Assignment on…

Patent Law & Recent Judgment

SUBMITTED TO: SUBMITTED BY:

Rakesh Meena Nikhil Sharma

Central University Roll No- 201063

Haryana L.L.B 4th Semester

1
TABLE OF CONTENTS

1. Introduction
2. What is Patent?
3. Patentability of Biotechnological Inventions.
4. What is not Patent?
5. History of Patent
6. Patent Office
7. Identification of Patent and Patent Applications.
8. Filing of Patent in India.

9. Patent Infringement

10. Case Analysis.

11. Conclusion.

2
INTRODUCTION

Patent, is a legal document granted by the government giving an inventor the exclusive right
to make, use, and sell an invention for a specified number of years. Patents are also available
for significant improvements on previously invented items.

The goal of the patent system is to encourage inventors to advance the state of technology by
awarding them special rights to benefit from their inventions. Books, movies, and works of
art cannot be patented, but protection is available for such items under the law of copyright.
Patent law is one branch of the larger legal field known as intellectual property, which also
includes trademark and copyright law.

Patent law centres round the concept of novelty and inventive step (or lack of obviousness).
The right which they accord is to prevent all others, not just imitators but even independent
devisors of the same idea from using the invention for the duration of the patent. The special
potential of a patent is accordingly that it may be used to prevent all others from including
any form of invention in their product and services. A patent thus poses serious difficulties
for its competitors. This is why patents are not freely available for all industrial
improvements but only what is judged to qualify as a patentable invention.1

1
https://blog.ipleaders.in/what-is-a-patent-law-in-india/ ( last modified April 28, 2022)

3
What is patentable?

To qualify for a patent, the invention must meet three basic tests. First, it must be novel,
meaning that the invention did not previously exist. Second, the invention must be non-
obvious, which means that the invention must be a significant improvement to existing
technology. Simple changes to previously known devices do not comprise a patentable
invention. Finally, the proposed invention must be useful. Legal experts commonly interpret
this to mean that no patent will be granted for inventions that can only be used for an illegal
or immoral purpose.

Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or
a scientific principle even if he or she is the first one to discover it. For example, Isaac
Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could
not have patented his formula for relativity, E=mc2.

Under the law of the European Patent Convention (EPC), patents are only granted for
inventions which are capable of industrial application, which are new and which involve an
inventive step. An invention may be defined as a proposal for the practical implementation of
an idea for solving a technical problem. An invention is capable of industrial application if it
can be made or used in any kind of industry, including agriculture, as distinct from purely
intellectual or aesthetic activity.

An invention is said to be new if, prior to the date of filing or to the priority date accorded to
the application from an earlier application for the same invention, it was not already known to
the public in any form (written, oral or through use), ie it did not form part of the state of the
art. An invention is said to involve an inventive step if, in the light of what is already known
to the public, it is not obvious to a so-called skilled person, ie someone with good knowledge
and experience of the field.

Under the Indian patent law a patent can be obtained only for an invention which is new and
useful. The invention must relate to a machine, article or substance produced by manufacture,
or the process of manufacture of an article. A patent may also be obtained for an

4
improvement of an article or of a process of manufacture. In regard to medicine or drug and
certain classes of chemicals no patent is granted for the substance itself even if new, but a
process of manufacturing and substance is patentable. The application for a patent must be
true and the first inventor or the person who has derived title from him, the right to apply for
a patent being assignable.2

Patentability of Biotechnological Inventions:

In view of the Office instructions of the Controller General of Patents, Designs &
Trademarks dated 15th July, 1991, view point regarding patentability of biotechnological
inventions in India is:

(1) Inventions relating to organisms or biological material per se viz.-

(a) living entities of natural or artificial origin such as animals, plants and microorganisms,
biological material such as plasmids, viruses, gene, recombinant DNA, bacteria, fungi, algae
and other materials having self-replicating properties and parts thereof,

(b) Naturally occurring substances from living entities, biological materials and also process
for their production, are not Patentable under the Act. Hence no claim is allowable for such
inventions.

(2) Inventions relating to process or methods of production of tangible and non-living

substances like enzymes, antibiotics, insulin, hormones, interferon, alcohols, vaccines etc. by
bioconversion or using such microorganisms or by utilizing the above referred biologically
active substances as well as chemical substances produced by using genetically engineered
organisms or such existing substances made more economically by use of biotechnology
and/or microbiology are patentable under the Patent Act, 1970.

(3) While claiming the inventions in respect of above subject where strain/bacteria have been

2
https://www.mondaq.com/india/patent/54494/patent-law-in-india ( last modified April 28, 2022)

5
used and deposited in depositing authorities and allotted their accession number, such
depositions or accession number should be followed by the characteristics of such strain or
bacteria.

Under U.S. law, the person who first invented the item receives the patent. If it is unclear
who invented the item first, the PTO decides who gets the patent in a proceeding known as an
interference. The losing party may then appeal the PTOs decision at the Court of Appeals for
the Federal Circuit, a specialized court in Washington, D.C., established to deal with patent
matters.

Under the United States law 4 types of patents can be issued viz., utility, design, plant and
provisional:

Utility patents may be granted to anyone who invents or discovers any new and useful
process, machine, article of manufacture, or compositions of matters, or any new useful
improvement thereof. Design patents may be granted to anyone who invents a new, original,
and ornamental design for an article of manufacture. The term of a design patent is 14 years.

Plant patents may be granted to anyone who invents or discovers and asexually reproduces
any distinct and new variety of plant. Plant utility patent protection is available for
biotechnology processes, genes, seeds, plant parts, cultivates, and hybrids. Utility patents
may also be obtained on plants if the invention is new, useful, and not obvious.

Provisional patents allow applicants to inexpensively establish an early filing date, or

constructive reduction to practice, for an invention described in the provisional application
without starting the 20 year patent term clock. It can provide up to twelve months to further
develop the invention, determine marketability, acquire funding or capital, seek licensing or
manufacturing.3

3
https://www.mondaq.com/india/patent/54494/patent-law-in-india ( last modified April 28, 2022)

6
What is not patentable?

Some inventions cannot be patented. Under the law of the European Patent Convention
(EPC) the list of non-patentable subject-matter includes methods of medical treatment or
diagnosis, and new plant or animal varieties. Further information on such fields can be
obtained from a patent attorney. Nor may patents be granted for inventions whose
exploitation would be contrary to public order or morality (obvious examples being land-
mines or letter-bombs).The following are not regarded as inventions: discoveries; scientific
theories and mathematical methods; aesthetic creations, such as works of art or literature;
schemes, rules and methods for performing mental acts, playing games or doing business;
presentations of information; computer software.

