Article
Inventive step assessment – IPAB elucidates important principles
By R Parthasarathy and Vindhya S Mani
The article in this issue of IPR Amicus elaborately discusses a recent decision of the Intellectual Property Appellate Board (‘IPAB’) wherein the IPAB allowed the appeal challenging the revocation of Indian Patent No. 262968 by the Joint Controller following post-grant opposition proceedings. The patent was earlier revoked on the ground of lack of inventive step. The article notes that although the tests for inventive step assessment were established by the Delhi High Court in Roche v. Cipla [2016 (65) PTC 1 (Del)], there was a dearth of practical pointers for the application of those tests to inventions in various fields of technology, thus making the assessment very subjective. According to the authors, the instant IPAB order provides some important pointers for inventive step assessment, especially for inventions in the pharmaceutical sector; such as the necessity to assess whether cited prior art documents are analogous in nature and the necessity to identify the motivation in the prior art for a person skilled in the art to undertake substitutions in prior art compound(s) without having knowledge of the claimed invention and taking into account any ‘teaching away’ in the prior art documents...
Ratio decidendi
- Trademark infringement – Interlocutory injunction cannot be granted merely on the basis of public interest – Delhi High Court
- Patents – Novelty, bringing evidence after fixing of hearing, and maintainability of post-grant opposition proceedings – IPAB
- Trademarks – Reputation of defendant in a case of passing-off – Bombay High Court
- Trademarks ‘CFA’ and ‘BFA’ are phonetically and visually dissimilar and are not identical – Delhi High Court
- Remand when Controller’s order refuses patent due to non-appearance for hearing – IPAB
News Nuggets
- Trademarks – Likelihood of confusion – Reputation of person to be considered – CJEU also holds that reputation of the name ‘Messi’ constituted a well-known fact
- Filing of IPR matters at eleventh hour must stop – Bombay High Court observes that parties in IPR matters cannot expect Courts to push aside all other cases
- Waiver of certain provisions of TRIPS proposed to fight COVID-19 – India and South Africa jointly recommend waiver from implementation, application and enforcement of Sections 1, 4, 5, and 7 of Part II of the TRIPS Agreement
- ‘Eveready’ is a well-known mark
