Boehringer Ingelheim Pharma GMBH and Co KG Vs Vee Excel Drugs And Pharmaceuticals Pvt. Ltd.

The Legal Implications of Patent Expiry on Relief for Patent Infringement

Abstract:

This article explores the legal ramifications of patent expiry on relief for patent infringement, as exemplified by a recent case adjudicated by the Hon'ble Division Bench of the High Court of Delhi. The case involved an appeal against the rejection of interim orders seeking to restrain patent infringement. However, during the pendency of the appeal, the subject patents expired, prompting the court to consider the fate of relief for patent infringement post-expiry. The court's decision to vacate the injunction order sheds light on the principle that relief for patent infringement does not survive beyond the expiration of the patent term.

Introduction:

Patent protection serves as a cornerstone of innovation by granting inventors exclusive rights to their inventions for a limited period. However, disputes often arise when third parties allegedly infringe upon patented inventions. Legal recourse typically involves seeking injunctions and damages for patent infringement. This article examines a significant legal issue arising from patent expiry and its impact on relief for patent infringement, as elucidated by a recent case before the High Court of Delhi.

Background of the Case:

The case in question involves an appeal challenging the rejection of interim orders seeking to restrain patent infringement. The appellant sought relief under Order XXXIX Rule 1 & 2 of the Civil Procedure Code, 1908, but the applications were denied by the learned Single Judge. However, during the pendency of the appeal, the subject patents reached the end of their term, prompting a crucial question regarding the fate of relief for patent infringement post-expiry.

Legal Analysis:

The central legal issue in this case revolves around the effect of patent expiry on relief for patent infringement. Once a patent expires, the exclusive rights conferred by the patent no longer exist, rendering claims for patent infringement moot. In other words, the expiration of a patent extinguishes the basis for seeking injunctive relief against infringement.

The court's decision to vacate the injunction order underscores this fundamental principle. Despite the merits of the appellant's claims of patent infringement, the expiration of the patents in question rendered the relief sought irrelevant. All parties acknowledged the expiration of the patents, precluding any further claim for relief against infringement.

Implications and Precedent:

This case sets a significant precedent regarding the impact of patent expiry on relief for patent infringement. It highlights the principle that relief for patent infringement does not survive beyond the expiration of the patent term. Patent holders must be cognizant of the limited duration of their exclusive rights and take appropriate legal action before patent expiry to enforce their rights effectively.

Furthermore, this ruling underscores the importance of timely enforcement of patent rights and the need for parties to diligently monitor patent expiration dates. Failure to do so may result in the loss of valuable legal remedies against infringers once the patents expire.

Conclusion:

The case discussed exemplifies the legal intricacies surrounding relief for patent infringement in the context of patent expiry. The court's decision to vacate the injunction order serves as a reminder of the finite duration of patent rights and the implications thereof on legal remedies for infringement. Moving forward, stakeholders must be proactive in safeguarding their patent rights and navigating the complex legal landscape governing patent protection and enforcement.

Case Title: Boehringer Ingelheim Pharma GMBH and Co KG Vs Vee Excel Drugs And Pharmaceuticals Pvt. Ltd.
Order Date: 21.02.2024
Case No. FAO(OS) (COMM) 77/2023
Neutral Citation:N.A.
Name of Court: Delhi High Court
Name of Hon'ble Judge: Mr. Vibhu Bakhru and Tara Vitasta Ganju

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Maruti Ispat & Energy Pvt. Ltd. Vs Chetna Steel Tubes Pvt. Ltd.

Implications of Inaction in Third-Party Trademark Usage

Abstract:

This article examines a recent case where the defendant argued that a trademark had become generic due to the plaintiff's failure to take action against similar users. The court's dismissal of this argument underscores the necessity for defendants to substantiate claims of genericness through evidence, rather than mere inaction by the plaintiff.

Introduction:

Trademark protection is fundamental to safeguarding the distinctiveness and reputation of brands in commerce. However, disputes often arise when trademarks are allegedly diluted through widespread use or inaction by the trademark owner. This article analyzes a recent legal case where the defendant asserted that the plaintiff's trademark had become generic due to the plaintiff's failure to object to third-party usage.