Under the Indian law the following are non-patentable (as mentioned under section 3 and 5 of
Indian Patents Act,

An invention which is frivolous or which claims anything obvious contrary to well

established natural laws. An invention the primary or intended use of which would be
contrary to law or morality or injurious to public health. The mere discovery of a scientific
principle or the formulation of an abstract theory.

The mere discovery of any new property or new use for a known substance or of the mere use
of a known process, machine or apparatus unless such known process results in a new
product or employs at least one new reactant.

A substance obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance The mere arrangement
or re-arrangement or duplication of known devices each functioning independently of one
another in a known way. A method or a process of testing applicable during the process of
manufacture for rendering the machine, apparatus or other equipment more efficient or for
the improvement or restoration of the existing machine, apparatus or other equipment or for
the improvement or control of manufacture.

A method of agriculture or horticulture. Any process for the medicinal, surgical, curative,
prophylactic or other treatment of human being or any process for a similar treatment of

7
animals or plants to render them free of disease or to increase their economic value or that of
their products.

No Patent shall be granted in respect of an invention relating to Atomic energy. Claiming

substances intended for use, or capable of being used, as food or as medicine or drug Relating
to substance prepared or produced by chemical processes (including Alloys, optical glass,
semiconductor and inter-metallic compounds), no patent shall be granted in respect of claims
for the substances themselves, but claims for the methods or processes of manufacture shall
be patentable. The criteria under the US laws are also quite similar as above. Books, movies,
and works of art cannot be patented, but protection is available for such items under the law
ofcopyright.4

History of Patents

The first patent law was passed by the city of Venice in 1474. It protected the interests of
inventors by assuring them the right to their inventions and prohibiting unauthorised copying.
In 1624, the Statute of Monopolies was enacted in England. This allowed patents to be
granted for a limited period to the true and first inventor. The increasing number of national
patent laws led in 1883 to the conclusion of the Paris Convention, providing a guarantee of
equal treatment for patent applicants in all its member states. It was originally adopted by 20
countries from around the world and has since been adopted by most others.

In addition, most of the world’s nations have signed several other treaties dealing with patent
issues during the 20th century. For example, more than 120 countries have signed the 1994
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This treaty
strengthened legal protection for patents worldwide.

In the United States, patent law dates to 1641, when the first patents for inventions were
issued by the Massachusetts Bay Colony for the manufacture of salt. The Constitution of the
United States, which became effective in 1789, gave Congress the power to enact federal
patent laws. Congress adopted the first patent law in 1790 as one of its first actions. It has
4
https://byjus.com/free-ias-prep/indian-patents-act/ ( last modified April 28, 2022)

8
frequently amended U.S. patent law since then. The current patent law was adopted in 1952
and is administered by the U.S.

Patent and Trademark Office (PTO), an agency within the Department of Commerce. Despite
the early development of patent law in the United States, there was no central administrative
office to determine the validity of U.S. patents until the PTO was established in 1836. Since
then, the PTO has examined all applications for patents to decide whether they meet the
requirements of the patent laws.

The Patent Act, 1970 came into force on 20.4.1972 replacing Indian Patents and Designs Act,
1911. The Patents Act, 1970 in comparison with Indian Patents and Designs Act, 1911 has far
more reaching effect in some areas such as food, Drug and Medicines where all the patents
granted under this category and deemed to be endorsed with the words License of Right.
India has become a member of the Paris Convention and PCT w.e.f. 7.12.1998 and by virtue
of this, the Head Office of Patent Office & its Branch offices have become receiving offices
for the purpose of international applications filed under PCT.

In view of these developments, the Patents Rules, 1972 have been amended by incorporating
a new chapter IIA dealing with international application which can be filed at Head office of
the Patent office at Calcutta or Branch Offices at Delhi, Chennai & Mumbai w.e.f. 17.11.99
as applicable. The present Act under Chapter IVA provides specific provisions for the grant
of EMR (Exclusive Marketing Rights) with a view to fulfill its international obligation under
the provisions of article 70.8 & 70.9 of TRIPs agreement which are in force w.e.f. 1.1.1995.5

Patent Offices

A U.S. patent for an invention is the grant of a property right to the inventor(s), issued by the
U.S. Patent and Trademark Office. Despite the early development of patent law in the United
States, there was no central administrative office to determine the validity of U.S. patents

5
https://byjus.com/free-ias-prep/indian-patents-act/ ( last modified April 30, 2022)

9
until the PTO was established in 1836. Since then, the PTO has examined all applications for
patents to decide whether they meet the requirements of the patent laws.

The right conferred by the patent grant is, in the language of the statute and of the grant itself,
"the right to exclude others from making, using, offering for sale, or selling" the invention in
the United States or "importing" the invention into the United States.

To get a U.S. patent, an application must be filed in the U.S. Patent and Trademark Office.
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered
inventors the option of filing a provisional application for patent which was designed to
provide a lower-cost first patent filing in the United States and to give U.S. applicants parity
with foreign applicants under the GATT Uruguay Round Agreements.

A provisional application for patent is a U. S. national application for patent filed in the
USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or
declaration, or any information disclosure (prior art) statement. It provides the means to
establish an early effective filing date in a non-provisional patent application filed under 35
U.S.C. §111(a). It also allows the term "Patent Pending" to be applied. A non provisional
utility patent application must be in the English language or be accompanied by a verified
translation in the English language and a fee set forth in 37 CFR §1.17(i).

Under the Indian Patents Act, 1970 sections 73-76 talk about Patent Office. It is the office
along with its branches established to administer various provisions relating the grant of
patent and maintenance of Register of patents under the Act. The Head Office of Patent
Office is located at Calcutta and branch offices are located at Mumbai, Delhi & Chennai.

The Patent Office is under the charge of Controller General of Patents, Designs & Trade
Marks who is the Controller of Patents for the purpose of the Act. The Central Government
has power to specify for the purpose of facilitating the registration of Patents, the
establishment of Head Office and branch offices at the places it may think fit. The Patent
Offices and branch offices shall have seal of Patent Office. The Patent office and its Branches
are having territorial jurisdiction on a zonal basis as given in the introduction chapter.

Officers and employees of the Patent Offices, who are in service, are prohibited from
requiring, taking any right or interest in a patent issued by the office directly or indirectly
except by inheritance or bequest. The Officers and employees are also prohibited from
furnishing information on a matter which is being dealt with under the Act and from assisting

10
in the preparation of a document to be filed in the Patent Office under the Act or for
conducting a search in the Patent office records except when required or authorized by this
Act or under the directions in writing of Central Government or Controller or by order of a
Court.

