Patents
Patent Law v. Public Morality? Calcutta HC Refines Section 3(b) Test
In a pivotal ruling1, the Calcutta High Court set aside the Patent Office’s refusal to grant a patent to ITC Ltd. for a chemical nicotine aerosol delivery device. The refusal was grounded in Section 3(b) of the Patents Act, which excludes inventions contrary to public order, morality, or health.
The Court clarified that Section 3(b) must be interpreted narrowly—it targets inventions whose intended purpose is harmful or offensive to public interest, not inventions that merely involve substances with potential health concerns. The patent application was rejected partly on the basis that it delivered nicotine and was likened to an e-cigarette.
However, the Court held that this alone does not justify exclusion under Section 3(b), especially when the intended use is not inherently unlawful or immoral.
Further, the Court criticized the Patent Office for introducing external materials and public health arguments late in the process, without giving ITC a chance to respond. Such procedural lapses were found to violate principles of natural justice. It also reiterated that patentability is separate from regulatory approval—just because a product may face restrictions in the market doesn’t mean it is unpatentable.
Ultimately, the matter was sent back for fresh examination, with the Court instructing the Patent Office to evaluate the invention based on patent law criteria, not public health policy.
This judgment provides welcome clarity for patent applicants in sensitive sectors like tobacco, pharmaceuticals, or biotechnology. It reinforces that Section 3(b) exclusions must be grounded in clear intent and legal reasoning—not generalised policy concerns. The ruling sets an important precedent for a more disciplined and evidence-based application of public interest exceptions in Indian patent law.
Delhi High Court Clarifies When a Patent is Truly “Granted”
In a significant ruling², the Delhi High Court has clarified the legal threshold for when a patent is considered “granted” under Indian law. The case arose after Vertex Pharmaceuticals challenged the maintainability of a pre-grant opposition filed after the Controller had already passed a signed order granting their patent—but before it was uploaded on the official IPO website.
Vertex argued that once the Controller had signed the grant order, the patent stood legally granted. Any subsequent acts—like online publication or issuance of a patent certificate—were purely ministerial and did not alter the grant’s legal effect. The opposing party contended otherwise, arguing that without formal online publication, the grant was not complete, and hence their opposition remained valid.
The Court sided firmly with Vertex. It held that the “date of grant” is the date the Controller signs the order, not the date it is uploaded online. Importantly, it ruled that once the Controller has made the decision to grant a patent, they become functus officio—i.e., without further jurisdiction to revisit the matter unless specifically allowed under the statute.
The Court quashed both the Controller’s acceptance of the pre-grant opposition and the resulting re-examination order, calling them legally untenable. It emphasized that systemic delays in uploading or issuing certificates cannot prejudice a patentee’s statutory rights.
This judgment reinforces a clear-cut principle: the legal act of patent grant occurs upon signing, not system-driven updates. It safeguards applicants from procedural ambiguities and underscores the need for precision in the functioning of the Indian Patent Office.
Section 3(d) Requires Specificity, Says Delhi HC in Key Patent Ruling
A recent Delhi High Court decision³ underscores a fundamental procedural safeguard in examining pharmaceutical patent applications under Section 3(d) of the Indian Patents Act, 1970. At its heart, the judgment reaffirms that applicants must be given a clear, specific objection identifying the precise “known substance” against which any claimed new form is compared—failing which the examination must be revisited.
Section 3(d) bars “the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance.” Its purpose is to prevent “evergreening” of drugs through trivial modifications unless demonstrable therapeutic improvement is shown.
The Court observed that the statute’s text also implies a fair process: to refuse under Section 3(d), the Patent Office must specify: Which prior compound (the “known substance”) is under comparison; How the claimed compound is a derivative or new form of that substance; and Why their efficacies remain comparable (i.e., no enhancement).
In Taiho’s application for novel piperidine derivatives as Aurora-A kinase inhibitors, the Controller issued a hearing notice citing a broad Markush disclosure (D1) without pinpointing any single compound from D1 as the comparator. The resulting refusal simply concluded that the new piperidine salts shared the same backbone and lacked improved efficacy—but never named the “known substance” or tied the comparison to any specific example of D1.
This omission meant Taiho could not meaningfully address or rebut the Section 3(d) objection—undermining its right to a reasoned hearing.
Further, the Court held that hearing notices must identify the particular prior compound with which the claimed invention is compared and that the applicants must have the opportunity to present comparative efficacy data against that exact substance.
