Krishnendu Ghosh Vs The State Of West Bengal

Wrong Mentioning of Section in Trademark Complaint

Introduction:

The case under discussion involves a petition seeking the quashing of an FIR due to the wrong mentioning of a section of the law by the recording officer at the police station. The petitioner argued that the complaint did not align with the definition of "Copyright" under Section 2(y) of the Copyright Act, while the state contended that the contents of the complaint fell under the ambit of "artistic work" as defined in the same section. This article aims to delve into the legal nuances surrounding the wrong mentioning of sections in FIRs and its implications on the proceedings.

Background:

The FIR was lodged based on a complaint alleging the infringement of trademark and trade description of Diageo products. However, the FIR was registered under Section 63 of the Copyright Act, 1957, instead of the appropriate section of the Trademark Act. The petitioner sought the quashing of the FIR under Section 482 of the Criminal Procedure Code (Cr.P.C) on this ground.

Cognizance of Offence:

 The Hon'ble High Court refused to quash the FIR, emphasizing that the wrong mentioning of a section by the recording officer does not invalidate the contents of the complaint. The court highlighted that the magistrate is not bound by the sections mentioned in the formal FIR or charge sheet but must assess the contents of the complaint and the evidence collected during investigation before taking cognizance of the offence.

Substantive Law Vs. Technical Error:

The case underscores the distinction between substantive law and technical errors in legal proceedings. While adherence to procedural formalities is important, substantive justice should prevail. In this case, the core allegation of trademark infringement remained unaffected by the technical error in mentioning the section.

Interpretation of Statutory Provisions:

The disagreement between the petitioner and the state regarding the applicability of Section 2(y) of the Copyright Act highlights the interpretative challenges posed by statutory provisions. Different interpretations may arise based on the facts and circumstances of each case, necessitating judicial intervention to resolve disputes.

Judicial Discretion:

The court's decision reflects its discretionary power to determine the merit of each case based on the principles of equity and justice. By refusing to quash the FIR, the court ensured that the allegations of trademark infringement were duly examined through the legal process.

Conclusion:

The refusal to quash the FIR underscores the court's commitment to upholding the rule of law while ensuring a fair and impartial adjudication of disputes. Ultimately, the decision reinforces the principle that justice should not be impeded by procedural irregularities but should be guided by the substantive merits of the case.

Case Title: Krishnendu Ghosh Vs The State Of West Bengal

Order Date: 19.03.2024

Case No. C.R.R. 3427 of 2015 

Neutral Citation:NA

Name of Court: Calcutta High Court

Name of Hon'ble Judge: Bibhas Ranjan De, 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

Sulphur Mills Limited Vs Dharmaj Cropguard Limited and another

Relevance of Expert Affidavit in Patent Infringement Cases

Introduction:

In patent infringement suits, the reliance on expert testimony plays a pivotal role in establishing the validity of claims and determining the likelihood of success. However, the issue of whether expert affidavits can be considered without cross-examination has sparked debate within legal circles. This article examines a recent case where the court declined to grant interim relief in a patent infringement suit, inter alia emphasizing the necessity of cross-examination in assessing expert evidence.

Background of the Case:

The subject matter of the suit revolves around the infringement of a patent titled "Novel Agricultural Composition." The original claim in the patent did not mention the conversion of sulphur to sulphate, but later amendments modified the concentration of sulphur as the active ingredient. The defendant argued that the features of the claimed composition were already disclosed in a prior application (App 655), leading the court to decline interim relief in favor of the plaintiff.

Court's Observations:

While declining relief, the court scrutinized the practice of relying on expert affidavits without subjecting the experts to cross-examination. The court expressed doubts regarding the advisability and permissibility of placing reliance on such evidence in patent suits. It emphasized that neither side admitted the veracity of the opposing party's affidavits, and the experts had not been cross-examined. Consequently, the court questioned whether the merits of the case could be decided solely based on untested expert evidence.

The court highlighted the importance of cross-examination in testing the credibility and reliability of expert testimony. Without the opportunity for cross-examination, the court argued, expert affidavits cannot constitute the basis for granting or rejecting interim relief in patent infringement cases.

Legal Analysis:

The reliance on expert evidence is common in patent litigation, where technical complexities often necessitate expert opinion to interpret claims and assess infringement. However, the efficacy of such evidence depends on its thorough examination and testing through cross-examination.

