Photo of Gitika Suri

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

DB of DHC sets the contours of Pre-grant opponent in an examination process

In a recent case[1], Novartis AG[2] v. Natco Pharma Ltd.[3], the Division Bench (DB) of the Delhi High Court (DHC) adjudicated on the extent of engagement a pre-grant opponent should be allowed under the Patents Act, 1970, in the course of proceedings initiated by the Controller, requiring the patent applicant to amend or modify the patent application.Continue Reading DB of DHC sets the contours of Pre-grant opponent in an examination process

Linking Patents to Pills: Unravelling the Patent Linkage Framework for Pharmaceutical Products in India

A patent grants the patentee exclusive rights, title, and interest in an invention. This creates a right in rem – a right to restrict a third party from making, using, offering for sale, selling, or in any manner commercializing the invention (as claimed in the patent)[1] for a period of 20 years[2]. In case of drugs, grant of patent, does not give the patent owner an automatic right to market the product. Such additional right in the form of a marketing approval/ license/ registration is granted by the concerned drug regulatory body acting under the auspices of the relevant legislation that regulates the import/ manufacture/ sale/ marketing of the drug in the relevant jurisdiction. Continue Reading Linking Patents to Pills: Unravelling the Patent Linkage Framework for Pharmaceutical Products in India

‘Technical Breach’ not a contravention of Section 39 of the Patents Act?

In Selfdot Technologies (OPC) Pvt. Ltd. v. Controller General of Patents, Designs & Trademarks, [order dated November 28, 2023],the Madras High Court has adjudicated on Section 39 and 40 of the Indian Patents Act and held that the breach committed by the appellant was a technical breach and cannot be considered a contravention of Section 39 of the Patents Act, 1970, and hence cannot trigger deemed abandonment under Section 40.Continue Reading ‘Technical Breach’ not a contravention of Section 39 of the Patents Act?

Court interprets “known substance” in respect of Section 3(d) of the Patents Act

In an important decision, Justice Senthilkumar Ramamoorthy, discussed Section 3(d) of the Patents Act, 1970.[1] The case involved a patent application no. 7096/CHENP/2015, which claimed priority from the US application number 61/815,502 dated 24 April 2013. The patent application claimed two polymorphic forms—A and B—of a compound RTA-408. Compound RTA-048 was claimed and granted in the Indian Patent Application No. 8486/DELNP/2014.[2] The patent application 7096/CHENP/2015 was refused essentially on the grounds of being not patentable under Section 3(d) of the Indian Patents Act.Continue Reading Court interprets “known substance” in respect of Section 3(d) of the Patents Act

Summary of the Draft Trade Marks (1st Amendment) Rules, 2024

The Draft Trade Marks (1st Amendment) Rules, 2024, introduced by the Department for Promotion of Industry and Internal Trade under the Ministry of Commerce and Industry, represent a strategic modification to the Trade Marks Rules, 2017. This regulatory endeavor is conducted under the delegated powers provided for in Section 157[1] of the Trade Marks Act, 1999 (“the Act”). These rules create a unified adjudication process which is carefully planned to ensure consistency. This effectively streamlines the Act’s execution by strengthening the Adjudicating Officer’s capabilities. The aim of this comprehensive approach is to optimise and refine the adjudicative framework, thereby fostering a more robust and coherent administration of trademark-related matters.Continue Reading Summary of the Draft Trade Marks (1st Amendment) Rules, 2024

Cause of action for a Writ Petition in Patent Suit stands independent of “Appropriate Patent Office” Determination under Patent Rules

In University Health Network v. Adiuvo Diagnostics Pvt. Ltd.[1], Madras High Court has held that it shall have territorial jurisdiction to entertain the writ ‘irrespective of the location of the appropriate patent office[2], which was Delhi. At the time of filing of a patent application, “appropriate office” for that application is ordinarily frozen, i.e. decided based on the place of residence or domicile or business of the applicant(s); or where the invention originated; or based on the address of service of the applicant in India, in case of a foreign applicant.[3] Section 2(1)(r) and 74 of the Patents Act 1970 (“the Act”), Rule 4 of Patent Rules 2003 (“Patent Rules”), and Clause 3.02 of Patents Manual indicate the immense significance of ‘appropriate office’ in the process of prosecution and grant of patent application in India. For instance, all proceedings are conducted from the appropriate office, all communications related to the proceedings are addressed to the concerned appropriate office, among others.Continue Reading Cause of action for a Writ Petition in Patent Suit stands independent of “Appropriate Patent Office” Determination under Patent Rules

Summary of Patents (2nd Amendment) Rules, 2024

The Department for Promotion of Industry and Internal Trade, under the Ministry of Commerce and Industry, has pursuant to the authority vested by Section 159[1] of the Patents Act, 1970 (“the Act”), issued the Patents (2nd Amendment) Rules, 2024, to amend the Patents Rules, 2003. These amendments are aimed at ushering in a uniform adjudication process, empowering the Adjudicating Officer to enhance precision, efficiency and implementation of the Act.Continue Reading Summary of Patents (2nd Amendment) Rules, 2024

In Starpharma Pvt Ltd v. The Assistant Controller of Patents and Designs [Mad HC, (T) CMA (PT) No.22 of 2023, Decided: 12th October 2023], the Madras HC adjudicated on issues relating to Sections 57 and 59 of the Patents Act 1970.  Section 57[1] allows amendment of applications, any specifications and any document subject to Section 59[2] of the Act. Section 59 states the following for amendment of an application for a patent or the complete specification or any document relating thereto:Continue Reading Madras High Court allows amendment of “method of treatment” claims to product claims

INTERPRETING ‘DIAGNOSTIC’ UNDER SECTION 3(I) OF THE PATENTS ACT

Section 3(i) of the Indian Patents Act makes patent ineligible “any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products”. Two recent Madras High Court decisions, in respect of  two separate appeals filed by the same Appellant, Chinese University of Hong Kong [CMA (PT) No. 14 of 2023 and CMA(PT) No. 1 of 2023] have deliberated upon the scope of “diagnostic” under Section 3(i) of the Patents Act, 1970. In both the cases, the Court, held that the word “diagnostic” in Section 3(i) of the Patents Act, should be construed, to consider processes that uncover pathology for the treatment of human beings, as being patent ineligible.Continue Reading Interpreting ‘Diagnostic’ under Section 3(i) of the Patents Act

Division Bench altering the interpretation of Section 16 of the Indian Patents Act

The order of the Division Bench (DB) of the Delhi high Court in Syngenta Ltd v Controller of Patents and Designs brought an overdue clarity on the interpretation of Section 16[1] of the Indian Patents Act, dealing with divisional patent applications.Continue Reading Division Bench altering the interpretation of Section 16 of the Indian Patents Act