IPR Amicus: May 2024

Article

Patentability – High Court clarifies the language of Section 3(c) of the Patents Act, 1970
By Eeshita Das and Supriya Ramacha

The article in this issue of IPR Amicus elaborately discusses a recent Madras High Court decision setting aside an order passed by the Assistant Controller of Patents and Designs which had refused the grant of a patent under Section 3(c) of the Patents Act, 1970. The Court has held that Section 3(c) would only apply to a process of finding a hitherto undiscovered non-living substance by identifying and isolating it from nature. Further, on the facts of the case, the Court noted that the contention that the claimed antibody was naturally occurring solely because the sequence listing described the organism as Homo Sapiens, lacked support. It also noted that the claimed antibody was not isolated from a human being but was engineered. According to the authors, it remains to be seen whether Indian Patent Office will examine patent applications to determine the applicability of Section 3(c) more efficiently in view of this order.

Ratio decidendi

• Patents – Method for compressing digital media – Delhi High Court sets aside objections under Section 3(k) relating to computer programme – Delhi High Court
• Patents – Writ maintainable against rejection of pre-grant opposition but, manifest/jurisdictional error in impugned order necessary to exercise jurisdiction under Article 226 – Delhi High Court
• Patents – Non pursuance of Divisional Application after certain objections by Patent Office does not acknowledge merits of objections – Delhi High Court
• Patents – No obviousness if a ‘mosaic’ is required to be made to get to the invention from prior arts – Court also clarifies on ‘person skilled in the art’ – Madras High Court
• Patents – No deemed abandonment under Section 21(1) if objections in FER responded – Merit of response/explanation is not material – Madras High Court
• Trademarks – ‘VIGOURA’ is deceptively similar to trademark ‘VIAGRA’ and thus infringes same – Delhi High Court
• Trademarks – Mere phonetic, visual, and structural similarity not enough for rectification – Other determinative issues also to be considered – Delhi High Court
• Trademark disparagement – Use of distinctive colour associated with another company and comparison of dissimilar products, particularly on a material feature, is wrong – Delhi High Court

News Nuggets

• Copyright Act entitles a copyright owner to recover damages for any timely claim: US Supreme Court
• Trademarks – ‘Indamet’ is deceptively similar to ‘Istamet XR CP’ – Delhi HC Division Bench upholds interim injunction by Single Bench
• Trademarks – Statutory right in mark ‘FEVIKWIK’ not grants right of rectification against ‘KWIKHEAL’
• Trademarks – ‘AO Smith’ and ‘Star Smith’ – Delhi HC affirms injunction against use of mark ‘Star Smith’
• Trademarks – Madras HC grants injunction against use of ‘body builder’ logo deceptively similar to MRF’s ‘muscleman’ device

May 2024/Issue-152