In a pathbreaking decision, and a first from an Indian court, several aspects of patent law in India were clarified and discussed. This newsletter discusses these. 

    1.    An infringing product not kosher even after expiry of the patent 

        Justice Sanjeev Narula of the Delhi High Court held that “if an infringement has occurred during the lifetime of a patent, the infringing goods would not become kosher on expiry of the patent.”    The questions raised before the court were important ones as to whether a patent loses its sheen as it nears the end of its term.  Should a patentee be less entitled to the full measure of reliefs near the end of the patent?  Justice Narula decided all these issues in favor of the patentee, holding that if a patentee approaches the court for enforcement of its rights during the subsistence of the patent, irrespective of the length of the balance period of the life of the patent, it would be the duty of the court to enforce the same, giving the full benefit of the enforcement provisions of the Patent Act and other provisions of law, “without exception”.   In the facts of the case, the patent was to expire within a month from the date of the decision and the argument raised by the opposite party was that since the patent was expiring soon, no injunction should be granted in favor of the patentee.  

       Since an Indian court had not had an opportunity of answering this important question, the court agreed with the proposition of law in American and English authorities that any product which is infringing, during the term of the patent, would continue to be tainted, after the expiry of the patent as well.  The infringement does not get dissolved after the lapse of the patent.  

        A cat may have many lives, a patent has only one, and that too a short one.   It takes years for a patent to born.  Years of hard work towards its inception followed by years of pregnancy in the form of filing and examination, the life of a patent is always living a charmed life.  At any time, it is open to challenge, from pre-grant to post-grant oppositions in its young life to rectification proceedings on any and every ground.  The judgement now ensures that the limited life of a maximum of 20 years now gets its full measure of protection, till it breathes its last.  

    2.    International exhaustion not applicable to patents

        There are other aspects of the case which are equally pathbreaking.   The court held that the Indian patent law protect patents granted in India.  Patent laws are essentially territorial in nature and Indian courts will not permit importation of products even if the patent is registered in the name of other entities in other parts of the world.  The court also held that unlike trademarks, the doctrine of international exhaustion is not applicable to patents under Indian law.  

    3.    Damages not a substitute for injunctions

        Another important finding of the court was on the grant of injunctions.  The court held that damages is never an alternative to injunctive relief and even if the infringer is able to eventually compensate a patentee in the form of damages, injunctive relief is not to be denied.   

    4.    A patent is infringed even if a single claim is infringed 

       The Court made another significant finding that mapping of one of the independent claims (claim no.1) was sufficient to constitute infringement, even if the dependant claims may differ, without going into the mapping of the remaining, dependent claims.  

    5.    Courts must identify the “pith and marrow” of the patent for infringement 

        The court laid down the principles which apply to reading a patent specification.  The court observed that a patent specification has to be read by a notional person who was acquainted with the language of the patent claim.  Infringement can occur in a non-literal sense where each and every element of a patent claim is not found in the infringing product.   It is the pith and marrow which is required to be copied and courts are not to get engaged in a meticulous comparison of the detailed specification.   The court is also to apply the doctrine of equivalence to see if the infringing product does the same work in substantially the same way to accomplish substantially the same result.  Minor variations cannot be treated as a shield from piracy.   

    6.    “Hot tubbing” procedure followed 

        This is also one of the first cases in which the court followed the hot tubbing procedure.  The court not only asked for an independent expert analysis from IIT Delhi, but requested the experts to be available in court to answer queries.   This procedure dubbed as “hot tubbing” and incorporated in the Delhi High Court Rules recently was followed for the first time by an Indian court.  

    Details of the dispute 

        The matter pertained to patent IN214088 (hereinafter referred to as ‘088) owned by SOTEFIN SA (the Plaintiff) covering a self-propelled carriage on wheels, for horizontal transfer of motor vehicles by lifting two or more wheels, in single or multi automatic mechanical car parks, known as ‘Silomat Dolly’. The Plaintiff asserted its right against four defendants.  Defendant no. 1 (D1, Indraprastha Cancer Society & Research Centre) is a not-for-profit public society and operates/manages Defendant No. 2 (D2, Rajiv Gandhi Cancer Institute and Research Centre). Defendant no. 3 (D3, Simplex Projects Limited) had a supply contract agreement with the Plaintiff for Silomat Dollies. D2 floated a tender in 2017 for which the tender for an automatic car parking system for its site at Rohini, Delhi. Plaintiff approached D2 and also made it aware of the suit patent. In November 2020 the Plaintiff learnt that one Simpark Infrastructure Private Limited (Defendant No. 4) is handling the parking project at Defendant No. 2’s site. Defendant No. 3 is the largest shareholder of Defendant No. 4 and controls its operations and management. On investigation it was found that D1 had placed an order for import of 14 Smart Dollies from a Chinese company, Nanjing Eli Parking Equipment Manufacturing Co. Ltd. The Plaintiff alleged that the Smart Dollies infringed its patent ‘088. The Plaintiff was granted injunction and the order was pronounced by the Hon’ble Delhi High Court pronounced on 17th February, 2022 (CS(COMM) 327/2021).

