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 […]
Publications
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 […]
India- Drastic changes to Patent Working Requirements
The filing of a Working Statement (regarding the working of patented inventions on a commercial scale in India) is a statutory requirement under the India Patents Act, 1970 (as amended) (the ‘Act’). Pursuant to the latest amendments to the India Patents Rules, 2003 (as amended) (the ‘Rules’) (read together with the Patents (Amendment) Rules, 2024 […]
India- Non-attendance at patent hearings cannot tantamount to abandonment
In Star Scientific Limited v. The Controller of Patents and Designs, C.A.(COMM.IPD-PAT) 20/2024, the Delhi High Court reversed the decision of the Controller of Patents and Designs which had rejected patent application no. 202017011947 on the ground that the Applicant/ Appellant did not attend the pre-scheduled hearing (and consequently, that all the objections raised raised […]
India- High Court emphasizes the crucial role of procedural fairness in patent application evaluation
The surge in patent filings and government initiatives highlight India’s commitment to fostering innovation. Despite challenges faced by the Indian Patent Office and the applicants, the principles of natural Justice remain pivotal. A recent ruling by the Delhi High Court in the matter of Microsoft Technology Licensing LLC v. The Assistant Controller of Patents and Designs […]
India- Withdrawn Patent Application Cannot Be Used as Prior Art
In a recent judgement, the Madras High Court set aside an order issued by the Controller of Patents (the “Respondent”) against Dr. Vandana Parvez and others (the “Appellant”) refusing the latter’s Patent Application. Background: The Respondent refused the patent application numbered 202041010232 (hereinafter referred to as “IN’232”) as being anticipated by a patent application numbered […]
UDRP domain name complaints based on Bad faith- Good outcomes!
The World Intellectual Property Organization (WIPO) recently issued an interesting decision in a Uniform Dispute Resolution Policy (UDRP) proceeding, in Philip Morris Products S.A. v. Konstantin Danilidi Case No. D2024-0008. Philip Morris Products S.A. (the “Complainant”) contended that the disputed domain name <heetflavrs.com> was registered and is being used in bad faith by Konstantin Danilidi […]
India- Permissibility of claim amendments in the context of methods of agriculture or horticulture
The Delhi High Court recently set aside an order issued by the Assistant Controller of Patents (the “Respondent”) against Mitsui Chemicals Inc (the “Appellant”) refusing their Patent Application. Background: The Respondent refused the Patent Application No. 3877/DELNP/2009 citing non-patentability under Section 3(h) of the Patents Act, 1970 (as amended) (the “Act”) (which stipulates that inventions […]