by control_zenuser | Mar 19, 2024 | Blog
– Intellectual Property Group, S&A Law Offices
On March 16, 2024, the Indian Patent Office has posted the Patent (Amendment) Rules 2024 on its official website. The said draft amendment was first made available to public for feedback and objections on August 23, 2023. It is now notified in the official Gazette on March 15, 2024, thus, the same are now deemed to have taken effect.
Major changes:
Statement of Commercial Working of Patents on Form 27: as per amended Rule 131, Working Statement is now required to be submitted once in respect of each patent for every period of three financial years and shall be furnished within six months from the expiry of each such period. Now, a further extension upto 3 months can be requested on Form 4.
Form 3: The deadline for filing statement relating to application/s filed outside India with same or substantially the same invention (family details) as required under Section 8 is reduced from six months from the date of filing to three months from date of issuance of first statement of objections under Rules 24B(3) or 24C(8) or two months from the date of communication from the Controller if required under Section 8(2). The said deadline is extendible by 3 months upon request made on Form 4. Further, for Section 8(2) requirement of office actions, amendments to claims, etc., the Controller may, use accessible and available databases.
Divisional Application: Applicant may file one or more further applications under Section 16 including for inventions disclosed in provisional or complete specifications or a further application filed under Section 16.
Form 18: Time period for making a request for examination is now reduced from forty-eight months to thirty-one months from earliest priority date.
Grace Period under Section 31: as per new Rule 29A, to avail the grace period u/S. 31, a new Form 31 is introduced with official fee.
Opposition proceedings: Procedure for consideration of representations in pre-grant oppositions including changes in timeframes – now, the representation is to be considered by the Controller and to be notified to the opponent in case no prima facie case is made out OR notify to the applicant in case prima facie case is made out within one month. If opponent requests for hearing, the Controller shall pass an order within one month after giving opponents an opportunity to be heard. Timeline to file evidence has been reduced from three months to two months.
Form 8A: New Form introduced to issue a certificate of inventorship under Rule 70 A to an inventor upon request.
Renewal fees: Ten percent reduction in renewal fee if the same is paid in advance for at least four years period.
Petition under Rule 137: It will be not be applicable for matters related to- (i) extension of time or condonation of delay under sub-rule (5) of rule 12; (ii) clause (i) of sub-rule (4) and sub-rule (6) of rule 20; (iii) rule 21; (iv) sub-rules (1), (5) and (6) of rule 24B; (v) sub-rules (10) and (11) of rule 24C; (vi) sub-rul (4) of Rule 55; (vii) sub-rule (1A) of rule 80; (viii) sub-rules (1) and (2) of rule 130; (ix) sub-rule(2) of rule 131.
Petition under Rule 138: Time prescribed may be extended or any delay may be condoned by the Controller for a period of upto six months, upon a request made in Form 4. Such request may be made any number of times within the specified period of six months.
Additionally, the requisite details and format of Form 1, Form 3, Form 4, Form 8A, and Form 27 have been revised.
Link to Gazette Notification – Patent (Amendment) Rules 2024
by control_zenuser | Mar 15, 2024 | Blog
Article by Vivek Pandey and Priyanka Rastogi
The Delhi High Court overturned the Boehringer Ingelheim case ruling in the current landmark case of Syngenta Ltd v. Controller of Patents and Designs, bringing much-needed clarity to the requirements for filing divisional applications and offering a precise response to the questions regarding the content of the divisional application and the circumstances in which it may be filed.
Background
Syngenta (the Appellant) is a company registered under the laws of the United Kingdom. Its activities include research and development in a number of areas, including chemicals, agriculture, and healthcare-related products, as well as the production and international distribution of those products.
On December 28, 2005, the appellant submitted a 15-claim patent application (having No. 6114/DELNP/2005) to the Controller of Patents (the Defendant), regarding its invention of an agrochemical concentrate with an adjuvant and a hydrotrope. On September 15, 2011, in accordance with Rule 24 B of the Patents Rules, 2003 and Section 11B of the Act, a request for inspection of the Divisional Application was submitted. One of the three preferred combinations that were present in the parent application’s complete specifications but not claimed in the parent application’s claims was included in the divisional application filed by the appellant Syngenta. After review, the initial/parent application (IN252191) was approved on May 1, 2012. Following that, the Divisional Application no. 7059/DELNP/2011 was published on February 8, 2013. The Controller examined the divisional application, and on December 27, 2015, a First Examination Report was published. In response, the Appellant filed their answer to the FER. After allowing an opportunity of hearing to the Appellant, the Controller by an order dated October 11, 2017, denied the Divisional Application.
