|

1)List of inventions that are not patentable. Sec 3 and 4 of Indian patentable act
ANSWER
(1) Inventions that are frivolous and contrary to natural laws.
Inventions which are frivolous or contrary to well established natural laws.
Example– Inventions that are against the natural laws that are any machine giving 100%
efficiency, or any machine giving output without an input cannot be considered as obvious and
cannot be patented.
(2) Inventions which go against public morality
Inventions in which the primary or intended use or commercial exploitation of which could be
contrary to public order or morality (that is against the accepted norms of the society and is
punishable as a crime) or which causes serious prejudice to human, animal or plant life or health
or to the environment.
Example– As in Biotechnology, termination of the germination of a seed by inserting a gene
sequence that could lead to the disappearance of butterflies, any invention leading to theft or
burglary, counterfeiting of currency notes, or bioterrorism.

(3) Inventions that are a mere discovery of something that already exists in nature.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery
of any living or non-living substances occurring in nature.

(4) The mere discovery of a form already existing in nature does not lead to enhancement
of efficacy.

The mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property
or new use for a known substance or of the mere use of a known process, machine or apparatus
unless such known process results in a new product or employs at least one new reactant.

(5) Mere admixing of mixtures leading in the aggregation of properties are non- patentable.

A substance obtained by a mere admixing of two or more mixtures resulting only in the
aggregation of the properties of the components thereof or a process for producing such
substance is not considered the invention.

(6) Mere aggregation or duplication of devices working in a known way is not an invention.
The mere aggregation or re-arrangement or duplication of known devices each functioning
independently of one another in a known way.

(7) Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture. (i) Medicinal, curative, prophylactic, diagnostic,

therapeutic for treating diseases in human and animals are non-patentable.

Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render them free
of disease or to increase their economic value or that of their products.

(8) Essential biological processes for the production or propagation of animals and plants is
not an invention.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds,
varieties and species and essentially biological processes for production or propagation of plants
and animals.

(9) Simple mathematical or business or computer programs are not an invention.

A mathematical or business method or a computer program per se or algorithms.

(10) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions.

2)Patentability criteria (as per the principles of patent law)

3)Legal Requirements for patentability as per WIPO
4)The note on registration of patents in India
Patents in Indian Patent Act, 1970
Section 2(m) of the Indian Patent Act, 1970, defines a patent as “a patent which is granted for
any invention under the provisions of this Act.”

New or novel
Section 2(1)(l) of the Act provides that an invention is said to be new or novel when it is not
anticipated in the document or used in India or the world before the filing of the patent
application with the specified subject matter of the invention in the Indian patent office. What
must be seen to consider the invention as new is that it did not exist in the state of the art because
it enables every individual in the country to access the prior existing technology or invention.
was observed in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1978), that
an invention must have a novelty of such a nature that it was not known in society before the
date of the patent for the grant of a patent.

CASE LAWS IN IPR

1) Shagun Organica vs. gaur hari guachhait
Facts:

Plaintiff (Shogun Organics Ltd.) is a company engaged in the research, manufacture, and
sale of mosquito repellents. The Defendant (Manaksia Ltd.) is a competitor of the
Plaintiff. The plaintiff filed patent application in the year 2007 and was granted the same
in the year 2009. The Defendant filed a pre-grant opposition in the year 2007 which was
dismissed. The Defendant further filed a post-grant opposition in the year 2013 which
was considered by the patent office and the patent was revoked. IPAB in the year 2014
set aside the order of the patent office, declaring it as an order without application of
mind and reinstated the patent.

After conducting an investigation the Plaintiff came to know that the Defendant is using
its patented technology. To restrain the Defendant and other aiding parties from causing
any further damage to the Plaintiff, a suit for grant of permanent injunction was filed
against the Defendants.

Issues
There were two primary issues.

1. Registration under the Insecticides Act would constitute as prior publication or not?
2. Whether the Defendants have infringed Plaintiff's Patent or not?
Decision of Court
Under Section 104A, whenever the subject matter of a patent is a process, the Court can direct
the Defendants to prove that the process used by the Defendants is different from the patented
process. It is a well-settled principle that the Defendant cannot withhold its best evidence
especially if the same is within its own knowledge. The Defendants failed to submit the process
of manufacturing used by the Defendants after given constant reminders by the Court. Hence,
there was no evidence on record that could rebut the plaintiff's case of infringement.

