Aloys Wobben and Ors. vs. Yogesh Mehra and Ors.

Avaialability of Simultaneous remedy of Counter Claim and Patent Revocation

Introduction:

This landmark case delves into the intricacies of patent law, particularly concerning the interplay between revocation petitions under Section 64(1) of the Patents Act, 1970, and counter-claims in infringement suits. The decision clarifies whether remedies for patent revocation can be pursued simultaneously in different forums.

Background:

Dr. Aloys Wobben, a renowned inventor in the field of wind turbine generators, held numerous patents, including about 100 in India. He operated through Enercon GmbH, which had a joint venture in India, Enercon India Limited, with Yogesh Mehra and Ajay Mehra. Disputes arose following the termination of licensing agreements, leading to multiple legal proceedings over patent infringement and revocation.

Brief Facts of the Case:

Formation of Joint Venture:

Enercon India Limited was formed in 1994 as a joint venture between Enercon GmbH and the Mehra brothers.

Termination of Licensing Agreements:

The intellectual property license agreements were terminated in 2008 due to alleged non-compliance by Enercon India Limited.

Revocation Petitions:

Enercon India Limited filed 19 revocation petitions before the Intellectual Property Appellate Board (IPAB) challenging patents held by Dr. Aloys Wobben.

Infringement Suits and Counter-Claims:

Dr. Wobben filed multiple patent infringement suits in response, leading to counter-claims by the defendants seeking patent revocation.

Parallel Proceedings:

The crux of the dispute revolved around whether simultaneous proceedings for patent revocation in IPAB and as counter-claims in the High Court were permissible.

Issues Involved:

Can a defendant in a patent infringement suit, having filed a counter-claim for revocation, also pursue a revocation petition before the IPAB?

Does the Patents Act, 1970, allow for simultaneous remedies under Section 64(1) for revocation of patents?

What forum has jurisdiction when multiple proceedings for revocation are initiated?

Submissions of the Parties:

Appellants (Dr. Aloys Wobben):

Argued that the Patents Act does not permit simultaneous remedies for patent revocation.

Asserted that once a counter-claim is filed, jurisdiction rests solely with the High Court.

Respondents (Yogesh Mehra and Ors.):

Contended that remedies under Section 64(1) are independent and can be pursued concurrently.

Argued for the continuation of revocation petitions before the IPAB.

Reasoning and Analysis by the Court:

Interpretation of Section 64(1):

The Court emphasized that the word "or" in Section 64(1) is disjunctive, prohibiting simultaneous remedies for patent revocation.

A party must choose between filing a revocation petition or a counter-claim.

Jurisdictional Hierarchy:

Counter-claims, being part of infringement suits, fall under the jurisdiction of the High Court.

Allowing parallel proceedings would create inconsistencies and undermine judicial efficiency.

Decision:

The Supreme Court held that once a counter-claim for revocation is filed in response to an infringement suit, the defendant cannot pursue a revocation petition before the IPAB.

The revocation petition filed before the counter-claim can proceed, but the counter-claim must be dismissed.

The Court set aside the impugned order and disposed of the appeal.

Conclusion:

This judgment reinforces the principle of avoiding multiplicity of proceedings in patent disputes. It clarifies that a defendant must elect a single remedy under Section 64(1) of the Patents Act, thereby streamlining the adjudication of patent revocation and infringement issues.

Case Title:Aloys Wobben and Ors. Vs. Yogesh Mehra and Ors.

Date of Order:June 2, 2014

Case Number:Civil Appeal No. 6718 of 2013

Citation:MANU/SC/0519/2014: AIR 2014 SC 2210: (2014) 15 SCC 360

Court:Supreme Court of India

Judges:Hon’ble Justice A.K. Patnaik and Hon’ble Justice J.S. Khehar

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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.

Novex Communications Pvt. Ltd. Vs. Trade Wings Hotels Limited

Introduction:

The case revolves around the rights of copyright owners and the limitations imposed on entities managing intellectual property under the Copyright Act, 1957, as amended. Novex Communications Pvt. Ltd. (the plaintiff) sought an injunction to restrain the defendant from unauthorized public performance and communication of sound recordings managed by Novex, challenging the interpretation of Section 33(1) concerning copyright societies.

