An appeal filed by Raytheon Company (Raytheon) challenged an impugned order dated Oct 17, 2019, issued against its Indian patent application for a method of scheduling in a high-performance computing system. The impugned order refused the grant of Raytheon’s patent application on the grounds of “lack of inventive step” and “non-patentability” under section 3(k) of the Indian Patents Act, 1970.
The Assistant Controller of Patents and Designs (Controller) relied on the following test indicators while deciding on the ground of non-patentability under section 3(k) of the Act:
Based on these test indicators, Raytheon’s patent application was declared solely as software, without having any novel hardware, and that the processor executed programme/algorithm in a conventional manner. Hence, the contribution of Raytheon’s patent application was declared as a non-patentable subject matter, and a grant of patent was refused.
Dissatisfied with the Controller’s decision, Raytheon appealed before the erstwhile Intellectual Property Appellate Board (IPAB). However, with IPAB’s dissolution in April 2021, the case was transferred to the Intellectual Property Division (IPD) of the Delhi High Court.
The appeal contended that:
Based on Raytheon’s contention, the Court analyzed the impugned order and observed that the Controller had indeed tested patentability based on the presence of novel hardware but not on the technical contribution of the invention disclosed in Raytheon’s patent application.
Referring to the updated CRI guidelines of 2017 that stated “Claims which are directed towards computer programme per se are excluded from patentability” [Section 4.5.4], the Court reaffirmed that the to ensure that only computer programmes “as such” are not granted but genuine inventions which are developed based on computer programmes should not be refused patents if they contain certain other things, ancillary thereto or developed thereon. Further, the court ruled that the Controller’s focus should be on the substance of the claims and not on form or presentation. The Court further referred to the interpretation of section 3(k) in the judgments from Ferid Allani v Union of India (Ferid Allani) and Microsoft Technology Licensing v Assistant Controller of Patents and Designs (Microsoft) and clarified that in the case of CRIs, the technical effect of the invention is what needs to be examined and not to insist on a novel hardware requirement.
Relying mainly on the updated CRI guidelines of 2017 and well-settled interpretation of 3(k) in the cases of Ferid Allani and Microsoft, the Court declared that the Indian Patent Office (IPO) was in error as it failed to examine the patentability of the invention based on the underlying subject matter and the technical contribution of the invention, and thereby set aside the impugned order. Keeping in mind the time elapsed since the filing date of Raytheon’s patent application, the Court directed the IPO to re-examine and dispose the Raytheon’s patent application within three months from the date of the Court’s order.
By emphasizing the significance of an invention’s technical contribution or technical effect over the mere presence of novel hardware, the Court has provided clearer guidance for CRI-related patent evaluations. This reaffirmation of focus is likely to have a profound impact on software-centric innovations, ensuring that genuine technical advancements receive the patent protection they deserve, without insisting upon the requirement of novel hardware. As a result, applicants’ can now approach the IPO with greater clarity and confidence, knowing that their software inventions will be assessed based on technical merits by following the latest CRI guidelines rather than expecting innovation on hardware systems which is nothing but a higher standard that has no basis in the patent law.
In August, the Delhi High Court underscored the importance of adhering to patent opposition procedures outlined in the Patent Rules,2003, particularly Rules 55A to 62, setting a significant precedent for forthcoming patent disputes. The case at the centre of this development is Akebia Therapeutics Inc. (Akebia) v Controller General of Patents, Design, Trademark and Geographical Indications, & Ors.
The case revolved around a post-grant opposition filed by an opponent against Akebia’s patent pertaining to specific compounds used in medical research and treatments. The said post-grant opposition was filed under Rule 57 with contentions and documents, but no affidavit to support the contentions. Akebia responded under Rule 58, refraining from providing evidence due to the absence of an affidavit in the opponent’s filing. Subsequently, the opponent submitted a rejoinder under Rule 59, seeking to substantiate their Rule 57 contentions. Akebia objected, contending that Rule 59 did not permit new evidence in responses, and urged the Opposition Board not to assess the opponent’s challenges unless Akebia had an opportunity to present evidence. However, the Controller rejected these objections wherein arose the instant writ petition before the Delhi High Court.
