JANUARY 2025
Is it possible to file divisional application(s) in India on the day of grant of parent application?
Section 16, Section 117A
In a recent judgement dated November 28, 2024, the Hon. Madras High Court while hearing an appeal under Section 117A of the Indian Patents Act, quashed an impugned order that the Controller of Patents and Designs had passed on grounds of non-application of mind and violation of principles of natural justice.
BASF SE, the appellant in this case, had filed a Divisional Application under Section 16 of the Patents Act, 1970, following the grant of its parent patent application. The Controller rejected the Divisional Application on the ground that the divisional application was filed later to the grant of the parent patent, even though the divisional application was filed on the same day as that of the grant of the parent application. This timing, according to the Controller, was not in accordance with requirements set forth under Section 16 of the Act.
The Appellant argued that the application was rejected on incorrect grounds as it was practically difficult for the Appellant to predict the exact timing of the grant and thereby file the divisional application before the grant of parent application. According to the Appellant, the Divisional Application was filed on the same day as the grant of the parent patent application which should be deemed to be sufficient for complying the requirements of Section 16 of the Act.
Further, the Appellant argued that the impugned order was passed in violation of the principles of natural justice, as the hearing notice issued by the Controller failed to mention lack of distinctiveness as an objection. However, in the impugned order, one of the reasons for refusing the patent grant for the Divisional Application was that the claims are indistinctive as compared to the claims of the parent patent applications. The absence of the objection in the hearing notice denied the appellant the opportunity to present an explanation on the matter during the hearing, prior to the issuance of the order rejecting the application.
The Hon. High Court considered these submissions and held that the respondent (controller in this case) violated the principles of natural justice while passing the impugned order. The Hon. High Court held that it is an admitted fact that the Divisional Application was filed on the day the patent on the parent application was granted, and it was impossible for the appellant to know the exact timing when the patent would be granted. Therefore, the Hon. High Court proceeded to quash the impugned order and the appeal was disposed of by remanding the matter back to the respondent for fresh consideration of the Divisional Application filed by the appellant on merits.
The Hin. High Court also acknowledged the practical difficulty in knowing the exact timing of the grant of patent and held that it is sufficient to file a divisional application on the same day as the day of grant of parent application to meet the requirement of Section 16 of the Act. Further, through this judgement, the Hon. High Court emphasized the significance of the principles of natural justice in patent proceedings. The failure to include the reason for refusing the patent grant in the notice of hearing was deemed a substantive omission, which deprived the appellant of a reasonable opportunity to provide an explanation, resulting in the final order being issued without adhering to the principle of fair hearing.
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Business methods/inventions involving technical character is patentable in India
Section 3(k), Section 117A
In the judgement dated 12 November 2024, in Comviva Technologies v Assistant Controller of Patents & Designs, the Hon. Delhi High Court set aside the Indian Patent Office’s refusal of a patent application based on Section 3(k) of the Patents Act, which relates to a computer program and business method (2024:DHC:8990).
Comviva Technologies had filed an application entitled “Methods and Devices for Authentication of an Electronic Payment Card using Electronic Token”. The Application claimed subject matter directed to improved security for electronic payment cards. Specifically, the claimed subject mater included storing electronic tokens on the card for a limited time, preventing unauthorised transactions using invalid tokens; transmitting a token only when the card was near the connected mobile device, thereby minimising the risk of token theft. Moreover, the application disclosed two-step verification before authorising any transaction.
While refusing the application, the patent office contended that the invention was related to financial and/or commercial transactions offering a secure method for electronic payments. Further, the patent office asserted that the claims were merely a set of executable instructions without any technical advancement and further did not extend beyond the conventional interactions between the software and hardware. Basis this, the patent office refused the application on the grounds that the claims in the application are in the nature of a “business method‟ and “computer programme per se‟. In supporting the refusal, the patent office also observed that the application’s description and claims failed to disclose any technical interaction between the features and the mere presence of technical effect or contribution was not sufficient to meet the requirements imposed by Section 3(k) of the Patents Act.
In an appeal filed before the Hon. Delhi High Court, Comviva argued that the invention disclosed a two-step security verification technique which was implemented via primary elements, (mobile device, server, electronic contactless payment card and intermediary device) and was thus related to the authentication of financial transactions and not a transaction itself. Further, since the application disclosed a technical problem and solution, the invention did not relate to a computer program per se.
