Gunjan SinhaVs Union of India and another

 Analyzing the Validity of Patent Terms Under Indian Patent Act 1970

Introduction:

The concept of patents serves as a cornerstone in the realm of intellectual property law, providing inventors with exclusive rights over their innovations for a specified period. However, the determination of the patent term, particularly in the context of the Indian legal framework, has sparked debate and legal scrutiny. This article delves into the intricacies of patent terms under the Patents Act, 1970, with a specific focus on the validity of Section 53 and its interplay with other provisions.

Validity of Patent Term under Section 53:

Section 53(1) of the Patents Act, 1970, stipulates that the term of every patent granted after the commencement of the Patents (Amendment) Act, 2002, and those patents that have not expired or ceased to have effect on the commencement date, shall be twenty years from the date of filing the patent application. This provision forms the crux of the petitioner's challenge, asserting that the term's calculation from the date of application is inherently flawed.

The petitioner contends that during the period between application and publication, the patentee only enjoys limited rights, primarily the right to institute proceedings for infringement. Thus, it is argued that it is unreasonable to count this interim period within the patent term, as the patentee does not fully benefit from patent rights until grant. This argument emphasizes the practical disadvantage faced by patentees due to the delay between application and grant.

Interplay with Section 11-A:

The petitioner further highlights the interplay between Section 53 and Section 11-A of the Patents Act. Section 11-A delineates the process of patent grant and publication, effectively resulting in a delay between application and grant. The petitioner argues that this delay deprives the patentee of valuable time within the patent term, warranting a reconsideration of the term calculation methodology.

Judicial Response and Legislative Discretion:

The Hon'ble High Court, however, rejected the petitioner's arguments, emphasizing the statutory nature of patent rights in India. Unlike fundamental rights guaranteed by the Constitution, patent rights are creations of statute, affording the legislature discretion in defining the scope and duration of such rights. The Court reasoned that the legislature, in its wisdom, can selectively confer rights at different stages of the patent process.

The Court upheld the validity of Section 53, affirming the legislature's prerogative to determine the commencement of the patent term from the date of application. It concluded that such a provision does not contravene any statutory provisions and aligns with the legislative intent.

Conclusion:

The validity of patent terms under Indian law remains a subject of legal scrutiny and debate, particularly concerning the calculation methodology prescribed under Section 53. While petitioners may argue for a reconsideration of the term calculation methodology, courts have upheld the legislative discretion in defining patent rights. The decision underscores the need for a nuanced understanding of statutory provisions and legislative intent in interpreting patent law.

The Case Discussed:

Case Title: Gunjan SinhaVs Union of India and another

Judgment/Order Date: 07.05.2024

Case No: WPA No. 8691 of 2023

Neutral Citation:N.A.

Name of Court: Calcutta High Court

Name of Hon'ble Judge: Sabyasachi Bhattacharyya.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

Guala Closures SPA Vs AGI Greenpac Limited

Tamper-Evident Closure with Tear Off Seal case and Implications of the "Squeeze" Argument in Patent Infringement Case

Introduction:

A recent judgment dated 08.05.2024 by the Hon'ble High Court of Delhi, in Commercial Suit No. CS(COMM) 706 of 2021, Guala Closures SPA Vs AGI Greenpac Limited, sheds light on the strategic maneuver known as the "squeeze" argument and its profound significance in patent infringement cases. This landmark case underscores the critical role of claim construction, structural analysis, and strategic dynamics in patent disputes.

Background:

The legal dispute centers around Indian Patent No. 349522, filed by the Plaintiff, which pertains to a "Tamper-Evident Closure with Tear Off Seal." This patent, granted on 19th October 2020, represents a significant innovation in tamper-evident closures, ensuring traceability in the event of tampering—an exclusive feature claimed by the Plaintiff.

The Defendants, involved in manufacturing tamper-proof security caps and closures since 2017, introduced a new range of closures termed 'the Voila Closure.' The Plaintiff alleges that the Voila Closure infringes upon their patented technology, seeking a permanent injunction against the Defendant's activities. The Defendant's defense revolves around asserting distinct structural and functional disparities in their closure system, challenging the Plaintiff's patent claims.

