The Law of Patents

Update: chapter 13 – opposition proceedings

2008-11-25T07:50:00.002+05:30

13.66 In Enkay (India) Rubber Co Ltd’s Application/ Opposition by Paradise Rubber Industries [No 193339 (1342/DEL/1999)] order dated 17 May 2006, the Controller observed that the opponent had at every point of time requested for an adjournment and had adopted various ways to delay the proceedings and granted compensatory costs of Rs 32,000 for delay in the grant of patent caused by the opponent.

13.165 a Some amendments are made in response to the objections raised in the FER. In Eli Lilly’s Application/Opposition by Ajanta Pharma Ltd (No 85/DEL/1995), the patent application as originally filed had 16 claims. Eight years after filing the application, the applicant voluntarily added 44 additional claims to the application. The Patent Office raised certain objections in its FER: that the invention was not patentable under ss 2(1)(j), 3(d), 3(e) and 3(i) of the Patents Act; that product claims could not be allowed as the compound was invented prior to 1995 as the application was filed under WTO category. In response, Eli Lilly amended the application to reduce the number of claims to 28.

Update 1: chapter 20 - Infringement proceedings

2008-02-27T10:57:00.002+05:30

20.42 An application for rejection of plaint is a preliminary objection which may be made on any one of the above grounds. In ascertaining whether the plaint discloses a cause of action, the court will assume that the averments made in the plaint are true as the court is not required to make an elaborate enquiry into doubtful and complicated questions of law and fact.Eureka Forbes Ltd v Hindustan Lever Ltd In (MANU/DE/0198/2008), the Division Bench of the Delhi High Court refused to entertain an appeal from the order of the single judge rejecting an application under O 7, r 11 for rejection of plaint in a suit for infringement of a patent on the ground that the plaint disclosed the cause of action and raised issues of fact and law of considerable importance that had to be adjudicated upon by the court.

Opinion of court in Interim proceedings
20.98a The court must refrain from expressing any opinion on the merits of the case at the interim stage. The opinion expressed by the court on different aspects touching the merits of the cases shall not be treated as the expression of a final opinion on those aspects which the court shall be free to determine at the conclusion of the trial (Eureka Forbes Ltd v Hindustan Lever Ltd (MANU/DE/0198/2008).

Book Updates

2008-02-27T09:59:00.003+05:30

Since the publication of this book, there have been some significant developments which need to be incorporated into the book. While the book is being received well, both in legal as well as industrial circles, and may as well see a new edition this year, it will not be appropriate to hold back all these developments till the next edition. One of the purpose behind this blog was to provide timely updates without any additional cost to the readers. As proposed, I shall be posting updates citing the relevant paragraph numbers from the book.

If the update, say a case law or a statutory or policy development, forms a part of an existing paragraph from the book, it would simply carry the said paragraph number along with the updated passage.

Here's a sample:

20.42 An application for rejection of plaint is a preliminary objection which may be made on any one of the above grounds. In ascertaining whether the plaint discloses a cause of action, the court will assume that the averments made in the plaint are true as the court is not required to make an elaborate enquiry into doubtful and complicated questions of law and fact.Eureka Forbes Ltd v Hindustan Lever Ltd In (MANU/DE/0198/2008), the Division Bench of the Delhi High Court refused to entertain an appeal from the order of the single judge rejecting an application under O 7, r 11 for rejection of plaint in a suit for infringement of a patent on the ground that the plaint disclosed the cause of action and raised issues of fact and law of considerable importance that had to be adjudicated upon by the court.

If the update, forms a new paragraph in the next edition of the book, it will be denoted by a number (the preceding paragraph number in the present edition) and an alphabet (a,b,c etc) to show the order of addition in the next edition.

Here's a sample of that:

Opinion of court in Interim proceedings

20.98a The court must refrain from expressing any opinion on the merits of the case at the interim stage. The opinion expressed by the court on different aspects touching the merits of the cases shall not be treated as the expression of a final opinion on those aspects which the court shall be free to determine at the conclusion of the trial (Eureka Forbes Ltd v Hindustan Lever Ltd (MANU/DE/0198/2008).

I must add a rider that as the updates will be provided as and when they happen, they may not figure in the next edition in the manner in which they are posted in this blog. I will be glad to hear from you on any matter that can improve this book.