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Sandeep Pandey

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Principal associate in the Intellectual Property (IP) Practice at the Noida office of Cyril Amarchand Mangaldas. Sandeep advises on patents and designs, particularly, patent prosecution, infringement, freedom to operate, patent drafting, patent search/analysis and contentious matters. He can be reached at sandeep.pandey@cyrilshroff.com

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

Decoding Patent Searches: A brief on the types and strategies

Introduction

Intellectual Property Rights (IPR) have undergone significant evolution in the recent past, and the increasing number of filings for different types of IP rights across the world show the increasing commitment of countries to foster innovation, creativity, and their desire to sustain it. In today’s rapidly evolving landscape of innovation and technology, securing intellectual property rights through patents has become paramount for businesses and inventors. However, navigating the complex realm of patent law demands a thorough understanding of existing inventions and their legal implications. Continue Reading Decoding Patent Searches: A brief on the types and strategies

MHC recommends whittling down of claims to overcome refusal of patent application due to lack of inventive step

Microsoft Technology Licensing LLC’s (hereinafter “Microsoft”) appeal against an order dated September 29, 2020, by which its Indian Patent Application No. 1783/CHENP/2012, was refused by the Controller of Patents as being obvious and lacking inventive step has been allowed by the Madras High Court (hereinafter “MHC”). The MHC directed narrowing of claims to clearly define the inventive feature and overcome refusal of Patent application due to lack of inventive step.Continue Reading MHC recommends whittling down of claims to overcome refusal of patent application due to lack of inventive step

Scope of business method inventions under Section 3(k)

In Priya Randolph Vs Deputy Controller of Patent and Design,[order dated December 20, 2023],the Madras High Court set aside a refusal order passed by the Deputy Controller of Patents and Designs in appeal proceedings. The Court held that mere involvement of a business method in an invention doesn’t render it unpatentable under Section 3(k) of the Indian Patents Act, 1970. The Court observed that the invention involved hardware, software and firmware and that all these components put together, improve data privacy and protection mechanisms.Continue Reading Scope of business method inventions under Section 3(k)

‘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?