01 January 0001

IPR Amicus: February 2016


Obviousness - Different standards for Opposition and Revocation?-

Patents are not just instruments of private commercial utilisation but also have an impact on public policy. They are thus, governed by a system which allows for challenge to the validity of a patent at different stages, for instance ‘pre-grant opposition’ under Section 25(1) of the Patents Act against patent applications as well as ‘post-grant opposition’ against granted patents within one year from publication of grant of patent. Further, the Act provides for Revocation of Patents, under Section 64, by the Intellectual Property Appellate Board (IPAB), anytime within the entire term of the patent, or in a suit for infringement by the High Court. A closer reading of the statute would suggest that the burden of proof to show obviousness in an opposition is higher than that required in revocation under Section 64.


Ratio Decidendi

  • Rectification proceedings before IPAB can be initiated without permission of Court trying infringement suit – Delhi High Court
  • Sales invoice not enough proof of prior use of trademark – IPAB
  • High Court does not have territorial jurisdiction when cause of action arose at place of subordinate office located outside jurisdiction – Delhi High Court


Patent Office decisions

  • Limitation for restoration application to be construed strictly
  • Use of compound by way of particular dosage – method of administering not patentable


February, 2016/Issue-55 February, 2016/Issue-55

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