| An Ordinance on Patents (Third) Amendment was | | | | product has actually been used in the disputed |
| promulgated by the Government on December 26, | | | | product) lies with the accused rather than with the |
| 2004 to make the Indian patents law WTO compliant | | | | patent holder (in the 1970 Act, the responsibility is with |
| and to fulfill India's commitment under TRIPS to | | | | the patent holder). This is the broad framework, which |
| introduce product patent protection for Drugs, Food | | | | will guide the pharmaceutical industry of India in the |
| and Chemicals with effect from January 1, 2005. | | | | WTO regime ( i.e. post 2005 period). |
| An overview of Indian pharmaceutical industry | | | | In order to increase the global prospects of the |
| The Indian pharmaceutical industry, with US$4 billion in | | | | pharmaceutical industry in the post 2005 period, the |
| domestic sales and over US$3billion in exports, is | | | | Central Government has fixed the deadline of |
| showing satisfactory progress in terms of | | | | December 2003, to comply with the Good |
| infrastructure development, technology base and | | | | Manufacturing Practices set by World Health |
| product use. The industry now produces bulk drugs | | | | Organisation. Since this is mandatory for all the units, it |
| belonging to all major therapeutic groups requiring | | | | means incurring expenditures that could range from |
| complicated manufacturing processes and has also | | | | Rs. 15 lakhs to 1 crore per unit. In some cases, it would |
| developed excellent 'good manufacturing practices' | | | | involve shifting to new premises altogether. A few |
| (GMP) compliant facilities for the production of different | | | | units might exit from business because of this. As |
| dosage forms. The strength of the industry is in | | | | contract manufacturers it is essential that both the |
| developing cost-effective technologies in the shortest | | | | parent unit and the loan licensee meet these |
| possible time for drug intermediates and bulk actives | | | | requirements in cases where the production is meant |
| without compromising on quality. This is realized | | | | for exports. While these standards improve the quality |
| through the country's strengths in organic synthesis | | | | on par with international standards, it will also act as |
| and process engineering. | | | | potential entry barriers for new firms to enter. |
| The focus under the R&D effort is to encourage | | | | The strength of the Indian pharmaceutical industry is in |
| development of new molecules. A provision of Rs. 150 | | | | reverse engineering. Such units by utilising the |
| crore has been made under the Pharmaceutical | | | | provisions under compulsory licensing, exceptions to |
| Research & Development Support Fund. A Drug | | | | exclusive rights and the Bolar exception should aim at |
| Development Promotion Board under the Department | | | | producing the generic version of the patented product |
| of Science & Technology has also been set up | | | | and those that are nearing patent expiry. Such firms |
| for the utilisation of this fund. Feasibility of setting up a | | | | should also be engaged in research leading to new |
| Mega Chemical Industrial Estate in the country with | | | | drug delivery mechanisms and in identifying new uses |
| world class infrastructure facilities is also being studied. | | | | of existing drugs. In this context, it is also essential to |
| For the first time in many years, the international | | | | protect the innovations that have been introduced by |
| pharmaceutical industry is finding great opportunities in | | | | the technology spillovers. It is suggested that in order to |
| India. The process of consolidation, which has become | | | | develop domestic innovations, developing countries |
| a generalised phenomenon in the world pharmaceutical | | | | require utility models or petty patents. These petty |
| industry, has started taking place in India. | | | | patents can be available for a shorter period of time |
| The pharmaceutical industry, with its rich scientific talent | | | | for process innovations made over an existing product. |
| and research capabilities, supported by Intellectual | | | | The TRIPS agreement leaves members to introduce |
| Property Protection regime, is well set to take a great | | | | such legislation, as there are no specific rules on this |
| leap forward. As regards product patents fordrugs, an | | | | subject. Such patents will encourage the small firms. |
| amendment to the Indian Patents Act has been carried | | | | One of the concerns regarding product patents is the |