The European Patent Office (EPO) grants European patents for the contracting states to the
European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and
entered into force on 7 October 1977. It is the executive arm of the European Patent
Organisation, an intergovernmental body set up under the EPC, whose members are the EPC.

contracting states. The activities of the EPO are supervised by the Organisations
Administrative Council, composed of delegates from the contracting states. The European
Patent Convention (EPC) makes it possible to obtain patent protection in up to 20 European
countries on the basis of a single application. The applicant decides which countries the
European patent should cover. European patents are granted by the European Patent Office
(EPO) using a unitary and centralised procedure conducted in one of its three official
languages English, French or German. They have the same legal effects as national patents in
each country for which they are granted. European patents are cost-effective and time-saving
so as to obtain sound protection in a range of European countries.6

Identification of patents and patent applications.

An assignment relating to a patent must identify the patent by the patent number. An
assignment relating to a national patent application must identify the national patent
application by the application number (consisting of the series code and the serial number,
e.g., 07/123,456). An assignment relating to an international patent application which
designates the United States of America must identify the international application by the
international application number (e.g., PCT/US90/01234).

If an assignment of a patent application filed under 1.53(b) is executed concurrently with, or

subsequent to, the execution of the patent application, but before the patent application is

6
https://www.invntree.com/resources/patent-act-and-rules ( last modified May 01, 2022)

11
filed, it must identify the patent application by its date of execution, name of each inventor,
and title of the invention so that there can be no mistake as to the patent application intended.
If an assignment of a provisional application under 1.53(c) is executed before the provisional
application is filed, it must identify the provisional application by name of each inventor and
title of the invention so that there can be no mistake as to the provisional application
intended.

The patent or patent application to which an assignment relates must be identified by patent
number or application number unless the assignment is executed concurrently with or
subsequent to the execution of the application but before the application is filed. Then, the
application must be identified by the date of execution, the name(s) of the inventors, and the
title of the invention. If an assignment of a provisional application is executed before the
provisional application is filed, it must identify the provisional application by name(s) of the
inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly
filed patent applications as soon as possible. It is suggested, however, that an assignment be
written to allow entry of the identifying number after the execution of the assignment. An
example of acceptable wording is: 

"I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here
in parentheses (Application number, filed) the filing date and application number of said
application when known."7 

Filling of patent in India

In India as per the Patent Act of 1970, an application for a patent may be made by the actual
inventor of the invention, or an assignee of the right to make an application or a legal
representative of either. It is the person who first applies for a patent who is entitled to the
grant. A prior inventor of the invention who applies subsequently will not get the patent as
against the first applicant. A person who has merely communicated the idea to another, who
actually gave practical shape to the idea and developed the invention, cannot claim to be the
7
https://www.invntree.com/resources/patent-act-and-rules ( last modified may 01, 2022)

12
first and true inventor. A foreign national resident abroad is not prohibited from making an
application and obtaining a Patent in India.

An application for a patent in the prescribed form along with the prescribed fee should be
filed in appropriate office of the patent office. An application is required to be filed according
to the territorial limits where the applicant or the first mentioned applicant in case of joint
applicants for a patent normally resides or has domicile or has a place of business or the place
from where the invention actually originated. If the applicant for the patent or party in a
proceeding having no business places or domicile in India, the appropriate office will be
according to the address of service in India given by the applicant or party in a proceeding.

Patent Office Branch, Mumbai-

The States of Gujarat, Goa, Maharashtra, Madhya Pradesh and the Union Territories of
Daman and Diu and Dadra and Nagar Haveli

Patent Office Branch, New Delhi-

The State of Haryana, Himachal Pradesh,Jammu& Kashmir, Punjab, Rajasthan, Uttar

Pradesh and Delhi and the Union Territory of Chandigarh.

Patent Office Branch, Chennai-

The States of AndhraPradesh Karnataka, Kerala, Tamilnadu and Pondicheri and the Union
Territories of Laccadive, Minicoy and Aminidivi

Patent Office (Head Office), Kolkata - Rest of India

The application should be accompanied by a provisional or complete specification. A

provisional specification should describe the invention only briefly and need not contain the
claims. Where the application is accompanied by a provisional specification, a complete
specification should be filed within 12 months from the date of filing the application. If this is
not done, the application will deemed to be abandoned.

The complete specification should fully and particularly describe the invention and the
method by which it is to be carried out. It should disclose the best method of performing the
invention known to the applicant and end with a claim or claims defining the scope of the
invention for which protection is claimed. The claim should relate to single invention. They
should be clear and be fairly based on the matter disclosed in the specification. The

13
specification should be accompanied by drawings where appropriate and necessary. The
specification should relate to single invention.

The application is examined by examiners of patents to see whether it complies with the
requirements of the Act and the Rules, whether there is any lawful ground of objection to the
grant of patent, and whether the invention has already been published or claimed by any other
person. The examiner makes a search in publications available in the Patent Office and
specification of prior applications and Patents to see whether the same invention has already
been published or claimed or is the subject matter of existing or expired patents.

After examination of the application, the Patent Office will communicate to the applicant, the
objections if any to grant of a patent. The objections generally relate to the drafting of the
specifications and claims, anticipation of any of the claims in prior publication of any
specification or claims, or documents. In many cases these objections can be overcome by
suitably amending the description of the invention and the claims and in some cases by
insertion of the reference to the prior specification number. If the objections are not
satisfactorily met, the Controller of Patents, after giving an opportunity of hearing to the
applicant will refuse the application.

Where the application has satisfactorily removed the official objections the controller will
accept the complete specification and advertise it in the Official Gazette. From the date of
acceptance to the date of sealing of the patent the applicant will get the benefits of the grant
except that he will not be entitled to institute infringement proceedings until the patents is
sealed. Any person interested may give notice of opposition within three months from the
date of advertisement in the Official Gazette. The Controller will forward the copy a copy of
the notice of opposition to the applicant who may file their evidence in support of their
respective cases and the matter will be heard and decided.

Where an application is accepted either without opposition, a patent will be granted if a

request for sealing is made by the applicant. An inventor, if he so desires, may make a request
for mentioning his name in the patent. The Controller, if satisfied, will cause his name to be
mentioned as inventor in the patent granted, in the complete satisfaction and in the register of
patents. The mention of the inventors name in the patent will not confer or derogate from any
rights under the patent.