Issue
The main issue in this case was regarding the interpretation of Section 16(1) of the Patents Act which talks about the power of the Controller to make orders regarding the division of patent applications, specifically focusing on scenarios where a divisional application is filed to address objections raised by the Controller. Following are issues which were issued:
- Is the Divisional Application Request applicable even if it was submitted voluntarily by the applicant and not in response to the Controller’s objection regarding multiple inventions?
- Does the plurality of invention is liable to be present in the parent claims or would it also to being determined from the provisional or complete specification of the patent application?
Analysis
The Court pointed out that Section 16(1) of the Act permits the submission of a Divisional Application under two circumstances: first, when the applicant of the parent application submits it on their own initiative, and second, when the applicant submits it in response to a Controller objection. When it is believed that the claims of the whole specification apply to more than one invention, this objection is brought up.
The existence of a comma following “if he so desires” in Section 16(1) suggested that the applicant could submit a Divisional Application on their own without the necessity of plurality of innovations, the court noted in the case Indore Development Authority v. Manoharlal. The requirement of a plurality of innovations, however, appeared to apply when the Controller raised an objection because there was no comma after the phrase “raised by Controller.”
The appellant’s claim that the need for multiple innovations in the initial application would only apply when filing a divisional application to respond to a Controller objection was accepted by the court. The court did not rely on the interpretation given in Boehringer Ingelheim International GMBH v. The Controller of Patents. The Court stated that the legislature’s decision to omit a comma from Section 16(1) of the Act’s language following “raised by the Controller” appeared to be made in an effort to match the clause with Article 4(G) of the Paris Convention.
The Court noted that “relate to” and “disclosed in,” two separate terms employed in Section 16(1) of the Act, could not be overlooked for their importance. It would be adequate if the Divisional Application was submitted in relation to one invention disclosed in the provisional or complete specifications, even though the claims in the parent application must relate to a number of innovations.
The claim in the parent application, in the Court’s opinion, corresponded to a number of inventions because it covered all circumstances in which the same continuous phase included both an oil-based adjuvant and a hydrotrope. Numerous adjuvant-hydrotrope combinations could be included in the claim due to the extensive scope. Three distinct adjuvant-hydrotrope combinations were revealed in the detailed specifications that accompanied the claim. One of these exposed adjuvant-hydrotrope combinations was the subject of the appellant’s divisional application.
Consequently, the Court referred the following two questions before a division bench at the Hon’ble High Court:
- Does the requirement of a plurality of inventions in the parent application for a Divisional Application to be maintainable may still apply even when the Divisional Application is filed by the applicant voluntarily (suo moto) and is not based on any objection raised by the Controller.
- Assuming that the requirement of a plurality of inventions in the parent application was necessary for a Divisional Application to be maintainable, did the plurality of inventions have to be reflected in the claims in the parent application, or was it sufficient if the plurality of inventions was reflected in the disclosures in the complete specifications accompanying the claims in the parent application?
Division Bench’s Ruling
At the time of referral, the Single Judge noted that the Boehringer case cannot be legally justified as it essentially reconstructs Section 16 of the Act by replacing the phrase “disclosed in the provisional or complete specification already filed” with the word “claims.” The single judge further noted that the requirement that multiple inventions be included in the original claim would be a restrictive condition that would only be applicable in cases where the divisional application is filed in response to a Controller objection, not in cases where the applicant files a division application on their own.
First, the Division Bench rejected the Single Judge’s observation in the Syngenta case that the two categories should be treated differently. It held that the filing of a divisional application, whether done so suo moto by the applicant or in response to a Controller objection, must be evaluated on the same basis. Second, the Division Bench decided that there doesn’t seem to be any need to limit the divisional application filing process to instances in which the claims contain a plurality of inventions. The terms “disclosed in the provisional or complete specification” in Section 16 of the Act expressly contradict such an interpretation.