| out through the Patent (Amendments) Ordinance, 2004 | | | | access to patented products. Some of the provisions |
| on December 26, 2004. The Ordinance amends the | | | | within the TRIPS agreement clearly indicate that price |
| Indian Patents Act, 1970 for the third time with a view | | | | controls could be imposed on the patented products. |
| to introducing product patents for drugs, food and | | | | However, exemptions from price controls has been |
| chemicals. Apart from manufacture of drugs, the | | | | suggested by the government for the products that |
| product patent regime will help the pharmaceutical | | | | are produced domestically using the domestic |
| industry to tap outsourcing of clinical research. By | | | | R&D and resources and are patented in India. |
| participating in the international system of IPR | | | | Such exemptions will keep the prices high and make |
| protection, India, with its vast pool of scientific and | | | | access to the drugs difficult. It appears that `who |
| technical personnel, and well-established expertise in | | | | patents the product' matters more for the government |
| medical treatment and health care, has unlocked vast | | | | than what is patented. In the recently concluded Doha |
| opportunities in both exports and outsourcing and has | | | | meeting, a separate declaration on the TRIPS |
| the potential to become a global hub in the area of | | | | agreement has clarified that members have the right |
| R&D based clinical research. The Patent | | | | to grant compulsory licence in the area of |
| Ordinance also provides adequate safeguards to | | | | pharmaceuticals and that they have the freedom to |
| protect the interest of the domestic industry, and the | | | | determine the ground upon which such licenses are |
| citizen from any increase in prices of drugs. | | | | granted, which can have a considerable impact on the |
| Impact of product patent on Indian Pharma industry | | | | availability as well as on their prices. However, the |
| With a regulatory system focused only on process | | | | amendments made by the Government of India, make |
| patents, helped to establish the foundation of a strong | | | | the procedures very cumbersome which needs to be |
| and highly competitive domestic pharmaceutical | | | | revised in the third amendment to the Patents Act. |
| industry which in the grip of a rigid price control | | | | While parallel trade in pharmaceutical may facilitate |
| framework transformed into a world supplier of bulk | | | | access to medicine, yet compulsory licence will be the |
| drugs and medicines at affordable prices to common | | | | only course of option to facilitate flow of technology |
| man in India and the developing world. Introduction of | | | | and R&D. Scherer and Watal (2001) suggest that |
| product patents will, however, mark the end of a | | | | tax concessions should be provided to the |
| golden age for IPI (Indian Pharmaceutical Industry). The | | | | pharmaceutical manufacturers to encourage them to |
| new regulations will reshape the landscape of IPI | | | | donate the high technology drugs to the less |
| forcing significant changes and divide within the | | | | developed and developing countries which is a viable |
| industry. | | | | option. |
| A look into organization of pharmaceutical producers | | | | A majority of the population does not have access to |
| of India (OPPI) directory shows only 300 units out of | | | | the essential medicines (most of which are off patent) |
| 10,000 registered companies are in the organized | | | | either in the government or private health care |
| sector. While process patent helped to flourish IPI into a | | | | systems because they are not within their capacity to |
| world-class generics industry, product patent regime | | | | reach. Now that the percentage of drugs under price |
| will filter the best from the pack and would be | | | | control has been reduced drastically it is essential to |
| favorable to players with built-in scientific and technical | | | | keep the prices of the essential drugs under check, |
| resources. The impact of the new regulations will not | | | | especially those concerning the common diseases. |
| deter the Indian pharma majors as they are already | | | | Currently only a handful of pharmaceutical firms in India |
| doing roaring business in the very countries where | | | | invest in R&D which needs to be improved. The |
| these patent laws are strictly in force. | | | | Pharmaceutical Research and Development |
| Export markets increasingly drive IPI: in a turnover of | | | | Committee (1999) has suggested that a mandatory |
