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IPR Amicus: November 2018


Scope of Section 3(i): An analysis on diagnostic methods of treatment
By Dr. Deepti Malhotra, and Dr. Malathi Lakshmikumaran
TRIPS agreement provides flexibility to its Member States by giving them liberty to decide whether patents may be granted to “diagnostic, therapeutic and surgical methods for the treatment of humans or animals”. India has opted to categorise said methods and related subject matter under the ambit of non-patentable inventions. The interpretation and scope of Section 3(i) of the Act has not been judicially tested and the practice varies in the IPO. An assay method for detecting an analyte in a biological sample removed from a body may be interpreted, if supported by the specification of the application for a patent, as an in vitro detection method as opposed to a diagnostic method of treatment. The recitation, “render them free of disease or to increase their economic value or that of their products” under Section 3(i) of the Patents Act is sometimes interpreted as implied without any basis for the same being present in the claims or specification of an application and it further adds to the ambiguous interpretation. Hence, a foundational and formidable jurisprudence and interpretation in the courts of law is required to reduce the ambiguity and discrepancy in interpretation of Section 3(i)…

Ratio decidendi

  • Trademark – Confusion, especially in education, to be avoided – Delhi High Court
  • Trademark – Use of same word in names of similar services in same locality, fatal – Bombay High Court
  • No copyright in compilation of list of customers when identity of author not disclosed - Every database of customer list is not ‘trade secret’ – Delhi High Court
  • Trans-border reputation of trademark “Burger King” – Delhi High Court
  • Trademark – Injunction for use of mark MYSOAP infringing mark MYSOP – Madras High Court

News Nuggets

  • Devin, a name of Bulgarian town, can be registered as EU trademark
  • EU Trademark on pharmaceuticals – Dominance of word mark
November, 2018/Issue-86 November, 2018/Issue-86