REATA PHARMACEUTICALS V. CONTROLLER: Clarifying Patentability And Evidentiary Standards
Reata Pharmaceuticals Inc. vs Deputy Controller of Patents and Designs on (Order date: 12th June 2025)
Sections 3(d) and 3 (e)
In a recent decision by the Calcutta High Court in the matter of Reata Pharmaceuticals Inc. Vs. Deputy Controller of Patents and Design (IPDPTA/22/2023), the Court has set aside the order based on that controller failed to provide reasons for considering the research data insufficient to establish the patentability of the claimed invention, nor did the authority provide reasons for rejecting the application under sections 3(d) or 3(e) of the Patents Act (1970) as amended.
Background:
The appellant filed a patent application titled “NOVEL FORMS OF CDDO METHYL ESTER”, claiming priority from PCT Application No. PCT/US2008/009703 dated August 14, 2008. The application, filed on February 9, 2010, contained 18 claims and underwent examination following the request for examination on February 25, 2011. The First Examination Report (FER) was issued on October 14, 2014, to which the appellant responded on April 7, 2015.
In 2023, the patent application was rejected by the Controller of Patents under Sections 3(d) and 3(e) of the Patents Act, 1970, on the grounds of non-patentability. The rejection was challenged by the appellant before the court.
Appellant contention:
The appellant argued that the Controller erred by failing to address important scientific evidence in the rejection order. The decision was made without any discussion of the clinical trial data or the comparative analyses provided. In support of this, the appellant referred to the Supreme Court’s ruling in Novartis AG vs. Union of India (2013), which held that merely demonstrating increased bioavailability does not automatically establish improved therapeutic efficacy; any such claim must be substantiated with research data. The appellant contended that this requirement was met through the submission of relevant data.
Additionally, the appellant relied on the judgment in Ischemix LLC vs. Controller of Patents (2023), which emphasized the critical role of clinical trial results and comparative tables in establishing therapeutic efficacy. On this basis, the appellant asserted that it was binding upon the Controller to examine the submitted evidence, irrespective of whether it ultimately favoured the appellant’s position.
The appellant also cited Oyster Point Pharma Inc. vs. Controller of Patents and Designs (2023), which affirms that experimental and comparative data must be properly examined before arriving at any conclusion on therapeutic efficacy.
Court analysis:
The Honourable High Court observed that the clinical trial data had been submitted in the form of comparative tables, accompanied by detailed and clear explanations from the Appellant regarding the claimed improvement in therapeutic efficacy. In light of this, it was incumbent upon the Controller to examine and address this evidence, irrespective of its perceived strengths or weaknesses.
The Court emphasized that the Controller could not have properly assessed the therapeutic efficacy of the claimed invention without considering the experimental and comparative data provided.
Furthermore, the Court rightly noted that the respondent failed to provide any reasoning as to why the submitted research data was deemed insufficient to establish the patentability of the claimed invention. Additionally, no specific grounds were cited for rejecting the application under Sections 3(d) or 3(e) of the Act.
Decision:
The Court set aside the impugned order and remanded the matter back to the Controller for a fresh hearing of the parties. The Controller was directed to complete this exercise within three months from the date of communication of this order.
PATENT OFFICE KNOCKED FOR LACK OF REASONING Shindengen Electric Manufacturing Co. Ltd. (Shindengen) vs Assistant Controller of Patents (Order date: 13th June 2025)
In a recent ruling, the Calcutta High Court set aside the rejection of Shindengen’s patent application for a lamp control circuit, citing the absence of a reasoned order. The Court criticised the Patent Office for failing to consider the applicant’s technical submissions.
Background:
The appeal concerns the rejection of a patent application titled “A Lamp Lightning Control Circuit” dated 25th April 2024. The invention relates to circuits that separate alternating current outputs into positive and negative sides to supply power to battery chargers and lamps, focusing on stabilizing the power supply to lamps and protecting the ultimate load.
The invention aims to suppress peak voltage to the load by delaying the firing timing of the thyristor, reducing heat dissipation at regulators, and maintaining stable voltage to lamps despite fluctuations in the alternating-current generator’s output.
After receiving the First Examination Report (FER), the appellant submitted detailed responses addressing the cited prior art and objections. A hearing was held following a notice dated 20th October 2023, during which the appellant also filed written submissions.
Despite this, the Controller rejected the application, holding that the invention was obvious considering prior art documents D1 to D3, constituted a mere aggregation of prior art, and lacked inventive step under Sections 2(1)(j) and 2(1)(ja) of the Patents Act, 1970.
