-
Calcutta High Court Reaffirms Strict Approach to Section 3(k) (Google LLC v. Controller of Patents)
The Calcutta High Court in Google LLC v. Controller of Patents (decided on 6 August 2025), has reaffirmed the strict approach to computer-related inventions (CRIs) under Indian patent law.
Google filed Patent Application No. 2705/KOLNP/2014, titled “A Method for Labelling Visited Locations Based on Contact Information”, which sought to patent a method for tagging user, visited locations with contact labels to improve location-aware services. The Indian Patent Office rejected the application on 3 July 2020, invoking Section 3(k) of the Patents Act, 1970, which excludes “a mathematical or business method or a computer programme per se or algorithms” from patent protection. The application was filed in November 2014.
The Controller of Patents concluded that the claims were no more than algorithmic processing performed on a single computing device. Functional steps such as “collecting,” “determining,” “associating,” and “outputting” were considered abstract, result oriented descriptions lacking any novel hardware or measurable technical advancement. Additionally, the application suffered from a procedural defect as the Proof of Right document for one inventor was found defective.
On appeal beforeunder Section 117A of the Patents Act, challenging an order dated 3 July, 2020, passed by the Assistant Controller of Patents and Designs, Google argued that its invention produced a genuine technical effect and offered a technological solution rather than a mere software program. Google relied on precedents such as Ferid Allani v. Union of India (2019), Blackberry Limited v. Controller of Patents (2024), and Microsoft Technology Licensing v. Assistant Controller of Patents (2024), where courts had acknowledged software, related inventions that demonstrated improvement in system performance.
However, the Calcutta High Court was not convinced. Justice Ravi Krishan Kapur observed that the invention merely automated contextual labelling of location data and amounted to an administrative or management function. Since no technical contribution or hardware integration was disclosed, the invention fell within the exclusion under Section 3(k) of the Patents Act.
The Court also clarified the role of the CRI Guidelines issued by the Indian Patent Office. While examiners may refer to them, such as the 2017 Guidelines prescribing the three-step test for CRIs, the Court emphasized that these Guidelines are interpretative aids and not binding law. Statutory provisions and judicial precedents continue to take precedence in determining patentability.
Thus, Section 3(k) continues to present a hurdle, and CRI applications will only succeed if they show a clear technical advancement or improvement beyond generic data processing. Broad, functional claims expressed in abstract language are unlikely to meet this threshold.
Procedural compliance, including accurate Proof of Right filings, is equally critical. Ultimately, the decision underscores that while computer-related inventions in India may gain protection where genuine technical contributions are shown, courts will apply Section 3(k) strictly to prevent patents on software per se.
-
Territorial Jurisdiction in Patent Suits – Delhi HC’s Ruling in Kubota vs Godabari
The Delhi High Court in Kubota Corporation vs Godabari Agro Machinery and Services (12 August 2025) dealt with a significant question of territorial jurisdiction in patent infringement suits. The Court was asked to decide whether an “offer for sale” of an allegedly infringing product within Delhi, even without proof of an actual sale, was sufficient to confer jurisdiction. In rejecting the defendant’s objection under Order VII Rule 10 CPC, which governs the return of a plaint when a court finds it lacks the necessary jurisdiction to try the case, the Court reaffirmed that offers for sale of patented products within a forum are enough to establish cause of action, making this judgment a vital precedent for patent holders and businesses facing cross-border infringement disputes in India.
Kubota is a multinational engaged in manufacturing patented agricultural machinery, particularly self-propelled combine harvesters under the brand name HARVES KING. The defendants comprised a Chinese parent company (Defendant No.3), its overseas subsidiary (Defendant No.2), and an Indian company based in Orissa (Defendant No.1), which imported, assembled, and sold the machines in India.
The main questions before the Court were whether Delhi High Court had jurisdiction despite the defendants not being based in Delhi, whether an “offer for sale” was sufficient to establish jurisdiction under Section 48 of the Patents Act. As per Section 48(a) of the Patents Act, 1970, a patentee has the exclusive right to prevent third-parties from selling or offering for sale a patented product in India.
Another question before the Court was whether communications by dealers or distributors could confer jurisdiction, and whether trap transactions carried out by the Plaintiff’s investigators could form the basis for jurisdiction.
The Court observed that at the stage of an application under Order VII Rule 10 CPC, all averments in the plaint must be assumed to be true. It relied on the investigator’s affidavit and email correspondence, which showed that Defendant No.1’s Sales Manager had offered to deliver the impugned product in Delhi. Section 48 of the Patents Act confers exclusive rights on a patentee not only to prevent sales but also offers for sale of a patented product. Hence, even without actual sales in Delhi, the offer for delivery there created a valid cause of action.
The Court distinguished precedents such as Kohinoor Seed and Banyan Tree, noting that those cases dealt with mere online listings or website access, while the present case involved a direct offer for supply in Delhi. It further held that Agroharvest Solutions, being a distributor, did not need to be impleaded separately since the communication had been channelled through Defendant No.1’s Sales Manager.
On this basis, the Court concluded that part of the cause of action had arisen within Delhi under Section 20(c) CPC. The application seeking return of the plaint was dismissed, and the Delhi High Court retained jurisdiction over the suit.
The key takeaway from this ruling is that in patent infringement suits, even an offer for sale of the infringing product within the forum’s jurisdiction is enough to establish territorial jurisdiction, and an actual sale is not necessary. Courts will accept plaint averments as true at the preliminary stage, and communications made by agents or distributors can be sufficient to show territorial links.
-
Impact of USPTO’s AAPA Restrictions on Patent Drafting
As per news reports the new USPTO guidance restricts use of Applicant Admitted Prior Art (AAPA) in IPRs. It will no longer qualify as standalone prior art but can be combined with other references.
If you’re in patents, you’ve likely heard of “Applicant Admitted Prior Art (AAPA)”. This refers to statements in a “patent specification”, where the applicant admits something is already “known” or “conventional.” AAPA is considered risky, mainly because, those statements can later be used against the patent, even if no external prior art is cited. This can be explained as, when you write “It is well known that lithium batteries are used in …”, usage of “well known” can give challengers free prior art ammunition.
On August 22, 2025, USPTO issued a new guidance memo that significantly limits the types of prior art that can be used in IPR proceedings before the Patent Trial and Appeal Board (PTAB). Effective September 1, 2025, AAPA and general knowledge can no longer be used to establish claim elements or supply missing limitations, even when combined with other prior art. This policy supersedes previous USPTO guidance and narrows interpretations by the Federal Circuit in Qualcomm Inc. V. Apple Inc.
Earlier the disputes between Qualcomm and Apple led to the court had holding that AAPA could be used as part of an obviousness challenge in IPRs. This alarmed applicants because casual wording in the background section could tank a patent years later. As per the new USPTO guidance (Aug 2025), The Office has now restricted AAPA’s use in IPRs. It clarified that:
AAPA cannot serve as standalone prior art for invalidating claims.
It may only be used to interpret claim scope or in combination with other prior art references.
Patent Drafting Tips:
This is a big relief for applicants, but smart drafting remains the best shield. While drafting patent specification, it is important to:
Avoid saying “well known” or “conventional.”
Cite published patents/literature instead of making admissions.
A disclaimer can be added that the discussion of prior art should not be construed as an admission that it is prior art under applicable law.
-
Understanding Zero FIR under BNSS Section 173
Three new Criminal laws were notified by the Government of India on 25th December 2023, Indian Penal Code, 1861 (IPC) was replaced by The Bharatiya Nyaya Sanhita-2023 (BNS), Criminal Procedure Code,1973 (CrPC) was replaced by The Bharatiya Nagarik Suraksha Sanhita 2023 (BNSS) and The Indian Evidence Act, 1872 was replaced by The Bharatiya Sakshya Adhiniyam-2023 (BSA).
BNSS which replaced CrPC has the provisions of registration of a cognizable offence under section 173 (earlier section 154 CrPC).
What Is a Zero FIR?
