In 2024, India witnessed several judgments in patent law that pave the way for emerging perspective towards patents for key sectors like pharmaceuticals, biotechnology, software, and agriculture. In this article we have curated a list of noteworthy judgements from all the major High Courts in the year 2024, for the benefit of IP community. The judgements provide insights into several issues such as jurisdiction, patentability, and the balance between inventor rights and public interest, among other issues.
Case 1: University Health Network vs Adiuvo Diagnostics Private Limited
In this case, the Madras High Court upheld its jurisdiction to hear a challenge to the grant of a patent. Although the patent application was initially filed in Delhi, a significant portion of the examination and hearing process, including physical hearings, took place in Chennai. The court ruled that since crucial aspects of the case occurred within its jurisdiction, it had the authority to hear the matter. This decision emphasizes that jurisdiction in patent cases extends beyond the mere location of the initial application, considering the broader context of where key proceedings took place.
Case 2: Novartis Ag vs Natco Pharma Limited & Anr
In a significant ruling, a division bench of the Delhi High Court overturned a Single Judge order that had set aside a patent granted to the plaintiff for a combined complex of sacubitril and valsartan. The court meticulously analyzed the distinction between the examination and opposition proceedings in the patent grant process. It clarified that while pre-grant oppositions are an important part of the process, they do not confer upon opponents the right to participate directly in the Controller’s independent examination and assessment of the patent application. This decision provides clarity on the scope of pre-grant oppositions and reaffirms the importance of maintaining a clear distinction between the examination and opposition phases within the patent grant process.
A pesticide manufacturers’ association in Haryana faced a setback in their legal challenge against the grant of a patent. The association had filed a pre-grant opposition to a patent application but failed to update their contact information with the patent office. Despite claiming they were unaware of the hearing due to an outdated email address, the court found that the association had not taken sufficient steps to ensure the patent office had their current contact information. The court emphasized the importance of adhering to procedures for updating contact information and noted that the association could still pursue a post-grant opposition.
Case 4: Microsoft Technology Licensing vs Assistant Controller of Patents and Designs
In this case, the Madras High Court addressed the patentability of computer-related inventions (CRIs). The appellant’s application for a software invention titled “Delegating Instant Messaging Sessions” was rejected by the Patent Office under Section 3(k). However, the court overturned this decision. The court emphasized that the Patent Office should consider the 2017 guidelines, which allow software patents based on their technical contribution, not just hardware novelty. The court found the Patent Office’s reliance on outdated guidelines to be misplaced.
Case 5: Vifor (International) Limited & Anr. vs Msn Laboratories Pvt Ltd & Anr.
In this significant ruling, the Delhi High Court’s Division Bench clarified the interpretation of product-by-process claims under Indian patent law. The case involved Vifor (International) Limited, who sought to prevent MSN Laboratories from manufacturing and selling a drug similar to their patented product. Initially, a Single Judge denied Vifor’s request, ruling that their patent protection was limited to the specific manufacturing process. However, the Division Bench overturned this decision, granting Vifor the interim injunction. This ruling emphasizes that product-by-process claims must represent novel and inventive products to be eligible for patent protection. This clarification provides crucial guidance for pharmaceutical companies and innovators in India.
Case 6: Arthrogen Gmbh Vs Controller General of Patents, Designs and Trademarks and Anr
In this patent appeal, Arthrogen challenged the Indian Patent Office’s rejection of their invention for a method of producing protein-enriched blood serum using gold particles. The Patent Office incorrectly ruled that the invention fell under “methods of treatment” (Section 3(i)) and excluded subject matter under Section 3(j) and was therefore not patentable. The Court found that the company’s invention actually relates to a method of producing a substance, not a method of treating patients. The Court emphasized the crucial distinction between these two categories, highlighting that the invention’s potential use in blood transfusions does not make it a method of treatment. The Court set aside the rejection and remanded the case back to the Patent Office for reconsideration.
In this case, the Madras High Court sided with Microsoft in a dispute over a new method of communicating sensor data between devices. The Indian Patent Office had rejected the application, citing that the invention was not novel and would be obvious to a Person-Skilled-In-The-Art (PSITA). However, the court found that the invention introduced a significant improvement by using “lightweight messages” to simplify data access. The court emphasized that the invention would not have been readily apparent to the PSITA, as the prior art did not suggest or motivate the necessary advancements. This decision underscores the importance of carefully assessing the inventive step, considering the knowledge and expertise of a PSITA, in evaluating the patentability of new technologies.
Case 8: Mitsui Chemicals Inc vs Controller General of Patents, Designs and Trademarks
The Delhi High Court overturned a decision of the Controller of Patents that refused a
patent grant for an insecticidal composition.. The Court ruled that the scope of claim amendments should be evaluated based on the original claims included in the PCT National Phase Application, rather than on any subsequent amendments. Additionally, the Court stressed that Section 3(h) of the Patents Act excludes only agricultural methods, not technical solutions addressing agricultural challenges. Due to the lack of substantive rationale in the Impugned Order regarding Section 3(h) objections, the Court has instructed the matter to be reconsidered by the Patent Office.
Case 9: Natco Pharma Limited vs Kudos Pharmaceuticals Limited & Anr.
The patent holder, Kudos Pharmaceuticals secured a permanent injunction against Natco Pharma. Natco had been manufacturing and selling a generic version of Kudos’ patented cancer drug, Olaparib, despite Kudos’ claims of patent infringement. Natco challenged the validity of Kudos’ patent, arguing it lacked sufficient innovation. However, the Delhi High Court dismissed this challenge. However, the court found that although Olaparib might be “covered” by the earlier patents, it was not specifically disclosed, and is a crucial distinction for patent validity. The court also emphasized the importance of considering the public interest in such cases, particularly the potential impact on patient access to affordable cancer treatment. This decision has significant implications for the pharmaceutical industry, raising questions about the balance between protecting innovation and ensuring access to affordable medicines.
Case 10: Snpc Machines Private Limited & Ors. vs Mr Vishal Choudhary
In this case, the Delhi High Court granted an injunction to SNPC Machines against a competitor who was allegedly manufacturing and selling patented brick-making machines. The court applied the “doctrine of equivalence” to find infringement, emphasizing the core functionality of the invention rather than focusing solely on minor differences in design. The court also applied the pith and marrow test to evaluate the competitor’s machine, which differs in some aspects, however achieved the same result through substantially the same means. This decision highlights the importance of considering the overall functionality and purpose of an invention when assessing patent infringement.
Case 11: Telefonktiebolaget Lm Ericsson(Publ) vs Lava International Ltd
In this case, the court ruled on a dispute over standard essential patents, which are critical for implementing widely-used 5G standards. The disagreement centered on the FRAND licensing terms. After extensive negotiations, Lava International Ltd challenged the Ericsson’s licensing practices, claiming that the terms were not being offered fairly. The court found that the licensing rates were indeed within acceptable FRAND standards but also noted that the challenging company had not negotiated in good faith, labeling them as an “unwilling licensee.” This case sheds light on the complexities of patent rights and licensing in the SEPs technology sector, highlighting how such disputes can impact the broader industry and technology access.
Case 12: Google Llc vs Controller General of Patents, Designs and Trademark
In this case, Google was fined Rs. 1 Lakh for failing to disclose that its patent applications had previously been rejected in another jurisdiction (PCT National Phase application) due to a lack of inventive steps. This omission misled authorities about the uniqueness of their invention, resulting in the penalty. This case emphasizes the importance of full transparency in the patent application process, highlighting the need for companies to disclose all relevant information about similar applications in foreign jurisdictions to ensure a thorough and fair evaluation by the patent office.
Case 13: Natco Pharma Limited vs Novartis Ag and Anr
In this case, the Delhi High Court examined the patentability of a new salt form of a known drug.The court delved into the complex question of whether the new salt form demonstrated sufficient “inventive step” over the original drug. The court emphasized that simply creating a new salt form of an existing drug may not automatically qualify for a patent. To be patentable, the new salt form must offer significant improvements, such as enhanced therapeutic efficacy, improved bioavailability, or reduced side effects.In this case, the court found that the patent for the new salt form was invalid. This decision highlights the importance of demonstrating substantial advancements beyond mere structural modifications to obtain patent protection for new salt forms of known drug
In a significant judgment, the Delhi High Court awarded Communication Components Antenna Inc. damages of approximately INR 217 crores against Mobi Antenna Technologies for infringing on their patent related to antenna technology used in cellular networks. The court found that Mobi Antenna’s products infringed on key features of Communication Components’ patented invention, including the beam patterns and critical coverage areas. The court emphasized the importance of considering the “pith and marrow test” of the invention and applied the doctrine of equivalents to determine infringement. This decision underscores a strong precedent for the enforcement of intellectual property rights in India, particularly within the rapidly evolving telecommunications sector.