Background:

Novex Communications Pvt. Ltd. and Phonographic Performance Ltd. (PPL) are entities managing intellectual property rights, including the licensing of sound recordings for public performances. They have acquired rights through assignments from original copyright owners. The defendants in these cases allegedly infringed these rights by publicly performing sound recordings without obtaining the requisite licenses.

A preliminary issue arose: whether Novex and PPL, not registered as copyright societies under Section 33(1) of the Copyright Act, could legally grant licenses or seek relief for infringement.

Plaintiff’s Position:

Novex owns exclusive rights to sound recordings, acquired through assignment agreements with various music labels. The plaintiff claims infringement by the defendant, who failed to obtain proper licensing for public performance.

Defendant’s Argument:

The defendant contended that Novex, not being a registered copyright society under Section 33(1), was prohibited from carrying on the business of licensing and was therefore not entitled to seek relief.

Issues Involved:

Can Novex and PPL issue licenses and claim infringement relief without being registered as copyright societies under Section 33(1) of the Copyright Act?

Does the assignment of rights to Novex confer the status of ownership or only administrative rights subject to Section 33 restrictions?

Plaintiff’s Submissions:

Novex argued that as the assignee of copyrights, it held ownership rights equivalent to those of the original copyright owner, as per Sections 18 and 19 of the Act.

Section 30 allowed Novex to grant licenses for public performance in its capacity as the owner’s agent or assignee.

The provisions of Chapter VII, specifically Section 33(1), did not limit the rights of copyright owners or their assignees but regulated collective management organizations.

Defendant’s Submissions:

The defendant claimed that Novex, not being a registered copyright society, could not engage in the licensing business or seek legal remedies under Section 33(1).

They argued that Novex’s primary business was licensing, falling squarely within the ambit of Section 33(1), which prohibits such activities without registration.

Reasoning and Analysis by the Judge:

1. Rights of Copyright Owners and Assignees:

The court analyzed Section 18 and Section 30 of the Copyright Act, which confer ownership and licensing rights to assignees. It was held that an assignee is treated as an owner, and their rights are equivalent to those of the original copyright owner.

2. Interpretation of Section 33(1):

The court clarified that Section 33(1) regulates entities acting as copyright societies but does not curtail the rights of individual copyright owners or their assignees. The section ensures accountability for organizations managing works on behalf of multiple copyright holders.

3. Ownership vs. Collective Administration:

The court distinguished between owners managing their copyrights and copyright societies operating under collective mandates. It held that owners or assignees do not need to register as copyright societies to issue licenses for their works.

4. Precedents Considered:

The court referred to: Entertainment Network India Ltd. vs. Super Cassette Industries Ltd and Leopold Café Vs. Novex Communications Pvt. Ltd.

These cases emphasized that copyright societies are administrative entities, whereas owners retain individual rights.

5. Balancing Interests:

The court acknowledged the need to protect authors' and owners' rights while ensuring public access to copyrighted works through fair licensing mechanisms.

Decision:

The court held that Novex, as the assignee of copyrights, had the right to issue licenses and enforce its copyrights without registering as a copyright society under Section 33(1). The defendants were directed to refrain from unauthorized use of Novex’s copyrighted works and obtain the necessary licenses.

Conclusion:

This judgment reaffirmed the distinction between the rights of copyright owners/assignees and the regulatory framework for copyright societies. It clarified that Section 33(1) does not undermine the statutory rights of copyright owners or assignees to manage and license their works. By upholding Novex's claims, the court emphasized the balance between safeguarding intellectual property and ensuring public interest.

Case Title: Novex Communications Pvt Ltd. Vs Trade Wings Hotels Limited

Date of Judgement: 24.01.2024: Commercial IP Suit No. 363 of 2019: 2024: BHC-OS-1428: Bombay High Court :R.I.Chagla: HJ

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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.

Entertainment Network India Limited Vs Miss Malini Entertainment Pvt Ltd

Grant of Interim Injunction for Copyright Infringement and Unauthorized Use of Media Content"

Introduction

The plaintiff, Entertainment Network India Limited (ENIL), sought an interim injunction against the defendant, Miss Malini Entertainment Pvt. Ltd., for unauthorized use and infringement of its intellectual property rights. ENIL claimed exclusive ownership of the copyright and other rights related to its show "What Women Want" and alleged that the defendant violated terms of agreement by using media content without authorization.

