Novartis at IPO, Passing Off Patents & Drafting a Preamble

The LexCampus Weekly Newsletter No. 1

6th January 2021

This week, we look at a recent Novartis AG patent application before the Indian Patent Office where the difference between coverage and disclosure is discussed. Recollect a similar discussion in the Novartis AG case before the Supreme Court. We look at a recent decision where the Delhi High Court held that there is no passing off right in a patent, which makes patent enforcement different from trade mark enforcement. And we conclude with few tips on drafting a preamble and a patent related Q&A.

PATENT CASE LAW

Novartis AG v. The Controller General of Patents, Designs and Trade Marks and Ors.

OA/20/2019/PT/DEL

  • Coverage and disclosure in a patent are different from each other. Coverage cannot go much beyond disclosure, for it would negate the fundamentals of patent law.
  • Mosaicking documents to check for novelty is impermissible. Ambiguous and unclear prior art documents cannot be cumulatively read to negate novelty claimed. For novelty to be destroyed, each prior art document cited must fully and unequivocally anticipate the invention claimed in the patent.

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Prof. Dr. Claudio De Simone & Anr v. Actial Farmaceutica Srl. & Ors.

2020 SCC Online Del 476

  • The Patents Act 1970 is an exhaustive framework for protection of patent related rights. There cannot be recognised a tortious liability of passing off in the absence of statutory recognition of the same. This is because there exists no common law right in inventions.
  • The instant case deals with a formulation not protected by any Indian patent and hence, claim for “passing off” based on unjust enrichment cannot be entertained.

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PATENT DRAFTING TIPS

  1. The preamble must be consistent with the claims. The preamble and the claim should together makeup a whole.
  2. Whenever a claim is amended, the preamble should also be checked to maintain consistency.

PATENT Q & A

QUESTION: “An invention claimed in the complete specification shall not be deemed to have been anticipated if a person publishes the description of an invention in the transactions of a learned society even without the consent of the true and first inventor.” Does it mean that if a person publishes the description of an invention in a journal without the consent of the inventor, it will be included in the anticipation? But that is in contrast to section 29(2)(a).

ANSWER: The question relates to section 31(d) and not section 29(2)(a). To fall under the exception to anticipation under section 31(d), the description of the invention should happen “with his (inventor’s) consent”. 

Tweet your patent related questions to @LexCampus with hashtag #AskProfAli. Prof. Feroz Ali will answer select questions in our weekly newsletter.

That’s all folks for this week. 

Team LexCampus

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