The Hon. High Court while referring to the 2017 Guidelines for Examination of Computer-Related Inventions, asserted that the presence of terms such as ‘business’, ‘sales’, ‘transaction’ and ‘payment’ is insufficient to conclude that an invention relates to a business method. Further, the Hon. High Court also analysed the invention and subject matter of the claims in view of this three-step test prescribed in Open TV vs The Controller of Patents and Designs case to conclude that the invention enhances the security by discarding the invalid tokens and ensures that only authorised tokens are accepted for conducting the transactions. Therefore, the invention did not relate to a business method or financial transaction but rather addressed a technical problem, preventing unauthorised transactions using the electronic payment cards. Accordingly, the Hon. High Court set aside the refusal order and granted the patent, subject to any other objections that may be raised by the patent office in accordance with the Patents Act.
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India Inc. files 1,00,000 Patent Applications in Calendar Year 2024!
India has reached a historic milestone in the realm of intellectual property rights, with patent filings surpassing 1,00,000 applications within a single calendar year for the first time ever. This remarkable achievement was accomplished in early December 2024, marking a pivotal moment in the nation’s innovation journey.
Notably, patent applications in India are assigned sequential identification numbers, making it possible to confirm this milestone by examining the last six digits of the e-filing receipt numbers for recent applications. This record-breaking accomplishment underscores significant growth in India’s innovation ecosystem, showcasing the country’s progress in fostering creativity, research & development, and technological advancements. It represents a major leap forward in strengthening the intellectual property landscape, paving the way for enhanced global competitiveness and economic development.
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Calcutta High Court Becomes India’s Third HC with Specialised Division To Hear Intellectual Property Cases
In a significant development, the Calcutta High Court has achieved a remarkable milestone by becoming the third High Court in India to establish a specialized division dedicated to hearing intellectual property (IP) cases. This development follows similar initiatives by the Delhi High Court and the Bombay High Court, marking a progressive step towards streamlining the adjudication of IP-related matters in the country.
The establishment of a specialized IP division reflects a growing recognition of the importance of intellectual property rights in driving innovation, protecting creators’ rights, and fostering economic growth. It ensures that cases involving patents, trademarks, copyrights, and other IP matters are handled by the judges with expertise in this complex and rapidly evolving field, leading to more efficient and informed decision-making.
This initiative further strengthens India’s commitment to enhancing its intellectual property ecosystem, aligning with global best practices and promoting a robust legal framework to support the nation’s innovators and businesses.
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Utidelone Patent Grant Decision – A Victory for Clever Claim Drafting
Section 3(d)
In a landmark judgment dated 6 December 2024, the Indian Patent Office granted a patent for a novel solid oral formulation of Utidelone, an anti-cancer compound, after rejecting an opponent’s challenge under Section 3(d) of the Indian Patents Act.
On 22 February 2022, Utidelone Technologies filed Patent Application No. 202337012007 for a novel solid oral formulation containing Utidelone (or its pharmaceutically acceptable salts, solvates, or esters). The formulation, designed as a micropellet capsule or tablet, incorporates specific excipients in a carefully chosen combination to enhance drug release and bioavailability. This formulation represents a significant improvement over existing methods of administering Utidelone. The independent claim outlined the precise excipient composition, the ratio of active ingredient to excipient, and the physical form of Utidelone, which could be either amorphous or molecular.
On 21 May 2024, a pre-grant Opposition was filed by Indian Pharmaceutical Alliance, wherein the opponent amongst other grounds, contended that the invention fell under Section 3(d), which excludes from patentability mere discoveries of new forms of known substances unless they demonstrate enhanced efficacy. The opponent argued that the formulation was merely a new form of Utidelone, which had been previously disclosed, thus triggering Section 3(d).
In response to the Opposition, Utidelone Technologies defended its application by arguing that the invention was not simply a new form of Utidelone but a novel formulation with distinct properties, such as improved drug release and bioavailability. They stressed that the prior art did not disclose such a formulation. The company also cited the Ajantha Pharma Vs. Allergan India Pvt. Ltd. case (Order no. 173/2013), where the IPAB clarified that a combination of Brimonidine and Timolol with a pharmaceutically acceptable carrier does not fall under Section 3(d) of the Indian Patents Act. It emphasized that the term “combination” in Section 3(d) refers only to combinations of derivatives or a derivative with a known substance, and not to combinations of two active drugs. Therefore, the claims in the patent were not subject to Section 3(d) scrutiny.
