Patentability of Synergistic Combinations Yielding New and Improved Results
In a notable ruling in the case, Biomoneta Research Pvt ltd. v Controller General of Patents Designs, the Delhi High Court (Court) resolved an appeal by Biomoneta Research Pvt. Ltd. (Biomoenta) against the Controller General of Patents and Designs’ (Controller) rejection of their 2017 patent application for an ‘Air Decontamination Assembly.’
The case is significant for its detailed analysis of inventive step in patent law and the Court’s consideration of European patent guidelines.
Biomoneta contended the rejection of its patent application, which was previously followed by a PCT Application and subsequent national phase applications in the US Patent and Trademark Office and European Patent Office (EPO). The Indian Patent Office (IPO) had objected to the application, citing a lack of inventive step under Section 2(1)(ja) of the Indian Patents Act, 1970, (the Act) and referenced three prior art documents (D1 to D3).
In its defense, Biomoneta emphasized the uniqueness of its air decontamination technology, which utilized a low voltage electric field and conducting plates with 3D material, arguing its effectiveness against viruses like COVID-19 and features like filter-less operation and reduced power consumption.
The Court first referred to the judgement in F. Hoffmann-La Roche Ltd. v Cipla Ltd, for the “test to be followed for determining inventive step and lack of obviousness,” and Documents D1-D3. The Court noted that Biomoneta’s invention shared some features with existing technologies, such as the use of conducting plates and electric fields. However, Biomoneta’s unique combination of these elements with low voltage electric fields and 3D material-coated plates demonstrated an inventive step. This combination led to advancements like filter-free operation, reduced power consumption, and effective pathogen elimination, setting it apart from prior art and justifying the patent grant.
Further, the Court referenced the EPO guideline on combining features versus mere juxtaposition in patent claims; these guidelines emphasized that an invention should be assessed as a whole and not merely upon the combinations. Further, if the combination of features yields a new and improved result, it merits patentability. The Court found that Biomoneta’s device, addressing several disadvantages of existing technologies, wasn’t just a simple combination of known features but involved an inventive step. The Court also stated that while secondary considerations alone don’t make an invention patentable, combining existing results in a novel, beneficial way can justify a patent grant.
The Court’s decision was further influenced by the grant of a corresponding US patent, viewing it as corroborative of the invention’s novelty and inventiveness. As a result, the Court overturned the previous rejection, directing the patent application to proceed for grant.
This decision stands out for its detailed examination of inventive step, considering both Indian and European patent law principles. It emphasizes the importance of a holistic and comprehensive approach in patent adjudication, especially in complex technological fields, setting a valuable precedent for future patent assessments.
Overall impression of product design key for establishing design piracy
In December, the Delhi High Court made a significant ruling regarding design piracy, in the Havells India Limited v Polycab India Limited case.
Advancing towards Net-Zero Emissions through Strategies in the Net Zero Pathway
Havells India Limited (Havells) filed a suit seeking a permanent injunction against Polycab India Limited (Polycab) for infringing their three registered fan model designs, namely ENTICER (2016), BIANCA ART (2021) and BIANCA ART-SANGANER (2022). The allegedly infringing fan designs of Polycab were ELANZA and ELGANZ PLUS.
Havells argued that ELANZA closely matched the design of Havell’s ENTICER, while ELEGANZ PLUS infringed upon the BIANCA ART and BIANCA ART-SANGANER designs. Earlier, in June 2023, the Court had granted an interim injunction in favour of Havells restraining Polycab from using all three allegedly infringed registered designs. Polycab had moved an application to vacate the injunction order.
Upon examining each design of the suit Design, the Court observed that Polycab’s ELANZA was strikingly similar to Havells’ 2016 design ENTICER, noting “hardly any difference” between them. The Court also agreed with Havells’ contention that Polycab consciously imitated the ENTICER design and also used the same colour names as used by Havells. The Court accordingly maintained the interim injunction previously granted.
As regards Havells’ 2022 suit Design BIANCA ART-SANGANER, the Court concluded that the novelty and originality of this Suit Design was certified as residing only in the surface pattern. The Court held that the surface patterns of Polycab’s ELEGANZ PLUS range were sufficiently different from the 2022 suit Design. Hence it did not infringe the 2022 suit Design. The Court agreed with Polycab’s argument that Havells could not have clubbed the 2021 and 2022 suit Designs to argue infringement against ELEGANZ PLUS as both design registrations were for different design features.
The Court accordingly dismissed Havells’ plea vis-à-vis the 2021 BIANCA design given insufficient specific evidence and held that no piracy case was established.
