Handbook On IPR In India

1. Overview of Patent Laws in India

Indian patent law is governed primarily by the Patents Act, 1970, as amended by the Patents (Amendment) Act, 2005. The key governing body is the Office of the Controller General of Patents, Designs & Trademarks (CGPDTM), which oversees the administration of patent laws in India.

Key Provisions

1. Patentable Inventions: An invention must meet the criteria of novelty, inventive step, and industrial applicability.

• Non-patentable inventions include:
  • Frivolous inventions.
  • Methods of agriculture and horticulture.
  • Inventions contrary to public morality or law.
  • Mathematical or business methods, algorithms, etc.

2. Term of a Patent: A patent is granted for 20 years from the filing date.

3. Compulsory Licensing: Provisions exist for compulsory licensing under certain circumstances, such as non-working of the patent in India or public health emergencies.

4. Pre-grant and Post-grant Opposition: Allows third parties to oppose the grant of a patent before or after it is granted.

International Treaties and Agreements

India is a signatory to various international treaties and agreements relating to patents:

1. TRIPS Agreement (1995):

• India, as a member of the World Trade Organization (WTO), complies with the provisions of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which sets minimum standards for the protection and enforcement of intellectual property rights, including patents.

2. Paris Convention for the Protection of Industrial Property (1883):

• India is a signatory, enabling Indian applicants to claim priority in member countries

3. Patent Cooperation Treaty (PCT) (1998):

• India joined the PCT, allowing applicants to file international patent applications designating multiple countries.

4. Budapest Treaty (2001):

• India is a party to the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for patent procedure.

5. WIPO Membership:

• India is a member of the World Intellectual Property Organization (WIPO).

Landmark Judgments

1. Novartis AG v. Union of India (2013):

• This case clarified the scope of Section 3(d) of the Patents Act, 1970, rejecting a patent for the cancer drug Glivec on the grounds that it was an incremental innovation without enhanced therapeutic efficacy

2. Bayer Corporation v. Union of India (2014):

• India's first compulsory license was granted to Natco Pharma for the cancer drug Nexavar, emphasizing accessibility and affordability over monopoly rights.

3. Roche v. Cipla (2009):

• This case highlighted issues related to patent infringement and public interest. The Delhi High Court ruled in favor of Cipla, emphasizing affordable access to life-saving drugs.

4. Monsanto Technology LLC v. Nuziveedu Seeds Ltd. (2019):

• The Supreme Court ruled on the patentability of genetically modified organisms and upheld the revocation of Monsanto's patent related to Bt cotton seeds.

5. Ferid Allani v. Union of India (2020):

• This judgment emphasized the patentability of computer-related inventions (CRIs) that demonstrate technical advancement and technical effect.

2. Patentable Subject Matter in India

Key Points:

1. Criteria for Patentability

For an invention to be patented in India, it must satisfy three essential criteria:

• Novelty: The invention must be new, meaning it has not been disclosed in any form, anywhere in the world, before the date of filing the patent application.
• Inventive Step: The invention must involve a feature that demonstrates a technical advance or economic significance and is not obvious to a person skilled in the relevant field.
• Industrial Applicability: The invention must be capable of being manufactured or used in an industrial process.

2. Exclusions: Non-Patentable Subject Matter under Section 3 of the Indian Patents Act

Section 3 of the Indian Patents Act explicitly lists subject matter that is not eligible for patent protection. These exclusions aim to balance innovation with ethical, societal, and environmental considerations.

Section 3(a): Frivolous Inventions

• Any invention that is frivolous or contrary to natural laws (e.g., perpetual motion machines).

Section 3(b): Public Morality

•  Inventions contrary to public order, morality, or those causing harm to human, animal, or plant life or health, or the environment. Example: Inventions related to biological warfare.

Section 3(c): Discovery of Scientific Principles

• The mere discovery of a scientific principle or the formulation of an abstract theory (e.g., the discovery of gravity).

