Patent Sealed, Design Denied: Dura-Line Scores Legal Victory
Patents: Section 104, section 64(1); Design: Section 22
In Dura-Line India Pvt. Ltd. vs. Jain Irrigation Systems Ltd., the Court dealt with a patent and design infringement suit involving Indian Patent No. IN 199722 and Design Registration No. 192665. The dispute centred on a non-metallic pipe assembly with a co-extruded tracer cable, designed for underground traceability and leak detection. Dura-Line, the Plaintiff, alleged that Jain Irrigation’s “B-Sure” and “Jain Insta Tracer Pipes” products infringed both its patent and registered design. The Defendant denied infringement and filed a counterclaim for revocation of the patent under Sections 64(1)(e), (f), (h), (i), and (m) of the Patents Act, citing lack of novelty, inventive step, sufficient disclosure, and alleged fraud.
The Defendant’s counterclaim was based on multiple prior art documents, with particular emphasis on US 2003/0094297 A1 (DW-2/1) and other technical disclosures. The Plaintiff contested the admissibility of these documents, but the Court ruled that publicly available patent documents fall within the purview of Section 74 of the Indian Evidence Act, and overruled the objections. The Defendant further argued that the invention was obvious and already known in the art, while also claiming that the patent lacked sufficient technical teaching and had been fraudulently obtained. Dura-Line defended the patent’s novelty, inventive configuration, and sufficiency of disclosure, emphasizing the uniqueness of a co-extruded tracer cable on the pipe’s outer surface, a solution not found in the cited prior art.
Analysis of the Court
The Court carefully examined each ground of revocation under Section 64. On novelty (Section 64(1)(e)), it held that none of the cited prior art documents including DW-2/1 and DW-2/2—disclosed all elements of the claimed invention in a single source. DW-2/1 referred to a tracer wire embedded within the pipe wall, whereas the Suit Patent involved a co-extruded tracer cable on the outer surface. Other references dealt with post-manufacture insertion or unrelated telecom applications and thus could not anticipate the invention.
Regarding inventive step (Section 64(1)(f)), the Court found that although components like HDPE pipes and tracer wires were known, the specific external co-extruded configuration was neither taught nor suggested in prior art. The configuration was counterintuitive, especially as some documents discouraged it, and thus was not obvious to a person skilled in the art.
The Court also addressed sufficiency of disclosure (Sections 64(1)(h) and (i)), finding that the complete specification enabled skilled persons to perform the invention and that the claims were adequately supported. On the allegation of fraud under Section 64(1)(m), the Court found no evidence of suppression or misrepresentation. As for design infringement, the Court clarified that the Plaintiff’s registered design only protected aesthetic features, not technical or functional aspects. Since the similarity alleged was based on functional characteristics and not visual impression, and the Defendant’s products had distinct visual elements, no deceptive similarity was established, and the design claim was dismissed.
Conclusion
The Court concluded that the Plaintiff’s patent was valid and enforceable. The Defendant failed to demonstrate anticipation or obviousness with respect to the patented invention. The configuration claimed in the Suit Patent specifically, the co-extrusion of a tracer cable on the exterior surface of a fluid-transport pipe was novel, inventive, and sufficiently disclosed. The Defendant’s products were found to infringe the Plaintiff’s patent, as they included the same structural and functional elements.
The Court also held that design protection was inapplicable in this case, as the Plaintiff failed to establish deceptive similarity in visual design. Thus, while the design infringement claim failed, the patent infringement claim succeeded.
Relief Granted
Although the patent expired in July 2023, the Court granted the Plaintiff post-facto relief under Section 108 of the Patents Act, including rendition of accounts for profits made from 2010 to 2023. A Local Commissioner was appointed for this purpose, and the Plaintiff was awarded full commercial costs.
