01 January 0001

IPR Amicus: May 2019

Delhi High Court affirms that “export” is covered under Section 107A of Patents Act
by Vindhya S. Mani.

The Division Bench of the Delhi High Court has recently affirmed the view that exemption under Section 107A of the Patents Act permits exports from India of a patented invention solely for uses reasonably related to the development and submission of information required under any law, in India or in any foreign jurisdiction. It held that the absence of the word “export” under Section 107A does not lead to any inference that said provision does not include “export” within its scope. The Court was of the view that that the Parliament did not intend to per se exclude ‘export’ from the scope of the term ‘sale’ under Section 107A. It was held that the conduct or action of the individual or entity using the patented product and the purpose for which it is sought to be used that is important. The Division Bench, however, did not concur with the approach of the Single Judge in permitting export of 1000 to 2000 tablets as reasonable use, without holding any inquiry. It provided an indicative list of factors that should be considered in the inquiry and adjudication of such cases. The instant decision provides the much-needed balancing act between the rights and interests of patent owners and non-patentees by listing out the factors that ought to be considered in cases involving the applicability of Section 107A…

Ratio decidendi

  • Copyrights – Statutory licensing under Section 31D of Copyright Act not covers internet broadcasting – Bombay High Court
  • Trademarks – Nutraceuticals are akin to medicines for test of passing off – Delhi High Court
  • Trademarks – Passing-off when mark used in cognate and allied products – Delhi High Court
  • Trademarks – Dissimilarities which stand out prevail when judging generic similarities – Delhi High Court
  • Trademarks – ‘Cash for Gold’ or ‘Gold Buyers’ are suggestive and can be registered – Delhi High Court
  • Patents – Rights of patentee subsists during pendency of post-grant opposition – Delhi High Court

News Nuggets

  • Patent office unjustified in revoking patent when opposition is withdrawn
  • Mark ‘Dispo’ relating to syringes is descriptive
  • Differences in additional features is not material
  • Interim injunction granted against use of trademark ‘Power Flex’

May, 2019/Issue-92 May, 2019/Issue-92

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