Background

The dispute arises from the alleged unauthorized use of copyrighted material by the defendant. The plaintiff is a prominent radio broadcaster and media producer in India, owning various intellectual properties, including the show "What Women Want." The defendant, Miss Malini Entertainment Pvt. Ltd., operates social media platforms disseminating entertainment content.

In September 2024, the defendant was engaged by the plaintiff to conduct and promote an interview featuring a celebrity from the show. However, the defendant published the interview in violation of the agreed terms, leading to this legal action.

Brief Facts of the Case

1. The plaintiff owns and produces the show "What Women Want," hosted by Kareena Kapoor Khan, and retains exclusive rights to its content.
2. An agreement between the plaintiff and defendant outlined the terms for conducting and publishing an interview, subject to plaintiff’s prior approval.
3. The defendant violated these terms by publishing the interview on its platforms, with its own logo and branding, without approval.
4. The plaintiff issued a cease-and-desist notice, but the defendant continued publishing the content, leading to significant reputational and financial harm to the plaintiff.
5. The plaintiff sought a permanent and dynamic injunction to restrain the defendants from further infringing its rights.

Issues Involved

1. Whether the defendant’s actions constituted copyright infringement under the Indian Copyright Act, 1957.
2. Whether the plaintiff is entitled to an interim injunction restraining the defendant from unauthorized use of the content.
3. Whether the defendant's branding on the interview content misrepresents the ownership of the work.

Plaintiff's Submissions:

1. The plaintiff argued that it is the original and exclusive owner of all rights related to the show and its associated content.
2. The defendant acted in bad faith by altering and publishing the interview with unauthorized branding.
3. Unauthorized dissemination of the content caused irreparable harm to the plaintiff’s commercial interests.
4. The plaintiff presented a prima facie case for infringement and sought immediate injunction to prevent further misuse.

Reasoning and Analysis by the Judge

1. Ownership and Infringement:

   • The court found that the plaintiff established prima facie ownership of the copyrighted content.
   • The defendant's unauthorized branding and dissemination of the interview infringed the plaintiff’s exclusive rights under the Copyright Act.

Decision

1. The court granted an interim injunction restraining the defendant from hosting, uploading, or distributing the plaintiff’s copyrighted content, including the interview, on any platform.
2. The defendant was directed to remove all infringing content from its platforms within 48 hours of the order.
3. In case of non-compliance by the defendant, intermediary platforms (YouTube and Instagram) were instructed to take down the content.

Conclusion

The order reinforced the principle of protecting intellectual property rights and maintaining the integrity of contractual agreements. By granting the injunction, the court ensured that the plaintiff’s rights were safeguarded against unauthorized use and misrepresentation. This case serves as a precedent for stringent enforcement of intellectual property laws in India’s media and entertainment industry.

Case Citation: Entertainment Network India Limited Vs Miss Malini Entertainment Pvt Ltd: 20.12.2024: CS(COMM) 1141/2024: Delhi High Court :Mini Pushkarna: HJ

Written by: Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney] United & United
Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Galatea Ltd. Vs. Diyora and Bhanderi Corporation

Essential Feature of Patent and its role in Patent Infringement

Case Title: Galatea Ltd. vs. Diyora and Bhanderi Corporation

Date of Order: March 26, 2018

Case Number: Civil Suit No. 2 of 2017

Court:High Court of Gujarat, Ahmedabad

Judge:Hon’ble Mr. Justice R.M. Chhaya

Introduction

This case involves a dispute over patent infringement concerning a technology for detecting inclusions in gemstones. Galatea Ltd., an Israeli company, alleges that the defendants, Diyora and Bhanderi Corporation, have infringed its patent (Patent No. IN271425). The plaintiff sought a temporary injunction to restrain the defendants from manufacturing, selling, or using machines that allegedly incorporate patented technology.

Background

Galatea Ltd. developed a patented technology that automates the detection of inclusions in gemstones. The technology uses a specialized immersion medium and software to enhance the clarity and value of gemstones. The plaintiffs claim that the defendants unlawfully replicated this technology, thereby infringing their patent rights.