The Patent Office reviewed the arguments and noted that Utidelone had been disclosed in prior art and could be considered a known substance. However, the Office found that the claims did not simply involve a new form of Utidelone but represented a novel formulation with technical advances. The inclusion of specific excipients and novel formulation techniques led to significant improvements in drug release and bioavailability.
The Patent Office asserted that these advancements were sufficient to overcome the Section 3(d) objection, as they demonstrated a technical effect beyond merely discovering a new form of a known substance. The Office also referenced the Ajantha case, clarifying that a composition claim with specific technical features did not fall under Section 3(d).
In conclusion, the Indian Patent Office granted the patent, recognizing that the clever drafting of the claims—focusing on the formulation as a composition rather than a mere new form of Utidelone—enabled the invention to overcome Section 3(d) scrutiny. This decision highlights the importance of clear and precise claim drafting in protecting innovations in the pharmaceutical industry and demonstrating technical advancements such as enhanced drug release profiles to justify patentability even when an active ingredient is known.
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Court Cites Lack of Reasoning in Patent Rejection, Sends Case Back for Reconsideration
Section 3(d), Section 117A
In a significant ruling on 21 November 2024, the Madras High Court in Signal Pharmaceuticals vs Deputy Controller of Patents set aside the rejection order issued by the Indian Patent Office for being a non-speaking order.
The case involved a patent application titled “mTOR kinase inhibitors for oncology indications and disease associated with the mTOR/P13K/AKT Pathway” (3500/CHENP/2011). The Controller had rejected the application under Section 3(d), citing the invention’s lack of inventiveness and its potential classification as an ‘evergreen’ patent (order dated: 17.05.2019).
The applicant challenged the rejection by way of a petition filed under Section 117-A in the Madras High Court on multiple grounds, emphasizing that the Controller had failed to consider the detailed submissions and evidence, particularly those demonstrating the invention’s inventive step, and arguing that the invention did not fall under the Section 3(d) bar. The crux of the appellant’s argument was that the order was a non-speaking one, as the Controller did not properly address the submissions and failed to demonstrate a thoughtful application of the law.
The Madras High Court during its analysis did not delve into the substantive issues of the inventive step or Section 3(d) but focused on the procedural flaws in the rejection. The Hon. High Court criticized the Patent Office for not providing adequate reasoning for its decision, citing precedents where courts had reprimanded the Patent Office for passing unreasoned orders. Consequently, the Hon. High Court remanded the case back to the Indian Patent Office for fresh consideration, emphasizing the need for a detailed and reasoned examination of the application.
This decision underscores the importance of well-reasoned orders in patent matters, as the Hon. High Court has made it clear that unreasoned rejections cannot stand. It also highlights the ongoing scrutiny that patent applications undergo, especially when novel inventions are contested on grounds like lack of inventiveness or patentability under Section 3(d). The case serves as a reminder that patent authorities must engage deeply with the submissions and evidence presented by applicants to ensure a fair and thorough evaluation.
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Syngenta Patent Grant Decision – A Triumph for Modern Agricultural Solutions
Section 3(h), Section 3(i), Section 58, Section 59, Section 117A
In a landmark judgment dated 26 November 2024, the Delhi High Court allowed Syngenta Crop Protection AG’s appeal for its patent application regarding “Methods of Controlling or Preventing Infestation of Rice Plants by Phytopathogenic Microorganism Gibberella Fujikuroi,” after rejecting the Assistant Controller’s decision to refuse the patent under Section 3(h) of the Indian Patents Act.
On 6 August 2021, Syngenta filed Patent Application No. 202117035647 for a novel method to control or prevent the infestation of rice plants by the phytopathogenic microorganism Gibberella Fujikuroi. The method involves specific applications of fungicides that provide significant advantages over conventional practices, offering a more efficient and targeted approach to managing plant disease. The independent claims outlined the precise methodology for applying these fungicides and the conditions under which the treatment is most effective.
On 5 April 2024, the Assistant Controller of Patents and Designs rejected the patent application, arguing that the claimed method fell under the purview of Section 3(h) of the Act, which excludes patents for “methods of agriculture or horticulture.” The rejection stemmed from the contention that the claimed invention was essentially a traditional agricultural practice, making it non-patentable.
