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Category: INTELLECTUAL PROPERTY

  • Bombay High Court Sets Aside Patent Refusal for Lack of Reasoned Order and Remands for Fresh Consideration under Section 117A of the Patents Act, 1970

    Bombay High Court Sets Aside Patent Refusal for Lack of Reasoned Order and Remands for Fresh Consideration under Section 117A of the Patents Act, 1970

    Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration

    Date: 31.08.2026

    Bombay High Court Sets Aside Patent Refusal for Lack of Reasoned Order and Remands for Fresh Consideration under Section 117A of the Patents Act, 1970

    This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .  

    The Bombay High Court recently delivered a significant judgment in the case of Deepak Nitrite Limited vs. The Assistant Controller of Patents & Designs. This case revolved around the refusal of a patent application for a novel food-grade sodium nitrite and its production method. The judgment not only impacts the parties involved but also sets important precedents for patent examination standards in India.

    Background of the Case

    Deepak Nitrite Limited filed a patent application (No. 202021019409) for “A Free-Flowing Food Grade Sodium Nitrite and Production Method Thereof.” The Assistant Controller of Patents & Designs, Mumbai, refused the application under Section 15 of the Patents Act, 1970, citing lack of inventive step as per Section 2(1)(ja) of the Act. The refusal was based on the assertion that the claimed reduction in impurities was common general knowledge and that the process steps were routine laboratory procedures.

    Key Arguments Presented

    Petitioner’s Submissions

    1. Product Claims (Claims 1-3):
      • The claimed product was distinguished from prior art by its unique impurity profile, crucial for achieving food-grade quality.
      • The Controller’s order failed to cite any authoritative source for the alleged “common general knowledge” and did not analyze whether the specific impurity profile was disclosed or suggested in prior art.
    2. Process Claims (Claims 4-8):
      • The process involved a synergistic combination and specific sequencing of steps, not merely routine filtration.
      • The Controller isolated a single step (filtration) and ignored the inventive contribution of the integrated process.
    3. Legal Precedents:
      • The petitioner cited several judgments emphasizing the need for a reasoned analysis, identification of inventive concepts, and proper assessment of common general knowledge.

    Respondent’s Submissions

    • The Respondent defended the refusal, arguing that the order was passed after due examination.
    • Upon judicial questioning, the Respondent conceded that the order lacked independent analysis of the process claims and that it would have been more appropriate to consider the invention as a whole.

    Court’s Analysis and Findings

    1. On Common General Knowledge:
      • The Court held that invoking “common general knowledge” without citing identifiable sources is impermissible and arbitrary.
      • The Controller must substantiate such assertions with published sources predating the patent application.
    2. On Reasoned Orders:
      • The Court criticized the recurring pattern of non-speaking, inadequately reasoned orders from the Patent Office.
      • It emphasized the mandatory obligation of Controllers to provide well-reasoned, speaking orders that demonstrate independent application of mind and address all objections and responses.
    3. On Remand and Future Conduct:
      • The Court set aside the impugned order and remanded the matter for fresh consideration by a different Controller.
      • It directed that the application be decided within twelve weeks, ensuring compliance with the standards outlined in the judgment.

    Broader Implications

    This judgment highlights systemic issues in patent examination, such as:

    • Failure to provide applicants a fair opportunity to address objections.
    • Lack of independent reasoning and mechanical reproduction of prior art or objections.
    • The need for transparency and accountability in quasi-judicial decisions.

    The Court’s directions reinforce the importance of reasoned decision-making and adherence to natural justice principles in the patent grant process. The judgment is expected to influence future conduct of the Patent Office and improve the quality of patent examination in India.

    Conclusion

    The Bombay High Court’s decision in Deepak Nitrite Limited vs. Assistant Controller of Patents & Designs is a landmark ruling that strengthens procedural safeguards for patent applicants. It underscores the judiciary’s commitment to upholding fairness, transparency, and reasoned analysis in intellectual property adjudication.

    Connected Matter

    Bombay High Court Sets Aside Patent Refusal for Safety Syringe

    Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.

    Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.

    Source: Bombay High Court

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    Ravi Shekhar Jha – Advocate, Bar Council of Delhi

  • Compilation of Judicial Decisions on Indian Intellectual Property Rights

    Compilation of Judicial Decisions on Indian Intellectual Property Rights

    Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration

    Date: 29.08.2026

    Compilation of Judicial Decisions on Indian Intellectual Property Rights

    This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .  

    India’s intellectual property (IP) regime continues to evolve rapidly, with courts issuing pivotal judgments that clarify, reinforce, and sometimes reshape the legal landscape. This article presents a detailed review of the most significant judicial decisions from July 2026, as compiled by the Office of the Controller General of Patents, Designs & Trade Marks. The focus spans patents, copyrights, designs, and trademarks, offering insights for practitioners, businesses, and scholars alike.

    Patents: Defining Inventive Step, Product Claims, and Exclusions

    1. Pharmaceutical Combinations and Section 3(d) Bar

    • Case: ARRAY BIOPHARMA INC v. Deputy Controller of Patents and Designs
    • Key Takeaway: The Delhi High Court clarified that a product claim for a combination of distinct active drugs is not barred by Section 3(d) of the Patents Act. The court emphasized that such combinations, when supported by clinical data showing technical advancement, are patentable even if the specification includes administration schedules. The decision also reinforced that product claims should not be rejected as β€œmethods of treatment” merely due to functional descriptors in the claims.