Calcutta High Court Rejects Plea for Patent Term Extension
In a significant ruling4, the Calcutta High Court dismissed a petition seeking an extension of a patent term due to delays in the grant process.
The patent application was filed on May 2, 2005, but the patent was granted only on December 28, 2012—after a delay of over seven years. The appellants argued that this delay made their 20-year patent term (under Section 53 of the Patents Act) commercially ineffective. They sought a 15-year extension and challenged the constitutionality of Section 53, which fixes the patent term from the filing date rather than the grant date.
The High Court held that:
- No conflict between Sections 53 and 11A(7): The law clearly separates the term calculation (20 years from filing) from enforcement rights (only post-grant).
- TRIPS Compliance: India’s 20-year term aligns with international agreements, and judicial interference is unwarranted.
- No Patent Term Extension in India: Unlike the U.S., India has no provision for adjusting patent terms for delays. A past committee had already rejected such a proposal, fearing it would stifle competition and delay public access to technology.
- Constitutional Challenge Unfounded: Courts cannot direct legislative changes, and the appellants’ repeated legal attempts lacked merit.
The Court upheld Section 53 as valid and fair, dismissing the appeal.
The ruling reinforces that patent terms in India remain fixed at 20 years from filing, regardless of administrative delays.
Geographical Indications
From Kolhapur to the Catwalk: GI Rights in the Spotlight After Prada’s New Launch
Source: Prada Instagram Page
In a recent controversy that sparked widespread debate, luxury fashion house Prada unveiled a pair of leather sandals during Milan Fashion Week that closely resembled India’s traditional Kolhapuri chappals that have long been associated with skilled artisans from Maharashtra and Karnataka.
This episode led to a backlash from artisan groups who accused Prada of cultural appropriation and misrepresentation. Following public outcry, Prada acknowledged that the design was inspired by Indian craftsmanship and offered to collaborate with local artisans. The question, however, is whether any legal claim can be sustained under Indian law.
The Kolhapuri chappal is protected in India under as a Geographical Indication (GI) tag under the The Geographical Indications of Goods Act, 1999.
A GI is a form of intellectual property right that identifies goods as originating from a specific location, where their quality, reputation, or characteristics are essentially attributable to that origin. The GI for Kolhapuri chappals protects the name, but not necessarily the design, which may be considered traditional or generic. For a legal infringement of GI rights to be made out, there must be unauthorized use of the registered GI name or an act that misleads consumers into believing the product has a protected origin. In this case, Prada did not use the term “Kolhapuri” in its marketing or labelling. As such, a legal claim for GI infringement is unlikely to succeed.
Nevertheless, the incident raises important ethical questions about cultural appropriation, fair recognition, and benefit sharing with traditional artisans.
Although no strong legal claim for GI infringement appears to lie against the company, the broader controversy highlights the limitations of existing IP regimes in safeguarding traditional knowledge and cultural heritage. It also underscores the need for ethical business practices and greater global awareness in handling culturally significant designs.
Artificial Intelligence
India Sets Up Expert Committee to Examine AI and Copyright Law
The Government of India has recently constituted an expert committee to explore the evolving relationship between artificial intelligence and copyright law. With the rapid advancement of generative AI technologies, questions surrounding authorship, ownership, and fair use of content have become pressing. The newly formed committee is tasked with reviewing whether India’s existing Copyright Act, 1957 is equipped to address these emerging challenges, and to propose suitable legal or policy reforms.
Source: Department for Promotion of Industry and Internal Trade (DPIIT) Website
Source: The Hindu, Article ‘Delhi HC issues summons to OpenAI on ANI’s copyright violation plea against ChatGPT’
This initiative comes in the backdrop of a closely watched copyright infringement case — ANI v. OpenAI5 — currently pending before the Delhi High Court. ANI, a major Indian news agency, has alleged that its copyrighted content was used to train AI models without authorization, raising critical questions about fair use, data scraping, and the liability of AI developers. The case underscores the urgency of India’s legislative response to generative AI, as courts and policymakers are both being called upon to define the boundaries of creative rights in the age of machines.
The committee’s findings and recommendations are expected to shape the contours of future copyright policy and will likely influence how India positions itself in the global dialogue on AI and creative rights.
Guiding the Future: Japan’s Soft-Law Approach to AI Governance
Japan’s Parliament recently passed its first comprehensive artificial intelligence legislation—the Act on Promotion of Research, Development and Utilization of Artificial Intelligence Related Technologies. This law signals Japan’s intent to become a global leader in AI innovation while addressing the associated risks to society, privacy, and content integrity.
