Article
Applicability of the Doctrine of Equivalents in the Indian context
By Jaya Pandeya, Pulkit Doger and Niharika Tiwari
A literal assessment of claims against the alleged infringement may at times allow an infringer to find an easy workaround. To avoid such a travesty from befalling the patentee, the Courts have devised tools where even if the literal language of the patent claim is not infringed, the rights of the inventor may be safeguarded. One such tool is the Doctrine of Equivalents. The article in this issue of IPR Amicus seeks to analyse the jurisprudence surrounding the application of Doctrine of Equivalents in India. Observing that the Doctrine is used to determine whether two devices operate in substantially the same way and accomplish substantially the same result, the authors discuss various case law to provide an insight into the evolution of the nature and scope of the applicability of the Doctrine in India. The authors in this regard also discuss the Doctrine of Pith and Marrow and conclude by stating that it will be interesting to witness the direction in which the jurisprudence surrounding the application of non-literal infringement evolves...
Ratio decidendi
- No protection under Designs Act even if trademark registration cancelled subsequently – Prior publication by own use – Delhi High Court
- Trademark ‘LETROZ’ is not similar to word ‘LETERO’, both used for medicine having same API – Delhi High Court
- Exemption from mandatory pre-litigation mediation – Availability in case of urgent interim relief – Delhi High Court
- Automatic stay of infringement suit if rectification proceedings pending before Registrar prior to institution of suit – Delhi High Court
News Nuggets
- Patents – Finding of lack of inventive step – Some discussion required
- Trademarks – Transfer of cancellation petitions, pending before Registrar, to IP Division of Delhi High Court
- Patents – Divisional applications – Test of therapeutic efficacy not applicable
- Filing of additional documents – Rigours of showing reasonable cause for non-disclosure when not applicable
- Time limit within which evidence is to be filed in opposition proceedings
- Liability of intermediary in trademark/copyright disputes – Safe harbour available even in case of criminal prosecution
- Trademarks ‘RAMU’ and ‘RAMAA’ when are deceptively similar
- Royal Stag v. Royal Champ – Delhi HC notes intention to deceive the unwary consumer and to ride on the reputation and goodwill of former
- Trademarks – Ownership in word ‘APNA’