In response to the refusal, Syngenta filed an appeal u/s 117A of the Patent Act in the Delhi High Court, arguing that their invention represented a technical solution to a longstanding problem and should be categorized as a “method of treatment” rather than a mere agricultural practice. The Appellant emphasized that “methods of treatment” are not excluded under Section 3(i) of the Act when it comes to plants. To bolster this argument, Syngenta referenced the 2003 amendment to Section 3(i), which deleted the words “treatment of plants,” suggesting that the legislative intent was to allow patentability for plant treatment methods, distinguishing them from traditional agricultural methods covered under Section 3(h).
The Appellant further contended that the term “agriculture” in Section 3(h) should be interpreted in a way specific to modern innovations, rather than applying a broad and generic definition. The Appellant referred to the Decco Worldwide Post Harvest Holdings v. Controller of Patents case, where the Calcutta High Court clarified that plant treatment methods targeting fungal diseases are different from traditional agricultural practices covered u/s 3(h).
As part of its appeal, Syngenta proposed amendments to its claims, including merging claim 10 with claim 1 and withdrawing claims 2 to 9. These amendments were aimed at refining the scope of the claims to better reflect the inventive nature of the method.
In defense, the Patent Office maintained that the methods claimed by Syngenta were essentially traditional agricultural practices commonly used by farmers worldwide. It argued that the application of compounds to treat plants was an inherent part of agricultural methods and thus fell within the ambit of Section 3(h) of the Act. The Patent Office contended that, based on these grounds, the refusal to grant the patent was justified.
The Hon’ble Delhi High Court reviewed the facts and noted that under Section 58(1) of the Act, it had the authority to allow amendments to claims during the appellate proceedings, as long as they comply with Section 59. The Hon. High Court referenced the Societe Des Produits Nestle SA v. Controller of Patents and Designs case, which established the legal framework for amendments at the appellate stage.
The Hon. High Court emphasized that the amendments proposed by Syngenta did not alter the scope of the application but rather narrowed the claims, making them more specific. Consequently, the Hon. High Court allowed the amendments.
In its judgment, the Hon. High Court acknowledged the significance of the 2003 amendment to Section 3(i), which it viewed as a clear indication that the legislature intended to allow the patentability of methods for treating plants, specifically for disease control. The Hon. High Court further stated, “…a method of treatment of plants” would not fall under the purview of ‘method of agriculture’ as defined in Section 3(h) of the Patents Act. It cannot be the intention of the legislature to remove the bar on patentability in respect of the method of ‘treatment of plants’ under Section 3(i) of the Patents Act and yet include the same within the purview of 3(h) of the Patents Act.”
The Hon. High Court also referenced the Manual of Patent Office Practice and Procedure, which clarifies that Section 3(h) excludes methods related to “producing a plant,” but not methods related to “treatment of plants.” This distinction was pivotal in the Hon. High Court’s final decision.
The Hon. High Court remanded the matter back to the Patent Office for a fresh, de-novo adjudication, underscoring the need for careful, discerning evaluation of the claims. The Hon. High Court called on the Controller to avoid simply applying statutory language but to recognize the evolution of agricultural practices in light of modern scientific advancements. It urged a thorough, forward-looking approach that distinguishes between traditional agricultural methods and innovative, technically advanced solutions.
In conclusion, this decision highlights the Hon. High Court’s role in ensuring that patent law adapts to the needs of innovation. It emphasizes that legal frameworks must evolve in tandem with technological advancements, ensuring that genuine innovations are protected and encouraged while maintaining a careful balance between traditional practices and emerging scientific solutions.
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Court Grants Decree to Pfizer Despite Patent Expiration, Upholds Rights Against Infringers
Section 16, Section 117A
In a notable ruling on 13 December 2024, the Delhi High Court in Pfizer Inc. vs. Everest Pharmaceuticals Ltd. & Ors. granted a decree in favour of Pfizer, despite the expiration of the patents involved.
The case, which concerned allegations of patent infringement related to the pharmaceutical product Tofacitinib, also known as Xeljanz®, highlighted key issues surrounding patent rights, infringement, and the aftermath of patent expiration.