Claim Construction and Dispute Resolution:

Resolution of the dispute necessitated a meticulous analysis of the patent specifications and the structural differences between the Plaintiff's and Defendant's closures. The Court emphasized the paramount importance of determining the actual scope of patent claims in patent litigation. Patentees must strike a delicate balance, asserting claims broad enough to cover infringement while avoiding excessive breadth that may encompass prior art.

The "Squeeze" Argument:

The Defendants deployed the "squeeze" argument, contending that if the Plaintiff's claims were broad enough to cover their activities, they must also encompass prior art or obvious modifications thereof. However, the Court's analysis focused on fundamental dissimilarities between the Plaintiff's and Defendant's products. Crucially, the second tear-off seal in the Plaintiff's closure disconnects the cap from the container, facilitating access to the contents. Conversely, the second tear-off seal in the Defendant's closure separates the cap from the lower sleeve, serving a different purpose altogether.

Court's Decision:

The basic structural difference formed the crux of the Court's decision to decline the interim injunction in favor of the Plaintiff. By delineating the disparate functionalities of the second tear-off seal, the Court underscored the inherent dissimilarity between the patented closure of the Plaintiff and the Defendant's product.

Conclusion:

This case exemplifies the strategic significance of the "squeeze" argument in patent infringement litigation. It highlights the importance of meticulous claim construction and contextual interpretation in resolving disputes within the framework of intellectual property law. Ultimately, the Court's decision reaffirms the principle that patent protection extends only to innovations that are distinctly different from existing technology.

The Case Discussed:

Case Title: Guala Closures SPA Vs AGI Greenpac Limited
Judgment/Order Date: 08.05.2024
Case No: CS(COMM) 706/2021
Neutral Citation:2024:DHC:3715
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singhh.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

Great Galleon Ventures Limited Vs Champa Prema Tandel

Defendant's  Business outside the territorial limit of court in a Trademark Dispute

Introduction:

Jurisdictional challenges often constitute a critical aspect of legal proceedings, particularly in intellectual property (IP) litigation where disputes may span multiple territories. This article delves into a recent case where Defendant No. 1 contested an interim injunction application, raising jurisdictional objections in the context of alleged infringement of IP rights.

Defendant's Argument:

Defendant No. 1's defense primarily hinges on two key contentions. Firstly, they argue that their operations are confined to the territories of Daman and Diu, thereby absolving them of any liability pertaining to alleged infringements in Delhi. They underscore the geographical disparity between Daman and Diu and Delhi, asserting that consumers can readily distinguish between products, thereby minimizing the likelihood of confusion or harm to the plaintiff's business interests.

Jurisdictional Objection:

Central to Defendant No. 1's defense is their jurisdictional objection, asserting that the Delhi courts lack territorial jurisdiction over the matter at hand. They contend that since they have not conducted any sales or maintained a presence in Delhi, the cause of action, premised on alleged sale of counterfeit products within Delhi, lacks a substantive nexus to Defendant No. 1.

Lack of Evidence:

Defendant further contends that the plaintiff's cause of action is deficient in evidentiary support. They assert that the allegations put forth by the plaintiff are unsubstantiated, emphasizing the absence of registered offices for either party in Delhi. Defendant argues that the mere presence of a subordinate office in Delhi does not confer jurisdiction for instituting the suit in Delhi.

Court's Response:

In adjudicating Defendant No. 1's jurisdictional objection, the court invoked legal principles enshrined under Order VII Rule 10 of the Civil Procedure Code (CPC). The court elucidated that its purview at this juncture is confined to determining the admissibility of the plaint, rather than delving into the substantive merits of the plaintiff's claims. Accordingly, the court presumed the averments in the plaint to be true and accurate for the purpose of deciding the jurisdictional challenge.