Under Indian law the term of patent is not the same for all kinds of invention as in most of
other developed countries. In respect of process patents relating to drugs and fruits, the term

14
is five years from the date of sealing the patents or seven years from the date of patent i.e. the
date of filing the complete specifications whichever is shorter. In respect of all other patents
the term is 14 years from the date of patent.

A patent can be kept alive only by paying the renewal fee from time to time. Also in case of
any improvement in or modification of a previous invention already patented, a patent called
patent of addition may be obtained. The term of the patent of addition will run concurrently
and terminate with the main patent. No renewal fee is payable so long as the main patent
remains in force.8

Patent Infringement

Patent infringement is a violation which involves the unauthorized use, production, sale, or
offer of sale of the subject matter or Invention of another’s patent. There are many different
types of patents, such as utility patents, design patents, and plant patents. The basic idea
behind patent infringement is that unauthorized parties are not allowed to use patents without
the owner’s permission.

When there is infringement of patent, the court generally compares the subject matter covered
under the patent with the used subject matter by the “infringer”, infringement occurs when
the infringer Uses patent material from in the exact form. Patent infringement is an act of any
unauthorized manufacture, sale, or use of a patented invention. Patent infringement occurs
directly or indirectly.

Direct patent infringement: The most common form of infringement is direct infringement,
where the Invention that infringes patent claims is actually described, or the Invention
performs substantially the same function.

Indirect patent infringement: Another form of patent infringement is indirect infringement,

which is divided into two types:

8
https://www.slideshare.net/soumyaathira/indian-patent-act-14927139 ( last modified May 02
2022)

15
  Infringement by inducement is any activity by any third party that causes another
person to infringe the patent directly. This may include selling parts that can only
be used realistically for a patented invention, selling an invention with instructions
to use in a certain method that infringes on a method patent or licenses an
invention that is covered by the patent of another. The inducer must assist
intentional infringement, but does not require intent to infringe on the patent.

 Contributory infringement is the sale of components of material that are made for
use in a patented invention and have no other commercial use. There is a
significant overlap with indications, but contributor violations require a high level
of delay. Violations of the seller must have direct infringement intent. To be an
obligation for indirect violations, a direct violation must also be an indirect act.9

Doctrine of Equivalents And Doctrine of Colourable Variation

Patent infringement generally categorized into two, i.e. literal infringement and infringement
in the doctrine of equivalents. The term “literal infringement” means that each element heard
in a claim has the same correspondence in the alleged infringement device or process.
However, even if there are no literal violations, a claim can be infringed under the doctrine of
equivalents if the accused device or some other element of the process performs the same
function, in substantially the same way to obtain substantially the same result. The principle
of equivalence is a legal rule in most patent systems in the world that allows a court to hold a
party liable for patent infringement, even though the infringing instrument or process does
not fall within the literal scope of the patent claim, but Still equal to the claimed Invention.

This is not an expansion of coverage of a claim permitted by the principle of equivalence.

Rather, the scope of coverage given to the patent owner is limited by

 (i) the “prosecution history estoppel” and

 (ii) the principle of the prior art.

9
Dhara Doshi , Compulsory License Regime of Intellectual Property Rights With Reference to TRIPS,
http://www.manupatrafast.com/

16
The analysis of infringement determines whether a claim claimed in a patent “literally reads
on the accused infringer’s instrument or process”, or covers the allegedly infringing device in
the doctrine of equivalents.

The steps in the analysis are:

 Oppose the scope of the “literal” language of claims.

 Comparing claims with the accused device or process to determine if there is a

literal violation.

 If there is no literal violation, reduce the scope of claims under the principle of
equality.
The doctrine of equivalents is considered as an equitable doctrine which effectively expands
the scope of the claims beyond their literal language to the true scope of the inventor’s
contribution to the art. However, there are limitations in the scope of equivalents to which the
patent owner is entitled.

Remedies for Patent Infringement

Patent infringement lawsuits can result in significantly higher losses than other types of
lawsuits. Some laws, such as the Patent Act, allow plaintiffs to recover damages. Patent
infringement is the illegal manufacture or usage of an invention or improvement of someone
else’s invention or subject matter who owns a patent issued by the Government, without
taking the owner’s consent either by consent, license or waiver. Several remedies are
available to patent owners in the event of an infringement. Measures available in patent
infringement litigation may include monetary relief, equal relief and costs, and attorneys’
fees.

Monetary Relief: Monetary relief in the form of compensatory damages is available to

prevent patent infringement:

1. Indemnity compensation – A patent owner may have lost profits for infringement
when they established the value of the patent.

17
 2. Increased damage – Up to three times, compensation charges can be charged in
cases of will or violation of will.

3. The time period for damages – The right to damages can be claimed only after the
date when the patent was issued and only 6 years before the infringement claim is
filed.
Equitable relief: Orders are issued by the court to prevent a person from doing anything or
Act. Injections are available in two forms:

1. Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits

that prevent parties from doing an act that is in dispute (such as making a patent
product)

2. Permanent injunction – A final order of a court which permanently ceases

certain activities or takes various other actions.10

Case Laws

Bristol-Myers Squibb Holdings & Ors. V. Natco Pharma, (2020) 266 DLT 724

In the present case, Delhi High Court passed an order holding that the discretionary reliefs
provided under Section 34 and Section 38 of the Specific Relief Act 1963 are not applicable
in patent disputes. Bristol-Myers Squibb Holdings Ireland Unlimited Company (hereinafter
referred as BMS) instituted a suit for patent infringement and sought permanent injunction
against Natco Pharma (hereinafter referred as Natco).
Brief facts of the case are:

1. Two Indian patents bearing numbers IN 243917 and IN 247381 containing the Markush

structure and the specific compound APIXABAN respectively were the basis of conflict in
this case.
2. Natco Pharma was planning to launch a generic version of Apixaban under the probable
brand name “Apigat”.