Section 3(d): New Use of Known Substances

• The mere discovery of a new form of a known substance that does not result in enhanced efficacy. Example: Polymorphs of a known drug.

Section 3(e): Aggregation of Features

• A mere arrangement or rearrangement of known devices, functioning independently without producing a synergistic effect.

Section 3(f): Methods of Agriculture or Horticulture

• Examples include methods of cultivating crops or hybridizing plants.

Section 3(g): Medical, Surgical, or Diagnostic Methods

• Any method for treatment of humans or animals to render them free of disease or to increase their economic value.

Section 3(h): Plants and Animals

• Plants, animals, and essentially biological processes for their production are not patentable. Exceptions include microorganisms and microbiological processes.

Section 3(i): Literary, Artistic, or Aesthetic Creations

• Inventions related to literary, dramatic, musical, or artistic works, cinematographic works, or any other aesthetic creations.

Section 3(j): Traditional Knowledge

• Inventions based on traditional knowledge or those duplicating known properties of traditionally known substances are excluded. Example: Patent applications related to turmeric for wound healing and neem for its pesticide properties were rejected.

Section 3(k): Mathematical or Business Methods, and Software per se

• Computer programs or algorithms that do not provide a technical effect are not patentable. Similarly, business methods are excluded unless they involve a technical solution.

Section 3(l): Presentation of Information

• Mere presentation of information, such as visual representations or charts, is not patentable.

Section 3(m): Topography of Integrated Circuits

• Any scheme or rule relating to the topography of integrated circuits is excluded.

Section 3(p): Traditional Knowledge and Aggregations

• Traditional knowledge or simple aggregations of known components that fail to produce a novel or synergistic result.

Section 4: Atomic Energy Inventions

• Inventions relating to atomic energy, as specified under the Atomic Energy Act, 1962, cannot be patented for national security reasons.

Case Studies

Case Study 1: Software with Technical Effect

In Ferid Allani v. Union of India (2019), the Delhi High Court clarified that software-related inventions could be patentable if they demonstrate a "technical effect." For example, software improving hardware performance or resource management could qualify.

Case Study 2: Business Method Rejection

In Yahoo Inc. v. Controller of Patents (2009), an application related to online advertising methods was rejected as it was categorized as a business method under Section 3(k).

Case Study 3: Traditional Knowledge Protection

The rejection of a patent application for turmeric (Curcuma longa) for wound-healing properties reinforced India's commitment to protecting traditional knowledge. Since the healing properties were already part of publicly available traditional knowledge, the patent application was invalidated.

3. Patent Filing Process in India

Filing a patent in India is a significant step for inventors, organizations, and innovators to safeguard their intellectual property rights. Understanding the process and requirements ensures a smooth filing experience. This guide outlines the essential steps, key differences, and common pitfalls to help applicants successfully navigate the patent filing process in India.

Key Points in the Patent Filing Process

1. Differences Between Provisional and Complete Specifications

Provisional Specification:

• Used when the invention is at a conceptual stage but not yet fully developed.
• Acts as a placeholder to secure the filing date, providing a 12-month window to finalize the invention.
• Does not require detailed claims but must describe the invention sufficiently to establish its novelty.

Complete Specification:

• Submitted when the invention is fully developed and ready for evaluation.
• Includes detailed descriptions, claims, and drawings, defining the scope of the invention
• A complete specification must be filed within 12 months of the provisional filing; otherwise, the application lapses.

Key Takeaway: Filing a provisional specification provides flexibility, while a complete specification ensures comprehensive protection.

2. Filing Methods: Online vs. Offline

Online Filing:

• Accessible via the Indian Patent Office (IPO) e-filing system.
• Offers convenience, faster submission, and reduced costs.
• Requires user registration on the IPO portal and a digital signature certificate.

Offline Filing:

• Involves submitting physical documents at the IPO offices in Delhi, Mumbai, Chennai, or Kolkata.
• Typically, slower and may involve additional logistical costs.

