Court Rules on Determining Diagnostic Criteria in Patent Applications
The Madras High Court, this year, ruled on the much-awaited cases pertaining to interpretation of the scope of patentability of diagnostic methods patentability under the Indian Patents Act, 1970 (Act). Section 3(i) of the Act prohibits the patenting of diagnostic methods aimed at treating diseases in humans or animals to make them disease-free.
The two cases were appeals filed against rejection orders of the Controller of Patents (Controller) the matters of The Chinese University of Hong Kong v the Assistant Controller of Patents and Designs .
Case 1 – The Chinese University of Hong Kong vs. the Assistant Controller of Patents and Design (Indian patent application number 4863/CHENP/2012).
The University approached the Court against the Controller’s order rejecting their patent application for a method to detect foetal chromosomal abnormalities, deeming the method as a diagnostic one, and hence non-patentable under Section 3(i).
Section 3(i) specifically precludes from patentability:
any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings; or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
The University argued the following key arguments in support of their contention:
- In Vivo Application Requirement: The invention involved an in vitro (in the laboratory) analysis of fragments of nucleic acid molecules taken from a biological sample containing both foetal and maternal DNA. For a method to be classified as diagnostic in terms of Section 3(i), it should involve an in vivo application (within the living).
- Interpretation of Section 3(i): The lack of a comma between “prophylactic” and “diagnostic,” implies a restriction only to diagnostic methods used for disease prevention.
- Scope of Section 3(i): Only diagnostic methods for the treatment of human beings to make them “free of disease” fall within the scope of Section 3(i).
- Four-Step Diagnostic Method: A method is ‘diagnostic’ only if it includes four specific steps – data collection, comparison with standard values, identification of significant deviations, and linking these to a specific clinical condition (as recommended by the Enlarged Board of Appeal’s (EBoA) interpretation under the European Patent Convention (EPC)).
In response, the IPO presented the following arguments:
- The invention diagnosed foetal chromosomal abnormalities by identifying sequence imbalances in samples from the human body, making it diagnostic,
- Section 3(i) should be read broadly to include both in vitro (in the laboratory) and in vivo (within the living) diagnostic methods,
- The EboA’s opinion on the four-step diagnosis is not binding in Indian courts, and
- Any method involved in diagnosis qualifies as a diagnostic method under Section 3(i).
The Court analysed the interpretation of “diagnostic” within the context of Section 3(i), and passed judgement on the following:
- “Prophylactic Diagnostic”: The lack of a comma between “prophylactic” and “diagnostic” in Section 3(i) is a minor printing error and therefore, does not limit diagnostic methods to those treating humans to be disease-free.
- Diagnosis for Humans vs Animals: Section 3(i) has two distinct parts for human beings and animals. The animal-related provision mentions “any process for a similar treatment of animals” with three purposes of treatment: curing disease, increasing their economic value, or improving their products. However, the part applying to humans does not confine the word “diagnostic” to treatment of human beings to “render them free from disease”.
- In vivo and in vitro diagnostic: Neither the language of Section 3(i) nor of Article 27(3) of TRIPS, an international agreement, restricts diagnostic methods to in-vivo; international agreements such as EPC also do not impose any limitation or restriction on the scope of the expression “diagnostic methods”. Besides, the Manual of Patent office Practice and Procedure 2019 also does not limit the word “diagnostic” to in-vitro.
- On the four-step method requirement: As regards the EBoA’s interpretation on applying the four-step method, the phrase “practised on human body” is key and is missing from Section 3(i). Thus, it cannot be applied to determine the scope of diagnostic method in Indian context.
- Determining “Diagnostic”: Patent eligibility for “diagnostic” processes requires assessment of the claims in the context of the specification. If a person skilled in the art, such as a medical doctor, concludes from this that the process leads to a diagnosis, it is non-patentable. Additionally, the test’s label alone doesn’t dictate patentability. If the test is used to diagnose a disease, disorder or condition for treatment of human beings, then it is diagnostic and patent ineligible, regardless of the patient’s symptoms. Conversely, if testing is for research or quality control, then the process is not diagnostic and patent eligible.