On the receipt of any information regarding the commission of cognizable offence which has been committed outside of the territorial jurisdiction of that police station, the officer on duty records the details of the complaint in the Zero FIR register, irrespective of the jurisdiction. The case is registered as Zero FIR or ‘O’ FIR under relevant sections of law. Meaning that a Zero FIR (First Information Report) is a statutory provision under Section 173(1) of the BNSS, 2023, allowing a person to report a cognizable offence at any police station, irrespective of where the crime occurred. It’s initially recorded with a “Zero” prefix and later transferred to the appropriate jurisdictional station for further action.
Legal Foundation in BNSS
BNSS replaces CrPC, updating FIR protocol with the following:
Section 173(1) enables oral or electronic recording of cognizable offences at any police station, regardless of location
Section 173(2) complainants must receive a free copy of the FIR.
Section 173(3) for offences punishable between 3 to 7 years, police may conduct a preliminary enquiry (within 14 days) before registering a full FIR, with DSP approval.
Section 173(4) if police refuse to register, the complainant can escalate the matter to the SP or Magistrate.
Step-by-Step Procedure:
1. Complainant Lodges Complaint: Approach any police station and report a cognizable offence. The SHO or officer on duty must record the statement verbatim, either orally or via e-communication and read it back for signature.
2. Zero FIR Registration: The FIR is numbered with “Zero” to indicate jurisdictional transfer. The complainant gets a free copy immediately.
3. Preliminary Enquiry (If Applicable): For offences punishable by 3–7 years, the officer-in-charge of police station may initiate a preliminary enquiry with DSP approval to determine if a full investigation is warranted.
4. Transfer to Jurisdictional Station: The Zero FIR is officially forwarded to the correct station, which then re-registers it as a full FIR and assigns an Investigating Officer (IO).
5. Formal Investigation: The IO conducts the investigation as per BNSS guidelines, collecting evidence, arresting suspects if needed, and updating the complainant.
Why Zero FIR Under BNSS Matters?
Instant Access to Justice: It removes delays caused by jurisdictional confusion and is vital in urgent or sensitive cases.
Victim Protection: It ensures immediate official acknowledgment and prevents evidence tampering.
Legal Backing: It is codified under BNSS, unlike the previous CrPC era practice. Provides for accountability mechanism. It sets clear redressal path if FIR registration is refused and complainant can escalate to SP or Magistrate.
What Happens After Registration?
Zero FIR Logged: It is documented in a special register and free FIR copy given to the complainant.
Preliminary enquiry, if required, within 14 days to confirm prima facie merit. Thereafter the FIR is transferred and re-registered by forwarding to territorial police station. Re-registration is under regular FIR numbering.
Investigation conducted by assigned investigating officer primarily includes evidence gathering, witness interviews, medical exams, arrests.
FAQs Around Zero FIR
Can any cognizable offence be reported via Zero FIR and does preliminary enquiry applies?
Yes. If punishment is up to 7 years, a preliminary enquiry may be applied. Otherwise, full FIR is registered immediately.
What if police refuse to register?
You can file a complaint with the Superintendent of Police (SP) or approach the Magistrate as provided under BNSS Section 173(4).
Is e‑FIR available?
Yes, BNSS allows FIR registration via electronic portals, with the complainant required to sign the paper copy within three days.
Zero FIR under the BNSS is a powerful tool ensuring justice is not hindered by administrative boundaries. It guarantees immediate complaint registration, confirms a complainant’s right to a free copy, allows preliminary checks for mid-grade offences, and mandates smooth transfer and investigation, all backed by clear escalation channels.
-
How to Create a Unique Trademark in India To Avoid Rejection of Trademark Application: A Guide
Are you aware that large number of Trademark Applications get objected to at the initial stage by the Indian Trademark Office? Learn how to create a unique Trademark to increase the chances of it getting registered.
A trademark should be unique as it identifies and distinguishes your goods or services from competitors. Under the Indian Trademarks Act, 1999, there are various components that you can include in your trademark.
