On January 21, 2005 the Government of India issued a Special Notice that all patent applications filed or claiming priority up to July 20, 2003 shall be deemed to have been published. Accordingly, Requests for Examination (RFE) can be filed in respect of all applications filed or claiming priority up to the aforesaid date. The complete specification in respect of all such applications can be inspected at the Patent Office.

Once a Request for Examination (RFE) is filed in respect of a published patent application, the application will be examined as per the amended Patents Act (as amended by the recently promulgated Patents Ordinance, 2004). This is the testing moment for the Indian Patent Examiners. They will be examining patent applications after the removal of the controversial Section 5 from the Indian Patents Act. By way of background, it is this Section that ensured only a limited term process patent protection for inventions claiming ‘food’, ‘drug’, and ‘medicines’ for over three decades. This provision had enabled Indian generic pharmaceutical producers to manufacture and market generic versions of proprietary drug molecules in the country.

The Patent Office has not issued any guideline for examination of patent applications for the post TRIPS compliant patent regime. Nor have they issued any specific guideline in respect of pharmaceutical product applications. Consequently, one is most likely to find the reflection of the Examiner’s subjective understanding of the amended legal provisions and the invention claimed in the whole process of prosecuting a pharmaceutical patent application in India. Consequently, the craft of drafting patent specifications in general and claims in particular, could play a major role in successfully prosecuting pharmaceutical product patent applications in India. The Indian Patent Office often gives persuasive value to granted concurrent European Patents. As a strategy, Patent applicants in India could submit a copy of the claim set accepted by the European Patent Officeif available, during the Examination of the corresponding Indian applications.