The Court carefully examined the legal framework governing post-grant patent oppositions as defined by the Patents Act, 1970, and Patent Rules. In its ruling, the Court sided with Akebia and emphasized the need for practitioners, especially opponents, to strictly adhere to the following statutory provisions:
(a) Affidavit Requirement (Rule 57): The Court clarified that documents submitted as part of a post-grant opposition under Rule 57 cannot be considered as evidence, as defined under section 79, unless supported by an affidavit. Without such supporting affidavits, these documents cannot be considered by the Opposition Board.
(b) No Late Affidavits (Rule 59): The Court ruled that the opponent cannot rectify the absence of an affidavit by filing a supporting rejoinder affidavit under Rule 59 subsequent to the submission of the patentee’s reply.
(c) Limited Additional Evidence (Rule 59): The Court clarified that the opponent can only introduce further evidence strictly confining to the matter submitted by the patentee in their reply statement filed under Rule 58.
Recommendations of the Opposition Board: The Court, referring to the Supreme Court’s judgement in Cipla Ltd v Union of India, also highlighted the recommendations of the Opposition Board have “great persuasive value” and are “crucial” in the Controller’s decision-making process. Further, the Court directed a fresh decision by the Opposition Board to ensure a fair and just decision-making process.
The Court also called upon the Controller General to ensure strict compliance with the provisions of the Patents Rules, particularly Rule 57, when handling post-grant oppositions, highlighting the pivotal role of the Opposition Board’s recommendations in shaping judgment outcomes.
This ruling serves as a notable precedent, emphasizing the critical nature of meticulous adherence to patent opposition procedure under the existing legal framework.
In October, Emami Limited (Emami), an Indian company in the personal care and healthcare sectors obtained an injunction from the Delhi High Court in the case Emami Limited v. Dabur India Limited, against a leading ayurvedic and natural healthcare company in India, Dabur India Limited (Dabur).
Emami claimed that Dabur’s hair oil COOL KING was using packaging deceptively similar to that of Emami’s hair oil sold under the brand NAVRATNA. The respective packaging of the parties is depicted below.
Emami’s NAVRATNA brand oil is red in colour and is claimed to produce an effect of coolness when applied to the scalp. Emami asserts that NAVRATNA is one of its flagship brands and has a 66% market share in the relevant segment as of 2022. Emami also has various trademark and copyright registrations for the NAVRATNA brand oil. While Emami’s NAVRATNA oil has been in the market since 1989, Dabur’s product is relatively a new entrant since May 2023. Emami claims in the suit that Dabur has infringed its trademark, design, and copyright and that its acts amount to passing off.
The Court studied the respective packaging available in both bottle and sachet form, and Dabur’s advertising practices for its oil products. While the Court did not agree with Emami’s claims of infringement, it found the claim of passing off to be justified. Noting that Emami had indeed established goodwill in the packaging of the NAVRATNA branded oil by virtue of extensive and long-standing use, the Court found intentional copying by Dabur of key features of Emami’s product to take advantage of the market that Emami had developed since 1989. The Court further stated that Dabur not only replicated prominent features of Emami’s product but also telecast advertisements where Emami’s product was shown as being replaced with Dabur’s product. These, according to the Court demonstrated Dabur’s intention to target Emami’s product and confuse or mislead ordinary consumers.
In September, in the case Star India Private Limited & Anr v. Jiolive.tv & Ors, Star India Private Limited (Star’) and Novi Digital Entertainment Pvt. Ltd (‘Novi’) obtained a wide-ranging injunction order from the Delhi High Court. The rights asserted by Star and Novi (collectively, ‘the plaintiffs’) pertained to the World Cup 2023 event. Novi, an affiliate company of Star, owns and operates the online video streaming platform ‘www.hotstar.com’, and the mobile application ‘Disney+ Hotstar’. Star enjoys the exclusive global media rights in the event including the television rights, digital rights (Internet and Mobile) in the ICC Men's Cricket World Cup 2023 matches streamed by Novi on Disney+ Hotstar.
The plaintiffs arrayed 28 defendants in the suit and sought an injunction restraining illegal and unauthorised dissemination, and broadcast of matches or parts thereof during the World Cup 2023 event. World Cup 2023 is taking place from 5th October 2023 to 19th November 2023 in India and include a total of 48 one-day matches.