Case 15: Honeywell International Inc. v. Controller General of Patents, Designs and Trademarks
In a significant ruling, the Delhi High Court clarified the permissible scope of amendments to patent applications in India. The case involved a patent application where the original claim encompassed a “composition comprising an organic compound.” The applicant subsequently amended the claim to simply claim the “organic compound” itself. While the Patent Office rejected this amendment, citing concerns about exceeding the original claim scope, the court upheld the amendment. The court held that narrowing the scope of the claim by removing the “composition” element was permissible as long as the amended claim remained supported by the original disclosure. This decision reinforces the principle that patent applicants can refine their claims through amendments, such as removing elements, to better define the scope of their invention while staying within the bounds of their original disclosure.
Case 16: Indian Institute of Technology (IIT Madras) v. The Controller of Patents & Designs
This case involved a patent application for a process that resulted in the unintentional doping of a chemical compound. The court rejected the application, finding that the process was not an “invention” but rather a “discovery” as it involved an unintended and inherent consequence of the process steps. The court also concluded that the process lacked inventive step as it would be obvious to a person skilled in the art and did not involve a technical advancement. While the court did not find the process to lack industrial capability, the rejection was upheld due to the lack of inventive step and the use of a known process without producing a new product.
Case 17: Rhodia Operations vs Assistant Controller of Patents and Designs
In this case, a patent application was rejected for lack of inventive step and for being a mere admixture. The Madras High Court addressed the rejection of a patent application for a composition of cerium oxide and zirconium oxide used in catalysis. The Court found that the Controller failed to assess the key inventive feature—double population of pores—and unfairly reintroduced objections related to synergistic effects without prior notice. The Court remanded the case for reconsideration by a different Controller.
Case 18: Saurav Chaudhary vs Union of India & Anr.
In this landmark case, the Delhi High Court recently overturned the abandonment of a patent application. The application was mistakenly deemed abandoned due to the patent agent’s failure to respond to a First Examination Report (FER) issued by the patent office. Despite repeated attempts by the applicant to contact the agent regarding the application’s status, no response was forthcoming. The applicant, unaware of the impending abandonment, discovered the lapse only later. The court, after carefully considering the applicant’s diligence and the patent agent’s negligence, ordered the restoration of the application. This landmark ruling underscores the crucial role of patent agents in the patent application process and serves as a strong reminder of the potential consequences of their negligence on inventors’ rights.
Case 19: Star Scientific Limited vs The Controller of Patents and Designs
In the case before the Delhi High Court, an applicant challenged the rejection of their patent application by the Controller of Patents. The Controller had rejected the application after the appellant missed a hearing due to financial constraints, despite submitting detailed responses to the Examination report. However, the court found that the Controller’s order was flawed as it failed to adequately consider the applicant’s detailed response to objections raised during the examination process. The court emphasized the importance of reasoned decisions by the Controller and the need to consider all relevant factors, including responses from the applicant. This case serves as a reminder to patent applicants to diligently respond to objections and to ensure proper representation during the patent application process.
Case 20: Sakata Seed Corporation vs The Controller of Patents and Designs
In case before the Madras High Court, an Applicant challenged the rejection of patent application for a method to create self-sterile flowers. The patent office initially denied the application under section 3(j), citing that the subject matter relates to “essentially biological processes” that is not patentable. The Applicant argued that the method involved significant human intervention beyond merely observing natural phenomena. The court agreed, emphasizing the importance of human ingenuity in advancing plant breeding techniques. The case was remanded to the patent office for reconsideration, highlighting the need for a nuanced approach to determining patentability in the field of plant breeding, balancing the protection of intellectual property with the preservation of natural processes.
Case 21: Blackberry Limited vs Assistant Controller of Patents And Design
The Court’s judgment reaffirmed the strict application of Section 3(k) of the Indian Patents Act, emphasizing that pure algorithms and software without inventive hardware or significant technological transformation are non-patentable. It underscored the importance of precise claim construction to assess the substance of an invention. Even when integrated with hardware or other elements, the invention must have a tangible technical effect that goes beyond the mere execution of a set of instructions. The court emphasized that the invention must not only improve the functionality of the system but also achieve an innovative technical advantage that is clearly defined and distinct from ordinary operations expected of such systems. Without such advancements, claims are likely to be rejected as mere algorithmic processes.
Case 22: Bry-Air (Asia) Pvt. Ltd. vs Union of India
In this case the Delhi High Court, an applicant successfully challenged the deemed abandonment of their Indian patent application under Section 21. This patent application was declared abandoned by the Indian Patent Office due to the negligence of the Applicant’s former patent Agent. The agent failed to file request for examination (FORM 18) within the prescribed timeframe, leading to the application being deemed withdrawn. The applicant argued that they had no intention to abandon their application and had diligently followed up with the Agent regarding its progress. The court, recognizing that the Applicant should not suffer the consequences of their Agent’s negligence, sided with the Applicant citing previous rulings that emphasized the importance of protecting Applicants’ interests. The court quashed the “deemed withdrawn” status and allowed the Applicant to re-file the necessary documents, effectively reviving the patent application. This decision sets a precedence for applicants who may have been inadvertently disadvantaged by the negligence of their legal representatives.
Case 23: F. Hoffmann-La Roche AG & Anr. vs Zydus Lifesciences Limited
In this patent infringement case, the Delhi High Court denied F. Hoffmann-La Roche AG (“Roche”) an injunction against Zydus Lifesciences Limited (“Zydus”). Roche, the developer of the cancer drug Pertuzumab, sought to block the marketing of Zydus’s biosimilar “Sigrima“. The court ruled against Roche, finding that the company failed to provide crucial “claim mapping” evidence, on how Sigrima infringes upon their patents. This decision emphasizes the importance of robust legal arguments and evidence in patent infringement cases, particularly the requirement of “claim mapping” to establish infringement.
Case 24: Kymab Limited vs Assistant Controller of Patents
The case dealt with the rejection of a patent application for “animal models and therapeutic molecules.” under Section 3(i), which excludes methods of treating animals aimed at curing diseases or enhancing economic value. The Court analyzed whether the invention, involving antibody production in transgenic mice, constituted “treatment of animals.” It concluded that the process did not increase the economic value of the mice or their products but focused on producing non-murine antibodies. Since antibodies produced through this process did not qualify as “products of the animals,” the Court set aside the rejection and directed the grant of the patent.
Case 25: Regeneron Pharmaceuticals vs Controller of Patents and Designs
The Court set aside the rejection of a patent application for amendments related to genetically modified mice and antigen-binding proteins. The Controller rejected the amendments for allegedly expanding the claim’s scope and for potentially causing animal suffering without substantial human benefit. The Court held that the Controller failed to consider the complete specification and the applicant’s explanation that the modifications aimed to benefit medical research. The case was remanded for reconsideration by a different Controller, with instructions to issue a reasoned order within four months.
Case 26: BASF SE vs. The Deputy Controller of Patents and Designs
BASF SE appealed against a decision by the Deputy Controller of Patents and Designs, which rejected its Divisional Application for a patent, filed on the same day as the grant of the original patent. The rejection was based on the timing of the application, which was filed after the original patent grant. BASF argued that the Divisional Application should be allowed because it was filed on the same day as the grant of the original patent, effectively making it a simultaneous filing. The court ruled in BASF’s favor, invalidating the impugned order and remanding the matter for fresh consideration, directing the IPO to review the application within six months and appoint a new Controller to ensure fairness.
Case 27: Comviva Technologies Limited vs Assistant Controller of Patents
The Court set aside the rejection of a patent application related to a token-based authentication system for electronic payment cards. The Controller had rejected the application under Section 3(k), citing it as a “business method” and a “computer program per se.” The Court held that the invention addressed a technical problem—enhancing transaction security—and involved a technical process, not merely a business transaction. The Court emphasized that technical advancements in contactless payments should not be excluded from patentability solely for involving computer programs. The matter was remanded with a directive to proceed with granting the patent, subject to other requirements.
Case 28: Astrazeneca Ab & Anr. vs Westcoast Pharmaceutical Works
The Delhi High Court sided with AstraZeneca in a patent infringement case against Westcoast Pharmaceutical Works. AstraZeneca, the manufacturer of the cancer drug Osimertinib, accused Westcoast of infringing their patent by offering to produce and sell the drug. Despite Westcoast’s claims of regulatory approval and assurances of non-production, the court found insufficient defense. The court granted a judgment in favor of AstraZeneca, permanently prohibiting Westcoast from dealing in Osimertinib and imposing a substantial fine to deter frivolous litigation. This ruling underscore the significance of patent protection in the pharmaceutical sector and serves as a strong deterrent for potential infringers.
Case 29: Signal Pharmaceuticals vs Deputy Controller of Patents and Designs
In a recent case before the Madras High Court, an appellant challenged the patent office’s rejection of their patent application for a cancer treatment method. The rejection was based on findings of a lack of inventive step and non-patentability under Section 3(d). The court found that the patent office’s order was deficient in several respects. Critically, the court observed that the order was a “non-speaking order” that failed to adequately address the appellant’s arguments, including their amended claims, expert evidence, and the distinctions between their invention and prior art. The court emphasized the importance of reasoned decisions and the need for the patent office to properly consider all relevant information. The court dismissed the rejection order and remanded the case back to the patent office for reconsideration by a different officer, instructing them to address the shortcomings identified in the court’s judgment.
This work is licensed under a Creative Commons Attribution 4.0 International License.