Intellectual Property Trends
The Remarkable Rise of India’s Innovation and Creative Ecosystem
The Indian Patent Office granted over one lakh patents in the year from 15-Mar-2023 to 14-Mar-2024 which amounts to 250 patents every working day.
A record number of 1532 patent orders were issued in a single day!
In 2023, an all-time high of 90,300 patent applications were received, that is, every 6 minutes one technology is seeking patent protection in India.
Similar record-breaking trends could be seen for other forms of Intellectual Property (IP). Geographical Indication (GI) registrations, increased threefold, copyrights witnessed a record-breaking number of registrations totalling 36,378, and the highest number of design registrations to date, totalling 27,819, were recorded. The Trademarks Registry is taking steps to offer trademark protection in the shortest possible time.1
Patents
Amendments to the Patents Rules
In a significant development, the Patents Rules have been notably amended with effect from March 15, 2024 to simplify and expedite the patent processes.
The key amendments are:
- Easing of administrative and cost burden of periodic filing of details of corresponding foreign applications and voluminous prosecution documents from other jurisdictions.
- Prima facie checks by the Controller on the opposition notices, shorter timelines, imposition, and increase in fee on pre-grant and post-grant oppositions, respectively.
- Statement of working now required to be filed once every three financial years in a simplified Form-27 without the requirement of disclosing revenue details.
- The timeline to file requests for examination reduced from forty-eight to thirty-one months for applications filed since the commencement of the new rules.
- Clarification in the scope of a divisional: a divisional application may be filed in respect of an invention disclosed in the provisional or complete specification or a further application, and the scope is not restricted merely to the claims of the parent application.
- Petition under Rule 137 is restricted with exceptions to applicability. The exceptions primarily include deadlines under international agreements and significant deadlines with an option for extension under other provisions.
- The sweeping petition provided under Rule 138 for extension of time/ condonation of delay for doing any act or taking any proceeding by a period of six months but with a hefty deterrent fee.
- Multiple requests for extension may be filed.
- The requests for extension/delay can now be filed even after the deadline has passed but within the allowable extended time.
Scope of Product-by-Process Claims
A product-by-process claim is allowed where it is not possible to satisfactorily or with sufficient clarity explain the characteristics of a novel invention based on its composition structural parameters, or some other testable parameters.
A Division Bench (DB) of the High Court of Delhi in a landmark case4 clarified the scope of a product-by-process claim. The appellants asserted that claim 1 of the Patent was a product claim, and the process limitations did not restrict the rights to merely the process. The respondents contended that the patent rights were limited to the specific process described in the claims and that the use of different processes to produce the product would not amount to infringement.
The single judge had refused to grant the appellants an interim injunction observing that the patent protection was liable to operate only insofar as the claimed process was concerned.
The DB overruled the decision and held that it would be wholly incorrect to hold that products must necessarily and invariably be described by their composition and structure. That would go against the very grain of product-by-process claims. The DB held that a product-by-process claim would be accorded statutory protection, only if the product itself is novel. A product is not rendered novel merely because it is produced by a new process. If novelty is claimed only in respect of a process, it would be treated and granted as a process patent. A product-by-process claim would necessarily have to be examined on the anvil of a new and unobvious product irrespective of the applicant describing the invention by referring to a process of manufacture.
The DB also distinguished the phrases “obtained by” and “obtainable by”. It held that the phrase “obtainable by” would appear to convey a descriptive process by which the claimed product could be manufactured or produced. On the other hand, the expression “obtained by” would be intended to convey a direct linkage between the product and the process and would in most situations be concerned with a process claim.
A Volcano Erupted on LAVA- Highest-Ever Damages in a Patent Suit
In a landmark judgement, the Delhi High Court in a Standard Essential Patents (SEP) infringement case5 ordered Lava to pay Ericsson damages of INR 244 Crores (~USD 30 million) along with legal costs. Ericsson alleged infringement of its eight SEPs. Lava challenged the validity of the patents.
Lava was held to be an “unwilling licensee” for its actions, including the failure to respond to queries, the strategic filing of a lawsuit just before a scheduled meeting, the insistence on third-party confidential information, and the lack of responsiveness to Ericsson’s offers and even the Court queries.
The judgement reflects a nuanced approach to patent valuation. The damages were awarded based on Fair, Reasonable, and Non-Discriminatory (FRAND) principles using a comparable license approach. Further, the end-product and not the chipset (Smallest Saleable Patent Practicing Unit -SSPPU) was considered as a basis for royalty keeping in view global landmark judgements and industry practices. The higher side of the comparable license rate was considered for Lava’s conduct of not negotiating in good faith. The Court considered the entire portfolio for granting damages and not just the suit patents. However, the damages were proportionally reduced as one out of the eight patents was found to be invalid.