Cross-examination serves as a crucial mechanism for uncovering inconsistencies, biases, or limitations in expert testimony. It allows opposing parties to challenge the expertise, methodology, and conclusions presented by experts, thereby ensuring a fair and robust adjudication process.

In the absence of cross-examination, the reliability and credibility of expert affidavits may be called into question. Unchallenged expert evidence runs the risk of being one-sided and may not provide a comprehensive understanding of the technical nuances at play in patent disputes.

Conclusion:

The case underscores the significance of cross-examination in patent infringement cases and the limitations of relying solely on expert affidavits. Courts must exercise caution when assessing expert evidence and ensure that it undergoes rigorous testing through cross-examination to establish its credibility and reliability.

Case Title: Sulphur Mills Limited Vs Dharmaj Cropguard Limited and another
Order Date: 18.03.2024
Case No. CS(COMM) 1225/2018
Neutral Citation:2024: DHC: 2154
Name of Court: High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, H.J.

Disclaimer:

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

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

Sunpharma Laboratories Limited Vs Narender Kumar and ors

The Ramifications of Copying whole of the Plaintiff's Trademarks

Introduction:

This article delves into a recent legal case concerning alleged passing off, wherein the defendant copied the entirety of the plaintiff's trademark for medicinal eye drops. The case raises important legal questions regarding deceptive similarity, prior use, and the duty of due diligence in trademark disputes.

Background of the Case:

The dispute revolves around the plaintiff's trademark "CAFTA," used for medicinal eye drops containing the compound "ALCAFTADINE." The defendant, on the other hand, introduced a competing product under the mark "CAFTADAY," also containing the same compound. The plaintiff, claiming prior use of the mark "CAFTA" since 2019, alleged passing off by the defendant, whose earliest trademark application dates to 2021 on a 'proposed to be used' basis.

The plaintiff argued that the defendant failed to conduct due diligence and neglected to search the Trade Marks Registry before adopting the mark "CAFTADAY." Additionally, the plaintiff contended that the defendant is estopped from claiming lack of distinctiveness in the term "CAFTA" since they themselves applied for registration of the mark "CAFTADAY."

Court's Observations:

The Hon'ble Court scrutinized the issue of misrepresentation in the case and noted that the defendant's mark "CAFTADAY" completely subsumed the plaintiff's mark "CAFTA." The court emphasized the deceptive similarity between the two marks, highlighting that "CAFTADAY" essentially consists of "CAFTA" and "DAY" as two separate words. This similarity could lead an average consumer of imperfect recollection to confusion between the two marks, thereby supporting the plaintiff's claim of passing off.

Court's Decision:

Based on its observations, the Hon'ble Court restrained the defendants from using the mark "CAFTADAY." The court recognized the deceptive nature of the defendant's mark, which effectively incorporated the entirety of the plaintiff's mark "CAFTA." By issuing the injunction, the court sought to prevent further confusion in the marketplace and protect the plaintiff's rights as the prior user of the mark.

Legal Analysis:

Trademark law aims to protect consumers from confusion and deception while safeguarding the goodwill and reputation associated with established marks. In this case, the defendant's adoption of entire of the plaintiff's trademark "CAFTA" constitutes clear infringement and passing off. By copying the entirety of the plaintiff's mark, the defendant sought to capitalize on the goodwill and reputation built by the plaintiff, thereby causing confusion among consumers.

Conclusion:

The case serves as a reminder of the legal consequences of copying entire trademarks and the need for diligence in trademark adoption. By restraining the defendant from using the mark "CAFTADAY," the court reaffirmed its commitment to upholding the integrity of trademark rights and preventing unfair competition in the marketplace.

Case Title: Sunpharma Laboratories Limited Vs Narender Kumar and ors

Order Date: 21.03.2024

Case No. CS(COMM) 424/2021

Neutral Citation:2024: DHC: 2934

Name of Court: High Court of Delhi

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

Pidilite Industries Limited Vs Sanjay Jain and another

Implications of Disclaimer Conditions attached to multiple Trademark Registrations

Introduction:

In the case of trademark registrations, sometimes disclaimer conditions are attached, limiting the exclusive rights conferred by the registration. This article delves into a recent legal case involving a rectification application filed under Sections 47 and 57 of the Trade Marks Act, 1999, concerning a trademark bearing the term 'KWIK' and the implications of disclaimer conditions attached to multiple trademark registrations.