Key Takeaway: Online filing is recommended for ease of access, cost-effectiveness, and faster processing.

3. Required Documents, Fees, and Timelines

Required Documents:

• Patent application form (Form 1)
• Provisional or complete specification (Form 2).
• Statement and undertaking regarding foreign applications (Form 3).
• Declaration of inventorship (Form 5).
• Priority documents (if applicable)
• Power of attorney (if filed through an agent).

Fees:

• Application fees depend on the type of applicant: individual, startup, small entity, or large entity
• Additional fees apply for excess claims, pages, or expedited examination requests
• Fee reductions are available for startups and small entities.

Timelines:

• Provisional specification: 12 months to file a complete specification.
• Examination request: Must be filed within 31 months of the application's priority date.
• Patent grant: Can take 2-5 years, depending on examination and objections.

Patent Filing Flow

Here is a simplified flow chart outlining the patent filing process in India:

1. Idea/Invention Development

• Conduct a prior art search to ensure novelty.

2. Drafting Provisional Specification (Optional)

• File Form 1 and Form 2 (Provisional Specification) to secure a priority date

3. Drafting Complete Specification

• File Form 2 (Complete Specification) within 12 months of the provisional filing.

4. Application Submission

• Choose between online or offline submission.
• Submit required documents and pay applicable fees.

5. Publication of Application

• The application is published in the Patent Journal 18 months after the filing date (or earlier upon request).

6. Request for Examination (RFE)

• File Form 18 within 31 months of the priority date.

7. Examination Process

• Examiner reviews the application and issues a First Examination Report (FER).
• Address objections raised in the FER.

8. Grant of Patent

• Once objections are resolved, the patent is granted and published in the Patent Journal

9. Maintenance of Patent

• Pay renewal fees annually to keep the patent active.

4. International Patent Protection and India

This topic delves into how Indian patents integrate into global patent strategies, with a focus on India's role in the international intellectual property landscape. It explores mechanisms like the Patent Cooperation Treaty (PCT), the options available for foreign entities filing patents in India, and strategies for aligning Indian patent protections with global priorities.

Key Points in Detail

1. Overview of the Patent Cooperation Treaty (PCT) and India's Role as a Contracting State

• What is the PCT?
  • The Patent Cooperation Treaty is an international treaty that simplifies the process of seeking patent protection in multiple jurisdictions. It allows an inventor to file a single international patent application, covering multiple countries, rather than filing separate applications in each country.
• India as a PCT Contracting State
  • India joined the PCT in 1998 and plays an active role as a contracting state. The Indian Patent Office acts as:
    • A Receiving Office: It accepts PCT applications filed by Indian nationals or residents.
    • An International Search Authority (ISA): It provides search reports that highlight existing patents or prior art related to a particular invention.
    • An International Preliminary Examining Authority (IPEA): It evaluates the patentability of inventions before final national filings.
• Benefits of PCT for Indian Patents
  • By leveraging the PCT, inventors can delay individual national filings for up to 30–31 months, giving them time to assess the commercial viability of their invention.
  • Applicants using the PCT can secure priority filing in India while extending their international protections.

2. Filing Options for Foreign Entities in India

• Foreign entities or individuals wishing to protect their patents in India have the following options:
  1. Direct National Filing:
     • A patent application can be filed directly with the Indian Patent Office (IPO) under the Paris Convention, which provides a 12-month priority period from the first application in a member state.
  2. Filing through the PCT National Phase:
     • Foreign applicants can enter the Indian national phase within 31 months of the international filing date under the PCT.
  3. Via a Local Agent:
     • Foreign entities must appoint an Indian patent agent (licensed in India) to file and manage their application with the IPO.
• Documentation and Compliance:
  • Foreign applicants need to comply with Indian patent laws, including providing the appropriate fees, forms, and translated documents (if the original application is in a language other than English).