The judgement reflects a nuanced approach to patent valuation. The damages were awarded based on Fair, Reasonable, and Non-Discriminatory (FRAND) principles using a comparable license approach. Further, the end-product and not the chipset (Smallest Saleable Patent Practicing Unit -SSPPU) was considered as a basis for royalty keeping in view global landmark judgements and industry practices. The higher side of the comparable license rate was considered for Lava’s conduct of not negotiating in good faith. The Court considered the entire portfolio for granting damages and not just the suit patents. However, the damages were proportionally reduced as one out of the eight patents was found to be invalid.
It is an equitable judgment with a fine balance between the rights of the SEP owner and the implementer. The Court aligned its decision with industry practice and landmark judgements from other major jurisdictions. The Judgement marks a significant development in the SEP landscape and positions India as a pivotal player in global SEP litigation.
The Doctrine of Equivalence vs. All-Elements Rule
The Delhi High Court granted a permanent injunction in favour of the Plaintiff (SNPC) restraining the defendant from manufacturing and selling brick-making machines similar to the plaintiff’s patented brick-making machines.6
The Court held that the all-elements rule, wherein the product must contain every element of a claim, and if even a single element is missing, it would not amount to infringement, cannot be adopted to the exclusion of the pith and marrow rule. The Court observed that the doctrine of equivalents is alive and applicable and inclusive of the triple identity test, that is, the Function-Way-Result test (FWR test- substituted claim element performs substantially the same function in substantially the same way to achieve substantially the same result). The essence of the doctrine is that one may not practice fraud on the patent and an infringer should not be able to get away by merely arguing that some elements of the plaintiff’s products are not present in that of the defendant.
The doctrine of equivalents has been accepted in jurisprudence to protect patent rights from being infringed by infringers using colourable method of making some minor, insubstantial variations to escape the reach of the patent. Therefore, the court advocated the use of the pith and marrow test alongside the triple identity test in establishing a possible infringement. Further, the Court held that the doctrine of equivalence is relevant in the case of a product patent as well as a process patent.
The Patent Claims that Were Never Filed
In an interesting case7, the Delhi High Court considered claims that were never filed by the applicant Mitsui in India. During the prosecution, the applicant amended the “Method of Treatment of Plant” claims filed initially at the time of national phase entry in India to “insecticidal composition” claims which were disallowed under Section 59 of the Patents Act.
The Court held that a plain reading of Section 138(4) of the Patents Act unmistakably indicates that for a PCT application designating India, the claims as filed in the international application are inherently considered to be part of the complete specification. In the absence of a request for amendment on Form 13, the Controller’s examination should be confined to the original PCT claims. In the present case, an amendment request (Form 13) was not filed for the PCT claims at the national phase entry. Therefore, the Court held that any amended claims introduced at the prosecution stage using Form 13 must have been compared against the original PCT claims.8
The Court rejected the Controller’s contention that the applicant has ‘deleted’ claims
1 and 2 of the PCT claims, and thus cannot reintroduce them. It is noteworthy that the applicant obtained relief despite the filing of incorrect claims during the national phase entry process.
Further, the Court clarified the scope of Section 3(h) of the Patents Act which precludes from patentability a method of agriculture or horticulture. The Court held that the analysis must scrutinize whether the invention genuinely constitutes a ‘method of agriculture’ or embodies an innovative technical solution to agricultural challenges that might not fall within the exclusions of Section 3(h).
Principles of Natural Justice in the Prosecution Process
Time and again, the High Courts have reprimanded Patent controllers for not following principles of natural justice and not issuing properly reasoned office actions.
In a recent case9 of an invention relating to a method of producing a protein-enriched blood serum, a hearing notice was issued with, inter alia, objections on non-patentability under Section 3(b) and 3(i) of the Patents Act.
However, after the hearing procedure, the application was finally rejected under Sections 3(j) and 3(i) of the Act. The Court held that Section 3(j) objection was not raised previously but was a ground for rejection of the application which deprived the applicant an opportunity to contest the said ground. Therefore, it was held to be an evident violation of the principles of natural justice.
The Dichotomy Between Examination and Pre-Grant Opposition
A Division Bench of the Delhi High Court clarified10 the scope and purpose of a Pre-Grant Opposition (PGO) and the Examination process.
The Court held that a PGO may be filed not only by a person engaged in or in promoting research in the same field as that to which the invention relates but by any individual or entity who may have no direct, present, or tangible interest in the patent or one whose rights may not be adversely affected by the grant.