Court Overturns Patent Rejection for Innovative Multi-Layer Web
Section 117(A), Section 2(1)(ja)
BMI Group Danmark Aps (Formerly Icopal) vs The Assistant Controller of Patents and Designs on 23 April 2025 (Delhi High Court)
The appeal concerns the rejection of Indian Patent Application No. 202017020602 titled “Sealing Web,” which was dismissed by the Controller of Patents on the grounds of lacking an inventive step under Section 2(1)(ja) of the Patents Act. The subject invention relates to a multilayer sealing web designed for use in structures such as roofs or tanks. This sealing web consists of outer layers made of plasticized polymer and a carrier insert that combines a glass nonwoven with a glass reinforcement made of knitted fabric.
The Controller determined that the invention lacked an inventive step in light of prior arts D1 to D3, even though the prior art cited during the hearing differed from the prior art referred to in the First Examination Report (FER). The Appellant argued that the Controller failed to assess the claimed invention as a whole, particularly misapplying the teachings of D2, which was not pertinent to the claimed invention. The Appellant maintained that the claimed combination of glass nonwoven and knitted glass reinforcement provided a novel technical advancement, which was not suggested by the prior arts. The Respondent defended the Controller’s decision, asserting that the features of the invention were obvious in light of the combined teachings of the cited prior art, particularly D1’s disclosure on dimensional stability using glass fibers.
Analysis of the Court
The Court examined the Controller’s decision and determined that the rejection was flawed due to a failure to recognize the inventive contribution of the claimed invention as a composite carrier insert. The Court noted that the Controller had treated the components of the invention, namely the glass nonwoven and knitted glass reinforcement, as isolated elements, rather than considering them as an inventive combination. The Court further emphasized that prior art D2, which dealt with decorative textiles, was non-analogous to the structural sealing web claimed in the invention, which had applications in roofing and tank structures. The Court highlighted the legal principle that mosaicing of non-analogous prior art is impermissible when assessing inventive step. The Court pointed out that neither D1 nor D3, in isolation or combination, disclosed or suggested the specific configuration of a carrier insert containing both a glass nonwoven and knitted glass reinforcement. Thus, the prior art analysis was inadequate, as it failed to recognize the technical contribution of the invention in its entirety.
Conclusion
In conclusion, the Court allowed the appeal, setting aside the Controller’s order and directing the Patent Office to proceed with the grant of the patent. The Court found that the invention was novel and non-obvious in light of the cited prior art. The specific integration of glass nonwoven and knitted glass reinforcement, as claimed in the invention, was not disclosed or suggested by any of the prior arts. The Court reaffirmed the principle that only analogous prior art should be considered in determining inventive step and that improper mosaicing of non-analogous references constitutes a legal error. As the inventive step was not demonstrated in the prior art, the Court ruled that the claimed invention provided a clear technical advancement over existing technologies, warranting the grant of the patent.
Legal Setback for E-Cigarette Ban: Court Remands Nicotine Aerosol Patent Case
Section 117A, Section 15
Itc Limited vs The Controller of Patents on 30 April 2025
In the matter of Indian Patent Application No. 685/KOL/2015, titled “A Device and Method for Generating and Delivery of a Nicotine Aerosol to a User,” the appellant challenged the rejection of the application by the Patent Office under Section 15 of the Patents Act, 1970. The claimed invention involved a non-electronic, chemically driven device that produces nicotine aerosol through a reaction between nicotine and an aerosol-promoting agent such as pyruvic acid. The appellant, represented by Senior Advocate Mr. J. Sai Deepak, argued that the device was distinct from Electronic Nicotine Delivery Systems (ENDS) or e-cigarettes, as it used no electrical or heating components, and relied solely on a novel chemical process. The Patent Office, however, rejected the application on grounds including Section 3(b) of the Act, claiming it posed a health risk, and based its reasoning on various documents such as the ICMR White Paper and prohibitory statutes like the Prohibition of Electronic Cigarettes Act, 2019.