The Bench reasoned that since no claims are required in the context of a provisional filing, accepting Boehringer’s logic would essentially mean holding that no divisional application may be filed in the event that a provisional specification is submitted. The Bench further found that the idea of “what is not claimed is disclaimed” is more applicable in an infringement analysis than it is in the formulation of claims.
Conclusion
The Delhi High Court judgement in Syngenta vs. Controller of Patents case is being considered a major step in clarifying the uncertainties regarding the filing of divisional applications by following ways as given below:
- The Hon’ble Court’s clarifies doubt about from where one can refer disclosure of plurality of invention i.e., plurality of inventions can be derived from the disclosures in the specification and not just the claims, which sets a landmark for future cases.
- Also, the Court introduces uniformity between the evaluation criteria for the divisional applications filed voluntarily, and the divisional applications filed to overcome an objection of unity of invention.
In view of above, we can conclude that the court has widened the scope for applicants to file divisional applications by adopting a practical approach to the interpretation of the Indian Patents Act.
In the present case, the Controller’s refusal order signifies a very strict interpretation of section 16 of the Patents Act. Finally, the Delhi High Court’s Division Bench has delivered a resounding judgment, clarifying the requirements for maintaining a divisional patent application. The Bench overturned the Boehringer ruling and held that a divisional application may be maintained under either of the two circumstances—suo moto divisional filing or in response to a Controller objection citing multiple inventions—as long as the multiple inventions are supported by disclosures made in either the provisional or the complete specification.
by control_zenuser | Feb 19, 2024 | Blog
Article by Vivek Pandey
INTRODUCTION
After India got independence on 15th August 1947, the Indian Constitution came into force on 26th January 1950. So, on 26th January 2024, we will be celebrating our 75th Republic Day. As law professionals, we also know that the Supreme Court of India had its first hearing was held on 28th January 1950. However, there are many more interesting facts about January which are related to the IP field.
INTERNATIONAL IP FACTS
– On 27th January 1880, Thomas Edison received a patent for the incandescent lamp that flagged the way for the household electric lights around the world.
– The World Trade Organization is an international organization created on 1st January 1995, with headquarters in Geneva, Switzerland. It facilitates and promotes international trade. India is a member of the WTO. Governments, in cooperation with the United Nations system, use this organization to establish, review and enforce laws that regulate international trade. The WTO administers:
o General Agreement on Tariffs and Trade (GATT),
o TRIPS Agreement,
o Paris Convention for the Protection of Industrial Property Rights,
o Patent Practices Treaty (PCT), and
o Budapest Treaty on the International Recognition of Microorganisms for the Purposes of Patent Proceedings, and similar.
– On 01st January 2013, the USPTO transitioned from the United States Patent Classification (USPC) system to the Cooperative Patent Classification (CPC) system.
[A classification system jointly developed by USPTO with the European Patent Office (EPO).]
– A updated version of the International Patent Classification (IPC), enters into force on the 1st day of January each year. The signatory countries must mention this classification for patents in their official publications. In PCT application, this classification is determined by the International Searching Authority (ISA).
[The International Patent Classification (IPC) is a classification system for patents and utility models is established as per provisions of the Strasbourg Agreement 1971.]
– On 31st October 2019, the European Patent Organization (EPO) and Georgia (GE) signed an agreement, allowing Georgia to be included as a Validating Country in European patent (EP) application. This agreement came into force on 15th January 2024.
– For ordinary EP applications, the filing date must be on or after 15th January 2024, to include Georgia as a Validating Country.
– For PCT applications having EP as ISA, to include Georgia as a Validating Country, the international filing date (PCT application) must also be on or after date 15th January 2024.
– The International Telecommunication Union (ITU) officially introduced changes to its Patent Policy, Forms & Guidelines – Patent statement and Licensing Declaration form on date 1st January 1999.
– The UK Patent office has changed the Patent Cooperation Treaty (PCT) fee structure on 1st January 2024.
