Delhi HC – Intersection of doctrine of equivalents & process patents
The plaintiffs, FMC Corporation and FMC Agro Singapore Pte Ltd (FMC), sought an interim injunction against the defendant, Insecticides India Limited (IIL). The plaintiffs asserted that IIL had used their patented processes to prepare anthranilic diamide insecticide compounds covered by Indian patent No. 298645 (the 645 patent). The 645 patent had been assigned to FMC by EI du Pont de Nemours and Company.
FMC alleged that IIL’s process was substantially similar to FMC’s. It contended that while IIL’s process utilised the carboxylic acid of formula two and the aniline compound of formula three, instead of the sulfonyl chloride, IIL employed thionyl (oxalyl) chloride. Further, IIL’s use of oxalyl chloride instead of sulfonyl chloride was an insubstantial difference. According to FMC, the two performed the same function (ie, activation of a carboxylic acid moiety) in the same way as the coupling of the carboxylic acid with aniline to achieve CTPR. Thus, the two manufacturing processes were equivalent.
Draft Patents (2nd Amendment) Rules 2024 to implement the changes enacted by the Jan Vishwas Act, 2023
The Ministry of Commerce and Industry announced the Draft Patents (2nd Amendment) Rules (draft Rules), 2024 on January 2, 2024.
The draft Rules propose to amend Section 120, 122, 123, and 124 of the Patents Act, 1970 (the Act), to implement the Jan Vishwas (Amendment of Provisions) Act, 2023, which decriminalized about 40 plus Indian legislations, including the Patents Act. Read our earlier update on this here.
Key Aspects of the draft Rules:
- Adjudication of Penalties: The draft rules establish a framework for the adjudication of penalties related to patent infringement, focusing on unauthorized patent claims (Section 120), failure to supply information (Section 122), and practices by non-registered patent agents (Section 123).
- Filing Complaints: The newly proposed Form 32 allows any person to file a complaint with the adjudicating officer against any violations of the above-listed provisions. The complaint must include a statement and supporting evidence. The adjudicating officer will assess the maintainability of the complaint, notify the alleged violator and provide them requisite time to file a reply statement along with Form 14.
- Hearing and Final Order: The adjudicating officer will conduct a hearing based on the complaint and the alleged violator’s response. If a violation or non-compliance of sections 120, 122 or 123, is confirmed, a final order will be passed within 3 months along with a suitable compensation as decided by the officer. The draft provides the factors to be considered by the adjudicating officer while adjudging the quantum of compensation.
- Appeals Process: Aggrieved parties can appeal against the adjudicating officer’s order under section 124A of the Jan Vishwas Act.
- Appeals Time period: Appeals can be filed with appellate authority within 60 days on Form 33, extendable by one additional month. The appeal should include grounds of appeal along with a copy of the order of the adjudicating officer.
- Procedure for Appeals: After registering the appeal, the appellate authority will notify the adjudicating officer, who must reply within 21 days. Both parties will present their arguments during the hearing, after which the appellate authority may confirm, modify, or annual the original decisions, or order a re-evaluation. Wherever possible, the proceedings should be concluded within six months.
- Enhancement of Penalties: If the appellate authority considers enhancing penalties, a reasonable opportunity for a fair hearing will be provided to the appellant.
- Ex-parte Hearings: In case of ex-parte hearing, the appellate authority may dispose the appeal. However, if the appellant provides a sufficient cause for their absence, the appellate authority may set aside ex-parte order; the appeal may be reinstated within one year.
- Costs and Timelines: Filings fees for Form 32 and 33 costs is proposed as INR 10,000 (~ USD 120) for individuals, startups, MSMEs, and educational institutions, and INR 15,000 (~ USD 180) for others. The adjudicating officer and Appellate Authority may adjourn hearings for reasons with sufficient cause and with the prescribed fee.
- Documentation: The order of adjudicating officer as well as Appellate Authority shall be in writing, reasoned, dated and signed.
Stakeholders have been invited to submit their suggestions or objections to these rules by February 2, 2024.
