STRATJURIS NEWSLETTER FEB – 2025

Fair Play in Patent Law: High Court Resets the Stage for Evidence and Equity

Article 226 (Writ of Certiorarified Mandamus)

In a significant development in the Gilead Sciences Inc. vs Union of India case on 19 December 2024, the Madras High Court addressed a writ petition challenging a hearing notice issued by the Patent Office, alleging a violation of the Patents Act, 1970. The petitioner (patentee for Indian Patent No.319927) argued that they were denied an opportunity to submit evidence during the post-grant opposition proceedings initiated by the fourth respondent. Highlighting the importance of procedural fairness, the case underscores the necessity of adhering to established legal frameworks to ensure transparency and equity in intellectual property disputes.

A writ petition was filed challenging the hearing notice dated 11.02.2022 issued in the post-grant opposition application filed by the 4th respondent. The petitioner argued that the hearing notice had been issued by the 3rd respondent in violation of the provisions of The Patents Act, 1970 and its associated Rules. The Learned Standing Counsel for Respondents 1 to 3 (Union of India, The Controller of Patents & Designs, and the Deputy Controller of Patents & Designs) reiterated the points made in their counter affidavit. However, since Respondent No. 4, the primary contesting party, did not object to granting the writ petition and acknowledged that no party would suffer prejudice, the Court chose to remand the matter to the learned Controller of Patents.

Consequently, on 19.12.2024, the Court annulled both the hearing notice dated 11.02.2022 and the Opposition Board’s recommendations dated 05.03.2021. It ordered a fresh adjudication by the Controller of Patents, allowing both parties three weeks to submit their evidence. The Controller was directed to make a decision on the opposition application within three months, ensuring a fair hearing for both sides. Additionally, the Court instructed the Opposition Board to provide new recommendations, free from the influence of the previous ones, after considering the evidence submitted by both parties.

This judgment highlights the judiciary’s commitment to upholding procedural integrity in patent matters and fostering trust in India’s intellectual property ecosystem. By ensuring that both parties are afforded a fair opportunity to present evidence, the decision strengthens the framework for informed and equitable adjudication of complex patent disputes. It also reflects the broader goal of promoting innovation and providing robust legal support for inventors and businesses in India.
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Revoking patents and shaking up lawsuits – the Delhi HC says, ‘Expired patents? no problem!’

Section 64 (revocation), Section 107 (invalidity defence)

In a significant judgment on January 15, 2025, the Delhi High Court in Macleods Pharmaceuticals Ltd. v. The Controller of Patents & Anr. addressed the sustainability of a revocation petition in two key scenarios. The case revolved around the revocation of a patent related to ‘LINAGLIPTIN’ held by Boehringer Ingelheim Pharma GmbH & Co. KG, following an infringement suit filed by Boehringer against various pharmaceutical companies, including Macleods.

The Court considered two primary questions:

  1. Whether a revocation petition remains valid if the petitioner has already raised the defence of invalidity in a separate infringement suit, without filing a counterclaim.
  2. Whether a revocation petition is still maintainable after the expiration of the patent in question.

Court’s Ruling:

  • Revocation Petition vs. Invalidity Defence: The Court concluded that a revocation petition and a defence of invalidity in an infringement suit are distinct proceedings. A successful revocation petition leads to the patent being removed from the register. In contrast, a finding of invalidity in an infringement suit only affects the specific parties and results in the invalidity being recorded in a supplemental record. The Court ruled that both processes can coexist, and raising an invalidity defence in an infringement suit does not render the revocation petition invalid.
  • Revocation after Patent Expiry: The Court ruled that despite the patent having expired, the revocation petition could still proceed. This is because Boehringer’s infringement suit was still active and sought damages for infringement that occurred while the patent was valid. If the revocation petition were successful, it could impact the infringement suit and deny the damages sought.