The first nine defendants arrayed in the suit were owners of various rogue websites (‘rogue website owners’) primarily hosting illegal and pirated content. The next eight defendants were Domain Name Registrars (DNRs) of the domain names where the said rogue websites are being hosted. The subsequent nine defendants were various internet service providers (ISPs). The remaining two defendants were the Indian Department of Telecommunications (DoT) and Indian Ministry of Electronics and Information Technology (MeitY).
Due to the high popularity of the event and gauging from their experience during such highly popular events, the plaintiffs apprehended that:
The Court considered the importance of this highly popular global sporting event and the gravity of the problem and issued the following injunctions:
The Court’s injunction to combat online piracy for the ICC Men’s Cricket World Cup 2023 sets a significant precedent for future litigation related to broadcasting rights. It introduces the concept of dynamic injunctions that empower rights holders to swiftly add new infringing websites to a blocking order, thereby reducing the need for continuous legal intervention. The ruling also delineates clear, immediate responsibilities for ISPs and DNRs to act against identified rogue websites, signaling a shift towards more proactive anti-piracy enforcement.
The Court’s decision to involve government bodies like the DoT and MeitY in the enforcement process underscores the importance of a coordinated response to online piracy, which could become a standard expectation in similar cases. Additionally, the ruling acknowledges the need for rapid action against piracy in the digital age and could shape the way future events and their associated digital content are protected.
The Delhi High Court dismissed an injunction application by Tata Sons Private Limited (Tata) against Puro Wellness Private Limited (Puro) regarding Puro’s TV commercial for its product ‘Puro Healthy Salt’. While dismissing Tata’s application, the Court reiterated the principles applicable for the determination of disparagement in comparative advertisement scenarios.
As for the facts, the commercial complaint by Tata did not directly refer to Tata’s white salt products but referred to certain negative aspects of white salt in general. In that context, Puro made several positive assertions about Puro’s salt which is pink in colour, natural, unbleached with no additives, and better for health than white salt. However, Tata sought an injunction claiming that Puro’s commercial is an example of class disparagement of white salt on the basis that it owns 34% market share in the white salt category. Interestingly, Tata also sells pink salt by describing it as completely natural and free of any chemicals or additives.
The Court analyzed the various judicial precedents on the subject to determine the issues and reiterated the basic principle that any form of advertisement, including comparative advertisement allows extolling of one’s own product. However, while puffing up its product, the advertisement should not resort to misleading or incorrect representations of fact. What needs to be seen to establish disparagement is when there are objectionable comments being made about the rival’s product. A plaintiff cannot maintain an action for disparagement against a commercial which makes no direct/indirect reference to the plaintiff, merely on the ground that it is a majority player in the market. The Court noted that in this case, Tata is deriving negative inferences regarding its salt from the positive assertions in the commercial and thereby, an action for injunction cannot be maintained
The Court also took note of a 2019 order by the Division bench of the Delhi High Court involving the same parties and the same products except that in that case there was a direct reference by Puro’s commercial to Tata’s white salt. While a Single Judge granted relief to Tata, the appellate bench reversed the order. The case is currently lying in appeal before the Supreme Court.
Referring to the 2019 order, the Court further remarked that it would amount to judicial inconsistency for it to adopt a contrary view to that of the Division bench by granting an injunction. The Court also pointed to the fact that Tata concealed from the Court that it also has a pink salt product which Tata itself promotes as a healthy alternative to white salt.
In short, the Court held that the commercial is well within the boundaries of what is permissible in comparative advertising.
The maintainability of a divisional application in India has always been a subject of interpretation. Recently, a two-judge (Division) Bench of the Delhi High Court, provided clarity on this matter in the case of Syngenta Limited versus Controller of Patents and Designs, delivering a binding and pivotal precedent.
Section 16 of the Patent Act, 1970, deals with the subject of divisional applications. Under the section, a divisional application may be filed by the applicant voluntarily or to remedy an objection raised by the Controller of Patents and Designs that the claims of an application relate to more than one invention.
The crux of the issue that the Division Bench decided in its judgement, is whether the claims of the divisional application ought to be derived from the claims of the parent application whose claims relate to multiple distinct inventions or can they also be derived from the related specification.
