Novozymes Vs Assistant Controller of Patent

Granules in Patent Applications: A Key to Patentability

Introduction:

The recent appellate decision in the case of Patent Application No. 650/CHENP/2009 sheds light on the significance of granules in patent applications, particularly in the context of inventions related to animal feed. This article provides a detailed analysis of the appellate court's decision and its implications for patent law in India.

Background:

The appellant filed a patent application for an invention titled "Enzyme Granules for Animal Feed," claiming priority from a PCT application. The invention pertained to a process for preparing granules containing enzymes and zinc organic salt, aimed at promoting enzyme stabilization in animal feed. However, the application faced objections during examination, leading to rejections based on various provisions of the Patents Act, 1970.

Amended Claims and Hearing:

In response to the objections raised in the First Examination Report (FER), the appellant submitted amended claims, deleting certain original claims and refining the invention's scope. Despite these amendments, the application was rejected by the respondent. Subsequently, the Novozymes Vs Assistant Controller of Patent

Order Date: 19.03.2024 filed an appeal challenging the rejection.

Court's Analysis:

The appellate court focused on the claims related to the process of preparing granules for animal feed. It noted that the claims, except one, were process/method claims detailing the preparation method. Claim 7 specifically outlined the process of mixing feed components with the granules, steam treating, and pelleting the composition.

The court observed that the respondent conceded to the novelty of the invention, acknowledging that the prior art documents did not disclose the granules as outlined in the claims. Notably, the court emphasized that if the granule in claim 6 is novel, it cannot be considered a known substance, thereby rendering Section 3(d) of the Patents Act inapplicable.

Conclusion:

The appellate court's decision underscores the significance of granules in patent applications, particularly in the context of animal feed inventions. By recognizing the novelty and non-obviousness of the granules and the associated preparation method, the court affirmed the patentability of the invention. This decision sets a precedent for future patent applications involving granules, providing clarity on the requirements for patentability under Indian patent law.

Case Title: Novozymes Vs Assistant Controller of Patent

Order Date: 19.03.2024

Case No.  (OA/18/2017/PT/CHN)

Neutral Citation:NA

Name of Court: High Court of Madras 

Name of Hon'ble Judge: Senthilkumar Ramamoorthy, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Immunas Pharma, Inc. Vs Assistant Controller of Patent

Meeting the Objection under Section 3(c) of the Patent Act, 1970: Antibody Capable of Binding Specifically to A-beta Oligomer and Use case

Abstract:

A legal case concerning the rejection of a patent application under Section 3(c) of the Patent Act, 1970 has been discussed herein. The case revolves around Indian Patent Application No.5542/CHENP/2010, which sought protection for an invention titled "Antibody Capable of Binding Specifically to A-beta Oligomer and Use Thereof."

The rejection was based on the argument that the claimed antibody, with specific amino acid sequences, was inherent and naturally occurring. However, the appellate authority overturned the decision, emphasizing the engineered nature of the antibody. This article examines the legal and technical intricacies of the case, highlighting the interpretation and application of Section 3(c) in patent law.

Introduction:

Section 3(c) of the Patent Act, 1970, serves as a crucial provision governing the patentability of inventions. It stipulates that inventions that are mere discoveries of a scientific principle or naturally occurring substances are not patentable. This provision aims to prevent the monopolization of naturally occurring phenomena and encourage genuine innovation. However, its interpretation and application in specific cases often present challenges, as demonstrated in the case under review.

Legal Framework:

Under Section 3(c) of the Patent Act, inventions concerning substances occurring naturally are not patentable unless they are produced by means of a technical process involving human intervention, resulting in a substance not naturally occurring. This provision aims to strike a balance between promoting innovation and preventing the patenting of discoveries that merely reflect natural phenomena.

Case Analysis:

The case at hand involves a patent application for an antibody capable of binding specifically to A-beta oligomers. The application was rejected on the grounds that the claimed antibody, with specific amino acid sequences, was considered inherent and naturally occurring, falling under the ambit of Section 3(c). However, the appellant contested this decision, arguing that the antibody was engineered through a sophisticated process involving human intervention.

Technical Analysis:

From a technical standpoint, the appellant's argument holds weight. The antibody in question was not merely isolated from a natural source but was engineered using a series of deliberate steps. The process involved injecting an engineered antigen into mice, followed by the fusion of lymph material extracted from the mice with myeloma cells through the hybridoma process.

