Sonalkumar Sureshrao Solanke Vs The Assistant Controller of Patents

Non-Appealability of Orders under Section 21(1) of the Patents Act 1970

Introduction:

The question arose before the Hon'ble High Court of Bombay regarding the appealability of orders made under Section 21(1) of the Patents Act 1970 in this case. This article aims to dissect the legal intricacies surrounding this issue, focusing on the interplay between Section 21(1) and Section 117A of the Patents Act.

Background:

The Patents Act 1970 serves as the primary legislation governing patents in India. Section 21(1) of the Act empowers the Controller of Patents to raise objections against patent applications if they fail to comply with FER [First Examination Report]. Conversely, Section 117A provides for the mechanism of appeals against certain orders made under the Act, provided the orders are passed under Section 15 of the Patent Act 1970.

Legal Analysis:

The crux of the matter revolves around the interpretation of Section 117A vis-à-vis orders issued under Section 21(1). The contention raised by the respondent, supported by the court's observation, underscores the non-appealability of orders falling under the purview of Section 21(1). This conclusion stems from the explicit language of Section 117A, which does not envisage appeals against such orders.

The court's rationale for upholding the respondent's preliminary objection is multifaceted. Firstly, it underscores the absence of a statutory provision explicitly allowing appeals against Section 21(1) orders. This absence suggests a legislative intent to exclude such orders from the appellate ambit. Secondly, the court highlights the petitioner's failure to address all objections raised in the First Examination Report (FER), signaling non-compliance with procedural requisites.

Non-Appealability of Orders under Section 21(1) of the Patents Act 1970:

The court's ruling carries significant implications for patent applicants and practitioners alike. It reinforces the importance of meticulous compliance with statutory requirements, particularly those delineated in Section 21(1). Failure to adhere to these requirements not only exposes applicants to the risk of adverse orders but also precludes the avenue of appellate recourse, as orders passed under Section 21 (1) of the Patent Act 1970 are non Appealable under Section 117 A of the Patent Act 1970.

Implications:

The decision underscores the need for a comprehensive approach to addressing objections raised during patent examination. Merely cursorily addressing one objection while neglecting others, as exemplified in this case, is unlikely to suffice. Patent applicants must diligently engage with all objections to maximize the prospects of successful application prosecution.

Conclusion:

The non-appealability of orders issued under Section 21(1) of the Patents Act 1970 underscores the need for precision and thoroughness in patent application procedures. The court's adherence to statutory interpretation principles, coupled with a pragmatic assessment of procedural compliance, sets a precedent that resonates within India's patent law landscape. Moving forward, stakeholders must navigate these legal intricacies with diligence and precision to safeguard their patent interests effectively.

The Case Discussed:

Case Title: Sonalkumar Sureshrao Solanke Vs The Assistant Controller of Patents

Judgment/Order Date: 30.04.2024

Case No:Commercial Misc. Petition 8 of 2022

Neutral Citation: 2024:BHC-OS:7309

Name of Court: Bombay High Court

Name of Hon'ble Judge: Firdosh P. Pooniwalia.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

Pinnacle Engines Inc Vs Assistant Controller of Patent and Designs

Patent Rejection and Reversal: A Case Study of "Opposed Piston Engine with Non-Collinear Axes of Translation"

Introduction:

This case pertains to invention titled "Opposed Piston Engine with Non-Collinear Axes of Translation," the rejection of the patent application and subsequent reversal on appeal underscore the complexities of patent law and the importance of legal analysis in patent disputes. This article provides a detailed analysis of the case, examining the grounds for rejection, the appellate court's observations, and the implications for patent applicants and the patent system.

Background:

The appellants sought patent protection for their invention related to opposed piston engines, specifically focusing on the arrangement of pistons with non-collinear axes of translation. The application, filed in 2012, faced substantive objections, primarily concerning the inventive step in light of cited prior art documents. The Patent Office rejected the application, citing lack of inventive step in view of the cited documents.

However, the appellants appealed the decision to the Hon'ble High Court, challenging the rejection and presenting arguments to support the patentability of their invention. The court's analysis and subsequent decision offer valuable insights into the interpretation and application of patent law principles.

Court's Analysis:

The Hon'ble High Court meticulously reviewed the grounds for rejection and evaluated the arguments presented by the appellants. The court noted that the cited prior art documents did not explicitly teach or suggest the features claimed in the invention. Crucially, the court observed that there was no motivation or suggestion in the cited documents that would render the claimed features obvious to a person skilled in the art.

Furthermore, the court considered the amendments made to the patent claims during the appellate process. It found that the amended claims were within the scope of the complete specification of the claimed invention. As per Section 59 of the Patents Act, the court held that such amendments were permissible, especially when the features were already disclosed as an option in the complete specification.

Outcome and Implications:

In light of its analysis, the Hon'ble High Court set aside the impugned order rejecting the patent application. The court directed the controller of patents to reconsider the application and dispose of it within a specified timeframe.

The reversal of the rejection underscores the importance of a thorough legal analysis and strategic approach in patent disputes. The case highlights the significance of clear and comprehensive patent specifications, as well as the potential for amendments to strengthen patent claims during the appellate process.

Conclusion:

The case of the "Opposed Piston Engine with Non-Collinear Axes of Translation" patent application offers valuable insights into the intricacies of patent law and the patent application process. It emphasizes the need for inventors to navigate the complexities of patent examination and appeals with a nuanced understanding of legal principles and strategic considerations.

The Case Discussed:

Case Title: Pinnacle Engines Inc Vs Assistant Controller of Patent and Designs
Judgment/Order Date: 30.04.2024
Case No:CMA(PT)/17/2023
Neutral Citation:2024:MHC:1951
Name of Court: Madras High Court
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

Relaxo Footwears Limited Vs XS Brands Consultancy Private Limited and another

Third-Party Trademark Agreements and Their Impact on Interim Injunctions

Introduction:

In this case before the Hon'ble High Court of Delhi, the refusal to grant an interim injunction shed light on the significance of third-party trademark existence agreements. This article provides an in-depth analysis of the legal implications stemming from such agreements in trademark disputes, drawing insights from the aforementioned case.

Background:

The plaintiff, a prominent player in the footwear industry, initiated legal proceedings seeking a permanent injunction against the defendants, alleging trademark infringement. The crux of the plaintiff's argument rested on the deceptive similarity between their 'X' mark, derived from the 'SPARX' logo, and the defendants' 'X' mark used for footwear products. Despite the apparent similarity and identical goods, the court declined to grant the interim injunction, citing various grounds, including the existence of third-party trademark agreements.

Court's Analysis:

The court's decision to deny the interim injunction was multifaceted, with a significant emphasis on the presence of third-party trademark existence agreements. Firstly, the court observed that both the plaintiff's and defendants' 'X' marks were used in conjunction with their respective trademarks, namely 'SPARX' and 'HRX.' This usage indicated that consumers primarily associated the products with the overarching brand rather than the isolated 'X' mark, mitigating the likelihood of confusion.

Furthermore, the court scrutinized the plaintiff's trademark registration and noted the presence of multiple 'X' marks on the Trademarks Register, including device marks. Of particular relevance was a previous settlement entered into by the plaintiff with Soccer International Pvt. Ltd., involving co-existence agreements for a similar device mark. The court reasoned that the plaintiff's acceptance of co-existence with other 'X' marks in the market undermined their claim of exclusive rights over the 'X' mark.

Legal Implications:

The case underscores the significance of third-party trademark existence agreements in trademark disputes, particularly concerning interim injunctions. Trademark law aims to strike a delicate balance between protecting intellectual property rights and fostering fair competition. In this context, prior agreements between parties and the acknowledgment of co-existing trademarks play a pivotal role in assessing the strength of a claimant's case for injunctive relief.

Moreover, the court's analysis highlights the evolving nature of trademark rights and the need for a nuanced understanding of co-existence arrangements. Trademark holders must recognize the limitations of their exclusivity claims in the presence of third-party agreements and the co-existence of similar marks in the market. Failure to acknowledge such agreements may weaken a claimant's position and undermine the prospects of obtaining interim relief.

Conclusion:

The denial of the interim injunction in the trademark dispute underscores the importance of considering third-party trademark existence agreements in legal proceedings. Parties involved in trademark disputes must diligently examine prior agreements and the landscape of co-existing marks to assess the strength of their claims. Ultimately, a comprehensive understanding of third-party agreements is essential for navigating trademark disputes and seeking injunctive relief effectively.

The Case Discussed:

Case Title: Relaxo Footwears Limited Vs XS Brands Consultancy Private Limited and another

Judgment/Order Date: 03.05.2024

Case No: CS Comm 917 of 2018

Neutral Citation:2024:DHC:3971

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

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