M/S. Haldor Topsoe A/S vs Controller of Patents & Designs on 2 January 2025: A Ruling on Natural Justice and Procedural Oversight
Section 21, Section 15, Writ petition (Article 226)
In a writ petition filed by M/s. Haldor Topsoe A/S (the petitioner), the Madras High Court addressed a challenge to the impugned order passed by the Controller of Patents & Designs, which rejected the petitioner’s patent application. The petitioner, a Danish company, sought to quash the order dated 09.03.2021, arguing that it violated the principles of natural justice and was passed without proper application of mind. The petitioner’s patent application had been rejected, and the order referred to Section 21 of the Patents Act, 1970, which deals with the abandonment of patent applications. The petitioner argued that no second examination report was submitted, and the respondent mistakenly treated the hearing notice as such. The petitioner also claimed that the impugned order was passed without considering the objections raised in response to the first examination report.
The respondent, the Controller of Patents & Designs, countered that the order was passed under Section 15 of the Patents Act, 1970, which pertains to the refusal of patent applications. The respondent claimed that the patent application was refused after considering the objections raised by the petitioner to the first examination report, and the matter should have been appealed rather than filed as a writ petition.
Analysis:
The Court examined the legal provisions and found that the impugned order primarily referred to Section 21, which pertains to abandonment, not Section 15, which concerns refusal. The Court noted that the petitioner’s objections to the first examination report had not been adequately considered, and no second examination report had been submitted. This led the Court to conclude that the failure to conduct a proper second examination violated the principles of natural justice. The Court further noted that the petitioner had been given insufficient opportunity to address all objections and had not been provided with the necessary documents, such as the impugned order, in a timely manner.
The Court also acknowledged the petitioner’s reasons for the delay in filing the writ petition and found them satisfactory. The Court held that the writ petition was maintainable because the impugned order was not appealable under Section 21, as it involved abandonment, which does not provide for an appeal mechanism.
Conclusion:
The Madras High Court ruled in favour of the petitioner, quashing the impugned order dated 09.03.2021. The Court found the order to be unsustainable on the grounds of violation of natural justice and non-application of mind. The matter was remitted back to the respondent for fresh consideration on the merits of the petitioner’s patent application, with a directive to appoint a different Assistant Controller to handle the case. The Court emphasized the importance of following due process and ensuring that all objections are properly considered before making any decision regarding patent applications.
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Court Grants JFE Opportunity for Patent Claim Amendments, Emphasizes Need for Clear Disclosure
Section 15
In JFE Steel Corporation v. Controller of Patents, the Madras High Court reviewed the Controller’s rejection of JFE’s patent application (No. 279/DEL/2015) concerning a method for activating a continuous annealing furnace used in steel sheet annealing. The proposed method aimed to rapidly stabilize the in-furnace atmosphere, a process that typically takes up to a week to achieve the desired low dew point (temperature), thereby enabling the annealing process to commence sooner.
The Controller refused the application on July 25, 2022, citing prior art references D1 and D2. The rejection was based on a lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970, asserting that the claimed method was already disclosed in prior art. Additionally, concerns were raised regarding the adequacy of the disclosure, particularly in relation to the enabling information about the composition of hydrogen and nitrogen in the blended gas.
JFE challenged the decision, arguing that the prior art references neither taught nor suggested a method to shorten the stabilization period. They also contended that the rejection lacked proper reasoning and failed to address their submissions adequately. Further, JFE introduced new prior art indicating a need to shorten the dew point stabilization time and emphasized that the existing references did not provide clear motivation for their claimed invention.
Analysis:
The Court observed that the Controller had not adequately considered JFE’s inventive contribution and failed to provide a well-reasoned rejection. The Court also noted concerns about the broad claim scope, as JFE’s application covered any hydrogen concentration above the baseline used in the annealing process without clear limits. This lack of specificity raised questions about whether the disclosure provided enough details to enable a person skilled in the art to practice the invention without undue experimentation.
