CLASS MOOT (2022-2023)

BEFORE THE HONOURABLE H IGH C OURT OF DELHI

IN THE MATTER UNDER

SECTION 64(1) OF THE PATENTS ACT, 1970

Between:

TIA …PLAINTIFF

V.

ROHIT …DEFENDANT

NO. ______ OF 2022

WRITTEN SUBMISSION OF THE COUNSEL APPEARING ON BEHALF OF THE DEFENDANT

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TABLE OF CONTENTS

TABLE OF CONTENTS..........................................................................................................II

LIST OF CASES......................................................................................................................III

LIST OF ABBREVIATIONS..................................................................................................IV

INDEX OF AUTHORITIES.....................................................................................................V

STATEMENT OF JURISDICTION........................................................................................VI

SUMMARY OF FACTS........................................................................................................VII

ISSUES RAISED.....................................................................................................................IX

ARGUMENTS ADVANCED..............................................................................................XIV

CONTENTION 1. THAT THE PATENT GRANTED TO THE PLAINTIFF SHOULD BE

REVOKED.........................................................................................................................XIV

1.1. The Computer Application Is Non-Patentable................................................XIV

PRAYER...............................................................................................................................XXI

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LIST OF CASES

S No. Title of the Case

Amar Singh v. State (NCT of Delhi), 2020 SCC OnLine SC 826
01

02 Balaji Gunthu Dhule v. State of Maharashtra, (2012) 11 SCC 685

03 Gofur Sheik V State ,1984 Cr.L.J. 559 (Cal) (DB)

Hanumant Govind Nargundkar v State of M.P. AIR 1952 SC 343
04
Jagdeo Singh v. State, 1979 Cri LJ 236
05
Joseph v. state of Kerala SC,2002
06

07 Karunakaran v. State of Tamil nadu 1976 SCR (2) 708

Lachman Singh And Others vs The State (1952 AIR 167, 1952 SCR 839)
08
Pannayar V State of Tamil Nadu (2009) 9 SCC 152
09

10 Rajeev Kumar v State of Bihar, SC 2017

Ramnaresh & Ors vs State of Chhattisgarh (2012, SC)
11
Ramji Surjya & Another vs State of Maharashtra 1983 AIR 810, 1983 SCR (3) 268
12

13. Slam Pratap V State, 1967 All. W.R. (H.C.)

State of U.P. v Ravindra Prakash Mittal (AIR 1992 SC 2045)
14.

15. State of Chhattisgarh v. Gurudeep, 2018 SCC OnLine Chh 271

Suresh Murlidhar Bhagat vs State of Maharashtra on 21 June, 2004[ I (2005) DMC 777, 2004 (4)
16. MhLj 366]

Umedbhai v State of Gujarat AIR 1978 SC 424

17.
Vadivelu Thevar v. State of Madras [1957] SCR
18.
 

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LIST OF ABBREVIATIONS

§ Section

¶ Paragraph

A.I. R All India Reporter

Art. Article

Bom. Bombay

Comm. Commission

Const. Constitution of India

Corp. Corporation

Ed. Edition

Govt. Government

HC High Court

Hon’ble Honourable

NDPS Narcotic Drugs and Psychotropic Substances Act, 1985

CrPC Criminal Procedure Code, 1973

Pg. Page

Prop. Proposition

SC Supreme Court

SCC Supreme Court Cases

SCR Supreme Court Reporter

U.O.I. Union of India

v. Versus

Vol. Volume

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INDEX OF AUTHORITIES

STATUTES REFERRED

 T HE P ATENTS ACT, 1970

 THE COPYRIGHT ACT, 1957

BOOKS REFERRED:

LEXICONS

 BRYAN A. GARNER, BLACK’S LAW DICTIONARY, 10THED. (2018).

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STATEMENT OF JURISDICTION

THE DEFENDANT HAS INVOKED THE JURISDICTION OF THE HON’BLE HIGH COURT OF
DELHI UNDER SECTION 64(1) OF THE PATENTS ACT, 1970.

THE RELEVANT PORTION OF SECTION 64(1), THE PATENTS ACT, 1970

Revocation of patents.