The appellant contended that several documents cited in the impugned order—including statutes, regulatory materials, and government reports—were never disclosed during the proceedings, denying them a fair opportunity to respond. It was further argued that Section 3(b) was misapplied as it is intended to assess the purpose of the invention, not merely its potential harm, and that public policy restrictions on commercialization should not dictate patent eligibility. The appellant also cited international instruments like Article 27.2 of TRIPS and Article 4quater of the Paris Convention, which preclude rejection of patents solely based on legal prohibitions on commercialization. Moreover, they pointed to Sections 83(d) and 83(e) of the Indian Patents Act, which encourage patent protection to foster public interest and technological growth.
Analysis of Court:
The Court held that the appellant was denied a fair hearing, as the Patent Office relied on documents such as statutes, government reports, and the ICMR White Paper—without disclosing them during proceedings. Simply stating that the materials were publicly available was insufficient; parties must be given notice and an opportunity to respond. This procedural lapse violated the principles of natural justice, as affirmed in Ssang yong Engineering. On merits, the Court found that the claimed device, which did not involve combustion or electricity, was materially distinct from e-cigarettes and ENDS. It also clarified that Section 3(b) requires a clear assessment of the intent and actual harm caused by the invention, not speculative risks. Additionally, the Court recognized the relevance of international obligations under TRIPS and the Paris Convention, noting that restrictions on commercialization should not bar patentability.
Conclusion:
The Court concluded that the refusal of the patent application was procedurally flawed and legally untenable. The Assistant Controller of Patents failed to provide the appellant with notice of the materials relied upon, thereby depriving the appellant of the right to be heard. This omission constituted a breach of natural justice. Moreover, the reasoning under Section 3(b) was found to be speculative and insufficiently grounded in the statutory intent of the provision. Consequently, the impugned order dated 26th June 2023, was set aside. The matter was remanded for reconsideration by a different, competent officer, who shall assess the application afresh within six months, uninfluenced by any prior observations.
Calcutta High Court Interprets Section 59 Requires Claim-By-Claim Analysis, Not Mere Categorization
Section 59
In Andreas Gutzeit Vs the Controller General of Patents judgment, the Calcutta High Court decision focused on whether the amendments proposed by the Applicant were allowable under Section 59(1). The Court found that the Patent Controller had failed to properly evaluate this issue and criticized the Patent Office for adopting narrow interpretation of the provision.
The Court emphasized that a substantive, claim-by-claim assessment was essential for determining the permissibility of amendments under Section 59.
Background:
Andreas Gutzeit filed an application, bearing application no. 201637000002, claiming priority from Switzerland, relating to blood flow control systems, devices, and methods, in particular to an imaging system for the human body, such as X-ray and related tomographic imaging systems. In brief, the appellant claimed the method of operation, the system which applies the method and the use of the system through independent claims.
As part of the procedure, an FER was issued and a reply to the FER was duly filed. At the stage of the FER response, the claim was amended. However, by the impugned order, the application for a patent was rejected solely on the ground of non-compliance with Section 59 of the Act. Thus, aggrieved party appeal against impugned order.
In the appeal, the Petitioner contended that though the impugned order concludes “significant changes” and “new features,” there has been no discussion of the same in the impugned order. Further the Controller failed to assess whether the amended claims fell within the scope of the unamended claim or not. There is also an apparent inconsistency in the impugned order, in as much as the Controller, though acknowledging that the contrast dye system was mentioned in the original claim, failed to deal with the same in the order.
It is also contended that the subject patent had been granted in five different jurisdictions, namely, EU, China, Brazil, USA and Russia after fulfilling the criteria of novelty, inventive steps etc.
On behalf of the Respondent, the Assistant Controller argued that the Appellant, by way of amendment, was seeking to change the original claim, i.e. method claim, to a system claim. Such change is expressly prohibited under Section 59 of the Act. The claim as originally presented in the complete specification related only to a method claim, and the amendment to a system claim would radically alter the entire scope of the invention.