3. Strategies for Protecting Patents Globally with India as a Priority Jurisdiction

• Why Prioritize India?
  • India is a global R&D hub, with significant contributions to industries like pharmaceuticals, biotechnology, software, and electronics.
  • The Indian market presents vast commercial opportunities for patented technologies, making it critical for global IP strategies.
• Global Strategies with India in Mind:

1. Identify Core Markets:

• Companies should identify where their invention will have the most commercial impact and consider India as a key market in their filing strategy.

2. PCT Approach for Global Protection: 

• File a PCT application with India as a national phase destination, ensuring global flexibility while retaining the option to secure Indian patent protection.

3. Leverage Indian Expertise:

• Collaborate with Indian R&D teams and ensure innovations created in India are patented in both domestic and global jurisdictions.

4. Monitoring and Enforcement: 

• As India strengthens its IP enforcement mechanisms, applicants should ensure proper monitoring of their patent rights to prevent infringements.

5. Cost-Effective Filing:

• India's patent filing costs are relatively affordable compared to other jurisdictions, making it an attractive option for innovators and SMEs.

5. Examination, Oppositions, and Grant of Patents

This topic provides a detailed overview of the procedural journey from filing a patent application to the eventual grant of a patent, focusing on the examination process, opposition mechanisms, and common challenges faced during the process.

1. Examination Process

The examination phase is critical in determining whether a patent application meets the statutory requirements for patentability.

• Request for Examination (RFE)
  • After filing a patent application, the examination does not commence automatically. The applicant must submit an RFE to the respective patent office.
• Timeline:
  • For ordinary or convention applications, the RFE must be filed within 31 months from the priority date or filing date.
  • For PCT national phase applications, the RFE must be filed within the same 31-month window.
  • If the RFE is not filed within the specified timeline, the application is deemed withdrawn.
• Who can file?
  • The applicant or an authorized Patent agent.
• Substantive Examination
  • Once the RFE is filed, the application is queued for substantive examination by a patent examiner.
  • The examiner evaluates the application on the following grounds:

1. Patentable Subject Matter: Whether the invention falls under categories eligible for patent protection (e.g., not a law of nature or abstract idea).

2. Novelty: The invention must be new and not disclosed in prior art.

3. Inventive Step (Non-Obviousness): It must not be an obvious improvement over existing technology.

4. Industrial Applicability: The invention must have practical utility

5. Specification Compliance: The specification must sufficiently describe the invention to enable a skilled person to reproduce it.

• First Examination Report (FER):
  • The examiner issues an FER listing objections or deficiencies in the application. The applicant must respond to these objections within 6 months, extendable by an additional 3 months.
  • Failure to respond results in the application being abandoned.

2. Mechanisms for Opposition

Opposition is a mechanism that allows third parties to challenge the grant of a patent, ensuring only valid patents are granted.

• Pre-Grant Opposition
  • Who can file?
    • Any person (not limited to interested parties) can file a pre-grant opposition
  • When to file?
    • At any time after the publication of the patent application but before the grant of the patent.
  • Grounds for Opposition:
    • Lack of novelty, inventive step, or industrial applicability.
    • Non-disclosure or wrongful disclosure of biological material.
    • Incomplete or insufficient description of the invention.
    • The invention is not patentable under the Indian Patent Act (e.g., it relates to traditional knowledge).
  • Procedure:
    • The opposing party submits a written representation, and the applicant is given an opportunity to respond.
    • The patent controller reviews both submissions, gives opportunity to hearing if he considers the case is prime facie valid and makes a decision based on hearing.
• Post-Grant Opposition
  • Who can file?
    • Only an interested party (e.g., a competitor or someone affected by the patent).
  • When to file?
    • Within 1 year from the date of grant of the patent.
  • Grounds for Opposition:
    • Similar to pre-grant opposition but may also include fraudulent or misleading information provided by the applicant.
  • Procedure:
    • A post-grant opposition board is constituted to hear the case and provide recommendations. The patent controller reviews the recommendations before making a final decision.