There are benefits of going beyond Trademark that includes only words, because creating a Trademark using only words, may increase chances of it resulting into being same or similar to any prior existing Trademark, which will be objected by the Indian Trademark Office.
In this article, we will discuss:
✅ What can be registered as a trademark under the Indian Trademarks Act, 1999
✅ Best practices to improve the chances of approval by the Indian Trademark Office
Limited Time OFFER
Trademark Application
FLAT 50% DISCOUNT
On Professional Fees
Copy Code – TMFIFTY
And Click – HEREA. What Can Be Registered as a Trademark in India?
Let’s understand what are the allowed Components that can be incorporated into a Trademark (As per Section 2 of the Trademarks Act, 1999) –
Words & Names: Unique names, words, or coined terms (e.g., Google, Tata).
Logos & Symbols: Distinctive graphic designs or emblems.
Taglines & Slogans: Catchy phrases that define the brand (e.g., Nike’s “Just Do It”).
Letters & Numerals: Can be registered if they have distinctiveness (e.g., 7-Eleven).
Shapes of Goods: Unique product packaging shapes (e.g., the Coca-Cola bottle).
Sound Marks: Unique sounds associated with the brand (e.g., Nokia ringtone).
Colors & Combinations: A specific color scheme associated with the brand (e.g., Cadbury’s purple).
Three-Dimensional Marks: 3D product features that are unique.
Motion Marks: Logos or animations that change over time.
B. What Cannot Be Registered as a Trademark?
(Section 9 of the Act)
After understanding what can be included in your Trademark, let’s also see what you cannot include to prevent objection to its Registration:
❌ Generic terms (e.g., “Soap” for a soap brand)
❌ Deceptive marks (misleading public)
❌ Offensive or immoral words/symbols
❌ Names of places or common surnames
❌ National symbols (e.g., Ashoka Chakra, National Emblem)
❌ Identical marks already registered
Now let’s see how to further improve the chances of your Trademark being approved.
C. How to Create a Trademark That Gets Approved?
Step 1: Brainstorm & Choose a Unique Trademark
✔ Avoid common words or generic terms.
✔ Create a coined word (e.g., Kodak, Xerox).
✔ Combine words in an unusual way (e.g., FaceBook).
✔ Check phonetic uniqueness (e.g., “Kwik” instead of “Quick”). Example: Instead of naming a clothing brand “Fashion Wear,” use “Fashique” for uniqueness.
Limited Time OFFER – Trademark Application – FLAT 50% DISCOUNT On Professional Fees – Copy Code – TMFIFTY And Click – HERE
Step 2: Conduct a Trademark Search
If a similar mark exists, modify yours for uniqueness.
Step 3: Select the Right Trademark Class –
India follows the Nice Classification system with 45 classes.
– Classes 1-34 cover products, and classes 35-45 cover services. – Choosing the wrong class can lead to rejection.
Example:
Class 25: Clothing brands
Class 9: Software and electronics
Class 41: Education and training
Step 4: Design a Trademark Logo (If Applicable)
If registering a logo, ensure it’s distinctive and visually appealing.
Avoid generic symbols like “stars, globes, or check marks”.
– Use high-resolution graphics for clarity.
Example: Apple’s bitten apple logo is simple yet unique.
Step 5: File the Trademark Application. There are two filing options:
✅ Online Filing (via IP India website) – Recommended for faster processing.
✅ Offline Filing (through Trademark Office) – Slower and requires physical submission.
Government Fees: –
₹4,500 for individuals/startups (online filing)
₹9,000 for companies (online filing)
Upon submission of TrademarkApplication, you’ll receive a Trademark Application number.
Step 6: Trademark Examination & Reply to Objections
The Trademark Office examines your application and may raise objections under the following sections of Trademark Act: –
Section 9 (lack of distinctiveness)
Section 11 (similar marks already exist)
How to improve approval chances?
✔ Ensure uniqueness before applying.
✔ If objected, respond with legal arguments and proof of distinctiveness.
✔ Submit proof of prior use (invoices, ads, domain name) if applicable.