10
"Should compulsory licensing be allowed?” – The Times of India (14th March, 2012)

18
3. BMS sought for permanent injunction against Natco for APIXABAN (Patent No. IN
247381), valid till Sep, 2022, before the Delhi High Court. “Apixaban” used in the
prevention and treatment of thromboembolic diseases.
4. In June 2019, Natco on the other hand had filed a suit under Section 34 of Specific Relief
Act, 1963, in the District Civil Court, Hyderabad against BMS seeking a declaration that
APIXABAN is covered by a senior patent (Patent No. IN 243917) but not claimed therein,
and hence open for public use.
5. Before Delhi High Court BMS disclosed that they were also the owner of the senior patent
which was permitted with a Markush claim encompassing trillions of compounds inter
alia also generically covering APIXABAN. They also believed that the manufacture
of APIXABAN by Natco also infringed the senior patent.
6. Natco filed an application under Section 10 of CPC, 1908 seeking a stay on the ground of
pendency of the prior instituted Hyderabad suit. They also wanted to seek a proclamation of
non-violence under Section 105 and groundless threats under Section 106 of the Patents Act,
1970.
 Issues

 The main issues before the Hon’ble Court were:

1. Whether the proceedings in an infringement suit are liable to be stayed under Section 10 of

the Code of Civil Procedure (CPC) owing to a declaratory suit previously filed by the other
party in a different civil court?
2. Whether the reliefs provided under Sections 34 and 38 of the Specific Relief Act 1963 are
applicable in a patent infringement?
 Arguments

 1) By Plaintiff i.e., BMS

 BMS contended that the senior patent (Patent No. IN 243917) contains a Markush
structure which could result in millions of compounds. It has a wide coverage but
doesn’t specifically disclose Apixaban. Therefore, Apixaban is not the subject matter
of protection in Patent IN 243917.
 They argued that this infringement suit and the declaration suit in Hyderabad are not
of the same subject matter and hence, Section 10 of CPC is not valid. This patent
infringement is about IN 243381 and not the senior patent IN 243917.

19
 Further they contended that Hyderabad suit has been filed under Section 105 of the Patents
Act, 1970 but the requirement under the said provision have not been fulfilled by Natco.
 

2) By Defendant i.e., Natco

 

 They argued that the patent held by BMS (Patent No. IN 243917) covers ‘Apixaban’ but
doesn’t specifically disclose it in the claims and thereby surrenders to the public.
 They further argued that BMS is trying to secure monopoly by ever greening their patent.
They contended that the senior patent claims ‘Apixaban’.
 They contended that the Hyderabad suit was instituted under Section 34 of the Specific Relief
Act, 1963.
 They contended that since the Hyderabad suit was instituted prior to the suit by BMS, the suit
before the Delhi High Court was liable to be stayed until the proceedings in the Hyderabad
suit were concluded.
 

Judgement
 Court relying on various judgements held that:

“On 23rd Jan 2020, the Hon’ble Delhi High Court observed that the patent related affairs
were subject to Patents Act, Thus the defendant could not seek declaration of non-
infringement under Specific Relief Act, 1983. The court considered the non-obstante clause in
Section 105 of the Patents Act which specifically excludes Section 34 of SRA, 1983. The
Court also observed that the Defendant in the Hyderabad Suit was effectually questioning the
validity of the senior patent which cannot be adjudicated by a Civil Court under the scheme
of the Patents Act. Furthermore, the Hyderabad Civil Court was not a competent court to
grant reliefs sought in the Delhi Suit as well as the Hyderabad Suit, which is one of the
compulsory pre-requisites for entertaining an application for stay of a subsequent suit under
Section 10 of The Code of Civil Procedure (CPC) Therefore, in the light of the following
observation the Court dismissed the application of Natco under Section 10 of CPC for a stay
of the Delhi suit, and relegated the matter to trial.”

20
This judgement simplifies the legal position that any issue with regard to patents is to be
agitated within the contours of the Patent Act and not beyond. By the way of clever drafting,
one cannot defeat or delay the valuable rights of patent owners.11.

Interdigital Vs.Xiaomi 3 May, (2021)

The concept of anti-suit injunction and anti-enforcement injunction is gaining prominence
worldwide including in India. Recently, the Delhi High Court in Interdigital Technology
Corporation vs. Xiaomi Corporation & Ors. granted an anti-enforcement injunction. It was
held that a foreign court cannot restrain a party from pursuing its cause before Indian Court
when Indian jurisdiction is the only forum competent to adjudicate the claim. In this article,
the author will try to analyze why this judgment is a breakthrough for international dispute
redressal proceedings. The article will also focus on the implications of this judgment.

Background of case
Interdigital had filed a case of infringement against Xiaomi in July 2020 in the Delhi High
Court for the alleged use of technology of their SEPs without due authorization. Interdigital
claimed that it grants licenses at rates that are fair, reasonable, and non-discriminatory
(FRAND). In this case, the plaintiffs did not seek an absolute injunction against the
defendants from using SEPs but sought an injunction in case they don't acquire licenses at
FRAND rates.

The case filed in India is inextricably linked with China where prior to the case of
infringement filed in the Delhi High Court, the defendants had already filed SEP royalty rate-
setting suit before the Wuhan Court. In Wuhan Court, the defendants sought to fix the global
FRAND rate of worldwide SEPs of the plaintiffs, on the basis of which they could obtain a
license from the plaintiffs. Further, the defendants filed an anti-suit injunction before the
Wuhan Court for restraint from prosecuting the suit before the Delhi High court. Vide order
dated 23rd Sept 2020, the Wuhan Court issued directions for either withdrawing or
suspending the application for temporary or permanent injunction in China or elsewhere
besides imposing a fine of RMB 1 million yuan per day calculated from the date of violation
of the order of the Wuhan Court.

11
Bristol-Myers Squibb Holdings & Ors. V. Natco Pharma, (2020) 266 DLT 724 Case Analysis,
www.academia.edu

21
By the present application (anti-anti-suit), the plaintiffs sought an injunction against the
defendants from enforcing against them, the directions of the Wuhan Court. Thus, the issues
relating to the jurisdiction of China and India, comity of courts, and several other issues.

Arguments
Before Delhi High Court, the plaintiffs argued that the suit filed in India was filed a seeking
anti-enforcement injunction against infringement of the Plaintiff's Indian suit patents and was
preferred under section 104 of the Indian Patents Act. It was also argued that the Wuhan
Order prevented the plaintiffs from seeking appropriate remedy available under the Indian
laws and thus, amounted to interference in the laws of a sovereign country. Additionally,
Plaintiffs claimed the order to be vexatious and oppressive in its operation and effect. On the
other side, the defendants stated that the plaintiffs' suit relating to FRAND rates is already
under consideration at the Wuhan Court. Therefore, this is an overlap of the subject matter
being taken up in two different jurisdictions. Defendants also made it clear that it is very
likely that the two courts may arrive at different conclusions destroying the comity of courts.
Lastly, the defendants insisted not to interfere in the matter in which a foreign court ensured
compliance with its order.

Judgment
In the final judgment delivered on 3rd May 2021, the Delhi High Court created history by
confirming and making absolute India's first anti-enforcement injunction granted in favor of
US technology giant and innovator, interdigital and against Chinese multinational Xiaomi
Corporation. The court observed that the Wuhan Court failed to consider the fact that the
cause of action arose in India as the proceedings before it was of perceived infringement of
six specific Indian patents.