3. Key Challenges During the Grant Process and How to Navigate Them

1. Objections in the FER:
   • Challenge:
     • Objections related to novelty, inventive step, or clarity of claims are common.
   • Solution:
     • Respond comprehensively to each objection by providing detailed explanations, amending claims if necessary, and submitting prior art searches to demonstrate the invention's uniqueness.
2. Delays in Examination:
   • Challenge:
     • Patent offices often face backlogs, leading to significant delays in examination and grant processes.
   • Solution:
     • Use the expedited examination process (available for startups, SMEs, and applicants with certain international arrangements).
3. Opposition Proceedings:
   • Challenge:
     • Opposition, particularly pre-grant, can delay the grant of a patent or result in its rejection
   • Solution:
     • Prepare for opposition by ensuring the application is robust from the outset, with clear claims, comprehensive prior art disclosures, and proper compliance with procedural requirements
4. Compliance with Indian Patent Laws:
   • Challenge:
     • Foreign applicants may face difficulties navigating Indian-specific patent rules, such as requirements for local filing agents or restrictions on certain patentable subjects (e.g., software patents).
   • Solution:
     • Engage experienced Indian patent agents or legal advisors to ensure smooth compliance.
5. Amendments to Claims:
   • Challenge:
     • Amendments to claims during examination may lead to narrowing the scope of the patent.
   • Solution:
     • Draft claims broadly but ensure they are defensible during examination or opposition proceedings.

6. Patent enforcement in India

Patent enforcement in India is a crucial aspect of protecting intellectual property rights (IPR), ensuring that patent holders can defend their innovations and prevent unauthorized use. Here's a detailed breakdown of the key elements involved in patent enforcement in India:

Key Points:

1. Types of Patent Infringement and Remedies Available

Patent infringement refers to unauthorized use, manufacture, sale, or distribution of a patented invention without the consent of the patent holder. The types of patent infringement can include:

• Direct Infringement: This occurs when an entity makes, uses, sells, or offers for sale a patented invention without permission.
• Indirect Infringement (or Contributory Infringement): This involves activities such as selling components or providing services that facilitate infringement.

Remedies for patent infringement: If a patent holder believes their rights have been infringed, they can take several legal actions:

• Injunctions: The court may issue an injunction to stop the infringing party from continuing the infringement, which is the most common remedy.
• Damages or Account of Profits: The patent holder can claim damages for the losses suffered due to the infringement or demand that the infringer account for the profits made from using the patented technology
• Seizure of Infringing Goods: Courts can order the seizure and destruction of goods that are infringing the patent.
• Criminal Prosecution: In certain cases, especially in the case of counterfeiting, criminal prosecution can be initiated under the Indian Patents Act.

2. Role of the Judiciary, Including Specialized IP Courts

The judiciary plays a pivotal role in patent enforcement in India. Courts are responsible for interpreting patent laws and determining whether an infringement has occurred. India does not have a separate patent-specific court; however, intellectual property (IP) cases are typically heard in specialized divisions within High Courts, like the Intellectual Property Appellate Board (IPAB), which was created to hear appeals related to patents, trademarks, and other IPR issues.

• Civil Courts: These courts are the first line of action for patent infringement cases. They handle lawsuits seeking remedies such as injunctions and damages.
• High Courts: High Courts in India also play a significant role in patent enforcement. Patent infringement cases can be directly filed in High Courts under Sections 104-105 of the Patents Act, which also has provisions for expedited hearings
• The IPAB: Before its dissolution in 2021, the IPAB had jurisdiction over appeals related to patents, and it was a specialized body that dealt with patent enforcement. Since the dissolution, patent-related appeals are now handled by the High Courts.

In India, the courts also play a proactive role in enforcing patent rights by granting interim injunctions when the infringement is clear, even before the full trial is concluded. This ensures that the patent holder is protected from ongoing harm due to the infringement.