To share your suggestions and comments with us, if any on the Draft Rules, please reach out directly to your K&S Partners contact or write to us at patent@knspartners.com by January 31, 2024.
Jan Vishwas (Amendment of Provisions) Act, 2023 Decriminalizes Intellectual Property Laws in India
The Jan Vishwas (Amendment of Provisions) Act, 2023, (JV Act) came into force on August 11, 2023. The term ‘Jan Vishwas’, which translates as ‘public trust’ in English, signifies a significant step towards trust-based governance and ease of doing business.
The JV Act ushers in a transformative era by revising penalties for non-compliance, emphasizing financial penalties over punitive measures, and striving to eliminate imprisonment or excessive fines for minor contraventions.
While the JV Act seeks to decriminalize 183 provisions within 42 Central Acts under 19 Ministries/Departments, this note specifically delves into its impact on intellectual property (IP) laws namely, the Indian Patents Act, 1970 (Patents Act), the Trade Marks Act, 1999 (TM Act), the Geographical Indications of Goods (Registration and Protection) Act, 1999 (GI Act), and the Copyright Act, 1957 (Copyright Act).
Patents Act, 1970:
The JV Act has significantly revised the Patents Act with amendments made to five sections and the omission of one section.
Omitted Section:
- Section 121 – Use of the words “Patent Office”: The omitted section used to deal with the wrongful use of the words “patent office” as a place of business.
Amended Sections:
- Section 120 – Representation of Patented Articles: The amendment to this section escalates the penalty for falsely representing an article as patented or under a patent application in India to INR 10,00,000 (USD ~12,000) from the earlier INR 1,00,000 (USD ~1,200). Additionally, a fine of INR 1,000 (USD ~12) is imposed for each continuing day of the violation.
- Section 122 – Statement of Working of Patents: The key amendments to this section include a reduction in the penalty for failing to provide a statement of working (Form 27) to INR 1,00,000 (USD ~1,200) from the previous INR 10,00,000 (USD ~12,000). Moreover, under Section 122(2), the provision for imprisonment for submitting false information has been replaced with a fine, calculated as either 0.5% of the total sales or turnover, or INR 5,00,00,000 (USD ~6,00,000), whichever is lesser.
- Section 123 – Practice by Non-Registered Patent Agents: The amendments to this section increase the fine for practice by non-registered patent agents to INR 5,00,000 (USD ~60,000) from the earlier INR 1,00,000 (USD ~1,200). An additional penalty of INR 1,000 (USD ~12) is imposed for each continuing day of the violation.
Newly Included Sections:
- Section 124A – Adjudication of Penalties: This section authorizes the Controller General of Patents, Designs and Trade Marks (Controller) to appoint an adjudicating officer to conduct inquiries and impose penalties, ensuring a fair hearing for the concerned individual.
- Section 124B – Appeal: Aggrieved individuals can appeal against the adjudicating officer’s decision to a higher-ranked appellate authority within 60 days of receiving the order. The appellate authority must resolve the appeal within 60 days, with a provision for late appeals under certain conditions. If there is no compliance with the order of the adjudicating authority within 90 days, there is a fine of INR 1,00,000 (USD ~1,200) or imprisonment for up to one year, or both.
- Section 159 (Sub-section 2) – Insertion of New Clauses: Two new clauses (xiiia) and (xiiib) have been added post clause (xiii) to outline the procedures for inquiries and appeals as per sections 124A and 124B.
Trade Marks Act, 1999:
The JV Act has brought forth several amendments within the TM Act, targeting various sections to refine the penalty structure and adjudication process.
Omitted Sections:
- Section 106 – Penalty for Removing Piece Goods, etc. – The section imposed penalties for removing piece goods, cotton yarn, or cotton thread from any premises referred to in Section 81 of the TM Act, for sale without marking them as required by that section.
- Section 108 – Penalty for improperly describing a place of business as connected with the Trade Marks Office. This section imposed penalties for inaccurately describing a place of business as being associated with the Trademarks Office.
