PATENT ACT, 1970

Facts: Pre-grant oppositions to the patent were rejected on the ground of being time-barred. Counsel for the party argued that a patent is not considered to be granted until an entry to that effect is made in the Register.

Held: The sealing of the patent and the entering of the patent in the Register are intended to be ministerial acts evidencing the grant of patent, which is at a stage anterior to those ministerial acts. Therefore, for the purposes of Section 43(1) of the Act, the patent is "granted" on the date on which the Controller passes a final Order to that effect on the file.

Facts: Plaintiffs alleged that a technology that was assigned to them by Nokia in a Confidential Patent Purchase Agreement is being used by the Respondents in manufacturing their devices without proper license.

Held: There is no presumption regarding the validity of a patent. The onus of proving the validity and ownership of a patent is on the party which claims that their patent is being infringed.

Facts: The Defendants filed a 'Revocation Petition' against the 'Plaintiff' in front of the Appellate Board. Then, on the same cause of action, also filed 'counter-claim' in the High Court.

Held: Since a "counter-claim" is of the nature of an independent suit, a "counter-claim" cannot be allowed to proceed, where the Defendant has already instituted a suit against the Plaintiff, on the same cause of action. If the Respondents in their capacity as "any person interested", had filed a "revocation petition" before the institution of an "infringement suit", they cannot be permitted to file a "counter-claim" on the same cause of action. The natural conclusion in the instant situation would be, the validity of the grant of the patent would have to be determined in the "revocation petition". Therefore, in the above situation, while the "revocation petition" will have to be permitted to be pursued, the "counter-claim" cannot be permitted to be continued.

Facts: There was a contract between the plaintiff's father (licencee) and the defendant's grandfather (licencor). Licencor invented a medicinal powder, some of which was patented and the rest was kept as a trade secret. Licencor entered into an agreement with the licencee for exclusive right to manufacture and sell. After both died, their legal heirs became their legal representatives. Now the licencor's representative threatened to disclose the secret if the conract is continued. Licencee would suffer a huge loss as he has absolute monopoly in the market.

Held: Although the licencor is the owner of the secret, yet the plaintiff has the right against the secret. Inevitable disclosure is a drawback. The court accepted the secret without knowing what it was and only the circumstances proving the existence of such a secret was enough. Temporary injunction and damages were granted.

Facts: "Premarin" is a naturally occuring substance found in pregnant mares. It can be extracted by Brandon Process. The drug was patented by the plaintiff and the process was kept as a trade secret for 60 years. The patent expired after 20 years but their monopoly continued because of their trade secret. The defendant was a growing company. Their CEO made a declaration that they have discovered the Brandon process. Now, that the drug was in public domain, anyone can manufacture and sell it.

Held: It was proved by the plaintiffs that the CEO had no Scientific degree; CEO had come into contact with one of the scientists, an ex-employee of the plaintiff. Accomplice could not be proven but communication between them was proven which raised a reasonable doubt. It was held that the there was a violation on the grounds of misappropriation of information(acquisition of information without authorisation). CEO was held guilty for misappropriation. Company was held guilty for using the misappropriated information. The Scientist was held guilty for taking advantage of his psition and giving away confidential information. As a result, the company was shut down, the CEO was blacklisted from the pharmaceutical sector and the plaintiffs were paid millions of dollars as damages.

Facts: Plaintiff and the 2 defendants had a partnership to sell, manufacture and design wooden furniture. Plaintiff was the finance partner and the defendants were the creative partners. Defendants created a chair with floral design by burning the wood instead of using the chisel. This required expertise and tools. Now the three partners decided to wind up the partnership. During winding up, the defendants applied for the Patent on the chair. The plaintiff was unaware of it. It was granted 2 to 3 days after winding up without including the plaintiff.

Held: a. The dispute must have been taken to the appellate board. Firstly, the true and first inventor is the one who applies for the patent first and not invent it first. That being said, the finance partner does not get patent rights because by definition, patent is granted only to the "inventor". Money is immaterial. For the finance partner, to qualify as a partner in patent, needs to qualify as an assignee. Since, in a partnership there exists only agents of each other, plaintiff has no right to be added in the patent aplication.
b. Secondly, as per the provision, "any person" (natural persons only) can apply for the patent. Partnership is not a legal entity, hence cannot own anything in it's name.

Facts: The respondent developed and patented a drug 'Sorafenib' and sold it under the brand name "NEXAVAR". They launched it in India in 2008. It was useful in treating kidney and liver cancer. It was not a life saving drug but only a life extending drug. The drug has to be taken by the patient throughout his lifetime and the cost of therapy is Rs. 2,80,428/- per month and Rs. 33,65,136/-per year. The Appellant is a generic drug manufacturer in India and has developed a process for manufacturing the said drug in bulk in the form of tablets. The appellant requested for a voluntary licence and proposed to sell the drug at Rs. 8800/- per month.