Conclusion:
The Court set aside the Controller’s decision and allowed JFE to amend their claims and submit additional data. It directed the Controller to reconsider the patent application de novo, taking into account these amendments and the new data. The Court emphasized that the amended application should be reviewed on its own merits, ensuring compliance with patentability requirements. This decision highlights the flexibility of Indian patent law in permitting claim amendments and submission of additional data while ensuring that such amendments do not introduce any new matter beyond the original disclosure.
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Delhi HC Reaffirms Liberal Approach to Interrogatories in Patent Infringement Cases
In a recent ruling, the Delhi High Court (Delhi HC) in Largan Precision Co Ltd. v. Motorola Mobility India Pvt Ltd (“Largan Case”) reaffirmed the importance of interrogatories in patent infringement suits, highlighting their critical role in expediting the judicial process and ensuring all relevant information is brought before the court. The decision offers significant clarity on the scope of interrogatories, the obligations of parties, and how confidentiality concerns should be managed in such cases.
The Largan Case involved a patent infringement suit concerning a mobile phone’s inbuilt camera system. The plaintiff sought relief from the court by filing a request for interrogatories on critical details related to the defendant’s product, including its manufacture, import, sales, and suppliers. The defendants, while initially complying with the request, argued that certain information was confidential and should not be disclosed, especially since they had not yet filed their defence.
Delhi HC’s Ruling:
Justice Amit Bansal, in his analysis, stressed that the purpose of interrogatories is to streamline the trial process and reduce the time and cost of proving the case. The Court made it clear that interrogatories are meant to expedite the litigation process by ensuring that the court has all necessary information upfront. The only criterion for allowing interrogatories is whether they are relevant to the dispute and will assist in the fair adjudication of the case. The possibility of the information being used in cross-examination or the concerns over confidentiality should not be grounds for denying them.
The Court also emphasized the need for both parties to fully disclose all relevant information and documents in their possession, underscoring the high level of disclosure required in patent infringement suits under the High Court of Delhi Rules Governing Patents Suits, 2022. Importantly, the Court addressed confidentiality concerns, noting that Rule 11 of the Patent Rules allows the creation of a “confidentiality club” and permits the redaction of sensitive information to protect business secrets.
Key Takeaways:
Liberal Approach: The Delhi HC has adopted a liberal approach towards allowing interrogatories, focusing on their necessity for the fair and timely adjudication of the case.
Burden of Disclosure: The Court has made it clear that defendants cannot refuse to provide relevant information, even if they have not filed their defense, especially in the context of patent disputes where detailed technical information is crucial.
Confidentiality Considerations: While the Court recognized confidentiality concerns, it provided mechanisms such as the “confidentiality club” to protect sensitive data.
Role in Expediting Trials: Interrogatories play an essential role in speeding up patent litigation by ensuring that both parties provide all necessary information upfront.
Practical Implications:
For patent practitioners, this ruling reinforces the need for a thorough approach when requesting interrogatories, ensuring they are directly related to the dispute. On the other hand, defendants must be prepared to address interrogatories that could impact the outcome of the case, and confidentiality should be handled with care, ensuring that sensitive information is adequately protected through the mechanisms available in the Patent Rules.
This decision marks a clear judicial stance in favor of ensuring efficient and fair adjudication of patent disputes, ensuring that the process is not hindered by procedural delays or refusal to disclose crucial information.
Conclusion:
The Largan Case serves as an important reminder for both plaintiffs and defendants in patent infringement suits that interrogatories, when requested properly, are vital tools for uncovering essential facts and ensuring timely resolution of disputes. The Delhi HC’s judgment reinforces that confidentiality concerns can be addressed through established legal frameworks, but the obligation to provide relevant information remains paramount.
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AI and Inventorship: India’s Legal Stance in the DABUS Case and Global Perspectives
The ongoing legal case surrounding DABUS (Device for the Autonomous Bootstrapping of Unified Sentience), an artificial intelligence system created by Dr. Stephen Thaler, has raised pivotal questions regarding the role of AI in patent law. Dr. Thaler’s patent application (Application No. 202017019068) for a “Food Container and Devices and Methods for Attracting Enhanced Attention” names DABUS as the inventor. However, the application has faced pre-grant opposition from Dr. Kankanala, who contends that AI cannot be recognized as an inventor under Indian patent law.
