Kirti BalasubramanianPartner
Disha JhaSenior Associate
Bhavik ShuklaAssociate
Key Developments
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Division Bench of the Delhi High Court clarifies criteria for the maintainability of divisional patent applications
A Division Bench of the Delhi High Court, in Syngenta Limited v Controller of Patents and Designs (Syngenta), has clarified that divisional patent applications are valid when filed by the patentee, either on its own motion or to comply with the objections raised by the Controller of Patents. The Division Bench also observed that divisional patents may be filed in respect of parent applications where the complete or provisional specification (and not the claims) of the parent application disclose a plurality of inventions.
This clarification in Syngenta provides an authoritative interpretation of Section 16 of the Patents Act, 1970 (Patents Act). In an earlier case, (Boehringer Ingelheim International GmbH v The Controller of Patents) the filing of divisional applications had been limited to only cases where ‘claims’ of the parent application disclosed a plurality of inventions. The Syngenta case confirms that under Section 16(1) of the Patents Act either the provisional or complete specifications (and not the claims) need to disclose plurality of inventions. The Syngenta case also reiterated that Section 16 of the Patents Act does not indicate any specific instances for filing divisional applications.
This is likely to be of strategic interest to patentees seeking to ensure the widest possible protection for their inventions through divisional applications.
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Delhi High Court differentiates between goodwill and reputation in a determination of transborder reputation in a passing-off matter
A Division Bench of the Delhi High Court, in Bolt Technology OU v Ujoy Technology Private Limited & Anr., discussed the difference between the concepts of ‘goodwill’ and ‘reputation’ in respect of a passing-off action in trademark. The Court held that while the terms ‘goodwill’ and ‘reputation’ are used conjunctively, they have different meanings. ‘Goodwill’ requires presence within the domestic market where the passing-off claim is being made, while ‘reputation’ is dependent on the well-known nature of the mark across the world.
After drawing this distinction, the Court held that the presence of a business in a market where passing-off is being claimed is not a pre-condition for passing-off. Considering the impact of technology and access to information in the digital age, the Court observed that the ‘reputation’ of a mark in a territory would be sufficient for such a claim. The factors for establishing reputation need not necessarily be linked to the presence of the mark in the market, but could extend to promotion and advertisement of the mark, knowledge of the mark among a sizeable section of the public, and its reputation being grounded in the minds of consumers in India.
This clarification extends such actions to cases where the mark has a substantial reputation in a domestic market. This may enable foreign clients that have no commercial presence in India to obtain reliefs for passing-off based on their worldwide reputation and promotion in India.
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Madras High Court delineates the scope of the term ‘diagnostic’ for determining ineligibility of patents
In a first of its kind decision, the Madras High Court, in The Chinese University of Hong Kong & Anr. v The Assistant Controller of Patents & Designs, interpreted the scope of ineligibility of a patent in respect of diagnostic methods. Section 3(i) of the Patents Act provides that ‘any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings’ is ineligible for protection as a patent. In allowing the appeal filed by the appellant against the decision of the Patents Office (which refused the patent), the Court held that a medical test is diagnostic and covered within the ambit of Section 3(i) of the Patents Act, if it is capable of identifying a disease, disorder, or condition for treatment of the person. The Court observed that whether or not the test could do this should be determined by a person skilled in the art, such as a doctor.
The Court also observed that the word ‘diagnostic’ is to be interpreted to mean only those processes that disclose diseases or disorders for the treatment of human beings. In the event the claimed invention does not per se point to diagnosis for a treatment, it would not be diagnostic under the scope of Section 3(i).
This decision of the Court brings forth much-needed clarity on the scope of diagnostic methods and limits this scope only to those inventions that particularly provide diagnosis of diseases or disorders.
In the coming months, we expect the Calcutta High Court to consider feedback on the draft rules for its intellectual property division. Separately, we also anticipate additional procedural amendments to the Patent Rules 2003, in view of the draft Patents (2nd Amendment) Rules, 2024, which contain specific provisions for the appointment of an ‘Adjudicating Officer’ and an ‘Appellate Authority’ for adjudication of penalties in relation to (i) unauthorised claim of patent rights; (ii) refusal to supply information to the central government; and (iii) practice by non-registered patent agents. These provisions will facilitate a streamlined and uniform process for adjudicating non-compliances.