Background of the Case:

The case at hand involves an appeal filed by the defendant against an order granting interim injunctions to the plaintiff in a trademark infringement dispute. The plaintiff, holding the trademark "SHAKTI," sought to restrain the defendant's use of a similar mark, "MS SHAKTI." The defendant argued that the plaintiff's inaction against other parties using similar marks implied that the mark had become generic and common to trade.

Legal Analysis:

The central legal issue in this case revolves around the concept of trademark dilution and the standard for proving genericness. Trademark dilution occurs when a mark loses its distinctiveness due to extensive use by third parties or failure to enforce trademark rights. However, establishing genericness requires more than mere inaction by the trademark owner.

The court's dismissal of the defendant's argument underscores the principle that non-action by the plaintiff against other parties does not automatically render the mark generic. Rather, the defendant must provide evidence to substantiate the claim of genericness. In this case, the court rightly held that the defendant failed to present prima facie material demonstrating that the mark "SHAKTI" had become generic in the trade.

Implications and Precedent:

This ruling reaffirms the importance of evidentiary standards in trademark disputes. Defendants cannot rely solely on the plaintiff's inaction as proof of genericness; instead, they must provide concrete evidence supporting their claims. Additionally, this case sets a precedent for future disputes involving trademark dilution, emphasizing the need for thorough legal analysis and evidence-based arguments.

Conclusion:

Trademark disputes involving allegations of dilution require careful consideration of legal principles and evidence. The recent case discussed highlights the significance of substantiating claims of genericness through proper evidence, rather than relying on the plaintiff's inaction alone. Moving forward, practitioners and litigants must be mindful of the nuanced legal standards governing trademark protection to effectively navigate disputes in this complex area of law.

Case Title: Maruti Ispat & Energy Pvt. Ltd. Vs Chetna Steel Tubes Pvt. Ltd.
Order Date: 23.02.2024
Case No. O.S.A (CAD).Nos.122 and 123 of 2023
Neutral Citation:2024:MHC:6521
Name of Court: Madras High Court
Name of Hon'ble Judge: Mr. Sanjay Gangapurwala and Bharatha Chakravarthy, HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Section 12 of Company Act 2013 and Entitlement of Company to Use Its Old Name

Background:

In the corporate landscape, the decision to change a company's name can stem from various strategic, branding, or legal considerations. However, the question of whether a company is entitled to use its old name for a certain period after changing its name is one that requires careful legal scrutiny. This issue was recently settled by the Hon'ble High Court of Delhi in a case that sheds light on the interplay between company law and the rights of corporate entities.

Fact:

In a recent case before the Hon'ble High Court of Delhi, the defendant, formerly known as 'Zanofi Pharmaceutical Private Limited,' sought to change its corporate name to 'Naltisam Pharmaceutical Private Limited.' The Registrar of Companies, Ministry of Corporate Affairs, duly issued a certificate approving the name change. However, a note appended to the certificate required the defendant to display its earlier name for a period of two years in accordance with Section 12 of the Companies Act, 2013.

Issue:

The crux of the issue before the court was whether the defendant was entitled to display its old name for two years, as mandated by the Companies Act. The court, in its wisdom, answered this question in the negative, providing crucial insights into the legal framework governing corporate name changes.

Reasoning:

The court's reasoning hinged on the distinction between the court's power to direct a party to change its corporate name and the voluntary act of changing the name. It noted that the court's authority to mandate a change of corporate name operates in a different realm than that of a voluntary name change initiated by the company itself. As such, the court implied that it would not be bound by the provisions of the Companies Act, which pertain to situations triggered by voluntary name changes.

Analysis:

By disentangling the court's power from the statutory provisions governing voluntary name changes, the court affirmed its authority to make independent determinations regarding corporate name changes in the context of legal proceedings. It underscored the principle that the court's directives in such matters are guided by legal principles and equitable considerations rather than statutory mandates.

