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Gitika Suri

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Director-Patents in the Intellectual Property Practice of Cyril Amarchand Mangaldas. Gitika has almost fifteen years of experience in Intellectual Property (IP) matters, particularly, patents. Gitika advices on patent transactions & commercialisation, prosecution, oppositions, infringement and other contentious matters. Over the years, Gitika has been involved in prestigious patent strategy, tie-ups, Patent/IP mergers and acquisitions, and various commercial transactions involving IP. She can be reached at gitika.suri@cyrilshroff.com

Inventions addressing transaction security patentable under Indian Patents Act

In a recent judgement, the Delhi High Court, while hearing an appeal against an order of the Controller of Patents and Designs, which refused a patent grant, distinguished between a technical method and a business method while examining the technical contributions/ effects of an invention. In the impugned order, the Controller refused a patent application titled “Methods and Devices for Authentication of an Electronic Payment Card using Electronic Token” on the grounds that the claimed invention falls under Section 3(k) of the Patents Act (“Act”), categorising it as a business method and a computer programme, per se.Continue Reading Inventions addressing transaction security patentable under Indian Patents Act

In a recent judgement dated November 28, 2024, the Madras High Court while hearing an appeal under Section 117A of the Patents Act, 1970 (“Act”), quashed an impugned order that the Controller of Patents and Designs (“Controller”) had passed, on grounds of non-application of mind and violation of principles of natural justice.Continue Reading Is it acceptable to file divisional application on the day of grant of parent application?

Procedural Fairness and Service Errors: Lessons from the Coaster Shoes Trademark Dispute

In a significant legal development, the Bombay High Court recently addressed crucial issues surrounding trademark opposition proceedings in Coaster Shoes Company Pvt. Ltd. v. Registrar of Trademarks & Anr vide a judgment dated August 16, 2024. The Court highlighted the importance of procedural fairness and the responsibility of the Registrar of Trade Marks (“Registrar”) to ensure completeness of service in trademark disputes.Continue Reading Procedural Fairness and Service Errors: Lessons from the Coaster Shoes Trademark Dispute

Invention that is a series of instructions does not meet the criteria for patent protection under Section 3(k) of the Patents Act

The Delhi High Court has recently rejected a BlackBerry Limited (hereinafter “Appellant”) appeal against the Assistant Controller of Patent’s refusal of its patent application in the field of wireless communication titled “Administration of Wireless Systems[1]”. The application was for an invention that manages wireless systems by configuring wireless client devices using both primary and secondary wireless servers. The ld. Assistant Controller of Patents and Designs rejected the application on the ground of non-patentability under Section 3(k) [2], stating that the subject patent application was directed towards set of instructions and which were purely functional and lacking any inventive hardware features. Continue Reading Invention that is a series of instructions does not meet the criteria for patent protection under Section 3(k) of the Patents Act

Background

In Mahesh Gupta v Assistant Controller of Patents and Designs, the Delhi High Court affirmed the refusal order issued by Assistant Controller of Patents and Designs (“Respondent”) against a patent application filed for “Portable Vehicle Management System”(“Subject Patent”). The Respondent refused the patent application on the grounds that it did not meet the inventive step requirement under Section 2(1)(ja) of the Indian Patent Act, 1970, and failed to qualify as an invention under Section 2(1)(j) of the Act.Continue Reading Portable Vehicle Management System Denied Patent

Introduction

Section 3(h) of the Patents Act, 1970, states that a method related to agriculture and horticulture falls under inventions not patentable. The purpose of Section 3(h) of the Act is to protect “conventional” practices followed by farmers, and to safeguard traditional farming, cultivation and breeding practices within the public domain, preventing exclusive rights and monopolies through granting of patents. Section 3(h) has survived through amendments and has remained an essential part of the Patents Act, highlighting the importance of the Section.Continue Reading Section 3(h): Method of Agriculture and Jurisprudence

Synergism to be displayed across the breadth of patent claim

Willowood Chemicals Private Limited’s (hereinafter “the Patentee”) patent was revoked by the Controller of Patents (hereinafter “Controller”) due to post-grant opposition as the Controller held that the Patentee had failed to display any technical advancement and synergism between the components of the claimed composition across the breath of the claims.Continue Reading Synergism to be displayed across the breadth of patent claim

Court settles patentability of man-made and novel non-living substance

An appeal was filed by Genmab A/S (hereinafter “Applicant” or “Appellant”) against an order dated May 30, 2016, which had rejected its’s Indian Patent Application No.4718/CHENP/2007. The application claimed priority from US Application No.60/667,579 dated April 1, 2005. A first examination report was received on February 27, 2013, and various objections were raised in view of certain prior arts and the patent application was considered not patentable under Section 3(j), 3(e), 3(i) and 3(c). The appellant revised its claims while responding to the examination report, leading to a hearing. However, the application was rejected as the application was thought to lack any inventive step, and patent ineligible under Section 3(c)[1].Continue Reading Court settles patentability of man-made and novel non-living substance

Google LLC (hereinafter, “appellant”) submitted its application for a patent titled “Managing Instant Messaging Sessions on Multiple Devices”[i] to the controller of patents and designs on July 13, 2007, claiming priority from a US patent application.[ii] The application discloses the feature for transferring instant messaging sessions concurrently between devices and gives users the choice to mirror / refresh sessions interrupted by idle or away states. It provides flexibility in managing instant messaging sessions and a seamless continuation of conversations.Continue Reading Delhi HC dismisses instant messaging patent appeal