        This indeed is a landmark judgement that will guide the future course of patent enforcement in India. The issues of doctrine of equivalence, parallel imports, indirect infringement, damages and injunction have been haunting patentees in India for many years. This judgement provides clarity on many issues. The issue of parallel imports has been a cause of major worry and also one of the reasons for portraying India as not-a-patent-friendly jurisdiction. This will likely have ramifications across industries, especially in the pharmaceutical industry. We may have just turned a new leaf.


  • Creation Of Intellectual Property Division in the Delhi High Court

  • Creation Of Intellectual Property Division in the Delhi High Court

    The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 was promulgated by the President of India and was notified on 4th April, 2021. The effect of the Ordinance was that various Boards/Appellate Tribunals, which existed under several statutes, have been abolished. In particular, the Intellectual Property Appellate Board (IPAB) stood abolished affecting the IPR ecosystem in the country.

    In order to have streamlined and comprehensive review of the manner in which a large quantum of IPR cases ought to be dealt with, Hon’ble the Chief Justice of High Court of Delhi, Justice D.N. Patel constituted a committee comprising of Hon’ble Ms. Justice Prathiba M. Singh and Hon’ble Mr. Justice Sanjeev Narula. The Committee submitted its report to Hon’ble the Chief Justice both in respect of IPR and non-IPR subject statutes.

    Based on the recommendations of aforesaid Committee, Hon’ble the Chief Justice has created the Intellectual Property Division (IPD) in the Delhi High Court to deal with all matters related to Intellectual Property Rights. The IPD so created, besides dealing with original proceedings, would also deal with the Writ Petitions (Civil),  CMM, RFA(Regular First Appeal), FAO(First Appeal from Order) relating to Intellectual Property Rights disputes (except those which are required to be dealt with by the Division Bench). This has been done in order to avoid multiplicity of proceedings and to avoid possibility of conflicting decisions with respect to matters relating to the same trademarks, patents, design etc.

    As per the press release issued by the Delhi High Court, the creation of Intellectual Property Division (IPD) in the High Court of Delhi is a significant step which is in line with global practices in this regard. Such IP Divisions or IP Courts, which exclusively deal with IPR matters, already exist in the UK, Japan, Malaysia, Thailand, China etc. The creation of IPD with comprehensive rules governing IPR matters, is a momentous step taken towards efficient disposal of such matters. It will provide  much needed respite from the lacuna created by the lack of any appeals forum. 

    The Delhi High Court is also in the process of framing comprehensive Rules for the IPD. A Committee has already been constituted for framing of the `Delhi High Court Patent Rules’ which shall govern the procedures for adjudication of patent disputes before the Delhi High Court. The first draft of these Rules have already been notified for stakeholders’ comments, which have been received. We at Lall & Sethi had submitted detailed comments on the draft Patent Rules. We will keep you updated on any further developments with regards to the Intellectual Property Division (IPD) in the High Court of Delhi. 

  • Design Rules Amendment, 2021

  • Design Rules Amendment, 2021


    The Government of India and Ministry of Commerce & Industry notified the Design Rules Amendment of 2021 in the Official Gazette of India on January 25, 2021.

    The amendments to the Design Rules can be broadly classified under four headings:


    • The amended rules now officially recognize and define a “start-up” and “small entities”. The rules have been framed to classify which entities will be recognised and can apply for design registration as a start-up.
    • The fee structure has been simplified and there is reduction in the fees for small entities. All categories such as natural person, small entities, start-ups etc. will pay the same fees.
    • Indian start-ups must be registered under the MSME ACT, 2006 and foreign entities to qualify as a start-up must submit relevant documents to prove their status.
    • In case assignment of rights from start-up to another entity the difference in application fees will have to be paid.


    • Email and Phone numbers are now to be considered part of the address of service details and mandatorily be submitted in the design application.


    • The Locarno classification system has now been officially adopted under the Design Rules. Up until now India had been following their own classification system. (Provided that registration of any design would be subject to the fulfilment of provisions of the Act specifically 2(a) and 2(d)).