Rather than adopting a punitive regulatory approach, the new law establishes a framework based on guiding principles and voluntary cooperation. It calls for active participation from government agencies, research institutions, and private companies to promote AI development and transparency. While it does not currently prescribe penalties, the law empowers the government to issue public guidance and, in cases of serious misuse—such as deepfakes or data breaches—publicly name non-compliant firms.
Japan’s model favors innovation-led governance over rigid controls. Unlike more restrictive regimes, it emphasizes transparency, responsible use, and infrastructure support to encourage AI-driven economic growth. At the same time, the law’s mechanisms for naming violators introduce a new layer of accountability in the country’s tech landscape.
As one of the first major economies in Asia to take this step, Japan’s law could shape the trajectory of AI policy across the region. It offers a vision of responsible AI advancement—balancing economic ambition with social safeguards—and sets a clear precedent for others navigating similar challenges.
AI Can Read to Learn—But Not Steal: US Court Defines Boundaries on Fair Use
Source: The Guardian, Article ‘Anthropic did not breach copyright when training AI on books without permission, court rules’
In a significant development6 for the Artificial Intelligence industry, a U.S. federal judge has ruled in favor of Anthropic, stating that the company’s use of legally purchased books to train its AI model, Claude, qualifies as fair use under American copyright law. The judge held that training a large language model on copyrighted material—when done lawfully—can be considered a “transformative” act. This means that rather than simply replicating the original works, the AI system learns from them to create entirely new content, much like a human writer drawing inspiration from reading books.
However, the court was clear in drawing a distinction between lawful and unlawful data sources. While it upheld the use of purchased content, it also found that Anthropic had allegedly stored over seven million pirated books in a centralized library—an act that could amount to copyright infringement. That portion of the case will now proceed to trial. This dual outcome reflects the evolving legal standards surrounding AI training: innovation is encouraged, but companies must remain cautious about how they source their training material.
The ruling could influence a number of similar lawsuits pending against major AI firms like OpenAI, Google, and Meta, all of which have been accused of using copyrighted content without authorization. The court’s nuanced stance—supporting transformative use but penalizing piracy—may become a model for future decisions, setting clearer boundaries for developers working in the rapidly expanding field of generative AI.
Design
SC Lays Down Clear Test to Draw the Line Between Copyright and Design Law
The Supreme Court’s recent judgment7 has settled a long-standing debate: when does a creative work fall under copyright law, and when does it become an industrial design? The case provides a clear test to distinguish between the two.
Inox accused Cryogas of copying its engineering drawings for cryogenic storage tanks.
Inox claimed these drawings were “artistic works” protected by copyright. Cryogas argued that since the drawings were used to mass-produce industrial products, they should be governed by design law, not copyright.
Under Section 15(2) of the Copyright Act, if an artistic work is applied industrially and more than 50 copies are made, copyright protection ends. The Designs Act, which offers only 15 years of protection, then applies. The Supreme Court had to decide whether Inox’s drawings were truly “artistic” or merely unregistered industrial designs.
Source: INOXCVA website, Design and Engineering page
The Court laid down a two-step test to resolve such disputes:
1. Artistic Work or Industrial Design?
- Is the work purely artistic (like a painting or sculpture), or was it created for industrial use (like a product blueprint)?
- If it was meant for mass production, copyright protection ends after 50 copies.
- If the work is an industrial design, does it have aesthetic appeal, or is it purely functional?
- Only designs with visual appeal qualify for protection under the Designs Act. Purely functional designs get no protection under either law.
This decision prevents companies from misusing copyright to get indefinite protection for industrial designs. It also ensures that genuine artistic works (like paintings used on products) retain copyright.
The Court sent the case back to the trial court to apply this test. However, the ruling suggests that Inox’s drawings, being technical and meant for manufacturing, likely fall under design law—not copyright.
This judgment brings much-needed clarity, ensuring that copyright and design laws are applied correctly. Businesses must now carefully assess whether their creations are artistic works or industrial designs to secure the right legal protection.
Trademark
TikTok Denied Entry into India’s Well-Known Trade Mark List8
Source: World Trademark Review, Article ‘TikTok denied well-known status in India as Bombay High Court upholds registrar decision’, Shutterstock/2517258359
In June’2025, the Hon’ble Bombay High Court upheld the refusal to include “TikTok” in India’s list of well-known trade marks under Rule 124 of the Trade Marks Rules, 2017. TikTok, a globally popular short-video application launched in 2017, had sought this recognition on the basis of its worldwide reach, extensive user base, and brand reputation. Despite its registered trade mark status in India, the application has been banned in the country since 2020 under the Information Technology Act, 2000 grounds relating to sovereignty, integrity, national security, and public order.
