Saurav Chaudhary Vs Union of India

A party can not be allowed to suffer on account of negligence of Patent Agent

Introduction:

In a recent writ petition, the petitioner challenged the abandonment of their patent application for a "Blind-Stitch Sewing Machine and Method of Blind Stitching." The patent application, managed by the firm "Delhi Intellectual Property LLP," was deemed abandoned due to a failure to respond to the First Examination Report (FER). This case highlights the critical responsibilities of patent agents and firms in managing patent applications and ensuring proper communication with their clients.

Case Background:

The petitioner filed their patent application through Delhi Intellectual Property LLP, represented by Mr. Chaklan. Despite numerous follow-ups on various dates in 2022 and early 2023, the petitioner did not receive any response from the firm regarding the status of their application. During this period, the petitioner discovered that their application was deemed abandoned due to the non-filing of a response to the FER.

Legal Responsibilities of Patent Agents:

A crucial aspect of this case is the failure of the patent firm to communicate the issuance of the FER to the petitioner. The FER is issued after the Request for Examination (RFE) and contains detailed objections related to novelty, inventive step, and patentability. The patent agent’s responsibility is to inform the applicant about the FER and to ensure a timely response is filed.

In this case, the firm failed to inform the petitioner about the FER. There is no evidence on record that the firm communicated the issuance of the FER. The patent agent’s claim of having discussed it over a telephonic conversation is insufficient, as there is no documented proof of such communication.

Court’s Observation:

The court observed that legal professionals' negligence should not penalize their clients. Citing the precedent from Rafiq v. Munshilal (1981) 2 SCC 788, the court emphasized that a party should not suffer for the inaction, deliberate omission, or misdemeanor of their agent. The court recognized that the firm did not show diligence in managing the petitioner’s patent application and failed to fulfill its obligations.

Court’s Decision:

Given the circumstances, the court decided that the revival request filed on January 28, 2023, should be entertained by the Patent Office within the extended period of three months. Consequently, the abandonment order was set aside, and the necessary updates were to be made on the CGPDTM website within two weeks.

Conclusion:

This case underscores the importance of proper communication and diligence by patent agents and firms. The failure to inform the petitioner about the FER led to the abandonment of the patent application, causing undue stress and potential loss of intellectual property rights for the petitioner. The court’s decision to set aside the abandonment order reflects the principle that clients should not suffer due to the negligence of their legal representatives.

Author’s Note:

This case serves as a crucial reminder for patent agents and firms to maintain clear and documented communication with their clients. It also highlights the judiciary's role in ensuring that legal professionals’ negligence does not unjustly impact their clients. Going forward, it is imperative for legal representatives to adhere strictly to their responsibilities and for clients to stay vigilant about the progress of their applications. The protection of intellectual property rights hinges on the meticulous execution of procedural duties by both parties involved.

Case Citation: Saurav Chaudhary Vs Union of India: 04.07.2024: W.P.(C)-IPD 9/2023:2024:DHC:4946:Delhi High Court: Prathiba M Singh. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
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Nayan India Science and Technology pvt. Ltd. Vs Tushar Mourya

Breach of confidentiality and Enforceability of Contracts of Personal Service

Introduction:

The enforceability of contracts of personal service has long been a contentious issue in legal discourse. The Specific Relief Act, 1963 (hereinafter referred to as "the Act"), particularly Section 14, provides explicit provisions about the non-enforceability of such contracts. This article examines a recent case involving an employee (defendant no.1) and his former employer (the plaintiff), focusing on the plaintiff's request for a perpetual and mandatory injunction to prevent the misuse of confidential and proprietary information and to enforce specific performance related to personal services.

Case Overview:

In the present case, the plaintiff sought to prevent defendant no.1, a former employee, from using or disclosing confidential and proprietary information for personal gain. Defendant no.1, who was employed as a software engineer specializing in AI, had resigned from his position after a notice period of 90 days. The plaintiff contended that the defendant, as a trustee of the work product developed during his employment, was obliged to transfer all relevant knowledge to the company.

