Request for examination cannot be filed beyond the prescribed time of 48 months

Sphaera Pharma, Pte.’s, writ petition, seeking to restore the Indian Patent Application No. 3584/DELNP/2015 has been dismissed by the Delhi High Court. Earlier, the Petitioner had failed to file the request for examination within the prescribed time i.e. within a period of 48 months from the priority date (on or before 05.10.2016) and this resulted in abandonment of the application under Section 11B. The petitioner filed a petition at the IPO, requesting that the status of its Indian Patent Application be reviewed. However, the same was not considered by the IPO.

Aggrieved, the petitioner filed the present Writ petition. The Court held that it is apparent from the language of Section 11B (1) of the Patents Act that consideration of any application for examination beyond the stipulated period is not prescribed. The Court  held that a plain reading of Section 11B(1) of the Patents Act and Rule 24B of the Rules clearly indicates that there is no scope for considering a request for examination beyond the prescribed period of 48 months from the date of application.

The counsel appearing for the petitioner referred to Rule 138 of the Rules and contended that the Controller of Patents retained the power to extend the time for a period of one month in certain cases. The Court found the contention unmerited. The Delhi High Court held that , it is candid from the reading that  recourse to Rule 138 of the Rules is not available to extend the time prescribed under Rule 24B of the Rules, which expressly excludes its application to Sub-rules (1), (5) and (6) of Rule 24B of the Rules. Moreover, in terms of Rule 138(2) of the Rules, any request for extension of time has to be made before the expiry of such time as prescribed in the Rules. Therefore, even if the express language of Rule 138 of the Rules is ignored, the benefit of Rule 138 is not available to the petitioner as no such application for extension of time was made prior to expiry of the prescribed time (that is, prior to 05.10.2016). In view of the above, the petition was held to be unmerited and accordingly dismissed.



“Disturbing Trend” Of Long Interim Orders In IPR Suits

The issue of long and delayed interim orders attracted the Supreme Court’s (SC) attention in a Petition challenging an order passed by the Delhi High Court in march this year (In M/S. INTEX TECHNOLOGIES (INDIA) LTD. & ANR.  VERSUS M/S. AZ TECH (INDIA) & ANR).

The Apex Court noticed that the order, despite being an interim order was a decision based on the merits of the case. The respondents had filed the suit seeking a permanent injunction against the appellants restraining them from using the mark “AQUA‟ in respect of mobile phones / cellular phones.

It was held by the court that improper and unexplained delay, particularly in IPR cases is fatal to an application for an interlocutory injunction.

The court notes that the interim order is virtually a decision on merits of the suit. According to the Court this is a disturbing trend which the Registrar General of the Delhi High Court should take note of. The SC has ordered the Registrar General of the Delhi High Court to report  total number of pending IPR suits, in the following manner:

  1. Divided into different categories;
  2. stage of each suit; and
  3. the period for which injunction/interim orders held/holding the field in each of the suits.

The Registrar General of the Delhi High Court will also indicate to the Court a reasonable way of ensuring  speedy disposal of the suits involving intellectual property rights which are presently pending.


“Hot tubbing” for expert witness by the DHC

The Delhi High Court (DHC) in the Micromax Vs. Ericsson case, based on the suggestions exchanged by the parties and considering the procedure adopted by the Federal Courts in Australia and in the United Kingdom, would be adopting the “hot tubbing” procedure to facilitate appreciation of expert technical evidence, in a shortened procedure.

The Court may devise a slightly modified hot tubbing procedure for the present case, considering the facts of the case.



DHC maintains the injuction on Cipla For Onbrez

The Delhi High Court (DHC) by its decision continues to bar Cipla Ltd from selling copies of Novartis AG’s drug Onbrez in India.

An appeal was filed by Cipla against an order passed by Justice Manmohan Singh in January 2015 which restrained Cipla from selling copies of Onbrez (indacaterol). In the Appeal, the Court has maintained the decision on January 2015.

Stay tuned for a detailed report!