Plaintiff's Cause of Action:

The court took cognizance of the plaintiff's assertions regarding the sale of counterfeit products within Delhi by certain peddlers. The plaintiff attributed these illicit transactions to Defendant No. 1's products, purportedly distributed through unauthorized channels across various states, posing a significant threat to public health and consumer interests.

Conclusion:

After careful consideration of the plaintiff's pleading and the applicable legal principles, the court concluded that a valid cause of action within its territorial jurisdiction existed for entertaining the suit in Delhi. Consequently, the court rebuffed Defendant No. 1's jurisdictional objection and permitted the suit to proceed in Delhi.

Conclusion and Implications:

This case underscores the nuanced complexities inherent in jurisdictional disputes within IP litigation. While defendants may raise objections based on territorial limitations and evidentiary deficiencies, courts prioritize procedural fairness and adherence to legal standards. Ultimately, the determination of jurisdiction hinges on a holistic assessment of the pleadings, legal principles, and the factual matrix surrounding the alleged infringement.

The Case Discussed:

Case Title: Great Galleon Ventures Limited Vs Champa Prema Tandel

Judgment/Order Date: 01.05.2024

Case No: LPA 257/2024

Neutral Citation:NA

Name of Court: Delhi High Court

Name of Hon'ble Judge: Sanjeev Narula, 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

Rich Products Corporation Vs The Controller Of Patents and another

Legal Implications of Intra-Court Appeal in Patent Opposition Case

Introduction:

The recent legal case involving an intra-court appeal over a patent opposition decision underscores the complexities within intellectual property law, particularly regarding patent examination processes. This analysis delves into the key legal arguments, implications, and the court's ruling in this case.

Background:

The appellant initiated a pre-grant opposition against a patent application, contesting the decision of the Joint Controller of Patents and Designs. Despite initial dismissal by the Controller, the appellant pursued legal recourse, leading to an intra-court appeal following the Single Judge's order.

Role of Pre-Grant Opposition:

Pre-grant opposition serves as a vital mechanism in patent examination, allowing third parties to challenge the grant of patents. It aids the Controller in evaluating applications, ensuring that only deserving inventions receive patent protection.

Legal Framework:

The appellant sought relief under Article 226 of the Indian Constitution, which provides for the extraordinary jurisdiction of the court to remedy jurisdictional errors or manifest injustice. This constitutional provision forms the crux of the appellant's argument in challenging the Controller's decision.

Court's Analysis:

The Division Bench of the High Court of Delhi scrutinized whether the Single Judge erred in not entertaining the writ petition against the Controller's rejection of the pre-grant opposition. Central to their analysis was determining whether the Controller's decision exhibited jurisdictional errors or manifest injustice warranting interference under Article 226.

Ruling:

After careful consideration, the Division Bench concluded that the Controller's decision did not demonstrate any jurisdictional errors or manifest injustice. Therefore, the appeal was dismissed, upholding the Controller's initial ruling on the pre-grant opposition.

Implications:

This case sets a precedent regarding the threshold for judicial intervention in patent opposition matters. It reaffirms the principle that while Article 226 provides a remedy for aggrieved parties, courts will only intervene if there are clear jurisdictional errors or manifest injustice.

Conclusion:

The intra-court appeal in the patent opposition case elucidates the nuanced interplay between administrative decisions, legal recourse, and judicial review within the realm of intellectual property law. It underscores the importance of upholding the integrity of the patent examination process while also ensuring avenues for redressal in cases of procedural irregularities or injustice.

The Case Discussed:

Case Title: Rich Products Corporation Vs The Controller Of Patents and another

Judgment/Order Date: 01.05.2024

Case No: LPA 257/2024

Neutral Citation:2024:DHC: 3451

Name of Court: Delhi High Court

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

Google Inc Vs Controller of Patent

Rejection of Patent Application namely "Managing Instant Messaging Sessions on Multiple Devices"

Introduction:

The patent system plays a crucial role in incentivizing innovation by granting exclusive rights to inventors for their creations. However, not all inventions meet the criteria for patentability. This article delves into a recent case concerning the rejection of a patent application titled 'Managing Instant Messaging Sessions on Multiple Devices' under Section 117A of the Patents Act, 1970 in India.