The plaintiffs, Pfizer Inc., Pfizer Products Inc., and Pfizer Products India Pvt. Ltd., owned Indian Patent Nos. 241773 and 218212, which covered Tofacitinib and its forms. These patents had been infringed upon by Everest Pharmaceuticals Ltd. (Defendant No.1), along with its associates—Kavya International (Defendant No.2), SG Overseas (Defendant No.3), Life Care Medicos (Defendant No.4), and Genius Remedies (Defendant No.5)—who were marketing a generic version of the patented drug under the name Tofaxen.
The case stemmed from Pfizer discovering the sale of Tofaxen on various platforms, including IndiaMart, in January 2020, prompting the company to launch an investigation. The inquiry confirmed that Everest Pharmaceuticals was manufacturing and distributing the infringing product in India, which led to the filing of the suit by Pfizer.
Despite multiple court orders and an ex-parte injunction issued in 2020 restraining the defendants from engaging in infringing activities, the defendants failed to appear and contest the case. The Hon. High Court noted that the plaintiffs’ allegations remained unchallenged, and the factual averments made in the plaint were deemed to be admitted.
Although the patents had expired during the pendency of the suit—Indian Patent No. 241773 on 23 November 2020 and Indian Patent No. 218212 on 25 November 2022—the Hon. High Court found that the defendants had nonetheless infringed upon the plaintiffs’ rights during the period the patents were in force. The plaintiffs were no longer seeking a permanent injunction but had pressed for a decree concerning their financial losses and the costs incurred due to the infringement.
The Hon. High Court, emphasizing the serious harm caused by the defendants’ actions, including the flooding of the market with infringing products, awarded a decree in favour of Pfizer under prayer clause 57(e) of the plaint. Additionally, the plaintiffs were instructed to file their bill of costs to determine the actual expenses incurred in the litigation.
This ruling highlights the Hon. High Court’s stance on the enforcement of patent rights even after the expiration of patents, ensuring that companies are compensated for damages incurred due to unauthorized use of their intellectual property during the period of exclusivity. It also underscores the Hon. High Court’s ability to issue a decree even in cases where patents have expired, acknowledging the ongoing impact of past infringement.
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Patent Perils: How Ambiguous Claims Can Derail Infringement Suits
Section 10(4)(c)
In the case of Jay Switches (India) Pvt. Ltd. v. Sandhar Technologies Ltd. & Ors., the Delhi High Court, presided over by Hon’ble Mr. Justice Amit Bansal, dealt with a patent infringement suit concerning a fuel cap technology.
The Plaintiff, Jay Switches, held a patent for an “Air Tight Fuel Cap” granted in March 2023, designed to prevent fuel spillage and maintain air pressure in a vehicle’s fuel tank. The Plaintiff alleged that the Defendant’s product, Model No. COML-13, infringed its patent (Patent No. 427110) and “Fuel Tank Cap for Vehicle” design (No. 275676).
The primary point of contention was the interpretation of the term “predetermined distance” used in the fuel cap’s design. The plaintiff argued that this distance should encompass the thickness of components like the engagement projections, which were integral to the fuel cap’s structure, thereby falling within the 10%-100% range outlined in the patent claim. The defendant, however, contended that the “predetermined distance” referred solely to the thickness of the main circular plate (MCP) and did not account for the engagement projections, which were considered separate elements.
The Hon. High Court, in its judgment, underscored the importance of a precise interpretation of patent claims, referencing Section 10(4)(c) of the Patent Act. It concluded that the term “length” in Claim 1 specifically referred to the thickness of the MCP, and did not extend to the engagement projections, thus favouring the Defendant’s interpretation. The Hon. High Court also observed that the Plaintiff’s patent claims were ambiguous, especially after amendments made during prosecution, which further complicated the claim’s scope.
Given these ambiguities, the Plaintiff failed to establish a prima facie case for the grant of an interim injunction. The Hon. High Court ruled that the balance of convenience lay in favour of the Defendant, as the Plaintiff could not demonstrate that it would suffer irreparable harm. Consequently, the Plaintiff’s application for an interim injunction was dismissed, and the Defendant was relieved from prior undertakings to cease production of the alleged infringing product. However, the Hon. High Court instructed the Defendant to maintain detailed records of the production and sale of the contested product for monitoring purposes.
This decision highlights the critical importance of clear and unambiguous claim construction in patent litigation. It also sets the stage for a deeper examination of the issues at trial, emphasizing the need for patent holders to ensure that their claims are well-defined and free from ambiguity.