Chetana Prakash, SLS, Hyderabad

Manasi Pawaskar, GLC, Mumbai

Saket Pathak, MNLU

Editor: Puru Pratap Singh, GNLU


Having a basic idea of the lex loci when it comes to Patent Law is essential for having a better understanding of the judgements propounded by the Indian Courts. It is to be kept in mind that the Socialist inclination of the Indian framework is very widely reflected in the judgements, as the public opinion has been given the highest priority under all circumstances.

In India Patent can be granted to any product that is invented using an inventive step and is capable of industrial application.[1] The history of patents in India dates back to the year 1911 with the enactment of the Indian Patents and Designs Act, 1911. The Patent Act, 1970 succeeded the Indian Patents and Designs Act, 1911. Currently, the patent law in India is governed by the Patents Act, 1970 which was further amended in the year 2005 by the Patents (Amendment) Act, 2005 and the Patents Act Rules, 2006. Some of the landmark judgements that hold immense importance and need to be discussed when it comes to Patent Laws in India are as follows:-

1. Novartis v. Union of India and Others[2] : This is a landmark judgement by a two-judge bench of the Indian Supreme Court. The dispute was regarding the patenting of a life-saving cancer drug Glivec.The Indian patent office’s rejection of the patent application was upheld by the Supreme Court.

The patent application was filed by Novartis in India in 1998. In accordance with the TRIPS agreement, India made changes to its patent law. The most significant of them was that, prior to this agreement, patent on products was not allowed, while afterwards they were, but with restrictions. These changes came into effect in 2005. Novartis’ patent application waited in a “mailbox”, while India managed the transition. In addition to this, India passed certain amendments to its patent law in 2005.Novartis had applied for Exclusive Marketing Rights (EMR) for Gleevec from the Indian Patent Office, which was granted in November 2003.

In 2005, when Novartis’ patent application was examined, it was immediately attacked by oppositions which were initiated by generic companies that were selling Gleevec in India as well as advocacy groups. It was rejected on the grounds that the part of Indian patent law that was created by amendment in 2005 which described the patentability of modifications of known drugs and new uses for known drugs. Section 3(d) of the amended Act, specified that such inventions are patentable only if "they differ significantly in properties with regard to efficacy."[3]

The court ruled, narrowly considering the fact that the application was filed during a time of transition in Indian patent law.

2. Koninklijke Philips N.V. & Anr. v. Rajesh Bansal[4] and Koninklijke Philips N.V. & Anr. v. Bhagirathi Electronics[5]: This case is India’s first ever post-trial judgement in a Standard Essential Patent (SEP) litigation. A standard essential patent stands for a patent which is necessary to or has already established an industry standard. In this case, Philips, the plaintiff was granted an Indian patent on April 20, 2001. The patent was in relation to channel decoding technology used for DVD Video playback function in a DVD video player. The defendants, who were Indian DVD player manufacturers, imported DVD player components, assembled them in India and sold them in the names of ‘Passion’ and ‘Soyer’. They were allegedly infringing the plaintiff’s patent by engaging the Decoders, without obtaining license from Philips. The High Court delivered a single judgement for the two suits filed by Philips. Koninklijke Philips Electronics N.V. (Philips) secured a major victory in the SEP suits filed against these two different entities.

3. F. Hoffmann-La Roche Ltd v. Cipla Ltd., Mumbai Central[6] : Since the incorporation of patent laws, India has witnessed the conflict between many International Pharmaceutical companies and Indian Pharmaceutical companies. However, this case is the first case in India between a foreign pharmaceutical company (F. Hoffmann-La Roche) and an Indian pharmaceutical company (Cipla) with regards to Patent Litigation post the Product Patent Regime of 2005 and involved intricate issues like public interest and pricing.