Writ for Enzalutamide admitted by the DHC

The Regents of University of California, has filed a writ against the order of the Controller refusing the grant of an application filed by them in India, covering the drug product Enzalutamide (Xtandi). On 2nd March 2017 the matter was listed before Hon’ble Mr Justice Sanjeev Sachdeva of the Delhi High Court (DHC) and Mr Chidambaram made the following arguments on behalf of the Petitioner:-

  1. That the present Writ Petition has been filed against the common order dated 8th November 2016 allowing the five pre-grant oppositions, rejecting the Petitioner’s Patent and the said order has been passed in gross violation of the principles of Natural Justice;
  2. That the Patent Application which is the subject matter of the Writ Petition has been granted Patent in around 50 countries;
  3. Further, the marketing approval has been granted in around 75 countries;
  4. That the patent applicant had filed evidence affidavits of three witnesses including the two inventors. However, the impugned order grossly erred in not considering or even referring to the evidence filed by the patent applicant.

In view of the above, the Hon’ble Judge has issued notice in the Writ Petition, returnable on 2nd May 2017.

Business Standard and reported as to what transpired in Court on 2nd March 201, and the same can be accessed here:

Stay tuned for more updates!



Section 24(5) declared void

Section 24(5) of the Protection of Plant Varieties and Farmers’ Rights Act, 2001, has been declared void by the Delhi High Court. Prabhat Agri Biotech Ltd, Nuziveedu Seeds (P) Ltd and Kaveri Seed Company Ltd. challenged the vires of Section 24(5) of the Protection of Plant Varieties & Farmers’ Rights Act in a writ before the Delhi High Court. The writ has recently been allowed.

Section 24(5) empower the Registrar to issue “such directions to protect the interests of a breeder against any abusive act” during the period between filing of application for registration and decision taken by the Authority on such application. The said impugned provision reads as follows: “(5) The Registrar shall have power to issue such directions to protect the interests of a breeder against any abusive act committed by any third party during the period between filing of application for registration and decision taken by the Authority on such application.”

 The petitioner’s challenged this section on various grounds like:-

  • the provision does not  envisage any compliance with principles of natural justice when such orders are issued;
  • the provision gives the power to issue interim directions even before the concerned breeder’s application for registration has been accepted and any rights have accrued,
  • The provision does not provide any details of the orders that can be issued by the Registrar, such as, the conditions subject to which they can be issued, or the duration of their operation etc.
  • the Act does not provide for any appeal against the issuance of an order under the impugned provision, and therefore any error in the order is difficult to be corrected
  • the Act does not prescribe any qualifications for the Registrar who is empowered to issue such orders, and it is a well settled principle that substantial questions of law can only be decided by tribunals consisting of an adequate number of judicial members with legal qualifications

The Court agreed with the Petitioner and held that, “although the provision envisages the issuance of orders to injunct the commission of abusive acts, it does not explain what acts are to be considered abusive. This further fortifies the argument that the Registrar has been vested with unbridled power under the Act”. The Court further went on to state that, “The term “abusive act” is not defined; likewise, the question of decision taken by the authority on such application. More importantly the decision – final – taken upon an application for registration according to the provision is “by the Authority””.

Further, the Court held the provisions to be arbitrary and void, as infringement is a matter to be determined by regular courts, as the orders made under the impugned provision can have lasting adverse consequences, and there is no statutory provision ensuring that Registrars have minimum experience as quasi-judicial officials.

Whilst the qualification of Registrars as technical experts allows them  to be capable of deciding whether the DUs test (to determine infringement) is satisfied; it does not fully dispose to handle issue of the moment especially concerning interim measures. This is of particular significance given that there is no appellate remedy against such orders which makes  outcome fraught, undermining the rule of law and injecting arbitrariness to the entire exercise.


Dolby sues Oppo and Vivo

Dolby has sued two Chinese phone manufacturers, Oppo and Vivo, at the Delhi High Court stating that the two companies are using Dolby’s SEPs without a license. The Hon’ble Delhi High Court has held the following: –

  1. That Oppo and Vivo shall deposit royalty with the Court @ INR 34 per unit manufactured/sold/imported by 8th of every succeeding month.
  2. That Oppo and Vivo shall furnish details of the units manufactured, sold and imported, to Dolby by 5th of every month.
  3. That Oppo and Vivo shall continue to manufacture, sell and import their units in the interim while licensing negotiations based on Fair, Reasonable and Non-Discriminatory (FRAND) terms between the parties is ongoing.