    • Schedule I, which specifies the fees, has been substituted. The revised Schedule now provides for differences in costs which may be imposed depending on the nature of the entities involved in proceedings. Similarly, the scale of Costs in Fourth Schedule has been substituted to include costs which depend on the nature/category of the applicant.
    • In Schedule II, Form 1 has been substituted with amended FORM 1. The amendment is minor and is made to include start-ups as an applicant category. Similarly, Form 24 has also been substituted to incorporate start-ups as a category of applicants.

    The main purpose of the amendments seems to be overall positive with aim to make the design registration process simple and streamlined.

  • Patents Amendment Rules, 2020

  • Patents Amendment Rules, 2020

    The Department for Promotion of Industry and Internal Trade (DPIIT) has notified Patents (Amendment) Rules, 2020 and published its Official Gazette on 19th October, 2020. The amended rules come into force from the same date as the publication of the notification, i.e. 19th October 2020.

    The major highlight of the said notification is the publication of “fresh” Form 27, the requisite form for filing statements of commercial working/non-working for granted patents. It may be recalled that draft rules, namely the Patents (Amendment) Rules, 2019 were published on 31st May, 2019. The said draft rules had introduced a new format for Form 27. The said format was widely criticized and several representations were made by stakeholders to both the IPO (Indian Patent Office) and the DPIIT. Both the IPO and DPIIT had held wide consultations with stakeholders in which there was virtual unanimous view that either the requirement for filing Form 27 should be shelved altogether as such a requirement was obsolete and archaic; or it should be substantially simplified. The representations were made not only by the industry representatives and law firms but also by several industry organizations like the CII. The new Form 27 addresses only a few concerns, for instance the time frame within which Form 27 has to be filed (more details can be found below). However major issues like confidentiality of information (revenue accrued); criminality attached to giving (purportedly) false information; and reasons for non-working remain unattended. In fact, there is an additional burden of providing a list of patents that are related to each other, in a single form.

    Following are the amendments in rules:

    1. Amendments in the format pertaining to Form 27 (working statement) 

    1. Due date of filing Form 27:

      Form 27 is required to be furnished once in respect of every financial year (fiscal year in India is from 1st April to 31st  March of the next year), starting from the financial year commencing immediately after the financial year in which the patent was granted, and will be required to be furnished within six months, i.e. by 30th September of the following year, from the expiry of each such financial year.

      Changes: Earlier, the due date for filing Form 27 was calculated on the basis of calendar year (1st January to 31st December) and was required to be submitted within three months of end of each calendar year, i.e. by 31st March of the next year. Accordingly, essentially the deadline to furnish working/non-working statements has been increased by three months.

      Effect: This change simply postpones the filing of statements and has no material effect on the filing per se. The stakeholders had complained that it is difficult to gather the information to be disclosed within three months’ time of the previous calendar year i.e. by 31st March. The time line has been extended considering this difficulty and has also been changed according to the fiscal year followed in India, which is from 1st April to 31st March (of the next year).

    2. Format of Form 27

      Following are the changes in the new Form 27:

      1. Para 1: Form 27 may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue / value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s). 

        Effect: The patentee will now be required to map all the patents to a technology and providing as a list in one form. This goes beyond the mandate of section 146 of the Patents Act or Rule 131. It appears that the use of the word “may” give an optionality, but in reality, it does not. While giving the revenue in para 4 of the form, it will be required to either give revenue patent wise OR if that is not possible, the list of patents will have to be given.

      2. Para 3: This paragraph requires providing a list of patents that have been worked/not worked. If the patentee has given multiple patents in para 1, then which ones have been worked/not-worked are required to be given here.

        Effect: The problem is same as mentioned above in point a. This amounts to product marking which is not mandated by the Patent Act and goes beyond the requirement of Section 146.

      3. Para 4: If Patent is worked, there is requirement for submission of approximate revenue / value accrued in India to the patentee(s)/ licensee through:
        o Manufacturing in India …… (in INR)
        o Importing into India ………. (in INR)

        Brief in respect of above in not more than 500 words.

        Effect: Though the requirement of “quantum” has been removedbut revenue accrued is still required to be given along with how much is manufactured in India and how much is manufactured outside. In effect it does nothing to protect the confidential information of the patentee. However, the opportunity to provide a brief about the working, revenue and manufacturing requirement may allow the patentee to give an explanation.

      4. Para 5: If Patent is not worked, reasons for not working the patented invention(s) and steps being taken for working of the invention(s), have to be given in not more than 500 words.