Background of the Case:

The Appellant filed a patent application on July 13, 2007, before the Indian Patent Office (IPO), seeking protection for their invention related to managing instant messaging sessions on multiple devices. The application claimed priority from a US patent application filed on December 30, 2004. However, the IPO refused the application citing lack of novelty and inventive step, primarily based on the disclosure made in a prior art document referred to as D1.

Grounds for Refusal:

The IPO's decision to refuse the patent application was mainly based on the disclosure found in the prior art document D1, which apparently anticipated the claimed invention. The Appellant contended that a specific feature, i.e., mirroring of data from one device to another simultaneously, was not explicitly disclosed in D1 and thus, their invention was novel and non-obvious. However, the court rejected this argument, asserting that D1 indeed facilitated the transfer of data between devices of the same user, thus achieving a similar objective as the claimed invention.

Analysis of the Court's Decision:

The Hon'ble High Court of Delhi upheld the IPO's decision to reject the patent application, emphasizing that the claimed invention lacked inventive step. The court reasoned that despite the Appellant's assertion of a unique feature, the overall concept of transferring data between devices for instant messaging purposes was evident in the prior art, rendering the claimed invention obvious to a person skilled in the art.

Legal Interpretation:

Section 117A of the Patents Act, 1970 allows for appeals against decisions of the IPO relating to the grant or refusal of patents. However, such appeals must be based on specific grounds, including lack of novelty and inventive step. In this case, the court's determination of lack of inventive step underscores the importance of demonstrating an inventive leap beyond what is already known in the field.

Conclusion:

The rejection of the patent application in this case highlights the stringent criteria applied by patent offices in assessing the patentability of inventions. Despite the Appellant's arguments, the court concluded that the claimed invention did not fulfill the requirements of novelty and inventive step, thus affirming the IPO's decision.

Case Title: Google Inc Vs Controller of Patent
Judgment/Order Date: 02.04.2024
Case No: C.A.(COMM.IPD-PAT) 395/2022
Neutral Citation:2024:DHC: 22581
Name of Court: Delhi High Court
Name of Hon'ble Judge: Prathiba M Singh, 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

Novartis AG Vs Natco Pharma Limited

Implications of Refusal of Divisional Applications on Patent Disputes

Introduction:

The case of Novartis Vs. Natco regarding Indian Patent IN 276026 brings to light the complex legal dynamics surrounding divisional patent applications and their impact on patent disputes. At the heart of the matter lies the question of whether the mere refusal of a divisional application can extinguish the underlying patent. This article aims to delve into the legal nuances of this issue based on the findings of Justice Hari Shankar of the Delhi High Court.

Background:

Indian Patent IN 276026, titled “Novel Pyrimidine Compounds and Compositions as Protein Kinase Inhibitors”, is the subject of a patent infringement suit between Novartis and Natco. The suit patent claims a compound known as Ceritinib. Following a judgment on January 9, 2023, the Delhi High Court granted an interim injunction restraining Natco from exploiting the suit patent pending the suit's disposal.

The crux of Natco's argument for seeking vacation of the interim injunction lies in Novartis's filing of a divisional application, IN 5338/DELNP/2014, concerning some claims in the suit patent. Novartis filed this divisional application on July 26, 2014. However, Novartis later chose not to pursue the application, leading to its refusal by the Controller of Patents under section 15 on February 16, 2023.

Effect of Divisional Application Refusal:

The Hon'ble Court emphasized that the rejection of Novartis's divisional application was not based on its merits but rather on Novartis's decision not to pursue it further. This crucial distinction underscores the principle that a mere refusal of a divisional application does not extinguish the underlying patent.

Non-binding Nature of Controller's Decision:

The court clarified that the decision of the Controller of Patents regarding the divisional application is not binding on the court. Instead, the court independently evaluates the merits of the suit patent, especially concerning its vulnerability to invalidity under section 64 of the Patent Act.