Held: The reasonable requirements of the public with respect to the patented invention have not been satisfied and this makes out a fit case for the grant of Compulsory License. It stands to common logic that a patented article like the drug in this case was not bought by the public due to only one reason, i.e. its price was not reasonably affordable to them. Hence, I conclude beyond doubt that the patented invention was not available to the public at a reasonably affordably price and that Section 84(1)(b) of the Patents Act, 1970 is invoked in this case. Consequently, a compulsory license be issued to the Applicant under Section 84 of the Act.

Facts: The Appellant requested for the patent on the beta crystalline form of Imatinib Mesylate known as Gleevec. The form was claimed to have better thermodynamic stability(can be maintained irrespective of temperature), lower hydroscopicity(absorption of water was more)- it could be made into tablets now and increased bioavailability- could be absorbed by the body more hence the dosage can be lowered. All these factors contribute to improved efficacy of the drug. In 1997, when the appellant filed its application for patent, the law in India with regard to product patent was in a transitional stage and the appellant's application lay dormant under an arrangement called "the mailbox procedure". Before the application for patent was taken up for consideration, the appellant made an application on March 27, 2002, for grant of exclusive marketing rights (E.M.R.) for the subject product under Section 24A of the Act, which was at that time on the statute book and which now stands deleted. The Patent Office granted E.M.R. to the appellant on November 10, 2003.The appellant's application for patent was taken out of the "mailbox" for consideration only after amendments were made in the Patents Act, with effect from January 1, 2005. But before it was taken up for consideration, the patent application had attracted five (5) pre-grant oppositions in terms of Section 25(1) of the Act. And it was in response to the pre-grant oppositions that the appellant had filed the affidavits on the issue of bioavailability of Imatinib Mesylate in beta crystalline form.

Held: The new form is only a derivative of an existing polymorph and falls u/s.3(d). Gleevec was already discovered in 1993 and hence could be anticipated. The anticipation need not to be exact, the possibilities are also covered. The improved efficacy could not be proved due to lack of documents. The prior effects of the drug has to be shown as magnified. Simple removal of side effects will not be considered as improvements. Obiter: If the different forms of existing polymorphs will be given patents, it will lead to evergreening of patents. It cannot be allowed.

Facts: The respondent found out that the petitioner was using the same machine in his unit as him, for manufacturing utensils. The petitioner's machine had clips on the side of the conveyer belt so that the utensils didn't fall down. The respondent challenged the validity of the patent of petitioner's machine.

Held: a. Patent was granted incorrectly, hence cannot sue others for patent infringement. "Just because a patent is granted by the Controller, does not mean it is valid absolutely and cannot be challenged." The case was decided u/1911 Act. The patent was held invalid on the grounds of no novelty and obviousness.
b. The clips were just a workshop improvement and lacked inventive step. Doctrine of equivalence was applied and was held that there was no substantial difference between the two devices.

Facts: The plaintiff invented a lock which was tamper- proof and was in vertical shape and position. The respondent manufactured the same locks only in horizontal shape and position.

Held: Applying the two doctrines, it could be seen that the two products have no substantial difference. They are both based on the same technology and work in the same manner. Hence, there is a violation.

Facts: Plaintiff had a patent of a device that carried horticulture products in it. The basket was made of nylon and ropes that of plastic. Respondent was selling almost exactly the same device to the horticulture department.

Held: Alleged patent was held invalid on the grounds of prior use. It was said that the locals were already using such a device known as 'KILTA' as part of their traditional knowledge. Hence it lacks inventive step. Therefore, there is an infringement.

Facts: "ERLOTINIB" is a drug developed by Pfizer which is used for the treatment of Cancer. It is a derivative of "QUINAZOLIN". Hoffman is the sole licencee of the drug. It was found by Hoffman that Cipla was manufacturing the exact same drug and selling it under a different name.

Held: Both issues are independent of each other.
a. Since, Pfizer is only the owner and not a party to the suit, the patent cannot be revoked. Hoffman can sue for patent infringement.
b. Secondly, the drug lacks inventive step and non obviousness as it is based on 3 European Union patents. Also, it is a derivative of a known substance which is not new and not patentable. Hence, the patent has been granted incorrectly. Therefore, there is no infringement in this case.

Facts: The process of Anti Bacteria Vaccine "Vursitis" was patented. Above patent was refused by the Controller on the grounds of morality, natural living organisms cannot be granted patents.

Held: The court does not have the power to GRANT the patent. Hence, it was sent back to the Controller for re-evaluation. It was also said that refusal on this ground was not applicable. Secondly, the product merely used in industry cannot be paented. Vendibility needs to be checked. It should be capable of being sold.

Facts: Chakraborty is a scientist who developed a strand of bacteria which broke crude oil into proteins.

Held: "Anything under the sun, made by man can be patented." Sufficient human intervention in a naturally occuring substance is patentable. Hence, naturally occuring substances per se are not patentable.