Therefore, the Court held that the University’s patent application claimed a diagnostic method, thus non-patentable under Section 3(i).
Case 2 – The Chinese University of Hong Kong vs. the Assistant Controller of Patents and Design (Indian patent application number 4863/CHENP/2012)
This case claimed a method for determining the foetal fraction in a maternal sample. Similar to Case 1, the University challenged the Controller’s refusal decision, deeming the method as a diagnostic one, and hence non-patentable under Section 3(i).
While making similar arguments as in Case 1, the University further emphasized that their method in this case was a preliminary step in prenatal testing, primarily focusing on the process of identifying foetal fraction, an indicator for further testing, rather than diagnosing a condition. Thus, the method, non-diagnostic in nature, should not be classified as non-patentable under the purview of Section 3(i).
The Controller held the same arguments as made in Case 1. Additionally, an independent lawyer appearing as amicus curiae (friend of the court) in the matter, also provided his expert views on Section 3(i), stating that:
- Section 3(i) contains a drafting error and the phrase “of treatment of human beings” should be read as “for treatment of human beings” for making sense of the provision,
- Based on legislative history of the provision, diagnostics are not limited to in vivo methods,
- The exclusions such as Section 3(i) were introduced as a matter of practicality and not as a matter of public policy, and
- That the Technical Board of Appeal at the European Patent Office follows the four-method requirement of EboA with caution and only grants patents if the claimed invention does not unambiguously point to a clinical diagnosis.
The Court applied the same principles as discussed in Case 1. Further the Court held that the method in Case 2 involved determining the foetal fraction in a biological sample, a process not inherently identifying a disease or condition, and further testing would be required for such purpose. Therefore, adopting the balanced approach of interpretation of the term “diagnostic”, the Court allowed the appeal.
Key takeaways:
- Broad Interpretation of “Diagnostic” in Section 3(i): The section does not exclude in vitro diagnostic methods. The definitive test is to see if the diagnosis discloses disease or pathology for the treatment of human beings.
- Distinct Treatment for Humans and Animals: The first part of Section 3(i) applies to human beings and the second part to animals exclusively.
- Non-restriction to Disease-free Diagnostic Methods: A diagnostic method need not render human beings free of disease to be non-patentable. If the method discloses disease or pathology for treatment, the bar of Section 3(i) shall apply.
- EboA’s Method Not Mandatory: The EboA’s four-step process for determining a diagnostic method is not universally applicable.
- Individual Assessment of “Diagnostic” Nature: Each patent application must be assessed individually to see if it leads to a diagnosis. If a skilled professional like a doctor determines it results in a diagnosis, it’s non-patentable. However, if it’s for research or quality control without leading to a diagnosis, it’s patent eligible
As a parting remark, the Court observed that given the recent patent approvals in favour of in vitro processes and technological advancements made in diagnosis, especially with genomic tools, the scope of the expression “diagnostic” in Section 3(i) might need to be restricted to in vivo processes. This change can be balanced by introducing compulsory licensing legislations.
The Court’s decisions in these cases set significant precedents for future patent applications in the biotechnology and biomedical diagnostics sectors. The rulings suggest that legislative amendments might be required to refine the scope of “diagnostic” in Section 3(i), potentially restricting its scope to in vivo processes.
Court Clarifies Patent Eligibility Criteria for Biochemical Inventions
In a landmark judgment, the Madras High Court brought significant clarity to the nuances of patent eligibility under the Indian Patent Act, 1970, (the Act) particularly concerning biochemical inventions.
In the case, Novozymes v Assistant Controller of Patents and Designs revolved around patentability of phytase variants with enhanced thermostability.
The Assistant Controller of Patents and Designs (Controller) had initially refused Novozymes’ patent application, invoking Sections 3(d) and 3(e) of the Act which address non-patentability of known substances without significant efficacy enhancement and mere admixtures, respectively. Novozymes challenged this decision, leading to an in-depth examination of these provisions in the context of biochemical substances.