Appellant Contention:
The appellant argued that the impugned order violated the principles of natural justice, as it failed to provide any reasoned analysis. The appellant contended that the order was a near-verbatim reproduction of the hearing notice and did not engage with the written submissions, technical contentions, or prior art distinctions raised in the response.
It was further submitted that each cited prior art document had been thoroughly addressed in the appellant’s response, but the Controller failed to consider this. Moreover, the appellant relied on an International Search Report (ISR) to demonstrate that the cited prior art did not affect the novelty or inventive step of the claimed invention. The appellant contended that the failure to engage with this evidence rendered the rejection arbitrary and unreasoned.
Legal Analysis:
The Calcutta High Court found merit in the appellant’s arguments and observed that the impugned order did not address the technical submissions or evidence placed on record, including the international search report. The Court noted that the decision lacked independent reasoning and failed to demonstrate any application of mind in distinguishing the invention from the cited prior art.
The court found that the Controller had merely reproduced prior procedural documents without addressing the substantive contentions and evidence presented by the appellant.
Decision:
The Court held that the absence of such reasoning amounted to a violation of natural justice. Consequently, the impugned order was set aside, and the matter was remanded to the Controller for fresh consideration. The Court directed that the parties be heard afresh and that the entire exercise be completed within a stipulated time frame.
TWO-PRONGED IP TEST: Supreme Court Defines Boundaries Of Copyright And Design Protection
The Supreme Court of India’s ruling in Cryogas Equipment Pvt. Ltd. v. Inox India Ltd. & Ors. (2025) provides a landmark clarification on the distinction between copyright protection and design protection in the context of industrial engineering drawings, particularly for cryogenic storage tanks used in LNG semi-trailers.
Background
Inox India Ltd. filed a copyright infringement suit against Cryogas Equipment Pvt. Ltd. and LNG Express India Pvt. Ltd., alleging unauthorized use of proprietary engineering drawings and literary works related to cryogenic storage tanks and distribution systems. Inox claimed these drawings were original artistic works protected under the Copyright Act, 1957, and sought damages and injunctions.
Cryogas and LNG countered by arguing that these works were designs under the Designs Act, 2000, and since the designs had been reproduced more than 50 times industrially without registration, copyright protection ceased under Section 15(2) of the Copyright Act.
The Commercial Court initially dismissed Inox’s suit on this basis, but the Gujarat High Court reinstated it, finding triable issues requiring a full trial. The Supreme Court then took up the matter for a final decision.
Legal Issues
The Supreme Court focused on whether the engineering drawings were protected as artistic works under copyright law or were industrial designs subject to the Designs Act, and how Section 15(2) of the Copyright Act applies when a design is reproduced industrially more than 50 times without registration.
The key legal provisions examined included Section 15(1) of the Copyright Act, which bars copyright subsistence in any design registered under the Designs Act, and Section 15(2), which extends this bar to unregistered designs reproduced industrially beyond fifty copies. Additionally, Section 2(d) of the Designs Act defines what constitutes a design, while Section 2(c) of the Copyright Act broadly defines “artistic work” to include original drawings regardless of their aesthetic appeal.
To resolve the dispute, the Supreme Court formulated a two-pronged test.
- The first prong is to assess whether the work in question is an ‘artistic work’ entitled to copyright protection, OR a ‘Design’ subject to the limitations of the Designs Act.
- The second prong involves assessing the dominant purpose of the work, distinguishing between functional and aesthetic qualities.
The Court clarified that artistic works with original expression are entitled to copyright protection. However, when such works are applied industrially and reproduced more than fifty times, copyright protection ends, and the work must then be protected, if at all, under the Designs Act.
In this case, greater emphasis was placed on the significance of the ‘functional utility’ test in determining whether a work qualifies for protection under the Designs Act. The Court observed that if a work is primarily functional and lacks aesthetic appeal, it may not be eligible for such protection. This finding is noteworthy, as it establishes a clear standard for distinguishing purely artistic creations from those serving functional purposes in an industrial context. The Court underscored that this test must be applied rigorously to ensure that only works meeting the requisite aesthetic criteria are granted design protection.