        Effect: This remains the same as in the earlier form, except that the patentee is expected to provide a long explanation.

      5. The declaration “state whether public requirement has been met partly/adequately/to the fullest extent at reasonable price” has been removed.

      6. Every patentee and every licensee (exclusive or otherwise) is required to file this form; where a patent is granted to two or more persons, all such patentees may file this form jointly; however, each licensee is required file this form individually.

        Effect: This is an added burden on the patentee and the licensee.

    Given below is a comparison of the old and the new Form 27:

    Para No. Old Form 27 New Form 27 as per Patent Amendment Rules 2020
    Para 1 Option for providing a list of patents related to each other did not exist. The following explanation is inserted:

    (Explanation: One form may be filed in respect of multiple patents, provided all of them are related patents, wherein the approximate revenue / value accrued from a particular patented invention cannot be derived separately from the approximate revenue/value accrued from related patents, and all such patents are granted to the same patentee(s)).
    Para 3 Option for providing a list of patents related to each other did not exist. In para 3, the following line is inserted:

    Please state whether each patent in respect of which this form is being filed is worked or not worked.

    Para 4

    Para 3 of the Form asked for the following information for a patent being worked:

    (b) If worked: quantum and value (in Rupees), of the patented product:
    i) manufactured in India
    ii) imported from other countries. (give country wise details)
    Para 4, part (a) of the form now reads as:

    (a) Approximate revenue  /  value  accrued  in  India  to  the  patentee(s)/  licensee furnishing the statement from patent number(s) where the working is through:
    (1) Manufacturing in India   …… (in INR)
    (2) Importing into India ………. (in INR)
    (b) Brief in respect of (a) above (maximum 500 words)
    Para 5 For a patented invention, the following information was specifically asked for:

    (ii) the licenses and sub-licenses granted during the year;
    (iii) state whether public requirement has been met partly/adequately/ to the fullest extent at reasonable price.
    Omitted in the new form
    Note No requirement for the licensee to file Form 27. A note is inserted at the bottom of the Form:

    Note: Every patentee and every licensee (exclusive or otherwise) is required to file this Form; where a patent is granted to two or more persons, all such patentees may file this Form jointly; however, each licensee shall file this Form individually.


    2. Amendments in Rule 21 concerning the submission of priority document and its verified English translation for national phase applications:

    1. Only when the applicant has not complied with requirements of submission/request for the certified copy of priority application before the International Bureau or the Receiving Office under PCT Rule 17.1, there is a requirement for submission of certified copy of priority application within 31 months from priority date.

    2. The English translation of priority application duly verified by the applicant or the person duly authorised by him, is required to be submitted within 31 months from the priority date, only:
      1. where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable; or
      2. where an element or part has been incorporated by reference, for the purposes of determining whether that element or part is completely contained in the priority document concerned.
    3. Where there is requirement for submission of certified copy of priority application or its verified English translation and applicant does not submit the same within 31 months from the priority date, the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.

    4. Effect: The applicant or his agent will have to be vigilant with respect to the submission of priority document when invited by the Controller, otherwise there is a danger of losing the priority claim.

  • Trade secret protection in India

  • Trade secret protection in India

    Trade secrets in India have been recognized as, "information with commercial value which is not in the public domain and in relation to which the owner of the information has taken considerable steps to maintain confidentiality and secrecy." Even though trade secrets are not governed by any specific legislation in India, yet a protection regime exists whereby the rights of people owning the trade secrets may be safeguarded under appropriate circumstances. The trade secrets in India are therefore, protected through the Contract Law, Copyright Law, Information Technology Law, equitable doctrine of breach of confidentiality or unfair trade practices. Calcutta 1 High Court in Fairfest Media Ltd vs Ite Group Plc and Ors summarized the legal status of trade secret protection in India: "the essence of this branch of law whatever the origin it may be, is that a person who has obtained information in confidence is not allowed to use it as springboard for activities detrimental to the person who made the confidential communication.” The trade secrets' protection in India is approached on the basis of equity principle, breach of contractual obligations under common law, whereby if the owner has revealed the trade secret to another independent person for the purpose of running business in his absence, that person is not allowed to take advantage of it and involve in unfair trade practices. This necessitates that the employees who have access to trade secrets should be educated about the protection of trade secrets and be made to signe nondisclosure agreements (NDA). However, in John Richard Brady v. Chemical Process Equipments P. Ltd. and Ors.2, the Delhi High Court invoked a wider equitable jurisdiction, awarding an injunction in the absence of a contract. The Court held that,"independent of an underlying contract or in the absence of one, he who has received information in confidence is not allowed to take unfair advantage of it."