DOMESTIC IP FACTS
– The Copyright Act, 1957 (the ‘Act’) came into effect in January 1958.
– The Patents (Amendment) Act 2005 effective from 1st January 2005.
– Regulations under the Patent Law Treaty came in force from 1st January 2006.
– The first amendment was made through the Patents (Amendment) Act, 1999, but came into effect retrospectively from 1st January 1995. The amendment included introduction of the filing of product Patents w.r.t drugs, pharmaceuticals and agrochemicals (previously not permitted).
– On 1st January 2000, a Second Amendment was introduced to bring the Indian patents law into line with all the important provisions of the TRIPS Agreement. The main issues are to redefine the concept of patentable subject matter, prevent the introduction of product patents, extend the period of patent protection up to 20 years and reform the compulsory licensing system.
– The third amendment to the Patents Act 1970 was introduced by the Patents (Amendment) Act 2005, which came into force on 1st January 2005. This amendment provides for product patents in all technical fields and introduces the concept of pre-grant opposition and post-grant opposition.
[As India has a prior commitment to apply the provisions of the TRIPS Agreement to the Indian patent’s laws.]
– On 26th January 2007, the Union Ministry of Chemicals and Fertilizers announced the formation of a committee to establish a price negotiation system for patented drugs to ensure such drugs are available at a reasonable price under the National Pharma Policy. The seven-member committee is chaired by the Director (Chemicals) and also includes representatives from the Department of Health and Commerce. If the committee’s recommendations are accepted, the legal requirements should be met through amendments to the Drugs and Cosmetics Act.
– Database on Indian Patents: Patent Facilitation Centre (PFC) has developed three CD-ROM databases on Indian Patents/applications:
o Ekaswa-A: Having patent database related to Patent applications filed in India as published in the issues of the Gazette of India (Part III, Section 2) from 1st January 1995 to 31st December 2004.
o Ekaswa-B: Having patent database related to Patent applications accepted and notified for the opposition in the Gazette of India (Part III, Section 2) published for the same period i.e. from 1st January 1995 to 31st December 2004.
o Ekaswa-C: Having patent database for Patent applications published in Official Journal of Patent Office from January 2005 till June 2008.
– Late Harivansh Rai Bachchan is a famous Hindi poet and writer. His most famous work was Madhushaala (1935), Hindi translations of Shakespeare‘s Macbeth and Othello. He died at the age of 95 years on 18th January 2003. Under provision of the Copyright Act, 1957, the copyright remains with the author for the lifetime of author plus 60 years after his/her death. This means, the rights over his work will be completed in the year 2063 and his son Mr. Amitabh Bachchan (actor) will lose copyrights protection over his late father’s works in January 2063.
– “National Youth Day” is celebrated every year on January 12 to celebrate the birthday of Swami Vivekananda. On this National Youth Day (12th January 2024), O/o CGPDTM launched the “IP Manthan” series. The objective of the “IP Manthan” series is to facilitate various discussions and activities focusing on the importance of Intellectual Property Rights (IPR) for the economic and cultural development of the country.
by control_zenuser | Feb 16, 2024 | Blog
Article by Khushboo Tomar Mangal
Within the dynamic and expansive metaverse landscape, the protection of intellectual property (IP) rights becomes a paramount concern for individuals and businesses alike. Effectively securing one’s creations in this virtual realm requires a meticulous and strategic approach, emphasizing the identification and registration of various IP assets. This comprehensive process involves the recognition of a diverse spectrum of digital elements, spanning from virtual goods and intricate designs to characters, trademarks, and patents.
The metaverse, as a multifaceted digital universe, hosts a rich tapestry of creations that demand safeguarding against unauthorized use and infringement. Recognizing virtual goods as a foundational component, individuals and businesses embark on the identification journey by categorizing and documenting these items, which can include anything from virtual clothing and accessories to digital real estate.
Moving beyond tangible items, the identification process extends to the acknowledgment and cataloguing of unique designs contributing to the distinct visual identity of virtual creations. This encompasses elements such as logos, layouts, and any visual aspects that carry artistic or design significance. Characters, whether avatars or digital entities possessing individualized traits, also form a crucial part of the metaverse IP landscape, requiring precise identification and documentation.