Background of the Case:

The case revolves around the rectification application filed for the removal/cancellation of the trademark 'POMA-EX-KWIKHEAL' registered under no. 2223608 in the Register of Trade Marks. The respondent obtained registration for 'POMA-EX-KWIKHEAL' on 16th December 2014, with the claimed user from 1st July 2011. The petitioner, claiming ownership of the mark 'FEVIKWIK' under registration no. 465651 dated 6th January 1987 in class-1, contested the registration of 'POMA-EX-KWIKHEAL' on the grounds of similarity.

Court's Observations:

The Hon'ble Court made critical observations regarding the registration of the petitioner's mark 'FEVIKWIK.' It noted that while the petitioner held registrations for 'FEVIKWIK,' 2 registrations, out of 5, included a disclaimer limiting the exclusive use of the term 'KWIK.'

The limitation explicitly stated that the registration of the trademark shall not confer exclusive rights to the word 'KWIK.' Despite variations in the disclaimer's inclusion across registrations, the Registrar imposed this limitation to maintain the integrity of the register.

The court emphasized that the presence of 'KWIK' in the respondent's registered mark 'KWIKHEAL' did not prevent the respondent from asserting commonality in the term 'KWIK.' It highlighted the distinctiveness and dissimilarities between the petitioner's mark and the respondent's device mark, indicating that the petitioner could not claim a monopoly over the term 'KWIK' and its variations.

Court's Decision:

Ultimately, the Hon'ble High Court of Delhi dismissed the rectification petition. It reasoned that the petitioner's statutory right in the registered mark 'FEVIKWIK' did not confer exclusive rights over the term 'KWIK' due to the disclaimer imposed by the Registrar of Trademarks. Since the petitioner lacked exclusive rights over 'KWIK,' it could not seek rectification against 'KWIKHEAL.' Furthermore, the rectification sought pertained to the respondent's device mark, which exhibited distinctive dissimilarities from the petitioner's mark.

Legal Analysis:

The case underscores the significance of disclaimer conditions in multiple trademark registrations. Multiple Disclaimers serve to clarify that certain elements of a mark lack exclusive protection, thereby preventing monopolization of common terms. In this instance, the registrar imposed a disclaimer on the term 'KWIK' in the petitioner's multiple trademarks 'FEVIKWIK.

Trademark law aims to balance the rights of trademark owners with the need to prevent undue monopolization that could stifle competition and innovation. By attaching disclaimer conditions, the registrar ensures that trademarks with common or descriptive elements do not unduly restrict others from using similar terms in their marks.

Conclusion:

The case highlights the complexities surrounding disclaimer conditions in trademark registrations and their impact on subsequent disputes. While trademark owners may hold statutory rights in their registered marks, disclaimer conditions may limit the scope of those rights, particularly concerning common or descriptive terms.

Case Title: Pidilite Industries Limited Vs Sanjay Jain and another

Order Date: 22.03.2024

Case No. C.O. (COMM.IPD-TM) 371/2022

Neutral Citation:2024: DHC: 2369

Name of Court: High Court of Delhi

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

A.O.Smith Corporation Vs Star Smith Export Pvt. Ltd.

Trademark Infringement and Dishonest conduct in adoption of trademark

Introduction:

Trademark infringement is a serious offense in intellectual property law, often leading to legal battles between parties. This article delves into a recent case involving the alleged infringement of trademarks 'A.O. SMITH' and 'BLUE DIAMOND' by the defendants, who adopted the marks 'STAR SMITH' and 'BLUE DIAMOND' for similar products. The case raises questions about dishonest conduct in trademark adoption and the legal implications surrounding such actions.

Background of the Case:

The plaintiffs, having utilized the marks 'A.O. SMITH' and 'BLUE DIAMOND' internationally since 1874 and in India since 2006, specialize in geysers, water heaters, purification systems, boilers, and related equipment. Conversely, the defendants introduced 'STAR SMITH' and 'BLUE DIAMOND' for identical products, such as geysers, purification systems, water purifiers, and RO systems. This prompted the plaintiffs to file a lawsuit against the defendants, alleging trademark infringement.