In December 2005, Syngenta Limited (Syngenta), a leading agriculture company, made an application to the Controller in respect of its invention relating to an agrochemical concentrate. There were 14 claims in this application. In September 2011, Syngenta filed a divisional application. Thereafter, the parent application was granted a patent in May 2012.
Subsequently, in February 2013, the divisional application was published and an examination report was issued which followed up with a hearing. The Controller, basing the decision on the interpretation that the plurality of inventions must be present in the claims of the parent application, refused the divisional application in October 2017.
Aggrieved by the refusal order, Syngenta filed an appeal at the Delhi High Court. However, by the time, Syngenta’s appeal could come up for hearing, the Delhi High Court had already decided on the issue in question in Boehringer Ingelheim International GMBH v. The Controller of Patents (Boehringer case).
In the Boehringer case, the Court had decided that the invention claimed in the divisional application should be derived from the claims of the parent application which relate to plurality of distinct inventions. The position had earlier been examined and held so by the erstwhile IPAB in a previous case, ESCO Corporation v Controller of Patents & where the IPAB had decided that a patent application can only be divided, if it claims more than “one invention“.
In the Boehringer case, the Court had relied on the doctrine of patent law i.e., ‘what is not claimed is disclaimed’ and emphasized that since the claims of the divisional application were not part of the claims of the parent application, the applicant had lost the right to claim them. The Court had also ignored the phrase “file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first-mentioned application” in Section 16(1). The Division Bench did not accept the interpretation accorded to Section 16 in the Boehringer case and did not subscribe to the view adopted by the Single Judge in the earlier judgement in the Syngenta case.
On the question of the doctrine of patent law i.e., ‘what is not claimed is disclaimed’, the Division Bench said that this doctrine may be relevant for infringement analysis but, it had no application to the subject of divisional filing and claim drafting. The Court referred to the opinion given by Lord Russel in Electric and Musical Industries Ltd. Et al vs. Lissen Ltd. et al.
Overruling the judgement given in the Boehringer case, the Court held that a divisional application in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. The Court said that irrespective of the divisional application being filed suo moto or on the instance of an objection raised by the Controller, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional or complete specification.
The landmark judgment by the Division Bench of the Delhi High Court in the Syngenta case has provided a pivotal precedent on the maintainability of divisional patent applications. By overruling the decision of the single judge of the same Court in the Boehringer case, the importance of the entire patent specification, not just the claims, in determining the presence of multiple inventions, is clarified. This clarity will likely influence future patent applications and litigations, ensuring a more consistent and transparent approach to divisional patent filings.
In early September, the Delhi High Court, while passing a judgement in the case, Saurav Chaudhary v Union Of India & Anr., emphasised the need to regulate or supervise the functioning of patent and trademark agents (agents) in India.
This emphasis came in light of a writ petition filed by the petitioner, Saurav Chaudhary, challenging the abandonment of his patent application and praying for its restoration.
The subject patent application was being handled by a firm in Delhi, and the agent was allegedly non-responsive after filing Request for Examination (RFE), despite multiple reminders sent to enquire about the status of the patent application. Subsequently, the application was deemed to be abandoned due to non-filing of a response to the First Examination Report (FER).
Noting that the entire case hinges upon various emails sent by the petitioner to his patent agent, the Court directed one of the patent agents of the firm to submit an affidavit stating all the facts and correspondence held with the petitioner after filing of the patent application.
Highlighting the responsibility of the ‘agents’ of adhering to deadlines and attending to the matters diligently, the Court reflected that a supervisory or regulatory authority over the ‘agents’ is the need of the hour. Towards this, the Court directed the Central Government Standing Counsel (CGSC) to obtain instructions from the office of Controller General of Patent, Design and Trademark (CGPDTM) in order to monitor, regulate and supervise the functioning of the ‘agents’.
With this, the Court took one step ahead towards building a robust mechanism for regulating the functioning of the Indian Patent Office. It will be interesting to see the reply from the office of CGPDTM on next date of hearing.