As long as the Defendant's argument pertaining to Prior/Public Use was concerned, the court
dismissed it after relying on the reasoning mentioned in Lallubhai's case. Lallubhai's case held
that "if you have an article manufactured under a secret process and that article is of such a
character that nobody by examining it can find out the secret of that manufacture, then the sale of
that article in public cannot amount to public user of the process". Hence, although the Plaintiff
was using and selling D-trans Allethrin prior to the grant of patent but since nobody can ascertain
the process of manufacturing by mere examination of the product it does not amount to Public
Use.

The Hon'ble High Court after analyzing section 30 of the Patent Act and perusal of certain
relevant judgments held that "disclosure to a Government Department or to any other authority,
not just of the patentee, but by any other person would not constitute prior publication".

Unanswered Controversy
In case of Process Patents, to destroy the novelty of a patent all the significant steps of the
process should have been disclosed prior to patent application. In the present case the Hon'ble
High Court held that unless the six-step distinctive process of the Plaintiff is not disclosed prior
to the patent application, it cannot be said that the patent lacks innovative step. The exception
under section 30 of the Patent Act addresses a separate controversy altogether. Section 30
ensures protection against any disclosure made to Government Authorities.

Whereas, the question that "what would have happened if the complete six-step process was
disclosed by the plaintiff under section 9(3) of the Insecticides Act? still remains unanswered.
Would the exception under section 30 still protect such disclosure or would render the process
unpatentable?

2) Novartis Ag & Natco Pharma Ltd.

Facts of the Case

 Novartis was granted a patent for its novel and inventive patent compound Ceritinib,
which treats non-small cell lung cancer. The patent application was filed as a PCT (Patent
Cooperation Treaty) application claiming priority since 2007 and was granted a patent on
28 September 2015.
  Novartis came across NOXALK (Natco Pharma’s product) at a pharmaceutical
conference at Kolkata and noticed the launch of “Ceritinib Capsules.”
 Ceritinib, according to Natco Pharma, is neither novel nor inventive as it falls under the
Markush formula, which is disclosed in AstraZeneca's patent or two other patents granted
to Rigel. Based on such contentions, Natco Pharma opposed Novartis’s patent by post-
grant opposition.
 The case was filed in High Court by Novartis, seeking a permanent injunction, damages,
and restraining Natco Pharma from manufacturing and selling "Ceritinib" capsules.
Issue
Whether patentee rights subsist during post-grant opposition?
Decision
When the post-grant order was issued and the patent was revoked, the court held that:

Rights in a patent are only for the life of a patent that remains granted and which has not
been revoked. The manner in which patent rights operate is that they are merely statutory
rights and there are no common law rights in patents. Patent infringement actions are
maintainable only in respect of granted and live patents. The fact that no infringement action
is maintainable in respect of an unregistered or revoked patent is clear from Section 62(2)
and Section 11A (7) of the Act. If a patent is not renewed, no infringement action would lie.
Similarly, once the patent is published, no infringement action can be filed until the patent is
granted, though damages can be sought with effect from the date of publication. Thus, the
continuation of an injunction, even for a day, would not be permissible once the patent is
revoked.

In light of the factual matrix (specifically, the passing of the order dated 16 August 2019,
revoking the patent), the interim order restraining the defendant from carrying out any fresh
manufacturing of pharmaceutical preparations comprising the Active Pharmaceutical Ingredient
(‘API’) Ceritinib, was suspended.

3) Bajaj Auto ltd. Tvs auto ltd.

Facts:

There were two suits in this case. One was by the plaintiff Bajaj Auto Limited which filed a
suit under Section 108 of the Patents Act, 1970 for the relief of permanent injunction in
respect of the plaintiff's patent and/or from using the technology/invention described in the
said patent and/or manufacturing, marketing, selling, offering for sale or exporting 2/3
wheelers, including the proposed 125-CC FLAME motorcycle containing an internal
combustion engine or any internal combustion engine or product which infringes the
plaintiff's patent claiming of damages for infringement of patent etc. Pending the said suit,
the plaintiff prayed for an order of temporary injunction restraining the respondent from in
any manner infringing the applicant's patent. Plaintiff in another suit, TVS Motor Company
filed the suit on the basis of groundless threat of infringement under Section 106 of the
Patents Act, for declaring that the threats held out by the defendant that the plaintiff is
infringing the defendant's patent and that the defendant is proposing to take infringement
action against the plaintiff are unjustified and also for permanent injunction restraining the
defendant from continuing the issuance of threats and thereby interfering with the launch and
sale of product TVS Flame apart from directing the defendant to compensate the plaintiff by
way of damages sustained on account of the unjustified threats made by the plaintiff. Pending
the said suit, the plaintiff filed for an order of interim injunction restraining the respondent
from interfering with the manufacture and marketing of applicant's products. Except the use
of three valves, the product which was attempted to be marketed by the respondent was
prima facie similar to the applicant's patented product.

