DOW Agrosciences LLC v. Controller, DABUS Case, Drafting a Preamble

The LexCampus Weekly Newsletter No.7

17th February, 2021

This week’s judgement is from the Intellectual Property Appellate Board, Delhi Bench and discusses procedural compliance related to paperwork in processing a patent application. This case also shows a shift in judicial attitude towards integrating electronic resources in administration of patent and related rights. This week’s blogpost is in relation to the contemporary discussion surrounding Artificial Intelligence and Intellectual Property. The blog is in the form of a case analysis of the DABUS patent applications and their fate in the US, UK and EU IP offices. We also offer a few drafting tips and conclude with a patent related query answered by Dr. Feroz Ali.

PATENT CASE SUMMARY

DOW Agrosciences LLC v. Controller of Patents, The Patent Office, Baudhik Sampada Bhawan

2020 SCC OnLine IPAB 112

DOW Agrosciences filed an appeal before the IPAB against an order of the Controller dt. 31.01.2020 dismissing DOW’s patent application on the sole ground of non-filing of proof of right. The crux of the argument presented by DOW was that the document was already available on the WIPO website and PCT provisions as well as the website of the IPO lays down that a document available in the electronic format can be presented as valid proof of furnishing a document necessary.

FROM OUR PATENT BLOG

AI and IP: The DABUS patent case

AI has become omnipresent in today’s world and technological advancement has made AI capable of performing functions which were once considered possible only by the human species.In 2019, patent applications were filed with an AI named DABUS being named as the inventor and the creator of DABUS requested that patents be issued in his name since he derived rights by being the owner of DABUS. This created ripples across the world with several jurists and policy makers debating the possibility of recognising a non-natural person as an inventor and the granting of IP rights thereof. Closely linked with this is also the debate regarding granting of personhood to AI. This blog discusses the decisions made by the IP offices in US, UK and EU, and looks at the jurisprudence discussed therein regarding recognition of a non-natural person as a rights holder.

 

DRAFTING A PATENT – PREAMBLE

  1. In cases where the preamble provides antecedents for claims that follow them, the preamble has a limitation effect on the scope of the claim, and narrows it down while scrutinising for infringement.
  2. Mere recitation of structural claim does not integrate the preamble into the body of the claim even if used therein.

PATENT Q&A

QUESTION: Is it possible to have some independent claims in the divisional patent application?

ANSWER: Yes, 100% because an application cannot stand; this is a rule, an application cannot stand without an independent claim, because we are talking about more than one invention, when you say invention, it means an independent claim and probably some dependent claims. So, when we say an invention, we are referring to an independent claim, it should have an independent claim.
Watch the video explanation here.
That’s all folks for this week
Team LexCampus

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