Consequently, the court ruled that the defendant was not entitled to display its old name for the prescribed period of two years. Instead, it directed the defendant to exclusively use its new name, 'Naltisam Pharmaceutical Private Limited,' in all its dealings, promotional materials, and online and physical media.

Conclusion:

This ruling by the Hon'ble High Court of Delhi serves as a significant precedent in clarifying the rights and obligations of companies undergoing name changes. It highlights the court's discretion in adjudicating corporate name change matters and reinforces the principle that legal directives in such cases are rooted in judicial discretion and equitable considerations rather than statutory mandates alone.

Case Title: Sanofi and another Vs Zanofi Pharmaceutical Pvt. Ltd.

Order Date: 23.02.2024

Case No. CS(COMM) 881/2023

Neutral Citation:N.A

Name of Court: Delhi High Court 

Name of Hon'ble Judge: Sanjeev Narula,HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Incyte Holdings Corporation Vs Tiba Pharmaceutical Pvt. Ltd.

Ex Parte Injunction in Quia Timet Action: Protecting Patent Rights in Pharmaceutical Innovation

Abstract:

This article examines a recent case wherein the plaintiff sought an ex parte injunction in a quia timet action for patent infringement concerning the pharmaceutical compound 'Ruxolitinib.' The suit, filed before the Hon'ble High Court of Delhi, highlights the complexities of protecting patent rights in the pharmaceutical sector, particularly when dealing with pre-emptive actions to prevent potential infringement. The article provides a detailed analysis of the legal principles involved, including the criteria for granting ex parte injunctions, the concept of quia timet actions, and the significance of protecting intellectual property rights in innovation-driven industries.

Introduction:

The case under scrutiny involves a patent infringement suit brought by the plaintiff concerning the compound 'Ruxolitinib,' which is utilized in the treatment of myelofibrosis and polycythemia vera. The plaintiff alleges that the defendant, despite not yet launching its product in the market, has obtained manufacturing licenses and intends to infringe upon the plaintiff's patent rights. The plaintiff seeks an ex parte injunction to prevent the defendant from launching its product, asserting that irreparable harm would ensue if infringement were to occur.

Legal Analysis:

Quia Timet Action:

A quia timet action allows a plaintiff to seek injunctive relief to prevent an anticipated or threatened infringement of their rights, even before the infringement occurs. In the present case, the plaintiff's proactive approach underscores the importance of preemptive measures to safeguard patent rights in the pharmaceutical domain.

Prima Facie Case:

To obtain an ex parte injunction, the plaintiff must demonstrate a prima facie case of infringement. This requires establishing that the defendant's actions, if allowed to proceed, would likely infringe upon the plaintiff's patent rights. The plaintiff's assertion regarding the defendant's intent to manufacture and launch a product containing 'Ruxolitinib' forms the basis for establishing a prima facie case.

Balance of Convenience and Irreparable Harm: In granting ex parte relief, the court must weigh the balance of convenience and consider whether irreparable harm would result if the injunction were not granted. The plaintiff's argument regarding the potential harm to its market position and the irreparable loss stemming from infringement supports the grant of injunctive relief.

Independent Investigation:

The reliance on an independent investigating agency's report strengthens the plaintiff's case by providing corroborative evidence of the defendant's intentions to infringe upon the patent. Such investigative reports play a crucial role in substantiating claims of anticipated infringement in quia timet actions.

Conclusion:

The decision of the Hon'ble High Court of Delhi to grant an ex parte injunction in the present case reflects the judiciary's commitment to protecting intellectual property rights, particularly in innovation-driven industries like pharmaceuticals. By recognizing the potential harm posed by anticipated infringement and prioritizing the balance of convenience, the court upholds the integrity of the patent system and promotes a conducive environment for innovation and investment.