| US$5 billion, exports constitute $3.2 billion and the | | | | collection and contribution of 1 per cent of MRP of all |
| industry is poised to grow to $25 billion by 2010. The | | | | formulations sold within the country to a fund called |
| share of IPI in world pharmaceutical market is 1.0% | | | | pharmaceutical R&D support fund for attracting |
| (ranks 13th) in value and 8% (ranks 4th) in volume | | | | R&D towards high cost-low-return areas and be |
| terms. The global market for generic drugs is | | | | administered by the Drug Development Promotion |
| estimated at $27 billion (2001) and the expiry of | | | | Foundation. The domestic universities and other |
| patents on drugs will be worth $80 billion (2005) offers | | | | academic institutions can play the role of research |
| a huge opportunity to IPI. India today has the largest | | | | boutiques or contract research organisations (CRO), |
| number of US Food & Drug Administration (FDA) | | | | which can supply the technical know-how and |
| approved drug manufacturing facilities outside the US. | | | | manpower. Units that already have such facilities can |
| In addition, Drug Master Files (DMFs) filed by Indian | | | | also function as a CRO for other firms. |
| companies with the FDA is 126 higher than Spain, Italy, | | | | In the post TRIPS era, the government will have to |
| China and Israel put together. DMF has to be approved | | | | probe in to factors that contribute to the widening gap |
| by FDA for a drug to enter the US market. | | | | between the proposed FDI and the actual FDI and |
| Research & Development (R&D) is a key to | | | | rectify these bottlenecks. Similarly the difference |
| the strength of pharmaceutical industry especially in the | | | | between the number of patents filed and the patents |
| product patent period. The global pharmaceutical | | | | granted calls for a detailed analysis to figure out where |
| industry spent $30.4 billion (2001) on R&D. The | | | | the Indian firms are lacking. |
| R&D expenditure (as a percentage of turnover) | | | | Governments at various levels should take active part |
| by the IPI is low (1.9%) when compared global giants | | | | in disseminating knowledge about the IPRs and the |
| (1016%). With transition into the new regime many | | | | possible strategies that can be adopted by the |
| Indian companies are mobilizing their resources war | | | | industry. This will remove some of the impediments. |
| chest with an increase in their R&D budget. | | | | Lessons should be drawn from the Chinese |
| Government of India (GOI) encouraged the R&D | | | | experiences where systematic efforts were taken to |
| in pharmaceutical companies by extending 10 year tax | | | | educate the bureaucrats, policy makers and the |
| holiday to this sector. Besides, planning commission has | | | | industry about the WTO and product patents in the |
| earmarked $34 million towards drug industry R&D | | | | pharmaceutical industry. India will have to strengthen |
| promotion fund for the tenth plan. | | | | the patent examination process and speed up the |
| FDI in India was low in prior Product Patent era. Why? | | | | processing procedures. This will help in checking the |
| Bringing a new drug into the market costs a company | | | | products that may enter the country utilising the import |
| an average of about $800 to $900 million. Some | | | | monopoly route provided by the EMR. Besides a |
| estimates show that patient recruitment and medical | | | | strong institutional and judicial framework will have to |
| personnel account for nearly 70 per cent of the clinical | | | | be set up for monitoring the prices, to prevent |
| costs that are required to bring a drug to market. The | | | | infringement and trade dress cases of patented |
| less expensive means to raise research productivity is | | | | products respectively. |
| outsourcing research to low cost havens such as India | | | | As far as India's pharmaceutical industry is concerned, |
| and China. The global pharmaceutical outsourcing | | | | various options are possible in the WTO regime. |
| market stands at $10 billion (2004). Pharma | | | | These are to: (a) manufacture off patented generic |
| multinationals have maintained a low-key presence in | | | | drugs, (b) produce patented drugs under compulsory |
| Indian market due to absence of product patents and | | | | licensing or cross licensing, (c) invest in R&D to |
| rigid price controls. Pharmaceutical industry did not | | | | engage in new product development, (d) produce |
| receive significant foreign direct investment (FDI). From | | | | patented and other drugs on contract basis, (e) |
