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Patents

High Court and Supreme Court Decisions: 2007-2015

Injunction granted/maintained/restored
Mahesh Gupta and Anr. v Tej Singh Yadav Delhi High Court
The interim order was made absolute as the plaintiffs were able to put forth a prima facie case of infringement and the defendants neither put any appearance before the court, nor filed a written statement.
K. Ramu v Adyar Anand Bhavan and Muthulakshmi Bhavan Madras High Court
Injunction was granted to the Plaintiff as the plaintiff established a prima facie case, and it was proved that the defendant had started manufacturing sweets containing fructose only after plaintiff's sweets hit the market.
J. Mitra v Kesar Medicaments Delhi High Court
Injunction was granted because, the defence of the Defendant, to show that the various integers were already known separately and the combination thereof cannot be patented, would amount to mosaicing, which is not permissible for determining the validity of the patent, and also because the use of patent is limited.
Vifor International Ltd. v D. Mohan Rao Delhi High Court
Ex parte injunction granted as plaintiff submitted screen shots of the defendant's website showing advertisement of the infringing products and offering for sale the infringing products and also submitted a reference chart showing infringement of the defendant.
Strix Ltd. v Maharaja Appliances Ltd. Delhi High Court
Injunction was granted as the Defendant failed to place on record some acceptable scientific material, supported or explained by the evidence of an expert, that the Plaintiff's patent is prima facie vulnerable to revocation.
Garware Wall Ropes Ltd. v A. I. Chopra Engineers and Contractors Bombay High Court
Injunction was granted as, (i) the defendant, although using the patent for the purposes of Government or Government undertakings, could not provide an agreement or licence given by the patentee to him, (ii) defendant did not pay any royalty to the patentee, and no third person, including Central Government or State Government, are entitled to use a patent free of cost.
Acme Tele Power Ltd. v Lambda Eastern Telecommunication Ltd. Uttarakhand High Court
Ex-parte temporary injunction was granted as defendant failed establish that Plaintiff had concealed material fact knowingly from the court. The matter went on appeal, before the Division Bench of High Court, who set aside the injunction order of Single Judge, as the three ingredients of grant of injunction was not fulfilled by Acme Tele Power, the plaintiff.
Garware Wall Ropes Ltd. v Techfab India Ahmedabad High Court
Initially, the Trial Court allowed the injunction on the ground that there were conflicts of evidence based on which the claims of either party may ultimately depend, had to be dealt at the trial stage. The Division Bench upheld the Trial Judge's decision on appeal. The order of the Division Bench was challenged before the Supreme Court of India and the Supreme Court set aside the order of the Division Bench and remitted the matter for fresh consideration. Upon hearing the matter afresh, the Trial Judge refused injunction and instead ordered for maintenance of accounts. Matter went on appeal to another Division Bench which upheld the order passed by the Trial Judge.
Telefonaktiebolaget LM Ericsson v Mercury Electronics and Anr. Delhi High Court
Injunction was granted as the Court was of the opinion that plaintiff has made out a prima facie case in its favour and balance of convenience is also entirely in its favor.
Ravi Kamal Bali v Kala Tech and Ors. Bombay High Court
Injunction was not granted to the Plaintiff as delay and suppression of facts by the plaintiff was established and the representation by the plaintiff was deliberately incorrect.
FDC Ltd. v Sanjeev Khandelwal and Ors. Madras High Court
Ex parte ad interim injunction was granted by Trial Court was suspended as there was neither any evidence nor satisfactory analysis in respect of the contention that the process used by the Defendant is the same as the process used by the Plaintiff to manufacture their product
M. C. Jayasingh v Mishra Dhatu Nigam Ltd. Madras High Court
Interim injunction was not granted as the Appellant did not provide any factual details of loss of amount if product is supplied by respondent, and the products of appellant and respondent have their own uniqueness and mere functional similarity does not lay a strong ground for granting interim injunction.
S. Paul Raj v Tata Consultancy Services Madras High Court
Appeal for grant of interim order was dismissed as the defendant proved that there is no novelty in the plaintiff's invention and the concept of the invention is already in public domain.
Ten XC Wireless Inc. v Mobi Antenna Technologies Delhi High Court
Injunction was vacated as, (i) defendants raised credible challenge to the patent and the plaintiff failed to make out a prima facie case for continuation of interim injunction; (ii) ex parte injunction resulted in loss of defendant; (iii) ex parte injunction has been obtained by the plaintiff by not disclosing complete fact; (iv) the patent was granted recently and objections to same was pending post grant.
B. Barun Melsungen AG v Mr. Mohinder Paul and Ors. Delhi High Court
Injunction was not granted as the defendants distinguished between their products and plaintiff's product, and it was proved that the working of the two products were entirely different.
Bilcare Ltd. v Amartara Pvt. Ltd. Delhi High Court
Injunction was vacated as, (i) the invention of patent is anticipated by prior publication and working as Plaintiff has been commercially working on said invention prior to filing of patent application and matter regarding same was also published; and (ii) the injunction has been obtained by the plaintiff by not disclosing the complete facts.
Mariappan v A. R. Safiullah Madras High Court
Application for grant of injunction was dismissed as applications for opposition of grant of patent were pending adjudication and the invention, prima facie, appeared to be innovative only, and not an invention.
Asian Electronics Ltd. v Havells India Ltd. Delhi High Court
Injunction not granted as the patent was hit, prima facie, by anticipation, and the patentee has been unable to produce any objective materials, disclosing sale of its products, any sales tax/VAT registrations or returns, or any other material to substantiate the use of the patent, in India.
Dhanpat Seth v Nil Kamal Plastic Crates Himachal Pradesh High Court
Plaintiffs were not entitled to injunction as the device developed by the Plaintiffs was in fact the result of traditional knowledge and aggregation/ duplication of known products which cannot be said to be an invention.
B. Braun Melsungen AG v Rishi Baid and Ors. Delhi High Court
Application for injunction was dismissed as the Defendants' product was somewhat different from the Plaintiffs' patented product, and, there is a serious question as to the validity of the patent.
Chemtura Corporation v Union of India Delhi High Court
Injunction was vacated due to non-furnishing of prosecution details of corresponding foreign applications as required by Section 8(2) of the Act, and non-compliance with the directive of the Controller for details regarding the search and/or examination report with respect to Section 8(2) of the Act.
F. Hoffmann La Roche v Cipla Delhi High Court
Injunction was not granted as (i) Defendant has raised a credible challenge to the validity of the patent, (ii) Plaintiffs did not make an unequivocal disclosure that the patent they hold covers the drug in question.
Matrix Laboratories Ltd. v F. Hoffmann La-Roche Ltd. Madras High Court
Injunction granted by the Single Judge of Madras High Court was vacated as the Division Bench held that no cause of action has arisen in Madras.
Glaverbel SA v Dave Rose Delhi High Court
No injunction was not granted the court found it difficult to comment upon the commercial working of the patent in India based upon the existing documents.
TVS Motors v Bajaj Madras High Court
Injunction was vacated as the functioning and performance of products manufactured by both the parties showed distinctive features and different operation.
Electronic Machine Tools Ltd. v Power Engineers and Precitek Components, Madras High Court
No injunction was granted as the Memo of the Scientific Advisor on which the plaintiff relied show that the Scientific Adviser had not examined the defendant's product.
SERGI Transformers Explosion Prevention Technologies Pvt. Ltd. v CTR Manufacturing Industries, EMCO Ltd. Bombay High Court
It was held that it is beyond the jurisdiction of the District Court to decide on an infringement suit where counter claim for revocation has been filed.
CTR Manufacturing Industries, EMCO Ltd. v SERGI Transformers Explosion Prevention Technologies Pvt. Ltd. Bombay High Court
Injunction was granted as the Court stated that orders would be valid, subsisting and binding on the parties, unless the same were vacated or modified or set-aside by the same Court or superior Court, and accordingly, the injunction order passed by District Court were subsisting and binding on Defendant No. 1 as ad interim orders.
S. Ram Kumar v Micromax Informatics Ltd. Punjab and Haryana High Court
Injunction was not granted as the product imported by the respondent were not of the exact specification as the patented product; it was held that mere presence of certain features alone in the imported product would not be sufficient to decide infringement.
F. Hoffmann-La Roche and OSI Pharmaceuticals, Inc. v Cipla Ltd. Delhi High Court
Injunction was not granted as it was established that the plaintiffs' product Tarceva does not correspond exactly with the patent in suit (which is a combination of polymorph A and B), but is a polymorphic version B of the compound. It was also found that the plaintiffs never intended to cover the polymorphic version B of the said compound under the patent in suit, as the plaintiffs have separately filed patent for polymorphic version B in US and India.
Arif Abdul Kader Fazlani v Hitesh Raijibhai Patel & Co. & Anr., Gujarat High Court at Ahmedabad
Injunction was not granted as the defendant raised credible challenge to the novelty and inventive merit of the patented product and the Court held that the facts of the present case asks for a thorough consideration on the basis of evidence at the trial to arrive at a conclusive finding on the validity of the impugned patent.
F. Hoffmann-La Roche Ltd. v Intas Biopharmaceuticals Limited Madras High Court
Injunction was not granted as no cause of action has accrued to the plaintiffs within the jurisdiction of this Court and there was no proof that the defendant was selling the infringing product within the jurisdiction of this Court.
Low Heat Driers (P) Ltd. v Biju George and Anr. Kerala High Court
No injunction was granted as the Plaintiff failed to establish that the Defendants' driers were a colourable imitation of the Plaintiff's driers and the operation manual pertaining to the drier of the Defendants also showed that it did not bear any similarity with Plaintiff's product.
Merck Sharp and Dohme Corporation & Anr. v Glenmark Pharmaceutical Ltd. , Delhi High Court
The plaintiffs had asked for interim injunction restraining the defendant to market/produce/sell products directed to Sitagliptin Phosphate Monohydrate. It was for the plaintiffs to have made a case of Sitagliptin Phosphate being merely a new form of SITAGLIPTIN which does not result in the enhancement of the efficacy of SITAGLIPTIN. Rather, the plaint proceeds on the premise that Sitagliptin Phosphate is the same as SITAGLIPTIN. On the contrary it has emerged that the plaintiff, while applying for independent patent for Sitagliptin Phosphate in USA, India and Europe, claimed it to be a new invention and a different product than SITAGLIPTIN. The plaintiff therefore, failed to make out a case for grant of interim relief. No injunction granted.
Natural Remedies Private Limited v Indian Herbs Research & Supply Co. Ltd., Karnataka High Court at Bangalore
No injunction was granted as it was established that the patent obtained was for a mere admixture of known substances with known use, without any synergistic effect, and also because the defendant's product was not identical to the plaintiff's product.
Salzar Electronics Ltd.v SG Controls and Switchgear Madras High Court
No injunction was granted as, before trial for ascertaining the validity of the patent, the applicant had neither made out a prima facie case for the grant of the injunction nor was the balance of convenience in their favour.
Dr. Aloys Wobben and Anr. v Yogesh Mehra and Ors., Supreme Court of India, 2nd June, 2014.
Appellant, Dr. Aloys Wobben is a scientist-engineer and is also engaged in the manufacture of wind turbines. The manufacturing process of wind turbines is carried out by Enercon GmbH Wobben Properties GmbH, which has acquired the rights and interests in all registered and pending patents and designs belonging to Dr. Wobben through an assignment agreement.

In India, Dr. Wobben had been carrying out the manufacturing process through a joint venture partnership named Enercon India Ltd., with Respondents Yogesh Mehra and Ajay Mehra. Enercon India was operating under technical know-how license agreements granted by Dr. Wobben, last of which was issued in June, 2006, and which was terminated by Dr. Wobben owing to non-fulfillment of contractual obligations.

Despite termination of the license agreements, Respondents continued to use Dr. Wobben's patents. Enercon India filed 23 revocation petitions before the IPAB praying for revocation of the patents granted to Dr. Wobben. Aggrieved, Dr. Wobben filed about19 patent infringement suits at the Delhi High Court. In the patent infringement suits, Respondents had also filed 'counter claims' challenging the validity of the patents, on which the infringement suits were based.

The contentions raised by the respondents in the revocation petitions before IPAB, are exactly similar to the arguments placed by Respondents in the "counter claims' filed at the Delhi High Court, against Appellant's patent infringement suits.

Appellant argued that where a defendant in a patent infringement suit has raised a 'counter claim' seeking revocation of the patent, the validity of such challenge can be determined only at the hands of the High Court, i.e., while dealing with the "counter-claim", and that, IPAB would (after the filing of the "counter-claim" in the "infringement suit"), cease to have the jurisdiction to adjudicate upon the validity of the patent.

The Court observed that Section 64(1) of the Patent Act vests the liberty to raise a challenge to a patent in three different circumstances. Firstly, on a petition by "any person interested". Secondly, on a petition of the Central Government. In case of the above two options, the petition for revocation would lie before IPAB. Thirdly, by way of a "counter-claim" in a suit for infringement of a patent. The third option is adjudicable only by the High Court exersising jurisdiction. Thus, a "person interested" may question the validity of the granted patent either by a revocation petition before the IPAB or through a "counter claim" as a defendant to a patent infringement suit.

Appellant argued that the use of the word "or" in Section 64(1) demonstrates, that the liberty granted to any person interested to file a "revocation petition", to challenge the grant of a patent to an individual, cannot be adopted simultaneously by the same person, i.e., firstly, by filing a "revocation petition", and at the same time, by filing a "counter-claim" in a suit for infringement. Thus, the concerned person must choose between the above two remedies, since adoption of both remedies may result in one finding in the revocation petition and a different finding in a "counter-claim proceeding".

The Supreme Court accepted the argument of Appellant as being the correct legal interpretation of Section 64 of the Act. The following were the conclusions arrived at by the Court:

  1. if "any person interested" has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act, i.e., the right to file a revocation petition or the right to file a counter-claim as a defendant in a patent infringement suit.
  2. If a "revocation petition" is filed by "any person interested" under Section 64(1) of the Patents Act, prior to the institution of an "infringement suit" by the patentee against him, such person would be disentitled in law from seeking the revocation of the patent through a "counter-claim" in the infringement proceeding.
  3. Where in response to an "infringement suit", the defendant has already filed a "counter-claim" challenging the validity of a patent (on the basis whereof the "infringement suit" has been filed), the defendant cannot thereafter, in his capacity as "any person interested" assail the concerned patent, by way of a "revocation petition".

In the present matter, Appellant's grievance was that in the infringement suits and corresponding counter-claims, the Delhi High Court is at the stage of framing of issues. However, despite the proceedings before the High Court, Respondents were pursuing the revocation petitions before the IPAB, where in 6 cases the patents have been revoked by IPAB. Appellants prayed that the Respondents' actions amounted to abuse of the judicial process and was causing undue hardship to the Appellants.

The Supreme Court held that the remedy which will have to be adopted by the concerned parties, is dependent upon the date of institution of proceedings under Section 25(2) of the Patents Act, the date of institution of a "revocation petition" under Section 64(1) of the Patents Act, as also, the date of institution of a counter-claim in an "infringement suit", under Chapter XVIII of the Patents Act. The Court further stated that for convenience, it would be open for parties to accept one of the remedies, out of the plural remedies, which they would have to pursue in the different cases, pending between them, to settle their dispute. Having consented to one of the available remedies, it would not be open to either of the consenting parties, to seek redressal from a forum in addition to the consented forum.