The DB held that the PGO has a specific and targeted purpose. The objections received during the opposition process play a crucial role in enabling the Controller to have the benefit of diverse views on the question of grant. The rejection of an opposition does not and inevitably results in a patent application being granted.
On the other hand, the examination process serves a wider and significant objective. This stage involves an in-depth assessment of the patent application, ensuring it complies with the statutory requirements for patent approval and facilitates a thorough and independent evaluation of the application by the examiner and the Controller. Therefore, notwithstanding the invitation of objections, the Controller has to be independently satisfied that the application merits acceptance. This independence is vital to uphold the credibility of the patent system ensuring that decisions are made impartially, based on the merits of the application rather than external and interested influences.
The Court emphasized the separation of the two processes to strike a balance between the need for a rigorous examination and the task of including various perspectives in the decision-making process and stated that merging these distinct processes would render the entire system unwieldy and counterproductive.
Trade Marks
Keyword Kaboom: MakeMyTrip’s Legal Battle with Google
In a recent legal showdown11, MakeMyTrip (India) Private Limited (MIPL) clashed with Google over alleged trademark infringement in the digital advertising sphere. MIPL sought to halt Google and Booking.com’s use of its trademarks as keywords in the Google Ads Program. MIPL alleged trademark infringement, contending that this practice displayed Booking.com’s ads alongside MIPL’s registered trademarked “MakeMyTrip”, “MMT” and “MakeMyTrip Hotels Ltd.”.
MIPL argued that such use constituted infringement under the Trade Marks Act, 1999, asserting that it led to confusion and unfairly benefited Booking.com. However, the Hon’ble Court ruled in favour of Google and Booking.com, stating that using trademarks as keywords did not automatically constitute infringement. Delhi High Court, in its ruling, stated that unless there was evidence of confusion or unfair advantage, the use of trademarks as keywords did not infringe on trademark rights. The court emphasized that for infringement to occur, there must be demonstrable confusion or unfair advantage, which was not evident in this case.
In a special leave petition, MakeMyTrip contested the Delhi High Court’s decision to set aside an interim order restraining Google from using MakeMyTrip’s registered trademarks as “keywords” on the Google Ads Program. The three-Judge Bench, comprising Dr. DY Chandrachud, CJI., J.B. Pardiwala, and Manoj Misra, JJ., dismissed the plea, noting that consumers seeking to book through “MakeMyTrip” wouldn’t likely confuse it with “Booking.com”.
This ruling offers a fresh perspective on trademark matters in the rapidly evolving internet landscape, where new technologies and software emerge constantly. It provides a framework for navigating the intricate intersection of trademarks and online advertising in an era where digital platforms play a central role in commerce.
Copyrights
Iconic Steamboat Willie Mickey Mouse Sails into the Public Domain
On January 1, 2024, a historic shift occurred in the realm of intellectual property as a version of the iconic Mickey Mouse, born from the 1928 classic “Steamboat Willie,” set sail into the public domain.
This momentous occasion opens a treasure trove of creative possibilities, allowing free exploration of the earliest incarnation of the beloved mouse.
However, amid this sea of newfound freedom, a looming silhouette casts a shadow of caution. While the original Mickey Mouse from “Steamboat Willie” is now fair game, subsequent iterations remain under the vigilant guardianship of The Walt Disney Company’s (Disney) copyright and trademark protection. As creators chart their course through these uncharted waters, they must navigate with care to avoid the rocky shoals of legal entanglements.
As the tale unfolds, the dichotomy between copyright and trademark law becomes apparent. While copyright law governs the reproduction and distribution of creative works, trademark law protects brand identities and consumer trust.
In conclusion, while Mickey Mouse’s journey into the public domain marks a significant milestone, the story is far from over.
Artificial Intelligence and Intellectual Property
World’s First Formal Law to Regulate AI Passed by the European Union
The European Union’s AI Act is set to become the first formal law to regulate AI. The act adopts a risk-based approach, categorizing AI systems to adapt requirements and obligations accordingly.
Meanwhile, India’s approach is cautious emphasizing the sufficiency of the current IPR regime for AI inventions. The Ministry of Commerce and Industry stated12 that the present legal framework for IPR in India, particularly under the Copyrights Act and the Patents Act, is well-equipped to protect AI-generated works and related inventions and that there is no requirement to create a separate category of rights for the protection of AI-generated works and related inventions. The Government issued an advisory mandating government approval for AI models under development.
However, after backlash from the stakeholders, an updated advisory was issued emphasizing the significance of industry self-regulation and proactive measures. India, like most other nations, is carefully weighing the benefits against the risks.