Step 7: Publication in Trademark Journal
If no objections, your trademark is published in the Trademark Journal
Waiting period:
4 months for any opposition from the public.
If no opposition, your trademark moves to registration.
Step 8: Trademark Registration & Certificate
If there’s no opposition, the Trademark Office grants registration. You receive a Trademark Registration Certificate (TM-RC).
Your trademark is now legally protected for 10 years (renewable).
D. Tips to Improve Trademark Acceptance Rate
✔ Ensure uniqueness before applying.
✔ Use invented words rather than descriptive ones.
✔ Avoid similarities with existing marks.
✔ Choose the correct class of goods/services.
✔ File early to secure priority rights.
✔ Respond promptly to objections and legal notices.
E. Benefits of Trademark Registration in India
✅ Legal protection against copycats.
✅ Brand recognition and customer trust.
✅ Exclusive rights for 10 years (renewable).
✅ Valuable business asset (can be sold/licensed).
✅ Helps in global registration (via Madrid Protocol).
Creating a strong, legally valid trademark is crucial for brand protection in India. By following the right process, choosing a unique mark, and addressing legal requirements, you can significantly improve the chances of approval by the Indian Trademark Office.
-
What is a Patent and the Process for Patent Registration in India
In today’s competitive and innovation-driven economy, safeguarding intellectual property (IP) is crucial. A patent is one such tool that provides exclusive rights to inventors for their creations. This article explores what a patent is and outlines the process for patent registration in India.
What is a Patent?
A patent is a legal document granted by the government that provides the patent holder with exclusive rights to make, use, sell, or distribute an invention for a specific period, usually 20 years. It ensures that others cannot commercially exploit the invention without the patent holder’s consent.
Key Features of a Patent:
- Novelty: The invention must be new and not disclosed publicly before the application.
- Inventive Step: It must involve a technical advancement or innovation not obvious to someone skilled in the field.
- Industrial Applicability: The invention should be capable of being manufactured or used in an industry.
- Exclusions: Abstract ideas, scientific theories, or methods of playing games are not patentable in India.
Importance of Patents
- Encourages Innovation: Protects the efforts of inventors and motivates further research.
- Commercial Advantage: Provides a competitive edge by preventing others from using the invention.
- Monetization: Patents can be sold, licensed, or used as assets for funding.
Patent Registration Process in India
Patent registration in India is governed by the Indian Patents Act, 1970 and administered by the Controller General of Patents, Designs, and Trademarks. Below is a step-by-step guide to the process:
1. Determine Patentability
- Conduct a patentability search to check if the invention is novel and non-obvious.
- Consult the Indian Patent Office (IPO) guidelines for exclusions under Section 3 and 4 of the Patents Act.
2. Draft a Patent Application
- Prepare a detailed patent specification, including:
- Title of the invention
- Abstract
- Background and prior art
- Claims defining the scope of protection
- Detailed description with drawings, if applicable.
- Choose between:
- Provisional Application: For incomplete inventions; grants a priority date and allows 12 months to file the complete specification.
- Complete Specification: For fully developed inventions.
3. File the Patent Application
- Submit the application online or at the appropriate IPO office (Mumbai, Delhi, Chennai, or Kolkata).
- Include necessary forms for:
- Application for a patent
- Patent specification
- Statement of undertaking regarding foreign filings
- Declaration of inventorship
- Pay the applicable fees, which vary for individuals, small entities, and large organizations.
4. Publication of Application
- The IPO publishes the application in the Patent Journal after 18 months from the filing date.
- You can request early publication.
5. Examination
- File a Request for Examination (RFE) within 48 months of the filing date.
- The IPO examines the application for compliance with patentability criteria.
- Respond to any objections raised in the First Examination Report (FER).
6. Grant of Patent
- If all objections are resolved, the patent is granted and published in the Patent Journal.
- The patent is valid for 20 years from the filing date, subject to annual renewal fees.
Cost of Patent Registration in India
The cost of patent registration includes:
- Filing fees (govt. fees) (INR 1,600 to INR 8,000 onwards depending on the applicant type).