    This lays down that undue enrichment at the expense or detriment of another goes against the tenets of equity and fairness which need not be dependent on contractual obligations.

    In order to protect a valuable trade secret, it is essential that a strong trade secret protection be in place. For this, first of all a trade secret must be identified. Any know-how cannot be a trade secret. The Delhi High Court in the case of American Express Bank Ltd. v. Priya Puri3, has provided a list of what can be said to be a trade secret. As per this judgment, a trade secret "can be a formula, technical knowhow or a peculiar mode or method of business adopted by an employer which is unknown to others." However, routine affairs of the employer which are commonly in the knowledge of his employees and his competitors cannot be called trade secrets. Therefore, trade secrets must be well protected. Apart from maintaining secrecy, the employer must enter into a NDA with employees and any third party involved. Such restrictive covenants, aimed at protecting trade secrets are considered to be reasonable and nonconflicting with public policy during employment (Niranjan 4 vs Century ). They are not considered to be in restraint of 5 trade (Section 27, Indian Contracts Act, 1872 ) and are hence, not void. It must also be noted that agreements or contracts imposing restrictions on carrying on business by a former employee following termination of employment are generally considered to be in restraint of trade. However, in no case is a former employee allowed to take unfair advantage of the employer's trade secrets that are vital for its business. A former employee can also be restrained from "carrying (out) any activity which is competitive to that of company, and also from soliciting, interfering with, disturbing or attempting to disturb the relationship between the company or subsidiary and third party,including any customer or supplier of the company or subsidiary" (Kumar Apurva v. Valuefirst6). As can be observed, formulation of NDA or confidentiality agreement or employment contract can go a long way in providing protection to trade secrets. However, it is very important that these documents be drafted carefully. The NDA should clearly mention what information an employee can pass, or cannot pass, provision of termination due to breach of this agreement, and a clear, definition of "third party" to whom disclosure of information is banned. The employment contract must have a termination clause and a general clause on breach of contract, non-solicitation clause, theft of information etc. The contract should also specify that the employee is mandated to take reasonable steps to keep all the confidential information in confidence except and to the extent when disclosure is mandatory under any law in force. Further to ensure enforceability of NDA/ confidentiality agreements, the definition of the confidential material ought to be well defined and the names of the contracting parties should be clearly written to avoid all ambiguities. It must also be ensured that only the authorized person is signing the contract. Scope of the agreement must not be very broad, onerous or too anticompetition or else this may render the contract unenforceable. The context of the agreement, its terms and jurisdiction must be clearly defined. In case of an R & D unit, one should obtain a "document of ownership" signed by the scientist/engineer/technical person with a clause clearly stating that the ownership of IP generated by the person during his/her tenure of employment will rest with the company. Apart from NDA and confidentiality agreements, it is important that the company take certain initiatives to ensure protection of their vital trade secrets. These include restricting access of trade secrets to only those employees who may have a legitimate need to know it, marking trade secret containing documents as confidential and maintaining electronics and computer secrecy. In order to keep computer secrecy, a Data Protection policy must be in place so that employees can be made aware of data theft, tampering with computers and its consequences. Under the Information Technology Act 2000, tampering with computer systems can invite a fine of up to approximately 7 USD 1,40,000 under section 43 . These could also invite 8 imprisonment of up to 3 years under section 66 . Breach of 9 confidentiality and privacy is punishable under section 72 of the IT Act with imprisonment up to 2 years or fine or both. Disclosure of information in breach of lawful contract is punishable with imprisonment up to 3 years or fine or 10 both under section 72A . Also, one should be careful with unsolicited submissions. Further, there should be sufficient legal support on whatever policies needs to be put in place by the employer. A non-compete clause must also be inserted into any contract. Caution must also be taken while hiring new employees. A proper pre-screening must be carried out to rule out any criminal record, any wrongful act including money laundering, fraud, corruption etc. Similar due diligence must also be carried out before entering into any third party agreement. Even after taking due precautionary measures, one may face trade secret violation ending up in litigation. One of the major concerns then is that trade secrets may be made public during litigation in India. In an issue examined by a 9- 11 judge bench of the Supreme Court of India ; it has been held that for matters which lead to publication of secret processes, publication of which would destroy the very basis of the claim for relief etc., Courts may hold a trial in closed session and wholly exclude the public throughout the trial or a part thereof. The Delhi High Court has promulgated new Rules in November 2018 that allow 12 formation of a 'Confidentiality Club' during litigation .