| August 1991 to December 1998 this industry accounted | | | | explore the possibilities of new drug delivery |
| for a meager 0.44% of the total FDI. Introduction of | | | | mechanisms and alternative use of existing drugs, and |
| product patents will see multinationals strengthening | | | | (f) collaborate with multinationals to engage in |
| their presence in the country. The second largest | | | | R&D, clinical trials, product development or |
| population in the world, a growing economy and rising | | | | marketing the patented product on a contract basis |
| income levels makes Indian market difficult to ignore. | | | | and so on. Besides these strategies, India's strength lies |
| Global companies would be reluctant to invest in a | | | | in process development skills. This expertise utilised |
| country where there is no IPR protection. Eli Lilly | | | | within the WTO framework with emphasis on quality |
| (world's 7th Largest Pharma Firm) has its clinical | | | | standards will provide India a competitive advantage |
| research focus in the country and had spent | | | | over other Asian countries. |
| considerable amounts over the last 2-3 years. But we | | | | To conclude we can anticipate more FDI nature of |
| would be only maintaining the quantum and will not | | | | investment in India in the field of Pharma Sector? |
| expand even though there is huge potential. Global | | | | It's a question which requires more time to be |
| companies face the same frustration. | | | | answered, but we can draw inferences from the facts |
| So the main activity of the company in the country | | | | & data discussed above. As from the above |
| would be to introduce products from the parent | | | | discussion it is obvious that Pharma industry is high |
| pipeline.mIn the domestic market, the share of Indian | | | | investment seeking industry, & the other most |
| companies has steadily increased from around 20 per | | | | important fact about it is that it require enormous |
| cent in 1970 to 70 percent now. Ranbaxy Laboratories | | | | R&D. The new Patent regime brings both |
| is the market leader in terms of revenues followed by | | | | opportunities and challenges to the domestic pharma |
| Cipla and Dr Reddys Laboratories. Glaxo is the only | | | | industry. Even larger Indian companies lack the financial |
| multinational to figure among the top ten pharma | | | | muscle to be major international player in basic |
| companies in India. In India, 97 per cent of drugs are off | | | | R&D, that involves discovery of new chemical |
| patent and are manufactured by a vast number of | | | | entities (NCEs). They would be helped by the |
| companies. The key therapeutic segments include | | | | government's decision not to restrict patenting to |
| anti-infectives, cardio vascular and central nervous | | | | NCEs. The Patent Ordinance issued recently defines |
| system drugs. Anti-infective comprise the largest | | | | the term patentability as per the TRIPS guidelines but |
| therapeutic segment in India, accounting for about 26 | | | | does not exclude patenting of incremental inventions |
| per cent of the market. | | | | like new drug delivery systems, polymorphs etc, |
| Globally, pharmaceutical industry grew at a | | | | brightening the chances of Indian companies to benefit |
| compounded annual growth rate of 9.1 per cent in the | | | | from the patent regime, but it may act as a |
| last 23 years to $491 billion propelled by a string of | | | | disincentive for the international Pharma firms to invest |
| innovative blockbusters. Multinationals were reshaped | | | | in India. |
| by mergers and acquisitions as a way of fattening | | | | Again if we look at the patent amendment act there |
| their research pipelines. This at best represents a | | | | are certain provisions of this Act which are |
| short-term solution. With a slew of brand name drugs | | | | discouraging the FDI in Pharma sector like |
| losing patent protection in the next few years and the | | | | 1. Deletion of the provisions relating to Exclusive |
| pressure building for pharmaceuticals to cut price, | | | | Marketing Rights (EMRs) (which would now become |
| these giants find themselves under immense strain to | | | | redundant), and introduction of a transitional provision |
| find new drugs and reduce price. | | | | for safeguarding EMRs already granted. |
| So, from the above discussion it's very evident that | | | | 2. a) Conditional grant of patent (Section 47) : |
| before any proper IPR regime specially in the absence | | | | Empowers the Government to import, make or use |