    2. Inventive Step and Reasoned Orders

    • Case: DEEPAK NITRITE LIMITED v. Assistant Controller General of Patents and Designs
    • Key Takeaway: The Bombay High Court set aside a patent rejection for lack of a reasoned order. The court held that patent office decisions must be based on clear, substantiated reasoning, especially when relying on β€œcommon general knowledge.” The inventive step must be assessed holistically, considering the integrated process and technical advancement.

    3. Therapeutic Efficacy in Pharmaceutical Patents

    • Case: INTRA-CELLULAR THERAPIES, INC. v. Controller of Patents
    • Key Takeaway: The court reaffirmed that increased bioavailability or improved physicochemical properties alone do not satisfy Section 3(d) unless there is evidence of enhanced therapeutic efficacy. The applicant must demonstrate a corresponding improvement in medical outcomes.

    4. Obviousness and Prior Art

    • Case: SULZER MIXPAC AG v. Assistant Controller of Patents and Designs
    • Key Takeaway: Minor modifications of known techniques, even if they improve performance, are not patentable unless they represent a non-obvious technical advance. The court clarified that the substance of the inventive step inquiry is more important than strict adherence to judicial formulas.

    5. Mental Acts and Patent Exclusions

    • Case: T-MOBILE INTERNATIONAL AG AND CO. KG. v. Controller General of Patents, Designs and Trademarks
    • Key Takeaway: The Delhi High Court issued guidelines for assessing exclusions under Section 3(m), clarifying that claims must be evaluated as a whole. Exclusions target purely abstract or mental acts, not technical implementations involving tangible outputs.

    Copyright: Fair Dealing, Moral Rights, and Digital Challenges

    1. AI Training and Fair Dealing

    • Case: ANI MEDIA Pvt. Ltd. vs. OPEN AI OPCO LLC
    • Key Takeaway: The Delhi High Court held that using copyrighted works for AI training can qualify as fair dealing under Section 52(1)(a), provided the use is internal, non-commercial, and does not result in substantial reproduction. The court recognized the evolving nature of β€œresearch” in the digital age.

    2. Artistic Work and Trade Dress

    • Case: OPELLA HEALTHCARE GROUP v. PURECA LABORATORIES PVT LTD
    • Key Takeaway: The court granted summary judgment against a defendant whose label was a colourable imitation of the plaintiff’s well-known packaging, reinforcing the protection of trade dress as artistic work.

    3. Moral Rights and AI Deepfakes

    • Case: PREITY G. ZINTA v. GOOGLE LLC & ORS.
    • Key Takeaway: Unauthorized creation and dissemination of AI-generated deepfakes and morphed content violate a performer’s moral rights under Section 38-B, justifying urgent injunctive relief.

    4. Ownership of Musical Works

    • Case: SAREGAMA INDIA LTD. V. BLACK MADRAS FILMS & ORS.
    • Key Takeaway: Copyright in musical compositions is distinct from sound recordings and cinematograph films; composers retain rights in their works even when incorporated into films.

    Designs: Novelty and Litigation Costs

    1. Design Infringement and Prior Publication

    • Case: CROCS INC USA V. M/S BATA INDIA LTD AND ORS.
    • Key Takeaway: Lack of novelty and prior publication can invalidate a registered design. Successful defendants are entitled to recover actual litigation costs, emphasizing the need for parties to assess the strength of their case before pursuing litigation.

    Trademarks: Well-Known Marks, Passing Off, and Procedural Safeguards

    1. Well-Known Marks and Cross-Class Protection

    • Case: COLUMBIA PICTURES INDUSTRIES, INC v. REGISTRAR OF TRADE MARKS & ANR
    • Key Takeaway: A mark need not be formally declared “well-known” to claim cross-class protection; evidence of reputation and recognition is sufficient. The Registrar must consider well-known status claims before focusing on goods’ dissimilarity.

    2. Priority of Application vs. Actual Use

    • Case: Parle Products Pvt. Ltd. v. The Registrar of Trade Marks & Anr.
    • Key Takeaway: In registration disputes, the date of application determines priority, not the date of first use, unless the dispute involves passing off. Administrative delays by the Registry cannot penalize diligent applicants.

    3. Deceptive Similarity in Pharmaceuticals

    • Case: SUN PHARMA LABORATORIES LTD. v. FINECURE PHARMACEUTICALS LTD. & ORS
    • Key Takeaway: Even minor differences in pharmaceutical trademarks can cause confusion; public interest justifies a stricter approach to similarity. Delay in seeking relief does not defeat an injunction in such cases.

    4. Restoration and Procedural Compliance

    • Cases: ARUN KUMAR GUPTA V. REGISTRAR OF TRADE MARKS and AMRIT SINGH MEHTA TRADING AS MEHTA COSMETICS V. CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE MARKS
    • Key Takeaway: Removal of a trademark for non-renewal is invalid without issuing the mandatory renewal notice; procedural safeguards protect proprietors’ rights.

    Conclusion

    The July 2026 judicial decisions underscore the Indian judiciary’s nuanced approach to balancing innovation, public interest, and procedural fairness in IP law. Stakeholders should closely monitor these developments to ensure compliance and to leverage evolving legal standards in protecting their intellectual property.

    Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.

    Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.

    Source: DPIIT

    Disclaimer

    Handy Download:

    “Judgments on Intellectual Property Rights”Download

    Write to us at office@aadrikaalaw.com

    Tel: +91-11-4999 2707

    www.aadrikaalaw.com

    Ravi Shekhar Jha – Advocate, Bar Council of Delhi