Article

Assessment of the inventive step in India

By Eeshita Das and Archana Viswanathan

The first article in this issue of IPR Amicus examines a recent Delhi High Court decision against an order passed by the Controller of Patents and Designs refusing the grant of the Appellant’s patent application for lacking inventive step. The article further highlights the fundamental principles discussed by the High Court for analysis of an ‘inventive step’ in India. The article notes how the High Court discussed the various approaches available for determining the inventive step which were followed across various jurisdictions, and laid down some of the fundamental principles for analysing inventive step. The authors note that the High Court established that simplicity in the inventive concept of an invention cannot be the sole basis for rejecting a patent application. Additionally, the time that has passed between the publication of the cited documents and the filing of a patent application is also an important factor to be considered. According to them, improved approach would be for Controllers and Examiners to judiciously follow the guidelines and assess the inventiveness of an invention considering all the important factors.

Do the trademarks provisions permit registrar to transfer pending petitions to IPD of the Court?

By Anoop Verma and R. Rajalakshmi

The second article in this issue of the newsletter discusses another interesting Delhi High Court decision where one of the questions that came up before the IPD, Delhi was whether the Trade Marks Registry can transfer pending rectification/cancellation petitions to the IPD of the respective Hon’ble High Court. The Court observed that while the Trade Marks Act, 1999, the Trade Marks Rules, 2017 and/or Rules of the Delhi High Court Intellectual Property Rights Division Rules, 2022 (‘IPD Rules’) do not categorically govern the powers of the court to direct the Registrar of Trademarks to transfer any pending matters to the court, as per Rule 26 of the IPD Rules, if the court thinks it is necessary to consolidate and hear together all the matters related to the same or related subject matter before the IPD, it may direct so. Observing that parties to a litigation are also involved in cross actions before the Trade Marks Registry, the authors believe that decision of the High Court of Delhi provides a clarification and resolution to such a fact scenario in order to do complete justice and ensure speedy disposal of cases.

Ratio decidendi

• Seeking relief on basis of IP Rights is action in personam - Bombay High Court
• Trademarks - Application cannot be said to be abandoned only because evidence in support of opposition received three days late - Rule 45 not happily worded - Delhi High Court
• Trademarks - Rectification - Rights under Section 124(b)(ii) are not in derogation of those available under Section 57 - Delhi High Court

News Nuggets

• Patents - Objections to be raised in the notice of hearing itself and not at time of hearing
• Patents - No obviousness merely because individual parts taken separately are known
• Trademarks - Similarity between device mark and word mark
• Trademarks - Classification of goods and services - Discrepancy between Section 7(1) of Trade Marks Act and Rule 20(1) of Trade Marks Rules
• Designs - Communication of computer image which was never applied to physical article do not constitute prior publication
• Patents - Amendments to claim when need to be allowed
• Trademarks - Application of registration as design - Effect on suit pattern
• Patents - Amendment of patent specification at appellate stage, permissible