Article
Demystifying the scope of amendments in patent claims – Indian jurisdiction
By Malathi Lakshmikumaran and Neha Ruhela
Amendments to a patent application form an essential element in demarcating the scope of inventions. The article in this issue of IPR Amicus provides a comprehensive guide on the scope of claim amendments allowed in the Indian Patent regime. It focuses on the relevant aspects which must be kept in mind when applicants/patentees wish to file claim amendments. The article also highlights the trends at the Indian Patent Office in examining the claim amendments. Highlighting judgements to understand the trends of claim amendments, the article elaborately discusses the different stages of amendments in the claims. Answering very pertinent questions regarding amendments before and after the grant of patent application, the article also discusses amendments after refusal of the application. According to the authors, interpreting the provisions restrictively and disallowing legitimate amendments shall unduly affect the interests of a genuine applicant/patentee, creating room for possible infringement of rights. The authors hope that with time and evolving jurisprudence, more decisions in the matter can help protect the rights of the applicant(s) effectively...
Ratio decidendi
- • Territorial jurisdiction of court in trademark and copyright disputes – Situs of branch office not enough – Part of cause of action also required – Madras High Court • No breach of confidentiality when everything common is disclaimed as not proprietary, and what is left is different and not the same – Bombay High Court • Invisible use of trademark as keyword is also prima facie ‘use’ under Section 29 – Google cannot absolve itself from the liability of ensuring that the keyword is not an infringement of any trademark – Delhi High Court • Copyrights – Assignee to copyright cannot grant license without being a copyright society – Madras High Court • Patents – Enhanced solubility and bioavailability when can be taken as evidence of enhanced therapeutic efficiency – Delhi High Court
News Nuggets
- • No passing off by use of words ‘Magical Masala’ allegedly similar to ‘Magic Masala’, both used for same food product • Mark ‘AC Milan’ of a football club cannot be registered for stationery and office supplies • Use of ‘upGrad’ as keyword in Google Ads Word Program by competitor is prima facie wrong • Trademark registration of Agatha Christie title ‘And Then There Were None’ allowed in classes 9, 16 and 41 • ‘Cinzitas’ derived from ‘Cinzan’ and not from generic salt ‘Cinnarizine’
