March 2020

IPR Amicus: January 2020


Patentability of computer related inventions
By Dipan Banerjee and Dr. Gaurav Gupta

The article in this 100th issue of IPR Amicus elaborately discusses a recent decision of the Delhi High Court on patentability of computer related inventions (CRIs). The High Court has reiterated the principle that if the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even though it is based on a computer program. The Court pointed out that the effect which the computer program produces is crucial in determining patentability. Relying on the Report of the Joint Committee on the Patents (Second Amendment) Bill 1991, the Court observed that the words ‘per se’ were incorporated in Section 3(k) of the Patents Act to ensure that genuine inventions which are developed based on computer programs, are not refused patents. According to the authors, the Order also seems to indicate that the same test of patentability, viz., “technical contribution/ technical effect”, may also be applied for CRIs in the field of artificial intelligence (AI) and blockchain technologies...

Ratio decidendi

  • Expiry of patent – Effect on suit for extended passing off – Supreme Court Larger Bench
  • Copyrights – Rights of author even after assignment – Kerala High Court
  • Patents – Post-grant opposition – New evidence cannot be filed once Controller fixes date of hearing – Delhi High Court
  • Copyrights – Investigating Officer of a crime and prosecution has no copyright in charge sheet filed and/or investigation done – Delhi High Court
  • Invention demonstrating technical effect/contribution patentable even if based on a computer program – Delhi High Court
  • Trademarks – Word ‘Shyam’ whether generic – Delay in action to restrain use of mark is not acquiescence – Calcutta High Court

News Nuggets

  • Post of Chairman, IPAB cannot be allowed to be left vacant
  • Sale of second-hand e-books through website constitutes ‘communication to public’ requiring authorisation by author
  • Recognition of efforts in making of a film – Promissory estoppel
  • Copyrights in film script – No monopoly in theme of illegal drug trials
  • Defamation and disparagement – Court passes interim injunction against YouTube blogger
  • Plant Variety Protection – Planting of protected variety and harvesting of fruits when not an act of production or reproduction
  • Standard Essential Patents – USPTO issues Policy Statement on remedies
  • Patent – No interim injunction when patent already expired

January, 2020/Issue-100 January, 2020/Issue-100

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