Decision:
The Supreme Court dismissed the appeal filed by Cryogas and LNG Express, allowing the full trial to proceed as directed by the Gujarat High Court. It held that the Commercial Court had erred in dismissing the case without a proper examination of the legal and factual issues. The Apex Court upheld Inox’s claim for copyright protection over its engineering drawings, applying a two-step test. Under Section 15(2) of the Copyright Act, if a design has been industrially applied more than 50 times, copyright protection ceases unless the design is registered under the Designs Act. However, aesthetic appeal remains a crucial factor, as only designs that are visually appealing—and not purely functional—qualify for protection under the Designs Act. Therefore, fulfilling both prongs of the test is essential for a work to be eligible for design protection, which was not established in this case. The Court also directed the Commercial Court to decide on Inox’s application for an interim injunction within two months.
Conclusion:
This judgment represents a landmark development in Indian intellectual property law, as it clarifies the intersection between copyright and design protection—particularly in the context of technical and industrial drawings. By articulating a two-pronged test, the Supreme Court has established a clear framework to help courts and industries distinguish between copyrightable artistic works and industrial designs, thereby ensuring that protection is granted under the appropriate legal regime.
Newgen IT Technologies Limited vs Newgen Software Technologies Limited: Trademark Victory for “Newgen” as Delhi HC Dismisses Partnership Challenge
Section 29(1) & 29(2) of the Trade Marks Act, 1999
In Newgen IT Technologies Ltd. v. Newgen Software Technologies Ltd. (FAO (COMM) 73/2025 & 75/2025), the Division Bench of the Hon’ble Delhi High Court upheld an ex-parte ad-interim injunction issued by the Delhi District Court, preventing Newgen IT from continuing to use the “Newgen” marks. The dispute arose from a failed partnership between two IT firms with intersecting business interests.
BACKGROUND OF THE DISPUTE:
Newgen Software Technologies (the “Respondent” in the present case), established in 1992, is a software development company and a registered proprietor of the NEWGEN marks since 1999, with a user claim from 1992 in India. In June 2023, Newgen Software entered into a partnership agreement with VCARE InfoTech – wherein Article 14 of the partnership agreement explicitly recorded VCARE InfoTech’s acknowledgment of Newgen Software’s exclusive rights over NEWGEN marks. It was also clearly stated that any usage of the NEWGEN marks by VCARE InfoTech was contingent and solely on the partnership agreement and did not constitute any independent rights over the NEWGEN marks.
In July 2024, while the partnership agreement was in effect, VCARE InfoTech changed its corporate name to Newgen IT Technologies Limited (the “Appellant” in the present case), being fully aware of Newgen Software’s exclusive rights over NEWGEN marks and thereafter had also initiated an IPO application under this new name.
Aggrieved by this, the Respondent issued a cease-and-desist notice to the Applicant in September 2024, terminated the partnership agreement, and called upon the Appellant to cease use of NEWGEN marks. The Respondent also moved an application under Section 16(1) of the Companies Act, 2013, before the Regional Director, Ministry of Corporate Affairs, seeking rectification of the Appellant’s corporate name.
Furthermore, while the Appellant proceeded to apply for registration of the NEWGEN marks in overlapping classes in January 2025, the Respondent filed a suit seeking a permanent injunction to restrain the Appellant from using the NEWGEN marks. The Delhi District Court granted an ex parte ad interim injunction, restraining the Appellant from using the disputed mark “NEWGEN” by applying the triple identity test. This injunction was subsequently upheld, even after the Court considered the Appellant’s application for mediation and vacation of the ex parte order.
Challenging both orders, the Appellant approached the Hon’ble Delhi High Court, contending that it had been using the NEWGEN IT mark in India and internationally since 2017, and that Newgen Software had acquiesced to this usage for over 1.5 years. The Appellant further alleged suppression of material facts by the Respondent and argued that “Newgen” is a descriptive and commonly used term in the IT industry, which cannot be monopolised. It also claimed that the injunction had caused substantial prejudice to its IPO plans.
ANALYSIS
The Division Bench of the Hon’ble Delhi High Court dismissed the appeals and upheld the District Court’s orders granting and affirming the ex parte ad-interim injunction, restraining the Appellant from using the NEWGEN marks or the name “NEWGEN IT Technologies Limited.” The Court held that the Respondent had established a strong prima facie case, supported by prior use of the NEWGEN marks since 1992 and trademark registrations dating back to 1999.
The High Court further found that the Appellant’s adoption of the NEWGEN marks, despite being party to an active partnership agreement that expressly acknowledged the Respondent’s exclusive trademark rights, was unauthorized. On the issue of acquiescence, the Court categorically rejected the Appellant’s claim that the Respondent’s silence over 1.5 years constituted consent. It held that mere inaction or delay does not amount to acquiescence unless accompanied by clear, affirmative conduct that induces the other party to alter their legal position.