There are no specific rules pertaining to the grant of anti-suit injunction in India, however,
the jurisprudence has been developed on the basis of considerable precedence. The Court
placed reliance on the principles laid down in the case of Modi Entertainment Network and
held that a substantial part of the cause of action arose within the jurisdiction of the Court and
that the parallel suit filed is vexatious, oppressive, and prevents the Plaintiff from availing the
remedies.

Further, the court pointed on the distinction between an Anti-Suit injunction; an Anti-Anti-
Suit injunction, and an Anti-Enforcement injunction. It was also observed that as Wuhan

22
Anti-Suit proceedings had already concluded, the Indian injunction was in the nature of an
Anti-Enforcement injunction. The High Court clarified that there is no reason for an anti-
enforcement injunction to be seen as rarer than an anti-suit injunction, however, owing to the
delicate nature of the proceedings, Courts must continue to exercise caution while granting
any such request. The Court upheld the principle that Comity is a two-way street after all.

It was also pointed by the court that even if the notice was issued to the plaintiff but the
proceedings were not transparent in this case as the copy of the anti-suit injunction
application filed by the defendants in the Wuhan Court, was never provided to the plaintiff.
Additionally, any overlap between the proceedings in Wuhan and those in India is minor, and
unless an overlap is such that it makes the Indian proceedings oppressive and vexatious, there
was no reason for the Wuhan Court to have restrained Interdigital from pursuing its claims
for an injunction against Xiaomi in India.

Further, the Court went on to conclude that if the Wuhan Court enforces its anti-suit
injunction order, and directs the plaintiff to deposit penalties for prosecuting its Indian suit,
then Xiaomi must compensate plaintiffs by depositing a corresponding amount with the court
in India.

Analysis

Grants of anti-enforcement suit and other subsequent reliefs have set a new tone of
precedents.  This is a positive and welcome development for litigants in India. With this
decision, the Delhi High Court has opened doors to new principles of Indian jurisprudence
that govern the grant of an anti-anti-suit or an anti-enforcement injunction. These principles
will surely shed light on this area as there was no precedent in Indian law for this aspect
previously. The court has given special mention to the limited application of the principle of
comity of courts, especially when the impugned order itself was oppressive and did not
respect the jurisdiction of an Indian court to adjudicate matters covered under Indian law. It is
necessary for courts to balance the rights of the parties along with providing justice and
equity while determining each case on its own merits. After this judgment, it is very likely
that we might see the litigants making use of principles involving anti-suit injunctions.
Hence, this judgment will contribute immensely not only to Indian but also to international
jurisprudence.12
12
Interdigital Vs.Xiaomi 3 May, 2021, Case Analysis, www.academia.edu

23
Astrazeneca AB & ANR. Vs. Intas Pharmaceuticals Limited, 18 Nov (2021)

One of the Land mark judgment that came up in patenting of pharma in the In Indian territory
this year is from the Delhi High Court on double patenting. In a recent Judgment by Delhi
High Court on 20 July, 2021  in Astrazeneca Ab & Anr v. Intas Pharmaceuticals Ltd. the
court held against Astrazeneca reaffirming that one product cannot be covered by more than
one patent with some  significant findings on  double patenting. The decision deals with
Astrazeneca AB’s (“Astrazeneca”) patents IN 205147 (“IN 147”) and IN 235625 (“IN 625”)
which cover the product compound ‘Dapagliflozen’ (“DAPA”)

FACTS

IN 147 and IN 625 were initially granted to Bristol Myers Squibb Company, in which
through an Assignment Deed dated 1st February, 2014, assigned the rights therein to the
appellant/plaintiff AstraZeneca AB, Sweden. The subject matter of the two patents is the
product Dapagliflozen’ (DAPA) which is a kind of SGLT2 inhibitor which is useful in
treatment of Type -2 Diabetes mellitus. The said drug is being administered in order to
prevent the kidney from reabsorbing glucose, so that it normalizes plasma glucose by
enhancing excretion of glucose in urine and, thereby improving insulin sensitivity

IN 147 covers the genus patent titled “A C-ARYL GLUCOSIDE” which was filed on
02.10.2000 got expired in 02.10.2020. IN 147 is a Markush structure i.e. a patent covering a
group of compounds, disclosing the possibility of individual permutations and combinations
running into several million structurally diverse compounds. IN 625          titled “A
COMPOUND (2S,3R,4R,5S,6R)-2(4-CHLOTO-3(4-ETHOXYBENZYL)PHENYL)-6
(HYDROXYMETHL) TETRAHYDRO-2H-PYRAN-3,4,5-TRIOL AND COMPOSITION
COMPRISING THE SAME” is the species patent which was filed on 15.05.2003 is an active
patent expiring in 15.05.2023. Sun Pharma Laboratories Limited and Abbott Healthcare
Private Limited respectively were the distributors of the appellants/plaintiffs (Astrazeneca
AB) to sell the said drug in India. Further, according to a press release AstraZeneca Pharma
India said, AstraZeneca India and Abbott have mutually terminated the distribution
agreement on May 27, 2021 for the type 2 diabetes medicine Dapagliflozin in India.” Also,
AstraZeneca India continued to independently market Dapagliflozin, the combinations of
Dapagliflozin and Metformin as well as Dapagliflozin and Saxagliptin in India under the
brand names Forxiga, Xigduo and Qtern respectively.

24
The appellants/plaintiffs (Astrazeneca AB) filed infringement suits against Micro Labs Ltd,
Ajanta Pharma Ltd, Intas Pharmaceuticals Ltd, Torrent Pharmaceuticals Ltd and Alkem
Laboratories Ltd before the expiry of the twenty-year term of IN 147 for both the patents
IN147 as well as IN625. Later on, infringement suit with respect to IN625 was filed after the
expiry of IN147 against MSN Laboratories, USV Pvt Ltd, Zydus Healthcare Ltd, Zydus
Medica and Eris Lifescience where all constitutes the ‘Defendants”. One of the main point to
be noted is that  the court observed, that the challenge in all the nine appeals is of  two
orders/judgments,  where  both the orders/judgments were pronounced within a span of 16
days, with both, independently of each other, on the same facts, concluding that the
appellants/plaintiffs, during the pendency of the suits for permanent injunction to restrain
infringement of patent, are not entitled to any interim injunction restraining
respondent(s)/defendant(s) from manufacturing and selling the pharmaceutical products
which are alleged to be in breach of the patent of the appellants/plaintiffs. Further, in the
judgment dated 2nd November, 2020, the interim injunction claimed by the
appellants/plaintiffs was declined but the respondent(s)/defendant(s) were directed to place
on record the details, quantum and value of the drug manufactured and sold as also indirect
and direct taxes paid in that behalf as well as their assets, from which the damages, if any
awarded against them, could be recovered.