Referring to the Calcutta High Court order in Castrol India Ltd v. Tide Water Oil Co. (I) Ltd, the Court held that “the copy must be a fraudulent or obvious imitation”. The Court further held that under Section 22(1)(a) of the Designs Act (Act), piracy matters ought to be analysed from the visual aspect of design. Further, the Court highlighted that, while opposing an injunction, the defendant, in this case, Polycab, ought to raise a credible challenge to the validity of the plaintiff’s designs.
In conclusion, the Court upheld the interim order against Polycab’s ELANZA series for design infringement but lifted the same against its ELEGANZ PLUS series. This decision highlights the crucial role of the overall visual impression in determining design piracy, actual end product design and submitting substantial evidence during infringement proceedings.
Navigating the Metaverse: Design Protection’s Exciting New Frontier
The metaverse is more than just a digital space; it’s an expansive universe. Every month, 400 million users dive in, their digital avatars exploring 3D worlds, powered by virtual and augmented realities. They attend concerts, purchase goods, play sports, build homes and live lives here. As Mark Zuckerberg once said: “[The] Metaverse isn’t a thing a company builds. It’s the next chapter of the internet overall.”
Seeing the obvious trajectory of these trillion-dollar spaces, industries like gaming, retail, arts, healthcare, and blockchain are participating in this emerging ecosystem. From Nike to Gucci, brands are designing clothes and accessories for the metaverse. Even J.P. Morgan and Samsung have set up shop.
IP Odyssey to Space – Protecting the Space Industry here on Earth
The launch of Sputnik in 1957 started a space odyssey that has since then made rapid progress. Humans have landed on the Moon, explored the borders of interstellar, and soon may take vacations in space!
However, the inventions of space exploration have impacted life on Earth too. From laptops to CT scans, safer air travel to better water filtration, space has touched life on Earth in more ways than we can know.
Various states have replaced unilateral activity with co-operation, international, and contractual cooperation, and there is an increasing trend toward private commercialization, especially due to the commercialization of space and the resultant reduced cost barrier to entry. They have taken different approaches to space activities resulting in new ideas at a rapid pace on how space can and should be commercialized. Private companies such as Space X, Blue Origin, and Virgin Galactic have initiated several space launches. SpaceX is testing Starship, a fully reusable spacecraft designed to carry crew and cargo to the Earth’s Orbit, the Moon, Mars, and beyond and most recently, India had its first successful rocket blast off by an Indian Space-Tech startup. The time for space tourism is ripe too as several companies race to make common folks astronauts for a day.
Drawing a parallel between aesthetics and functionality for design protection
Like many counties in the world, India has a strong law for protecting aesthetic creations by way of design registration. The design law protects aesthetic creations and not the functionality.
Drawing a parallel between aesthetics and functionality for design protection
Like many counties in the world, India has a strong law for protecting aesthetic creations by way of design registration. The design law protects aesthetic creations and not the functionality. There is often a misconception regarding the eligibility of articles or products for design registration that have utility and functionality. However, there is no barrier for registering designs for articles that are aesthetically appealing and at the same time performing a function. It is, therefore, essential to understand the difference in aesthetic and functional aspects of an article or product and their interplay while exploring the possibilities of design protection.
Legislative position in India
According to Section 2(a) of the Indian Designs Act, 2000, ‘Article’ means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.
According to Section 2(d) of the Designs Act, ‘Design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device.
The phrase, ‘judged solely by the eye’ is a characteristic feature of design registrations. The phrase essentially means that the design should be aesthetically appealing – a test for registration in every application for registration.
Date of design registration: Understanding versus reality – Asia IP Law Feature
James Anderson, in his novel called The Never-Open Desert Diner, said that “Sometimes the smallest things are so damn unforgivable. Maybe because they aren't small—they only seem that way to someone else. You never know what someone holds scared until it's too late.”
This quote is aptly justified in the verdict delivered by Hon’ble High Court of Karnataka in the matter of Greenchef Appliances Limited v, Mercury Appliances India and Other; MFA 4026/2020, on March 19, 2021.
The high court was dealing with an appeal arising out of order dated March 6, 2020, passed by the city civil court in Bengaluru, in a civil suit bearing No. O.S. 235/2019. In 2019, Greenchef Appliances Limited instituted a suit for infringement of its registered design and passing off with respect to its “Mixer Grinder” before the city civil court, Bengaluru. In the first instance, the trial court granted ad-interim ex-parte order of injunction in favour of Greenchef. Aggrieved by the order, the defendants filed an application seeking vacation of the order on various grounds. One of the grounds taken by one of the defendants was that it had a registered design in its favour for its “Mixer Grinder” which, although it was applied for after Greenchef’s date of application, was registered before the grant of registration to Greenchef: