A good start: developing Indian patent jurisprudence


R. Muralidharan and Rahul Vartak

The constitution of a single national board with a technical member is expected to ensure uniformity and better clarity in the evolution of patent jurisprudence in India, as R. Muralidharan and Rahul Vartak explain.

The Constitution of India has enshrined the principle of India as a Sovereign Socialist Secular Democratic Republic. Therefore, India is one of the very few nations in this world which has a socialistic outlook. This means that the right to property is not a fundamental right in India, but is only a statutory right.

Besides, the fundamental principles encompassed in the Constitution of India preach the formation of a welfare state, in which the welfare of many is always preferred against the profits of a few. These principles enshrined in the constitution are visible in the Supreme Court Decision involving the pharmaceutical giant Novartis AG in April this year.

In this case, the Hon. Supreme Court has upheld the decision of the Intellectual Property Appellate Board (IPAB) to disallow the grant of a patent for the beta crystalline form of imatinib myselate, commercialised under the trade name Glivec, since Novartis was unable to prove the enhancement in therapeutic efficacy of its drug as compared to the original substance. The IPAB had earlier held that ‘efficacy’ within the meaning of Section 3(d) explanation is ‘therapeutic efficacy’.

Prior to the constitution of the IPAB, the appellate jurisdiction was exercised by four different High Courts. Under the constitution, since one High Court is not bound by decision of another High Court, there have been conflicting decisions by different High Courts on the same point in the past. The constitution of a single national board with a technical member is expected to ensure uniformity and better clarity in the evolution of patent jurisprudence in India.

In 2012, the IPAB pronounced more than 40 orders relating to patents, apart from other IP matters. The IPAB also upheld the compulsory licence for Bayer’s patent for the drug Nexavar.

Other cases decided by the IPAB related to amendment of patents. In one, a patent application was rejected on the grounds of insufficiency of disclosure due to non-submission of drawings. Section 10 of the act enables the controller or examiner to demand drawings. Since the controller or examiner had not made such demand and had directly rejected the patent application, the IPAB held that the applicant should be allowed to lodge additional drawings, and further held that the Indian Patent Office (IPO) must consider the adequacy of disclosure in the light of the new drawings.

In another case concerning patent amendments, Magotteaux Intl. SA v Asst. Controller of Patents & Designs & Others, the IPAB held that, (a) ‘roller’ can be amended as ‘pad’; (b) ‘homogenous solid solutions’ cannot be amended as ‘homogenous solid phase’; (c) substituting the word ‘weight’ by word ‘volume’ is not permissible; and (d) an amendment to substitute words ‘consisting of ’ by ‘comprising’ was also rejected.

In an important case relating to invalidity of patents decided on March 9, 2012, in Travancore Mats & Matting Co. v Controller of Patents & Others, the IPAB held that the burden of proving invalidity is on the person alleging invalidity.

Further, in Hindustan Unilever Ltd v Controller of Patents, decided on June 2, 2011, the IPAB allowed an appeal where the application was abandoned due to non-compliance with Section 15 requirements, namely, putting the application in order for acceptance within the stipulated time. If an application is treated as abandoned by the controller, the same is not an appealable order.


Indian patent jurisprudence, Novartis, Bayer, IPAB, pharmaceuticals