- Professional fees for drafting and consultation.
- Renewal fees from the 3rd year onwards.
Conclusion
Patent registration is a crucial step for protecting innovative ideas in India. While the process may seem complex, understanding the steps and seeking professional guidance can ensure smooth registration. By obtaining a patent, inventors secure exclusive rights to their creations, fostering innovation and economic growth.
For assistance WhatsApp on +91-8929203324
-
Types of Patent Transfer Agreements Explained
There are several types of agreements used to transfer patented technology, depending on the purpose, rights, and nature of the transaction. Here are some of the most common ones:
Patent Licensing Agreement – Grants permission to a licensee to use, make, sell, or distribute the patented technology. –
Types: –
a) Exclusive License: Only one licensee has rights, and even the patent owner cannot use the technology.
b) Non-Exclusive License: Multiple licensees can use the technology simultaneously. –
c) Sole License: Only one licensee has rights, but the patent owner retains the right to use it as well. Often includes terms for royalties, duration, field of use, and geographical scope.Patent Assignment Agreement – By way of assignment there cab be full transfer of ownership of the patent rights from the patent owner (assignor) to another entity (assignee). The assignee gains complete control over the patented technology. Typically involves a lump-sum payment or other compensation for the transfer.
Technology Transfer Agreement – This is comprehensive agreement that covers the transfer of technical knowledge, know-how, and intellectual property rights. May include licenses to use related patents, trade secrets, and technical documentation. Often used between universities, research institutions, and companies.
Cross-Licensing Agreement – By way of cross licensing, two or more parties exchange licenses to use each other’s patented technology. Common in industries like electronics or automotive, where complex products require multiple patents from different parties.
Joint Development Agreement (JDA) – An agreement between two or more parties to jointly develop a new product or technology. Specifies how the resulting intellectual property, including patents, will be shared or transferred between parties.
Research and Development (R&D) Agreement – Defines the terms under which one party funds or collaborates on R&D activities with another. Includes provisions on how any resulting patents will be owned or licensed.
Confidentiality Agreement (NDA) – Though not a direct transfer of rights, but crucial for protecting proprietary information during negotiations. Ensures that sensitive details about the patented technology are not disclosed without permission.
Material Transfer Agreement (MTA) – Is used when a physical sample of patented technology (e.g., a biological material) is shared for research purposes. It defines how the material can be used and protects the intellectual property rights of the provider.
Franchise Agreement – Used when the patented technology is part of a larger business model. The franchisee gets the right to use the patented technology, trademarks, and business methods under specific conditions.
Each of these agreements serves a unique purpose, and selecting the right one depends on the desired control, scope of use, and commercial objectives of the parties involved.
-
Order Rejecting Patent Must Be Speaking Order
In Nippon Steel Corporation vs Controller General Of Patents, Designs, The High Court of Delhi in it’s decision dated 29 August, 2024, decided on the question whether impugned order of Controller of Patents not giving sufficient reasons and without any legal basis in rejecting Patent Application is liable to be set aside?
Brief Facts:
The Apllicant (Appellant) Nippon Steel Corporation filed Indian Patent Application as a national phase entry involving a “method for repairing an inside of a gas flue of a coke oven and a device for repairing an inside of a gas flue”.
The First Examination Report (FER) issued by Indian Patent Office only held that the claims lacked novelty and inventive step under Section 2(1)(j) of the Act and unity under Section 10 of the Patent Act (the Act).
Applicant filed a response to the said FER and then filed amended Claims.
The Controller then followed it up by a Hearing Notice raising additional objection under Section 3 of the ActThe Applicant responded thereto by supplementing it with post- hearing written submissions, especially responding to the objection(s) of the inventive step under Section 2(1)(j) and Section 3 of the Act.