Novozymes argued that Section 3(d) of the Act applies only to “pharmaceutical substances”, relying on precedents like Novartis AG v Union of India. Further, invoking the principle of ejusdem generis (of the same kind), Novozymes contended that the generic expression “and other derivatives of known substance” in Section 3(d) should be limited to derivatives of chemical substances only and not be extended to biochemical substances. Moreover, Novozymes asserted that their invention met the enhanced efficacy requirement through improved thermostability, and that Section 3(e) applies solely to independent claims.
In response, the Controller interpreted “known substance” in Section 3(d) broadly, including both pharmaceutical and biochemical substances. They insisted that enhanced efficacy required proof of improved enzyme activity. Furthermore, the Controller upheld Section 3(e), emphasizing the need for synergy in compositions.
Section 3(d) – Clarifying Applicability to Biochemical Inventions – The Court meticulously examined the two judgements relied by Novozymes and expanded the interpretation of Section 3(d) of the Act, extending its applicability to biochemical substances beyond pharmaceuticals and agrochemicals. The Court emphasized that “enhancement of efficacy” assessment should align with principles set in Novartis’ Supreme Court judgment, avoiding prescribing a one-size-fits-all numerical benchmark for efficacy. Instead, it upheld a flexible approach, evaluating efficacy based on a product’s function, purpose, or utility. This inclusive and nuanced perspective led the Court to validate Novozymes’ phytase variants with improved thermostability, ultimately overturning the Controller’s refusal and granting claims 1-7.
Scope of Section 3(e) – Scope of Applicability – The Court also addressed the applicability of Section 3(e), and further clarified that this section’s applicability is not confined to compositions of known ingredients or limited to independent claims. Thus, the Court upheld the Controller’s decision to deny claims 8 – 11, citing the absence of evidence that the composition offered more than the sum of its parts.
The ruling encourages a flexible approach to patent eligibility assessments in the biotechnology sector. It recognizes the diverse nature of substances, fostering innovation. The reaffirmation of Section 3(e) raises patent eligibility standards, promoting stronger evidence of synergy in compositions. This decision shapes a balanced patent evaluation landscape, impacting current and future innovations.
Disobeying interim injunction seen as Contempt of Court
In the case, Pfizer Inc & Ors. v Triveni Interchem Private Limited & Ors, the Delhi High Court (Court) came down heavily on Triveni Interchem Private Limited and Triveni Chemicals (together referred as Triveni) after Triveni was found guilty of “wilful” and “contumacious” contempt of the Court for disobeying an interim injunction against Pfizer Inc (Pfizer).
Consequently, the Court ordered Triveni to pay Pfizer, INR 2 crores (~USD 2,40,000) as damages within two weeks, failing which the contemnor shall be imprisoned for two weeks in Tihar Jail.
In 2021, Pfizer filed a case against Triveni, accusing them of infringing on Pfizer’s patent for a drug called Palbociclib, a breast cancer medication. The Court granted an ad interim injunction to Pfizer, restraining Triveni from various actions related to the patent-infringing product Palbociclib. These actions included making, selling, distributing, advertising, exporting, or importing Palbociclib or any pharmaceutically acceptable salt of it. Triveni was also instructed to remove all references to Palbociclib from its websites and third-party platforms, like IndiaMART. Sometime in July 2022, Pfizer again found the infringing products by Triveni to be available on IndiaMART in a new packaging (on the same impugned link as per suit and on a new link).
In 2022, Pfizer responded by filing a contempt application against Triveni for violating the Court’s injunction order. The Court found Triveni in contempt of the 2021 injunction and directed Triveni to provide an explanation for the altered packaging. In response, Triveni submitted affidavits; however, these affidavits lacked essential information as required by the Court’s instructions. Parallelly, the infringing products were still available for sale on another e-commerce platform called Connect2India.
In December 2022, the Court held Kamlesh Singh, guilty of wilful disobedience and contempt of the Court’s injunction order and moved the case to the sentencing phase in January 2023. However, once again Triveni’s affidavits filed on January 17, 2023, were found to be inadequate. Further, the affidavits claimed to have dealt with Palbociclib only in July 2022, contradicting their previous statements in the September 2022 affidavit and their statements before the Court in December 2022. Triveni argued that their January 2023 affidavit showed compliance with the Court’s orders, hence no further action or property attachment was necessary against them. The Court was left to assess these conflicting submissions and the continued disregard for its injunction.
The Court, relying on the principles of contempt, as previous precents in Samee Khan v Bindu Khan, and Citigroup Inc. v Citicorp Business & Finance Pvt. Ltd. observed the following:
- Contradictory Submissions: The Court noted Triveni’s inconsistent statements, initially admitting to advertising the patent-infringing product and later claiming they only dealt with it once.
- Insincere Apology: The Court was skeptical about Triveni’s claim of limited involvement with the drug and found their apology insincere, as Triveni did not provide a complete account of their dealings with the drug.
- Unbelievable Actions: The Court found it unbelievable that Triveni would advertise Palbociclib without possessing any stock of the product, which was deemed contrary to established trade norms.
Based on these observations, the Court concluded that Triveni had engaged in “wilful and contumacious disobedience” to the injunction order issued and imposed a fine of INR 2 crores (~USD 2,40,000) on Triveni. Triveni was given two weeks to pay this amount to Pfizer. Failure to comply within the stipulated timeframe would result in Kamlesh Singh (Director of Triveni Interchem Private Limited) being detained in a civil prison for two weeks, in accordance with the established legal principles.
Court Rules on SEP Infringement and Licensing Dynamics
In the landmark case of Nokia Technologies OY v Guangdong OPPO Mobile Telecommunications Ltd. & Ors., the Supreme Court of India addressed a crucial issue concerning the alleged infringement of Standard Essential Patents (SEPs) post the expiry of a licensing agreement.
This case was significant in the realm of intellectual property rights, particularly in the context of adhering to and interpreting FRAND (Fair, Reasonable, and Non-Discriminatory) commitments.
The dispute originated when Nokia Technologies OY (Nokia) accused Guangdong OPPO Mobile Telecommunications Ltd. (Oppo) of using three of its SEPs integral to mobile communication technologies, beyond the expiration of their licensing agreement in 2021. The contention arose after Oppo’s sales in India skyrocketed following the expiration of a licensing agreement between the two companies. Nokia alleged that Oppo continued to use its patented technology without requisite consent, prompting Nokia to seek legal recourse.
Meanwhile, Oppo had approached a Chinese court to fix a FRAND rate for Nokia’s SEPs, indirectly acknowledging the use of the patents in question.
Nokia’s demand for a pro-tem deposit from Oppo was based on the royalties outlined in their 2018 agreement. Oppo, however, argued this demand lacked legal basis, asserting that it contravened FRAND principles and cited the Indian Patent Act, 1970, particularly sections that allow challenging patent validity despite existing license agreements.
In July 2023, a divisional bench of the Delhi High Court directed Oppo to deposit 23% of its Indian sales revenue post the 2018 agreement’s expiry. This ruling was grounded in the interpretation of the obligations of SEP implementers during negotiation phases, as per the framework of FRAND. This ruling came after the Court determined that Oppo had been utilizing Nokia’s technology without proper authorization. Oppo subsequently challenged this judgement in the Supreme Court.
The Supreme Court also refused to stay the Divisional bench’s decision. This ruling emphasized the necessity for SEP implementers to provide adequate security during licensing disagreements.
Furthermore, the Supreme Court granted Oppo a grace period of 10 days to submit an affidavit of compliance with the order. This gesture underscores the Court’s willingness to provide reasonable opportunities for resolution and adherence to legal directives. Following the Supreme Court’s ruling, counsel for Oppo and Vivo (part of Oppo’s parent company) expressed willingness to comply with the Indian FRAND rate set by the Indian court, preserving their right to appeal.