    The various acts constituting breach of confidence that are commonly accepted by the Indian Courts are:

    the fact or the information must have quality of confidence in it; - there must be an obligation of confidence relating to such fact or information; - there must be an unauthorized use of that information to the detriment of the party communicating it. - there is a risk that, in the absence of an injunction, the owner will suffer irreparable loss and injury. Further, in order to seek relief from courts, not only the specific trade secrets must be identified but it also needs to be proved as to how the plaintiff had ownership of them. The nature and quality of information that has been misused must also be shown to be confidential in the 13 pleadings. In Ritika. v Biba , a suit was filed for infringement of the plaintiff's fabric designs, the Delhi High Court took the view that if an injunction order were sought with respect to trade secrets, the specific trade secrets would have to be mentioned, as well as how the plaintiff had ownership of them; only then would the court consider granting an injunction order. A general order in respect of an unspecified trade secret could not be passed against the defendant. Coming to the remedies, both civil and criminal remedies are available to the owner of the trade secrets in India. In case of a civil suit, an injunction against an unauthorized or illegal user can be obtained. However, the probability of obtaining an injunction from Indian courts is based on certain basic principles formulated in the Code of Civil Procedure 1908: - a prima facie case in favor of an injunction exists; - the balance of convenience is in favor of granting the injunction; The owner of the trade secret can also claim damages. Similarly, a criminal complaint may also be lodged alleging theft under section 378 of the Indian Penal Code (IPC) 1860. In order to satisfy the requirements of Section 378, the trade secret must have a physical form (e.g. client lists, formulae or blueprints) and must be proven to have actually been stolen. A complaint alleging criminal breach of trust under Section 408 of the IPC, read with section 420 alleging cheating, may also be initiated. However, the same would apply only in situations where an agreement (express or implied) of trust exists and has been Contributed by Dr. Anju Khanna contravened. Therefore, it can be seen that a myriad of options are available to the owner of a trade secret in India to be able to safeguard his trade secrets. India's position, thus, should not be mistaken to connote that insufficient protection is accorded to trade secrets and confidential information.

    Contributed by Dr. Anju Khanna

    Section 107A of the Patent Act, 1970, popularly known as India's "Bolar Exemption", is a defence for patent infringement, when the invention is used or sold by a third party for purposes related to research and development. The provision allows generic pharmaceutical companies to conduct research on a patented product while it is still valid.

    India is the global leader in generics drug supply. It supplies 50 to 60 percent of global demand for many vaccines (including ARVs), 40 percent of generics consumed in the 2 US and 25 percent of all the medicines dispensed in the UK . Branded generics dominate the market in India, making up 3 for 70 to 80 per cent of the retail market . Hence this provision has always been in the limelight and also been a point of contention between proprietary and generic drug manufacturers. In a recent matter, the Delhi High Court pondered upon the provision and issues pertaining to permissibility of export under Bolar provision.

    Bayer filed a suit to injunct Alembic and Natco Pharma from making, selling, distributing, advertising, exporting, offering for sale and in any manner directly or indirectly dealing in RIVAROXABAN and any product that infringed Bayer's patent IN 211300. An appeal was filed by Bayer (1) The patent granted; (2) The nature of the product or elements sought to be exported; (6) All particulars regarding the relevant regulations, against judgment of a single bench which had permitted Alembic to export the patented products for clinical trials for approval of drug from foreign regulatory authorities. The Division Bench (DB) upheld the order of the Ld. Single Judge allowing Alembic Pharmaceuticals Ltd. to export small quantities of Rivaroxaban. The DB held the sale of patented article within India or outside for research or experimental purposes under Bolar exemption constitutionally valid. However, the Court recognised that said provision is unregulated and prone to misuse. The Court laid down tests necessary to regulate the use of the Section 107A exemption to avoid future misuse and the inquiry and adjudication in such cases would be in regard to the following:

