Here is our recap of last week’s top IP developments including summary of the posts on the DHC’s direction to frame a code of conduct for Patent and Trademark Agents, MHC’s decision on prior arts, and the settlement between Dabur and Dhruv Rathee of their trademark and copyright dispute. This and much more in last week’s SpicyIP weekly review. Anything we are missing out on? Drop a comment below to let us know.
Highlights of the Week
FER-ocious Negligence: Delhi High Court to Patent Agents – Shape Up or Ship Out!
To address the rising concerns of negligence and misconduct among Patent and Trademark agents, the DHC directed the CGPDTM to frame a code of conduct for them. Aditya discusses the DHC order in his post above!
Before the Breakthrough: Does Prior Art Include Wrongfully Published Applications?
Can wrongfully published applications still be regarded as prior art? MHC in Dr. Vandana Parvez vs. The Controller of Patents says they cannot be. Read Tejaswini’s take on the decision!
Other Posts
Dabur v. Dhruv Rathee: A Closure or Gateway for the Future?
In light of the recent settlement between YouTuber Dhruv Rathee and Dabur concerning alleged disparagement in the former’s fruit juice video, Aarav writes about how the use of a mark in critiques should not amount to infringement and highlights the larger public interest in such commentaries/critiques.
To Do or Not to Do? Revisiting Business Method Patents in the Software Industry
Regarding the exclusion of business method patents under the Patents Act, Anushka Aggarwal assesses key precedents and theories of competitive and cumulative innovation, arguing that this exclusion is necessary to balance technological advancement and social welfare.
10 Days to the 2024 Shamnad Basheer Essay Competition Deadline!
Another reminder for our eligible readers as only 10 days remain for the deadline of the 2024 Shamnad Basheer Essay Competition! We have already received some fascinating entries and cannot wait to read more!
CGPDTM Announces Dates for 2025 Trademark and Patent Agent Exams
Dates for Trademark and Patent Agent Exams 2025 have been announced by the CGPDTM. The Trademark Agent Exam is likely to be held on January 04, 2025 and the Patent Agent Exam is likely to be held on January 5, 2025. Read on below to know more about the changes in locations of the test centres and syllabi of the examinations.
Case Summaries
The appellant was aggrieved by the order passed by the respondent, rejecting its patent application. The appellant argued that the respondent failed to take into account the 5 expert affidavits submitted along with its written statement nor did the impugned order discuss the response filed by the appellant to the hearing notice. The appellant also submitted that the respondent did not consider its US patent, which was granted despite the initial objections citing similar prior arts. The Court held that though the order is a detailed one, the Patent office should have taken into account the above factors and remanded the matter back to the patent office for fresh consideration.
Phillip Morris Products S A vs Assistant Controller Of Patents on July 04, 2024 (Delhi High Court)
The appellant was aggrieved by the respondent’s impugned order rejecting its invention on the grounds of Section 3(b). The appellant argued that the respondent cannot reject the subject application on the basis that it relates to E-cigarettes, if they are of the opinion that the traditional cigarettes may not fall within the scope of Section 3(b). The Court issued notice to the respondent, listing the matter on September 4.
The appellant filed an appeal against the impugned order of the respondent, submitting that the prior arts cited teaches away from the subject invention and were diametrically opposite to the claims. The Court assessed the application and the cited prior art to hold that the latter do not make the invention obvious and that the respondent has adopted a hindsight approach of reconstruction. The Court accepted the appeal and set aside the impugned order, granting the patent to the appellant.
Kyorin Pharmaceutical Co vs Assistant Controller Of Patents on July 05, 2024 (Madras High Court)
The appellant filed an appeal against the impugned order rejecting its patent application holding it to be obvious and not patentable under Section 3(e). The appellant argued that the respondent cited prior art D5 only in the hearing notice. It argued that the D1 and D3 teaches away from the invention and D5 was not relevant for the present case. It further argued that the impugned order did not take into account its responses filed against prior arts D1, D3, and D5 and Section 3 objection. The Court examined the prior arts and the subject invention and held that the prior arts pertained to the process of manufacturing an orally soluble tablet, whereas the invention concerns the tablet i.e. the product. The Court also held that the defendant did not discuss the responses by the appellants and thus on the above reasons set aside the impugned decision.
The appellant filed an appeal against the impugned order by the respondent, rejecting its patent application. The appellant argued that the invention provided a technical solution to a technical problem, improving system functionality. The respondent maintained that the invention constituted a computer program per se under Section 3(k), did not involve inventive hardware, and lacked a technical effect or contribution per the CRI Guidelines 2017. The Court analysed the claims and prior art, considering precedents and concluded that the invention was not excluded under Section 3(k) due to its technical effect enhancing system functionality and involved an inventive step, as it was not obvious to a person skilled in the art (PSITA) when considering the prior art. The appeal was allowed, setting aside the impugned order, and directing the grant of the patent based on amended claims.
The Court directed Bird Worldwide Flight Service (India) Pvt. Ltd. to remove the ‘WFS’ and ‘Worldwide Flight Services’ trademarks from all equipment, uniforms, and materials, both online and offline, within specific timelines. The initial order dated December 19, 2023, required compliance within four and nine months. The respondent, Bird Worldwide Flight Service, sought an extension, claiming partial compliance but needing more time due to logistical challenges and the hospitalization of a key family member. Despite these arguments, the Court denied the extension, emphasizing that the need for a new logo should not hinder the removal process. The respondent was ordered to complete the removal within 15 days for online platforms and 45 days for physical materials.
Metro Brand Ltd. v. MKCE Master Franchise India Pvt. Ltd. on 11th June 2024 (Bombay High Court)
The plaintiff is the registered proprietor of the ‘METRO’ trademark and is a leading retailer in footwear, bags, and accessories. The defendant was granted registration of mark ‘METRO KIDS COMPANY’ on a “proposed to be used basis” provided that business be restricted to the State of Tamil Nadu. The plaintiff contended that they are in the process of filing a rectification petition against the defendant’s mark and asserted that they are the prior user of the mark ‘METRO’ which forms the most prominent and essential feature of the defendant’s trademark. Despite the registration of the defendant’s mark, the Court in its prima facie view found the mark to be dishonestly adopted by the defendants and granted an ad-interim injunction to the plaintiff.
Other IP Developments
- Dr. Reddy and Zydus announce licensing agreement for co-marketing Pertuzumab biosimilar.
- Deloitte proposes blueprint to boost India’s R&D sector. Suggests revision of Patent Box regime and introduce dedicated national R&D policy among other things.
- ANI sues PTI for using one of its videos without authorization.
- Delhi HC refers to Bharatiya Nagarik Suraksha Sanhita for the first time, in trademark infringement case.
- Saregama sues Emami for unauthorized use of its.”Udi Jab Jab Zulfein Teri” song in an advertisement.
- Ministry of Commerce and Industry publishes and invites comments on Trade Marks (Holding Inquiry and Appeal) Rules, 2024.
International IP Developments
- As per the recent WIPO Gen AI Report, China-based inventors are filing most applications for GenAI patents.
- London High Court gives a mixed ruling on Pfizer-Moderna COVID vaccine case. Finds one of Moderna’s patents to be invalid while upholds the validity of another patent and holding that Pfizer-BioNTech infringed it.