The plaintiff argued that the rapid development of AI necessitated urgent relief, invoking Section 8 of the Act to assert that monetary compensation would be inadequate without the transfer of the work product knowledge. The defendant, however, claimed to have already fulfilled all exit formalities and transferred necessary knowledge, further arguing that the plaintiff's request was essentially an attempt to enforce a contract of personal service, which is not permissible under Section 14 of the Act.

Legal Framework:

Section 8 of the Specific Relief Act, 1963:

This section states that the court shall presume that monetary compensation is insufficient where the subject matter of the contract is of such a nature that it cannot be readily procured.

Section 14 of the Specific Relief Act, 1963:

This section explicitly lists contracts that cannot be specifically enforced, including:

- Contracts dependent on personal qualifications or volition.

- Contracts that are in their nature determinable.

- Contracts for the performance of continuous duties which the court cannot supervise.

- Contracts which, by their nature, are not capable of specific performance.

Court's Analysis and Decision:

The court refused to grant the relief sought by the plaintiff. It emphasized that the defendant had already cooperated and transferred all pertinent knowledge to the current employees of the plaintiff-company. The court noted that enforcing a mandatory injunction requiring the defendant to perform additional tasks would essentially compel specific performance of a contract of personal service, which is barred under Section 14 of the Act.

The plaintiff's assertion that the request did not involve rejoining the service but merely a visit for knowledge transfer was also rejected. The court held that no employee could be compelled to engage with another party against their will, underscoring that such compulsion is prohibited by Section 14(c) of the Act.

Implications and Conclusion:

This case reaffirms the principle that contracts of personal service cannot be specifically enforced, aligning with the legislative intent of the Specific Relief Act, 1963. The court's decision underscores the importance of respecting the personal volition and qualifications involved in such contracts, highlighting the limitations on judicial intervention in matters where personal service is concerned.

Author's Note:

The prohibition against the specific enforcement of personal service contracts is rooted in the need to preserve individual freedom and the impracticality of supervising personal duties. This case serves as a significant reminder for employers to structure their employment agreements and proprietary information protections within the legal framework that recognizes these limitations. Ensuring comprehensive exit procedures and clear terms regarding knowledge transfer can mitigate potential disputes, avoiding reliance on judicial enforcement which may not always be feasible.

Case Citation: Nayan India Science and Technology pvt. Ltd. Vs Tushar Mourya: 08.07.2024: CS Comm 526 of,2024:2024:DHC:5005:Delhi High Court: Mukta Gupta. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Union Of India Vs Subedar Devassy

The Scope of Contempt Proceedings and reassessment of order

The appeal under consideration challenges an order issued by a single judge of the Madhya Pradesh High Court in the context of contempt proceedings. The case originated from a writ petition (W.P. No.4511/1996) filed by the respondent, which was resolved with specific court-mandated directions. Alleging non-compliance with these directions, the respondent initiated contempt proceedings against the appellants.

Background of the Case:

The writ petition filed by the respondent sought redress for grievances that required specific actions from the appellants. The court, after deliberation, provided clear directives intended to resolve the matter. However, the respondent later claimed that these directives were not followed, prompting the filing of contempt proceedings.

Contempt Proceedings and the Court's Rationale:

In the contempt proceedings, the appellants presented their explanation for the alleged non-compliance. The learned judge carefully reviewed the appellants' actions and found that they had, in fact, complied with the court's directives. The judge noted that the actions of the appellants were neither contemptuous nor disrespectful, leading to the dismissal of the contempt proceedings. It was confirmed that the respondent had been promoted as directed and had subsequently retired, demonstrating the fulfillment of the court's order.

Judicial Emphasis on Compliance, Not Reassessment

The court emphasized a fundamental aspect of contempt proceedings: the focus is on whether the final decision has been adhered to, not on reassessing the correctness of that decision. This principle is crucial for maintaining the authority of final judicial decisions and preventing endless litigation over settled matters. The court referenced the precedent set in K.G. Derasari v. Union of India, [2001] 10 SCC 496, which clearly establishes that contempt courts should not re-evaluate the correctness of the original decision.