Subject to the provisions contained in this Act, a patent, whether granted before or after the
commencement of this Act, may, 149 [be revoked on a petition of any person interested or of
the Central Government by the Appellate Board or on a counter-claim in a suit for
infringement of the patent by the High Court] on any of the following grounds.

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SUMMARY OF FACTS

1. Tia developed a computer application based on an Image enhancing computer

software program.
2. The invention relates to a method by which real life images taken with mobile phone
cameras are caricatured with the help of a real time editor so that the persons/objects
appearing in the image are made to appear cartoon like.
3. One of Tia’s friend, Aditi used to live with her in the same rented flat in Delhi since
2018.
4. Tia and Aditi used the same desktop for computer work for their office uses.
5. Aditi copied the application from the desktop and passed on to a start-up initiated by
her brother Rohit. Meanwhile Tia got patent for her invention.
6. On 15th July, 2022, she got to know about her application being used by Rohit’s start-
up pretending it to be their own and using it in business with cartoon motion picture
companies.
7. Tia filed a suit for infringement of patent against Rohit. Rohit filed counter claim for
revocation of patent siting section 64 read with section 3(k) of the Patent Act, 1970 as
the ground of revocation.

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ISSUES RAISED

ISSUE 1:

WHETHER THE P ATENT GRANTED TO THE PLAINTIFF CAN BE REVOKED UNDER THE P ATENT A CT, 1970 OR NOT?

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ARGUMENTS ADVANCED

CONTENTION 1. T HAT THE PATENT GRANTED TO THE PLAINTIFF SHOULD BE

REVOKED.

It is humbly submitted before this Hon’ble court that the patent granted to the plaintiff should
be revoked u/s 64 read with Section 3(k) of The Patents Act, 1970.

1.1. THE COMPUTER APPLICATION IS NON-PATENTABLE .

A patent provides the inventor with the protection against the unauthorized use of the
new product or the new technology which is the subject matter of the Patent. The Patent must
be new to the rest of the world, meaning that it is not published, used, and not known to any
person working in that particular field. This protection for granted patent is for a limited
period.

1.1.1 Non-Patentable Inventions

Under the (Indian) Patents Act, 1970 the validity of a patent can be challenged in any of
the following ways:-

 Opposition within one year from the date of publication of grant.1

 Revocation petition filed with the Appellate Board (IPAB).2
 Filing of a counterclaim in a Patent infringement suit.3
 Revocation of a patent due to non-workability.4
 Revocation of a patent in Public interest by Central Government.5
 In cases relating to atomic energy on the directions of the Central Government.6

Under Section 3 (k) of the Patents Act, 1970, mathematical methods, business methods,
computer programmes per se and algorithms are not considered as patentable inventions. In
relation to computer programs, the law provides a qualification that what is not patentable is
1
Section 25(2), The patents act, 1970
2
Section 64 The patents act, 1970
3
Section 64 The patents act, 1970
4
Section 85 The patents act, 1970
5
Section 66 The patents act, 1970
6
Section 65 The patents act, 1970
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only computer program per se. The legislative intent behind the use of the term "per se" was
elucidated in the Joint Committee Report when they introduced the Patents (Amendment)
Act, 2002, which stated, "This change has been proposed because sometimes the computer
program may include certain other things, ancillary thereto or developed thereon." If they are
inventions, the purpose here is not to deny them a patent. The computer programs
themselves, on the other hand, are not meant to be patentable

The term computer programme has been defined in the Copyright Act 1957 as "computer
programme" means a set of instructions expressed in words, codes, schemes or in any other
form, including a machine-readable medium, capable of causing a computer to perform a
particular task or achieve a particular result.”7

Essentially, all computer programmes need a combination with some hardware for their
functionality. In an application for patent for a new hardware system, the possibility of a
computer programme forming part of the claims cannot be ruled out. It has to be carefully
considered as to how integrated is the novel hardware with the computer programme.

