University of Copenhagen v. Controller of Patents, Granting Personhood to AI, Drafting a Preamble

The LexCampus Weekly Newsletter No. 9

3rd March, 2021



This week we look at a dispute involving the University of Copenhagen and their patent application in India. The patent application was disallowed by the Controller as the claimed invention involved a plant variety and was found to be non-patentable under the Act. The Appeal before the IPAB has been discussed in this week’s newsletter. This week’s blogpost contains a discussion on the proposition to grant personhood to AI in light of recent developments in the field of law, AI and their intersectionality. This week we offer a final set of tips to draft a preamble before moving onto a different drafting topic in the coming weeks. We conclude the newsletter with a patent related FAQ by Dr. Feroz Ali.



University of Copenhagen v. Controller of Patents

2020 SCC OnLine IPAB 112

The University of Copenhagen filed a national phase patent application 531/DELNP/2013 in connection with PCT application PCT/EP2011/004565 dated 06.07.2011. The First Examination Report raised objections regarding lack of unity of invention and the subject matter being non-patentable under Section 3(j) of the Act. Accordingly, the Controller denied the application and the University preferred an appeal to the IPAB. The IPAB reversed this decision and directed that the patent be issued  and elucidated its reason for the same.




We take off where we left the discussion in Newsletter no. 7, in the DABUS case. We delve further into the issue of granting personhood to AI and the challenges involved in it. However, the question regarding the feasibility of vesting rights in AI and also holding it liable for its actions rests on more nuanced issues. When we talk about granting legal personality to AI, essentially, we are talking about creating a body corporate which can act on its own but with a human being behind it. So, should we endow machines with such a personality?



It is helpful to keep in mind the following guideposts for identifying limiting preamble language, and draft the preamble accordingly:

  • A Jepson claim uses the preamble to define the invention;
  • Dependence on a phrase in dispute to provide an antecedent basis indicates reliance on the preamble;
  • The preamble is needed to understand elements in the claim body;
  • The specification emphasizes additional elements as important;
  • Clear reliance on the preamble to avoid prior art during application prosecution will limit the scope of the patent in any infringement suit in the future.


QUESTION: Can a divisional application be post-dated?

ANSWER: When you are talking about post-dating, you want to give up your priority. Please bear this in mind, whoever is talking about post-dating, they want to give up their priority for whatever reason. Now, a divisional is going to claim the priority of its mother or parent. So the divisional is automatically ante-dated, automatically. You don’t do anything, the day you file it, and say you put the number of the parent, it automatically gets ante-dated, because you have a parent, you are filing a divisional with the same description, probably the same title, same abstract, you are just removing the claims from the mother and putting it in a separate application. You already have the priority. It’ll be a dangerous thing to post-date a divisional.


That’s all folks for this week.

Team LexCampus

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Firstly it changed the approach of looking at the subject. At the first instance bare act seemed dry. The lecture series actually explained 'why' of the topic and statutes. Which helped in understanding the way the things are .

Nachiket Galgali

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