Moreover, the identification process encompasses the discernment of trademarks within the metaverse—symbols, names, or distinctive features associated with virtual brands or products. Finally, the exploration of innovative virtual technologies or processes that might be eligible for patent protection adds another layer to the comprehensive protection strategy.
This meticulous approach to identifying and registering IP assets in the metaverse is foundational. It empowers creators to establish legal ownership and exclusive rights over their digital creations. As the metaverse continues to evolve, this strategic initiative becomes not only a shield against potential infringement but also a proactive step toward responsible and ethical engagement within the digital realm.
In conclusion, the metaverse’s vast and dynamic nature underscores the critical importance of safeguarding intellectual property rights. The meticulous process of identifying and registering a broad spectrum of digital assets within this virtual realm serves as a proactive and essential strategy for individuals and businesses, ensuring the longevity, integrity, and responsible use of their creations in this ever-expanding digital landscape.
The identification of intellectual property assets within the metaverse involves a structured approach:
Virtual Goods: Initiate the identification process by categorizing and documenting all virtual goods present in the metaverse. This encompasses digitally created items, such as clothing, accessories, or virtual real estate.
Designs: Acknowledge and catalogue unique designs contributing to the distinctive visual identity of virtual creations. This includes elements like logos, layouts, and any visual aspects carrying artistic or design significance.
Characters: Identify and document virtual characters, avatars, or any digital entities possessing individualized traits or features. Recognizing distinctive characters is crucial for protecting their unique attributes and characteristics.
Trademarks: Recognize the presence of trademarks within the metaverse, including symbols, names, or distinctive features associated with virtual brands or products.
Patents: Explore the metaverse for innovative virtual technologies or processes eligible for patent protection. Identify unique and novel concepts setting virtual assets apart.
To further fortify protection:
Trademark Registration Under Class 09: When registering trademarks, consider categorizing them under Class 09, specifically tailored to goods and services related to computer software, hardware, and electronic devices. Given the digital nature of the metaverse, Class 09 is particularly relevant for virtual assets.
Copyright Registration for Virtual Assets: Treat virtual creations with the same importance as real-world creations regarding copyright protection. Document and register copyrights for virtual assets to establish and assert exclusive rights over these digital works.
Comprehensive Coverage: Ensure copyright registration encompasses a broad range of virtual elements, including graphics, music, code, and other creative expressions contributing to the overall composition of the virtual environment.
Through the conscientious execution of identifying and registering intellectual property assets in the metaverse, individuals and businesses can reinforce their legal standing and safeguard the distinctive qualities inherent in their virtual creations. This proactive approach serves as a multifaceted strategy, not only heightening protection against potential infringement but also establishing a robust foundation for responsible and secure engagement within the ever evolving metaverse.
The act of identifying and registering intellectual property assets is a deliberate and meticulous process that involves recognizing and cataloguing a diverse array of digital elements, including virtual goods, designs, characters, trademarks, and patents. By undertaking this comprehensive effort, creators ensure that their virtual assets are duly acknowledged and protected within the expansive digital realm of the metaverse.
This proactive stance carries significant advantages. Firstly, it fortifies the legal position of individuals and businesses, providing them with a means to assert their exclusive rights over their virtual creations. Secondly, it serves as a proactive defence mechanism against potential infringement, deterring unauthorized use of virtual assets. Moreover, by actively participating in the legal frameworks available for the metaverse, creators contribute to the ongoing development of responsible practices within this digital landscape.
Beyond legal fortification, this proactive approach lays a solid foundation for responsible engagement within the metaverse. It underscores a commitment to ethical creation and use of virtual assets, fostering a culture of respect for intellectual property rights. Additionally, in the continually evolving metaverse landscape, staying ahead through proactive identification and registration of intellectual property assets positions individuals and businesses to adapt swiftly to emerging challenges and opportunities.
