In Regents of the University of California (the ‘Appellant’) vs Controller of Patents and Designs (the ‘Respondent’) [C.A.(COMM.IPD-PAT) 481/2022], the Delhi High Court upheld the rejection of a patent application for genetically modified salmonella vaccine due to insufficient disclosure and overly broad claims, non-patentable subject matter, and failure to deposit recombinant microorganism as required under […]
Publications
Exploring the New Patent Playbook: Establishing a prima facie case before the issuance of a Notice for Pre-Grant Oppositions
Introduction In India Patent Application No. 202417006578, the Assistant Controller of Patents & Designs, issued an order in the context of a Pre-grant Opposition (‘PGO’) against Pharmazz Inc.’s said patent application. This decision is particularly notable as it represents the first application of a new rule requiring the establishment of a prima facie case before […]
India- Preserving Celebrity Rights Through Intellectual Property Rights
WHAT ARE CELEBRITY RIGHTS? The term ‘celebrity’ is often seen as a mark of honor and success. While athletes, artists, and businesspeople earn it through talent or charisma, royals inherit it by birth or marriage. Others may gain fame unexpectedly through public or media attention. When celebrities protect their personality rights, two key aspects arise:– […]
India- Court clarifies the criteria of “Technical Contribution” in relation to computer-related inventions
The Delhi High Court has offered important insights into the understanding of Section 3(k) of the Indian Patents Act ,1970 (the “Act”) in its decision, Blackberry Limited v. Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 318/2022]Top of Form. The Court has established a significant precedent and has clarified the scope of “technical effects” in relation to computer-related inventions (‘CRIs’). […]
India- Permissibility of filing a divisional application on the date of grant of the parent application?
In BASF SE v. Controller of Patents and Designs ((T)CMA(PT) No.38 of 2024), the Madras High Court quashed the order passed by the Controller of Patents and Designs refusing to grant the patent application in respect of a Divisional Application on the ground that the said divisional application was filed after the grant of patent […]
A guide to safeguard industrial designs in India
An industrial design recognizes new creation and original features of new shapes, configuration, surface patterns, ornamentation and composition of lines or colours applied to articles which, in the finished state, appeal to and are judged solely by the eye. A new and innovative design makes a product aesthetically attractive, appealing, or desirable, and increases product’s […]
India- High Court reminds the Indian Patent Office to issue reasoned decisions/orders
In Regeneron Pharmaceuticals v Controller of Patents and Designs ((T)CMA(PT) No.191 of 2023), the Madras High Court set-aside an order passed by the Indian Patent Office (‘IPO’) on the grounds of lack of sufficient reasoning and absence of a speaking order.. Consequently, the matter was remanded back to the IPO for consideration afresh. Background: The […]
Novartis v. Natco Pharma Limited – Patent Examination and Opposition proceedings under the Patents Act are ‘Parallel but Independent’, says Delhi High Court
In the case of Novartis Ag v. Natco Pharma Limited & Anr., a Division Bench of the Delhi High Court (in LPA 50/2023,) clarified that the process of substantive examination of a patent application and a pre-grant opposition proceeding are two separate and independent processes/proceedings, and that the opponent has no right to intervene in […]
India- High Court remands matter back to the Patent Office owing to lacunae in assessment of inventive step
The Madras High Court, in a ruling concerning an appeal filed by Hendrickson USA (producers of heavy-duty suspension systems), remanded their patent application for an invention entitled the “Axle Mount for Heavy-Duty Vehicle Brake System Components”, back to the Patent Office. The Court determined that the Patent Office had not sufficiently evaluated the “technical advancement” […]
Protecting Ideas by Universities: A Guide to Patent Filing in India
Since the enactment of the Bayh-Dole Act in 1980, many countries have favoured patenting by universities over patenting by funders or inventors. Patent filings by universities have surged in India as well in the recent past, thanks to exponential growth in research & development (R&D) activities. This calls for a revisiting of the issue from […]