmeric • Ancient spice,native of South East

Asia cultivated primarily in china, Taiwan ,Srilanka,Java,Peru Australia and W.Indies

• India-– AP, Maharashtra,Orrisa,TamilNadu,Kerala

•Traditional plant ,used as medicine condiment ,flavoring and culinary spice

• Has religious significance (Aggarwal et al )

• A tuberous rhizome -commercial value - used as cure for jaundice -as coloring agent ,rich dye

• In ayurvedic system of medicine,therapeutical value of turmeric is recognized (Alyson,2004)

Sources: http://www.botanical.com/botanical/mgmh/t/turmer30.html

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Patent no. Patent title Inventors Assignee

5,401504 Use of turmeric in wound healing

Das Suman Cohly and Harihar P.

University of Mississippi

Medical Centre

Date of Filing Patent : Dec 28 th 1993 Date of Patent Grant : Mar 28 th 1995

Grant was mainly due to promote wound healing At the site of an injury by topical application At oral intake of turmeric promotes healing

USPTO Patent Grant

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Six Claims

1. Method of promoting the healing of a win a patient ,which comprises essentially administering a wound healing agent consisting of an effective amount of turmeric powder to the

said patient

2. Method according to claim 1,wherein the said turmeric is orally administered to said patient

3. Method according to claim 1,wherein the said said turmeric is topically administerd to said patient

4. Method according to claim 1, wherein the said turmeric is both orally and topically administered to the patient

5. Method according to claim2, wherein the said wound is a surgical wound

6. Method according to claim 1,wherein the said wound is a body ulcer

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National Cry

• Grant of the Patent spiraled protests among sections of society in India

• Entire nation denounced grant on a number of accounts like:

novelty culture time honored , sacred

nature heritage

(ETC,2005)

Pressure to challenge grant

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Provisions as per US Law

•Anyone can request re-examination –period of enforceability of patent•Substantial new question of patentability must be presented for re-examination to be ordered •Prior art during re-examination is limited to prior art patents or printed publications applied under the appropriate parts of 35 United States Code (U.S.C) 102 and 103•If ordered,actual re-examination proceeding is ex-parte in nature •Decision on request must be made within three months from initial filing and remainder of proceedings must proceed with special dispatch•If ordered ,re-examination proceedings will be conducted to conclusion and issuance of certificate•Scope of claim cannot be enlarged by amendment

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Process of Re-examination of US Patents

• A need to understand US Patent law and legal

provisions

• Any person may file a request for re-examination

of a patent –– Corporations or Governmental entities or even the

patent owner

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Challenge by Government of India

• CSIR took initiative

– 32 references establishing prior art existence

– Printed references prior to date of patent

• India’s contention “NO novelty “

– It’s a Prior art

• USPTO ,rejected al six claims –

– “anticipated by the submitted reference”

• Hence invalid under 35 USC 102 and 103

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Action by patent claimers and Result from USPTO

• University of Mississippi patent assignee decided not to pursue the case .

• Transferred rights to the inventors• Inventors filed a response

– Argued that powder and paste had different physical properties (bio availability and absorbability ) .

– Oral application with honey itself has wound healing purpose• Examiner rejected all claims and made action final• Subsequently,the inventors had an interview with the examiner• On 20 th November 1997,examiner rejected all claims once

again as being anticipated and obvious • Hence , rejection of the case was straightforward

– Based on lack of Novelty• Re-examination certificate was issued on case on April 21,1998

– Proceedings to close http://patenting1.uspto.gov/.

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Lessons• Need for patent officers to check for “prior art” before

granting

• Need for more comprehensive patent laws

• National acts like PPVFR Act,2001 and Biodiversity Act ,2002 to be made enforceable

• Monitoring of patent information and familiarity with patent office practices

• Creation of Traditional Knowledge Digital Library, Traditional Knowledge Resource Classification System

• Inclusion of traditional knowledge in International Patent Classification system

• Training of S and T personnel in patent claims