This resulted in the production of the antibody claimed in the patent application. The deliberate manipulation of biological materials through human intervention distinguishes the claimed invention from naturally occurring substances, aligning it with the requirements of patentability.

Conclusion:

The appellate authority's decision to overturn the rejection of the patent application under Section 3(c) underscores the importance of human intervention in the patentability of biological inventions. While Section 3(c) aims to prevent the patenting of naturally occurring substances, it does not preclude inventions that involve significant human intervention and technical processes.

Case Title: Immunas Pharma, Inc. Vs Assistant Controller of Patent
Order Date: 06.03.2024
Case No. (OA/22/2018/PT/CHN)
Neutral Citation:2024.MHC.1144
Name of Court: High Court of Madras
Name of Hon'ble Judge: Senthilkumar Ramamoorthy, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

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

Audertec SolutionsVs Controller General of Patents Designs

The Test of Obviousness in Patent Applications: The Road Anomaly Detection Technology

Abstract:

This article discusses the legal and technical aspects surrounding the test of obviousness in patent applications, using a recent case study concerning a patent application for a method and system for detecting road anomalies.

The case highlights the challenges patent applicants face when establishing the inventive step of their invention vis-à-vis prior art references. Through a detailed analysis of the legal framework and technical nuances involved, this article aims to provide insights into the application of the obviousness test in patent law.

Introduction:

The patent system is designed to incentivize innovation by granting exclusive rights to inventors for a limited period. However, to be granted a patent, an invention must meet certain criteria, including novelty, utility, and non-obviousness.

The test of obviousness, also known as inventive step, plays a crucial role in determining the patentability of an invention. This article focuses on a specific case where a patent application for road anomaly detection technology was rejected on the grounds of obviousness vis-à-vis prior art.

Legal Framework:

Under the Patents Act, 1970, Section 2(1)(ja) defines invention as a new product or process involving an inventive step and capable of industrial application. Section 2(1)(ja) further elucidates that an inventive step involves a feature of an invention that involves technical advancement compared to existing knowledge or having economic significance or both, and that makes the invention not obvious to a person skilled in the art.

The determination of inventive step is primarily based on the prior art, which includes any information that has been made available to the public before the priority date of the invention.

Case Analysis:

In the case at hand, the patent application for a method and system for detecting road anomalies was rejected on the grounds of obviousness vis-à-vis a prior art reference referred to as D-2.

The applicant argued that there were significant differences between the subject matter patent application and D-2, including the placement of the camera, coverage area, and method of data analysis.

However, the appellate authority dismissed the appeal, concluding that the features claimed in the subject matter patent were already envisioned in the complete specifications of D-2.

Conclusion:

The case study exemplifies the complexities involved in assessing the obviousness of an invention in patent applications. While the prior art may disclose similar features or functionalities, it is essential to consider the technical advancements and inventive contributions claimed by the applicant.

In cases where the differences between the invention and the prior art not substantial and does result in technical advancement, patent protection should not be granted.

Case Title: Audertec SolutionsVs Controller General of Patents Designs
Order Date: 01.03.2024
Case No. C.A.(COMM.IPD-PAT) 3/20
Neutral Citation:01.03.2024
Name of Court: High Court of Delhi
Name of Hon'ble Judge : C Harishankar, H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

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

Association of Indian Magazines Vs Union of India

Constitutional Validity of Rule 3(i)(II)(A) and (C) of IT Rules 2021

Writ Petitions under Article 226:Writ Petitions filed under Article 226 of the Constitution of India typically raise significant legal issues related to fundamental rights, such as freedom of speech and expression.

Challenge to the IT Rules:The petitioners challenged the constitutional validity of specific provisions within the Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Amendment Rules 2023. These amendments modified Rule 3(1)(b)(v) of the IT Rules 2021.

Basis of Challenge:The petitioners argued that the impugned rule, Rule 3(i)(II)(A) and (C), violated several fundamental rights guaranteed by the Constitution of India, including Articles 14 (right to equality), 19(1)(a) and (g) (right to freedom of speech and expression), and 21 (right to life and personal liberty). They also contended that these rules were inconsistent with certain sections of the Information Technology Act, 2000 (IT Act), particularly Section 79 and Section 87(2)(z) and (zg).

Court's Dismissal:However, the Hon'ble Court dismissed the petition after considering the arguments presented. The court observed that Section 79 of the IT Act, which provides exemptions from liability for intermediaries, had previously been challenged in the Shreya Singhal case.