Notably, the Court observed that the Appellant adopted branding incorporating the term “NEWGEN” immediately after, or around the time the partnership agreement was terminated by the Respondent—casting serious doubt on the bona fides of such adoption. The Respondent had, in fact, taken timely and active steps to assert its rights following the termination, including filing a rectification application before the Ministry of Corporate Affairs and notifying SEBI of the developments.
In light of these facts, the Court concluded that the Respondent had not passively allowed the Appellant to infringe its rights. Accordingly, the injunction was deemed justified to prevent consumer confusion and irreparable harm to the Respondent’s goodwill.
CONCLUSION:
The judgment reaffirms the principle that acquiescence requires clear, affirmative conduct that misleads the infringing party into believing they have lawful rights. It serves as an important precedent, reinforcing the strength of registered trademark rights, the enforceability of contractual acknowledgments, and the limited applicability of defences such as acquiescence, particularly in cases involving commercial bad faith.
Star India Pvt Ltd v IPTV Smarter Pro & Ors: Robust Injunction by Delhi HC Safeguards STAR’s Content Against Unauthorized Use
Section 14, Section 51, and Section 55 of the Copyright Act, 1957
In Star India Pvt. Ltd. v. IPTV Smarters Pro & Ors. (CS(COMM) 108/2025), the Delhi High Court delivered a landmark order safeguarding STAR’s copyrighted and broadcast content from unauthorized streaming by rogue websites and mobile applications. The case, which arose on the eve of the major sporting event IPL 2025, prompted the Court to grant an expansive “superlative injunction” permitting real-time blocking of infringing platforms to prevent significant commercial losses.
BACKGROUND:
Star India, one of the country’s largest content producers and broadcasters, alleged that multiple IPTV platforms, including the app IPTV Smarters Pro, were unlawfully streaming STAR’s live sports coverage, serials, and OTT exclusives available on its online audiovisual platforms—www.hotstar.com, www.Jiocinema.com, and the mobile application JioHotstar (formerly Hotstar and JioCinema).
With IPL 2025 approaching, there was an urgent need to prevent further unauthorized distribution and content leakage.
ORDER ISSUED AND ANALYSIS
To address this, Star initially obtained an ex parte ad interim injunction from the Delhi High Court in February 2025, directing Internet Service Providers and domain registrars to block identified infringing websites.
However, the challenge persisted—each time a platform was blocked, mirror sites, redirect domains, or new rogue apps would emerge, often within minutes. The traditional approach of individually naming and blocking each infringing entity through court orders proved too slow, particularly during high-stakes, time-sensitive broadcasts such as live cricket matches.
Recognizing the inadequacy of traditional post-facto enforcement—particularly during time-sensitive, high-stakes events like IPL 2025—the Court took a landmark step on May 29, 2025. It introduced a new, more expansive form of relief: the “superlative injunction.” Building upon the concept of dynamic injunctions, which allow plaintiffs to block infringing websites even after proceedings have begun, this new order goes further.
The superlative injunction enables real-time blocking not only of infringing websites but also of mobile applications, mirror or redirect domains, and related user interfaces. This is a significant evolution in IP enforcement, as piracy increasingly shifts from websites to mobile platforms. Previously, each new infringement—especially during live broadcasts—required fresh court intervention. Now, Star India can act immediately without returning to court each time a new rogue app or domain surfaces mid-match.
The inclusion of mobile applications under the scope of injunctive relief is particularly noteworthy. While dynamic injunctions have traditionally targeted websites, this is one of the first orders to explicitly address mobile-based piracy. By bringing rogue apps under the same enforcement umbrella, the Court sent a strong message: the method of infringement is irrelevant—unauthorized use will be stopped.
KEY TAKEAWAY
While IPL 2025 may have triggered the litigation, the Delhi High Court’s order in Star India v. IPTV Smarters Pro sets a broader precedent for real-time IP enforcement in the digital age. By introducing a “superlative injunction,” the Court extended traditional dynamic injunctions to cover rogue websites, mobile apps, mirror domains, and related platforms—offering content owners the ability to block piracy in real time, without repeated court intervention.
This marks a crucial shift for broadcasters, OTT platforms, studios, and music labels—industries where leaks and unauthorized streaming can cause immediate commercial harm. With piracy evolving rapidly, especially via mobile apps, the Court’s approach aligns enforcement with technological realities.