Patents: Writ Petitions
Gilead Sciences Inc. v Intellectual Property Appellate Board and Ors., Delhi High Court
Gilead Sciences filed an application for Patent. A pre-grant opposition was filed against such application by one of the Respondents. The Controller of Patents upheld the opposition and refused Patent Application. Appeal was filed by Gilead Sciences at the Intellectual Property Appellate Board (IPAB) against the Controller's order after 10 months, but IPAB refused to condone the delay. Gilead Sciences filed a Writ Petition before the High Court which held that IPAB has power to condone delay. The High Court set aside the order of IPAB and allowed the writ petition by Gilead Sciences.
Nippon Steel Corporation v Union of India, Delhi High Court
Nippon Steel Corp., filed a national phase patent application under the PCT in India Owing to a docketing error by Nippon Steel's attorneys, the deadline for filing Request For Examination (RFE) was missed. On coming to know of the error, Nippon Steel's attorneys filed a request for amendment to change the priority date, which would in effect extend the date of filing the RFE. The Controller of Patents refused to allow Nippon Steel's request, aggrieved by which, the present writ was filed. The Court held that although there is no time limit prescribed for filing application for amendment of priority date, it does not mean that such application can be filed even after patent application ceases to exist in law. The amendment sought by Nippon Steel's attorneys if allowed,would relate back to date of filing of application and thereby revive the application.
Neon Laboratories Pvt. Ltd. v Troikaa Pharma Limited Bombay High Court
Troikaa Pharma filed an application for grant of patent. Neon Laboratories filed a pre-grant opposition to the stated application. Thereafter, Troikaa Pharma filed an amendment of the original patent application. However, the Controller denied an opportunity to Neon Laboratories to be heard, and granted the patent to Troikaa Pharma. The present writ petition filed by Neon Laboratories before the Bombay High Court against Controller's order. The Court held that if the original claims or application of patent is amended and such amendments are opposed, then a personal hearing must be afforded to the Opponent and patent could not have been gra
Enercon India Ltd v Aloys Wobben, 2013
Enercon India filed a patent revocation application against patent no.198648 of Alloys Wobben titled, "An inverter for producing an alternating or three phase current from a DC voltage". Responding to a preliminary objection of Respondent on locus standi of Applicant (that they are not 'person interested'), the IPAB noted that Applicant for revocation had been enjoying the benefit of the patent of Respondent under license which has since been revoked, and if Applicant succeeds in the revocation then its commercial interests are secured. Respondent also challenged the revocation application saying that Applicant as a licensee is estopped from challenging the patent.

Relying on Section 140 of the Patents Act, IPAB held that no licensee can be estopped from challenging the patent. On merits, Applicant had challenged the patent claiming that it was anticipated and lacked inventive step. IPAB observed that the only difference between prior art and invention is the coupling of the 4th leg to the output choke to its first terminal and to the inductive side of the DC intermediate circuit to the second terminal. The IPAB noted that while Respondent's expert said that the invention is not disclosed by prior art, the other two experts said that it is inherent in the prior art. Finally, IPAB held that while the original claims (barring a few claims) cannot be granted, the amended claims also cannot be granted because they are wider than what is indicated to be the invention, and also because of Respondent's unfair conduct. The IPAB stated that since there exists a small inventive step in the invention, Respondent must file appropriately amended claims within 2 months and failure to do so will result in revocation.

Aloys Wobben Argestrasse v Enercon (India) Limited and IPAB, Madras High Court
Enercon (India) Limited filed applications for revocation of patent of the patentee, Aloys Wobben Argestrasse before the IPAB. Aloys Wobben filed miscellaneous petitions challenging maintainability of revocation applications by Enercon (India) on the ground of locus standi. The IPAB, disposed off the miscellaneous petitions filed by Aloys Wobben with a direction to the Patent Office to hear the original revocation application filed by Enercon (India) Limited on a day to day basis and consider all the issues together at a time. Aggrieved by the IPAB order, Aloys Wobben filed the present writ petition before the Madras High Court. The Court held that where several issues are raised before a Court and there is possibility of appeal, the Court must deal with all issues instead of disposing off the case on only one issue. Finding thus, the Court upheld the order passed by the IPAB.
Yahoo ! Inc v IPAB, UOI, Controller of Patents and Designs and Rediff.com India Ltd., Madras High Court
Yahoo Inc., filed an application for grant of patent, to which Rediff. com India Ltd. filed a pre-grant opposition. The Controller of Patents accepted the pre-grant opposition and refused to grant the patent to Yahoo Inc. Aggrieved, Yahoo Inc. filed an appeal before the IPAB, which was not entertained. Yahoo filed the present writ petition against the IPAB's refusal to accept its appeal. The Court held that the order passed by the Controller of Patents in relation to a pre-grant opposition is an order of adjudication and against which order, an appeal shall lie. The Court directed IPAB to hear the appeal and decide the matter on merits and also held that Rediff.com India Ltd., is entitled to be heard in the appeal.
UCB Farchim SA v Cipla Ltd. and Ors., Delhi High Court
The present case dealt with six writ petitions filed by various parties concerning the maintainability of a writ petition against the order of a Controller either allowing or rejecting the pre-grant opposition filed by the Opponents. On consideration of the arguments, the Court shortlisted three possible scenarios that may arise.

(a) The pre-grant opposition is refused and patent application is allowed

In such case, the Opponent may either file a post-grant opposition or file an application for revocation of patent. The pre-grant opponent has additional remedy of appeal before the IPAB and thereafter, he can approach the Courts under judicial review.

(b) The pre-grant opposition is filed by a third party who is not a person interested

If the pre-grant opposition is refused, the Court ruled that the Opponent will be free to approach the Court under the writ jurisdiction and the Court will decide each case on its merits.

(c) Where pre-grant opposition is accepted and patent application is refused

In this case, the Court held that an appeal against the Controller's decision shall lie before the IPAB.

In the present case, Cipla Ltd., filed a pre-grant opposition against the patent application filed by UCB Farchim. The Controller allowed the pre-grant opposition and refused to grant the patent. UCB approached the Court against the order of the Controller. In view of the fact that alternative remedies were available to UCB (as enumerated above), the Court dismissed the writ petition and permitted UCB to file an appeal before the IPAB and directed the IPAB to consider the matter on merits.

Chemithon Engineers Pvt . Ltd. v Secretary , Department of Atomic Energy and Ors. Calcutta High Court
The Secretary, Atomic Energy, Government of India (Patentee) applied for a patent, which was granted to it on 26 April 2005. On 20 August 2006, Dr. V.V. Rao, one of the respondents in the present matter, filed a post-grant opposition. On 20 November 2006, the Patentee filed an application for amendment of the specifications of the patent. Chemithon Engineers Pvt. Ltd., filed an opposition against the proposed amendments on 2 February 2007. The Controller heard the opposition filed by Chemithon Engineers, first, regarding the proposed amendments, and rejected the Patentee's amendment applications.

The Patentee filed an appeal before the IPAB against the Controller's order and intimated the Controller of the filing of such appeal. Even then, the Controller fixed the hearing for the main opposition (filed by Dr. V.V. Rao) on 19 January 2009. Apprehensive that injustice will be caused, the Patentee filed an writ petition before the Single Judge, Calcutta High Court.

The Judge stayed the opposition proceeding before the Controller for a period of 8 weeks or till such time the Patentee can request an interim order before IPAB in the appeal, whichever is earlier. Chemithon Engineers filed an appeal against the order of the Calcutta High Court.

The Appellate bench of the Calcutta High Court held that the Single Judge was wrong in entertaining the writ petition filed by the Patentee since an alternative remedy (for obtaining stay of the opposition proceeding before Controller), was available to it under the appeal proceeding before the IPAB. Moreover, the Appellate Court found that no part of the cause of action had arisen within the jurisdiction of the Calcutta High Court and held that the Single Judge could not entertain the writ.

S. Ram Kumar v Union of India (UOI), Ministry of Finance, Department of Revenue, Central Board of Excise and Customs, Madras High Court
This matter deals with several writ petitions filed by S. Ram Kumar, before the Madras High Court. S. Ram Kumar is the patent holder in India for the technology which allows multiple sims to be used at the same time in an instrument. The Patentee had recorded his patent rights with the Customs department to ensure that no products using this technology enters the Indian territory without his knowledge. As per the border protection rules, the Customs Departments of Chennai, Mumbai and Delhi located suspected consignments and proceedings were initiated. At the hearings, both parties i.e., the importers and the Patentee were present, and after hearing their arguments, the Customs Departments ruled that the Patentee had mis-declared the existence of genuine products and ordered the release of the seized goods. The Patentee filed the present writ petition challenging the order of the Customs Department. The respondents raised the objection that the alternate remedy of appeals before the Commissioner of Customs (Appeal) of the respective jurisdiction, against the impugned orders were available to the Patentee and hence, these writ petitions were not maintainable. The Patentee averred that since a part of the cause of action arose within the jurisdiction of this Court and because there were violations of Natural Justice, the Patentee could file this writ petition before the Madras High Court. The Court held that since the allegations of Natural Justice and the factual controversy of infringement of patent, were in dispute and where the Patentee had an alternative and efficacious remedy of appeal before the Customs Commissioners of respective jurisdictions, the writ petitions cannot be entertained.
Secretary, Department of Atomic Energy, Government of India v The Controller General of Patents, Designs and Trademarks and Ors. Calcutta High Court
The Secretary, Atomic Energy, Government of India (Patentee) is the holder of a patent for a process of treating exhaust gas emission produced during the combustion of coal. The Patentee filed for an amendment of the specifications of patent and Chemithon Engineers Pvt. Ltd., opposed the proposed amendment. The Controller decided to hear the opposition filed by Chemithon Engineers Pvt. Ltd. prior to deciding the application for amendment filed by Patentee. Aggrieved by the conduct of the Controller, the Patentee filed this writ petition before the Calcutta High Court.

The Private Respondent contended that the Patentee had an alternative remedy of appeal available to it before the IPAB and hence this writ petition is not maintainable. The Principal Respondent contended that the present Court would not have the authority to entertain the Writ Petition.

The Court at the outset opined that the alternative case of forum non-conveniens has been run, not by the Respondent authority but by the Private Respondent. The Judge also held that in the absence of Respondent authorities citing any inconvenience, the Private Respondent's challenge on such score is also greatly diminished in value. Moreover, the Court observed that assessment of inconvenience would arise only if it is seen that the present Court has the authority to receive this petition.

On the issue of jurisdiction, the Single Judge held that a possible test to assess whether a part of the cause of action has arisen within the jurisdiction of the High Court receiving the writ petition would be to ascertain whether such High Court in exercise of its original jurisdiction or any court over which the High Court exercises superintendence, would have the authority to receive a suit founded on the same cause of action.

According to the Judge, the notice issued by the Patent Office was issued to the Patentee at Calcutta, i.e., at the address supplied by the patentee, irrespective of the situs of the patentee. This notice created the cause of action and such notice being received in Calcutta, the Court had jurisdiction to entertain the writ. Finally, the Judge ordered the Controller to stay hearing of the opposition proceeding for a period of 8 weeks, or till such time the Patentee gets an opportunity to present its application for stay before the IPAB at the appeal proceeding filed by it.

Indian Network for People living with HIV/AIDS and Tamil Nadu Networking People with HIV/AIDS v Union of India (UOI), Controller General of Patents and Designs, Assistant Controller of Patents and Designs and F. Hoffmann-La Roche AG, Madras High Court
F. Hoffmann-La Roche AG (the Patentee) filed an application for grant of patent relating to Valganciclovir, which is a drug used to treat CMC retinitis. Thereafter, the petitioners, Indian Network for People living with HIV/AIDS and Tamil Nadu Networking People with HIV/AIDS (third parties, providing support to people living with HIV/AIDS) filed a pre-grant opposition to the patent application. Despite a specific request for hearing, the petitioners were not informed about the fate of their opposition. Subsequently, the Controller of Patents unilaterally granted the patent in favour of the Patentee. Aggrieved, the petitioners filed the present writ petition before the Madras High Court.

The issue before the Court was whether a patent granted in violation of the right of hearing of the pre-grant opponents is valid. The Court held that as per the Statute, right to object at a pre-grant stage has been given to "any person". In the present case, grant of patent to the Fourth Respondent has been made in blatant violation of statutory procedure and such a grant is not legally sustainable. The respondents contended that the petitioners had alternative efficacious remedy of post grant opposition or revocation or review and hence, this writ petition was not maintainable.

The Court ruled that remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage and one cannot be a substitute for the other. The Court was of the opinion that since the statute has given remedy at both the stages, it must be made available at both the stages. On a further issue raised by the respondents about the delay in filing this writ, the Court held that there is no prescribed time limit for invoking writ jurisdiction and the petitioners being organizations of HIV affected people who are battling for life against the dreaded disease, can take a reasonable time to organize themselves to fight litigation against a multinational company. Moreover, the objections raised are on a much wider perspective and cannot be equated with the commercial interest.

Hence, the Court while allowing the petition, held that a period of 11 months is not fatal to bar relief to the Petitioners whose fundamental right under Article 14 namely, protection under the law i.e., a statutory right of hearing has been denied.

Novartis AG v Union of India and Ors., Madras High Court
This decision deals with two writ petitions filed by Novartis AG requesting the Madras High Court to declare that Section 3(d) of the Patents Act, 1970 amended by Patents (Amendment) Act 15 of 2005, is violative of Article 14 of Constitution of India and Article 27 of TRIPS. The Single Judge of the Madras High Court after hearing the petitions, referred the matter for consideration to the Appellate division of the Madras High Court.

On the issue of maintainability of the writ petition, the respondents contended that the remedy available to parties to ensure that legislations of member countries are TRIPS compliant is before the Dispute Settlement Board (DSB) created under TRIPS itself and Indian courts do not have jurisdiction to decide if a municipal law is in violation of International treaty. Moreover, the respondents stated that the Patent Controller is a trained person and even if a patent application is rejected by the Controller on the basis of such provision, the patentee shall have recourse to review or appeal (as applicable) to higher fora. Also, TRIPS allows each member to have sui generis local law to discharge its obligations under the TRIPS and Section 3(d) was enacted keeping in mind that India is a welfare state.

After consideration of the issues, the Court held when the choice of forum is arrived at by parties under International Treaties and when a a comprehensive dispute settlement mechanism is provided under the TRIPS agreement, Court has no jurisdiction to decide on the dispute. The Petitioner's main contention was that the amended

Section 3(d) contains the expression 'enhancement of known efficacy' which is vague, since there is no guidelines provided to determine 'enhanced efficacy' and the Patent Controller will have an unguided power to adjudicate this issue. The Court opined that Article 14 can be invoked only when it is shown that in the exercise of a discretionary power there is a possibility of a real and substantial discrimination and such exercise interferes with the fundamental right guaranteed by the Constitution.

The Court held that it was not shown that exercise of the discretionary power of the Patent Controller will violate Petitioner's rights. The Court also stated that there was no violation of Article 14, as object of amendment was to provide easy access to citizens of this country to life saving drugs and thereby, to discharge their constitutional obligation of providing good health care to its citizens. On the issue of declaratory relief to Petitioner under writ powers, the Court ruled that the declaratory relief, even if granted, would be only on paper, on the basis of which, the Petitioner could not claim any further relief in the Indian Courts. Therefore, the Court held that the Petitioner in Writ Petition is not entitled to the declaratory relief and dismissed the petition.

MR. CARLOS ALBERTO PEREZ LAFUENTE v UNION OF INDIA AND ORS., Delhi High Court
Petitioner filed a national phase application in India on 28th August 2008, claiming priority from Europe with a priority date of 28th March 2006. The request for examination filed by the petitioner on 19th November 2010 was not accepted by the Patent Office. The petitioner contends that there is inconsistency between Rule 24B(1)(i) and the PCT Guidelines for National Phase filing in India published by WIPO. Rule 24B(1)(i) says that request for examination shall be made within 48 months from the date of priority of the application or from the date of filing of the application, whichever is earlier, while the Guidelines say that "a patent application shall not be examined unless the applicant or any other interested person makes a request for such examination in the prescribed manner within 48 months from the date of priority of the application (if applicable) or from the date of filing of the patent application, whichever is later".

The Judge admitted that there is an apparent conflict. The Court held though the argument of the respondent of being bound by the Act and Rules is attractive, but since the matter of conflict with the Guidelines does not appear to have been considered by the respondent, Form 18 for Request for Examination has to be considered after hearing the petitioner.

NITTO DENKO CORP v UNION OF INDIA, Delhi High Court
A civil writ petition was filed by Nitto Denko questioning the delay in the issuance of FER (First Examination Report) and seeking directions regarding time line of issuance of FER. The petitioner filed a convention application on 1st September 2011, along with a request for examination. On 2nd November 2011, a request for early publication was also made. The application was published on 13 January 2012. Applications under the RTI Act (Right to Information Act) were also filed by the petitioner regarding status of issuance of FER. In the instant writ, the petitioner pointed out that the Indian Patent Office takes 5-7 years to grant a patent and despite the provision of early publication and express request, these applications are being treated as ordinary applications.

Delhi High Court issued an order directing the Indian Patent Office to file an affidavit indicating the state of affairs regarding issuance of FER and to disclose the year-wise pendency of matters.

Telefonaktiebolaget LM Ericsson v Mercury Electronics and Anr., Delhi High Court
Ericsson filed a patent infringement suit against Micromax and others after failing to arrive at a licensing arrangement on certain standard essential patents relating to wireless technology such as GSM, EDGE and 3G. During the proceeding before Delhi High Court, the parties arrived at an interim arrangement which included royalty payments by Micromax on FRAND (fair, reasonable, and non-discriminatory) terms. The Trial Judge additionally directed Micromax and Customs authorities to inform Ericsson whenever a disputed consignment arrived, to enable Ericsson to inspect the same. Micromax filed an appeal, against the directions of the Trial Court to the Customs authorities, claiming that the Trial Court did not give any reasons for issuance of such directions. The Division Bench held that the order issued by the Trial Court should not be read as a prima facie opinion, and Customs authorities must exercise statutory discretion. The Division Bench refused to make any further comments on the injunction order and stated that it was open to parties to apply for setting aside of injunction order.
Koninklijke Philips Electronics v Major (Retd.) Sukesh Behl Delhi High Court
The plaintiff/patentee pleaded for permanent injunction to restrain Pearl Engineering Company (Defendant No. 2) from infringing Plaintiff's DVD etc. In the Counter Claim, the defendant prayed that patent no. 218255 of the plaintiff/patentee should be revoked and declared invalid.

One of the grounds invoked by the defendant was failure by the patentee to meet the requirement under Section 8. During the prosecution of the subject application, the plaintiff submitted details of the corresponding foreign applications on 17th March 1999, 13th March 2002, and 31st August 2004. However, the Plaintiff filed a letter dated 14th September 2012, along with an affidavit of the patent agent stating that "during the prosecution of granted patent, certain details regarding the corresponding foreign filings were not submitted to the Patent Office"... "inadvertently my paralegal assisting me missed out the information in relation to corresponding foreign applications that was printed in the reverse of the first page as forwarded to us by the Plaintiff".

The Plaintiff relied on the decision of the Court in F. Hoffmann-La Roche Ltd. vs Cipla where it was held that solely on the ground of noncompliance with Section 8 of the Act, a patent cannot be revoked. The Plaintiff also submitted that one page was inadvertently missed out by the attorney's office, which are not material to the grant of the patent in suit. However, the defendant relied upon Chemtura case and alleged that the crucial information concerning US patent where the plaintiff's claims were narrowed down was suppressed and this information would have revealed that the claims made under the Indian patent under challenge was far beyond what was granted by the USPTO. According to the defendant, if this information was made available to the Indian Patent Office in the first instance, the patent may not have been granted at all.

As far as F. Hoffmann La Roche vs. Cipla case goes, the Court in that case held that "there lies a discretion in the Court not to revoke the patent on the peculiar facts and circumstances of the present case. The said discretion exists by use of the word "may" under Section 64 of the Act. Thus, solely on one ground of non-compliance of Section 8 of the Act by the Plaintiffs, the suit patent cannot be revoked." As far as the Chemtura case goes, it was in the context of vacation of an interim stay granted in favor of the plaintiff and not revocation of patent.

As far as the present case is concerned, the Court pointed out that while the plaintiff did not deny that a part of information was inadvertently not disclosed, there is no admission as to the withholding of that information deliberately or wilful suppression. Further, the question whether the non-disclosure of the information was material to the grant of the patent is a triable issue and it is not possible at the present stage for the court to form a definitive opinion on the above aspect. Depending on the outcome of the trial the Court may agree that the non-disclosed information was material to the grant of the patent and may revoke the patent, or, may also decline to revoke the patent. Thus, leaving open the questions urged to be decided at the conclusion of the trial, the application of the Defendant to revoke the patent was dismissed.

Maj. (Retd.) Sukesh Behl & Anr. vs Koninklijke Phillips Electronics, 7 November 2014, Delhi High Court
Issue: Procedural issues relating to filing of patent applications

Parties and Background: Appellants herein are the original Defendants in the patent infringement suit. The said suit was filed by the respondent/Plaintiff to restrain Defendants from infringing its essential DVD Video/DVD ROM Disc Patents, in particular Indian Patent with registered No.218255. Defendants filed their written statement which included a counter claim for revocation of the patent in suit, under Section 64(1)(m) of the Patents Act, 1970 for non-compliance of the provisions of Section 8. After filing of the written statement, Plaintiff's patent attorney wrote a letter to the Controller of Patents that certain details regarding the corresponding foreign filings were not submitted during the prosecution of the patent no. 218255. Plaintiff's attorney mentioned that an updated list of foreign filings comprising 3 pages were received from Plaintiff, but some information which was printed on the reverse of the first page were inadvertently omitted while submission of the same before the Indian Patent Office. In response, Defendants claimed that Plaintiff's attorneys' letter to the Controller amounted to suppression of vital information and same being in violation of Section 8, a decree ought to be passed in their favour by allowing the counter claim and revoking the patent in suit. The Single Judge dismissed such application, ruling that there was no admission as to withholding of information being deliberate or that there was wilful suppression of such information. Single Judge stated that the matter can only be decided after examination of the evidence and parties have to await the conclusion of trial. Aggrieved by the decision, Defendants filed an appeal.

Contentions: Defendants submitted that Plaintiff on its own wrote the letter to the Controller more than four years after the grant of patent. It claimed that the letter constitutes an unequivocal admission regarding non-compliance of the statutory provisions of Section 8. Defendants contended that the expression "shall" in Section 8(1) of the Patents Act casts a mandatory duty upon an applicant to furnish information about prosecution of a similar application abroad and failure to furnish such information would straight-away attract the revocation provisions of Section 64(1). Thus, Defendants claimed that they are entitled to a decree for revocation of the suit patent as set out in its counter claim. Plaintiff on the other hand claimed that the power of the Single Judge under Order XII Rule 6 CPC is only discretionary and, therefore, Single Judge is justified in the facts and circumstances of the case in declining to pass a judgment as sought by the Defendants.

Held: The Division Bench observed that the fact that Plaintiff had filed details of the corresponding foreign application on 31th August, 2004 is not in dispute, however, such information was not complete. Division Bench noted that according to Plaintiff, the omission to furnish a part of the information, which was claimed to be not material to the grant of the suit patent, was not deliberate. In such case, Appeal Court ruled that it cannot be straight-away concluded that Plaintiff had failed to comply with the mandatory provisions of Section 8(1) of the Patents Act. Division bench opined that the Single Judge had rightly held that the question can be answered only at the conclusion of the trial. Division Bench also observed that that the language of Section 64(1) which deals with revocation of patents, is plain and unambiguous and it clearly confers a discretion upon the authority/Court while exercising the power of revocation. Accordingly, Division Bench ruled that though any violation of the requirement under Section 8 may attract Section 64(1)(m) for revocation of the patent, such revocation is not automatic.

Patents: Intellectual Property Appellate Board (IPAB) Decisions (2012-2014)
Bayer Corporation v Union of India and Ors., 2013
Background: Natco Pharma Ltd, (Respondent), an Indian pharmaceutical company which manufactures generic versions of medicinal drugs had obtained a compulsory license (CL) to manufacture 'Sorafenib tosylate', a palliative drug used in the treatment of advanced stage liver and kidney cancer. Sorafenib tosylate was manufactured and marketed under the name 'Nexavar' by Bayer Corporation (Appellant). Bayer Corporation also held the patent for the drug sorafenib tosylate. Bayer sold the drug at a cost of nearly ₹ 2,80,428/- (US$ 4655 approx.) for dosage lasting for one month while Natco wanted to sell the drug at a cost approximated at ₹ 8800/- 9US$ 146 approx.) for a dosage lasting for one month. The compulsory license was granted by the then Controller of Patents on 9th March 2012.

Issue 1: Whether the patentee has a right to be heard at preliminary stages of the CL application?

IPAB held that a plain reading of Section 87 of the Patents Act leads to the conclusion that the requirement of establishing a prima facie case precedes notice to the other side. The Board further held that the issue of hearing of the other side arises only after the notice of opposition is filed.

Issue 2: Whether Natco made reasonable efforts to obtain voluntary license from Bayer?

Appellant had raised this ground claiming that the letter sent by the respondent dated 6th December 2010, seeking a voluntary license was in the nature of a notice or a threat. The Board held that an offer to obtain a voluntary license had been made by the respondent. Thus, the pre-conditions envisaged by law had been met by the respondent and rejected this objection.

Issue 3: Whether Cipla's allegedly infringing sale of the drug affected the grant of CL?

Appellant attempted to argue that both the appellant and its infringer (Cipla) together meet the reasonable requirements of the Indian public and therefore, the compulsory license cannot be granted upon this ground. The Board held that the law is clear that the requirements and conditions to be satisfied for the grant of the compulsory license is something to be decided with respect to the patentee alone and not a party whose presence itself is litigious. The Board held that Cipla's sales are irrelevant and cannot be included.

Issue 4: Whether the patentee has reasonably met the requirements of public?

Appellant contended that the drug was a palliative drug only and not a curative drug and that the number of patients affected was not huge. Further, it was claimed that Appellant's patient assistance program (PAP) was being effectively implemented to satisfy the reasonable requirements of the public at a lower cost than the commercially sold drug. Appellant also cited their huge research and development costs as one of the reasons for the high price of the drug. They also submitted affidavits from experts explaining why their drug deserved to be sold at a higher price.

The Board held that a reasonably affordable price necessarily has to be fixed from the viewpoint of the public. The word 'afford' indicated whether the public can buy the drug. The Board considered whether a price of ₹ 2,80,428/- (US$ 4655 approx.) per month is reasonably affordable to the public. The Board found that it was not a reasonably affordable price and agreed with the Controller's decision that a reasonably affordable price has to be construed predominantly with respect to the public.

On the question of whether there had been an adequate supply, the Board found that the appellant's own supply would not have been adequate even to the number of patients estimated by the appellant as requiring treatment by Nexavar. The Board found that public could neither access nor afford the drug.

Issue 5: Whether the patentee has been able to work the invention within the territory of India?

The Board noted that not one commercial sale pack had been imported in the year 2010. While the Board did not come to an explicit conclusion as to whether Nexavar was worked in India or not, it recognized that the term 'worked' had some flexibility built into it. The Board stated that the law does not contemplate the grant of a compulsory license soon after the grant of a patent. It allows for a gestation period of three years, which the law-makers in their wisdom, thought was sufficient to be worked within the territory of India at a reasonable availability and a reasonably affordable price.

Issue 6: Suppression of facts & misrepresentation allegations against Natco

Respondent had falsely stated that it had already obtained a process patent for the manufacture of sorafenib tocalyte while in reality its patent application was still pending a decision. The Board, expressed its disapproval at the false statements made by the respondent and imposed costs of Rs. 50,000/- (US$830 approx) on the respondent.

Issue 7: Terms and conditions of the grant of CL

The Board allowed a partial modification of the terms and conditions of the compulsory license laid down by the Controller. The Board noted the appellant's grievance that the retailer, stockist and distributor received 30% of the net sales, while the appellant gets 6% of the net sales as royalty and increased the royalty by 1%. The appellant will now receive 7% of the net sales as royalty.

Accenture Global Service GmbH v Assistant Controller of Patents and Designs, 2012
Applicant's patent (Title: 'Distribution Development Environment For Building Internet Applications By Developers At Remote Locations') consisted of 22 claims, which was later reduced to 18 system claims, while 19-22 method claims were deleted. FER was issued on the amended claims and objections were raised. On appeal before the IPAB, Applicant raised a preliminary objection that the impugned order was erroneous as it stated that the method claims were deleted by Applicant only after Patent Office raised objections and Respondent's conclusion that objections raised by Patent Office were valid, is wrong. Moreover, Applicant contended that the 'Applicable Standards' relied on by the Respondent are neither mentioned in the Indian Patent Act nor in the Patent Office Manual or in the guidelines of the Indian Courts. Agreeing with Applicant, the IPAB allowed the appeal and ordered the Respondent to decide the matter afresh.
Beckton Dickinson and Company v The Controller of Patents and Designs, 2012
Applicant/Appellant appealed against the Controller's order rejecting its patent application for 'High bias gel tube and process for making tube'. Applicant had raised a preliminary objection stating that the impugned order was not reasoned, which was rejected by the IPAB, relying on the decision of Pfizer Inc. v Apotex Inc., which held "obviousness cannot be avoided simply by showing of some degree of unpredictability in the art so long as there was a reasonable probability of success". The IPAB held that the patent application lacks inventive step and dismissed the appeal.
Dr. P. Parikumar and Dr. Samual JK Abraham v The Controller General of Patents, 2013
Applicants/Appellants appealed the rejection of a PCT application on the ground that it is not in proper format and the fees paid is insufficient. The PCT application contained 20 claims, while fees paid were sufficient only for 17 claims. The IPAB held that instead of refusing the patent application, the Controller ought to have called upon the Applicant to amend the application and/or ask the Applicant to delete the extra claims. The IPAB held that rejection of the application was beyond the 31 months limit which made it impossible for the applicant to set the lapse right, and allowed the appeal.
Ramesh Kumar v Suneeta Kumar, 2012
Applicant for revocation sought revocation of patent 'An improved metal fixture useful for holding electrical bulb', claiming that Patentee is not the inventor and the invention was known in prior art. IPAB found that Applicant had not filed any evidence in support of its contentions, including prior art documents. In view of the same, IPAB dismissed the revocation application, as no case was made out by Applicant.
Syngenta Participations AG v Union of India, 2013
Appeal was filed by Syngenta Participations AG (Appellant) against the Controller's order dismissing a divisional application related to a 'Microbiocide'. Appellant had withdrawn the parent application and suo moto filed the divisional application. Appellant argued that even if there is no plurality of invention, an applicant can file a divisional application, provided (a) it is done before the grant or abandonment of the parent application, and (b) it satisfies the requirements of noninclusion of matters and absence of double patenting. IPAB held that 'division' means splitting one application into more than one so that each application is for a separate invention and does not mean splitting one invention into splinters. The appeal was dismissed.
Telefonaktienbolaget LM Ericsson v The Controller of Patents, 2012
Appellant Ericsson appealed the Controller's rejection of its patent application for 'Method and System for rate control services in a network". Appellant submitted that during the prosecution of the application, the Controller raised objections under Section 3(k) of the Indian Patent Act which were only restricted to whether the invention was related to 'a software module' or 'a computer program per se'. However, to Applicant/Appellant's surprise, the Controller refused the application holding that it represents 'a collection of algorithms recited in a series of steps', which were never cited as an objection. The IPAB held that the Controller's refusal order was based on an altogether new objection and Applicant/Appellant was never granted an opportunity to present its case. Accordingly, IPAB remanded the matter back to the Controller for giving an opportunity to the Applicant/Appellant to argue its case.
SCHERING CORPORATION v ASST. CONTROLLER OF PATENTS & DESIGNS, 2014
Patent application no. 2491/CHENP/2006 was refused by the Asst. Controller on the grounds of failure to provide therapeutic efficacy data on the claimed crystalline form and also due to lack of inventive step. Applicant appealed the decision to the IPAB.

IPAB stated that the Asst. Controller has refused the application without giving the applicant an opportunity of being heard and has also failed give a reasoned decision while refusing the application on the ground of lack of inventive step. Thus, the order of the Asst. Controller was set aside and the Asst. Controller was asked to consider the matter afresh by affording sufficient reasonable opportunity to the applicant and was asked to dispose the matter within three months.

Abraxis BioScience LLC v (1) Union of India, (2) Controller General of Patents & Designs, (3) Asst. Controller of Patents & Designs, (4) Natco Pharma, 2014
Applicant/Appellant appealed the Assistant Controller's decision refusing patent application no. 2899/DELNP/2005. Appellant mainly based their arguments on the ground of violation of Principle of Natural Justice and on the ground of rendering findings in the impugned order of the Asst. Controller without any plea raised by respondent no. 4 who had filed a pre-grant opposition. The Assistant Controller allegedly refused the application without giving Appellant an opportunity of being heard, while stating that the response to FER was filed after expiry of final last date of 7th January 2009, and also suo-moto taking the additional ground of "insufficiency" from the pre-grant opposition, which was neither pleaded by the 4th respondent nor even argued during the hearing.

IPAB found that a response to FER was filed on 6th January 2009, a day before the expiry of final last date, wherein the appellant requested an opportunity of being heard. The said request of hearing was denied by the Asst. Controller stating that the request was not made before final last date, which is factually wrong. Thus, there has been a violation of Principle of Natural Justice by not providing Appellant an opportunity of being heard. Also, IPAB found that the Asst. Controller has formulated an additional ground of "insufficiency" and rendered a finding in the absence of any specific plea taken by the 4th respondent. The impugned order of the Asst. Controller was set aside, and the case was remanded back for fresh consideration by the Asst. Controller. IPAB further ordered disposal of the matter within 3 months.

F. Hoffmann-La Roche v (1) Asst. Controller of Patents & Designs, (2) Ranbaxy, (3) Cipla, (4) Bakul Pharma, (5) Matrix Laboratories, (6) Delhi Network of Positive People, (5) Indian Network for People Living with HIV/AIDS, 2014
Appellant contended that the Assistant Controller passed the impugned order of refusal pertaining to pre-grant opposition while there was a gross violation of Principles of Natural Justice as (1) the Asst. Controller failed to forward three expert evidence filed by the appellant and taken on record under Rule 60 for examination by the Opposition Board; and (2) the recommendation of the Opposition Board dated October 2008 and January 2009 were not furnished to Appellant.

The above facts were found to be true by IPAB and the counsel for the respondent(s) also did not dispute the facts. It is well settled that the expert evidence adduced by the parties should be sent for the Board's examination and recommendations of the Board should be furnished to the respective parties. Thus, there had been a violation of Principle of Natural Justice. The impugned order of the Asst. Controller was set aside, and the case was remanded back for fresh consideration by the Asst. Controller. IPAB ordered disposal of the matter within 5 months.

High Court and Supreme Court Decisions: 2014-2015
Industria De Diseno Textile SA (ZARA) vs Oriental Cuisines Pvt. Ltd. And Ors. 19th May 2015. Delhi High Court
Background:

Industria De Diseno Textile (Inditex) is an internationally reputed company, based in Spain, and engaged in the manufacture, design, sale and distribution of fashion and related lifestyle products. Inditex is the owner and proprietor of the registered trade mark ZARA internationally since 1975, and in India since 1993, inter alia, for goods in International Class 25.

Inditex came to know of an application filed by Oriental Cuisines, an Indian restaurant services company, for registration of the trademark ZARA TAPAS BAR in respect of goods falling in International Class 16. Inditex immediately filed an opposition to registration of the said application. Over the next few years, Inditex came across several applications for the trademark ZARA TAPAS BAR by Oriental Cuisines and filed oppositions against all of them.

Aggrieved by the continued use of the ZARA mark by Oriental Cuisines, Inditex filed a suit for trademark infringement and passing off before the Delhi High Court in 2013, on the ground that the said mark was infringing its prior, well known and registered trademark ZARA.

Initially in the suit, an ex-parte interim injunction order was issued by the High Court, wherein Oriental Cuisines was restrained from using the mark ZARA as a trademark, trade name, corporate name, domain name or in any other manner.

Subsequently, on an application filed by Oriental Cuisines for lifting of the ex-parte interim injunction, Oriental Cuisines was permitted to use the composite trademark “ZARA TAPAS BAR” till further orders.

After several adjournments and delays, the case came up before the Delhi High Court, for final determination of the application for interim injunction.

Observations and findings of the Court:

  • Evidence showed that defendant Oriental Cuisines' usage of the expression ZARA in their mark ZARA TAPAS BAR is almost ten times bigger than the other word elements. Oriental Cuisines have also used the expression ZARA in isolation in many places. Undoubtedly, there is deceptive similarity between plaintiff Inditex's mark ZARA and defendant Oriental Cuisines' ZARA TAPAS BAR mark.
  • The word ZARA is neither descriptive nor a dictionary word. No plausible explanation had been offered by Oriental Cuisines for adoption of the word and thus, in all probability, the mark ZARA TAPAS BAR has been adopted from Inditex's mark ZARA, and therefore, could not be said to be an honest adoption entitling defendant to concurrent use. If Defendant did not want to ride on the Plaintiff's reputation, they would not have used the word ZARA prominently in the words ZARA TAPAS BAR or ZARA, the Bar and Restaurant. Defendants' adoption of the mark ZARA TAPAS BAR and ZARA, the Restaurant and Bar was thus, dishonest and fraudulent.
  • Oriental Cuisines' claims that use of the ZARA mark by third parties would dis-entitle Inditex from any relief, was rejected.
  • Once Plaintiff had filed opposition to Defendants' application for registration, delay of three years would neither amount to acquiescence nor dis-entitle Plaintiff to the relief of ad interim injunction if it was able to make out a case on merits.
  • Mere mis-statement without the element of malice cannot deny any relief to a plaintiff.
  • Consumers in India cannot be unaware of Plaintiff's company and its product.
  • Plaintiff has a good prima facie case entitling it to protection of the mark even in relation to dissimilar goods and services.
  • The balance of convenience also lies in favour of Plaintiff in view of the fact that the mark ZARA was not only well known worldwide, but was also registered in India, in Class 25, in the year 1993.
  • Inditex had successfully established a strong prima facie case in favour of granting interim injunction. Accordingly, Inditex was granted interim injunction as per its claims in its application.
Venkatraman Das v. VNS Innovations Pvt. Limited and Anr. March 19, 2014, Madras High Court
Issue: Infringement of patent relating to Disposable Armpit Perspiration Pad

Parties and Background: Plaintiff is the original inventor of the patent relating to Disposable Armpit Perspiration Pad. Defendant No. 1 is alleged to be the manufacturer of identical perspiration pads under the trade mark SWEATEX in China and is selling the offending products through Defendant No.2 in India.

Plaintiff filed suit to restrain the Defendants from infringing its Registered Patent by manufacturing and selling Disposable Armpit Perspiration Pad under the Trademark SWEATEX.

Contentions: Plaintiff's invention comprises an oval shaped perspiration observing membrane mounted on a moisture proof bearer element. It is used to observe the armpit perspiration and at the the same time, to reduce the damage to the garment. The Plaintiff obtained Patent Registration No.181248 dated 21st May,1993 and the same was periodically renewed.

Defendant claimed that Plaintiff's invention is not new and has been known for many years. Hence, the patent ought to be revoked. It further submitted that Defendant No. 2 is not its dealer, but had merely approached it for a dealership arrangement. Accordingly Defendant No. 1 had sent six pieces of the product to Defendant No. 2 as samples and it does not qualify as commercial sale. Further, Defendant argued that its product is different from the products envisaged under Plaintiff&339;s patent and hence it has not infringed Plaintiff's patent.

Held: Court examined the specifications under the patent and found that there was no novelty in Plaintiff's patent. Court found that although Plaintiff had claimed that its product is an improvement over the earlier products, but the utility of its patented product had not been stated. Additionally, Court observed that the patent had also expired since filing of the suit, and therefore, Plaintiff had no case. With regard to the counter claims, Court observed that since the patent was registered at the time of filing of the suit, the suit cannot be termed as malicious and Defendant cannot be awarded any damages. The High Court dismissed both the suit and the counter claim.

Teva Pharmaceutical Industries and Ors. vs Natco Pharma Limited February 28, 2014, Delhi High Court
Issue: Infringement of patent relating to acetate

Parties and Background: 2007 Suit:

In 2007, Teva Pharmaceuticals Industries Ltd. ('Teva'), Yeda Research and Development Co. Ltd. ('Yeda') and Regent Drugs Ltd. ('RDL') filed a suit against Natco for a permanent injunction to restrain it from infringing Indian Patent No.190759 and selling or offering for sale, exporting, marketing, commercialising or registering glatiramer acetate under the mark 'Glatimer' or any other mark. In the said suit, Natco that "the process employed by them for producing glatiramer acetate marketed under the name of Glatimer is entirely different from the process patented by the Plaintiffs. In addition, Natco filed a counter-claim seeking invalidation of Plaintiff's patent.

2012 suit:

In 2012, Teva, Yeda and Teva API India Limited ('Teva India') filed a suit against Natco praying for a permanent injunction to restrain Natco from infringing the Plaintiff's patent 190759. In this suit, Plaintiff referred to the affidavit filed by Natco in the 2007 suit which referred to an arrangement between Natco and Mylan Laboratories to develop and launch glatiramer acetate in India and the US. Following such information, Plaintiff's filed a suit against Natco and Mylan in the US District Court, Southern District of New York for infringement of its US patents. The US Court upheld Plaintiff's claims of ingringement. In the present 2012 suit in India, Plaintiff's claimed that Natco's act of manufacturing the glatiramer acetate product for sale in the US and elsewhere amounted to a clear infringement of the Indian Patent No. 190759 and was, therefore, liable to be restrained by a permanent injunction.

Contentions: Natco filed three applications in response to the 2012 suit. First, it requested the Court to return the plaint for want of jurisdiction. Secondly, it prayed for rejection of the plaint and thirdly, it requested that the proceedings in the 2012 suit ought to be stayed pending adjudication of the 2007 suit. With regard to the want of jurisdiction, Natco claimed that it does not carry on any business within the jurisdiction of this Court and thus, no part of the cause of action has arisen within the jurisdiction of this Court.

Held: The Court decided to first take up the issue of want of territorial jurisdiction of Delhi High Court. On examination of the arguments of both sides, Court observed that the present suit had been filed by Plaintiff under an apprehension that the product manufactured by Natco, infringed its Indian Patent No. 190759 and would be exported by Natco to the US. Court observed further that Plaintiff sought to justify filing the 2012 suit by claiming that the earlier 2007 suit pertained to the GA (glatiramer acetate) - first product, sold in India, and the present suit pertains to the separate and distinct GA (glatiramer acetate) -second product made in India for export to the US and other countries. Thus, in the second suit (filed in 2012) Plaintiff claims infringement of its process patent involved in the manufacture of glatiramer acetate. Court stated that in case of infringement of a process patent, the pleas of infringement have to be specific and found that there is no averment that the process patent i.e. Indian patent No.190759 is being practised/ infringed by Natco within the jurisdiction of this Court. High Court ruled that since the suit concerns a process patent, the pleadings as regards the product being sold in Delhi or elsewhere, or the possibility of it being launched in Delhi or elsewhere cannot justify the jurisdiction of the Court. Accordingly, Court returned the plaint to Plaintiffs for presentation to the appropriate court.

Dr. Aloys Wobben And Another vs Yogesh Mehra And Others, 2 June, 2014, Supreme Court.
Issue: Infringement of patent relating to wind turbines.

Parties and Background: Appellant, Dr. Aloys Wobben is a scientistengineer based in Germany and is also engaged in the manufacture of wind turbines. The manufacturing process of wind turbines is carried out by Enercon GmbH Wobben Properties GmbH, which has acquired the rights and interests in all registered and pending patents and designs belonging to Dr. Wobben through an assignment agreement. In India, Dr. Wobben had been carrying out the manufacturing process through a joint venture partnership named Enercon India Ltd., with Respondents Yogesh Mehra and Ajay Mehra.

Enercon India was operating under technical know-how license agreements granted by Dr. Wobben, last of which was issued in June, 2006. The June 2006 license agreement was terminated by Dr. Wobben owing to non-fulfillment of contractual obligations under the license agreement. Despite termination of the license agreements, the respondents continued to use Dr. Wobben's patents. Enercon India filed 23 revocation petitions before the IPAB praying for revocation of the patents granted to Dr. Wobben. Aggrieved, Dr. Wobben filed about 19 patent infringement suits before the Delhi High Court. Respondents also filed 'counter claims' challenging the validity of the patents, on which the infringement suits were based.

Contentions: Respondents contended in the revocation petitions before IPAB (Intellectual Property Appellate Board), are exactly similar to the arguments placed by Respondents in the 'counter claims' filed at the Delhi High Court, against Appellant's patent infringement suits.

Appellant argued that in case where a Defendant in a patent infringement suit has raised a 'counter claim' seeking revocation of the patent, the validity of the challenge be determined only at the hands of the High Court, i.e., while dealing with the "counter-claim". Further IPAB would (after the filing of the "counter-claim" in the "infringement suit"), cease to have the jurisdiction to adjudicate upon the validity of the patent.

The Court observed that Section 64(1) of the Patents Act vests liberty to raise a challenge to a patent in three different circumstances. Firstly, on a petition by "any person interested". Secondly, on a petition of the Central Government. In case of the above two circumstances, the petition for revocation would lie before the IPAB. Thirdly, by way of a "counter-claim" in a suit for infringement of a patent. The third case is adjudicable only by the jurisdictional High Court. Thus, a "person interested" may question the validity of the granted patent either by a revocation petition before the IPAB or through a "counter claim" as a Defendant to a patent infringement suit.

Appellant argued that the use of the word "or" in Section 64(1) demonstrates, that the liberty granted to any person interested to file a "revocation petition", to challenge the grant of a patent to an individual, cannot be adopted simultaneously by the same person, i.e., firstly, by filing a "revocation petition", and at the same time, by filing a"counter-claim" in a suit for infringement. Thus, the concerned person must choose between the above two remedies, since adoption of both remedies may result in one finding in the revocation petition and a different finding in a "counter-claim proceeding".

The Supreme Court accepted the argument of the Appellant as being the correct legal interpretation of Section 64 of the Act. The following were the conclusions arrived at by the Court:

  1. if "any person interested" has filed proceedings under Section 25(2) of the Patents Act, the same would eclipse all similar rights available to the very same person under Section 64(1) of the Patents Act, i.e., the right to file a revocation petition or the right to file a counter-claim as a Defendant in a patent infringement suit.
  2. If a "revocation petition" is filed by "any person interested" under Section 64(1) of the Patents Act, prior to the institution of an "infringement suit" by the patentee against him, such person would be disentitled in law from seeking the revocation of the patent through a "counter-claim" in the infringement proceeding.
  3. Where in response to an "infringement suit", the Defendant has already filed a "counter-claim" challenging the validity of a patent (on the basis whereof the "infringement suit" has been filed), the Defendant cannot thereafter, in his capacity as "any person interested" assail the concerned patent, by way of a "revocation petition".

In the present matter, Appellant's grievance was that in the infringement suits and corresponding counter-claims, the Delhi High Court is at the stage of framing of issues. However, despite the proceedings before the High Court, Respondents were pursuing the revocation petitions before the IPAB, where in 6 cases the patents have been revoked by the IPAB. Appellants prayed that the Respondents' actions amounted to abuse of the judicial process and was causing undue hardship to the Appellants.

Held: The Supreme Court held that the remedy which will have to be adopted by the concerned parties, is dependent upon the date of institution of proceedings under Section 25(2) of the Patents Act, the date of institution of a "revocation petition" under Section 64(1) of the Patents Act, as also, the date of institution of a counter-claim in an "infringement suit", under Chapter XVIII of the Patents Act. The Court further stated that for convenience, it would be open for parties to accept one of the remedies, out of the plural remedies, which they would have to pursue in the different cases, pending between them, to settle their dispute. Having consented to one of the available remedies, it would not be open to either of the consenting parties, to seek redressal from a forum in addition to the consented forum.

Kaushik And Anr vs Union Of India And Ors, 23 December 2013, Delhi High Court
Issue: Procedural rules relating to filing of PCT applications

Background: Puneet Kaushik, the petitioner, filed a PCT application, first filed for the invention in India, on 14 September 2012 before the Indian Patents Office, New Delhi branch. The petitioner's grievance is that that despite having submitted the international PCT application, the Patents Office has not given international filing date of the said application.

Contentions: The petitioner prayed to the court to issue directions to the Patent Office to (a) grant the international filing date as 14th September, 2012 to the petitioner's international application and take the same of record by assigning an international application number; and (b) to declare that a PCT application filed in India at the Indian Receiving Office (RO/IN) would not require a prior permission under section 39 of the Patents Act, 1970; and (c) declare the Indian Receiving Office (RO/IN) as the competent receiving office when an Indian resident/ national is an application of the PCT application filed at RO/IN for at least one of any contracting states.

In response, Patent Office/Respondents, submitted that the petitioner had not filed an international application for patent under PCT but rather filed an application for permission for filing outside India under Section 39 of the Patent Act on Form-25. Patent Office also submitted that a resident of India cannot file an application outside India without obtaining the aforesaid permission. Patent Office further claimed that filing of request of Form-25 is different from filing of international application under PCT since they are dealt with by two separate counters in the office. The application under Section 39 at the General Cash Counter and PCT Counter application in PCT Division. It was also mentioned that the documents filed in the PCT Section of the Patent Office do not go to EDP Section and come directly to RMID-4 (Record Management and Information Dissemination - 4) Section and the documents filed in EDM Section relating to Form-25 under PCT and Permission u/s 39.

Held: After analysing the scheme of the PCT, Court held that the practice adopted by Patent Office, is correct and an international application must necessarily be accompanied by a request under Section 39 of Patents Act unless such permission has already been obtained or an application for a patent for the same invention had been made in India not less than six weeks before the international application is made. Court found that the petitioner was granted the written permit under Section 39 only on 27th September, 2012, though the international application was delivered in the Patent Office on 14th September, 2012. Hence, Court stated that since the written permit in terms of Section 39 was mandatory for such an application, the international application even if complete in all other respects cannot be given a filing date earlier than the date on which the written permit in terms of Section 39 was issued.

On the issue of whether the petitioners had submitted only an application under Section 39 of Patents Act by filling up Form 25 or they had also simultaneously submitted an application to the Indian Patent Office on 14th September, 2012, Court noted that the Patents Office found several deficiencies in the documents of the petitioners due to which the request made by them cannot be treated as a PCT international application. But the Court found that apart from the written permit under Section 39 which was granted on 27th September 2012, none of the other deficiencies were so serious.

Accordingly Court directed Patent Office to grant 27th September 2012 as the international filing date in respect of the PCT application submitted by the petitioners on 14th September, 2012 and assign an international number to the application subject to petitioners submitting the copies of specifications in required number, and paying the requisite fee/late fee, within the time stipulated by Patents Office.

Appeal Court decision: Unhappy with the decision of the first instance court, Petitioner filed an appeal. In its decision dated 19 December 2014, the Division bench observed that the fact that Petitioner had in fact filed a PCT application cannot be disputed since a permission request under Form-25 was filed. As per the High Court, Section 39 will then automatically apply and Patent Office could not have accepted such application without the requisite permission. High Court further observed that on 14th September 2012, the PCT application was not complete, since the permission was granted only on 27th September 2012.The Division Bench opined that Single Judge was correct in holding that filing date can only be accorded once the requisite permission was granted namely on 27th September, 2012. Accordingly, Division Bench stated that the reasoning adopted by the Single Judge was correct and dismissed the appeal by holding that Petitioner's request to date back the filing date to be on 14th September 2012 cannot be accepted.

Bharat Bhogilal Patel vs Union of India and Ors., 8 October 2014, Madras High Court
Issue: Whether forum conveniens affects the appropriate office exercising jurisdiction over patent applications

Parties and Background: Aditi Manufacturing Company, the fourth respondent, had challenged writ petitions filed by Bharat Bhogilal Patel, the Applicant, on the ground that the Madras High Court did not have territorial jurisdiction to try and entertain the writ petitions. The writ petitions were filed by Mr. Patel for judicial review of the orders passed by the Intellectual Property Appellate Board (IPAB).

According to Patent Rules 2003, for filing patent applications, the appropriate Patent Office is the one within whose territorial limits the applicant normally resides or has his domicile or a place of business or the place from where the invention actually originated. Since, Mr. Patel resided in Mumbai, the appropriate patent office was the one at Mumbai. Accordingly, Mr. Patel had filed two Patent Applications on 21st September, 1998 in respect of An Improved Laser Marking and Engraving Machine and "A Process of Manufacturing Engraved Design Articles on Metals or Non-Metals", which patents were subsequently granted and entered into the register.

Aditi Manufacturing Company (AMC) filed revocation applications before the High Court of Gujarat at Ahmedabad against Patent Nos.188787 and 189027 granted in favour of Mr. Patel. Aggrieved, Mr. Patel sought transfer of the applications to Bombay High Court. However, with the IPAB having been constituted in the year 2007, the applications were transferred by the Gujarat High Court of Gujarat to the IPAB Circuit Bench at Mumbai. It is the case of the Petitioner, in view of the urgency of the matter expressed by the Petitioner and the Circuit Bench at Mumbai not having adequate time, as per consent of parties and their counsel, the hearing of these applications was scheduled by the IPAB at Chennai, where the Bench held regular proceedings.

Contentions: As per AMC, the only basis for Mr. Patel invoking the jurisdiction of Madras High Court was because the hearing of the two patent revocation applications had taken place at Chennai. AMC claimed that the hearings were held at Chennai only as a matter of convenience to expeditiously conclude the matters since IPAB did not have frequent sittings at Mumbai. On the other hand, Mr. Patel argued that the patent revocation applications were heard at Chennai by consent of both parties and decided only at Chennai. On such basis, Mr. Patel argued that Madras High Court had the territorial jurisdiction to try and entertain the writ petitions.

Held: The High Court ruled that the arrangement to hear the matters at Chennai and not at Mumbai where the IPAB did not have regular seatings, was only as a matter of convenience as the parties were desirous of expeditious adjudication of the dispute. Court held that such an arrangement of convenience cannot shift the venue of litigation from Mumbai to Chennai. Court invoked the principle of forum conveniens and dismissed the writ petitions with liberty to file the writ petitions before the Mumbai High Court.

Salzer Electronics Limited vs S.G.Controls & Switchgear (P) Ltd., 9 June 2014, Madras High Court
Issue: Infringement of patent relating to Integral Cam operated rotary switch

Parties and Background: Appellant/Plaintiff had filed two suits against Defendants, one for infringement of its registered patent under No.198122 in respect of "INTEGRAL CAM OPERATED ROTARY SWITCH" and another for passing off the said products in same or similar trade dress, colour scheme, getup and layout or in any other manner. The Single Judge at the trial court refused to grant Plaintiff's prayers by holding that it had not established a prima facie case in favour of grant of injunction and dismissed the applications.

Contentions: Appellant/Plaintiff argued that Defendants had not given any explanation whatsoever as to how and why the registered patent is hit by prior art or on any ground under Section 64 of the Patents Act, 1970. Plaintiff also argued that once Single Judge observed that a counter claim was filed in the suit and it is a matter fit for trial, it was not open for him to conclude that the patent obtained by Plaintiff is not a new invention and several manufacturers are using the similar design, in the absence of ascribing of valid and justifiable reasons to that effect.

Respondent argued to the contrary, that the Single Judge had rightly dismissed the applications for interim injunction as the patent, does not disclose any inventive step and only put the available prior art in a different language. Respondent submitted that there is no disclosure in the specification about the novelty claimed by the Appellant/Plaintiff and therefore, it cannot be considered that the patent is granted for the novelty in issue. Also, there is no novelty in the assembling, as the description of the invention in the specifications, gives only the method of assembling the cam operated rotary switches, which is universally followed by all the manufacturers. In addition, Respondent submitted that the patent being of very recent and having regard to the working of the patent for short period no presumption can be drawn as to the prima facie validity of the patent.

Held: The Division bench observed that the Single Judge came to the conclusion that the subject matter of dispute between the parties, is a matter fit for trial. However, in the impugned order, he did not spell out the divergent stand taken by the parties nor did he discuss the merits and demerits of the claims of the parties. The Division bench set aside the impugned order, without expressing any opinion on the merits of the case as the order was shorn of necessary details.

Sandeep Jaidka vs Mukesh Mittal & Anr., 9 May 2014, Delhi High Court
Issue: Infringement of patent involving device producing 4D effects

Parties and Background: Plaintiff is an innovator in the field of electronics and has invented a novel system, i.e. device which produces heating, cooling and aromatic effects corresponding to the scene appearing in a movie, commonly known as 4D effects. Defendant No. 1 is owner of a 4D Theatre located called "funvilla" located within a mall, while Defendant No. 2 is the manufacturer and supplier of 4D Theatre equipment, who supplied the infringing 4D theatre equipment to Defendant No.1. The present suit was filed by Plaintiff against the Defendants for permanent injunction restraining infringement of its registered patent bearing No.231895 relating to such 4D effects. Both Defendants had filed their initial response, but the Defendant No. 1 stopped appearing before the Court and was moved ex-parte, while Defendant No. 2 continued to contest the suit and filed a counter-claim requesting revocation of the patent.

Contentions: Defendant argued that the subject of Plaintiff's patent is neither an invention nor is it an innovation attributable to Plaintiff. The device in the said patent is prior art and there is no valid ground on which the said device or the process could be granted patent. Defendant also submitted in its counter-claim that the patent ought be revoked as the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed.

In response, Plaintiff submitted that its patent is not a subject of any prior art or invention in the public domain and it represents a complete advancement in technology which requires no manual intervention and all signals as desired in a movie are digitally encoded. Plaintiff also denied that Defendant's alleged infringing device is different from that of the Plaintiff's patent.

Held: With regard to grant of injunction in relation to patent infringement suits, Court observed that it is now well settled that if patent has not been sufficiently exploited in India and there is no user of the said patent in commercially viable form in India, Court may tilt the discretion in the interim stage in favor of the Defendant. The Court noted that in the present case, firstly, the subject patent has not been commercially exploited by Plaintiff yet and secondly, in another suit involving infringement of the same patent by another party, Plaintiff had not pressed for any interim injunction as the trial in that suit had been expedited. In addition, Court noted that Defendant had been manufacturing and supplying the equipments in dispute for a long time and an injunction will cause more injury to Defendant than Plaintiff who is yet to commercialize the patent. Considering all these factors, Court refused to grant interim relief but directed that the trial be expedited and ordered Defendant to furnish statements of account till the matter is finally decided.

NTT DoCoMo Inc. Vs. Assistant Controller of Patents and Designs, 28 March 2014, Madras High Court
Issue: Procedural issues relating to filing patent applications

Parties and Background: NTT Docomo had filed two patent applications in relation to two innovations - (a) Application No. 4851/CHENP/2007 titled as "Transmission Rate Control Method, Mobile Station and Radio Network Controller", which is in respect of notifying an increase pattern of transmission rate increased in response to RG(UP) and (b) Application No.4814/CHENP/2007 titled as "Transmission Rate Control Method, Mobile Station and Radio Network Controller", which in respect of notifying a decrease pattern of transmission rate decreased in response to RG(DOWN). These two patent applications were based on the International patent application numbered as PCT/JP06/306523 dated 29th March, 2006 claiming priority of Japanese patent application number 2005-096539 filed on 29th March, 2005. While communicating the filing to NTT Docomo, its erstwhile attorneys had erroneously referred to the applications with the application numbers interchanged, namely, application No.4851/ CHENP/2007, originally meant for increase pattern of transmission technology, was shown as the patent application for decrease pattern of transmission technology and No.4814/CHENP/2007, originally meant for decrease pattern of transmission technology, was shown as the patent application for increase pattern of transmission technology.

Subsequently, NTT Docomo decided to withdraw its patent application relating to decrease pattern of transmission technology as it had become redundant, while retaining the patent application relating to increase in pattern of transmission technology. Accordingly, NTT Docomo instructed its erstwhile attorneys to withdraw its Indian Patent Application No.4851/CHENP/2007 believing in good faith that the same relates to the decrease pattern of transmission rate decreased in response to RG(DOWN). However, owing to the error committed by the patent attorneys in interchanging the patent application numbers, patent application no. No.4851/CHENP/2007 for increase pattern of transmission technology was withdrawn.

The mistake came to NTT Docomo's notice when it changed its patent attorneys, and the files were being transferred from its previous attorneys to its current attorneys. Petitioner's current patent attorneys immediately filed a request to revive/reinstate patent application No.4851/CHENP/2007, along with a proper explanation about the erroneous withdrawal of the said application.

However, the Controller of Patents refused such request and held that the Petitioner's request cannot be taken on record, as there was no provision under the Patent Act, 1970 or the Rules by which the said patent application can be revived or reinstated. Aggrieved, NTT Docomo filed the present writ petition against the order dated 14th December, 2012.

Contentions: Petitioner/NTT Docomo argued that Controller failed to appreciate that the patent application had been mistakenly withdrawn by its erstwhile patent attorneys owing to a clerical error. Petitioner added that the Controller had wrongly proceeded that the application itself ceased to exist, therefore, the request of the petitioner for revival of the patent application No.4851 cannot be acted upon. Petitioner contended that under Section 78 of the Patents Act, it was contended that the first respondent has got enormous power to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any manner which is entered in the register.

On the other hand, Respondent argued that there is no provision under the Patents Act, 1970 or the Rules framed thereunder enabling the Controller to revive/reinstate the petitioner's application, after the withdrawal of the petitioner's application, since the matter was already published and the notice of withdrawal was made public through the official communication.

Held: The High Court ruled that a careful reading of Section 78 unequivocally indicates that the Controller of Patent has got the power to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or any clerical error in any matter which is registered in the register. Court also observed that the power given under Rule 137 of the Patent Rules, 2003 also makes the issue conspicuous that any document,for the amendment of which no special provision has been made in the Act may be amended by specifically stating that any irregularity in procedure which, in the opinion of the Controller, may be obviated without detriment to the interests of any person. The Court reasoned that Nippon Steel Corporation v. Union of India, (Delhi High Court 2011), relied on by Respondents was inapplicable due to two reasons, namely (1) an amendment sought to disregard the Japanese priority date and to change the application with an idea to extend the deadline for filing the Request for Examination (RFE) on the ground that a docketing error occurred in the office of the attorney of the petitioner therein, was rejected on the ground that the request was hit by limitation; and (2) once the amendment was allowed, it would relate back to the date of the application for the grant of patent and it was also found that the request for amending the priority date was with a view to indirectly get the time for RFE extended. In the subject case, the Court held that the only ground mentioned in the application for rectifying the clerical error was due to the bona fide and inadvertent mistake committed by the petitioner's erstwhile attorneys in interchanging the patent application numbers.

Sergi Transformer Explosion Prevention Technologies Pvt Ltd vs Kumar Pratap Anil & Ors, 16 April 2014, Delhi High Court

Issue: Infringement of patent relating to 'method and device for preventing/protecting electrical transformer against explosion and fire'

Parties and Background: Plaintiff has filed the present suit against Defendants seeking permanent injunction restraining infringement of registered Indian Patent No.189089 in respect of "Method and Device for Preventing/Protecting Electrical Transformer against Explosion and Fire". Plaintiff filed the suit as the exclusive licensee of the suit patent, while the original owner had been impleaded as a proforma Defendant in the suit. Defendants are engaged in the business of manufacture and marketing of engineering and electronic products including transformers.

Contentions: Defendant No. 2 filed an application for rejection of plaint contending that Plaintiff is not an exclusive licensee of the suit patent. Defendant alleged that another company, namely Sergi Holding together with the original owner of the suit patent, had instituted an infringement suit in Kolkata against them in February 2006 claiming to be the exclusive licensee of the suit patent. Defendants claimed that the present Plaintiff's exclusive licence dated August 2006, granting the licensee status to Plaintiff from January 2006, was a back-dated document and it was never brought to the knowledge of Patent Office prior to March 2010, i.e., filing of the present suit. Defendant's argued that the licence was an invalid document and was made fraudulently. Additionally, Defendant alleged that Plaintiff had failed to disclose as to how the products of Defendant No. 2 are infringing the Plaintiff's suit patent and therefore, the suit is liable to be rejected/dismissed for non-disclosure of cause of action.

Denying Defendants' contentions, Plaintiff submitted that steps to register the licence agreement at the Patent Office were taken prior to filing of the suit and non-registration of licence does not render it void since the original patent owner is a party to the suit as a proforma Defendant.

Held: High Court observed that under the Patents Act, the validity of the licence agreement as evidence is to be considered by the Court after the said document is recorded in the Patent office. Court further observed that there is no specific bar in filing the suit for infringement of patent by exclusive licensee against an infringer, if the licence is not registered in the patent office. According to High Court, an option has been given to the Court or Controller in appropriate cases to pass speaking orders by granting exemption to the Plaintiff who is exclusive licensee. In the present case, since the application for recordal of licence agreement was pending before the Patent Office, and the benefit of the licence agreement will only accrue when the said document was registered, High Court ruled that Defendant's objections to the licence agreement will have to be considered at the time when such application is being decided by Patent Office. High Court further ruled that the suit cannot be dismissed at this stage, and directed the Patent Office to issue its orders regarding recordal of the licence agreement within six months and adjourned the suit proceedings till such time.

Vringo Infrastructure Inc. & Anr. vs Indiamart Intermesh Ltd. & Ors, 5 August 2014, Delhi High Court
Issue: Infringement of patent 'a method and a device for making a handover decision in a mobile communication system'

Parties and Background: Plaintiff No. 1 is engaged in innovation and development of telecommunication technologies and intellectual property, while Plaintiff No. 2 till recently, developed and distributed mobile application products and services through partnerships with handset manufacturers and mobile network operators.

Defendant No.3, ZTE Telecom India Pvt, Ltd., is the Indian subsidiary of ZTE Corp, Defendant No.4 and Defendant No.2, Mr. Xe Dejun is the CEO of Defendant No.3. Defendant Nos. 3 and 4 are involved in the manufacturing and selling of telecommunications equipment and devices such as mobile handsets, dongles, tablets, infrastructure equipment and devices, etc. Plaintiffs alleged that Defendants have infringed their patent No.IN 200572 (hereinafter referred as IN '572) titled as 'a method and a device for making a handover decision in a mobile communication system'. The patent originally in the name of Nokia Corp., had been assigned to Plaintiffs in 2006. In the suit, an ad interim injunction order was granted in favour of Plaintiffs and the High Court was to decide on the confirmation of the said interim injunction order.

Contentions: Plaintiffs claimed that Defendants are infringing the suit patent by manufacturing, importing, selling, offering for sale infrastructure equipment including Base Station Controller examples of which are Base Station Controllers bearing Nos.ZTE ZXG10 iBSC and ZTE ZXG10-BSCV2. Plaintiffs submitted that Defendants infringement of their patent was evident and they had also filed an affidavit of Mr. Rejis J Bates, an expert who had categorically stated that Defendants had infringed Plaintiffs' patents.

Plaintiffs stated that they notified Defendants about the suit patent by way of a letter dated 25th September, 2012 and requested that Defendants seek appropriate licence for using the suit patent, however Defendants did not approach Plaintiffs for licence of the said patent and instead continued their infringing actions.

Defendants claimed that the technology used by them for the purpose of manufacturing, importing and selling the Base Station Controller is different than the one adopted by Plaintiffs. Defendants alleged that Plaintiff's had filed the suit after considerable delay since, Nokia Corp., had not complained about Defendants' products and Plaintiffs were aware of Defendants' technology since 2002. Defendants further stated that the affidavit of Mr. Bates cannot be taken into consideration, since Mr. Bates had admitted that he had no special knowledge about the patent or its violation and thus, the affidavit cannot be taken as conclusive evidence of infringement of the patent. In addition, Defendants had filed a counter-claim for revocation of the patent since it was not innovative in nature.

Held: The Single Judge after hearing the submissions of both parties, held that Plaintiffs have not been able to establish a prima facie case, and the issue of infringement cannot be decided without a proper examination of the evidence. Judge observed that Plaintiffs had failed to provide any information in the plaint about commercial exploitation of the suit patent, and in such cases, balance of convenience is against grant of injunction. With regard to the affidavit filed by Mr. Bates (filed by the Plaintiff), the Single Judge held that he cannot be considered to be a Scientific advisor or expert since he did not have any special technical knowledge about the telecommunication or the technology in question nor did he have any degree in science, telecommunication or engineering dealing in telecommunication and electronics., Judge opined that it was pertinent to note that the original patentee, Nokia Corp., had not complained against Defendants and held that the balance of convenience was not favour of Plaintiffs and vacated the interim injunction order granted earlier. Finally, High Court issued certain directions such as (a) suit to be expedited and completed within 6 months; (b) local commissioners appointed for recording evidence; (c) Customs authorities to track and report import consignments of ZTE to Plaintiffs for inspection and inventorization; (d) Defendants to submit a bank guarantee of ₹ 5 crores (US$ 806,450) and provide details of their sale of CDMA devices in India and revenues earned from them and submit record of accounts with an undertaking to pay any amounts as determined by Court, and (e) a panel of 3 scientists from well known educational institutes to be appointed to examine the technologies of the rival parties and submit their report to High Court for consideration.

Aggrieved by the decision of the single judge, Plaintiff filed an appeal and raised three specific issues for setting aside the Single Judge's observation namely that (a) Mr. Regis J. Bates is not a scientific advisor; (b) that Plaintiff's predecessors also ought to have complained about Defendant's actions, and (c) working of a patent has to be established in the plaint and averments in the rejoinder cannot be taken into consideration.

At the outset, Appellate Court stated that observations in ad-interim or interim orders in relation to the backdrop facts noted are never treated as conclusive and final. Then, it observed that with regard to the first issue, a person could be an expert in an area of specialised knowledge by experience and he or she need not hold a degree in the field of specialised knowledge. A person can also become an expert by virtue of one's avocation or occupation. Appellate Court then opined that the Single Judge had rightly observed that in cases of injunction where a Plaintiff has permitted a situation to exist for a long period of time, its discontinuation is not warranted unless a prima facie case of a very strong nature is made out. With regard to the issue that details commercial exploitation of the suit patent not being mentioned in the plaint, Appellate Court observed that if a court grants an opportunity to a Plaintiff to file a replication, the same has to be treated as a pleading. However, if a fact is pleaded for the first time in a replication, Defendants if they so desire, have a right to file a sur-rejoinder. In view of the above observations, High Court dismissed the appeal.

CTP Environment SAS vs Sentro Techologies Ltd & Ors 10 October 2014, Bombay High Court
Issue: Infringement of process patent relating to cleaning of furnaces without furnace closure

Parties and Background: Plaintiff is a French company. Defendant No. 1 is an Israeli company, with a place of business in Mumbai, and Defendant No. 2 is the majority shareholder of the Defendant No. 1. Plaintiff filed a patent infringement suit claiming infringement of its Indian process Patent No. 236532 relating to novel method of cleaning furnaces even while these continue to run and operate, i.e., a process of furnace cleaning without furnace closure, the patent was granted on 5th June 2009. Plaintiff claimed that Defendants were using a process that was identical or substantially similar to the process claimed by the Plaintiff in the patent.

In 2007, Defendant No. 2 approached Plaintiff and expressed an interest in developing a market in Israel with people interested in the Plaintiff's patent. Parties entered into a collaboration agreement dated 6th February 2008 with effect from 15th May 2007, which required Plaintiff to disclose the particulars of the working of the suit patent to Defendant No. 2. The collaboration agreement came to an end on 15thMay 2011. In June 2014, Plaintiff discovered that Defendant No. 2 through its company 1stDefendant were approaching existing and potential customers of the Plaintiffs and offering a service styled as "online chemical cleaning" of furnaces and boilers. Plaintiff also found that Defendants were also offering the infringing services through their website. Aggrieved, Plaintiff filed a suit for patent infringement before the Bombay High Court. Plaintiffs tried to send notice of the filing of the suit to Defendants, however Defendant company was not found at the addresses. Defendant did not appear before the Court and were proceeded ex-parte.

Contentions: Plaintiff submitted that the Defendant No. 1 was incorporated in 2011, by which time the process patent was already granted in favour of Plaintiff. In support of its claims of patent infringement, Plaintiff had submitted details from Defendants website and information obtained from brochures and videos. In addition, Plaintiff also filed an expert opinion of Dr. C.S. Mathpathi, an Assistant Professor in the Department of Chemical Engineering of Institute of Chemical Technology, Mumbai, who compared the information on the two rival processes and concluded that there is a high likelihood that the Defendants' process is the same or substantially similar to the patent in question.

Held: Bombay High Court found that Plaintiff had successfully established an overwhelming prima facie case of infringement even at the interim stage. High Court observed that it cannot be a matter of coincidence that Defendants' claims to the process all arise as soon as the collaboration agreement ended. Hence, High Court ruled that in view of the circumstances of this case, interim injunction must be issued as balance of convenience is in favour of Plaintiff.

Telefonaktiebolaget LM Ericsson v Xiaomi Technology & Ors, 8 December 2014, Delhi High Court
Issue: Infringement of patents relating to AMR, 3G and EDGE technologies

Parties and Background: Plaintiff is the registered owner of eight patents (five AMR patents, two 3G patents and one EDGE patent) involving 3 technologies in the field of telecommunications pertaining to 2G and 3G devices. Plaintiff had initially invited Defendant to use its Standard Essential Patents (SEPs) qua GSM/GPRS/EDGE/WCDMA technology by obtaining a licence. However, instead of obtaining such licence, Defendant launched its infringing devices in India in July 2014. Aggrieved by Defendant's actions, Plaintiff had filed the present suit for permanent injunction and restraining infringement of its rights in the registered patents by Defendant.

Contentions: In an ex-parte hearing, Plaintiff contended that Defendant had wilfully infringed Plaintiff's patents and are selling the infringing products in India. Plaintiff also referred to two earlier cases, where Plaintiff's said patents were upheld and protected.

Held: High Court held that in the facts and circumstances of this case, Plaintiff had successfully established a prima facie case for grant of injunction. Accordingly, High Court issued interim injunction orders restraining Defendant from infringing the suit patent and also appointed two local commissioners to inspect Defendant's premises, and inspect and collect documents regarding import and sale of the infringing products. Court also directed Customs authorities to not allow import of the infringing products into India, and to intimate Plaintiff whenever a consignment is imported. High Court also directed Defendant to submit details of its sale of the infringing products and accounts.

Aggrieved by the interim injunction order, Defendant filed an appeal before the division bench of Delhi High Court (Xiaomi Technology and Anr. v Telefonaktiebolaget LM Ericsson). Defendant requested the division bench to issue a pro tem interim order (as distinct from an ad-interim order which has to be passed after hearing the parties on merits and keeping in view the principles relating to the grant of an interim injunction) in view of the sweeping interim injunction order issued by the single judge.

In the appeal, Defendant contended suppression of material facts by Plaintiff. Defendant submitted that the chip containing the technology of Plaintiff is being sourced by them from Qualcomm Incorporated. Defendants sent an email to Qualcomm enquiring whether they had any right to in turn permit Defendants to use the chip as a licensee of the Plaintiff. Qualcomm responded that it had a licence from Ericsson to use the patented technology and the 3G standards are CDMA standards or applications under the licence agreement and accordingly,any implementation of 3G technology by Defendant in their devices which implement a Qualcomm chipset, is a licensed implementation and does not infringe at least Plaintiff's 3G related patents.

Division Bench ruled that since the relief in the appeal was restricted to a pro tem order and since decision of single judge affected finances of Defendant and Plaintiff can be compensated if finally the infringement is upheld, it directed that as a pro tem measure, Defendants are permitted to import and sell the devices containing chipsets sold to it by Qualcomm.

Novartis AG and Anr v Wockhardt Ltd., 5 March 2014, Delhi High Court
Issue: Infringement of pharmaceutical patent relating to Vildagliptin

Parties and Background: Plaintiff is the owner of patent no.212815 which relates to the drug containing the active pharmaceutical ingredient (API) vildagliptin and vildagliptin in combination with Metformin Hydrochloride. Plaintiff has been selling the pharmaceutical product under the brands VYSOV and VYSOV-M in India since 2008 and internationally since 2007.

In September 2013, Plaintiff received a notification from the Intellectual Property Appellate Board that Defendant had filed a revocation petition against its registered patent. Upon filing an application under the Right to Information Act, Plaintiff received information from the State Drug Controller that Defendant has been granted permission to manufacture and sell the patented product in May 2013. Aggrieved, Plaintiff filed the present suit for patent infringement seeking to restrain Defendant from infringing its registered patent.

Contentions: Plaintiff argued that although Defendant is yet to launch the product in India or abroad, they are in the process of doing the same. Plaintiff submitted when Defendant commences manufacture and sale of the product, such action would be direct violation of S.48 of Patents Act, and Plaintiff will suffer irreparable loss and injury if Defendant is not restrained.

Held: High Court held that Plaintiff had successfully established a strong prima facie case and the balance of convenience is in its favour as it will suffer undue hardship if Defendant is not restrained. Accordingly, High Court directed that Defendant is restrained from manufacturing, importing, selling, offering for sale, export directly or indirectly dealing in pharmaceutical products, compound or formulation or combination containing Vildagliptin alone or Vildagliptin with Metformin Hydrochloride in combination or Vildagliptin in any other combination of in-violation of Indian Patent No.212815 of Plaintiff.

Astrazeneca AB and Anr v Glenmark Generies Ltd and Anr 21 March 2014, Delhi High Court
Issue: Infringement of pharmaceutical patent involving saxagliptin

Parties and Background: Plaintiff had filed a suit against Defendants claiming infringement of its patent involving a pharmaceutical product with the active ingredient Saxagliptin and Saxagliptin monohydrate. Contentions: On the date of hearing, Defendants submitted that although they are exporting Saxagliptin and Saxagliptin Monohydrate, the alleged infringing products to various countries, the said products have not been launched in India nor do Defendants intend to launch them in India till the next date of hearing. In addition, Defendant requested for time to respond to Plaintiff's application for interlocutory relief.

Held: In view of the undertaking, High Court dismissed the application for interim injunction and directed that Defendants shall be bound by their statement till next date of hearing. High Court subsequently modified its order that Defendants' statement shall confine to the export of Saxagliptin Monohydrate only.

Novartis AG and Ors. v Alembic Pharmaceuticals Ltd. 16 April 2014, Delhi High Court
Issue: Infringement of pharmaceutical patent relating to Vildagliptin

Parties and Background: Plaintiff is the owner of patent no.212815 which relates to the drug containing the active pharmaceutical ingredient (API) vildagliptin and vildagliptin in combination with Metformin Hydrochloride. Plaintiff has been selling the pharmaceutical product under the brands GALVUS and GALVUS-MET in India since 2008 and internationally since 2007. The said patent was registered in 1999 and is valid till 2019.

In March 2014, Plaintiff filed an application under the Right to Information Act, and received information from the State Drug Controller that Defendant has been granted a permission to manufacture and sell the patented product. Aggrieved, Plaintiff filed the present suit for patent infringement seeking to restrain Defendant from infringing its registered patent.

Contentions: Plaintiff argued that although Defendant is yet to launch the product in India or abroad, they are in the process of doing the same. Plaintiff submitted when Defendant commences manufacture and sale of the product, such action would be direct violation of S.48 of Patents Act, and Plaintiff will suffer irreparable loss and injury if Defendant is not restrained.

Held: High Court held that Plaintiff had successfully established a strong prima facie case and the balance of convenience is in its favour as it will suffer undue hardship if Defendant is not restrained. Accordingly, High Court directed that Defendant is restrained from manufacturing, importing, selling, offering for sale, export directly or indirectly dealing in pharmaceutical products, compound or formulation or combination containing Vildagliptin alone or Vildagliptin with Metformin Hydrochloride in combination or Vildagliptin in any other combination in contravention to the Indian Patent No.212815 of Plaintiff, except for the acts exempted under S.107(A) of the Act.

Novartis AG v Glenmark Generics Ltd., 16 April 2014, Delhi High Court
Issue: Infringement of pharmaceutical patent relating to Vildagliptin

Parties and Background: Plaintiff is the owner of patent no.212815 which relates to the drug containing the active pharmaceutical ingredient (API) vildagliptin and vildagliptin in combination with Metformin Hydrochloride. Plaintiff found that Defendant has been granted a licence to manufacture and sell the infringing product and filed the present suit for patent infringement seeking to restrain Defendant from infringing its registered patent.

Contentions: On the date of hearing, Defendants submitted that the Defendant has got a licence for manufacture and marketing and has commenced manufacture and export of the drug Vildagliptin. However, Defendant has not launched the said drug in the Indian market. Defendant undertook that it shall not launch the said drug in the Indian market till the next date of hearing.

Held: High Court took into consideration Defendant's undertaking and directed it to place on record the documents evidencing the export of the drug Vildagliptin already made and to furnish all documents regarding its manufacture and sale of the said drug in the future. On a submission made by Defendant that such document may contain confidential financial information, High Court ruled that such documents may be filed by Defendant in a sealed envelope and shall not be made accessible to Plaintiff except with leave of court. High Court further directed Defendant to maintain statement of account which is to be furnished to Plaintiff.

Novartis AG v Cadila Healthcare Ltd., 16 April 2014, Delhi High Court
Issue: Infringement of pharmaceutical patent

Parties and Background: Plaintiff filed a suit for patent infringement against Defendant.

Contentions: On the date of hearing, Defendant requested for time to respond to Plaintiff's application for interlocutory relief. Defendant also submitted although it has obtained permission to manufacture the pharmaceutical product, till the next date of hearing, Defendant shall not manufacture for marketing purposes and shall not market in India or abroad any product, that infringes the patented product of the Plaintiff.

Held: High Court took into account Defendant's undertaking and directed that the suit proceeds further by setting dates for submission of pleadings by both parties.

Teijin Ltd v Union of India and Ors, 10 February 2014, Bombay High Court
Issue: Procedural issues relating to filing of patent applications

Parties and Background: Petitioner a Japanese Corporation, filed a patent application in India (No. IN/PCT/1999/00014/MUM) on 17 December 1999 based on International Patent Application Number PCT/JP/99/02126 dated 21 April,1999. Patent was registered on 24th July 2007 under number 207883 and the due date for payment of accumulated 3rd to 9th year annuities patent was 24th October 2007. On 22nd October 2007, Petitioner's patent attorneys forwarded payment of the 3rd to 9th year annuities at the Mumbai Patent Office and requested them to issue a renewal certificate. However, in the communication, petitioner's attorneys erroneously mentioned the patent number as 208225, which error was rectified by the attorneys on 23rd October 2007, i.e., prior to the deadline of 24th October 2007. Thereafter, the 10th year annuity and 11th year annuity in respect of the subject patent was paid on 4th March 2008 and 17th March 2009 respectively, which was accepted and acknowledged by the Patent Office. However, by mistake, in the correspondence for payment of 11th year annuity, petitioner's attorneys referred to it as the 10th year annuity. When the payment of 12th year annuity was made on 30th April 2010, Patent Office refused to accept the renewal fee stating that the patent had expired on 21st April 2009 owing to non-payment of 11th year annuity. Petitioner filed an application for restoration of the patent within the deadline of 21st October 2010. In response, Patent Office informed the petitioner that its request for taking on record renewal fee for 3rd to 9th year paid for the Patent No.208225, as payment being made for renewal of Patent No.207883 and also to take on record renewal fee for the 10th year for the said Patent could not be accepted and that Patent No.207883 had expired.

Aggrieved by the Controller's decision, Petitioner filed the present writ petition before the Bombay High Court.

Contentions: Petitioner argued that the Patent Office was wrong in holding that the subject patent had expired. It claimed that despite its request for correction of the error in the patent number in filing the 3rd to 9th year annuities, Patent Office did not do so and neither did they inform the petitioner about the same. In addition, petitioner claimed that Patent Office having accepted the 10th year annuity, cannot now claim that the patent had expired. Petitioner claimed that Controller had adequate discretionary powers to correct such errors and act judiciously.

On the other hand, it was submitted on behalf of the Controller of Patents that the Patent Office never received Petitioner's request for correction of the patent number. It was claimed that Petitioner had an alternative remedy of filing an appeal against the impugned decision. In addition, it was argued that under the Act, an exclusive right has been granted to the patentee. In case of failure of patentee to comply with the prescribed time limits, penalties in the nature of 'abandonment', 'withdrawal', 'lapse' etc. are imposed by the statute and in such a case right gets accrued to the public.

Held: Bombay High Court observed that it could not be conclusively established whether or not Petitioner's request for correction of the patent number was received by the Patent Office. High Court ruled that taking into consideration the peculiar facts and circumstances of the case, this is a fit case where direction should be given to the Controller to restore the Patent. High Court also directed the Petitioner to give an indemnity to the Controller of Patents and state that the Petitioner shall not file any suit or make any claim during the period from which the said Patent was treated 'as ceased' till the order passed by this Court and after a period of three months thereafter.

Gilead Pharmasset LLC v Controller of Patents, 30 January 2015, Delhi High Court
Issue: Procedural issues relating to pre-grant oppositions against patent applications

Parties and Background: The present writ petition assails the order issued by the Controller of Patents refusing the patent application of Petitioner. Petitioner filed a patent application under no.6087/ DELNP/2005 titled as "A (2'R)-2'-DEOXY-2'FLUORO-2'-C-METHYL NUCLEOSIDE" at the Delhi Patent office, on 27/12/2005. Two pregrant oppositions were filed on behalf of Natco Pharma Ltd., and Delhi Network of Positive People (DNP+), New Delhi, Initiative for Medicines, Access & Knowledge (IMAK), lnc, USA.

Contentions: Petitioner claimed that in issuing the refusal order, the Controller had taken into account the objections raised by the Opponents. This was evident from the fact that, not only the grounds taken in opposition and documents cited were considered, while passing the impugned order, but even, the typographical errors contained in the notices of opposition got incorporated in the said order. Petitioner argued that the fact that the documents and materials relied upon by Opponents were available to the Controller, created a bias against Petitioner and led to refusal of the application. Petitioner submitted that Controller before issuing his order ought to have heard the Petitioner qua the objections raised by the Opponents, and having failed to do so, the impugned order completely breaches the principles of natural justice.

Respondent on the other hand, challenged the maintainability of the writ petition. It was argued that the although there were pre-grant oppositions filed against the subject patent application, Controller did not consider the opposition while issuing the impugned decision. The impugned order was issued on the basis of Section 14 and 15 of the Act and not under Section 25. The procedure under these provisions are completely different from the procedure to be followed in a pre-grant opposition proceeding. Therefore, there was no necessity of hearing the petitioner regarding the objections raised by the Opponents.

Held: High Court examined the impugned order and concluded that there was every possibility of the Controller being influenced by the materials placed by the Opponents. High Court was of the opinion that the Controller ought to have appointed a hearing under both Section 14 and Section 25 and heard the rival parties. Accordingly, High Court remanded the matter to the Controller for fresh hearing.

Symed Labs Ltd. vs Glenmark Pharmaceuticals Ltd. and Anr., 19 January 2015, Delhi High Court
Issue: Infringement of pharmaceutical patent involving Linezolid.

Parties and Background: Plaintiff is the proprietor of two patents IN213062 and IN213063 involving novel processes to manufacture and develop the pharmaceutical component Linezolid. Defendant No. 1 is an Indian company, dealing in the manufacture and supply of both active pharmaceutical ingredients (APIs) and finished dosage forms of various pharmaceutical formulations while Defendant No. 2 is its subsidiary. Plaintiff had filed the present suit to restrain Defendants manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in the product Linezolid manufactured in any manner that amounts to infringement of its specified patents.

Contentions: In December 2012, Plaintiff came to know that Defendants were manufacturing Linezolid under the brand name LIZOLID. Plaintiff purchased samples of Defendants products, and upon analysis thereof, found them to contain several key intermediates in the Linezolid manufacturing process that were covered by the suit patents. Thus, Plaintiff contended that Defendants are infringing its patents.

On the other hand, Defendants denied having used Plaintiff's process in manufacturing Linezolid. Defendants argued that the key intermediates claimed in the suit patent are not novel and alleged that the patents obtained by Plaintiff are liable to be revoked. Towards this end, Defendants also filed a counter-claim. Defendants also challenged the jurisdiction of the court, stating that they were not manufacturing the offending products within the territory of Delhi but were only distributing them, there.

Held: High Court observed that the simplest way to determine whether a process patent has been infringed is to compare the rival processes. Although Defendants have denied using Plaintiff's process, High Court noted that they have disclosed the process used by them. Thus, the presence of the key intermediates in Defendants' product is a very strong indicator of infringement. In addition, High Court noted that Plaintiff's patent was granted in 2007 and has been subsisting since then. On the basis of the above considerations, High Court held that Plaintiff had established a prima facie case and issued an order of injunction restraining Defendants from manufacturing Linezolid in any manner that constitutes infringement of the suit patents.

Novartis AG and Anr. v Cipla Ltd., 9 January 2015, Delhi High Court
Issue: Infringement of pharmaceutical patent involving Indacaterol

Parties and Background: Plaintiff No. 1 in the present matter is Novartis AG, a Switzerland based pharmaceutical company, while Plaintiff No. 2 Novartis Healthcare Pvt. Ltd., is Plaintiff No. 1's Indian subsidiary. Plaintiff No. 1 is the proprietor of patent No. IN 222346 which covers a new chemical entity and compound Indacaterol (International Non- Proprietary Name) as well as its maleate salt, namely Indacaterol Maleate. Lupin Ltd., is marketing the Indacaterol products in India under a distribution and co-promotion agreement with Plaintiff No. 2. Plaintiffs claim that Defendant is infringing its stated patent and filed the present suit seeking an injunction to restrain Defendant from doing so.

Contentions: Defendant submitted that the requirement of the public with respect to the patented invention have not been satisfied. Defendant submitted that it has filed a representation for compulsory licensing under Section 66 of the Act. Defendant alleged that Plaintiff imports small quantities of the patented product and is guilty of unjust enrichment through monopolization of the said product through multiple patents. Defendant argued that on this ground, the suit patent ought to be revoked. In addition, Defendant argued that public interest is an important consideration in the grant of an injunction and injunctions ought to be refused where patents have not been worked in India.

Plaintiff in its rejoinder asserted that the fact that Defendant has requested for compulsory licensing of the suit patent, indicates that the suit patent is valid. According to Plaintiff, this amounts to admission by Defendant that there is infringement and it is sufficient for the purpose of disposal of the injunction application. In addition, Plaintiff submitted that there no obligation in law that the Plaintiff must manufacture the patented drug in India. Plaintiff submitted that the patent is already being worked and the patented drug is made available to fulfil the requirement of the public and that alone is sufficient.

Held: High Court conducted a detailed analysis of the rival contentions and judicial precedents. As per the High Court, the main issue was whether an injunction ought to be refused for infringement of a patent, which is found to be otherwise valid, only in view of a likelihood that public interest may suffer. High Court was of the opinion that issue of public interest can be effectively remedied by the authorities in charge of deciding Defendant's application for compulsory licence. High Court noted that alternative solutions such as payment of royalties till the conclusion of trial, does not help the patentee and it suffers even though it has been granted exclusive rights under the Act. High Court held that a court cannot encourage infringement of a patent, which is otherwise found to be valid and where the infringement has been established and there is no credible defence to such infringement. Accordingly, High Court granted an interim injunction, restraining Defendants from dealing in any pharmaceutical product Indacaterol or Indacaterol Maleate, either alone or in combination with any other compound or API or in any other form which may amount to infringement of Indian Patent No.222346 of Plaintiff No. 1.



Designs

On the basis of the provisions of the Design Act, monopoly rights subsist in a registered design for a statutory period and so do rights in case of infringement. Further, passing off rights accrue on the basis of Common Law rights.
Smithkline Beecham Plc and Others v. Hindustan Lever Limited and Another (Delhi High Court) (26 November, 1999)
Plaintiff Smithkline Beecham (SKB) claims to have developed and obtained foreign registrations for designs of a tooth brush consisting of a distinctive aesthetic handle and head shape and a connecting portion with S-shaped, zig-zag folds between the head carrying the bristles and the handle. SKB manufactures and markets two toothbrush brands with the marks ACQUA FLEX and ACQUAFRESH FLEX N'DIRECT to which the registered designs have been applied. SKB has also applied for and obtained registration of the tooth brush designs in India where the said designs have been applied to tooth brushes marketed under the marks FLEX and FLEX N'DIRECT.

SKB alleged that -

  • Defendant Hindustan Lever (HLL), had infringed the design of its ACQUA FLEX and ACQUAFRESH FLEX N'DIRECT tooth brushes by applying the said design to its PEPSODENT POPULAR toothbrush, and had also passed off the said design in its OZETTE toothbrush.
  • HLL had obtained registrations for SKB's ACQUAFRESH FLEX N'DIRECT design in India, which had been granted without a proper search of the Design Register.

SKB filed suit seeking:

  • declaratory judgment that SKB is the exclusive owner and proprietor of the design of toothbrushes ACQUA FLEX and ACQUAFRESH FLEX N'DIRECT in India
  • Temporary and permanent injunction, restraining defendant HLL from:
    • infringing SKB's tooth brush design registration in its PEPSODENT POPULAR tooth brush; and
    • off its OZETTE tooth brush as a product of SKB; SKB also sought damages.

Defendant HLL countered that -

  • There is no concept of passing off under the design law and there could be no monopolies in respect of a matter relating to design or patent.
  • SKB's design in suit comprised of a pure and simple functional feature and therefore, no novelty could be claimed in respect of the same.
  • As HLL had proprietary rights and prior use in the designs of PEPSODENT POPULAR and OZETTE tooth brushes, there was no deception or confusion, and no case for infringement or passing off is made out by SKB.

During the course of the arguments, when it was revealed that the design of ACQUAFRESH FLEX N'DIRECT was previously published in India, infringement claims in this respect were abandoned by SKB.

Issues before the Court:

  • Whether HLL has, in any manner, passed off its OZETTE tooth brush as the ACQUAFRESH FLEX tooth brush of SKB.
  • Whether SKB's tooth brush design with its S shape is functional or aesthetic, as functionality would render the design incapable of any protection.
Based on the facts and circumstances of the case and the finding that the preconditions for a grant of a temporary injunction had not been fulfilled, the honourable Court dismissed SKB's application and HELD:
  • In order to establish passing off, the following have to be prima facie pleaded and proved-
    • goodwill;
    • misrepresentation; and
    • that such misrepresentation has led to sufferance of damages.
  • In case of the ACQUAFRESH FLEX N'DIRECT toothbrush, as the product had not been marketed in the Indian market but had been prior published in India only in dental journals, SKB has failed to prove goodwill or make out a prima facie case of action for infringement or passing off.
  • HLL's contentions that the concept of passing off cannot be made applicable to a case of design and that there can be no monopoly in respect of a design are without merit.
  • On the basis of the provisions of the Design Act, monopoly rights subsist in a registered design for a statutory period and so do rights in case of infringement. Further, passing off rights accrue on the basis of Common Law rights.
  • As the dominant purpose of the S shaped feature applied in the design of SKB's ACQUAFRESH FLEX tooth brush is functional and utilitarian (a fact borne out in SKB's own advertisement of the product), no passing off action would be available under the common law.
  • The difference in the overall appearances of the ACQUAFRESH FLEX and OZETTE tooth brushes and the added matter on the tooth brush packaging of HLL are enough to negate the possibility of any confusion taking place.
  • In the absence of any evidence of goodwill or any reputation, it cannot be presumed that SKB had achieved a transborder reputation prior to the filing of the present suit and therefore, no injunctive relief could be granted in favour of SKB.
On the basis of the provisions of the Design Act, monopoly rights subsist in a registered design for a statutory period and so do rights in case of infringement. Further, passing off rights accrue on the basis of Common Law rights.
Polar Industries Ltd v Usha International and Others (Calcutta High Court) (26 April, 1999)
Plaintiff Polar Industries, (Polar) proprietor of registered Design No. 173791, had obtained an ad interim injunction restraining defendant Usha International (Usha) from manufacturing portable table fans with a design that was allegedly an obvious or colourable imitation of the plaintiff's registered design for such fans. Further alleging that Usha was guilty of piracy of the plaintiff's registered design, Polar sought an injunction restraining Usha from infringing its copyright in the registered design No. 173791.

The Certificate of Registration issued to Polar stated that:

  • Novelty resides in the shape, configuration and ornamentation of the Table Fan.
  • No claim is made in respect of any mechanical or other action of mechanism whatsoever or in respect of any mode or principle of construction of the article.
  • No claim is made to any right to use as a trademark any words or extran- neous matter which do not form an integral part of the design.
  • No claim is made of colour or colour combinations appearing in the design.
Finding no prima facie case of piracy, the Court vacated the ad interim order restraining Usha from manufacturing portable table fans with the impugned design and HELD:
  • Novelty resided in the design as a whole and not in its component parts. Therefore, as sought by Polar, the “striking features” of the registered design could not be viewed in isolation. Further, components such as mounting brackets being mechanical devices also could not be considered as part of the design as recognised in the Certificate of Registration.
  • The question whether Usha's portable table fan “is an obvious imitation” of Polar's registered design has to be determined “solely by the eye” as provided under Section 25 of the Designs Act, 1911.
  • As the shape, configuration and ornamentation of Usha's impugned table fan design were clearly dissimilar to those of Polar's registered design, no prima facie case of piracy has been made out by Polar.
  • The order of ad interim injunction is vacated and the defendants shall maintain separate monthly accounts pending trial of the suit.
The Court cannot direct cancellation of the registration of the proprietor's design nor consider invalidity of the registration in the suit for infringement.
Rotomac Pens Ltd v. Milap Chand & Co. (Calcutta High Court) (22 September 1998)
Appellant Rotomac Pens Ltd., manufactures and sells a ball point pen under the name FIGHTER printed on the pouch packet and not on the pen. The design of the pen with a tapered writing head and corrugated serrations has been registered as Design No. 170654 under the Designs Act. Rotomac has widely advertised its FIGHTER pen and sold the product since February 1995.

In October 1997, Rotomac learnt of the respondent Milap Chand & Co.'s allegedly inferior WRITER ball point pens being marketed with an identical configuration and design and in colours similar to that of Rotomac's FIGHTER pen. Rotomac filed suit seeking to restrain Milap Chand & Co., from:

  1. Selling their WRITER pens on the ground that Rotomac's registered design was being infringed; and
  2. Passing off their WRITER product as that of Rotomac's FIGHTER product.

Rotomac sought Rs. 50 lacs on account of damages.

The Single Judge disposed of Rotomac's application for interlocutory injunction by directing Milap Chand & Co., to maintain separate accounts of sales of the impugned product and furnish monthly statements to Rotomac's advocate.

Rotomac appealed against the interim order and Milap Chand & Co. moved to stay the application.

Milap Chand & Co. sought to place on record documents related to publication of Rotomac's design in India prior to the grant of registration, but as no application was made under Order 41 Rule 27 of the CPC and because the present matter was an appeal, the documents were not allowed to be placed on record at such a late stage by the Court.

Milap Chand & Co. submitted that –

  • There was no infringement of Rotomac's pen design as the refills, the diameters of the pens and the weights of the pens and packaging were different. Their product was inferior in quality and cheaper than Rotomac's pen and the words WESCO WRITER were printed on the pens.
  • The registration of Rotomac's pen design was vague and therefore invalid.
  • The registration of Rotomac's pen design was liable to be cancelled as there was no novelty or originality in the design as it had been inspired by the original design of a German pen manufacturer that several other pen manufacturers had copied with minor variations.
  • No specific instance of confusion or deception had been cited and the trademark WRITER had been used prior to Rotomac's use of the word FIGHTER.
  • As an application for cancellation of Rotomac's registered design for the FIGHTER pen was pending in this court., the question of Rotomac having a right of injunction does not and cannot arise.

Finding infringement of Rotomac's copyright in the design of the FIGHTER pen, the honourable Court HELD:

  • Considering the respondent, Milap Chand & Co.'s reliance on the English Design Statute, it was found that there were several differences between the 1949 UK Designs Act and the 1911 Indian Designs Act, the most important being that under Sec. 53 of the Indian Designs Act, the proprietor of a registered design is entitled to file a suit for the reliefs of damages and injunction for protection of the registered design and a person desiring cancellation of the registration has to apply for it by an independent application under Sec.51 A. Therefore, the Court cannot direct cancellation of the registration of the proprietor's design nor consider invalidity of the registration in the suit for infringement.
  • Courts in India, while deciding the right to relief, whether temporary or final in a suit under Sec.53 (piracy of registered design), cannot import the reasoning in the decisions rendered by the English courts to the issues involved such as -
    1. Exemption of innocent infringer from liability for damages
    2. Compulsory licence in respect of registered design
    3. Counterclaim for rectification of register of designs
    4. Remedy for groundless threats of infringement proceedings
  • Though there is an application for cancellation pending in this Court and there has not been any order on the application, until such time as the cancellation of the registration takes place, the registered holder has a copyright in the design under sec.53 and no one has the authority to act contrary to or pirate the design that stands registered with the Registrar.
  • The respondent's claim of invalidity of the appellant's registration on grounds of vagueness, lack of originality and pre-publication is outside the purview of this Court.
  • On the issue – Is there a prima facie case of infringement?
  • On a visual comparison of the respondent's and appellant's products, it appears that the design adopted by the respondent is virtually identical to the appellant's registered design.
  • Also, it is not necessary for the purpose of considering an allegation of design infringement to decide whether purchasers are likely to be deceived.
  • Prima facie, the respondent's pens are imitations of the appellant's registered design and constitute infringement of the copyright in it.
  • Where there is infringement of a copyright, an injunction should normally be granted as a matter of course as damages would not be an adequate remedy. To have directed the respondent only to furnish accounts of sales to the appellant in the circumstances was no protection against the infringement of copyright in the design at all.
  • On passing off

  • The words FIGHTER and WRITER are sufficiently similar to cause confusion, particularly when used in connection with visually similar products.
  • The balance of convenience favours the appellant. As opposed to the possible loss of the appellant's goodwill/reputation in its product, no such damage would be suffered by the respondent if restrained by an injunction from manufacturing and selling the pens with the impugned design. It is on record that the respondent sells ballpoint pens with different get-ups under different names; therefore the respondent cannot be compensated in damages if the appellant's suit is ultimately dismissed.
  • The appeal is allowed and the order of the Single Judge is set aside.
  • The Court cannot direct cancellation of the registration of the proprietor's design nor consider invalidity of the registration in the suit for infringement.
    Mattel, Inc. & Ors. vs Mr. Jayant Agarwalla, Delhi High Court (17th September 2008)
    Plaintiffs are leading manufacturers of toys, games and consumer products. Their best selling brands include 'Barbie', ''Hot Wheels', 'Matchbox', 'Little People' and a wide assortment of entertainment inspired toy lines. One of the well-known products of the plaintiffs is the board game marketed and popularized by the name 'SCRABBLE' (hereafter referred to as 'the game'). This word-based game challenges players to form words on a grid; points are scored by forming such words. Plaintiffs claim to be the owner of copyright in the said game, as it is an 'artistic work' under Section 2(c) of the Copyright Act, 1957. In addition, plaintiffs owned two trademark registrations for the mark SCRABBLE in India.

    Defendants are a firm providing IT solutions. Plaintiffs were outraged to find that the defendants had launched an online version of their board game under the mark SCRABULOUS as an application available through the popular networking website www.facebook.com. The online version was also promoted through the defendants' website www.scrabulous.com, www.scrabulous.info and www.scrabulous.org. Plaintiffs filed a suit seeking an interim injunction restraining the defendants from infringing their copyright in the current game board, previously used game boards, rules and formats of the game.

    Defendants in their written statement allege that the copyright claim in relation to the game board is not maintainable since the board, which is a three dimensional article is not copyrightable. Additionally, the shape and configuration of the board can be registered as a design; and, copyright in the design would be extinguished under section 15(2) of the Copyright Act, the moment more than 50 articles with such design are produced and commercially sold. The plaintiffs do not hold a valid design registration and therefore, they cannot claim copyright to that effect.

    After carefully hearing the arguments of the either side and the judicial precedents, the Delhi High Court observed that games, rules and schemes are not protectable under the Patents Act. The Court held that, an untenable patent claim in rules of a game, cannot be converted into a wider and longer copyright protection. Further, in Copyright Law, the Court stated that 'Doctrine of Merger' stipulates that where the idea and expression are inextricably connected and it would not possible to distinguish between two.

    Applying this doctrine, courts have refused to protect (through copyright) the expression of an idea, which can be expressed only in a very limited manner, because doing so would confer monopoly on the ides itself.

    Further, the Court observed that every literary or artistic work, to be afforded protection, should be 'original' under the Act. As per the Court, not every effort or industry, or expending of skill, results in copyrightable work, but only those which create works that are somewhat different in character, involve some intellectual effort, and involve a certain degree of creativity.

    Applying this principle, Court held that in the present case, the collocation of lines on the game board; the diagonal colour scheme with values for words, and the combination thereof, the element of 'modicum of creativity' has not been shown, to measure up to the test of 'originality'.

    Court further observed that the creative expression in the present matter, if any, being minimalistic, does not to warrant copyright protection. Additionally, the application of the doctrine of merger would mean that the colour scheme on such a board can be expressed only in a limited number of ways; if the plaintiffs' arrangement were to be avoided, it is not known whether the idea of such a word game could be played at all. Based on the above observations, Court concluded that copyright protection will not be available to the Plaintiffs in respect of the board game. Court also upheld the Defendants' objections to Plaintiffs' claim of copyright under Section 15 of the Copyright Act.

    However, Delhi High Court ruled in favour of the Plaintiffs, in so far as infringement of their trademark rights by the Defendants were concerned, and granted a preliminary injunction restraining Defendants from infringing the registered mark SCRABBLE in any manner, including by using it as part of domain name, or other use such as hyperlinking, meta tagging, advertisement, or any other such form of use, till disposal of the suit.

    Mattel, Inc. & Ors. vs Mr. Jayant Agarwalla, Delhi High Court (23 April 2012)
    Appellants, Mattel Inc., filed a suit seeking to restrain Defendants from infringing their copyright in the current game board, previously used game boards, rules and formats of the game as also the trademark rights in the SCRABBLE mark. The Single Judge disposed off the Plaintiffs' injunction application allowing appellants' prayers in relation to infringement of trademark, but declining prayers in relation to infringement of copyright. Being aggrieved by the rejection of the infringement of copyright claims, Appellants filed the present appeal.

    In the appeal, five issues were raised by the Appellants in support of their arguments:

    1. Subject matter of copyright law and patent law are distinct and different, and a claim untenable under one, could be tenable under the other. Hence, Single Judge erroneously held that what is not patentable is not subject to copyright protection.
    2. The Single Judge erroneously applied the 'Doctrine of Merger' in the present case, as there can be several ways to play word games and SCRABBLE was not the only way to express the idea of a word game.
    3. The Single Judge wrongly held that Plaintiffs' game was not an original work. Under the copyright law, ''originality' simply means which has not been copied from elsewhere.
    4. The Single Judge applied the test of 'modicum of creativity' which is the wrong test, while the correct test was 'sweat of the brow'. The correct test is 'either skill or labor' and not 'both skill and labour'.
    5. The Single Judge erroneously applied the Section 15(2) of the Act. Plaintiffs' argument that the game lacks an 'article' which is a necessary aspect for registration as a design was not considered.

    However, the division bench declined to go into the issues raised by the Appellants, since the suit was in its final stage, and the status quo between the parties were in place for around 4 years. The division bench simply ruled that observations of the Single Judge will not influence the final adjudication of the dispute and disposed off the appeal.

    The test of ascertaining whether the two designs are identical is that the designs have to be judged by the eye and each design has to be compared to a whole with all its component features, important and unimportant. Even if a design is regarded as having been inspired by some previous designs, it can introduce sufficient novelty so as to constitute a new and/or original design.
    Troikaa Pharmaceuticals Ltd. vs Pro Laboratories (P) Ltd,. and Anr. Gujarat High Court (15 May 2008)
    The plaintiff, namely, Troikaa Pharmaceuticals Ltd., is carrying on the business of manufacturing and marketing pharmaceutical and medicinal preparation and surgical goods. Plaintiffs had invented and developed a unique design for tablet sold under trademark DYNAPAR. Plaintiff is the registered proprietor of the design in respect of tablet under No. 186992 in Class 28 from 16 October 2001.

    Defendant No. 1 is also a company engaged in the business of manufacturing and marketing pharmaceutical and medicinal preparation at Haridwar. Defendant No. 2 is selling product of Defendant No. 1 in the city of Ahmedabad. Plaintiff has recently come to know that defendant has adopted identical design, shape and configuration of the plaintiff, and plaintiff has come to know that defendant has substantial and material reproduction of the design of the plaintiff and thereby, has committed infringement of the registered design of plaintiff under No. 186992

    Accordingly, Plaintiff filed a suit praying for permanent injunction restraining the defendants, their servants, agents, dealers, distributors, stockists from manufacturing, marketing and using the impugned design registered under No. 186992 in Class 28 on 16 October 2001 in respect of D Shape Tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design.

    The trial court granted ad-interim relief in favour of the Plaintiff. Thereafter, defendants applied for cancellation of design under Section 19 of the Design Act. As per Plaintiff's application under Section 22 of the Designs Act, 2000, the suit was transferred to the Gujarat High Court.

    In its defense, Defendants claimed that the registration of the plaintiff's design is not valid as the design of the plaintiff is not registrable under Section 4 of the Designs Act, 2000. Defendant alleged that Plaintiff had obtained the registration by misleading the Controller of Designs and suppressing material facts, regarding prior publication and application of the said D Shape by various pharmaceutical companies. Defendants claimed that the D Shape design registered by the plaintiff is not a new or original design and is also not new in its application to pharmaceutical products/medicinal preparation. Thus, Defendants claimed, that the D Shape design cannot be under any circumstances called a new or original design since it is in fact a reproduction of the shape of the letter 'D' of the English Alphabet, which is known to the public at large and published in tangible form.

    Considering the rival submissions, statutory provisions and authorities cited by both the parties, the Court was of the view that D Shape Tablet may not be considered to be new or original in its plain sense, however, its application is equally important. As per the Court, the test of ascertaining whether the two designs are identical is that the designs have to be judged by the eye and each design has to be compared to a whole with all its component features, important and unimportant. The Court opined that it is open for Plaintiff to demonstrate that even if its design is regarded as having been inspired by some previous designs, it has introduced sufficient novelty so as to constitute a new and/or original design.

    Finally the Court ruled that after taking into consideration the entire facts and circumstances of the case, that the plaintiff has made out a prima facie case so as to enable this Court to grant interim relief during the pendency of the suit or in any case, till the plaintiff enjoys registration of its design.

    An addition of curve here or there in a shape which is well-recognised shape of an article of common use in the market cannot make it an article new or original in design
    Chawla & Sons vs Bright Auto Industries, Delhi High Court (21 November, 1980)
    Bright Auto Industries, hereinafter referred to as Respondents, were engaged in manufacturing of various articles including rear view mirrors. They claimed to be hindered in their trade by the registered design of the Appellants in respect of mirror registered under No. 139585 dated February 28, 1972, in class I under the Indian Patents & Design Act, 1911. Accordingly, Respondents prayed for cancellation of the aforesaid design of the appellants under section 51A of the Act contending that the design of the appellants was not a new 325 design, and that it had no originality about it in that such designs were common in the market, and the appellants had made a false claim to be the originators of the design before the Controller of Patents & Designs, to obtain the impugned registration. In their defense, Appellants claimed that they had invented the design after a good deal of hard labour.

    The issue before the Court was whether the design in question was “new or original” to be conferred registration. The novelty in the design in question, is on account of the further curve in the sloping upper length side as it is not disputed that rear view mirrors, rectangular in shape with rounded edges, width side curved or sloping and the lower length side also sloping, are commonly available in the market. The appellants' case is that further a curve in the sloping upper length side makes their design new or original. The Single Judge, after enunciating the legal position determined the question whether there was in fact a novelty in the negative. Aggrieved by the determination, Appellants filed the present appeal before the division bench of the Delhi High Court.

    The division bench came to the conclusion that there was no hard labour which the appellants claimed to have bestowed in creating the design they got registered. The court found it to be devoid of newness and equally devoid of originality. An addition of curve here or there in a shape which is well-recognised shape of an article of common use in the market cannot make it an article new or original in design. If it is made eligible for registration, it would certainly hinder the progress of trade without there being any justification, whatsoever. The Court ruled that there was no case for interference made out by Appellants, and hence the appeal failed.



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