Plaintiffs
Few of the arguments put forward by the plaintiffs were in distinguishing the claims
pertaining to the compound. The plaintiffs argued that   IN 147 is the genus patent and IN
625 is the species patent. IN147 is a Markush structure with 22 variables and group of
compounds, in millions of permutations and combinations one of which is DAPA. The
plaintiffs also pointed out that DAPA is not obvious from IN 147 because IN 147 has a
million possibilities. Further, that DAPA, in India, had neither been subjected to any pre-
grant or post-grant opposition, nor any revocation proceedings with respect to DAPA filed
prior to the year 2020. Also, the plaintiffs argued that the respondent(s)/defendant(s) started
infringing IN 147 and IN 625 and some of the respondent(s)/defendant(s) also initiated post-
grant opposition, revocation proceedings or counter-claims against IN 625. According to the
Plaintiffs IN 147 is different from the invention claimed in IN 625 and that that IN 147
claims a class of compounds of the Markush structure but  IN 625 has only one specific
molecule i.e. DAPA. Thus, as distinct from the genus patent IN 147, the species patent IN
625 concerns DAPA, which was invented in the year 2001 only and is separately protected as

25
an invention, distinct from the genus invention. The Plaintiffs also affirmed that the United
States of America (USA/US) also, there was no publication of the patent corresponding to IN
147 prior to the filing of the patent corresponding to IN 625. Also, as per the Plaintiffs IN 625
is in the 18th year of its life-cycle and is an old and established patent and thus carries with it
presumption of its validity. IN 625 was subjected to examination in the Indian Patent Office,
between the years 2002 and 2009, so as per the arguments of the Plaintiffs,  proceedings
initiated for the first time in the year 2020, for revocation of IN 625, are mala fide and a
counterblast to the infringement actions undertaken by the appellants/plaintiffs.

Defendants
As per the defendants, the contention of the appellants/plaintiffs that DAPA, though covered
in IN 147, was not “disclosed” and relying upon the Markush structure and in contradiction to
that initiating an infringement action against the dependents in the matter of, both for IN 147
and IN 625, thus was sufficient at that stage to hold that DAPA was claimed in both the
patents. Also, there was a definite assertion by the appellants/plaintiffs before the USPTO as
well as before the Courts in USA in the proceedings against Zydus Pharmaceuticals USA,
that the DAPA was covered in US patents corresponding to both, IN 147 and IN 625. Further,
to be noted that that before the USPTO, the appellants/plaintiffs, to obviate the rejection of
US application corresponding to IN 625 on the ground of obviousness/double patenting,
agreed that the validity period of US patent corresponding to IN 625 would end on the same
day on which the validity period of US patent corresponding to IN 147 would end. Further, in
the working statement in Form 27 filed in relation to IN 147, also furnished the working of
DAPA, again admitting DAPA to have been part of IN 147.

Judgment –Key takeaways

The court observed that IN 147 having disclosed DAPA, IN 625 having no technical
advancement from IN 147; and for the reason of the appellants/plaintiffs failure to furnish
information under Section 8 of the Patents Act being an important factor to be taken into
account at a preliminary injunction stage, the impugned order/judgment dated 18th
November, 2020 holds. The court also observed that the inventor of both, IN 147 and IN 625
and/or of US equivalents thereof was/is the same and thus best placed to know the inventive
step i.e. technical advancement in the invention subject matter of IN 625, over that of the
earlier invention subject matter of IN 147. The Court observed that the Plaintiffs have already
applied for and agreed to the validity period of US patent equivalent of IN 625 ending on the

26
same day as the validity period of the US patent equivalent to IN 147 before the USPTO, thus
the plaintiffs cannot claim different periods of validity of the two patents in India. The court
refused to accept the Appellant’s contention that DAPA was disclosed generally in IN’147
whereas the same was disclosed specifically in IN’625, thus with respect to one invention,
there can be only one patent. Therefore, as per the judgement appellants/plaintiffs herein
however, while claiming one invention only i.e. DAPA, are claiming two patents with respect
thereto, with infringement of both, by the respondent(s)/defendant(s), where the above
mentioned   strikes at the very root of the claim of the appellants/plaintiffs and disentitles the
appellants/plaintiffs from any interim relief. Further, as per the judgement, the court said “no
merit in the appeals, which are dismissed, with costs assessed at Rs.5,00,000/- .to the
respondent(s)/defendant(s) in each of the suits”.

Conclusion 
Like few the instances in the past, in the Indian patent regime where the court had an
interference upon ever greening, this would be another add on. The court in its judgment has
indicated that if patents with respect to the same invention can be granted more than once
successively in time, the same will negate the legislative intent of limiting the life of the
patent and enable the patentee to prevent others from making, using or offering for sale, the
new product invented by the patentee, till the time patentee successively keeps on obtaining
patent therefore. However, in the course of time, pharma IP in India may be expected to have
more twists and turns, that may contribute to better accessibility to medicines simultaneously
arriving at a more innovation friendly ecosystem and redefined national policies.13

Merck Sharp & Dohme Corp & Anr Vs. SMS Pharmaceuticals Limited. July .20.2021

The Plaintiff: MERCK SHARP AND DOHME CORP. & ANR

The Defendant: SMS PHARMACEUTICALS LIMITED

Court: The Delhi High Court

13
Astrazeneca AB & ANR. Vs. Intas Pharmaceuticals Limited, 18 Nov ( 2021) Case Analysis,
www.academia.edu

27
Coram: HON’BLE MR. Justice C. Hari Shankar

Pronounced on: 20.07.2021

Background of the Case

On 21st October, 2020 the Delhi High Court delivered its judgement on the case of
infringement of the patent of Sitagliptin, an anti-diabetic drug. In the Present matter, the
plaintiff (Merck Sharp and Dohme Corporation) sought injunction against infringement by
the defendant, of the plaintiff’s invention, Sitagliptin, an anti-diabetic drug (Indian Patent No.
209816 (“IN’816”, in short).

The plaintiff contended that the defendant by advertising, for sale, Sitagliptin Hydrochloride
in its Active Pharmaceutical Ingredients (APIs) and Analytical Standards has infringed IN
‘816 of the plaintiff.

