Article
Patents – Patentability with respect to inventive step, and proof of right
By IPR Team
The article in this issue of IPR Amicus discusses at length the recent decision of the Intellectual Property Appellate Board (‘IPAB’) in the case of Stempeutics Research Pvt. Ltd. v. The Assistant Controller of Patents & Designs, where the Board adjudicated patentability with respect to inventive step under Sections 2(1)(ja) and 3(e) of the Patents Act, 1970. In respect of Section 3(e), the IPAB was of the view that a product made from a novel ingredient could not fall under the purview of Section 3(e) and that the mere existence in the prior arts of each of the elements would not ipso facto mean that the invention would be barred under said section. The IPAB also addressed the issue of submission of proof of right under Section 7(2) and held that the refusal of the patent application despite fulfilling the proof of right requirement, though with delay which was beyond the control of the appellant, was untenable. According to the team, the order, besides its contribution to the medical world, succinctly clarified employer-employee relationship, particularly in respect to creation of intellectual property, and highlighted the role of prior art in allowing a claim...
Ratio decidendi
- Trademarks – Non-user rectification – Party not aggrieved if there is no similarity in marks – IPAB
- Patents – Divisional application when cannot be rejected – IPAB
- Trademarks – Evidentiary value of unstamped licence agreement, concealment of material fact and prior user of mark for different goods in same classification – Delhi High Court
- Patents – Prior art must be known to the public, and only claims of the prior art need to be considered when assessing objection of anticipation by prior claiming – IPAB
News Nuggets
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- Glow & Handsome – Bombay High Court restrains defendants who is yet to bring its product in market
- Patents – Order must be passed by same officer who heard the matter
- Colour-based product packaging mark can be inherently distinctive
- Embedding in website of works from other websites, when not requires copyright holder’s authorisation
- Patents – IPAB suggests timelines for opposition proceedings
- Nokia is a well-known mark – IPAB allows appeal against order of rejection
- Patents – Divisional application with different combination of components, permissible