    (1) The patent granted;
    (2) The nature of the product or elements sought to be exported;
    (3) The details of the party or party importing the product;
    (4) The quantity sought to be exported;
    (5) Other particulars with respect to the end use of the product, to establish that it is solely for research and development of information to regulatory authorities in the other country;
    (6) All particulars regarding the relevant regulations,covering the kind and scope of inquiry, including the quantities of the product (i.e. the patented product or compound, API or fine chemical needed). These details must be supplied by the exporter/seller of the product to the overseas buyer. In case the defendant is not the seller, it should disclose who had purchased the product in the relevant quantities, to facilitate its impleadment in the proceedings. In the event it cannot do so, the consequences of such results ought to be considered by the court.;
    (7) If the regulations are in the language of that country, an authentic English translation to facilitate a speedy resolution;
    (8) Appropriate interim order, including undertaking by way of affidavit to compensate the plaintiff, in the event the suit was to be decreed and the extent of such monetary compensation. The affidavit should be of authorized personnel, and kept alive during the pendency of litigation, duly authenticated by the board of director or other controlling body of the defendant- and whenever the company or entity undergoes amalgamation or transfer, suitable undertaking from the successor organization;
    (9) If necessary, verification through the Indian mission (and its trade division) abroad regarding the authentication of the third party and/or its facilities abroad;
    (10) If it is held by the court that the exporter is not involved in sale or export of any patented product, but a generic article, unprotected by patent law, when denying relief, suitable restitutionary relief should be awarded to the defendants in monetary terms, to preclude litigation that prevents trade or competition;

    Thus, the Courts have recognised that due to the unregulated nature of the provisions related to the exemption, further specific measures have be placed to monitor the misuse of the provision and to ensure that exports are genuinely made for research purposes only.

    Contributed by Ms. Manika Arora

    The overlapping of various IP's is an unresolved issue when it comes to the grant of remedies for their infringement. The overlap between design and trademark rights is one such issue that was waiting to be resolved. A design, which is obtained in early part of the life cycle of a product may acquire secondary meaning of a badge of origin, quality and repute of the product over a period of time. The design is then said to have acquired distinctiveness which is a pre-requisite of trade mark and hence starts to serve the purpose of a trademark. In this judgement, the Court clarified the position when the other party makes a similar or deceptively similar imitation of a design, this act not only amounts to design piracy under section 22 of the Design Act but is also liable for passing off action under the common law as it deceives the public into believing that the imitated product is associated with the original one and hence cutting on the former's revenue. The "Carlsberg" bottle had a registered design and due to its extensive use and marketing, the consumers started associating the bottle's appearance with the product origin, making it an indicator of the source and quality of the product. A suit was filed against the defendant for the Design piracy as well as Passing Off action.

    In the present matter the bench adjudicated on important the issue of maintainability of composite suit in respect of piracy of registered design and passing off action for the Trade dress. Multiplicity of suits in respect of the same subject matter has also been one of concerns of the court. Resolving the matter, a five Judge Bench of the Delhi High Court held that design piracy as well as passing off action constitute two separate cause of actions in the fact that one infringes the right of the proprietor as guaranteed under the Design Act while the other causes injury by riding upon his reputation in the market and deceiving the customers by presenting anassociation with the same. It was held that separate suits are required to be filed for separate causes of action claiming different reliefs. The court held that acomposite suit in relation to infringement of a registered design and a passing off should be maintainable as on the same cause of action against the same Defendants, territorial jurisdiction made by the Plaintiff on one cause of action would be sufficient for the other. The bench addressed that composite suit has the advantage of abird's eye view by the Court with respect to a common set of facts. By reason of existence of common questions of law and/or fact between the causes of action ofinfringement of a registered design and passing off, to a large extent, the evidence of the two cause of action will also be common. In such scenarios, joinder of causes of action must be done in order to avoid multiplicity of proceedings.


    The Intellectual Property Appellate Board (IPAB) is a tribunal constituted for adjudication of technical issues regarding IP rights. IPAB has jurisdiction to deal with matters pertaining to the Patents Act, 1970; the Trademarks Act, 1999; the Copyright Act, 1957; the Geographical Indications of G o o d s ( R e g i s t r a t i o n a n d Protection) Act, 1999 and the Protection of Plant Variety and Farmers Right Act, 2001. According to rules as defined in various acts, the IPAB Bench must comprise of a Judicial Member and a Technical Member.

    The IPAB has been non-functional since several months due to absence of technical members for patent, trademarks and copyright cases; pendency of cases, hence, had become a cause of concern. The post of technical member for patents was lying vacant since 4th May 2016 and that for trademarks was lying vacant since 5t h December 2018. For copyright, no technical member has ever been appointed and only one technical member was appointed for Plant Varieties Protection. As a consequence, no hearing could take place in the matters related to patents, copyright and trademarks.