Issue:

Whether the Defendants infringed the patent or combination even though it made some
improvements to the main patented article? Whether the patent of the applicant was valid and
still subsisting? Whether there were similarities in the design of TVS flame with the patent of
Bajaj motors? Whether the grant of the injunction was necessary to protect the rights of the
applicant under the statutory provision Whether the respondents were unjustly threatened
only for the purpose of obtaining an unjust monopoly over the market?

Held:

The court held that if the exact technological combination as patented was used by TVS then
it could have led to infringement but there were improvements that were made and that
instead of two, three valves were used and thus this wasn't infringement, the court further
held that if there is a slightest variance and modification in the technology used and if there
are different combinations used to achieve the same result then it is not infringement. The
court relied on the case of Improver Corporation and ors. V. Remington Consumer Products
and Ors to reach to the conclusion. The court also widened the scope of infringement of
trademark, patent and copyright. Court observed that the matters of intellectual property
rights hold important aspects and thus speedy disposal should be made. It further gave
guidelines to the lower courts that the matters relating to intellectual property shall be heard
on day to day basis and should be resolved within two to three months. Court further passed
direction that all tribunals and lower courts have ton strictly and punctually comply with this
direction.

4)Bayer corp vs. UOI

Background:
 Bayer Corporation, the petitioner in the present case, a company based in USA,
researched and developed a drug for treatment of patients suffering from diseases related
to kidney cancer and liver cancer. The petitioner acquired the patent for the
manufactures drug under the name of �Sorafenib Tosylate� with market name
�Nexavar�, in the year 2008 in India. The respondent in the present case is Natco
Pharma Ltd. which is a drug manufacturing pharmaceutical company based in India.
They approached the petitioner for procurement of grant of voluntary license. Natco said
that the objective behind their obtaining voluntary license was to provide the patented
drug to public at a reasonable and affordable price as the petitioner was selling the
patented drug at a price of Rs. 10,000/ month of therapy rather than at Rs. 2.80, 428/
month of therapy as charged by the petitioner i.e., Bayer Corporation. But Bayer denied
the application and didn�t provide grant of voluntary license to Natco. Later, after
expiration of 3-year period, as per Section 84(1) of the Indian Patents Act,1970, Natco
filed an application for grant of compulsory license to the Controller. According to the
Controller, as Natco complied with the necessary requirements for granting of
compulsory license, their application was granted. Natco was allowed to manufacture
and sell the drug patented by Bayer and the former was also asked to pay 6% of the net
sale of drugs to Bayer as part of royalty. Besides, Controller also mentioned that the
compulsory license granted to Natco was general in nature and for the balance term of
the patent. The controller also mentioned that Natco cannot assign the patent rights
granted to any of their heir as it is non-assignable or non- transferable right.

Issues: Application of bolar exemption: Is it valid to export a product to foreign country

other than India for purpose of submission of any information? Can rights granted under
provisions of compulsory license read along with rights mentioned under S.107A?
Compulsory license:

Whether Natco made enough efforts to procure voluntary license from the Bayer Were
the reasonable requirements in accordance to public were met? Did court take into
consideration the supply made by infringers while determining the reasonable
requirement test? Availability of patented drug at reasonable and affordable price.
Working of the patented drug within the territory of India.

4) Ericson vs. xiaomi

Facts

In December 2014, Ericsson (Plaintiff) had filed a suit against Xiaomi (Defendant) in
India for the alleged infringement of the 8 standard-essential patents (SEPs). A patent
that protects technology essential to a standard is called SEP. These SEPs are
indispensable while manufacturing standard-compliant products such as smart-phones or
 tablets. Patents that are considered essential to execute a specific industry standard
cannot be exploited like any other patent, and certainly not to the elimination of other
market participants.