In the current case, Justice Manish Pitale dismissed TikTok’s challenge to the Assistant Registrar of Trade Marks, 2023 refusal, affirming that the Government of India’s continuing ban was a relevant factor under Section 11(6) of the Trade Marks Act, 1999 “the Act” which empowered the Registrar to take into account any fact that he considers relevant for determining a trade mark as a well-known trade mark. While the Registrar had incorrectly referred to Section 9 of the Act in the order, the Court held this technical flaw did not invalidate the decision. It reiterated that the factors in Section 11(6) are illustrative, enabling the Registrar to consider “any fact” deemed relevant, which here, was the ban on the application under the trade mark TikTok.
The Registrar relied on official press releases, constitutional principles, and security concerns, including data privacy risks and misuse of content. The Hon’ble Court noted that, Tiktok already enjoyed all statutory protection available under the Act owing to is trade mark registrations in India. While inclusion in the well-known marks list confers enhanced protection, this could not override the reality that the application remains banned in India, with no judicial or governmental reversal to date.
Source: IAM Media
For brand owners, this decision emphasises that well-known trade mark recognition in India is not purely a function of market fame or global reputation. Regulatory actions, national policy considerations, and ongoing restrictions can be decisive factors, regardless of existing trade mark registrations. Businesses seeking such recognition must be prepared to address these broader contextual issues in their applications.
Court Gives Yamaha’s ‘WR’ a Second Chance - Trade Mark to Be Advertised Before Decision9
On June 13, 2025, the Hon’ble Bombay High Court set aside a refusal order by Registrar of Trade Marks’ to register Petitioner’s trade mark “WR” and directed that it be advertised before acceptance under the proviso to Section 20(1) of the Trade Marks Act, 1999 “the Act”. Yamaha, a global leader in motorcycles and marine products, sought registration of WR in Class 12. The Registrar had refused the application citing Section 11(1), finding likelihood of confusion with Honda Motor Company Limited’s registered trade mark “WR-V” in the same class.
Source: Economic Times, Brand Equity, Article ‘Bombay HC quashes order refusing Yamaha trademark similar to Honda’s; directs authority to decide afresh
Justice Manish Pitale held that while Section 11(1) of the Act could indeed apply, the Registrar failed to consider the proviso to Section 20(1) of the Act, which allows advertisement before acceptance where Section 11(1) of the Act applies or where exceptional circumstances exist. Yamaha had placed extensive evidence of prior international use since 1990, multiple foreign registrations, concurrent global use alongside “WR-V,” and spillover reputation in India. These factors, the Hon’ble Court held, constituted “exceptional circumstances” warranting advertisement before acceptance under Section 20(1) of the Act.
The Hon’ble Court opined that the Registrar issued a cryptic refusal without addressing Yamaha’s evidence or explaining why the Section 20(1) proviso was not invoked. The Hon’ble Court found this omission material, noting that such advertisement could allow public scrutiny through opposition proceedings before a final decision.
This judgment reinforces that where conflicting trade marks exist but substantial evidence of distinctiveness, prior use, or concurrent global use is shown, the Registrar should consider the Section 20(1) proviso route. For brand owners, it is a reminder to strategically seek “advertisement before acceptance” in borderline cases, allowing the opposition process, rather than outright refusal, to test registrability.
Advertisement
Delhi High Court Restrains Disparaging Phrases in Ghadi Detergent Ads Targeting Surf Excel10
Source: The Guardian, Article ‘Anthropic did not breach copyright when training AI on books without permission, court rules’
The Hon’ble Delhi High Court granted ad-interim relief to Hindustan Unilever Limited “HUL” in its suit against RSPL Limited, makers of Ghadi detergent, for allegedly disparaging HUL’s flagship “Surf Excel” brand through a series of television and digital advertisements. HUL, which holds a significant market share in the detergent segment with an annual turnover of around INR 11,000 crore for its Surf products, argued that RSPL’s commercials mimicked Surf Excel’s trade dress and referenced its iconic “Daag Acche Hai” campaign while making unsubstantiated negative claims.
Justice Prathiba M. Singh held that while comparative advertising is permissible, it cannot cross into defamation or tarnishment of a competitor’s product. Upon viewing the four impugned commercials, the Court found that a lay viewer could reasonably associate the references with Surf Excel. Consequently, the Hon’ble Court directed RSPL to remove certain derogatory phrases, such as “Aapka kare badi badi baatein par dho nahi paate,” “Iske jhaag acche hai, daam acche hai,” and “Na Na, yeh dhoka hai”, before further broadcasting the ads.
The Hon’ble Court reiterated the settled principles: puffery to promote one’s product is acceptable, but disparagement of a competitor’s goods is not. Here, the combination of similar colour schemes, use of “XL Blue,” and taglines alluding to Surf Excel’s brand identity, coupled with overtly negative expressions, tipped the balance toward impermissible disparagement. This justified judicial intervention, even at the interim stage, to protect brand goodwill and prevent consumer deception.
For advertisers, this case reinforces the fine line between lawful comparative advertising and actionable disparagement. Creativity in brand positioning should avoid direct or implied defamatory statements about competitors, as courts remain willing to step in swiftly to safeguard market reputation and consumer perception.
- ITC Ltd. vs. Controller of Patents, IPDPTA No. 121 of 2023, decided on 30 April 2025 (Cal HC). https://indiankanoon.org/doc/106547680/
- Vertex Pharmaceuticals Inc. vs. Controller General of Patents, W.P.(C)-IPD 10/2024 & W.P.(C)-IPD 12/2024, decided on 30 April 2025 (Del HC). https://indiankanoon.org/doc/40891917/
- Taiho Pharmaceutical Co. Ltd. vs. The Controller Of Patents, C.a. (Comm.ipd-Pat) 6/2022 (Delhi High Court). https://s3.courtbook.in/2025/05/delhi-high-court-patent-controller-must-clearly-name-known-substance-in-hearing-notice.pdf
- Gunjan Sinha @ Kanishk Sinha and Anr. vs. Union of India Ors., MAT 903 OF 2024, (Calcutta High Court). https://indiankanoon.org/doc/130670198/
- ANI Media Pvt Ltd vs. Open AI Inc & Anr., CS(COMM) 1028/2024 (Del HC). https://www.nls.ac.in/wp-content/uploads/2024/11/ANI_vs_OPEN_AI.pdf
- Bartz vs. Anthropic PBC, No. 3:24-cv-05417-WHA, United States District Court, Northern District of California, June 23, 2025. https://www.courtlistener.com/docket/69058235/bartz-v-anthropic-pbc/
- Cryogas Equipment Private Limited vs. Inox India Limited and Others, 2025 INSC 483. https://spicyip.com/wp-content/uploads/2025/04/Cryogas-Equipment-Private-Limited-versus-Inox-India-Limited-Supreme-Court.pdf
- TikTok Limited vs. The Registrar of Trade Marks Mumbai & Anr. Commercial Miscellaneous Petition No. 10 of 2024. https://images.assettype.com/barandbench/2025-06-12/1vpyxgso/tiktok.pdf
- Yamaha Hatsudoki Kabushiki Kaisha vs. The Registrar of Trade Marks Commercial Miscellaneous Petition No. 650 of 2022. https://www.verdictum.in/pdf_upload/yamaha-hatsudoki-kabushiki-kaisha-v-the-registrar-of-trade-markswatermark-1721088.pdf
- Hindustan Unilever Limited vs. RSPL Limited CS(COMM) 629/2025. https://delhihighcourt.nic.in/app/showFile/1750663151_39954609e6210c4d_pms_6292025.pdf/2025
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Read Our Earlier Editions.
Fifth Edition | IPulse | A Quarterly IPR Update
- 09 May 2025
In a significant decision1 delivered on March 24, 2025, the Delhi High Court declined to grant an interim injunction sought by Swiss pharmaceutical major Roche against Natco Pharma.
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Fourth Edition | IPulse | A Quarterly IPR Update
- 22 January 2025
A recent case before the Madras High Court involved the issue of patentability of an invention pertaining to a process for generating antibodies in non-human mammals.
The provisions of the Jan Vishwas (Amendment of Provisions) Act, 2023 (“Act”) pertaining to Intellectual Property have come into force starting August 1, 2024, pursuant to the notification by the DPIT.
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Third Edition | IPulse | A Quarterly IPR Update
- 13 November 2024
The provisions of the Jan Vishwas (Amendment of Provisions) Act, 2023 (“Act”) pertaining to Intellectual Property have come into force starting August 1, 2024, pursuant to the notification by the DPIT.
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Second Edition | IPulse | A Quarterly IPR Update
- 20 August 2024
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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!
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