The High Court of Delhi Rules Governing Patent Suits, 2020

The High Court of Delhi is in the process of framing Rules under Section 158 of the Patents Act, 1970. A draft of the proposed “The HighCourt of Delhi Rules Governing Patent Suits, 2020” was circulated.

In the last 10-15 years, the Delhi High Court has witnessed a high growth in the number of patent infringement actions filed before it related to various scientific and technological fields including pharmaceuticals, diagnostics, mechanical engineering, telecommunications, electrical/electronics, wind technology etc. The need for the present Rules has been felt due to the complexities that have arisen in dealing with patent suits and actions. The Delhi High Court Patent Rules, 2020 shall govern the procedure for adjudication of all patent suits. The substantive provisions governing patent suits are contained in The Patents Act, 1970. Patent suits being civil in nature are also governed by The Code of Civil Procedure, 1908 (CPC) as amended by The Commercial Courts Act, 2015. 

Documents to be filed along with the Plaint: The documents to be filed with the plaint shall include, inter alia,

i) certified copies of the certificate of grant of patent along with payment of annuities thereof. 

ii. complete patent specification including title and description of invention, claims, the abstract and drawings as granted. 

iii. a list of all corresponding patent applications/grants in various countries, if any, along with their current status in a tabulated form. A standard template for the said table is below. 

iv. If a decision has been given by any patent authority in another jurisdiction, a link to the same can be provided in the table. 

v. A summary of the technology shall be annexed either as a note or as a power point presentation printed with two slides per page. 

vi. Copies of any decisions of courts or patent offices in respect of the suit patent or any corresponding patent in any jurisdiction, including decisions in pre-grant, post-grant oppositions or revocation proceedings, shall also be annexed. 

vii. Any expert report relied upon for infringement analysis. 

viii. Copies of all relevant correspondence 

ix. In case of license agreements being relied upon, copies of the license agreements redacted or otherwise. Notes on justification for license fee, if claimed. 

x. Laboratory analysis reports, if any.

Microsoft refused to pay royalty of 2.25% on final product price for standard essential patents to Motorola

Both Motorola and Microsoft are members of the standard setting organisations Institute of Electrical and Electronics Engineers ("IEEE") and the International Telecommunication Union ("ITU"). Motorola owns numerous patents that are essential to the IEEE 802.11 wireless local area network ("WLAN") Standard ("802.11 Standard") and the ITU H.264 advanced video coding technology standard ("H.264 Standard").On October 21 and 29, 2010 Motorola sent letters to Microsoft offering to license its standards-essential patents (SEP) for the 802.11 Standard and H.264 Standard. The offer asked for a 2.25% royalty rate on the price of all end products Microsoft sold utilizing the technologies protected by these patents. Microsoft regarded these terms as blatantly unreasonable and responded by filing a breach of contract case against Motorola in the Western District Court of Washington, claiming that Motorola had violated its agreement with the IEEE and ITU to provide reasonable and non-discriminatory terms of licensing to all potential licensees on a global scale.

Read the court judgement.

CSIR-TKDL misleading with its claim that they stopped an European patent -on a medicinal composition containing turmeric, pine bark and green tea for treating hair loss.

Ministry of Science & Technology, Government of India issued a press statement with title`India Foils UK Company’s Bid to Patent Use of Turmeric, Pine Bark & Tea for Treating Hair Loss'. The Indian press dutifully carried this news item as yet another instance of crooked white man stealing Indian traditional knowledge. And few in India analysed the European patent claims to check this claim of CSIR-TKDL.
Darren Smyth in his blog IPKat traced the patent in dispute and anaysed the claim(s) in detail. The conclusion:

• Caim 1 is achieving an electrostatic effect in the interaction of hair building solids with hair and there is no reference to turmeric, pine bark and green tea.
• About the third party observations, it was stated:The comments developed in this [the third party observations] filing concern mainly the subject-matter of original claims 10, 11 and 12, which relate to the introduction of pharmacologically active ingredients. The third-party observation has been taken into account.
• From this it can be seen that they played no part in the examination at all.  The examination report was not responded to, and the application has now lapsed.
• So the statement by the Indian Ministry of Science and Technology is pretty much untrue - there was not in any real sense an attempt to "patent" use of "turmeric, pine bark and green tea for treating hair loss", and nothing that the TKDL did had any influence on the examination so India has not "foiled" the attempt to get a patent anyway.  Any announcement is in any case premature, since the applicant can still file a response and revive the application using "further processing" up to 9 September 2015.

Enercon dispute and future of joint ventures

Joint ventures would not be same in future, the Enercon dispute is an inflection point. Read the post by Prashnat Reddy.

Why did not Enercon GmBH promote fully owned subsidiary in India as done by many MNCs to protect & leverage their IP?