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INDIA JURIS

 

Advocates & Corporate Legal Consultants

May 2007

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This E-Newsletter has been published by India Juris, full service Indian law firm with special expertise in Business, Corporate & IP laws, on requests from clients and associates worldwide with an object to keep them abreast of latest legal & business developments in India.

 Contents 

Corporate & Commercial laws

*    Overseas Investment by Venture Capital Funds in Offshore units

*    Liberalization - Reimbursement of pre-incorporation expenses
*    Liberalization - Remittance towards donation by Corporates
*    Liberalization - External Commercial Borrowings
*    Liberalization - Remittances for consultancy services

Intellectual Property laws

*    Wockhardt puts patent law to test, moves HC for exclusivity

*    Ranbaxy’s US launch of lipitor drug only in 2010
 
Corporate & Commercial laws
Overseas Investment by Venture Capital Funds (VCFs)

RBI has permitted vide notification dated 30th April 2007 Indian Venture Capital Funds (VCFs), registered with SEBI, to invest in equity and equity-linked instruments of off-shore venture capital undertakings, subject to an overall limit of USD 500 million. Allocations of limits to individual VCFs will be made by SEBI, subject to such terms and conditions as SEBI may deem necessary. Accordingly, Domestic Venture Capital Funds registered with SEBI, desirous of making investments in off-shore Venture Capital Funds may approach SEBI for prior approval in this regard. No separate permission from the Reserve Bank is necessary for such VCFs

 
Liberalization - Reimbursement of pre-incorporation expenses

Till now prior approval of the Reserve Bank was required for drawing foreign exchange for remittance exceeding USD 100,000 by an entity in India by way of reimbursement of pre-incorporation expenses. Now vide notification dated 30th April 2007 RBI has permitted to allow remittance of foreign exchange towards reimbursement of pre-incorporation expenses incurred in India up to 5 per cent of the investment brought into India or USD 100,000, whichever is higher, on the basis of certification from statutory auditors

 
Liberalization - Remittance towards donation by Corporates

Till now, remittance of donation exceeding USD 5000 per remitter / donor per annum required prior approval of RBI.  Further, Indian corporates with proven track record desiring to contribute funds from their foreign exchange earnings for setting up chairs in educational institutions outside India and similar such purposes were required to obtain prior approval of Reserve Bank, but now vide notification dated 30 April 2007 RBI has permitted Banks to make remittances on account of donations by corporates for specified purposes as under :

i. Creation of Chairs in reputed educational institutes;
ii. Donations to funds (not being an investment fund) promoted by educational institutes; or
iii. Donation to a technical institution or body or association in the field of activity of the donor Company.

The remittances are subject to a limit of one per cent of the foreign exchange earnings during the previous three financial years or USD 5 million, whichever is less. Applications for remittances for purposes other than those specified above may be forwarded to the Chief General Manager, Reserve Bank of India, Central Office, Foreign Exchange Department, Foreign Investments Division (EPD), Central Office Building, Mumbai-400 001, together with (a) details of their foreign exchange earning during the last 3 years, (b) brief background of the company’s activities, (c) purpose of the donation and (d) likely benefits to the corporate.
 

The existing facility for remittance up to USD 5000 per remitter / per donor per financial year towards donations by Indian corporates would continue.

 
Liberalization - External Commercial Borrowings (ECB)

With a view to providing greater flexibility to the corporates in managing their liquidity and interest costs dynamically, the existing limit for prepayment of ECB has been enhanced from USD 300 million to USD 400 million. Accordingly, AD Category - I banks may allow prepayment of ECB up to USD 400 million, without prior approval of the Reserve Bank subject to compliance with the minimum average maturity period as applicable to the loan

 
Liberalization - Remittances for consultancy services

Up to now prior approval of the Reserve Bank was required for remittance exceeding USD 1,000,000 per project, for any consultancy service procured from outside India. RBI vide notification dated 30th April 2007 has raised the limit for remittance for consultancy service procured from outside India by Indian companies executing infrastructure projects from USD 1 million per project up to USD 10 million per project.

For this purpose, infrastructure sector is defined as (i) power, (ii) telecommunication, (iii) railways, (iv) road including bridges, (v) sea port and airport, (vi) industrial parks, and (vii) urban infrastructure (water supply, sanitation and sewage projects). In all other cases, the existing limit of USD 1 million, per project, for any consultancy service procured from outside India, will continue.

 

Intellectual Property Laws

Wockhardt puts patent law to test, moves HC for exclusivity
Wockhardt has filed a case with the Bombay High Court after the Indian patent office rejected its application for a new version of nadifloxacin — a topical antibiotic sold under the brand name Nadoxin. The case will reopen the debate on the value of incremental innovation — meaning new forms, derivatives and new drug delivery systems of existing molecules — as companies seek further clarity on the definition of patentibility in India.

After pre-grant oppositions were filed against Wockhardt application last year, Wockhardt was refused a patent for Nadoxin. Wockhardt is now appealing against the Indian patent office’s decision by taking this case to the high court.

Nadoxin was launched by Wockhardt in 2002. In December 2003, the drug was granted exclusive marketing rights (EMR) on the premise that it was the only quinolone — a family of antibiotics — preparation that could be used for topical application. The EMR were granted for five years, or till it was made redundant by a product patent. Since the new patent Act came into effect in 2005, Wockhardt had made an application seeking a patent for the drug. If granted, it would have enabled the company to retain its exclusivity in this market.

Last year, C
ipla had filed a pre-grant opposition to Wockhardt’s patent application for Nadoxin, claiming that similar drugs already existed in the market. Subsequently, the Indian patent office denied Wockhardt a patent for its antibiotic on the grounds of ‘prior art’ — Wockhardt’s so-called innovation was information already in the public domain
 
 
Ranbaxy’s US launch of lipitor drug only in 2010

WITH the US Supreme Court rejecting an appeal by Ranbaxy to launch a generic drug of Lipitor in the US before its patent expires in 2010, Ranbaxy’s last hope for an early launch of atorvastatin — the generic version of Pfizer’s blockbuster drug Lipitor – in the US appears to have squashed.
 

Last year, a federal court ruled a verdict against Ranbaxy, in the 893 patent, and had given the company two months time to appeal against the adverse decision in the Supreme Court. The US Supreme Court declined to intervene in Ranbaxy’s appeal against the federal court’s verdict, which had uphold Pfizer’s exclusive market rights for Lipitor in the US.

Ranbaxy can launch its atorvastatin by on March 2010. However, Pfizer has approached the US Patent and Trademark office to re-examine its patent for Lipitor in an attempt to claim patent protection till 2011. A decision in this matter is pending. A favourable verdict for Pfizer may mean that Ranbaxy’s launch date will be pushed back to 2011.
 

Anti-cholesterol drug Lipitor is the world’s largest selling drug with sales worth about $13 billion last year. In the US, Lipitor’s market size is about $8.5 billion (two-third of its global sales). Ranbaxy’s launch of the atorvastatin is crucial in the company’s plan to generate nearly $2 billion in sales over the next five to six years.
 

In 2003, US-based world’s largest drug-maker Pfizer had sued Ranbaxy for alleged patent infringement over the latter’s plans to launch generic drug of Lipitor. In 2005, a court in the US held Pfizer’s two patents valid. But following an appeal and subsequent favourable verdict in one of the patents last year, Ranbaxy can now launch atorvastatin by 2010. Ranbaxy has locked horns with the Pfizer in 17 countries over patent infringement of Lipitor

 

 

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