Precedent from Shreya Singhal Case:In the Shreya Singhal case, the court interpreted Section 79(3)(b) of the IT Act to include only those matters related to restrictions outlined in Article 19(2) of the Constitution. This means that intermediaries are exempt from liability unless the content in question falls under the restricted categories specified in Article 19(2), such as defamation, incitement to violence, etc.

Application to the Impugned Rule:The court concluded that since the impugned rule did not impose restrictions beyond those outlined in Article 19(2) of the Constitution, it did not render Section 79 ineffective. Therefore, the court found that the impugned rule was not ultra vires (beyond the powers) of the constitutional provisions as alleged by the petitioners.

In summary, the court's decision rested on the interpretation of Section 79 of the IT Act in light of previous legal precedent, ultimately concluding that the impugned rule did not violate constitutional provisions.

Case Title: Association of Indian Magazines Vs Union of India

Order Date: 31.01.2024

Case No. Appeal from Order No.352 of 2021

Name of Court: Bombay High Court

Neutral Citation:Writ Petition (L) No. 9792 of 2023

Name of Hon'ble Judge: Anuja Prabhudessai 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

Amit Lalit Kumar Aswani Vs Sunil Chelani

Jurisdictional Constraints in entertaining part of Composite Suit

Abstract:

The recent decision of the Hon'ble High Court of Gujarat at Ahmedabad has shed light on the intricate legal issue surrounding the jurisdiction of courts in composite suits. In Trade Mark Suit No. 2, the court grappled with the question of whether it could entertain only a part of a composite suit when it lacked jurisdiction over the entirety of the cause of action. This article critically analyzes the court's decision and explores the implications for future cases involving composite suits and jurisdictional challenges.

Introduction:

Composite suits, which involve multiple causes of action, often raise complex jurisdictional issues for courts. In Trade Mark Suit No. 2, the Hon'ble High Court of Gujarat faced such a challenge when considering the jurisdictional scope of a suit involving both copyright infringement and passing off action. The court's decision to entertain only part of the suit while directing the remaining portion to a court with proper jurisdiction raises important questions about the interpretation of procedural rules and principles of jurisdiction.

Analysis:

The central issue in Trade Mark Suit No. 2 revolved around the court's jurisdiction to adjudicate a composite suit encompassing both copyright infringement and passing off action. The defendants argued that the court lacked jurisdiction over the entire cause of action, prompting the court to consider whether it could entertain only a part of the suit.

The court's decision hinged on a careful interpretation of procedural rules, particularly Order II Rule 3 of the Code of Civil Procedure, 1908 (CPC), which addresses the joinder of causes of action. The court acknowledged that while it lacked jurisdiction over the passing off claim, it erred in assuming jurisdiction over the copyright infringement action solely because it was joined with a claim falling outside its territorial jurisdiction.

By emphasizing the principle enshrined in Order II Rule 3 of the CPC, the court underscored that a composite suit does not entitle a court to entertain claims over which it lacks jurisdiction, whether territorial or otherwise. The court rightly recognized that jurisdictional constraints apply to the entirety of the suit, regardless of the nature or number of causes of action involved.

The decision highlights the importance of clarity and precision in pleading jurisdictional grounds in composite suits. Plaintiffs must carefully assess the jurisdictional requirements for each cause of action and ensure that the suit is filed in a court with proper jurisdiction over all aspects of the case. Failure to do so may result in procedural complications and delays, as seen in Trade Mark Suit No. 2.

Conclusion:

The decision of the Hon'ble High Court of Gujarat in Trade Mark Suit No. 2 underscores the significance of jurisdictional considerations in composite suits. Courts must adhere to procedural rules and principles of jurisdiction to ensure fair and efficient adjudication of disputes. Plaintiffs, on their part, must exercise due diligence in selecting the appropriate forum for filing composite suits to avoid jurisdictional challenges and unnecessary delays in the legal process.

Case Title: Amit Lalit Kumar Aswani Vs Sunil Chelani

Order Date: 29.02.2024

Case No. Appeal from Order 194 of 2023

Neutral Citation:N.A.