Reliance Industries Limited (Reliance) claims to be the largest retailer in India in terms of revenues. It has outlets offering food, groceries, apparel, footwear, toys, home-improvement products, electronic goods, and farm implements. It owns the business-to-consumer (B2C) e-commerce platform www.ajio.com which was launched in 2016 along with a corresponding mobile app ‘AJIO’. Reliance claims that ‘AJIO’ is one of the most popular brands in India, supporting this assertion with information that they have three million customers and numerous downloads of the mobile app.
The genesis of the instant case, Reliance Industries Limited & Anr. v Ajio Online Shopping Pvt. Ltd. and Ors., involved an elaborate scam wherein Reliance and its AJIO brand were at the receiving end of the scam. AJIO Online Shopping Pvt. Ltd (Ajio online), falsely claiming association with Reliance using the AJIO mark, deceived the public with letters and scratch card coupons, suggesting they had won substantial prize money.
These letters further claimed that in order to claim the cash prize, the recipients must make payments of advance government taxes and processing fees. In some versions of the scam, the perpetrators also made the recipient deposit INR 5000 (~USD 60) and claimed that once the deposit was made, they would be able to encash the scratch card to the tune ranging from INR 7, 50, 000 (~USD 9000) to INR 10, 00, 000 (~USD 12000). The employees of Reliance received some of these letters.
Reliance’s investigations uncovered that the individuals were conducting fraud through various mobile numbers and bank accounts. Accordingly, Reliance filed a suit against the perpetrators, Ajio Online’s banks, telecom service providers, the Department of Telecom, and unidentified parties involved in the scam.
Reliance sought restraint orders against the fraudulent persons/ company from using the mark AJIO in any manner and sending any further communication using the said mark. Further, they also sought an order to freeze the relevant bank accounts and block the mobile numbers used in the fraudulent operations.
The Court observed that this was a large-scale operation carried out by unscrupulous individuals with the intention of collecting money under the name AJIO. It noted that owing to the familiarity and reputation of the AJIO name and brand, it would be natural for consumers to believe that the communications were genuine.
Accordingly, the Court found it to be a fit case for grant of an ex-parte injunction and passed the following orders against the Ajio online and the other defendants:
Furthermore, Reliance was allowed to move an application should they identify any new numbers or bank accounts. Making an exception from the usual norm, the Court also ordered that Ajio Online be served the suit papers through the available mobile numbers. On Reliance’s application, the Cyber Cell, Delhi Police was directed to investigate the issue to identify exact details of the perpetrators, to investigate the entire matter and provide a status report by the next date of hearing urgently and expeditiously.
In an age of sophisticated online scams being perpetrated by numerous parties using famous brands, the wide-ranging orders passed by the Court in this case would certainly pave the way for coming up with more stringent and up to date laws and regulations to overcome this persistent issue.
Anil Kapoor (‘Kapoor’) is a well-known actor from the Mumbai film industry with a career spanning nearly 40 years. He has appeared in over 100 films and endorsed several brands. Kapoor is also known in the Mumbai film industry to have popularised the Marathi language slang word, ‘Jhakaas” (roughly translated to English as ‘fantastic’) with his unique delivery of the same. Kapoor claims that the same has become synonymous with him.
In September 2023, the Delhi High Court granted an ex parte injunction order in Kapoor’s favour and against multiple defendants (‘the defendants’). The crux of Kapoor’s claim in the suit was that the defendants violated his personality rights, violated his copyrights in movie dialogues, and were guilty of passing off, unfair competition, and dilution. Kapoor claimed in the suit that the defendants are unauthorizedly using his name, image, likeness, voice, personality, and other aspects of his persona to create merchandise, make false endorsements, and make morphed images by employing tools such as artificial intelligence for commercial purposes. The merchandise created ranged from mobile phone wallpapers and stickers to cups, T-shirts, suits, and key chains. Some of Kapoor’s images were used to make cartoon characters and to upload pornographic images of Kapoor with other actors. His voice and dialogues from movies were also used to make ringtones and ring-back tones The defendants were also guilty of registering domain names using Kapoor’s name. Kapoor alleged that the defendants in a manner were utilizing several features of his persona and misusing the same in malicious ways and were earning monetary benefits out of the same.
Having heard Kapoor’s arguments, the Court issued notice to the defendants and made the following observations:
Accordingly, the Court restrained the defendants from: