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

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)

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

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

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