Name of Court: Gujarat High Court at Ahmedabad

Name of Hon'ble Judge : Sandeep N Bhatt H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Snpc Machines Private Limited Vs Mr Vishal Choudhary

Pith and Marrow Doctrine in Patent Infringement Cases

Introduction:

In patent infringement cases, the determination of whether an accused product infringes upon a patented invention often involves complex legal and technical analysis. The principle of the 'all elements rule' traditionally governs such assessments, requiring the accused product to contain every element of the patented claim for infringement to be established. However, the application of the pith and marrow doctrine introduces nuances into this analysis, emphasizing the essence of the patented invention rather than a strict adherence to individual claim elements. This article delves into the legal and practical implications of the pith and marrow doctrine, using a recent case before the Hon'ble High Court of Delhi as a focal point.

Background of the Case:

The subject matter of the dispute revolves around patents held by the plaintiffs concerning brick-making machines. The plaintiffs allege that the defendant's machines bear substantial similarity to theirs, leading to the filing of a patent infringement suit. The defendant, however, asserts the 'all elements rule' as a defense, contending that their product does not replicate every element of the patented claims.

Application of the Pith and Marrow Doctrine:

In granting an interim injunction, the Hon'ble High Court of Delhi shifted the focus from a strict application of the 'all elements rule' to an analysis centered on the pith and marrow of the patented invention. This doctrine emphasizes the core essence or substance of the invention rather than minor variations in individual claim elements. The court highlighted that infringement must be assessed objectively, with the defendant's intentions being immaterial in determining infringement.

Analysis of Essential Elements:

The court's observation regarding the mapping of 'essential elements' underscores the significance of identifying the fundamental aspects of the patented invention. In the case at hand, the differences between the plaintiff's and defendant's machines primarily revolve around the issue of mobility and the mechanisms ensuring it. While superficially appearing as distinct features, closer scrutiny reveals that these differences are integral to the core functionality of the invention. For instance, the plaintiff's integrated cabin facilitates mobility, whereas the defendant's machine requires external connection to a mobile vehicle. However, all aspects related to mobility, including the cabin, steering mechanism, and operation of wheels, are interconnected and essential to the invention's functionality.

Implications for Patent Infringement Cases:

The application of the pith and marrow doctrine in this case demonstrates a departure from strict adherence to individual claim elements towards a holistic assessment of the patented invention's essence. This approach enables courts to prevent defendants from circumventing infringement claims by making trivial modifications to the accused products. By focusing on the substance of the invention, courts can uphold the rights of patent holders and promote fairness in intellectual property disputes.

Conclusion:

The case discussed underscores the importance of the pith and marrow doctrine in patent infringement cases, particularly in evaluating the essence of patented inventions beyond mere claim elements. While the 'all elements rule' remains relevant, the pith and marrow doctrine enriches infringement analysis by considering the overarching functionality and purpose of patented inventions.

Case Title: Snpc Machines Private Limited Vs Mr Vishal Choudhary

Order Date: 05.03.2024

Case No. CS(COMM) 431/2023

Neutral Citation:2024:DHC:1945

Name of Court: Delhi High Court

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

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Bloomberg Television Production Services India Pvt. Ltd. Vs Zee Entertainment Enterprises Limited

Judicial Review of Ex-Parte ad interim Injunction Order:

Abstract:

This article delves into the legal intricacies surrounding the appeal against an ex-parte injunction order, with a specific focus on a case where the Appellant challenges the x-Parte ad interim Injunction Order of the Learned Additional District Judge, South District, Saket Courts, New Delhi. Through a thorough examination of relevant legal provisions and judicial precedents, this article aims to elucidate the complexities involved in such appeals, while also critically analyzing the grounds for dismissal by the Hon'ble High Court of Delhi.

Introduction:

The legal framework governing injunction orders in civil proceedings is integral to maintaining equity and fairness in the judicial process. However, disputes often arise regarding the grant or challenge of such orders, especially when they are issued x-Parte ad interim Injunction Order, as demonstrated in the case under consideration. This article seeks to dissect the various dimensions of the appeal process in such scenarios, shedding light on the principles of natural justice and procedural fairness.

Background:

The case at hand revolves around an ex-parte ad-interim injunction granted against the Appellant/Defendant in response to an application filed by the Respondent under Order 39 Rule 1 & 2 of the Code of Civil Procedure. The injunction directed the removal of an article published on the Appellant's website, prompting the Appellant to file an appeal under Order 43 Rule 1(r) against the order issued by the Learned Additional District Judge.