Defendant's Defense:

In response, the defendants claimed that their company, initially incorporated as 'STAR ENTERPRISES' in 1990, manufactured electrical appliances. They asserted a subsequent transformation into 'AEROSTAR' in 2005 and later rebranding as 'STAR SMITH' in 2020. Moreover, the defendants argued the existence of other entities using the term 'SMITH' in classes 7 & 11.

Court's Decision:

The Hon'ble High Court of Delhi, upon examining the evidence, concluded that the defendants' adoption of 'STAR SMITH' and 'BLUE DIAMOND' constituted trademark infringement. The court emphasized that the defendants' prior use of 'Aero Star' and 'Star Enterprises' indicated a predilection for the 'STAR' element rather than the 'SMITH' component. Therefore, the addition of 'SMITH' in conjunction with 'STAR' in 2020 appeared to be a prima facie dishonest adoption, aimed at capitalizing on the plaintiffs' goodwill and causing market confusion, particularly concerning identical goods.

Legal Analysis:

Trademark law aims to protect consumers from confusion and deception while safeguarding the goodwill and reputation associated with established marks. In this case, the defendants' adoption of 'STAR SMITH' and 'BLUE DIAMOND' for similar products encroached upon the plaintiffs' trademarks, potentially leading consumers to confuse the origin of goods.

The principle of dishonesty plays a crucial role in trademark disputes. While defendants may argue legitimate reasons for adopting similar marks, courts examine the intent behind such actions. Here, the court's observation that the defendants previously used variations of 'STAR' suggests a deliberate effort to capitalize on the plaintiffs' brand recognition by incorporating 'SMITH,' a prominent element of the plaintiffs' mark.

Moreover, the timing of the defendants' adoption of 'STAR SMITH' and 'BLUE DIAMOND' raises suspicions of opportunistic behavior. The fact that the defendants introduced these marks long after the plaintiffs established their trademarks indicates a strategic attempt to exploit the goodwill associated with the plaintiffs' brands.

Conclusion:

The case highlights the complexities of trademark infringement and the importance of preserving the integrity of established marks. Courts must carefully assess the evidence presented by both parties to determine the presence of dishonest conduct in trademark adoption. In this instance, the Hon'ble High Court of Delhi's decision to restrain the defendants serves as a reminder of the legal consequences of infringing upon established trademarks and engaging in deceptive practices in the marketplace.

Case Title: A.O.Smith Corporation Vs Star Smith Export Pvt. Ltd.
Order Date: 22.03.2024
Case No. CS Comm 532 of 2022
Neutral Citation:2024:DHC:2366
Name of Court: High Court of Delhi
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

Karam Multipack Pvt. Ltd vs Karamgreen Bags

Trademark Registration Versus Actual Use

Introduction:

Trademark registration is often seen as a significant milestone for businesses seeking to protect their brand identity. However, a recent appellate decision highlights the crucial distinction between mere registration and actual use of a trademark. The case delves into the complexities surrounding the burden of proof in trademark infringement and passing off actions, emphasizing the importance of substantiating claims with evidence of genuine use.

Background:

The appellant filed a trademark suit for infringement and passing off, alleging that the defendant's use of the mark "KARAMGREEN" and "KARAM GREEN TEX" amounted to infringement of their registered trademark "KARAMGREEN TEX." However, the trial court dismissed the injunction application, prompting the appellant to file an appeal.

Contentions and Ruling:

The appellant argued that the defendant's use of similar marks constituted trademark infringement, despite the differences in the goods provided by both parties. However, the appellate court upheld the trial court's decision, emphasizing that mere registration of a trademark does not automatically confer rights to the registrant. The court noted that the respondent/defendant had been using the mark "KARAM GREEN BAGS" since 2010, predating the appellant's/plaintiff's trademark registration in 2013.

Burden of Proof:

The crux of the matter lies in the burden of proof regarding the actual use of the trademark. While trademark registration provides prima facie evidence of ownership, it does not establish actual use in commerce. In trademark infringement and passing off actions, the burden rests on the plaintiff to demonstrate genuine use of the mark in relation to the goods or services specified in the registration.