The Court dismissed Boehringer’s motions to dismiss the revocation petition, affirming that the petition remained valid even after the patent had expired. This decision highlights the distinction between the effect of a revocation petition and a defence of invalidity in an infringement suit. It also underscores the Court’s view that a revocation petition serves a broader public interest in removing invalid patents from the register, while an invalidity claim in an infringement suit only affects the parties involved, wherein it provides a right to the defendant in the suit to take further steps for rectification of the Register of Patents.
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Delhi High Court Revives Patent After Considering Unforeseen Family Emergency

Section 60, Section 117A

In a recent judgment on 12th of December 2024, the Delhi High Court overturned an order issued by the Assistant Controller of Patents and Designs, which had refused to restore the lapsed Patent No. 404239 of Spv Laboratories Private Limited. The patent, concerning an ‘Herbal Pain Relief Ointment and a process for its preparation,’ had lapsed due to the failure to pay the required renewal fees on time. The applicant, a pharmaceutical company, appealed the decision under Section 117A of the Patents Act, 1970, asserting that the failure to pay was due to an unforeseen family emergency.

The patent, granted on August 23, 2022, was subject to a renewal fee that had to be paid within three months, extendable by six months. However, the fee was not paid on time due to a family emergency involving the applicant’s attorney, leading to the patent being deemed ceased on May 23, 2023. The applicant filed for restoration within the 18 months allowed under Section 60 of the Patents Act and Rule 84 of the Patents Rules, citing the emergency as the reason for the lapse. Despite this, the Assistant Controller refused to restore the patent, citing insufficient evidence for the family emergency and non-compliance with the statutory requirements.

The appellant appealed the Assistant Controller’s decision, arguing that the delay in payment was due to a family emergency, and highlighted that the restoration application had been filed within the legally allowed timeframe. In response, the respondent’s counsel pointed out that the patentee had two attorneys, both of which were responsible for ensuring timely payment, and questioned whether the family emergency had affected both the attorneys or just one of them.

Analysis:
The record showed that the appellant was actively pursuing its patent application. The appellant had also submitted Form 27, detailing the patent’s use, for the financial years 2022 and 2023 on January 5, 2023, and January 4, 2024, respectively – Thus, it was inferred that there was no reason whatsoever to doubt the appellant’s explanation for the delay in paying the renewal fee. At most, it was a procedural oversight, and such an issue alone should not lead to the refusal of a granted patent.

In light of this, the court concluded that the appellant had acted in good faith, and the failure to pay the renewal fee was merely a procedural error, not deliberate neglect. Additionally, the court acknowledged that the patent was not abandoned, as a restoration request was filed promptly, and the renewal fee, along with any penalties, was to be paid.

Conclusion:
The Delhi High Court ruled in favour of the applicant, setting aside the impugned order of the Assistant Controller. The court directed the restoration of Patent No. 404239, thereby allowing the patentee to pay the renewal fees along with any penalty for the delay.
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Madras HC Remands Patent for a ‘Full Specification’ Check-Up!

Section 3(b), Section 59(1)

In Regeneron Pharmaceuticals v. Controller of Patents and Designs (T)CMA(PT) No.191 of 2023, the Madras High Court set aside the Indian Patent Office’s (IPO) rejection of Regeneron’s patent application for lack of adequate reasoning and failure to issue a speaking order. The Court remanded the matter back to the IPO                                                                                                                 for fresh consideration.

Regeneron Pharmaceuticals challenged the IPO’s refusal of its patent application (1554/CHENP/2013), which was rejected under Section 3(b) of the Indian Patents Act, 1970. The IPO argued that the invention, which involved genetically modifying animals could contravene public order or morality. The application initially sought a patent for a genetically modified mouse, its cells, and its use. Following objections under Section 3(j) (animals being non-patentable), Regeneron amended the application to claim a method for creating a genetically modified mouse. However, the IPO rejected the amended claims, stating they were not patentable under Section 3(b) and that the amendment altered the invention’s scope.

In response, Regeneron argued that the amendments were based on the existing specification and did not introduce new subject matter. They also asserted that the invention would be beneficial to humanity, specifically in advancing medical research. However, the IPO contended that the appellant did not present sufficient evidence that genetically modifying animals would benefit humanity. Furthermore, the IPO argued that the amendments were impermissible as they altered the scope of the original invention.