Case Title: Incyte Holdings Corporation Vs Tiba Pharmaceutical Pvt. Ltd.
Order Date: 29.01.2024
Case No. CS(COMM) 81 of 2024
Neutral Citation:N.A
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula,HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,
IP Adjutor - Patent and Trademark Attorney,
Email: ajayamitabhsuman@gmail.com,
Ph No: 9990389539

Sheila Bhagwan Bulchandani Vs State of Maharashra

Abuse of Criminal Law Machinery in civil business dispute

Abstract:

This article delves into the intricate legal nuances surrounding the stay of investigation sought by the petitioners in a criminal case involving allegations of civil business dispute. The case under scrutiny involves the invocation of Section 156(3) of the Code of Criminal Procedure, wherein the petitioners allege the misuse of criminal proceedings to give a criminal color to a civil dispute. The article analyzes the factual matrix, legal principles, and judicial precedents to evaluate the validity of the petitioners' claim and the court's decision to grant a stay of investigation.

Introduction:

The intersection of civil and criminal law often presents complex challenges, particularly when disputes arising out of commercial transactions find their way into the realm of criminal litigation. This article examines the case of [Case Name], wherein the petitioners sought a stay of investigation in a criminal case alleging the misuse of criminal machinery for vindictive purposes. The article critically evaluates the legal principles involved and analyzes the court's decision to grant interim relief to the petitioners.

Background:

The instant case revolves around an FIR filed under various sections of the Indian Penal Code at Matunga Police Station. The petitioners contend that the application under Section 156(3) was filed with malicious intent to transform a civil dispute into a criminal matter, despite the existence of ongoing arbitral proceedings between the parties in Italy and New York. The FIR alleges offenses stemming from a longstanding business transaction between the petitioners and the complainant, including copyright infringement and financial impropriety.

Legal Analysis:

Misuse of Criminal Proceedings:

The crux of the petitioners' argument lies in the contention that the complainant misused the criminal justice system to settle a commercial dispute that had already been adjudicated through arbitration. They argue that the invocation of criminal law in such circumstances constitutes an abuse of process and warrants judicial intervention.

Arbitral Adjudication and Prima Facie Case:

The petitioners highlight the existence of arbitral proceedings wherein the allegations raised in the FIR were adjudicated. They argue that the complainant's failure to disclose the outcome of these proceedings to the investigating authorities amounts to suppression of material facts and reflects an ulterior motive.

Extraordinary Jurisdiction:

The court, in considering the petitioners' plea for a stay of investigation, assessed whether the case warranted the exercise of extraordinary jurisdiction under Article 226 of the Constitution or inherent powers under Section 482 of the Cr.P.C. The court's determination hinged on whether the facts presented constituted one of the rarest of rare cases necessitating intervention.

Judicial Precedents:

The court's decision to grant interim relief aligns with established precedents emphasizing the need to prevent the misuse of criminal proceedings for ulterior motives. Several judicial pronouncements have underscored the importance of maintaining the sanctity of criminal law and preventing its instrumentalization in civil disputes.

Conclusion:

The case underscores the complexities inherent in navigating the interface between civil and criminal law, particularly in the context of business disputes. The court's decision to stay the investigation reflects a judicious exercise of discretion aimed at preventing the abuse of criminal law machinery. This case serves as a reminder of the judiciary's role in safeguarding the integrity of legal processes and upholding the principles of fairness and justice.

Case Title: Sheila Bhagwan Bulchandani Vs State of Maharashra

Order Date: 14.02.2024

Case No. Writ Petition No. 2760 OF 2023

Neutral Citation:2024:BHC-AS:7759-DB

Name of Court: Bombay High Court

Name of Hon'ble Judge: Anuja Prabhu Dessai & N. R.Borkar,HJ

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Clover Infotech Pvt Ltd. Vs Clover Network Inc

Non-Rebuttal of Averments in Trademark Cancellation Petition

Introduction:

Trademark law serves to protect the distinctive marks that businesses use to identify and distinguish their goods or services in the marketplace. When disputes arise over trademark rights, parties may seek resolution through legal avenues such as cancellation petitions. In this analysis, we delve into the implications of non-rebuttal of averments in a trademark cancellation petition, as exemplified by a case involving the marks 'CLOVER' and 'CLOVER INFOTECH'.