Importance of Evidence:

The appellate court highlighted the absence of documentary evidence proving the appellant's use of the trademark "KARAMGREEN" in commerce. Mere registration without accompanying evidence of use is insufficient to establish infringement. Therefore, the court's decision underscores the importance of substantiating claims with concrete evidence of actual use in the marketplace.

Conclusion:

The case serves as a reminder for trademark owners to not only secure registration but also diligently maintain and demonstrate genuine use of their marks in commerce. While registration provides legal protection, it is evidence of actual use that ultimately determines the success of infringement and passing off actions. Therefore, businesses must prioritize documenting and preserving evidence of trademark use to effectively assert their rights in legal proceedings.

Case Title: Karam Multipack Pvt. Ltd vs Karamgreen Bags

Order Date: 21.03.2024

Case No.  First Appeal from Order 136 of 2023

Neutral Citation:NA

Name of Court: High Court of Gujarat at Ahmedabad 

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

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Mitsui Chemicals Inc Vs Controller Of Patents

Admissibility of Amendments in National Phase Patent Applications

Introduction:

The recent appellate decision in the matter of patent application no. 3877/DELNP/2009 highlights the procedural intricacies surrounding the admissibility of amendments in national phase patent applications corresponding to PCT applications. The case delves into the application of Section 59 of the Patents Act, 1970, and the significance of procedural adherence during the examination process.

Background:

The appellant's patent application was refused under Section 15 of the Patents Act, 1970, with the Assistant Controller of Patents citing non-patentability under Section 3(h) of the Act. Additionally, the refusal was based on the disallowance of a formal request to amend method claims to composition claims, purportedly contravening Section 59 of the Act.

Amendments and Examination Process:

The appellant submitted a revised set of claims in response to the First Examination Report (FER), objecting under Section 3(h) of the Act. Despite subsequent amendments, the patent office continued to find the claims objectionable. The appellant then submitted further amended claims along with Form 13, seeking a change from method claims to composition claims.

Contentions and Ruling:

The crux of the matter revolved around the procedural adherence concerning claim treatment during the national phase entry of a PCT application into India. The appellant argued that the examination should have been confined to the original PCT claims, and any amendments introduced during the national phase should have been compared against these original claims.

Court's Analysis:

The appellate court scrutinized the procedural aspects and observed that the respondent erroneously focused on the modified claims from the national phase application instead of the original PCT claims. It emphasized the importance of adhering to procedural requirements and conducting examinations based on the original claims submitted during the PCT phase. In absence of any amendment sought by the Appellant to PCT application, the amended national phase application can not be looked into.

Decision and Implications:

The appellate court set aside the order and remanded the matter back to the controller, emphasizing the need for a reevaluation based on the original PCT claims. This decision underscores the significance of procedural adherence and highlights the potential pitfalls of overlooking the original claims during the examination process.

Conclusion:

The case underscores the importance of procedural compliance and meticulous examination practices in patent applications, especially during the national phase entry of PCT applications. It serves as a reminder for patent applicants and examiners alike to adhere to statutory requirements and conduct examinations based on the original claims submitted during the PCT phase to ensure a fair and transparent process..

Case Title: Mitsui Chemicals Inc Vs Controller Of Patents

Order Date: 23.02.2024

Case No. C.A.(COMM.IPD-PAT) 196/2022

Neutral Citation:NA

Name of Court: High Court of Delhi

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

Novozymes Vs Assistant Controller of Patent

Granules in Patent Applications: A Key to Patentability

Introduction:

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

Background:

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

Amended Claims and Hearing:

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

Order Date: 19.03.2024 filed an appeal challenging the rejection.

Court's Analysis:

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

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

Conclusion:

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

Case Title: Novozymes Vs Assistant Controller of Patent

Order Date: 19.03.2024

Case No.  (OA/18/2017/PT/CHN)

Neutral Citation:NA

Name of Court: High Court of Madras 

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

Disclaimer:

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

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney,

Email: ajayamitabhsuman@gmail.com,

Ph No: 9990389539

Immunas Pharma, Inc. Vs Assistant Controller of Patent

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

Abstract:

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

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

Introduction:

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

Legal Framework:

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

Case Analysis:

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

Technical Analysis:

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

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

Conclusion:

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

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

Disclaimer:

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

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