However, the Applicant was not granted the patent as it was denied in terms of Section 15 of the Act by the Controller, and then also under Section 3(d) of the Act without specifying it in the Hearing Notice
The Law:
Patent Act 1970
Section 2(1)(j):
(j)”invention” means a new product or process involving an inventive step and capable of industrial application;
(ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art
Section 3(d) of the Act contains the following categories/ basic elements qua an invention:
a. “mere discovery of a new form of a known substance,”
b. “mere discovery of any new property for a known substance,”
c. “mere discovery of new use of a known substance,” and
d. “mere use of a known process, machine, or apparatus.”As per Section 3(d) of the Act, “the mere discovery of use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant” is precluded from the patentability
Section 15. Power of Controller to refuse or require amended applications, etc., in certain case.—
Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the appl ication on failure to do so
In Brief, Court’s Analysis, Reasoning And Findings:
The core of the dispute revolves around the patent-eligibility of the invention under Section 3(d) of the Act.
The aforesaid claims in the invention made by the appellant before the Court covered two subject matters:
I. A device, for repairing an inside of a gas flue of a coke oven, which is for repairing a damaged portion of the gas flue of the coke oven (Claim nos. 2 and 3).
II. A method, for repairing the inside of a gas flue of a coke oven using the device (Claim no.1).The impugned order addresses only the subject matter covered in Claim no.1 and decides the same as mere use of a “known device”.
As per Controller, the subject matter of the application falls under the fourth category, i.e. “mere use of a known process, machine, or apparatus” of Section 3(d) of the Act since Claim no.1 of the invention is the mere use or application of the device covered in Claim no.2, yet, no objection qua novelty has been specified anywhere in the impugned order regarding Claim no.2, it is unclear as to what actually is the said “known process, machine, or apparatus” involved in the subject application of the appellant.
Similarly, the impugned order is silent/bereft of any prior art document from which the device for implementing the method claimed in Claim no.1 is known.
Though the Controller has cited a prior art document D1 in the Hearing Notice, however, there is no adverse observation on the novelty and inventive step of both Claim nos.1 and 2.
The Delhi High Court held that aforesaid is sufficient to conclude that the Controller has acknowledged the novelty and inventive step of the claims. The device for implementing the method claimed in Claim no.1 has been claimed in Claim no.2 of the subject application. Therefore, since it cannot be presumed to be a “known process, machine, or apparatus”, the Controller has erred in holding to the contrary.Judgments Relied Upon by Delhi High Court to come to conclusion:
D.S. Biopharma Limited vs. The Controller of Patents and Designs and Anr.
Manohar v. State of Maharashtra & Ors.
Agriboard International LLC v Deputy Controller of Patents And DesignsThe Decision:
Court in view that impugned order did not give sufficient reasons and was without any legal basis, particularly, since it is without identification of a “known substance and/or device”, held that the impugned order not to be sustainable in the eyes of law and set aside the same with the directions that the matter be remanded to the respondent Controller of Patents for fresh consideration.
-
Patent Thickets: Navigating Strategies for Innovators
Navigating through the web of patent thickets, obtaining necessary licenses is often a cause of concern for small and medium enterprises as besides the process of research and development of new innovations also high costs are also involved in obtaining necessary licenses, aimed to avoid infringement of the existing patent rights in any particular field.
Meaning;
With this premise let us firstly glance at what Patent thickets are ? They are set of patent rights that cover a particular technology, such patent rights are overlapping and complementary and form a cluster of patents which may be owned by same or different companies.
If we look at the scenario of research and development of technology in any specific field, a large numbers of patents already exist, covering various major and minor new aspects of the new technological advancement and this inevitably leads to creation of Patent thickets.
Thus, as discussed Patent thickets can be a result of natural process of continuous innovations in any field of technology, but adding to the woes of new innovator is the trend of acquiring patent protection for minor incremental advancements which can be attributed to such strategy employed by the corporates to prevent competition.
Although not restricted to any particular field of invention, patent thickets are more so present in software or pharmaceutical fields. An example of such patent thickets can be found with regards to prescription drugs. It is not uncommon to find prescription drugs which are in demand, protected by multiple overlapping patents obtained not only for active ingredient, but for process, delivery system etc. Indian Patent law has been a deterrent to such practices since the biggest downside of this can be witnessed in delay in availability of affordable generic version of the drug in market.