The case was originally filed in the District Court, Surat, and later transferred to the Commercial Court at Vadodara before being renumbered and brought to the High Court of Gujarat.

Brief Facts of the Case

1. Plaintiffs: Galatea Ltd. and its subsidiary, based in Israel, hold Patent No. IN271425, which automates the detection of inclusions in gemstones.

2. Defendants: Diyora and Bhanderi Corporation, along with others, are alleged to have manufactured and sold machines using similar technology.

3. Allegation: The plaintiffs accused the defendants of:Using patented technology without authorization.Selling machines that infringe the patent.Providing gemstone scanning services using infringing machines.

Issues Involved

1. Whether the defendants’ machines infringe Patent No. IN271425.

2. Whether the plaintiffs have a prima facie case for granting a temporary injunction.

3. Whether the defendants’ activities harm the plaintiffs' business and goodwill.

4. Validity of the patent in light of defendants’ claims of prior art and lack of novelty.

Submissions of the Parties

Plaintiffs’ Submissions

The patented technology is novel and revolutionized the diamond industry.

Defendants’ machines incorporate essential features of the patented technology.

Presence of selenium residue in tested diamonds indicates use of the patented process.

Defendants’ actions are deliberate and aimed at unjust enrichment.

Defendants’ Submissions

Denied allegations of infringement and claimed independent development of their technology.

Asserted that the patent lacks novelty and is subject to revocation proceedings.

Claimed no use of bubble prevention technology, which is a core element of the patent.

Argued that the suit was filed to create monopolistic barriers and disrupt their business.

Reasoning and Analysis by the Court

1. Patent Examination:

The court examined the scope and claims of the patent, particularly the novelty of the bubble prevention mechanism.

2. Defendants’ Technology:

The defendants argued that their machines do not use bubble prevention technology, which is a critical aspect of the patent.

Mere presence of Selenium in the Defrndants machine does not prove infringement as selenium has been disclaimed by the plaintiff in FER proceeding.

The entire foundation of the plaintiffs' suit rested on the contention that Selenium residue was found in the gemstones processed by the defendants' machines, and that the defendants were using Selenium in their inclusion detection process. However, the court noted that the Suit Patent itself was not granted for the use of Selenium. In fact, the plaintiffs had filed a separate patent application specifically for the use of Selenium, which was distinct from the patent in question (Suit Patent No. IN271425).

Core Invention of the Suit Patent

The court emphasized that the pith and marrow of the Suit Patent lay in the apparatus or device that enabled the removal of gas bubbles from the immersion medium. This apparatus was considered the essence of the invention and the primary claim under the Suit Patent. The court observed that unless this specific apparatus or mechanism was copied or used by the defendants, it would not prima facie constitute infringement of the Suit Patent.

Failure to Prove Infringement

The plaintiffs were unable to demonstrate, on a prima facie basis, that the defendants' machines incorporated the key claims of the Suit Patent, particularly claims 1 and 18. These claims pertain to the specific device and method for bubble removal, which is central to the Suit Patent's novelty and inventive step.

The plaintiffs also failed to provide evidence that the defendants’ machines utilized the same bubble removal technology or apparatus. The presence of Selenium in the defendants' machines or processes was insufficient to establish infringement, as the Suit Patent did not claim the use of Selenium as part of its invention.

Disclaimed Use of Selenium

The court further highlighted that Selenium is a chemical element and its use alone does not constitute a patented invention under the Suit Patent. The Assistant Controller of Patents, in the process of granting the Suit Patent, had expressly noted that the plaintiffs had disclaimed the use of Selenium in their patent claims. Thus, the presence of Selenium in the defendants' machines, even if proven, did not amount to an infringement of the Suit Patent.

Injunction Refused

Given these findings, the court concluded that the plaintiffs had not established a prima facie case for infringement. The court noted that the entire plaint was based on the use of Selenium by the defendants, which was not a protected aspect of the Suit Patent. Consequently, the court refused to grant the requested injunction, as the plaintiffs failed to demonstrate that the defendants’ machines infringed upon the specific claims or the core inventive features of the Suit Patent.

Conclusion

The refusal of the injunction underscores the court's reliance on the specific claims of the patent and the necessity for plaintiffs to establish a clear connection between the defendants' actions and the patented invention. The presence of Selenium, unconnected to the patent claims, was insufficient to support the plaintiffs' case for infringement.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Vifor International Ltd. & Anr. vs. Corona Remedies Pvt. Ltd. & Anr.