In essence, the proactive identification and registration of intellectual property assets in the metaverse is a strategic investment in the longevity and integrity of virtual creations. It aligns with a forward-thinking perspective, recognizing the importance of legal protection and responsible practices in ensuring a secure and flourishing presence within the dynamic and transformative metaverse environment.
by control_zenuser | Feb 4, 2024 | Blog
Article by Priyanka Rastogi
INTRODUCTION:
Section 3(d) of the Indian Patents Act, 1970 has a special place in India’s patent system. It requires more inspection of patent applications pertaining to methods in this area. Patents cannot be issued for the bare use of a known process as per Section 3(d), unless it yields a novel end-product or uses at least one novel reactant. In Tapas Chatterjee v. Assistant Controller of Patents[1], the Hon’ble Delhi High Court (hereinafter referred to as “the Hon’ble Court”) upheld the Controller’s refusal order and conducted a thorough analysis of the claimed subject matter’s inventive step and patentability in accordance with Section 3(d) of the Indian Patents Act in an order dated March 10, 2023.
FACTS:
Appellant Tapas Chatterjee filed an appeal in which she contested the Assistant Controller of Patents’ s decision to deny a patent for a patent application. According to Sections 3(d) and 2(1)(ja) of the Indian Patents Act, the refusal was made for lack of patentability and absence of inventive step, respectively. The current appeal was filed in accordance with Section 117A of the Patents Act of 1970 (hereinafter referred to as “the Act”) and challenges the refusal of Indian Patent Application for the invention made by Respondent No. 1. The subject application was evaluated by the Indian Patent Office, which then issued a First Examination Report (FER) on February 25, 2020, in which the Patent Office raised a number of objections. The main objections were related to the Claims which were falling under Section 3(d) of the Act and lack of inventive steps under Section 2(1)(ja) of the Act.
ISSUES:
- The contested order’s two reasons for rejection were as follows: In accordance with Section 3(d) of the Act, non-patentability and According to Section 2(1)(ja) of the Act, the submitted patent application lacks innovative step.
- Regarding Section 3(d), Assistant Controller of Patents and Designs (Respondent) contended that neither a new reactant nor a new product was produced throughout the process of the subject application. The Respondent argued that the subject invention did not deviate from the principles of D2 with regard to Section 2(1)(ja). “Merely because the appellant uses the thermal decomposition process to split one compound into two or more new compounds would not result in any technical advancement when compared to the cited prior art references,” they claimed. The final product in all the cited prior art publications D1–D4 is the same, i.e., potassium sulphate, indicating that the claimed technique does not result in the production of a novel product.
COURT’S ANALYSIS AND RULING:
- The Delhi High Court’s ruling in the matter of “Tapas Chatterjee vs. Assistant Controller of Patents and Designs and Anr.[2] provides insight into how Section 3(d) of the Indian Patents Act should be interpreted and applied in respect to well-known processes. The Court’s ruling highlights the necessity of novelty and inventive step in order to grant a patent and reiterates the stringent conditions for patentability.
- The Court carefully considered Section 3(d)’s requirements in this case and noted that a patent for a known process can only be issued if it yields a new product or includes at least one new reactant. The conditions for patentability are not met by simple combinations of well-known techniques without any extra components resulting in innovation or inventive step. The Court’s ruling emphasizes the significance of the “new product” or “new reactant” criteria in figuring out whether established techniques can be patented. It makes it clear that procedures have a smaller range of patentability than substances do. While the development of a new form of a substance that is already known needs improvement of that substance’s existing efficacy, no similar requirement exists for procedures that are already known.
- Both of the reasons given by the Controller for rejecting the subject patent application under Section 15 of the Act have been sustained in light of the overall facts and circumstances of this case. According to Section 3(d) of the Act, the subject patent application is not patentable, and Section 2(1)(ja) of the Act’s requirements for innovative step are not met by it.
CONCLUSION:
The Delhi High Court’s ruling establishes a precedent for determining whether known methods are patentable and offers helpful direction on how Section 3(d) should be interpreted. It emphasizes how important it is to satisfy the legal requirements, such as those relating to novelty and inventive step, and it serves as a warning to those involved in the biological sciences to carefully consider their claims before applying for patent protection. This decision encourages innovation and makes sure that patents are only issued for real technological improvements that advance society by respecting the high standards for patentability.
[1] 2023 SCC OnLine Del 1444.
[2] 2023 SCC OnLine Del 1444.