Practitioners should also outline the nature of the technical problem addressed by the
invention while taking care to explain the technical solution chosen by the invention.
Numerous recent Patent Trial and Appeal Board cases apply this approach.8

'New invention' means any invention or technology that has not been anticipated by
publication in any document or used in the country or elsewhere in the world before the date
of filing of a patent application with complete specification, i.e., the subject matter has not
fallen into the public domain or that it does not form part of the state of the art," according to
the Patents Act 1970.9

1.1.2 The Computer Application is not an inventive step

As per section 2(1)(ja), "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic significance or
both and that makes the invention not obvious to a person skilled in the art.

7
Section 2(ffc), The copyright act 1957
8
See, Ex Parte Fautz (U.S. Patent App. No. 14/326,661); Ex Parte Kimizuka (U.S. Patent App. No. 13/871,055);
Ex Parte Olson (U.S. Patent App. No. 11/715,923); Ex Parte Savescu (U.S. Patent App. No. 12/468,616); Ex
Parte Hannun (U.S. Patent App. No. 14/735,002); Ex Parte Smith (U.S. Patent App. No. 13/715,476).
9
Section 2(1)(I), The patent act, 1970
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In Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd. 10 The Hon'ble
Supreme Court has laid down the test for the purposes of ascertaining as to what constitutes
an inventive step which is to be seen from the standpoint of technological advancement as
well as obviousness to a person who is skilled in the art.

a) In order for the subject matter to constitute an inventive step, the alleged invention
should be more than a mere workshop improvement.
b) In case of an improvement patent, the improvement must itself constitute an inventive
step.
c) If the alleged invention, constitutes known elements or a combination of known
elements the result must be new, or result in an article substantially cheaper or better
than what existed.
i) The Computer Application does not have any technical effect
The subject matter of the patent in Burroughs Corpn. (Perkins’) Application
involved a method of causing computers to interact with one another and
transmit information from one computer to another. Their Honours went
further and concluded by way of obiter dicta:
“It also follows from what we have said, though this is not strictly necessary
for the purposes of our decision, that in our view, computer programmes
which have the effect of controlling computers to operate in a particular way,
where such programmes are embodied in physical form, are proper subject-
matter for letters patent.”11
The Board of Appeal in the case of IBM Computer Program Product12 found
that technical character is an implicit requirement of the EPC to be met by an
invention in order to be an invention within the meaning of Article 52(1).
EPC.
In AT&T Knowledge Ventures LP, re13, the court laid down some ‘signposts’
which might help to consider whether a claimed invention had a relevant
technical effect. They were:
a) whether the claimed technical effect has a technical effect on a process
which is carried on outside the computer.

10
Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries Ltd (AIR 1982 SC 1444)
11
1974 RPC 147
12
T 1173/97, 1999 OJ EPO 609
13
2009 EWHC 343 (Pat)
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b) whether the claimed technical effect operates at the level of the architecture
of the computer; that is to say, whether the effect is produced irrespective of
the data being processed or the applications being run;
c) whether there is an increase in the speed or reliability of the computer; and
d) whether the perceived problem is overcome by the claimed invention as
opposed to merely circumvented
1.1.3 Revocation u/s 64 of the act, 1970

If any proceedings have been initiated by "any person interested", Under Section 25(2) of the
Patents Act, the same will eclipse the right of the same person to file a "revocation petition"
under Section 64(1) of the Patents Act,1970 and also, to invoke the right granted under
Section 64(1) of the Patents Act, to file a "counter-claim" (in response to an "infringement
suit", to seek the revocation of a patent).

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PRAYER

In the light of the facts stated, issues raised, arguments advanced & authorities cited, the
counsel on behalf of the petitioner humbly prays before the Hon’ble Court to kindly adjudge
and declare,

I. To revoke the patent granted to the plaintiff u/s 64(1) read with section 3(k) of the
Patents act, 1970.

Or to pass any appropriate relief that the Hon’ble Court may deem fit and is in the best
interest of Justice, Equity and Good Conscience,

And for this act of kindness, the counsel on behalf of the petitioner, as in duty bound shall
forever pray.

ALL OF WHICH IS RESPECTFULLY SUBMITTED

_____________________________

Sd/-

THE COUNSEL FOR THE DEFENDANT

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