- Section 109 – Penalty for falsifying entries in the Register: Under the erstwhile section, penalties were levied for falsifying entries in the register.
Amended Sections:
- Section 107(2) – Replacement of Imprisonment Clause: The clause in this section previously imposed imprisonment for falsely representing a trademark as registered. This has now been substituted with a fine which is calculated as either 0.5% of the total sales or turnover, or the gross receipts in a profession, or a sum of INR 5,00,000 (USD ~6000), whichever is less.
- Section 140 – Penalty for failure to provide information on imported goods: The punishment for failing to provide information on imported goods under this section has been replaced with a fine of INR 10,000 (USD ~120).
Newly Included Sections:
- Section 112A – Introduction of adjudication mechanism: A new adjudication mechanism is introduced by which the Registrar can appoint an adjudicating officer to conduct inquiries, hold hearings, and impose penalties concerning violations within the TM Act.
- Section 112B – Outline of the appeals process: It lays down the appeals process against decisions made under Section 112A by the adjudicating officer. Any person aggrieved by the order of such adjudicating officer can file an appeal before an appellate authority as provided under the amendments. If a person fails to comply with the order of such adjudicating officer or appellate authority, within ninety days of such order, such person is punishable with a fine of INR 1,00,000 (USD ~1,200) or imprisonment for a term which may extend to one year, or with both.
- Section 157(2) – Adjudication and Appeals Procedure: Two new sub-clauses, namely, (xxxiiia) and (xxxiiib) are added to clause (xxxiii) pertaining to the procedural aspects of the newly introduced sections 112A and 112B. Sub-clause (xxxiiia) outlines the procedure for holding inquiries and imposing penalties as per section 112A, while clause (xxxiiib) delineates the form and manner for preferring appeals under sub-section (2) of section 112B.
Geographical Indications of Goods (Registration and Protection) Act, 1999
The JV Act made one amendment, two omissions, and three new introductions in the GI Act.
Omitted Section:
- Section 43 and Section 44 – Penalties: Section 43 dealt with penalties for improperly describing a place of business as connected with the Geographical Indications Registry. Section 44 dealt with penalties for falsification of entries in the Register.
Amended Sections:
- Section 42 (Sub-section 2) – Change in Penalty Terms: Imprisonment for falsely representing a Geographical Indication as registered has been replaced with a fine. The fine is now calculated as either 0.5% of the total sales or turnover, or a sum of INR 5,00,000 (USD ~6000), whichever is less.
Newly Included Sections:
- Sections 37A & 37B – Section 37 describes what amounts to applying a GI. Section 38 describes what amounts to falsifying and falsely applying GIs. Section 39 provides penalties for these offences. Sub-clauses A and B have been added to Section 37 for adjudication of penalties under the JV Act for adjudication of the punishment for these offences and for appealing against it, respectively. The amendments give the Registrar powers to appoint officers to adjudicate penalties. Any person aggrieved by the order of such adjudicating officer can file an appeal before an appellate authority as provided under the amendments. If a person fails to comply with the order of such adjudicating officer or appellate authority, within ninety days of such order, such person is punishable with a fine of one lakh rupees or imprisonment for a term which may extend to one year, or with both.
- Section 87 – Additional Rules for Inquiry and Appeal: Sub-clauses (oa) and (ob) have been added to govern the manner of preferring an appeal under Section 37.
Copyright Act, 1957
Omitted Sections:
- Section 68 – Penalty for making false statements: This section imposed penalties for making false statements with the intention of deceiving or influencing any authority or officer under the Copyright Act.
The Jan Vishwas (Amendment of Provisions) Act, 2023 has significantly reduced the penalties from imprisonment to fine in various important provisions, especially the Patents Act, 1970.
Although the JV Act attempts to introduce an appeal mechanism under the various intellectual property statutes discussed above, it continues to retain a provision for imprisonment on failure to comply with the order of the adjudicating officer or the appellate authority.
For further assistance, please reach out directly to your K&S Partners contact or write to us at patent@knspartners.com.