Right and Scope of product-by-process Patent

Case Title: Vifor International Ltd. & Anr. vs. Corona Remedies Pvt. Ltd. & Anr.

Case No.:FAO(OS)(COMM) 160/2023 & CM APPL. 39197/2023

Neutral Citation:2024:DHC:878:DB

Date of Order: February 7, 2024

Court:High Court of Delhi at New Delhi

Bench:Hon’ble Mr. Justice Yashwant Varma and Hon’ble Mr. Justice Dharmesh Sharma

Introduction

On February 7, 2024, the Delhi High Court, through a 188-page judgment by Justices Yashwant Varma and Dharmesh Sharma, overturned a restrictive interpretation of product-by-process claims. The Division Bench ruled that patent protection for such claims extends to the product itself, provided it is novel and inventive, regardless of the manufacturing process.

Background

Vifor International Ltd. held Patent No. IN'536 for Ferric Carboxymaltose (FCM), a novel water-soluble iron carbohydrate complex with unique molecular properties. The company alleged infringement by pharmaceutical companies, including Corona Remedies Pvt. Ltd. and MSN Laboratories Pvt. Ltd., and sought an interim injunction.

Refusal of Injunction by Single Judge resulted in filing of this Appeal. 

The Single Judge denied the injunction, reasoning that product-by-process patents protect only products made using the specified process. Since the defendants used a different process, the judge ruled there was no infringement.

Brief Facts of the Case

1. Patent Details: Application No.: 947/KOLNP/2005

Filed: May 24, 2005

Granted: June 25, 2008

Expired: October 20, 2023

2. Product Description:FCM is described as a water-soluble iron carbohydrate complex, used to treat iron deficiency. The product is characterized by specific molecular weight parameters and a unique production process involving maltodextrins oxidized using an aqueous hypochlorite solution.

3. Claims:The appellant argued that the patent included a product claim with process descriptions, whereas the respondents contended it was a process-limited claim.

Issues Involved in the Case

Scope of Product-by-Process Claims: Does a product-by-process claim protect the product regardless of how it is manufactured, or is its scope limited to products made through the disclosed process?

Infringement Analysis: How should courts evaluate whether a competing product infringes a product-by-process claim, especially when alternative manufacturing methods are used?

Submissions of the Parties

Appellants (Vifor International Ltd.):

1. Asserted that FCM is a novel product and the process terms in the claims are merely illustrative.

2. Highlighted that the product has been granted patents in 57 jurisdictions without challenge.

3. Emphasized that FCM’s uniqueness is acknowledged globally, including an INN assignment by WHO.

4. Cited international jurisprudence supporting broader interpretation of "product-by-process" claims.

Respondents (Corona Remedies Pvt. Ltd.):

1. Contended that the claims are limited to the process described, making the patent a "product-by-process" claim.

2. Asserted that their product does not use the same process as described in IN'536, hence no infringement.

3. Argued that the product was already known in prior art, making the patent invalid for lack of novelty.

Reasoning and Analysis by the Court

Definition and Purpose:

A product-by-process claim bridges the gap between product and process patents. It is used when a novel product cannot be adequately described by its structure alone, necessitating reference to its manufacturing process.

Key Principles:

1. Novelty of the Product:

A product-by-process claim is valid only if the product itself is novel and inventive, irrespective of the process described.Merely describing a new process does not make the product novel.

2. Patentability and Infringement:

The same criteria of novelty and inventiveness apply during patent grant and infringement analysis. Claims should not be treated differently for validity and infringement purposes.

3. Global Standards:

Guidelines from patent offices (e.g., IPO, EPO, USPTO) and international jurisprudence emphasize that novelty must be assessed by disregarding process terms and focusing on the product's unique attributes.

4. Product is the main focuss while process is supplimentary in narure:

Product-by-process claims fundamentally protect a novel product, with process terms serving as an explanatory tool. The focus remains on the product’s uniqueness, ensuring consistent evaluation across patentability and infringement.