For the tech industry and legal community, this case serves as a guide in balancing patent rights with licensing duties, setting a benchmark for future SEP disputes and negotiations.
On January 24, 2024, both Nokia and Oppo released press statements declaring agreements for cross licensing, thus setting this three-year long patent battle.
Court Overturns Patent Refusal Due to Inadequate Obviousness Evaluation
In Kuraray Co. Ltd. and Mebiol Inc. v The Assistant Controller of Patents & Designs, The Patent Office, the Madras High Court ruled in September that the Assistant Controller of Patents & Designs’ (Controller) refusal order lacked merit due to insufficient reasoning.
Kuraray Co. Ltd. and Mebiol Inc. (appellants), filed a patent application for an invention titled, “film for plant cultivation”, which related to a process involves using polyvinyl alcohol film (PVA film) of specification in plant cultivation. The Controller rejected the application. The Court specifically found the Controller’s reasoning insufficient in providing the obviousness of the subject matter, based on the information available in the claimed closest prior art, a single citation.The Court cited a precedent from the case, Agriboard International v The Controller of Patents and Designs; underscoring three key principles for evaluating obviousness: analyzing the invention disclosed in the prior art, assessing the invention disclosed in the application, and determining how the subject invention would be perceived as obvious by a person skilled in the art.Notably, the Court specified that if the identified prior art addresses a different problem, it would not lead a person skilled in the art to arrive at the claimed invention based on said document.Ultimately, the Court ruled in favour of the appellants, Kuraray Co. Ltd. and Mebiol Inc, overturning the refusal decision and allowing the appeal, subject to further amendments to the claims.
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.
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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.
Delhi High Court Reaffirms Computer-Related Invention Patent Criteria.
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:
- Properly construe the claim and identify the actual contribution;
- If the contribution lies only in mathematical method, business method or algorithm, deny the claim; and
- If the contribution lies in the field of computer programmes, check whether it is claimed in conjunction with novel hardware and proceed to other steps to determine patentability concerning the invention.
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:
- The Controller made a fundamental error of following test indicators of outdated Computer Related Invention (CRI) guidelines of 2016 while deciding merit of the Raytheon’s patent application on the ground of “Non-patentability u/s 3(k)” instead of following the updated CRI guidelines of 2017.
- The Controller wrongfully refused Raytheon’s patent application on the grounds of “lack of inventive step” without considering Raytheon’s arguments.
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.
Akebia Case Sheds Light on Patent Opposition Procedures
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.
Dabur in hot waters for its “COOL KING” hair oil packaging
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.
ICC Men’s CWC 2023: Delhi High Court’s broad-ranging order to curb online piracy
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:
- There would be a large number of rogue websites which would communicate and telecast matches through online platforms;
- Even if these were blocked through injunction orders, these parties may create further mirror websites to continue the illegal transmission;
- Any restraint order must also extend to new websites emerging during the World Cup; and
- Due to the nature and extent of such violations, the Court must equip the plaintiffs with remedies without having to immediately approach the Court.
The Court considered the importance of this highly popular global sporting event and the gravity of the problem and issued the following injunctions:
- The rogue websites were restrained from disseminating any part of the matches on any electronic or digital platform in any manner whatsoever;
- The DNRs were directed to lock and suspend the said websites within 72 hours being notified by the plaintiffs of this order;
- The ISPs were directed to block the rogue websites immediately upon being notified by the plaintiffs of this order;
- DoT and MeitY were directed to issue blocking orders in respect of these websites;
- During the matches, if any further websites are discovered to be illegally streaming and communicating content, the plaintiffs were given the liberty to communicate the details of these websites to DoT, MeitY, and the ISPs for issuance of blocking orders on a real time basis;
- Meanwhile, the plaintiffs were directed to keep the Court informed of the details of such websites in respect of which blocking orders are sought.
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.