Draft Trade Marks (1st Amendment) Rules, 2024
The Department of Promotion of Industry and Internal Trade (DPIIT), under the Ministry of Commerce and Industry, Government of India, has notified the draft Trade Marks (1st Amendment) Rules, 2024 (draft Rules) and invited public suggestions and comments before February 9, 2023.
The draft Rules introduce two prospective provisions, Section 112A and 112B, to the Trade Marks Act, 1999 (Act) by Item 30(D) of the newly enacted Jan Vishwas (Amendment of Provisions) Act, 2023 along with related procedural guidelines. Additionally, also it suggests incorporating three new forms, namely Form: TM-D, TM-OPP and TM-DA, into the Second Schedule of the Act.
The key proposed amendments in the draft Rules include:
- Filing of Complaint (Form TM-D): Any person may file a complaint using Form TM-D against a false representation trademark under section 107 of the TM Act. [Rule 105A]
- Quashing and Dismissal of the Complaint Summarily: If no prima facie case for the maintainability of the Complaint has been made, the complaint shall be quashed and dismissed by the appointed Adjudicating Officer. [Rule 105B & 105C]
- Summary Proceeding: In a prima facie case, the alleged violator is served a notice and a complaint, and must respond with a written submission on Form TM-OPP within 15 days from the date of the issuance of the notice. [Rule 105D (a) & (b)]
- Manner of Holding Inquiry: A show cause notice shall be issued to the alleged violator and thereafter a final order shall be passed within 60 days. The draft proposes that while adjudging the quantum of compensation, three factors should be taken into consideration: (a) the amount of gain of unfair advantage, wherever quantifiable; (b) the amount of loss caused to any person; and (c) the repetitive nature of the default. [Rule 105D (c)]
- Time-Period Extension: The time period for responding to the show cause notice can be extended on showing sufficient cause and the payment of fees. An adjournment order may also be passed at the hearing. However, the proceeding must be completed and the penalty or compensation must be imposed or awarded, respectively, within 90 days. [Rule 105D(d)]
- Appeal: Aggrieved parties can appeal, using Form TM-DA within 60 days of receiving the order, accompanied by a fee of INR 5,000 (~ USD 60) in favour of the Appellate Authority. [Rule 105E]
- Registration and Disposal of Appeal: General rules as to registration, admission and serving a copy of the appeal shall be followed. The responses need to be filed within 21 days, extendable by another 21 days. The hearing will be scheduled no earlier than 30 days after notifying the parties about the same, shall be fixed for hearing the appeal and on which the Appellant Authority may pass any order including an order of adjournment. [Rule 105F & 105G]
- Procedure in Appeal: The Appellant can plead on other grounds also, not specified in an appeal if the omission was not wilful or reasonable. The Appeal shall be heard and decided within 60 days from the filing date, where possible. One adjournment may also be granted to the parties. Further, the appeal may be disposed of ex-parte also, however, this order may be set aside and the appeal may be restored, not beyond 1 year, on showing sufficient cause of the absence by the opposite party. [Rule 105H]
Stakeholders are invited to submit their suggestions or objections to these rules by February 9, 2024. To share your suggestions and comments with us, please reach out directly to your K&S Partners contact by February 3, 2024.
Requirements for inventive step Life Science and Pharma patents
Requirements for inventive step in India along with common patent eligibility issues in Life Science and Pharma patents
India has been on an upward growth trajectory for the last two decades, which has led to its slow but steady transformation into a knowledge driven economy that now has increased focus on quality research and innovation. This, coupled with India being one of the largest consumer markets in the world, makes for a perfect battleground where patents become important tools to not only distinguish oneself from competitors, but to also become market leaders.
Inventive Step in India
Patent protection in India is governed by The Indian Patents Act, 1970 (the Act) that amongst others, provides Sections 2(1)(j) and 3, that define an invention in India and enlist subject matters that are outside the purview of patent eligibility in India, respectively. Put together, these 2 sections form the most important technical provisions that determine whether an invention can be successfully protected by way of a patent in India or not.