Background of the Case:

The case under consideration involves a trademark cancellation petition wherein the petitioner sought the removal of the respondent's mark 'CLOVER', registered under No. 263477 in class 09, dated 28th November 2013. The petitioner asserted prior ownership of a trademark granted on 31st March 2010 in Class 9, along with another mark 'CLOVER INFOTECH' registered under No. 1516522 in class 42, dated 28th December 2006.

Priority and User Date:

The court's analysis begins with a comparison of the respective trademark registrations. It is noted that the petitioner's mark was registered in 2010 with a user date as early as 2000, establishing prior rights. In contrast, the respondent's mark was registered in December 2018, albeit on a proposed to be used basis. This disparity in registration dates and user dates forms a crucial aspect of the legal analysis.

Non-Rebuttal of Averments:

Despite being served, the respondent failed to appear or file a response to the petition. The court, in such circumstances, inferred that the averments made by the petitioner remained unrebutted. This non-rebuttal by the respondent holds significant weight in trademark cancellation proceedings.

Legal Implications:

The absence of a response from the respondent can be construed as an implied admission of the petitioner's claims. In trademark disputes, failure to contest allegations or provide counterarguments can weaken the respondent's position. The court, in this case, relied on the principle that uncontroverted assertions should be accepted in favor of the asserting party.

Effect on Cancellation Petition:

The court's acceptance of the petitioner's averments, due to the lack of rebuttal by the respondent, influenced the decision to allow the cancellation petition. Non-rebuttal effectively strengthens the petitioner's case and diminishes the respondent's ability to defend their trademark rights.

Conclusion:

In trademark cancellation proceedings, the non-rebuttal of averments can significantly impact the outcome of the case. As demonstrated in the analyzed case, the failure of the respondent to contest the petitioner's claims led to the court's acceptance of those claims, resulting in the cancellation of the respondent's trademark.

Implication:

This decision underscores the importance of upholding fairness and transparency in legal proceedings and emphasizes the consequences of misrepresentation and misuse of court orders. It also reaffirms the judiciary's commitment to addressing grievances and ensuring that justice is served impartially.

Case Title: Clover Infotech Pvt Ltd. Vs Clover Network Inc

Order Date: 14.02.2024

Case No. C.O. (COMM.IPD-TM) 461/2022

Neutral Citation:NA

Name of Court: Delhi High Court

Name of Hon'ble Judge: Anish Dayal,H J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Alkem Laboratories Ltd vs Wings Pharmaceuticals Pvt. Ltd.

Obtaining Ex Parte Injunction on the basis of Old Trademark and Packaging 

Background:

The case at hand involves an appeal filed against an ad interim injunction order passed by the learned Commercial Court in a matter concerning trademarks and packaging. The appellant, Wings Pharmaceuticals Pvt Ltd, raised grievances regarding the manner in which the injunction order was obtained by the respondent, Celebrity Biopharma Limited.

Misrepresentation by Plaintiff/Respondent No.1:

The crux of the appellant's argument revolves around allegations of misrepresentation by the respondent. They contend that the respondent presented packaging that had been discontinued by the appellant in January 2022 to persuade the court to grant an ad interim injunction. According to the appellant, this act amounts to clear misrepresentation, which should disentitle the respondent from obtaining any interim relief.

Additionally, the appellant raised concerns regarding a publication allegedly circulated by the respondent, representing that the learned Commercial Court had banned the appellant's product. The appellant argued that this publication further contributes to the misrepresentation and misuse of the court's order, damaging the appellant's reputation in the process.

Court's Observation:

Upon examination of the matter, the Hon'ble Division Bench observed the mischievous nature of the circulated advisory and deemed it an abuse of the court's process. They noted that the advisory did not accurately reflect the order passed by the learned Commercial Court and emphasized that the injunction was ad interim and passed without hearing the appellant. Circulating such an advisory was unnecessary and could only be construed as an attempt by the respondent to misuse the court's order to tarnish the appellant's reputation.