Analysis:
The Court held that both the claims and the complete specifications of a patent must be read together as an integrated whole, not in isolation. The Court criticized the IPO for not considering the complete specification when evaluating the amendments, as mandated by Section 59(1) of the Act. The Court also noted that the IPO had failed to substantiate its finding that the invention lacked significant benefit to humankind, as Regeneron had explicitly claimed the invention would contribute to medical advancements.

Regarding the amendments, the Court found that no substantive changes had been made to the original invention and that the amendment was permissible. The IPO’s refusal to accept the amendment based solely on the original and amended claims, without considering the full specification, was deemed erroneous. The Court referenced the Allergan Inc. v. Controller of Patents case, emphasizing the need for a holistic approach when assessing patent amendments.

Conclusion:
The Court set aside the IPO’s order and remanded the case for reconsideration. It directed that the new decision-maker, who should not be the original officer, objectively reassess whether the claims were patentable under Section 3(b), taking into account the complete specification. The Court stressed that the decision should be reasoned and grounded in facts, reaffirming that amendments to patent applications should be judged based on a comprehensive evaluation of the entire specification, not just a literal reading of the claims.
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IP Rising: India’s Innovation Surge Takes Center Stage

India’s growing influence in the global intellectual property (IP) arena has been solidified, as highlighted in the World Intellectual Property Organization’s (WIPO) 2024 World Intellectual Property Indicators (WIPI) report. Ranked among the top 10 countries worldwide for patents, trademarks, and industrial designs, India has made remarkable strides in innovation, further establishing its role                                                                                                    as a global IP powerhouse.

Key Highlights from the 2024 WIPO Report:

  • Patent Growth: India experienced a 15.7% increase in patent applications in 2023, with 64,480 filings, placing it 6th globally. This marks the country’s fifth consecutive year of double-digit growth. Notably, 55.2% of these filings were from domestic innovators. The number of patents granted surged by an impressive 149.4%, showcasing India’s improved IP processing efficiency.
  • Patent-to-GDP Ratio: India’s patent-to-GDP ratio skyrocketed from 144 in 2013 to 381 in 2023, reflecting a robust connection between innovation and economic growth.
  • Industrial Design Surge: India saw a 36.4% rise in industrial design applications in 2023, particularly in sectors like textiles, health, and cosmetics. This surge indicates a shift toward product innovation and design excellence in the manufacturing sector.
  • Trademark Performance: India ranked 4th globally in trademark filings, with a 6.1% increase in 2023. Nearly 90% of these filings were from domestic residents. India now holds the second-largest number of active trademarks globally, surpassing 3.2 million registrations. Health, agriculture, and clothing were reported to be the leading sectors for trademark filings.

India’s growing IP activity plays a key role in global trends, contributing significantly to the 3.55 million patent applications filed worldwide in 2023. The rise in domestic filings reflects a shift toward local innovation, fuelled by government initiatives like the Atmanirbhar Bharat campaign, the National IPR Policy, and the burgeoning start-up ecosystem nurtured by programs such as Start-Up India and the Atal Innovation Mission.
As India’s innovation-driven economy continues to expand, it is poised to solidify its position as a dominant force in global intellectual property. With its ever-growing IP activity, India is not only enhancing its domestic IP ecosystem but also contributing to shaping global innovation trends.
Looking Ahead:
India’s upward trajectory in the global IP landscape highlights its increasing importance in shaping the future of innovation. As government policies, a vibrant start-up culture, and a diverse, rapidly growing economy continue to propel India forward, the country is well-positioned to further establish itself as a key player in global intellectual property.
In conclusion, India’s exceptional progress in patents, trademarks, and industrial designs signals a bright future, where the country’s innovation-driven growth benefits both domestic and global markets. The future of India’s IP landscape is set to shine, with sustained momentum and an expanding role in global innovation.


 

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