Dr. Kankanala’s opposition relies on key provisions of the Indian Patents Act, specifically Sections 2(1)(y) and 6, which state that an inventor must be a natural person. He argues that the purpose of the Indian patent system is to incentivize human ingenuity and that AI-generated inventions fall outside this framework. Additionally, Dr. Kankanala raised concerns regarding the sufficiency of disclosure under Sections 25(1)(f) and 25(1)(h) of the Indian Patents Act, claiming that the application fails to meet the necessary disclosure requirements, including withholding material information.
Global Context: AI and Inventorship
The DABUS case has gained international attention, sparking debates over AI’s role in inventorship. While some jurisdictions, including South Africa, have granted patents where AI is listed as the inventor, major patent offices, such as the European Patent Office (EPO) and the United States Patent and Trademark Office (USPTO), have rejected AI as an inventor. These offices have maintained that inventorship is restricted to natural persons, emphasizing that AI, lacking legal personality, cannot hold or transfer intellectual property rights.
The DABUS case thus presents a critical question: should AI, capable of autonomously generating inventions, be recognized as an inventor? This issue has implications for ownership, usage rights, and the broader legal framework for patent law.
Inventorship Under Indian Patent Law
Under the Indian Patents Act, Section 6 specifies that only the “true and first inventor” or their assignee is entitled to apply for a patent. This implicitly requires that inventors be natural persons. While Section 2(1)(s) includes non-natural entities (such as governments) within the definition of a “person,” Section 2(1)(y) does not explicitly require that the inventor be human, leaving some ambiguity in interpretation.
Despite this, the opposition from Dr. Kankanala suggests that Indian patent law is designed to reward human inventiveness and may be unlikely to accept AI as an inventor. Furthermore, the issue of disclosure is particularly pertinent, as the failure to adequately disclose material information could further complicate the case. One of the core principles of patent law is to ensure that inventions, once the patent term expires, are publicly available for further use and development. The DABUS case challenges this principle by raising questions about the nature of inventorship and the sufficiency of disclosures for AI-generated inventions.
Comparison of India’s AI Inventorship Stance with Other Jurisdictions
India’s stance on AI inventorship aligns with that of other major patent jurisdictions but remains stricter in its application. The Controller General of Patents in India has raised objections against AI-generated inventions, referencing Sections 2 and 6 of the Patents Act, 1970, which only recognize natural persons as inventors. This is consistent with the positions of the patent offices such as the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), and the Japan Patent Office (JPO), although China has taken a more progressive stance on the matter.
European Patent Office (EPO) and United Kingdom (UKIPO): The EPO and UKIPO have explicitly rejected AI as an inventor, interpreting the term “inventor” in the European Patent Convention (EPC) as limited to natural persons. These jurisdictions argue that naming an AI system as the inventor does not confer the legal personality required to hold intellectual property rights. India’s position mirrors that of the EPO and UKIPO, restricting inventorship to human inventors.
United States Patent and Trademark Office (USPTO): Similarly, the USPTO has rejected the DABUS patent application, reasoning that U.S. patent law defines an inventor as a “natural person.” The requirements outlined in 35 U.S.C. Sections 100(f)-(g) and 101 specifically limit inventors to individuals. The USPTO’s stance, confirmed by previous Federal Circuit rulings, aligns with India’s approach in limiting inventorship to humans.
Japan Patent Office (JPO): While the JPO also rejects AI as an inventor, it takes a more flexible approach toward AI-assisted innovations. The JPO evaluates whether AI-generated inventions demonstrate novel methods or incremental improvements beyond routine machine learning techniques. Japan’s approach to evaluating AI-assisted inventions is less rigid than India’s, where DABUS was rejected during formal examination due to the absence of human inventorship.
China National Intellectual Property Administration (CNIPA): China has adopted a more progressive stance on AI-generated inventions. While it still requires human inventors, Chinese patent law has evolved to acknowledge AI’s role in the inventive process, provided there is demonstrable human contribution. This perspective contrasts with India’s stricter interpretation, which does not recognize AI as an inventor.