Legal Analysis:

Procedural Fairness:

One of the primary contentions raised by the Appellant is the lack of procedural fairness in the issuance of the ex-parte injunction. The Appellant argues that they were not afforded an opportunity to rebut the allegations made by the Respondent before the injunction was granted.

However, it is essential to recognize that ex-parte injunctions are typically granted in exigent circumstances where immediate relief is warranted to prevent irreparable harm. The discretion of the court to grant such injunctions is guided by principles of urgency and necessity, rather than a full adjudication of merits.

Judicial Review of Ex-Parte Orders:

The appellate court's role in reviewing ex-parte injunction orders is crucial in ensuring that the principles of natural justice are upheld. While the Appellant contends that the Learned Additional District Judge adjudicated the matter prematurely without giving due consideration to their side of the case, the standard of review for appellate courts in such instances is not to re-evaluate the merits of the case but to ascertain whether the lower court exercised its discretion judiciously.

Exploration of Remedies:

The dismissal of the appeal by the Hon'ble High Court of Delhi underscores the importance of exhausting all available remedies before resorting to appellate intervention. The Appellant's failure to file a reply to the application under Order 39 Rule 1 and 2 of the Code of Civil Procedure or seek modification of the ex-parte ad-interim order under Order 39 Rule 4 reflects a procedural lapse that could have potentially influenced the outcome of the case.

Conclusion:

The appeal against an ex-parte injunction order necessitates a comprehensive understanding of the legal principles governing such injunctions and the appellate process. While the Appellant's grievances regarding procedural fairness are valid, the dismissal of the appeal underscores the significance of diligently pursuing all available remedies within the framework of the law.

Case Title: Bloomberg Television Production Services India Pvt. Ltd. Vs Zee Entertainment Enterprises Limited

Order Date: 14.03.2024

Case No. FAO 79 of 2024

Neutral Citation:2024:DHC:2061

Name of Court: Delhi High Court

Name of Hon'ble Judge : Shailinder Kaur H.J.

Disclaimer:

This article is meant for informational purposes only and should not be construed as substitute for legal advice as Ideas, thoughts, views, information, discussions and interpretation perceived and expressed herein are are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue of law involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Rectification of a Registered Trademark Based on Non-Use

Introduction:

The cancellation of a registered trademark on the grounds of non-use is a significant aspect of trademark law, as outlined in Section 47 of the Trademarks Act 1999. This article delves into a specific case heard by the Hon'ble High Court of Delhi, involving the registered trademark 'BAOJI,' registered under No. 1530274 in Class 25.

Scope of Section 47 and Necessary Conditions:

Section 47 of the Trademarks Act 1999 allows for the cancellation of a registered trademark based on non-use. However, the Hon'ble High Court emphasized that a successful challenge under this section necessitates demonstrating a continuous non-use for a minimum of five years from the date of entry into the register up to three months before the application for removal.

Case Analysis:

In the case under consideration, the registration certificate for the 'BAOJI' mark was issued on December 26, 2013, officially entering the register. The rectification application was filed on August 10, 2020. Accordingly, the critical date for assessing the use of the mark was set as May 10, 2020, three months before the rectification application.

The Court's Observations:

The Hon'ble High Court scrutinized the evidence and observed that sale invoices submitted into the record indicated consistent transactions by Respondent No. 1 using the 'BAOJI' mark from 2012 through 2022. This unbroken chain of evidence unequivocally established a continuous and uninterrupted use of the trademark over a significant period.

The concluding Note:

In light of the court's analysis and interpretation of Section 47, the cancellation petition was dismissed. This case underscores the importance of providing concrete evidence of continuous non-use within the specified timeframe to succeed in challenging a registered trademark on grounds of non-use.

The Case Law Discussed:

Case Title: Rong Thai International Group Company Limited Vs Ena Footwear Private Limited

Date of Judgement/Order:05.01.2024

Case No. C.O. (COMM.IPD-TM) 100/2021  

Neutral Citation: 2024:DHC:112

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Sanjeev Narula, 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

Novartis Ag Vs Natco Pharma Limited and another

Introduction:

The realm of patent law is characterized by a delicate balance between fostering innovation and ensuring that patents are granted on meritorious grounds. Central to this balance is the mechanism of pre-grant opposition, designed to facilitate a rigorous examination of patent applications. This article delves into the nuanced legal principles governing pre-grant opposition, emphasizing its facilitation role in the examination process and delineating its limitations.