Decision

The Hon'ble Division Bench allowed the appeal filed by Vifor International Ltd. and overturned the restrictive interpretation of product-by-process claims adopted by the Single Judge and held that product-by-process claims protect the product itself, provided it is novel and inventive, irrespective of the specific manufacturing process described in the patent. 

Conclusion:

This broader interpretation ensures that the essence of the invention—the novel and inventive product—is safeguarded, rather than limiting protection to the process by which it is made. This case underscores the complexities of interpreting product-by-process claims under Indian patent law. 

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

United & United 

Email: amitabh@unitedandunited.com, 

Phone: 9990389539

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.

Novartis AG Vs. Natco Pharma [Pre Grant Opponents and Patent Amendment[

Pre Grant Opponent and Patent Amendment

Case Title:Novartis AG vs. Natco Pharma Limited & Anr.

Date of Order: January 9, 2024

Case Number: LPA 50/2023

Neutral Citation: 2024:DHC:84:DB

Court: High Court of Delhi, New Delhi

Coram: Hon’ble Mr. Justice Yashwant Varma 

and Hon’ble Mr. Justice Dharmesh Sharma

This landmark case delves into the procedural intricacies of pre-grant opposition under the Indian Patents Act, 1970, with a focus on the Controller’s authority to amend patent claims and the corresponding rights of pre-grant opponents. The case underscores the delicate balance between protecting patentees' rights and ensuring procedural fairness for opponents, particularly in a rapidly evolving and competitive pharmaceutical landscape.

Introduction:

The case revolves around a fundamental question: to what extent should pre-grant opponents be involved during the examination and amendment process of a patent application? It arises from a decision by the Controller of Patents, where amendments to Novartis AG's patent application were approved without notifying or consulting pre-grant opponents, including Natco Pharma. The Single Judge ruled in favor of Natco, asserting that such actions violated principles of natural justice. This appeal challenges that decision, bringing to light critical issues in patent law, administrative fairness, and industrial implications.

Background:

Novartis AG, a global pharmaceutical leader, filed an Indian national phase application under the Patent Cooperation Treaty (PCT) on June 8, 2007, claiming priority from a PCT application dated November 8, 2006. The application, published on August 24, 2007, faced numerous pre-grant oppositions over the years, significantly delaying the grant process.

This case exemplifies the challenges posed by India’s pre-grant opposition mechanism, where procedural delays and multiple objections can prolong the patent grant process, affecting the commercial viability of innovations.

Brief Facts of the Case:

1. Timeline of Events:

2006-2007: Novartis filed its application (No. 4412/DELNP/2007), which was published, inviting pre-grant oppositions.

2015-2022: Ten pre-grant oppositions were filed by various parties, including Natco Pharma, Indian Pharmaceutical Alliance, and others. Hearings were frequently adjourned due to procedural complexities, requests for cross-examinations, and delays in the examination process.

2022: The Controller directed amendments to the claims, which Novartis complied with. The patent was granted on December 14, 2022.

2. Natco’s Challenge:

Natco Pharma contended that the Controller failed to notify them of amendments made to the claims during the examination process. They argued that this deprived them of a fair opportunity to oppose the revised claims, constituting a violation of natural justice.

3. Single Judge Decision:

The Single Judge set aside the Controller’s decision, holding that procedural lapses, including the failure to involve pre-grant opponents in the amendment process, warranted intervention. The judgment emphasized the importance of transparency and procedural fairness in patent prosecution.

Issues Involved:

1. Right to Be Heard:

Do pre-grant opponents have a statutory or procedural right to be heard regarding amendments to patent claims during the examination process?

2. Violation of Natural Justice:

Did the Controller’s actions, particularly the approval of amendments without notifying pre-grant opponents, breach principles of natural justice?

3. Balancing Interests:

How should the patent system balance the need for expeditious patent grants with the procedural rights of pre-grant opponents?

4. Legislative Intent:

Does the current framework under the Patents Act, 1970, provide sufficient clarity on the roles and rights of pre-grant opponents during amendments?

Submissions of the Parties:

Novartis AG:

Delays Caused by Oppositions:

Novartis highlighted that the serial filing of pre-grant oppositions significantly delayed the patent grant process, undermining the legislative intent of Section 43 of the Patents Act, which mandates expeditious patent grants.

Impact on Patent Term:

Novartis argued that 16 out of the 20 years of the patent’s term were consumed in prosecution, leaving only a limited period for commercial exploitation.