4. Dr Snehlata C. Gupte v. Union of India & Ors[7] : The issue that was raised in this case is of prime importance as this case is the first case wherein the date of grant of patent was decided upon. Prior to this case, there used to be ambiguity with regards to the date of grant of patent due to the process which resulted in delay between the grant of patent and issuance certificate. The Delhi High Court held that the date of grant of patent will be on the date on which the Controller passes an order on the file. Also, as per Section 43 of the Patent Act, 1970, “patent shall be granted as expeditiously as possible” and the learned Judge of the Delhi High Court opined that a patent has to be granted once it is found that the patent was neither rejected in the pre-grant opposition nor was in contravention with any provision of the Patent Act, 1970. Hence the decision taken by the Controller on the file is crucial to determining the date of grant of patent and the act of sealing the patent and registering the same is a ministerial act which holds an evidential value in the grant of the patent.[8]

5. Bayer Corporation v. Union of India[9] : in this case, an Indian pharmaceutical company known as Natco Pharma Ltd. produced a generic version of Bayer Corporation’s (an American company) Nexavar for the treatment of Liver and Kidney cancer. The Indian Patent Office granted its very first ‘Compulsory License’[10] to Natco Pharma for the production of the generic version of Nexavar however with certain terms and conditions. Aggrieved by the decision of the Controller Bayer Corporation filed an appeal challenging the Controller’s decision at the Intellectual Property Appellate Board (IPAB). However, the IPAB dismissed the appeal of Bayer Corporation and upheld the decision of the Controller. The Bayer Corporation then filed an appeal before the Bombay High Court. The writ petition was dismissed by the Bombay High Court after taking a close look at the Sections 83, 84, 90(1)(i) and 90(1)(iii) of the Patent Act, 1970 and the contention put forward by the parties. The Bayer Corporation then filed a Special Leave Petition[11] before the Hon’ble Supreme Court but alas the petition was dismissed.

6. Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries[12] : In this case, a question arose as to whether plaintiff’s invention does involve an inventive step, as regards to what was known before or used prior to the date of the patent. The plaintiff’s firm was indulged in business of manufacturing brass and German silver utensils at Mirzapur. The plaintiff invented a device and method for the manufacturing of utensils to introduce improvement, convenience, speed, safety of workers and better finishing to the final product and got the invention patented under the Indian Patent and Designs Act, 1911. The defendant who was carrying on the business of manufacturing dishes and utensils started using plaintiff’s patented method for manufacturing of dishes, against which the plaintiff filed the case of infringement. Counterclaim and a separate petition under for the revocation of the patent was filed by the defendant. The Supreme Court held that the patented machine was not a new manufacture or a mere improvement, nor did it involve any inventive step, with regard to what was publicly known or used at the date of the patent.[13] It also held that the subject of the invention was known for decades for the traditional purpose, with a slight change in the mode of application. The slight modification in the patented invention would be an easy task for any skilled worker in the field based on knowledge existing at the date of patent and hence the patent was revoked.

7. Bajaj Auto Limited v. TVS Motor Company Limited[14] : The Supreme Court in this case directed that the hearing in the intellectual property matters and patent related laws should proceed on a day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit.[15] The Supreme Court further instructed all the courts and tribunals in the country to punctually and faithfully carry out the orders. The said case was engaged in the questions of patent infringement regarding the unauthorized application of the patent by the defendant and the damages for the same.

[1] [2] (2013) 6 SCC 1 [3]Central Government Act Section 3(d) in The Patents Act, 1970. (n.d.). indiakanoon. [4] CS (COMM) 24/2016 [5] CS(COMM) 436/2017 [6] 148 (2008) DLT 598 [7] W.P. (C) No 3516 and 3517 of 2007 [8] [9] 2014 (60) PTC 277 (Bom) [10] Compulsory License is encompassed by Section 84 of the Patent Act, 1970. [11] SLP (C) No. 30145 of 2014 [12] (1979), 2 SCC 511. [13] [14] JT 2009 (12) SC.103, 2007 [15]

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