Implications of the Court's Decision:

The court's decision to dismiss the contempt proceedings has several important implications:

Respect for Judicial Finality:

By focusing on compliance rather than reassessment, the court reinforces the principle that final judicial decisions must be respected and followed.

Clarity in Legal Procedures:

The decision underscores the importance of clarity in legal procedures, ensuring that parties understand the distinction between appealing a decision and initiating contempt proceedings.

Precedent for Future Cases:

The court's reliance on established precedent provides a clear guideline for future cases, emphasizing the limited scope of contempt proceedings.

Conclusion

It highlights a critical aspect of the judicial process in contempt proceedings: ensuring compliance with final court decisions. The court's emphasis on this principle maintains the integrity of the judicial system, ensuring that directives are respected and enforced without unnecessary re-litigation.

This case reaffirms the doctrine that contempt courts are not venues for reassessing the merits of original decisions but are instead focused on ensuring those decisions are followed. The precedent set in K.G. Derasari v. Union of India serves as a guiding principle, emphasizing that the path to challenging a judicial order lies in appealing to a higher court, not through contempt proceedings.

Case Citation: Union Of India Vs Subedar Devassy : 10.01.2006: Appeal (civil) 1066 of 2000 :Supreme Court of India: Arijit Pasayat and Tarun Chatterjee. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

Email: ajayamitabhsuman@gmail.com

Mob No.:+91-9990389539

Glaxo Group Vs Rajiv Mukul

The Executing Court Cannot Go Beyond the Decree

Introduction:

The execution of court decrees is a critical phase in the judicial process, ensuring that the rights affirmed by a judgment are effectively realized. However, an issue arises when there is a contention that the executing court is required to interpret the decree's terms. The principle that an executing court cannot go beyond the decree is central to maintaining judicial integrity and consistency. This article explores a recent case where the Delhi High Court reiterated this doctrine while addressing trademark infringement issues.

Case Background:

The case under discussion involves a petition seeking the execution of a decree dated 1st December 2017, passed by the Delhi High Court in CS (COMM) 1620/2016. The decree was based on paragraph 56(a) and (b) of the plaint and a joint compromise application. The decree-holders, in this case, claimed that the judgment-debtors were infringing their trademark 'BETNESOL' by using a similar mark 'BETNEVIN' with analogous packaging.

Contentions of Judgment-Debtors:

The judgment-debtors contended that the executing court was overstepping its jurisdiction by determining whether their product infringed the decree-holders' trademark. They argued that this determination involved an application of mind beyond the decree's explicit terms, thus violating the principle that the executing court cannot go beyond the decree. They cited the precedent set in Snapdeal (P) Ltd. v. Godaddycom LLC, (2022) 4 HCC (Del) 335, to support their position.

Court’s Decision:

The Delhi High Court restrained the judgment-debtors from using the mark 'BETNEVIN' and any product and packaging similar to 'BETNESOL'. In doing so, the court reaffirmed the established legal principle that an executing court has the authority to interpret the decree to ascertain if the judgment-debtors' actions infringe the decree-holders' rights. The court underscored that the executing court's role is to enforce the decree effectively, which may involve determining whether specific actions fall within the scope of the decree's prohibitions.

Legal Analysis:

Principle of Executing Court’s Limitation:

The core legal principle is that an executing court cannot go beyond the decree. This means the court's role is to implement the decree's terms without re-evaluating the merits of the case or altering the decree. However, this principle does not prevent the court from interpreting the decree to ensure its effective enforcement. As stated by the Hon'ble Supreme Court, even if a decree’s terms are contrary to law, the executing court is bound to execute it as passed, without questioning its validity or legality.

Interpretation of Decrees:

In the present case, the decree included an injunction against trademark infringement. For the executing court to enforce this, it needed to determine whether 'BETNEVIN' and its packaging infringed 'BETNESOL'. This determination was necessary to enforce the decree's terms effectively, rather than an overreach of the court’s authority. The court’s task was to give practical effect to the decree by interpreting its scope concerning the alleged infringing actions of the judgment-debtors.

