Inventions pertaining to microorganisms and other Biological material were subjected to product patent in India unlike many developed countries. But with effect from 20.05.2003 India has started granted patents in respect of invention related to microorganisms though India was not obliged to introduce laws for patenting microorganisms per se before 31.12.2004.
Microorganisms patenting per se being considered to be a product patent the period of protection was 5 years from the date of grant or 7 years from the date of filing of application for patent. Now grant of patents for microbiological inventions is for a period of 20 years from the date of filing.
The most vital and important distinction between the legal practices of the India and developed countries is that India (developing countries) do not allow patenting of microorganisms that already exist in nature as the same is considered to be a discovery as per the provisions of the section 3(d) and therefore not patentable. But genetically modified versions of the same microorganisms that result in enhancement of its known efficacies are patentable.
The grants of Patent in respect of microorganisms depend upon the regulations concerning the requirements for the deposition of microorganisms under the Budapest Treaty of which India has become a member and accessibility of that microorganism from the depositories. As per proviso (ii) to section 10(d) the Microorganism if not being described fully and particularly and is not available to public the said Microorganism is to be deposited before the International Depositary Authority under the Budapest Treaty with 3 months of making application in India. All details, available characteristics of the microorganisms and details of depositary institutions shall be mentioned in specification for correctly identifying the same. Further access to the same is required to be made available only after date of Application in India or date of priority. For the purpose of microorganisms and other Biological materials Microbial Type Culture Collection and Gene Bank (MTCC) is an internationally recognised depository institution.
It is therefore advisable before proceeding to file a patent application in respect of microorganisms and other biological material to ensure that the same is not hit by the provisions of the section 3(d) of the Indian Patent Act and the invention is not a mere discovery of what already exist in nature and in case of genetically modified variant of microorganism or other biological material the invention results in enhancing the efficacy of already existing strain of the microorganism or other biological material.
On February 24, 2021, the Government of Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General.
IPAB Dissolved with effect from April 4, 2021
Office of CGPDTM extends deadline for all IP matters relying on Supreme Court order dated January 10, 2022. The period between March 15, 2020 till February 28, 2022 shall not be counted for the purpose of limitation and a minimum 90 days limitation period shall be allowed from March 1, 2022.
salient features of the Patent (Amendment) Rules, 2016 as applicable for foreign Applicant in India
Supreme Court held that the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner and clarified that if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place.
Mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by Rule 38(4) of Trade Marks Rules, 2002. The Mumbai HC held that placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules.
Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application.
The expression “inventive step” is predominantly used for instance in European Union while the expression “non- obviousness” is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same.
Delhi high court upheld Judgement directing restoration and renewal of trademark MBD, 29 years after due date of renewal. Notice on form O3 is must intimating the registered proprietor about the deadline of renewal and consequence thereof.
Section 33 (1) of the Trademarks Act, 1999 provides that if the earlier Registered Proprietor has acquiesced for a continuous period of 5 years in the use of a registered trademark, being aware of that use, he is not entitled to either seek invalidation of such later mark or oppose its use in relation to goods or services in relation to which it has been so used, unless registration of such mark was applied in bad faith.
Definition: Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.
Trade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services.
The Supreme Court of India in a landmark judgment as to interpretation of Indian Patents Act and to the maintainability of challenge to a provision after it is repealed...
Delhi High Court in Double Coin Holdings Ltd. Vs. Trans Tyres (India) Pvt. Ltd. elaborately dealt with the issue as to who has right over a trademark, manufacturer or distributor/ importer
Delhi High Court held amendment in claims as allowed in another suit can not be allowed in a pending suit without amending plaint.
Computer Software & Business Method Patents In India: India does not allow patents for inventions related to mathematical or business method or computer programme “per se” or algorithms.
Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.
"Non-obviousness" is the term for “inventive step” used in US patent law and codified under 35 U.S.C. §103. Thereby implying that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.
Inventions pertaining to microorganisms and other Biological material were subjected to product patent in India unlike many developed countries. But with effect from 20.05.2003 India has started granted patents to invention related to microorganisms.
Compulsory Licence For Patents In India: Any interested person after expiry of 3 years from grant of patent even though if he is a license under the patent, may make an application to the Controller for grant of compulsory license
The Government of India is finalising a system that will prevent generic manufactures from getting marketing approval to sell patented drugs in India.
India like European Union does not allow patents for inventions related to mathematical or business method or computer programme "per se" or algorithms. The relevant provision under the Indian Patents Act reads as under...
Samsung India Electronics Pvt. Ltd, Indian arm of Samsung Electronics Co. Ltd had challenged the constitutionality of India's customs regulations governing the import of IP goods in Delhi High Court by filing a writ petition. More precisely it has challenged the custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007
Chennai High Court in Writ Jurisdiction set aside order dismissing the patent applications on basis that the request for examination was filed beyond the prescribed period of 48 months. no delay or fault can be attributed to the petitioner. For negligence/ docketing error by agent, the valuable statutory rights of the petitioner cannot be completely deprived of.
Kolkata High Court held that novelty resides in 2D design too. GUI on the finished article is a mechanical and manual process under section 2(d). A software developer develops a source code which creates the GUI. This source code is then embedded in the micro-controllers and micro-processors and is displayed in screen by illuminating pixels by electronic means. Therefore, the design is applied to the article by industrial process and means.
Delhi High Court clarifies Section 64 of the Patents Act, and observed that there is no limitation prescribed either in the Patents Act or under the Patents Rules, and held that a limitation period cannot be read it into the provision. Court held that filing of a revocation petition could be done at any point in time when such a person’s interest either arises or continues during the life/term of the Patent.
Controller allowed amendment in claims and granted the Patent (as well as dismissed the Pre Grant Opposition) after completion of pleadings, hearing and submissions of post-hearing written submissions and without any notice to Opponent to respond to the proposed amendments, the Patent was granted. Delhi High Court set aside the order and remanded the matter Back for reconsideration of pre-grant opposition.
Delhi High Court clarifies legal position as to maintainability of divisional application and held that a divisional application cannot be filed if there is no “plurality of inventions”. The Appeal was dismissed with cost.
Delhi High Court interprets Section 59 and allows amendment in claims and narrowing down of scope of claims (from product to process) in view of disclosure of process in the description.
Delhi High Court clarifies that when the subject matter of the patent application is showing technical advancement over the cited prior arts, and when the cited prior arts are considerably old, it is a clear indicator of non-obviousness.
Delhi High Court Interprets Section 3 (k) of Patents Act and "Technical effect" and "Technical contribution" for computer programs.
Delhi High Court in re: Diamond Star Global Sdn. Bhd. Vs Joint Controller of Patents, vide its judgment dated March 29, 2023 set aside the impugned order rejecting grant of Patent and directed the Patent to be granted.
Supreme Court held that the provisions of section 62 of the Copyright Act and section 134 of the Trade Marks Act have to be interpreted in the purposive manner and clarified that if the plaintiff is residing or carrying on business etc. at a place where cause of action, wholly or in part, has also arisen, he has to file a suit at that place.
Supreme Court held that the jurisdiction cannot be conferred by joining two causes of action in the same suit when the court has jurisdiction to try the suit only in respect of one cause of action and not the other.
Supreme Court held that a composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise. Order 2 Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be ignored.
Supreme Court held that for the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the
5 Bench of Supreme Court held that Registration of FIR is mandatory under Section 154 of the Code, if the information discloses commission of a cognizable offence and no preliminary inquiry is permissible in such a situation.
The Chennai High Court held that the time prescribed under Rule 20 for filing national phase PCT Application in India is 31 months from priority date, and the period, which could be extended by taking into consideration of facts and circumstances, is one month under Rule 138. The application for extension is required to be made within the period prescribed. Therefore, proviso would come into operation for the purpose of calculating period of one month. On true interpretation of rule 138, it is h
The Controller of Patents Granted India’s first Compulsory License to Natco Pharma Limited in respect of Patent no. 215758 of Bayer Corporation.
Delhi High Court set Guidelines to determine jurisdiction in Internet related cases
Agreeing with Single Judge's Consideration to adverse impact of grant of injunction on life saving drugs Delhi High Court imposed Cost of Rs. 5 Lakhs on Appellant
Supreme Court of India, Appeal against Pre Grant opposition order to be heard by High Court though Patent Act amended and IPAB came into existence
Delhi High Court declines Cadila Healthcare's plea to restrain use of 'Sugar Free'
Supreme Courts Bars Challenge To “Peter Scot” On Principles Of Acquiescence And/ Or Waiver
Delhi High Court vacated interim injunction and directs defendants to maintain accounts of manufacture, sale and supply
No balance of convenience or irreparable loss Chennai High Court set aside Injunction granted by Single Judge of High Court
Supreme Court of India in a landmark judgement as to interpretation of Indian Patents Act and to the maintainability of challenge to a provision after it is repealed, held that Challenge to a provision accrued before it is repealed is maintainable if the repealing act is silent
Mumbai High Court (DB) held that mere posting of the letter on website does not constitute communication of objection as required by rule 38(4) under the Trademark Rules.
Delhi High Court in a Letter Patent Appeal upheld the single Judge Order that issuance of notice on Form O3 mandatory before removing the mark. Restoration period to be counted from date of removal from Register not from due date of renewal
Supreme Court of India rejects Novartis Patent for Beta Crystalline form of Imatinib Mesylate being violative of Section 2(1) (j), (ja) as well as 3(d) of Indian Patent Act in view of the earlier Patent for Imatinib free salt
70th Council Meeting of Asian Patent Attorneys Association was held in Taipei, Taiwan from November 9 to November 12, 2020
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