Patent Subject Matter Eligibility – A Global Guide – Globe Law & Business
A great compendium of subject matter eligibility requirements across various jurisdictions and a handy reference for developing a prosecution strategy across jurisdictions for inventions in a given technical domain. - Nitin Sharma, Director, Engineering and Patent Counsel, Qualcomm India
Patentees file applications in more and more countries every year, with nearly four million PCT applications filed since the Patent Cooperation Treaty came into force in 1978. Yet prosecuting patents in different countries can be challenging. Each country has its own laws for pursuing patent applications and achieving enforceable patents, and local patent law varies widely on the issue of patent eligibility.
This title explores patent-eligible subject matter across major jurisdictions and technologies. With succinct discussions of case law, patent office practices, and practical prosecution strategies, this guide is intended to help patent practitioners determine where to consider filing applications, the risks and benefits of certain claim types and language, and how to increase the strength of their clients’ global patent portfolios.
Current Trends and Future Needs – Protecting IoT in India with IP
Notice
This article was also published in Lexology.
The Internet of Things (IoT) refers to billions of physical devices around the world that are connected to the internet and share data with each other. As the name implies, IoT refers to devices that traditionally may not have internet connections but can become ‘digitally intelligent’ when connected to the network without human intervention.
Today, anything can potentially be an IoT; a lightbulb that can be operated via a smartphone app, smart meters that can monitor and record electricity consumption, or even a driverless car. On an even bigger scale, smart city projects fill entire regions with different types of sensors to monitor and even control the environment.
Kevin Ashton who coined the phrase ‘Internet of Things’ in 1999, describes IoT as “The IoT integrates the interconnectedness of human culture — our ‘things’ — with the interconnectedness of our digital information system — ‘the internet.’
Language and Law: The Incomprehensible Lawyer – Part 2
The first part of this article described the peculiarities of the language of the law. In this concluding part, we cover the fascinating history of the lawyers’ language, why the legal profession persists with its language even though the English language for the rest of the world has changed from the middle ages and evolved, and the green shoots of change.
The characteristics and manner of composition of the language of the law are founded in antiquity. It is also an intended (or unintended) result of developments in political, societal, and technological spheres. Here are some examples:
The Challenging Pursuit of Patent Claim Amendments in India
The provisions in patent laws which provide for claim amendments, play a critical role in maintaining the patent ecosystem. In India, Section 57, read with Section 59(1) of the Act governs amendment of claims.
Amendments to patent applications are a regular feature of patent prosecution worldwide. From requiring the title to conform with claims in India, to conforming the whole description in Europe, different jurisdictions have their own requirements. However, since claims determine the value of a patent, it is important that claim amendments are treated with caution. It is essential to ensure that the language of claims which get granted, is in sync with the business objective of a patentee. This post reviews the practice of allowing amendments in claims of a patent application by the Indian Patent Office (IPO) and looks at some of the gaps that may need to be filled.
Untapped potential of CRISPR in India: IP perspective
While patent filings on the gene-editing applications of CRISPR seem to have gained real momentum from 2012 onwards, 2017 saw a peak in worldwide filings.
Clustered regularly interspaced short palindromic repeats (CRISPR), one of the most talked-about technologies of the decade whose developers were awarded the Nobel Prize in Chemistry in 2020, is essentially a product of the efficient adaptation of a bacterial immune mechanism against invading viruses into a gene-editing tool in higher organisms. CRISPR enables alterations at genomic level with high specificity and accuracy. From healthcare and agriculture to the energy sector, the applications of CRISPR have made it one of the most promising gene-editing technologies to date, with further applications being constantly explored by scientists to achieve new heights in scientific innovation.
Surprisingly, unlike other contemporary technologies, CRISPR has reached the vocabulary of individuals even outside the scientific community over the years. The merits of the technology aside, what has also garnered a lot of attention are the ethical concerns pertaining to its in vivo applications and the long-fought patent disputes over its application in eukaryotes.