Consequently, the Hon'ble Division Bench disposed of the appeal by permitting the appellant to file an appropriate application before the learned Commercial Court, outlining the grievances raised in the appeal. 

Implication:

This decision underscores the importance of upholding fairness and transparency in legal proceedings and emphasizes the consequences of misrepresentation and misuse of court orders. It also reaffirms the judiciary's commitment to addressing grievances and ensuring that justice is served impartially.

Case Title: Alkem Laboratories Ltd vs Wings Pharmaceuticals Pvt. Ltd.

Order Date: 06.02.2024

Case No. FAO(COMM)25/2024

Neutral Citation:NA

Name of Court: Delhi High Court 

Name of Hon'ble Judge:Vibhu Bakhru and Tara Vitasta Ganju,H J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

The Regent of University of California Vs Controller General of India

Amendment in Patent specification by way of explanation

Background:

The case under discussion pertains to an appeal filed under Section 117A of the Patents Act, 1970, challenging the rejection of a patent application by the Assistant Controller of Patents and Designs. The appellant's patent application, filed on November 29, 2013, was rejected primarily under Section 15 read with Section 59(1) of the Act.

The Facts:

At the time of the national phase entry in India, the patent application comprised 33 claims, including independent and dependent claims. Subsequently, amendments were made to the claims in response to a First Examination Report (FER) issued on October 31, 2019. The amendments included restricting the preamble of Claim 1 and incorporating technical features from other claims to address objections related to clarity, conciseness, and definitiveness. Additionally, several claims were cancelled during this process.

Appellant's Contention:

The appellant argued that the impugned order was arbitrary and based on an incorrect interpretation of Section 59(1) of the Act. They contended that the amendments made to the claims were permissible under Section 59(1) as they constituted corrections, explanations, and disclaimers. Moreover, the appellant asserted that the scope of the amended claims was narrower than the original claims and merely served to clarify and explain the invention.

Analysis by Hon'ble High Court:

The Hon'ble High Court of Delhi, in allowing the appeal, focused on the interpretation of Section 59(1) of the Patents Act, 1970. The court observed that the use of the expression "method of marketing" in the amended claims was consistent with the original claim and fell within the scope of Section 59(1). The amendments were deemed to be explanations and clarifications of the original claims rather than introducing new subject matter.

Implication:

Furthermore, the court emphasized that the amendments did not disclose any matter that was not originally disclosed in the claims filed before the amendment. Instead, they served to incorporate actual facts and refine the language of the claims to address objections raised during examination. As such, the amendments were held to be permissible under Section 59(1) of the Act.

Conclusion:

This case underscores the importance of clarity and precision in drafting patent claims and the significance of amendments in addressing objections raised during examination. It reaffirms the principle that amendments aimed at clarifying and explaining the invention, rather than expanding its scope, are permissible under the law. 

Case Title: The Regent of University of California Vs Controller General of India

Order Date: 05.02.2024

Case No. C.A.(COMM.IPD-PAT) 143/2022  

Name of Court: Delhi High Court 

Neutral Citation:2024:DHC:882

Name of Hon'ble Judge:Anish Dayal,H J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Man Truck Bus SE Vs Controller of Patent

Reply to First Examination Report in Patent Examination process

Background:

The case under discussion delves into the intricate realm of patent examination procedures, focusing on the reply to the First Examination Report (FER) and the subsequent rejection of a patent application. Filed under Section 117A of the Patents Act, 1970, the appeal challenges the order of the Assistant Controller of Patents Designs, which dismissed the appellant's patent application No.1241/DEL/2009.

The Appellant's Allegation:

The crux of the appellant's argument revolves around the alleged procedural irregularities and lack of substantive analysis in the impugned order. Specifically, the appellant contends that while the FER referenced prior art documents D1-D4, the impugned order relied on additional prior art document D5, which was not previously mentioned. This discrepancy raises questions about the fairness and consistency of the examination process.