Compliance with Directions:

The company maintained that the amendments were made as per the Controller’s directions and did not necessitate fresh rounds of opposition.

Natco Pharma:

Interconnection of Processes:

Natco contended that pre-grant opposition and examination processes are intertwined, and opponents must be involved in decisions regarding amendments to ensure procedural fairness.

Denial of Opportunity:

The company argued that the Controller’s failure to notify them of the amendments deprived them of a fair chance to contest the revised claims, violating principles of natural justice.

Reasoning and Analysis by the Court:

1. Role of Pre-Grant Opponents:

The court recognized that pre-grant opposition serves as a critical mechanism to ensure the validity and robustness of granted patents. It allows third parties to raise objections on statutory grounds, thereby safeguarding public interest.

2. Principles of Natural Justice:

The court emphasized the importance of adhering to principles of natural justice, particularly transparency and fairness. It held that the Controller’s failure to notify pre-grant opponents of amendments and provide them with an opportunity to respond constituted a procedural lapse.

3. Balancing Competing Interests:

The court acknowledged the need to balance the rights of pre-grant opponents with the objective of timely patent grants. While opponents play a vital role in ensuring patent quality, prolonged delays in the grant process can undermine the commercial viability of patents and discourage innovation.

4. Critique of Single Judge’s Decision:

The Division Bench critiqued the Single Judge’s decision for overextending the procedural rights of pre-grant opponents. It noted that excessive procedural requirements could disrupt the legislative framework for patent grants, leading to inefficiencies.

5. Legislative Intent and Procedural Safeguards:

The court examined the legislative intent behind the Patents Act, noting that while pre-grant opposition is intended to be a tool for ensuring robust examination, it should not be misused to delay patent grants.

Decision:

The Division Bench set aside the Single Judge’s order and reinstated the Controller’s decision to grant the patent. It provided guidelines to ensure procedural fairness in future cases, emphasizing the need for timely communication of amendments and resolution of objections without compromising the efficiency of the patent prosecution process.

Conclusion:

This case underscores the tension between procedural fairness and the efficient functioning of the patent system. It highlights the necessity for clear procedural safeguards to prevent delays while ensuring that the rights of all stakeholders are respected. The judgment serves as a critical precedent in shaping the balance between administrative efficiency and the procedural rights of opponents in India’s patent system.

Implications for the Industry:

1. For Patent Applicants:

Encourages applicants to adopt efficient prosecution strategies to mitigate delays caused by serial oppositions.

Reinforces the importance of adhering to procedural requirements to safeguard granted patents from future challenges.

2. For Pre-Grant Opponents:

Affirms their role in ensuring the robustness of granted patents.

Clarifies procedural boundaries to prevent misuse of the opposition mechanism.

3. For the Regulatory Framework:

Calls for amendments to streamline the opposition and amendment processes.

Highlights the need for clear timelines and procedural safeguards to balance competing interests effectively.

This judgment is expected to influence the conduct of patent prosecution and opposition proceedings, fostering a more balanced and efficient patent system in India.

Supplementary Inputs:

Global Perspective: The court’s observations align with international practices, where pre-grant opposition systems aim to strike a balance between innovation and public interest.

Future Reforms: The case underscores the need for legislative amendments to address ambiguities in the Patents Act, particularly concerning the roles and rights of pre-grant opponents.

Industrial Impact: The judgment sets a precedent for pharmaceutical and biotech industries, emphasizing the importance of procedural clarity in safeguarding innovations while preventing misuse of opposition mechanisms.

Written by: Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] United & United

Email: amitabh@unitedandunited.com, Phone: 9990389539

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.