Revisitation of Injunction Order:

The Hon'ble Court outlined the circumstances under which the court may revisit an injunction order. According to the second proviso to 039R4, such revisitation is warranted only if there is a change in circumstances or if the injunction causes hardship to the defendant. In this case, neither condition was met.

Suppression of Facts:

The court highlighted that revisiting the interim injunction order on grounds of suppression of facts is contingent upon whether the disclosure could alter the case's outcome. Since the refusal of the divisional application does not invalidate the suit patent, Natco's argument based on suppression of facts was deemed untenable.

Conclusion:

Thus case of Novartis Vs. Natco underscores the importance of understanding the legal implications of divisional patent applications in patent disputes. The findings of Hon'ble Court provide clarity on the non-extinguishing effect of a divisional application refusal on the underlying patent. This case serves as a precedent for future disputes involving divisional applications and underscores the judiciary's role in independently evaluating patent validity irrespective of administrative decisions.

Case Title: Novartis AG Vs Natco Pharma Limited

Judgment/Order Date: 09.04.2024

Case No: CS Comm 229 of 2019

Neutral Citation:2024:DHC:2640

Name of Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar 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

Sri Lakshminarayana Rice Mill Vs Chandrika Industries

Examination of Acquiescence and Delay in Trademark Infringement Cases

Abstract:

Using a recent appellate case as a primary example, this article explores the legal principles surrounding these issues and their application in real-world scenarios. Through a comprehensive analysis of the facts, legal arguments, and judicial reasoning, this article aims to elucidate the nuanced considerations involved in trademark litigation.

Introduction:

Trademark infringement cases often hinge on various factors, including the timeline of events, the establishment of rights, and the demonstration of unlawful conduct by the defendant. Among the critical elements examined by courts are the concepts of acquiescence and delay. These factors play a pivotal role in shaping the outcome of disputes, as demonstrated in the appellate case discussed herein.

Background of the Case:

The case under scrutiny arises from a dispute between the plaintiff, Sri Lakshminarayan Rice Mills, and the defendant, concerning the unauthorized use of the plaintiff's registered trademark "MOTHER INDIA" by the defendant's similar mark, "MOTHER LAND." The plaintiff, engaged in marketing superfine rice under the brand name "MOTHER INDIA," sought permanent injunction against the defendant's infringement.

Issues at Trial:

The trial court dismissed the plaintiff's suit, primarily citing delay in filing the case and purported acquiescence on the part of the plaintiff regarding the defendant's actions. However, the appellate court scrutinized these findings, leading to a different conclusion.

Analysis of Acquiescence:

Acquiescence in trademark law refers to the passive acceptance or tolerance of a trademark infringement by the rightful owner, thereby implying consent or waiver of their exclusive rights. In the present case, the trial court's inference of acquiescence was based on the plaintiff's statement regarding the longevity of their business since 1999.

However, the appellate court rightly rejected this premise, emphasizing that mere continuation of business activity does not necessarily imply awareness or acceptance of infringement. The plaintiff's failure to promptly challenge the defendant's unauthorized use of their trademark cannot be equated with acquiescence, especially considering the absence of evidence suggesting any deliberate or voluntary relinquishment of their rights.

Conclusion:

In trademark infringement cases, the determination of acquiescence and delay requires a meticulous examination of the facts, legal principles, and equitable considerations. While the mere passage of time may raise questions regarding the diligence of the aggrieved party, it is essential to assess the circumstances holistically and ascertain whether genuine grounds exist for the delay. The appellate court's decision in the case at hand underscores the importance of such nuanced analysis, reaffirming the plaintiff's right to protect their intellectual property against unauthorized use and deceptive imitations.

Case Title: Sri Lakshminarayana Rice Mill Vs Chandrika Industries
Judgment/Order Date: 12.03.2024
Case No: RFA No. 1241 of 2009
Neutral Citation:2024:KHC:10144
Name of Court: Karnataka High Court
Name of Hon'ble Judge: Anant Ramanath Hegde 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