As such, the proposed amendments were not in conformity with the Act. In the above circumstances, the conversion of a method claim into a system claim was impermissible and broadened the original scope of the claim. Hence, the impugned order does not warrant any interference at all.
Legal Analysis:
The Court considered relevant precedents while analysing the permissibility of amendments under Section 59(1):
In Nippon A & L Inc. vs. Controller of Patents, it was held that amendments are only permissible if they (i) are by way of disclaimer, correction, or explanation; (ii) serve the purpose of incorporating actual facts; and (iii) do not introduce matter not disclosed in substance in the original specification or fall outside the original claim scope.
In Tony Mon George vs. Controller General of Patents (IPAB, 2020), it was clarified that the real test is whether the amended claims introduce “new” features not previously defined in the body of the claims. Dependent claims that elaborate on previously disclosed features, when supported by the specification, are not to be treated as “new.”
Similarly, AGC Flat Glass Europe SA vs. Anand Mahajan, relying on Baker Perkins Ltd.’s Application (1958 RPC 267), emphasized that amendments must not broaden the invention’s scope, and care must be taken to avoid invalidation through inclusion of new subject matter.
Applying these principles, the Court found that the impugned order was unsustainable. The Assistant Controller did not examine whether the amended claims were supported by the original specification or whether they introduced new matter. Merely labelling an amendment as a change in claim category (method to system) without assessing the underlying substance of the invention is legally insufficient.
The Court reiterated that there is no rigid formula, and the test must focus on the intrinsic disclosure and intent of the invention. The failure to adjudicate whether the proposed amendments were within the original scope constituted a serious infirmity.
Decision
The Court set aside the impugned order and remanded the matter to the Controller for fresh consideration in accordance with law. The Controller was directed to re-examine the application within eight weeks of receiving the order and after affording the appellant an opportunity for a hearing. The Court made it clear that it had not made any finding on the merits of the invention, and all issues remained open for adjudication.
Calcutta HC Confirms Patent Clock Starts Ticking at Filing, Not Grant
Gunjan Sinha @ Kanishk Sinha & Anr V. Union of India & Ors
In the present Judgement, Division Bench of the Calcutta High Court dismissed a challenging appeal and upheld the validity of Section 53 of the Patents Act, 1970 and seeking an extension of the patent term.
Background:
The case concerns a patent application filed on May 2, 2005, which was granted on December 28, 2012, bearing Patent No. 254875, and valid for a period of 20 years from the date of filing. The patent was initially assigned to Appellant 2 through a deed of assignment in July 2021 and was subsequently divided equally between Appellant 1.
Prior to the current proceedings, the Petitioner had filed a writ petition, seeking a 15-year extension of the patent term and a declaration that Section 53 was unconstitutional. That writ was dismissed on June 17, 2022, with liberty granted to the petitioner to either claim damages or seek review. A subsequent review petition and intra-court appeal were also dismissed. The petitioner then filed a Writ Petition Application, praying for the withdrawal of Section 53, a declaration that it is ultra vires the Constitution, and a direction to the authorities to consider their representation dated February 1, 2022.
The Appellants contended that Section 53, which mandates the patent term to begin from the date of application, is at odds with Section 11A(7), which confers provisional rights upon publication of the application, though it bars the patentee from initiating infringement actions until the patent is formally granted. They argued that the 7-year delay between application and grant (2005–2012) caused significant harm, as the patent could not be commercially exploited during that time, yet renewal fees were still required. This, they claimed, resulted in a form of double jeopardy and violated Article 22 of the Constitution. The appellants supported their claims with references to various Delhi High Court judgments emphasizing the importance of timely processing of patent applications.
The Respondents countered that the claims were barred by res judicata, as similar issues had been adjudicated in earlier proceedings. They argued that no valid legal basis had been presented to declare Section 53 unconstitutional and maintained that Sections 11A(7) and 53 operate in entirely different spheres, one governing provisional rights and the other governing the patent term. The court agreed with the respondents, holding that Section 11A(7) grants limited, interim rights from the date of publication until grant, while Section 53 lawfully defines the patent term as beginning from the date of application. These provisions were found to be complementary, not contradictory.