The Plaintiff contended that the licenses on the SEPs were offered to be granted to some
companies on fair, reasonable and non-discriminatory (FRAND) terms, however, these
companies had refused to undertake such licenses and were using these patents without
license and accordingly were infringing Plaintiff’s SEPs.

The Delhi High Court granted an ex-parte injunction on the sale, manufacture,
advertisement, and import of Defendant’s devices. However, the Defendant claimed that
its latest devices in the Indian market (as of December 2014), contained chipsets, which
implemented technologies appropriately licensed by Plaintiff.

The Defendant subsequently challenged the injunction before a Division Bench of the
Delhi HC. The Defendant was temporarily permitted to resume the sale, import,
manufacture, and advertisement of its mobile devices subject to certain conditions like-
It would only sell devices having the licensed chips and such sale would not amount to
infringement as per Section 107 of the Patents Act. The court held that the Plaintiff had
purposely withheld the fact about this License and has failed to show a prima facie case.

In the span of two years, Ericsson had sued various companies like Micromax, Intex and
Xiaomi for the same issue. Micromax and Intex had approached the CCI. However, the
investigative order passed by the CCI suffered a major blow because Delhi HC held that
it conflicted with its jurisdiction.

The case highlights how patent holders use the law to sometimes extract large sums of
royalties and license fees for use of their technologies.

6) Ravi kamal bali vs. Kala Tech

Facts

 RaviKamal Bali (Plaintiff) had been granted a patent in lieu of ‘tamper locks/ seals’ in
1994. He had also secured an additional patent for an improvement on the tamper lock,
called ‘TechLock’.
 After
an investigation, Plaintiff found that the Defendants (three defendants) were using
and selling similar products and filed a patent infringement suit before Bombay HC.
 ThePlaintiff came across a similar product bearing the name “SEAL TECH” which had
constructional and functional features similar to that of the Plaintiff’s TechLock.
  The Plaintiff accordingly sought for an injunction restraining the Defendants from
making of, using, selling or distributing tamper proof locks/ seals.
 While the Plaintiff suggested that the Defendants product was similar to his patented
product, the Defendant claimed that Seal Tech was not identical to TechLock in look or
function citing proof of the amount of pressure required to operate the lock.
 The Plaintiff pleaded the Doctrine of Equivalents according to which, it is not necessary
that goods have to be identical to one another in order to consider it infringement.

Issue

 Whether the Defendant’s product Seal Tech infringes upon the Plaintiffs product Tech
Lock in light of the Doctrine of Equivalents.

Court’s Decision

 The Court decided in favor of the Plaintiff and applied the Doctrine of Equivalents. The
Court held that the two products in comparison had the same purpose, made of the
same material and similar functions and stated that merely a different construction and
build of a product does not imply a new invention.
 To determine this, the court applied Section 54 of the Patents Act, which states that only
the patentee is entitled to make improvements and modifications to a patented product
and claim patent for it. Which simply means that one cannot make small changes to an
already patented product and call it an invention.
 The essence of the Doctrine of Equivalents is to preserve and protect the patented
product. However, the doctrine has been interpreted differently by various courts over
the years and its application in the Indian patent system is yet to be ascertained fully.

7) Indigo Remedies vs. Bristol Myers Squibb Holding

 This a very recent case before the Division Bench of the Delhi High Court (court), during
the prevailing COVID-19 pandemic situation.
 Facts
 Bristol Myers Squibb (Bristol) was the patent holder and producer of a drug called
“Apixaban”. Bristol approached Delhi HC in 2019 seeking an ad-interim injunction
against Indoco Remedies (Indoco) for infringing their patent and producing a generic
form of the drug called “APIXABID”.
 In 2020, Indoco approached the court seeking permission to sell the already
manufactured (58,000) strips of the drug on grounds of ‘public interest’, especially
during the COVID 19 pandemic.
 Indoco submitted that the drug was important for treating COVID 19 and was much
cheaper than Bristol Myers’ drug.
 Bristol Myers argued that Indoco had only manufactured these strips in anticipation of
the injunction and the sale cannot be allowed due to clear infringement. They further
contended that in light of ‘public interest’ the appropriate remedy would be a
compulsory license.
 Court Decision
 However, Indoco’s request to sell the drug was denied by the court citing that there was
no evidence for shortage of the Bristol Myers drug to allow the sale of the generic drug
and also it did not prove any overwhelming public interest reason.
 The court opined that in cases of patent infringement the court generally looks at three
parameters- prima facie case, balance of convenience and irreparable loss to the person
seeking interim injunction. The Supreme Court, through many cases introduced a
fourth parameter i.e ‘public interest’, however, that does not mean that the courts do
not take into consideration the other three parameters. Even in the face of a pandemic,
the court held that it is necessary to see all three-four parameters in conjunction.

