by Zen Webnet | 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 Zen Webnet | Feb 7, 2024 | Blog
Article by Rakesh Yadav
In the intricate landscape of intellectual property, the term “patent trolls” has emerged as a contentious issue, sparking debates on the detrimental effects on innovation and economic growth. Patent trolls, often operating as individuals or companies, acquire patents not with the intent of producing or utilizing the inventions or ideas they protect but rather to exploit legal avenues for financial gain. This practice involves suing other entities that allegedly infringe on these patents, creating a litigious environment that poses significant challenges to genuine innovators and disrupts the normal course of business.
The impact of patent trolls on innovation is multifaceted. By wielding patents as weapons in legal battles, these entities make the process of creating and improving inventions more arduous and costly for individuals and companies alike. The very essence of patents, designed to incentivize innovation by providing legal protection and exclusivity, is subverted when wielded as tools for litigation rather than fostering genuine invention. This article delves into the various dimensions of the patent troll phenomenon, examining its drawbacks, consequences for innovation and economic growth, and potential strategies for mitigation.
The Patent Troll Landscape: Understanding the Menace
At the heart of the patent troll problem lies the exploitation of intellectual property rights. Patent trolls often acquire patents from inventors or companies that may not have the resources or intent to implement the patented ideas. Armed with these acquired patents, they proceed to target other entities, asserting patent infringement claims and demanding financial settlements. This aggressive approach disrupts industries and stifles innovation by diverting resources towards legal battles rather than constructive research and development.
Drawbacks and Disadvantages of Patent Trolling
The negative consequences of patent trolling are widespread and profound. Firstly, it introduces an element of uncertainty and fear within the business landscape. Companies and individuals may hesitate to innovate or introduce new products, fearing the specter of patent infringement lawsuits. This fear can result in delayed or canceled projects, impacting the overall pace of technological advancement.
Moreover, the financial toll of patent trolling is significant. Entities facing patent infringement lawsuits from trolls incur substantial legal fees, settlements, and judgments. The financial burden can cripple smaller companies, diverting funds that could have been allocated to research, development, and market expansion. The sheer cost of litigation and settlements often forces companies to reassess their innovation strategies, potentially curtailing their ability to compete and thrive in the market.
The economic ramifications extend beyond individual businesses. In a broader context, patent trolls contribute to a strained legal system, clogging courts with frivolous lawsuits. This not only burdens the legal infrastructure but also results in an inefficient allocation of resources that could be better utilized elsewhere.
Impact on Innovation and Economic Growth
Innovation is the lifeblood of economic growth, driving productivity, creating jobs, and fostering global competitiveness. Patent trolls, by virtue of their litigious practices, cast a shadow over this fundamental process. The mere threat of patent litigation can deter inventors and companies from exploring new ideas, launching products, or entering emerging markets. The resulting climate of apprehension stifles creativity and hinders the natural evolution of industries.
Economically, the consequences are palpable. The resources diverted towards defending against patent trolls could have been used for genuine research, development, and market expansion. Instead, these resources are absorbed in legal battles, impeding economic growth and hindering the potential for job creation. The cumulative effect is a drain on the economy, with billions of dollars spent annually on litigation and settlements that could otherwise fuel innovation.
Mitigating Patent Trolling: Strategies and Solutions
Addressing the patent troll problem requires a multifaceted approach, encompassing legal reforms, collaborative initiatives, and heightened awareness within the innovation ecosystem.
Addressing the patent troll problem requires a multifaceted approach, encompassing legal reforms, collaborative initiatives, and heightened awareness within the innovation ecosystem.
- Legal Reforms:
- Stricter Patent Standards: Implementing clearer and more stringent criteria for granting patents can reduce the likelihood of vague or overly broad patents falling into the hands of trolls.
- Shorter Patent Durations: Reducing the duration of patent protection can limit the window of opportunity for trolls to exploit patents for litigation purposes.
- Increased Hurdles for Lawsuits: Introducing measures to make it more challenging and expensive for trolls to sue for patent infringement can act as a deterrent.
- Specialized Courts and Judges:
- Establishing specialized courts or appointing judges with expertise in patent law can expedite the resolution of patent cases, making the process faster, more efficient, and cost-effective.
- Collaborative Initiatives:
- Patent Pools and Alliances: Creating alliances or pools among entities with patents can discourage litigation within the group, fostering collaboration and collective protection against trolls.
- Licensing Agreements: Encouraging entities to license their patents to each other can reduce the risk of infringement claims, promoting a more cooperative approach to intellectual property.
- Education and Awareness:
- Raising awareness about patent trolling and its consequences is crucial. Educating inventors, companies, and the public about the risks and rights associated with patents can empower them to navigate the landscape more effectively.
- Providing support mechanisms such as legal and financial assistance for those facing patent lawsuits can level the playing field and encourage continued innovation.
- Global Cooperation:
- International efforts to harmonize patent laws and procedures can create a more cohesive and consistent framework for addressing patent trolling on a global scale.
In conclusion, patent trolls pose a significant threat to innovation and economic growth. The disruptive impact of litigation, financial burdens on businesses, and the overall chilling effect on creativity necessitate concerted efforts to curb this menace. Legal reforms, collaborative initiatives, and enhanced education are vital components of a comprehensive strategy to mitigate the adverse effects of patent trolling. By fostering an environment that prioritizes genuine innovation and protects inventors and businesses, we can safeguard the future of technological progress and economic prosperity.
by Zen Webnet | 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.
