IPR
Topic 62 Landmark Patent Cases
Topic 62 — Landmark Patent Cases: A Compendium
Indian patent jurisprudence has developed through a series of landmark decisions that have shaped the operative doctrines — patentability under Section 3, novelty and inventive step, infringement, compulsory licensing, opposition, and remedies. This topic consolidates the most important Indian patent cases into a single comprehensive reference compendium organised thematically. Each case dissection includes facts, holding, and significance — designed for quick exam recall and for reference during litigation drafting. The compendium covers Supreme Court, High Court, IPAB (until 2021), and recent 2024-25 decisions, alongside foundational international cases that have influenced Indian doctrine.
1. Inventive Step and Novelty
📖 Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444 Facts — Patent on a method of manufacturing utensils. Defendant challenged validity for lack of inventive step. Holding — Supreme Court (Justice O. Chinnappa Reddy) held the patent lacked inventive step. The Court held: "It is important to bear in mind that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement." Significance — Locus classicus on Indian inventive step. The "more than workshop improvement" standard is cited in nearly every subsequent Indian inventive step decision. |
📖 Glaverbel S.A. v. Dave Rose, 2010 (43) PTC 630 (Del) Facts — Glaverbel held a patent on a process for producing patterned glass. Dave Rose challenged validity on novelty and inventive step grounds. Holding — Delhi HC held that for novelty challenge, prior art must be a single document disclosing all elements ("all-elements" test). For inventive step, mere combination of prior art elements is not enough — there must be motivation to combine. Significance — Authoritative statement of Indian novelty/inventive step framework. Cited in subsequent specifications and revocation cases. |
2. Section 3(d) and Anti-Evergreening
📖 Novartis AG v. Union of India, (2013) 6 SCC 1 Facts — Novartis applied for a patent on the beta-crystalline form of imatinib mesylate (Glivec/Gleevec). The Indian Patent Office refused under Section 3(d). Novartis appealed via Madras High Court (also challenging constitutional validity of Section 3(d)), IPAB, and Article 136 SLP to the Supreme Court. Holding — