Case laws & Appeals of Decisions of the IP Office

Trademarks Patents ▪ Designs ▪ Plant Varieties Personality Rights Right to Information (RTI)

Novartis AG vs. Controller of Patents & Ors.
9 January 2024, Delhi High Court

Novartis' Indian Patent Application No. IN414518 faced a pre-grant opposition from Natco Pharma. Natco argued that it should have been notified and allowed to challenge amendments made during the opposition process. The key question was whether pre-grant opponents have the right to be involved in patent amendments.

The Court held:

The Controller is not required to notify or invite objections from opponents regarding amendments unless specifically required by law.

Examination and opposition are separate processes, and pre-grant opponents do not automatically gain participation rights in every stage of patent modifications.

The earlier ruling of the Single Judge in Natco’s favor was overturned, and the Controller’s discretion in handling amendments without opponent intervention was reaffirmed.

Novenco Building & Industry A/S vs. Xero Energy Engineering Solutions Private Ltd. & Another
28 August 2024, Himachal Pradesh High Court

Novenco sued Xero Energy for patent and design infringement over axial fans. Xero argued the suit was invalid due to non-compliance with Pre-Institution Mediation (Section 12-A, Commercial Courts Act, 2015).

The Court ruled:

Pre-institution mediation is mandatory unless urgency is proven.
Novenco failed to justify urgency, as the infringement was known since July 2022, but the suit was filed in June 2024.
The Court dismissed the exemption claim, ruling that interim relief requests do not bypass mediation requirements.



Philip Morris Products S.A. vs. Assistant Controller of Patents & Designs
4 July 2024, Delhi High Court

Philip Morris appealed against the rejection of Indian Patent Application No. 201617028283, related to E-cigarettes. The patent was denied under Section 15 of the Patents Act, 1970, citing non-patentability under Section 3(b) (public morality and health concerns).

The appellant argued that rejecting e-cigarettes under Section 3(b) (public morality/health) while potentially allowing traditional cigarettes lacked consistency, especially after addressing inventive step concerns raised earlier in the First Examination Report (FER).

The court has issued notice, consolidating this appeal with similar cases.



Rich Products Corporation vs. Controller of Patents & Anr.
1 May 2024, Delhi High Court

Rich Products Corporation’s patent application for a non-dairy whipping cream composition was rejected under Section 3(e) of the Patents Act, 1970, on the grounds that it was a mere admixture without demonstrating synergy. The Patent Applicant challenged this rejection, arguing that its formulation offered an improved technical effect.

The Court held:

The court ruled that a mere combination of known ingredients does not qualify for a patent unless it demonstrates synergy beyond individual components.
Rich Products failed to provide adequate scientific evidence proving an enhanced technical benefit.
The court found no procedural errors in the patent rejection process, affirming that the Controller had applied the law correctly.

Star Scientific Limited v. The Controller of Patents and Designs
30 July 2024, High Court of Delhi

Star Scientific appealed the Controller’s rejection of its patent application (No. 202017011947) for “Composition, Methods, and Apparatuses for Catalytic Combustion,” denied due to non-attendance at a hearing despite a detailed FER response.

The Court set aside the Controller’s order, and remanded back for fresh consideration on the following grounds:

  • This Court does not agree with the submissions made by the Controller that the appellant made a conscious decision to abandon its patent application, especially, when the appellant had already filed a detailed reply to the FER report (First Examination Report).
  • Even if the appellant did not attend the hearing, it was incumbent upon the Controller to pass a reasoned order, taking into account the submissions of the appellant in its reply to the FER, and the documents filed along with the said reply.
  • The Controller also failed to consider that the subject patent had already been registered in various jurisdictions in other countries, which is an important factor on the patentability of the subject patent.


Telefonaktiebolaget LM Ericsson (Publ) v. Lava International Ltd.
28 March 2024, High Court of Delhi

Ericsson sued Lava for infringing eight Standard Essential Patents (SEPs) related to AMR, EDGE, and 3G technologies, and for not complying with Fair, Reasonable, and Non-Discriminatory (FRAND) licensing obligations. Lava countersued, challenging validity.

The Court upheld the patents, confirmed infringement, and awarded damages to Ericsson on the following grounds -

  • Lava’s objections (mere algorithms, lack of novelty/inventive step, insufficient disclosure) were rejected; patents were novel and inventive compared to prior art like G.729 and GSM standards.
  • Lava’s devices implemented Ericsson’s SEPs without licensing, despite negotiations.
  • Ericsson’s offers were fair, reasonable, and non-discriminatory; Lava’s refusal constituted a “hold-out,” breaching good faith.
  • Ericsson was granted a permanent injunction, ₹244 crores approx., with interest in damages (for three years prior to suit per limitation), and costs and Lava’s counterclaims dismissed.


Vifor International Ltd & Anr vs Corona Remedies Pvt Ltd & Anr.
7 February 2024, High Court of Delhi

Vifor appealed a Single Judge’s refusal (order dated July 23, 2023) to issue an interim injunction against Corona and others for infringing its Ferric Carboxymaltose (FCM) patent (IN’536), a product-by-process claim.
The defendants argued that Vifor’s patent was a product-by-process claim, limiting enforcement to its specific manufacturing method.
The Division Bench overturned the ruling, affirming that such claims protect the novel product under Section 48(a), not just the process, rejecting the prior restriction to specific manufacturing steps.

The Court held:

  • Product-by-process claims cover innovative products (Section 48(a)); “obtainable by” terms describe, not restrict, unlike “obtained by” (Section 48(b)).
  • A product-by-process claim would necessarily have to be examined on the anvil of a new and unobvious product irrespective of the applicant having chosen to describe the invention by referring to a process of manufacture. The mere adoption of the product-by-process format would not result in a novel product being downgraded to Section 48(b) of the Act. It would inevitably have to be tested on principles enshrined in Section 48(a). Mere usage of process terms cannot be accepted as limiting nor is there any justifiable rationale to accept the advocated distinction between validity and infringement.
    If the rule of necessity were to compel the applicant to submit an application embodying a product-by-process claim, there would appear to be no justification to stultify the extent of protection.
  • FCM’s novelty in prior art is upheld as process details do not limit protection.
  • The present appeals are allowed and the impugned judgment dated 24 July 2023 is set aside. While an interim injunction would not be warranted at this stage, the suit proceedings may be taken forward bearing in mind the legal position as enunciated above.