3. Landmark Cases That Shaped India's Patent Enforcement Landscape

Several landmark cases have significantly influenced patent enforcement in India. These cases have helped clarify key issues, such as patentability standards, the scope of patent protection, and the interpretation of patent laws.

• Novartis AG v. Union of India (2013): In this case, the Supreme Court of India ruled that Novartis' cancer drug, Glivec, was not eligible for a patent because it was a “new form” of an existing compound without significant therapeutic efficacy. This case underscored the importance of innovation and non-obviousness in patent applications. It also highlighted the importance of balancing patent protection with public health needs
• Bayer Corporation v. Union of India (2014): This case involved Bayer's patented drug, Nexavar, for the treatment of kidney and liver cancer. The case revolved around the issue of whether the patent on the drug should be upheld. The Indian Patent Office granted a compulsory license to a local company, Natco, to produce a generic version of the drug, thus ensuring affordable access to medicine for patients. This decision set a precedent for the use of compulsory licenses in India in the interest of public health.
• Roche Products (India) Pvt. Ltd. v. Cipla Ltd. (2008): This case addressed the issue of patent infringement related to the anti-cancer drug Erlotinib. Cipla, an Indian company, launched a generic version of the drug before Roche's patent was granted. The case ultimately concluded that Roche's patent was valid, but the matter of infringement remained unresolved, leading to a more nuanced understanding of patent enforcement in the pharmaceutical sector.
• Merck v. Glenmark (2016): This case concerned the validity and infringement of Merck's patent on the active ingredient in a drug used to treat Type 2 diabetes. The Delhi High Court ruled in favor of Glenmark, noting that Merck's patent did not meet the requirements for novelty and inventiveness. This case highlighted the challenge of defending pharmaceutical patents in India, especially when the product is a chemical compound.

These landmark cases have shaped India's approach to patent enforcement, balancing the interests of patent holders, the public, and access to essential medicines.

7. Patent Revocation and Renewal

“Patent Revocation and Renewal” refers to the processes and regulations that govern the continuation, modification, and potential cancellation of patents after they are granted. These processes ensure that patents are maintained fairly and effectively, and that they remain valid for the duration of their protection period, as long as they meet certain criteria.

Key Points:

a. Grounds and Procedures for Patent Revocation:

Patent revocation refers to the legal cancellation of a granted patent. This can occur for several reasons:

• Invalidity: If a patent does not meet the legal requirements for novelty, inventiveness, or industrial applicability, it can be revoked.
• Non-payment of Fees: Failure to pay renewal fees can lead to a patent's revocation.
• Fraud or Misrepresentation: If the patent holder misrepresented information or made false statements during the application process.
• Lack of Use: Some jurisdictions require a patent to be used or worked in the country for it to remain valid. Non-use may lead to revocation.
• Prior Art: If a previously existing patent or invention was discovered after the grant of a patent, it could challenge the novelty of the granted patent, leading to revocation.

The procedure for revocation typically involves:

• Filing a request with the relevant patent office or tribunal
• Providing evidence or arguments to support the claim for revocation.
• The patent holder may have the opportunity to defend the validity of the patent

b. Annual Renewal Process, Fees, and Maintaining the Validity of a Patent:

• Renewal Process: Patents are granted for a limited period (typically 20 years). To maintain a patent's validity, the patent holder must pay renewal fees at regular intervals, typically annually or at periodic milestones (e.g., at the 5th, 10th, and 15th years).
• Renewal Fees: The renewal fees increase over time, reflecting the long-term nature of the patent. These fees must be paid to keep the patent in force; failure to pay these fees results in the patent lapsing and losing its legal effect.
• Maintaining Validity: The holder must ensure the patent meets all the legal and procedural requirements, including paying fees, responding to requests from the patent office, and meeting certain use requirements (depending on the jurisdiction).

c. Restoring Lapsed Patents and Managing Deadlines:

• Restoration of Lapsed Patents: If a patent lapses due to the non-payment of renewal fees or other administrative issues (e.g., missed deadlines), many jurisdictions offer a restoration process. This allows the patent to be reinstated under specific conditions, such as paying overdue fees with penalties or providing a valid reason for the lapse (e.g., clerical error or inability to pay).
• Managing Deadlines: Patents are subject to strict deadlines for renewal, responses to office actions, and other legal procedures. Failing to adhere to deadlines can lead to the loss of patent rights, so patent holders must carefully manage these dates. Many uses patent management software or rely on legal experts to track and manage these critical timelines.