In the present case, the Delhi High Court observed that the defendant is advertising the sale
of drug Sitagliptin. The defendant affirmed the availability of Sitagliptin Phosphate for a sum
of Rs. 1 lakh for 1 Kg to the investigator during an inquiry. Further, the court opined that the
plaintiff has a valid and subsisting patent being IN ‘816 for which a certificate of validity has
already been granted by the court.

The court later granted an ex-parte ad-interim injunction in the favour of the plaintiff and
against the defendant and the ex-parte ad-interim order continues to remain in force till date.

Factual matrix of the case:

In the present case, Ms. Meenakshi Arora, senior counsel, who appeared for SMS
Pharmaceuticals Ltd.(defendant) filed an application under Order XXXIX Rule 4 of the
Code of Civil Procedure, 1908 (CPC) seeking vacation/modification of the ex-parte ad
interim order, dated 21st October, 2020 passed by the Court earlier in the present
proceedings.

28
The defendant has responded to the contentions by the plaintiff through a written statement,
mentioning the fact that the defendant is a 30-year-old Research and Development based
Active Pharmaceutical Ingredients (API) manufacturing Group that has a client base in over
70 countries.

Issue before the Court:

Whether SMS Pharmaceuticals Ltd. (Defendant) should be allowed to export the API
Sitagliptin to Chemo and Verben?

Contentions by the Plaintiff

The plaintiff contended that the disclaimer is merely in the nature of a tactic to enable
commercial exploitation by the defendant.

Further, the plaintiff submitted at the bar that once the drug is permitted to be exported, it is
impossible for the plaintiff to verify or investigate whether it is ultimately being used for the
research and development purposes or is being exploited. The plaintiff also contended that
the exports of Sitagliptin by the defendant have been continuing since 2016 and almost 800
kg have been exported till now. Such a transaction could not be treated as being aimed at
research and development (Mr. Anand referred to the judgement of the Chancery
Division of the High Court of U.K. in the case of Merck Sharp Dohme Corp. v. Teva
Pharma B.V.).

The plaintiff also stated that there is no material available which can claim that Chemo and
Verben are sister concerns of the plaintiffs. They, therefore, are third party entities, located
outside the jurisdiction of this Court, against whom it would be quite impossible for the
plaintiffs to proceed. Also, there is no compliance, by the defendant, with the conditions laid
down by the Division Bench of this Court in Paras 112 and 113 of the report in Bayer
Corporation.

Contentions by the Defendant:

29
The defendant contended that the dealings of the defendant is the result of a joint venture
between the defendant and M/s Cheo AG Lugano (“Chemo” in short), for development and
manufacturing of certain products, so that the products could be launched in the market after
patent terms expired. The senior counsel also claimed that the defendant has already obtained
the due permission from Governmental and Drug Control Authorities and all the dealings of
the defendant are within the scope of patent laws.

Further, the defendant claimed that the no manufacture or production of these drugs are for
commercial purposes. The sole intent of the defendant is to launch these drugs in a generic
form at an affordable price after the patents granted in respect of the APIs in the said drugs
expired. The defendant only supplied Sitagliptin Hydrochloride as a means to conduct
research and development purposes after getting the due approval by the Drug Control
Authorities.

The defendant also contended that they have never sold Sitagliptin Hydrochloride in
commercial quantities or to any clients who are using it for commercial purposes. Every sale
of the defendant was duly licensed by the Drug Control Authorities. The defendant referred
to the Section 107A of the Patents Act, along with the judgement of the court in Bayer
Corporation v. U.O. I., to contend that the activities and working of the defendant were
permissible, as the defendant was only engaged in sale and export of Sitagliptin
Hydrochloride for the purposes of research and development.

The senior counsel also dealt with each point with the various results that were cited by the
plaintiff as having been obtained at the time of the investigation. The defendant showed that
these results do not, in any way, prove that the defendant was selling Sitagliptin
Hydrochloride for commercial purposes or in commercial quantities (while giving the
reference to the Section 107A of the Patents Act).

The defendant in the written statement (Para 53) marked attention to the disclaimer, that is
mentioned on the defendant’s website, which reads:

“Some of the products may have patent rights in one or more countries and any such product
having an existing patent will not be offered/sold for commercial requirements. The final
responsibility with respect to the third-party patent rights lies exclusively with the buyer.”

30
Present Application

In the end, by the present application under Order XXXIX Rule 4 of the CPC, the defendant
has sought modification/vacation of the ex parte interim order dated 21st October, 2020,
citing in their favour Section 107A of the Patents Act.

The defendant has also relied on the following order passed by a coordinate Bench of this
court on 27th August, 2020 in CS(COMM) 195/2020, which is also related to Sitagliptin. In
the said order, the Court modified the earlier injunction order granted against manufacture
and dealings in Sitagliptin, by allowing usage of the Sitagliptin API by the defendant for
research and development purposes, subject to compliance with the directions, in that regard,
contained in the judgement in Bayer Corporation.

The Bayer Takeaway by the Court

In the present case, the fundamental decision in the Bayer Corporation is of the learned single
Judge and the Division Bench, is that there can be no restraint of export of a patented
invention, provided such export is for research and development purposes. The Division
Bench have upheld the right, conferred by Section 107A of the Patents Act, as inviolable.

Judgement of the Court

In this case, the court opined that the defendant’s prayer for being extended the benefit of
section 107A of the Patents Act deserves to be allowed. The court allowed the defendant to
export the API Sitagliptin to Chemo and Verben, as prayed.

For this purpose, the defendant has to file, before such export, an affidavit before this Court
by clearly stating the quantities of Sitagliptin/ Sitagliptin Hydrochloride. The affidavit shall
also contain an undertaking that the exports are intended only for the purposes of research
and development by the foreign buyers Chemo and Verben.

The court also gave instructions to the defendant to comply with all the safeguards contained
in the judgement of the Division Bench of this Court in Bayer Corporation.

31
The ex parte ad interim injunction granted by the Court on 21st October 2020 stands
modified accordingly.14

Conclusion

Patents can provide great value and increased returns to individuals and companies on the
investment made in developing new technology. Patenting should be done with an intelligent
strategy that aligns business interests to implement the technology with a wide range of
options in the search for how, where and when to patent. As an example, with a focus on
international considerations and regulations in specific countries, it is possible for a company
to achieve significant savings and improve the rights gained using patents.

14
Merck Sharp & Dohme Corp & Anr Vs. SMS Pharmaceuticals Limited. July .20.2021 Case Analysis,
www.academia.edu

32