Furthermore, the appellant asserts that the impugned order essentially replicated the content of the FER regarding prior art documents D1-D4 without any meaningful analysis or alteration. Despite the appellant's response to the objections raised in the FER, the Controller failed to provide a detailed assessment of how the cited prior art would render the invention obvious, thereby indicating a lack of application of mind.

The Court Analysis:

The Hon'ble High Court of Delhi's analysis underscores the deficiencies in the Controller's decision-making process. The court observed that the impugned order failed to offer any additional analysis or discussion regarding prior art documents D1-D4, particularly concerning the appellant's responses. Instead, the Controller merely reiterated the objections raised in the FER without providing a fresh or revised analysis based on the appellant's submissions.

Moreover, the court noted the absence of prior notice or discussion regarding prior art document D5 during the hearing, further complicating the matter. The reliance on D5 without prior intimation or opportunity for the appellant to respond raises serious procedural concerns and undermines the fairness of the examination process.

Implication:

In setting aside the impugned order and remanding the matter for fresh adjudication, the Hon'ble High Court of Delhi reaffirmed the principles of procedural fairness and reasoned decision-making in patent examination. The court emphasized the Controller's obligation to conduct a thorough and independent analysis of the applicant's response to the FER, considering all relevant prior art documents and providing adequate reasoning for their decisions.

Conclusion:

Overall, the case highlights the importance of procedural integrity and substantive analysis in patent examination proceedings, ensuring that applicants are afforded a fair and transparent process to present their case and address any objections raised during the examination process.

Case Title: Man Truck Bus SE Vs Controller of Patent

Order Date: 20.02.2024

Case No. C.A.(COMM.IPD-PAT) 16/2022  

Name of Court: Delhi High Court 

Neutral Citation:2024:DHC:985

Name of Hon'ble Judge:Anish Dayal,H J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Shri Dhiraj Kumar Vs R H Agro Overseas Pvt Ltd

Urgent Relief and Pre Institution Suit mediation under Section 12 A of Commercial Court Act 2015

Background:

The intersection of urgent relief and pre-institution suit mediation under Section 12A of the Commercial Courts Act, 2015, forms the crux of the case under discussion. Presented as a revision petition by the appellant/defendant, it challenges an order issued by the District Judge (Commercial)-04, South District, Delhi, in a commercial suit numbered C.S (COMM.) No. 03/2023 titled as M/s R.H. Agro Overseas Pvt. Ltd & Anr. Vs. Dhiraj Kumar & Anr.

The Order under Challenge:

The impugned order, dated 09th May, 2023, saw the trial court dismissing the defendant's application under Order VII Rule 11 of the Civil Procedure Code (CPC). Notably, the court did not invoke pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015. Instead, it proceeded to issue summons and granted an ad interim injunction.

The Court's Observation:

Upon appeal, the Hon'ble High Court of Delhi dismissed the revision petition. The court's rationale rested on the initial grant of an ex parte injunction and subsequent failed mediation proceedings between the parties. Despite the defendant's attempt to seek pre-institution mediation under Order VII Rule 11 of the CPC, the court deemed it ineffective given the urgent relief sought by the plaintiff and the progression of the suit proceedings.

The observation by the Hon'ble Single Judge that urgent relief was pursued by the plaintiff and the suit proceedings had advanced underscores the practical challenges associated with invoking pre-institution mediation at a later stage in the litigation process. In such scenarios, the efficacy of resorting to mediation before instituting the suit becomes limited, especially when one party seeks urgent relief and the litigation is already underway.

Implication:

This case exemplifies the intricate balance required between the need for urgent relief and the statutory provision for pre-institution suit mediation. While the law promotes alternative dispute resolution mechanisms like mediation, the exigencies of commercial litigation often necessitate immediate judicial intervention to address pressing issues.

Case Title: Shri Dhiraj Kumar vs R H Agro Overseas Pvt Ltd 

Order Date: 20.02.2024

Case No. CM(M)-IPD 16/2023 

Name of Court: Delhi High Court 

Neutral Citation:NA

Name of Hon'ble Judge:Anish Dayal,H J.

Disclaimer:

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539