The Problem:
Patent thickets create a difficult environment for new inventors, small or medium enterprises. It results into the process of entry of new inventors and competitors to be an uphill task. To avoid infringement, new researcher has to take many licenses in his field of research, compensating the existing patent holders in order to develop novel product or process and has to manoeuvre through network of overlapping patents covering any particular field of invention.
Navigating through Patent Thickets:
Vital strategies that help to overcome the hurdles created by such web of patents:
a. Comprehensive prior art searches
The first and foremost step involves conducting prior art searches to identify existing patents and patent applications in the particular field of interest, which helps in understanding the landscape preventing infringement of existing patents. Patent Mapping is important, post patent search, as this presents a detailed information on the links between the relevant patents and areas overlapping and presents opportunities regarding areas of freedom to operate.
b. Freedom to Operate (FTO) Analysis, this reports on the area open to research and development in a particular field of inventions. At this stage, Patent Attorneys help to analyse the scope of relevant patent and to obtain opinion on how to mitigate risk of patent infringement.
c. Cross Licensing, by cross licensing agreements, companies agree to share their patent portfolio. Taking such cooperative measure can aid in preventing litigation and can open doors to collaborations.
d. Patent Pools, are created when multiple organisations holding patents in a specific field, collaborate by coming together and agree to license their patents as a bundle, which definitely proves advantageous against approaching each Patent holder for acquiring license. This also helps in getting a clear picture and directing the research and development around the existing Patents avoiding the possibility of infringement.
Patent Aggregators, though not prevalent in India, many countries have witnessed the increase in number of Patent aggregators. What are they? Patent aggregators are often referred interchangeably with patent trolls, Patent aggregators acquire patents and do not actually manufacture the products, rather they build patent portfolios and monetise by licensing such patents. Patent aggregators have acquired prominence in current scenario. They bundle and license patents. Hence, negotiations with patent aggregator can be a part of strategy while navigating through patent thickets.
These are some of the vital steps to help effectively navigate through Patent thickets and protect your innovation while reducing legal risks. In addition engaging experienced Patent Attorneys will help in navigating through complex Patent landscapes and in conducting FTO analysis as well as Patent litigation or negotiations.
-
Patent (Amendment) Rules 2024
On 16th March 2024, the Indian Patent Office published the Patent Amendment Rules 2024. Here are vital changes that have been introduced in the new rules, primarily reducing various timelines,
Foreign Applications: The time within which the Applicant for a Patent in India is required under section 8 (1)(b) is to keep the Controller informed of the details in respect of other applications filed in any country, has been reduced from six months to three months, from the date of issuance of first statement of objections.
Further the new rules provides for Controller to directly access online, informations regarding foreign Applications corresponding to an Indian Patent Application, while the earlier rule laid the responsibility on Patent Applicant to provide such information to Controller Hence, now the Applicant will have to provide the details of foreign applications corresponding to the Indian patent application only on getting objection against the application under rule 24 b or 24 C
Request for examination: Another significant change is the timeline to file request for examination . Time Limit to file request for examination if now 31 months instead of 48 months.
Changes regarding patent opposition procedure: The time limit to file reply to pre grant opposition is now 2 months instead of 3 months. Thus, on receiving representation of pre grant opposition the applicant for patent has to file his statement along with necessary evidence and documents if any in support within 2 months from the date of receiving the representation
In case of post grant opposition The time limit for examination board to submit report on post grant opposition is now 2 months instead of 3 months
Certificate of inventorship : The amended rules provide for Controller to issue a certificate of inventorship to an inventor in respect of a patent in force on a request made by the inventor in Form-8A along with the fee specified
Renewal fees: The annual renewal fees payable in respect of two or more years may be paid in advance and where the renewal fees is paid in advance through electronic mode for a period of at least 4 years, a ten per cent reduction in fee shall be applicable for such renewal.
Statement of working: The statement of working of patent in India which was submitted every year will now be required to be submitted once every three years, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such period.
Laws…Analysis…Updates…And More
LAW-IP AND MORE 