Nuziveedu v. Mahyco, Patent Agent Exam, and Drafting a Preamble

The LexCampus Weekly Newsletter No. 5
3rd February 2021

This week we look at a judgement by the High Court of Bombay that dealt with the question of whether a patent related to genetically modified cotton seeds is valid under Section 3(j) of the Patents Act, 1970; or was it exclusively under the domain of the Protection of Plant Varieties and Farmers’ Rights Act, 2001. Our blogpost for this week discusses the extremely important Patent Agent Examination in India and the need to begin with conducting the exam online to keep up with the changing circumstances. We offer drafting tips to help with writing a preamble in a patent application, and conclude with  a patent related question answered by Dr. Feroz Ali.

Patent Case Law Summary

Nuziveedu Seeds Ltd. & Ors v. Mahyco Monsanto Biotech India Pvt. Ltd.

2020 SCC Online Bom 816

A patent to protect transgenic seeds is not invalid under Section 3(j) of the Patents Act, 1970 and therefore, an agreement to sublicence the same technology, and charging of a trait fee towards said technology is not invalid under the Patents Act, or the Indian Contract Act, 1872. The Court heard extensive arguments regarding the patentability of an invention under the Act and also evaluated the individual domains of the two Acts namely Patents Act, 1970 and Protection of Plant Varieties and Farmers’ Rights Act, 2001. Read more

From our Patent Blog 

Patent Agent Exam : Time to move online

As discussed in the previous week’s article IP offices across the world have adopted technology with increasing fervour, in light of the pandemic. This week we look at a specific issue that needs to be immediately addressed, the Patent Agent Examination. The examination is important as it builds a reservoir of patent agents required for thriving patent prosecution and yet lacks a regular schedule for its occurrence. The exam remains a pen-paper based examination while most other jurisdictions have moved to the realm of online examinations in this area. This article seeks to impress upon the readers the advantages and the need to conduct this examination online. Read more

Patent Drafting Tips – Preamble

1. Care must be taken to ensure that the mention of elements besides the invention does not make the following transition word ambiguous.
2. In cases where more than one claim is grouped together and each such group has a varying scope, a different preamble maybe used for each group of claims.

Patent Q&A

QUESTION:

Rule 56 (1) – states – “On receipt of the notice of opposition under Rule 55A, the controller shall, by order, constitute an opposition board, ……..”

Rule 56 (4) states – “…………………….. with its joint recommendation within three months from the date on which the document were forwarded to them”

Can there be a gap between the date on which the controller issues the order and the date on which the documents were forwarded to Opposition Board? Kindly clarify.

ANSWER:

This is an interesting question and we need to compare post grant opposition, which is the relevant rule, which the questioner had mentioned, with the new procedure under pre-grant opposition to understand the way in which things are structured. Read more and watch video explanation

That’s all folks for this week

Team LexCampus