Conclusion
India’s approach to AI inventorship is consistent with major patent jurisdictions like the EPO, UKIPO, and USPTO, which maintain that inventorship must be attributed to natural persons. However, India’s strict rejection of AI-generated patent applications at the examination stage makes it less flexible compared to jurisdictions like Japan, which permits AI-assisted patents under specific conditions. In contrast, China’s emerging approach suggests a more adaptable framework for AI-driven innovation. As AI continues to play a greater role in technological advancements, India may need to reconsider its rigid stance to keep pace with global trends and the evolving legal landscape surrounding AI and patent law.
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Delhi High Court Revives Patent Application After Miscommunication Between Patent Agents
Section 21(1)
The Delhi High Court recently addressed the case of Waterotor Energy Technologies Inc. (“Waterotor”), a Canadian company that sought to set aside the deemed abandonment notice issued for its Indian Patent Application No. 202017037539. The abandonment was declared by the Patent Office under Section 21(1) of the Patents Act, 1970, due to Waterotor’s failure to respond to the First Examination Report (FER) within the prescribed timeline.
Waterotor argued that the abandonment occurred due to a miscommunication between its appointed Patent Agents. The company had engaged a First Patent Agent based in Canada, who then appointed a Second Patent Agent in India to handle the prosecution of the patent. However, due to a failure in the communication process, Waterotor never received the FER, which resulted in missing the deadline. Waterotor did not wish to press allegations of negligence but contended that the non-receipt of the FER led to the deemed abandonment of its application.
In defense, the Patent Office argued that communications regarding the FER were sent to the Patent Agents as per standard procedure, with the Second Patent Agent in India duly forwarding the communication to the First Patent Agent in Canada. The Second Patent Agent confirmed that the communication was appropriately sent.
The Court analyzed the situation in light of its previous ruling in Saurav Chaudhary v. Union of India & Anr., 2024 SCC OnLine Del 4585, which highlighted that patent prosecution requires precise and diligent communication between the applicant and the Patent Agents. It was emphasized that inadequate communication of the FER should not result in the applicant’s patent being abandoned.
Analysis:
The Court, recognizing the unique circumstances in the case – the involvement of multiple Patent Agents across different jurisdictions concluded that the deemed abandonment order should be set aside. It emphasized that Waterotor had acted in good faith and that the failure to file the response was a procedural oversight, rather than deliberate neglect. The Court considered that the lapse occurred due to the breakdown in communication between the Patent Agents and not because of Waterotor’s negligence.
Drawing on its previous ruling, the Court asserted that the technical nature of patent prosecution requires thorough communication and that failure to ensure the proper delivery of the FER could not lead to an automatic abandonment, especially when the applicant had not been informed in a timely manner.
Conclusion:
The Delhi High Court ruled in favor of Waterotor, setting aside the deemed abandonment notice. The Court directed the Patent Office to update the status of the application to “pending” and granted Waterotor four weeks to file its response to the FER. The Patent Office was instructed to process the reply in accordance with the law. The Court clarified that no findings were made regarding the alleged negligence of the Patent Agents, and the decision was made based on the specific facts of the case, considering the miscommunication between agents in different countries.
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Empowering Agriculture: Unveiling the Protection of Plant Varieties and Farmers’ Rights in India
The Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act, enacted in 2001 in India, is a key legislative measure aimed at safeguarding the rights of plant breeders as well as farmers while encouraging the development of innovative plant varieties. The Act provides intellectual property rights to plant breeders, granting them exclusive rights to their new varieties, which helps promote agricultural innovation. Additionally, it recognizes the contributions of farmers by ensuring their right to save, use, exchange, and sell seeds and propagating materials. The Act also provides protection and rewards to farmers who develop or conserve traditional plant varieties.
The PPV&FR Act is designed to strike a balance between the interests of plant breeders, farmers, and the environment, ensuring agricultural biodiversity and sustainability. It aligns with international commitments, particularly the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and incorporates provisions of the International Union for the Protection of New Varieties of Plants (UPOV), ensuring global coherence in plant variety protection.
Key Objectives of the PPV&FR Act:
Effective protection system: To create a robust framework for the protection of plant varieties.
Breeder’s rights: To provide protection and exclusive rights to plant breeders, incentivizing innovation.