| of "Product patent" in India it was not a judicious | | | | any patent for its own purpose. For drugs, it also |
| decision for the international Pharma companies to | | | | empowers import for public health distribution. |
| invest here in India. FDI cap was raised from 74% to | | | | 3. Revocation of patent in public interest (Section 66): |
| 100% in 2001 only but we didn't find any change in the | | | | Empowers the Government to revoke a patent |
| pattern of FDI in Pharma Sector. | | | | where it is found to be mischievous to the State or |
| Impact after 2005? | | | | prejudicial to the public. |
| India a signatory to the WTO resolution on TRIPS | | | | 4. Grant of compulsory licence (Sections 82 to 94): |
| Agreement India was thus committed to recognising | | | | Chapter XVI deals with the general principles and |
| product patents by amending The Indian Patents Act | | | | circumstances for grant of compulsory licences in |
| 1970. As per the minimum standards mentioned in the | | | | order to protect public interest particularly public health |
| TRIPS agreement, patent shall be granted for any | | | | and nutrition. These provisions check the abuse of |
| inventions, whether products or processes, in all fields | | | | patent rights. They can be invoked if the reasonable |
| of technology provided they are new, involve an | | | | requirements of the public with respect to patented |
| inventive step and are capable of industrial application | | | | inventions have not been satisfied, and the patented |
| without any discrimination to the place of invention or | | | | invention is not available for public at a reasonably |
| to the fact that products are locally produced or | | | | affordable price, and if the patented invention is not |
| imported. Accordingly, now patents will have to be | | | | worked in the territory of India. Section 92 of this law |
| granted in all areas including pharmaceuticals and the | | | | provides for action in case of national emergency, |
| effective period of protection is for twenty years from | | | | extreme urgency and public non-commercial use, and |
| the date of filing the application. With the | | | | can be invoked without the grace period of 3 years |
| implementation of TRIPS agreement by most of the | | | | from grant of patent. |
| developing countries by 2005, a stronger patent | | | | 5. Use of invention for the purpose of Government |
| regime or product patents will be uniformly applicable | | | | [Sections 100 & 101]: Compliments Section 47. |
| on the pharmaceutical innovations among the member | | | | 6. Acquisition of invention and patent for public purpose |
| countries of the World Trade Organisation. | | | | [Section 102]: Empowers the Government to acquire a |
| The implications of TRIPS for the pharmaceutical | | | | patent to meet national requirements. |
| sector are that: patents will be granted both for | | | | 7. Bolar provision [Section 107 (A) (a)]: Facilitates |
| products and processes for all the inventions in all | | | | production and marketing of patented products |
| fields of technology; the patent term will be twenty | | | | immediately after expiry of the term of patent |
| years from the date of the application (compared to | | | | protection by permitting preparatory action by non |
| the seven years under the 1970 Act), which is | | | | patentees during the life of the patent. |
| applicable to all the member countries and thus rules | | | | 8. Parallel import [Section 107 (A) (b)]: Provides for |
| out all the differences in the protection terms prevailed | | | | import so that patented product can become available |
| in different countries; patents will be granted | | | | at the lowest international price. |
| irrespective of the fact whether the drugs were | | | | These provisions are basically public interest provisions |
| produced locally or imported from another country; | | | | but these are anti FDI in nature because in a sector of |
| though the grant of the patent excludes unauthorized | | | | high investment & high uncertainty every investing |
| use, sale or manufacture of the patented item, yet | | | | firm need complete protection & patronage but |
| there are clauses which provide manufacturing or | | | | here it is not guaranteed. |
| other such rights of the patented item to a person | | | | So we can anticipate that product patent is going to |
| other than the patent holder. In the case of a dispute | | | | have a very little impact on the FDI scenario in a |
| on infringement the responsibility (to prove that a | | | | country like India. |
| process other than the one used in the patented | | | | |