The ministry’s statement was in response to the Department-Related Parliamentary Standing Committee on Commerce’s reports recommending a review of IP laws in the wake of AI developments.
Media Laws
Fan Fury: When Movie Trailers Clashed with Reality
In a recent legal dispute13 that had the cinephile community abuzz, Yash Raj Films Private Limited found itself at odds with one of its disappointed fan, Afreen Fatima Zaidi. The bone of contention was the absence of a beloved song ‘Jabra Fan’ from the movie ‘Fan’ in 2016 that had been prominently featured in its promotional trailers.
In a detailed judgment delivered by Hon’ble Judges Pamidighantam Sri Narasimha and Aravind Kumar, JJ., the Supreme Court weighed in on the complex legal questions surrounding the use of promotional trailers and their implications on consumer expectations.
The crux of the matter revolved around whether the promotional trailer created a contractual obligation or fell under the purview of unfair trade practices. The complainant alleged that the absence of the advertised song in the movie constituted both a deficiency of service and an unfair trade practice.
The Hon’ble Court’s ruling offered clarity on this contentious issue. It clarified that while promotional trailers serve to entice viewers, they do not establish a contractual relationship between the producer and the consumer. As such, the Court concluded that the complainant’s expectations based on the trailer did not amount to a deficiency in service.
Furthermore, the Hon’ble Court scrutinized whether the exclusion of the song from the movie constituted an unfair trade practice. It underscored that for a practice to be deemed unfair, it must involve false representations or deceptive practices. In this case, the Court found no evidence of deliberate misrepresentation or intent to deceive on the part of the film producer.
In light of these findings, the Hon’ble Court set aside previous rulings of the State Commission that favoured the complainant, providing clarity on the legal standing of promotional materials in the realm of cinema.
This judgment serves as a significant precedent, not only for the film industry but also for consumers navigating the realm of advertising and entertainment.
As we await the next blockbuster release, one must remember the lessons learned from this legal saga and approach promotional materials with a discerning eye.
- Press Release ID: 2015234, Ministry of Commerce & Industry, 16 March 2024. https://bit.ly/4cvqKle
- Patenting Trends in India, NASSCOM Report, April 2024 Edition. https://bit.ly/4cnM9wh
- Press Release PR/2024/914, WIPO, 7 March 2024. https://bit.ly/3zpITSB
- Vifor (International) Limited & Anr. vs. Msn Laboratories Pvt Ltd & Anr. (FAO(OS)(COMM) 159/2023 & CM APPL. 39177/2023). https://bit.ly/45VXVvK
- Lava International Limited Vs. Telefonaktiebolaget LM Ericsson (CS(COMM) 65/2016). https://bit.ly/3XJ5unr
- SNPC Machines Private Limited & Ors. vs. Mr Vishal Choudhary, 5 March 2024 (CS(COMM) 431/2023). https://bit.ly/3XMBJCc
- Mitsui Chemicals Inc vs Controller Of Patents, 23 February, 2024 (CA(COMM.IPD-PAT) 196/2022). https://bit.ly/4eQ26Nt
- The application was filed before the amendment to Rule 20 that allows the deletion of claims at the time of the national phase.
https://bit.ly/4eQ26Nt - Arthrogen Gmbh vs Controller General Of Patents, Designs, and Trademarks and Anr., 5 February 2024 (CA(COMM.IPD-PAT) 415/2022). https://bit.ly/3VM4CMg
- Novartis Ag vs Natco Pharma Limited & Anr., 9 January 2024 (LPA 50/2023). https://bit.ly/4eQfpOb
- Google LLC vs. Makemytrip (India) Private Limited and Ors. (14.12.2023 – DELHC): MANU/DE/8366/2023. https://bit.ly/4eNW14k
- The ministry’s statement was in response to the Department Related Parliamentary Standing Committee on Commerce’s reports recommending a review of IP laws in the wake of AI developments.
- Yash Raj Films Private Limited vs. Afreen Fatima Zaidi and Ors. (22.04.2024 – SC): MANU/SC/0335/2024. https://bit.ly/4cpdm1S
Questions regarding the above developments
and their potential impact on your business?
Reach out to the client service team at [email protected]
To stay updated on our insights, subscribe here.
IPulse Editions
First Edition | IPulse | A Quarterly IPR Update
- 01 June 2024
The Indian Patent Office granted over one lakh patents in the year from 15-Mar-2023 to
14-Mar-2024 which amounts to 250 patents every working day. A record number of 1532 patent orders were issued in a single day!
If you would like a copy of the newsletter, reach us at [email protected].
Second Edition | IPulse | A Quarterly IPR Update
- 20 August 2024
If you would like a copy of the newsletter, reach us at [email protected].