    In Mylan Laboratories Limited vs Union of India and others, the petitioner (Mylan Laboratories Limited) filed an appeal along with a stay application before the IPAB on 17th May 2019 against an order dated 14th March, 2019 passed by the Deputy Controller of Patents and Designs. The impugned order had dismissed a pre-grant opposition filed by the petitioner. The petitioner approached the Court for urgent hearing of the stay application as the IPAB was not functioning. On Courts' direction, the Deputy Registrar, IPAB filed a status report with respect to the vacancy of the position of technical members. This further revealed that there was a huge backlog of cases before the IPAB. As on 23rd May 2019, 3935 cases were found to be pending before the IPAB (Figure 1). This was deemed to be a complete failure of the objectives with which the IPAB was established. In the last five years (January 2014-June 2019), the number of cases disposed of by IPAB is significantly lower when compared to the filings made during the same time period (Figure 2).

    Even the number of hearings conducted in relation to patents in past years is very low. From 2014-2016, in all 93 hearings were conducted (2014 – 46; 2015 – 30; 2016 – 17).

    The Delhi High Court in its order dated July 8th, 2019, directed that the IPAB Chairman and the technical member (Plant Varieties Protection) are to hear all urgent matters pertaining to patent, trademark and copyright till the vacancies of other technical members are filled up. Further, the Court said that the orders that shall be passed by the Chairman and the technical member, Plant Varieties Act will not be held invalid on the ground of lack of quorum. Also, if the technical member (Plant Varieties Protection) is not available for any reason or is recused, the Chairman of the IPAB can proceed to hear the urgent matters. The Court further held that, in patent matters, the IPAB Chairman can take expert opinion from the members of the panel of scientific advisors under section 115 of the Patent Act, 1970.

    This is certainly a welcome direction given by the Delhi High Court. In the coming months it is hoped the Delhi High Court's orders are implemented with appointment of technical members and smooth adjudication in the matters of the IPAB.

    Contributed by Ms. Manika Arora & Ms. Rashmi Tandon

  • L&S Patent Newsletter September 2019

  • L&S Patent Newsletter September 2019

  • L&S Patent Newsletter September 2017

  • L&S Patent Newsletter September 2017

  • RR of Controllers and Examiner in Patent Office. All interested persons are requested to submit their comments on the proposed RR on or before 18-08-2016

  • RR of Controllers and Examiner in Patent Office. All interested persons are requested to submit their comments on the proposed RR on or before 18-08-2016

  • Stay Order

  • Stay Order

  • Patent news-letter January 2015

  • Patent news-letter January 2015

  • ePCT filing at ROIN

  • ePCT filing at ROIN

  • Guidelines for examination of patent applications in the field of Pharmaceuticals

  • Guidelines for examination of patent applications in the field of Pharmaceuticals

  • The World IP Day

  • The World IP Day

  • Revised Draft Pharmaceutical Guidelines from the Indian Patent Office

  • Revised Draft Pharmaceutical Guidelines from the Indian Patent Office

  • IPO notice on deposition of biological material

  • IPO notice on deposition of biological material

  • Pilot project for patent examination at the IPO

  • Pilot project for patent examination at the IPO

  • eRegister

  • eRegister

  • Publication of Working Statements on the IPO website

  • Publication of Working Statements on the IPO website

  • Developments by the Controller General of Patents Design Jan 1 2015

  • Developments by the Controller General of Patents Design Jan 1 2015

  • Section 8 Requirements at the Indian Patent Office

  • Section 8 Requirements at the Indian Patent Office

  • Public notice issued by the Patent Office, India for working Patents

  • Public notice issued by the Patent Office, India for working Patents

  • Guidelines issued by Patent Office, India for examination of patent applications in the field of pharmaceuticals

  • Guidelines issued by Patent Office, India for examination of patent applications in the field of pharmaceuticals

  • Government of India notifies Patents (Amendment) Rules 2014, which comes into force w.e.f. 28 February 2014

  • Government of India notifies Patents (Amendment) Rules 2014, which comes into force w.e.f. 28 February 2014

Our Achievements

Managing IP: Tier 1 – Trade Mark Contentious – India | Chambers & Partners: Band 2 – Intellectual Property – India | IAMPATENT: Recommended Law firm – Litigation & Transactions – India, Recommended firm – Patent Prosecution – India | Asia Law: Highly Recommended Law firm – Intellectual Property – India | Acquisition International: Best IP Law Firm of the Year 2019 – South Asia | Benchmark Litigation Asia Pacific: Tier 1– Intellectual Property – India | Corporate Intl: Trademark Prosecution Lawyer of the Year India – Raghav Malik | Global Law Experts 2019: IP Law Firm of The Year India, Advertising Law Firm of the Year in India | Global Business Insights Awards 2019: Most Outstanding Trademarks Law Firm - India