Precedent and Judicial Reasoning:

The court's reliance on precedents, including the Snapdeal case, highlights a consistent judicial approach. In Snapdeal, the court emphasized the need for the executing court to interpret the decree's terms to enforce it effectively. The Delhi High Court applied similar reasoning in the present case, reinforcing that the executing court’s mandate includes making factual determinations necessary to implement the decree.

Conclusion:

The ruling in this case underscores the delicate balance that executing courts must maintain between enforcing decrees and not overstepping their boundaries. While executing courts are limited to the decree's terms, they must interpret these terms to give effect to the decree. This ensures that the rights affirmed by the judgment are realized in practice.

Author’s Note:

This case serves as a crucial reminder of the executing court’s role in the judicial system. It highlights the importance of understanding the boundaries within which executing courts operate while ensuring that justice is effectively served.

Case Citation: Glaxo Group Vs Rajiv Mukul: 08.05.2024: EX.P. 9/2022::Delhi High Court: Jasmeet Singh. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
Mob No.:+91-9990389539

Dr.Vandana Parvez Vs Controller of Patent

Withdrawn Patent Application Cannot Be Used as Prior Art

Introduction:

Criteria for patentability, including novelty and inventive step, often lead to legal disputes. One such instance is the case where withdrawn patent applications are considered as prior art, which can complicate the patent granting process. This article delves into a recent legal case where the applicants contested the rejection of their patent application, arguing against the use of their own withdrawn application as prior art.

Case Background:

The appellants, aggrieved by the rejection of their patent application titled “Method and System for Providing Effective Generation and Delivery of Interactive Online Digital Content,” appealed against the decision of the Patent Controller. The appellants, who initially promoted a company named “Gemini Associates,” had filed a patent application on behalf of the company in 2019, which they subsequently withdrew on 10th March 2020. They later re-filed the same claim in their individual capacities, presenting ten claims in their new application—two independent and eight dependent claims.

Grounds for Rejection:

In the First Examination Report (FER), the Controller objected to the patentability of the invention on grounds of lack of novelty and inventive step as defined under Sections 2(1)(l) and 2(1)(ja) of the Patents Act, respectively. The rejection was supported by two prior arts, designated as D1 and D2. Crucially, D1 was identified as the appellants’ own earlier patent application, which had been withdrawn.

Appellants' Argument:

The appellants contended that the prior art cited as D1 was their own application filed in 2019, which was officially withdrawn on 10th March 2020. They argued that the withdrawn application should not have been considered prior art because it was not available to the public and thus did not contribute to the state of the art. The Controller, however, passed an order on 19th October 2022, rejecting their application, citing Section 13(1)(b) of the Patents Act and asserting that the invention was identical to the subject matter of D1.

Legal Analysis and Court’s Observations:

The court allowed the appeal, emphasizing that the Controller had failed to recognize the critical aspect that D1, the prior art relied upon, was a withdrawn application by the appellants themselves. According to Sections 11A and 11B of the Patents Act, along with Rule 24 of the Patents Rules, a patent application can be withdrawn within 15 months from the filing or priority date, provided the request for withdrawal is submitted three months before the 18-month publication period.

The court noted that the old application, filed on 14th January 2019 and withdrawn on 10th March 2020, was within the permissible withdrawal period. Consequently, the withdrawn application should not have been considered by the respondent as prior art. The court underscored that using a withdrawn application as prior art violates the provisions of the Patents Act.

Implications of the Decision:

This decision reaffirms the legal position that a withdrawn patent application does not constitute prior art. The court's ruling is significant as it ensures that inventors are not unfairly penalized for withdrawing applications and re-filing them. The judgment emphasizes the importance of adhering to the procedural aspects of patent law, ensuring that the rights of inventors are protected and that the integrity of the patent system is maintained.

Conclusion:

The ruling in favor of the appellants is a noteworthy reminder of the nuances in patent law, particularly regarding the treatment of withdrawn applications. It highlights the importance of procedural compliance and the protection of inventors’ rights. By ensuring that withdrawn applications are not used against inventors as prior art, the court has upheld the principles of fairness and innovation that underpin the patent system.

Case Citation: Dr.Vandana Parvez Vs Controller of Patent: 23.02.2024: CMA(PT) No.33 of 2023::Mad High Court: N Seshasayee. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
Mob No.:+91-9990389539

Seiwa Kasei Co. Ltd Vs Registrar Of Trade Marks

Placement of Order on Website by Registrar of Trademark Does Not Constitute Communication of order

In the realm of intellectual property law, the proper communication of decisions by authorities is crucial to ensure due process and fair treatment of applicants. The recent case involving the petitioner seeking the setting aside of impugned orders dated 25th November 2021 and 18th May 2022 in Application No. IRDI-4998621 highlights the significance of adhering to procedural requirements in the communication of decisions. This case underscores the principle that merely placing an order on a website does not constitute effective communication to the affected party, as mandated by the applicable rules and legal precedents.

Background of the Case:

The petitioner's trademark application was provisionally refused by the respondent on 10th June 2021, on the grounds of non-distinctiveness under Section 9(1)(a) of the Trade Marks Act, 1999. Following this provisional refusal, the petitioner sought a review of the order on 24th December 2021. This review application was summarily dismissed by the Senior Examiner through a non-speaking order dated 18th May 2022.

Issue of Communication:

A critical issue arose when the review order dated 18th May 2022 was merely uploaded on the Registrar’s website without being communicated directly to the petitioner as required under Rule 111 of the Trademarks Rules, 2017. The petitioner argued that they only became aware of the review order on 18th January 2024 and subsequently filed the petition expeditiously on 24th January 2024, thus there was no delay in filing.

Court’s Observations:

The court allowed the petition, observing that there was no delay in filing, particularly considering Rule 111 of the Trademarks Rules, 2017. This rule expressly mandates the communication of the decision by the Registrar to the affected party. The court referenced the Division Bench decision in the case of Institute of Cost Accountants of India vs. Registrar of Trade Marks and Anr., 2013 (3) Mh.L.J. 418, which held that mere placement of a notice on the website does not satisfy the requirement of communication under the Rules.

Legal Precedents and Rules:

In the Institute of Cost Accountants case, the court held that the Registrar of Trademarks had failed to indicate any obligation for the petitioner to inspect the website daily. There was no rule or practice that legally bound the petitioner to take notice of postings on the Registrar’s website. Thus, the petitioner could not be imputed with the knowledge of the decision simply because it was posted online.

Similarly, in the present case, the respondent did not follow the required procedure to directly communicate the decision to the petitioner. This failure to comply with Rule 111 of the Trademarks Rules, 2017, rendered the mere online posting of the order insufficient for legal purposes.

Implications of Non-Communication:

The failure to communicate decisions properly has significant implications. It deprives the affected party of the opportunity to respond or take appropriate legal action within the stipulated time. This procedural lapse can lead to the setting aside of decisions, as seen in the present case, where the court found no delay in filing the petition due to the lack of proper communication.

Author’s Ending Note:

This case reinforces the necessity for authorities to adhere strictly to procedural rules when communicating decisions. The principle that merely placing an order on a website does not constitute effective communication protects applicants from procedural unfairness and ensures that they are duly informed of decisions affecting their rights. It is a reminder that proper and direct communication is a fundamental aspect of administrative fairness and legal compliance in intellectual property law.

Conclusion:

The court’s decision to allow the petition highlights the importance of following established procedures for communication. This ensures that all parties are fairly treated and have the opportunity to respond appropriately to decisions that impact their legal rights. The adherence to Rule 111 of the Trademarks Rules, 2017, and similar provisions is essential for maintaining the integrity and fairness of the legal process in trademark registration and other administrative proceedings.

Case Citation: Seiwa Kasei Co. Ltd Vs Registrar Of Trade Marks: 14.06.2024: Civil Misc.Petition 6676 of 2024:2024:BHC:-OS-8730:Bombay High Court: R.I.Chagla. H.J.

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
Email: ajayamitabhsuman@gmail.com
Mob No.:+91-9990389539