Research and development: To promote the development of new plant varieties through research.
Farmer protection: To safeguard farmers’ interests in relation to the cultivation, exchange, and commercialization of seeds and varieties.
What is a Plant Variety?
Under Section 2(za) of the Act, a plant variety is defined as a group of plants within a specific botanical taxon, characterized by unique genetic traits that distinguish them from other groups. The variety must remain stable when propagated. This includes genetically modified plants, such as those in crops like cotton and soybeans, which may display superior traits like better yield or resistance.
Types of Varieties Eligible for Registration:
Extant Varieties: These are plant varieties that are already in the public domain, including farmers’ varieties, varieties of common knowledge (VCK), and those notified under the Seeds Act, 1966.
Essentially Derived Varieties (EDVs): These are plant varieties that are derived from an initial variety, retaining its essential characteristics while displaying distinct, observable traits that differentiate them from the parent variety.
New Registrable Varieties: These are newly developed plant varieties that are novel, distinct, stable, uniform, and demonstrate clear agricultural utility.
Note: New varieties and Extant varieties are further categorized into typical varieties, hybrid varieties, transgenic varieties, and others.
Difference between Extant/New (Transgenic) Varieties and Essentially Derived Varieties: Essentially Derived Varieties (EDVs) involve only minor changes to the parent variety, where the core traits remain largely the same, with some slight modifications. In contrast, Extant or New (Transgenic) varieties are marked by entirely new traits, with little or no resemblance to the traits of the original variety.
Registration Process:
A new variety refers to a plant variety developed by any individual or agency, including farmers, either in India or abroad. To qualify as a new variety, it must not have been in trade or used as a breeding line for more than one year from the date of application submission if it is from India. For varieties originating outside India, the registration must be submitted within 4 years (or 6 years for trees and vines) from the date of application.
Extant varieties, on the other hand, are those that have existed for no more than 15 years at the time of the notification for registration by the relevant authority. These varieties must be registered within the time frame specified by the authority, which is updated periodically. Extant varieties include VCK (Varieties of Common Knowledge), that are existing varieties known to be in trade for not beyond 15 years or 18 years for trees and vines, but beyond 1 year if they are from India, or beyond 4 years or 6 years for trees/vines if they are from outside. Registration for varieties notified under the Seeds Act is valid from the date of notification and lasts for a total of 15 years.
Applications for the registration of plant varieties can be submitted to the PPV&FR Authority. The applicant must provide the necessary documentation and seed samples for evaluation. A Distinctiveness, Uniformity, and Stability (DUS) test is conducted to assess the variety’s compliance with the required standards. Once an application is accepted, the variety is granted protection for 15 to 18 years, depending on the type of plant.
Note: To apply for varieties under the Seeds Act, a separate application must be submitted to the Seed Act Authority. This application requires comprehensive disclosure and detailed information about the variety, including seed and horticultural (vines/trees) data, in order to have it officially notified under the Seed Act. Once the variety is notified in the Seed Act Gazette, you may apply for protection under the Protection of Plant Varieties and Farmers’ Rights (PV) Act within 15 years from the date of notification. Since the full disclosure is already made during the Seed Act application process, and the variety is formally notified, a Distinctness, Uniformity, and Stability (DUS) test is not required for these varieties. However, DUS testing remains mandatory for all other varieties seeking protection under the PV Act.
Exclusions from Protection:
Certain varieties are excluded from protection under the Act, including:
Public Order and Morality: Varieties that may endanger public health, the environment, or plant and animal life.
Terminator Technology: Varieties developed using terminator technology, which causes seeds to be sterile, are not eligible for protection.
Non-registerable Varieties: Varieties not listed in official government notifications or those that cannot be commercially exploited due to environmental concerns.
Conclusion:
The PPV&FR Act is a crucial piece of legislation that not only secures the intellectual property rights of plant breeders but also ensures that farmers receive recognition and rewards for their traditional knowledge and conservation efforts. By fostering a system that supports both innovation and sustainability, the Act encourages the development of new plant varieties while maintaining agricultural biodiversity. Through its comprehensive framework, the Act empowers farmers to maintain control over their crops and contribute to the growth of India’s agricultural sector.