Amrish Aggarwal Trading as Mahalaxmi ProductVersus Venus Home Appliances Pvt. Ltd. and another

Title: Analysis of Amrish Aggarwal vs. Venus Home Appliances Pvt. Ltd. Reconciling Rectification Proceedings and Infringement Suits under Trade Marks Act, 1999

Date of Order:Judgement:17.05.2024

Case No.CO (COMM.IPD-TM) 258/2022

Neutral Citation: 2024:DHC:3991:DB

Name of Court: Delhi High Court

Name of Hon’ble Judge: Yashwant Varma and Ravinder Dudeja

Case Title:Mr. Amrish Aggarwal Trading as Mahalaxmi Product

Versus Venus Home Appliances Pvt. Ltd. and another

Introduction

The case primarily examines the interplay between infringement suits and rectification proceedings under Section 124 of the Trademarks Act, 1999. It raises critical legal questions regarding the necessity of staying civil suits pending rectification petitions, especially after the abolition of the Intellectual Property Appellate Board (IPAB) through the Tribunal Reforms Act, 2021. The case also evaluates the correctness of previous judicial interpretations, including the controversial Sana Herbals Pvt. Ltd. vs. Mohsin Dehlvi decision.

Background

The abolition of the IPAB and the reallocation of its jurisdiction to High Courts have created uncertainty about the procedural implications of Section 124. While Section 124 mandates staying civil suits when rectification petitions are filed, the Sana Herbals judgment suggested that such stays might not be necessary since High Courts can hear both matters, potentially avoiding conflicting decisions.

Brief Facts of the Case

1. Parties:

Petitioner: Amrish Aggarwal, trading as M/s Mahalaxmi Product.

Respondent: Venus Home Appliances Pvt. Ltd.

2. Dispute:

The respondent filed a suit for trademark infringement and passing off against the petitioner. The petitioner challenged the validity of the respondent's trademark in their written statement and subsequently filed a rectification application before the High Court.

3. Procedural Issue:

The rectification application was filed before the Commercial Court could assess the prima facie tenability of the invalidity claim, raising questions about the maintainability of such an application under Section 124(1)(ii).

Issues Involved

1. Does the filing of a rectification petition automatically necessitate a stay of the civil suit under Section 124(2)?

2. Can a rectification petition be filed before the trial court evaluates the prima facie validity of the invalidity claim?

3. What is the effect of the abolition of the IPAB on the procedural requirements of Section 124?

Submissions of the Parties

1. Petitioner:

Argued that Sana Herbals correctly held that stays are unnecessary since rectification and infringement matters can now be consolidated in High Courts.

Emphasized that passing-off actions are independent of Section 124 and should not be stayed.

2. Respondent:

Contended that Section 124(2) mandates staying suits to prevent conflicting decisions.

Cited precedents, including Puma Stationer P. Ltd. vs. Hindustan Pencils Ltd., to argue that Sana Herbals misinterpreted the statutory framework.

Reasoning and Analysis by the Judges

1. Statutory Interpretation:

The court emphasized the mandatory language of Section 124(2), which states that civil suits "shall stand stayed" when rectification petitions are filed.

Justice Varma clarified that the legislative intent is to avoid conflicting rulings by prioritizing the resolution of rectification proceedings.

2. Abolition of IPAB:

The court held that the abolition of the IPAB does not alter the mandatory nature of Section 124(2). The legislature amended Section 124(1) to replace "Appellate Board" with "High Court" but retained Section 124(2), indicating its continued applicability.

3. Criticism of Sana Herbals:

The judgment rejected the Sana Herbals interpretation, stating it contradicts the statutory mandate and established precedents.

The court noted that consolidation of proceedings is not always feasible, especially when infringement suits are filed in Commercial Courts rather than High Courts.

Decision

The High Court ruled:

1. Rectification petitions filed without the trial court's prima facie assessment are not invalid but must await such assessment before proceeding.

2. Once a rectification petition is filed and deemed prima facie tenable, the civil suit must be stayed under Section 124(2).

3. The Sana Herbals judgment is overruled as inconsistent with the statutory framework and judicial precedents.

Conclusion

This judgment reaffirms the mandatory nature of Section 124(2), ensuring that rectification proceedings take precedence over civil suits. It addresses ambiguities arising from the abolition of the IPAB and restores clarity to the procedural framework governing trademark disputes.

Implications

1. Legal Certainty:

The decision eliminates confusion about the procedural requirements of Section 124, providing clear guidance to litigants.

2. Precedence of Rectification:

By prioritizing rectification proceedings, the judgment ensures that trademark validity issues are conclusively resolved before infringement suits proceed.

3. Judicial Precedent:

The judgment serves as a binding precedent, emphasizing the importance of legislative intent and statutory interpretation in resolving procedural conflicts.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

Phone: 9990389539

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