The Division Bench, High Court of Delhi , Comprising of Hon'ble Judges namely Shri Yashwant Varma and Shri Dharmesh Sharma was having an occasion to answer this issue while passing the Judgement dated 09.01.2024 in Appeal bearing LPA No. 50 of 2023 titled as Novartis Ag Vs Natco Pharma Limited and another, delved into the critical examination of the order dated 14.12.2022 passed by controller of Patent , which allowed certain amendments and ultimately resulted in grant of Indian Patent. IN414518. This grant of Patent to Novartis subsequently led to litigation. The Hon'ble Division Bench, High Court of Delhi rejected the argument of the pre grant Opponent that the same had any right to be heard in Patent Examination process. Thereby  affirmed the order of controller , granting the subject matter Patent.

Background:

Novartis AG was the Applicant of the subject matter patent IN‘518, originated from PCT application no. PCT/US2006/043710 dated 08.11.2006, which was filed as Indian national phase application bearing no. 4412/DELNP/2007 on 08.06.2007 before the Controller of Patents. Natco and few other entities were pre grant opponent. The subject matter order dated 14.12.2022 passed by the controller which resulted in filing of the subject matter writ and subsequent thereto the present Letters Patent Appeal , whereby certain amendments in Indian Patent Application No. IN4145 were allowed without granting any opportunity to pre grant opponent , to be heard. 

The crux of the controversy lies in the alleged violation of the principles of natural justice. The opponent contended that the order permitting amendments to the patent application was issued without granting them a fair hearing. Specifically, all five pre-grant opposition hearings had concluded on 03 November 2022. Despite this, the Controller of Patents directed the applicant to carry out amendments, which were eventually allowed on 14.12.2022.

The Core Legal Question:

The pivotal issue at hand is whether an opponent possesses the right to participate in the patent examination process, especially when amendments are under consideration. Stated differently, does the opponent have a stake in the examination process, mandating their participation when modifications to the patent application are being evaluated? 

Judicial Interpretation:

The Hon'ble Division Bench's ruling provided a nuanced interpretation of the relevant legal provisions. According to Rule 55(5), the right of hearing is primarily associated with the adjudication and disposal of the representation for opposition. The court opined that conferring an opportunity for a hearing at the representation stage does not automatically translate to an inherent right for the opponent to participate in Patent examination process.

Furthermore, the court elucidated that while pre-grant opposition undoubtedly aids the Controller in decision-making, it does not ipso facto grant opponents an inherent right to participation or an audience during the Patent examination process. This interpretation upholds the procedural autonomy of the Controller in conducting examinations while balancing the interests of both applicants and opponents.

Implications:

it is imperative to understand that the representation for opposition is not inherently adversarial or contentious. Instead, its primary objective is to aid and facilitate the examination of the patent application. This facilitative role underscores the constructive intent behind pre-grant opposition, which aims to ensure that patents are granted based on valid and meritorious grounds.

The scope and limitations of pre-grant opposition are circumscribed by Section 25(1) of the relevant statute. This provision specifies the grounds on which opposition can be raised, thereby confining the opposition's ambit to statutory parameters. Consequently, any challenge raised by an opponent must align with the grounds delineated in Section 25(1), ensuring that the opposition remains tethered to statutory constraints.

The Division Bench's interpretation provides clarity on the locus of a pre-grant patent opponent within the patent examination framework. By distinguishing between the stages where opponents have a right to be heard, such as during pre-grant opposition, and stages where their participation is not mandated, the court ensures a balanced and efficient patent examination process.

The Concluding Note:

Pre-grant opposition serves a pivotal yet circumscribed role in the patent examination landscape. Its facilitative nature aims to aid the Controller in conducting a holistic examination of patent applications, ensuring adherence to statutory criteria and principles of natural justice. However, this role is not without limitations, as evidenced by the Court's observations emphasizing the pre grant opponent's restricted right to intervene in the process of grant of Patent only by way of pre grant opposition , however the same has no right to be heard in examination process of the Patent, which is solely the domain between Controller of Patent and the Applicant for Patent. 

The Case Law Discussed:

Case Title: Novartis Ag Vs Natco Pharma Limited and another 

Date of Judgement/Order:09.01.2024

Case No. LPA 50/2023 

Neutral Citation: 2023:DHC:84:DB

Name of Hon'ble Court: Delhi  High Court

Name of Hon'ble Judge: Yashwant Varma+Dharmesh Sharma, 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