Court’s Analysis
The court observed that the petitioner failed to demonstrate any substantial legal ground to justify striking down Section 53 as ultra vires. It reiterated that legislative policy, including the structure of patent terms, falls within the domain of Parliament, not the judiciary. Comparisons with foreign systems such as the U.S. Patent Term Adjustment (PTA) model were rejected as irrelevant, since India has consciously chosen a different legal approach that does not support retroactive extensions for examination delays. The committee constituted in Nitto Denko Corporation had also opined against adopting PTA-like mechanisms, considering them unsuitable for India’s patent regime.
In conclusion, the Division Bench affirmed the reasoning of the Hon’ble Single Judge, holding that Section 53 is constitutionally valid and does not conflict with Section 11A(7). The court found no merit in the appeal and dismissed it, declining to interfere with the judgment under challenge.
Advanta Enterprises Pvt. Ltd. Vs Yaganti Agrotech Pvt. Ltd: Interim Injunction Granted on Preliminary Test Evidence
In a present judgement, a Hyderabad Court granted an interim injunction under the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (PPVFRA), based solely on test reports submitted by the plaintiff, Advanta. This order stands out for its procedural shortcomings and raises significant concerns regarding the application of scientific standards in legal proceedings.
Background
Advanta alleged that the Respondent’s hybrid maize variety, ‘Bharat 756 Power,’ was identical to its registered variety, ADV 759. To substantiate this claim, Advanta conducted DNA and DUS (Distinctness, Uniformity, and Stability) tests on Bharat 756 using its own in-house laboratory.
The results reportedly showed that Bharat 756 has the same genetic makeup and external traits as ADV 759, matching all 31 characteristics. Advanta further asserted that such a match could only occur by crossing its registered parental lines, which the respondent had neither disclosed nor denied using. On this basis, Advanta alleged infringement under Section 64 and sought an injunction under Section 66.
Respondent’s Defence
The Respondent contended that Bharat 756 was independently developed by its R&D team. The Respondent also challenged the authenticity and reliability of the tests, pointing out that Advanta conducted them unilaterally, in-house, and not at notified or empanelled testing institutions as required under Rule 29(7) for registration. They emphasized that such institutions possess the necessary infrastructure and neutrality to ensure credibility and avoid manipulation.
Furthermore, Respondent argued that under Section 15(3)(b) of the Protection of Plant Varieties and Farmers’ Rights Act (PVPFR Act), a variety is considered distinct if it is clearly distinguishable by at least one essential characteristic from any other variety whose existence is a matter of common knowledge. They contended that the DUS (Distinctness, Uniformity, Stability) and DNA reports submitted by the Petitioner do not establish distinctness, as the Respondent’s plant variety is clearly distinguishable from the registered variety.
In light of this statutory criterion, the Respondent contends that the present application lacks sanctity and validity and should not be considered. The claims raised are premature and devoid of substantive merit.
Court’s Decision
The Court granted the interim injunction and restraining the respondent or anybody claiming through it from producing or using any variety infringing the petitioner’s registered plant variety.
Reasons Supporting the Court’s Judgment
The Court appointed an Advocate Commission to collect seed samples from both parties for testing at TISTA, a recognized lab. TISTA requested the Respondent’s genetic markers for accurate testing, but the Respondent delayed, citing confidentiality concerns. As a result, testing was stalled, and the Court chose to rely on the Petitioner’s in-house lab results to grant an interim injunction.
A likely reason was the urgency of the approaching Kharif season. The petitioner argued that, without immediate relief, the respondent could release the allegedly infringing seed, Bharat 756, causing market disruption and irreparable harm. Courts often grant temporary relief in such situations; however, the order did not clearly state this urgency.
In conclusion, while the court may have acted to prevent harm, it did not explain its reasoning with reference to the seasonal urgency.