8) Vringo Infrastructure Inc. Vs. Indiamart Intermesh Ltd.

 Facts
 Vringo Incorporation (Plaintiff), owned a large portfolio of patents in India. One such
patent held by the Plaintiff was ‘a method and a device for making a handover decision
in a mobile communication system’ which they had acquired from Nokia in 2012.
 The Plaintiff approached the Delhi HC to grant an ad interim injunction against Indiamart
alleging the infringement of this particular patent.
 Indiamart was the distributor for ZTE Corporation and ZTE Telecom India who were
involved in the business of manufacturing and selling mobiles, handsets, dongles etc.
(Defendants).
 In 2014, the Plaintiff was granted an ad interim injunction against the Defendants by the
HC. However, it was later discovered that the injunction so passed was not confirmed.
 Issues
 Since the Patent Act does not presume the validity of the patent, the burden of proof to
prove that the Defendant has infringed upon the Plaintiff’s patent, rested on the
Plaintiff. The Plaintiff was not able to satisfy the court with a prima facie case of
infringement.
 Whether a foreign company who has registered patents in India, but has not put the
patents to use can seek injunctions against others from using/ registering that patent?
 Whether the plaintiff suffered an irreparable loss in this case?
 Court Decision
 With regards to the first issue, the Delhi HC held that the Plaintiff was not able to satisfy
the court with a prima facie case of infringement because the ‘expert’ opinion provided
by the Plaintiff was not considered to be so. It held that in cases of patent infringement
 the expert opinion should be given by someone with expertise in that particular field. In
this case, the expert held a management degree and the nature of his work was general
in nature and could not be considered relevant under Section 21 of the Evidence Act.
 The patent in question was granted to Nokia in 2002 and was acquired by the Paintiff
only in 2006. The court held that this means Nokia was aware of the infringement and
chose not to take any action even before the assignment of the patent. It further upheld
the decision of Franz Xaver Huemer vs. New Yash Engineers AIR 1997 Delhi 79,
wherein it was decided that if a patent is registered in India by a foreigner but not used,
then others cannot be restrained from using/ registering that patent as it would seriously
affect the economy. The Plaintiff had only licensed the patent to other companies, and
these licensees did not file for infringement. Thus, the court held that in this case an
injunction would cause unnecessary damage to the Defendants.
 The Court finally held that the Plaintiff had not suffered an irreparable loss as their loss
could be easily calculated in monetary terms and adequately compensated.
 Thus,considering the above-mentioned factors, the court vacated the injunction but
appointed experts to assist the court in determining infringement of the patent.

9) Dhavel Diyora vs UOI
10) Aloys wobben vs Enercon (India) Ltd. (2010)
Doctrine of colorable variation
1)Lekophone corp vs. The rola co (1930)
2)Symed labs vs. glenmark pharma
3) Polaroid corp vs. Eastman koodak
WELL KNOWN TRADEMARKS
1)ICICI bank ltd. Vs chundong XU (2012 (49) ptc
2)Kamal trading corp & ors v. Gillette uk ltd
3) NR dongre vs. whirlpool corp
4) Rolex vs.Alex jewellery pvt.ltd
5) Tata sons vs. manoj dodia

1)zara food v Zara fashion

2)Coca coca vs bisleri
3)Milmet of the industries vs. Allegan inc(2004)
 Product Dispargment
1) Robin blue vs ujala
2) Shoed polish vs. cherry blossom v kiwi
3) Dabur enami (Chawanprash)
4) Dabur vs. colgate(tooth powder)
5) Dettol vs. lifebuoy
6) Horlicks vs. Indus wellness products
7) Harpic vs. domex
8) Big o vs. Good year
9) Dabur India vs. Colorteck mehalaya