3. Why This Matters:

• Patent Holders: It is important for businesses and inventors to understand the process of renewal and potential revocation to ensure they maintain their exclusive rights. This includes planning for the renewal of fees and actively managing deadlines.
• Patent Offices: These processes help patent offices ensure that only valid patents remain active in their systems. It also ensures fairness, as patents that are no longer valid due to noncompliance or invalidity can be removed from the registry.
• Competitors: For businesses and individuals in similar industries, understanding revocation and renewal procedures is important as it allows them to identify patents that may no longer be enforceable, creating new opportunities for innovation or market entry.

By managing patent revocation and renewal, a patent holder can ensure they maintain their intellectual property rights for as long as possible, while competitors can challenge invalid patents and ensure fair market practices.

8. Landmark judgments in Patent law in India

1. Yahoo! Inc. v. Akash Arora (1999):

• Issue: The case dealt with the issue of infringement related to software and domain names.
• Outcome: The Delhi High Court ruled that domain names could not be patented, which set a precedent for considering software as part of the internet domain, but not necessarily as a standalone patentable entity

2. Ranjit Singh v. TATA Consultancy Services (2003):

• Issue: This case concerned the issue of copyright infringement in relation to software programs and the patentability of software code.
• Outcome: The court held that software could be copyrighted, but it cannot be patented under Indian law if it does not involve a “novel” invention.

3. Microsoft v. I4 Software (2011):

• Issue: The case revolved around the alleged infringement of Microsoft's patented software products
• Outcome: The Delhi High Court ruled in favour of Microsoft, affirming that software related to systems and processes could be subject to patent protection if it meets the criteria of novelty, inventive step, and industrial applicability.

4. Google Inc. v. Indian Patent Office (2017)

• Issue: Google challenged a decision of the Indian Patent Office regarding the rejection of its software patent application.
• Outcome: The Intellectual Property Appellate Board (IPAB) sided with the Patent Office, stating that mere automation of a task or a software-based process could not be patented unless it included a technical solution that went beyond just a computer program.

5. SAP v. Intellectual Property Appellate Board (2020):

• Issue: The case examined the patentability of software-related inventions that involved business processes.
• Outcome: The Supreme Court dismissed SAP's appeal, reinforcing the stance that abstract ideas or business methods cannot be patented in India unless they show technical innovation.

6. F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2015)

• Key Issue: Dispute over the patent for Tarceva, an anti-cancer drug, and whether Cipla's generic version infringed Roche's patent.
• Outcome: The Delhi High Court ruled in favour of Roche, holding that Cipla's generic version infringed Roche's patent. However, the case was settled out of court, allowing Cipla to continue selling its generic version with some restrictions.

7. Merck Sharp & Dohme (MSD) v. Glenmark Pharmaceuticals Ltd. (2018)

• Key Issue: Dispute over the patent for Sitagliptin, a drug used for treating diabetes.
• Outcome: The Delhi High Court ruled that Glenmark's generic version of Sitagliptin infringed Merck's patent. The court granted an injunction against Glenmark, blocking the sale of its generic version. This judgment reinforced the protection of patent rights in India.

8. Indian Patent Office v. Roche Molecular Systems (2020)

• Key Issue: Involvement of private parties seeking clarity on the scope and enforceability of patents.
• Outcome: This case reaffirmed the Indian Patent Office's role in reviewing and granting patents, with a focus on international norms and domestic legal requirements. The case addressed the balance between patent protection and public health, especially in the context of diagnostics.

To view the full article click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.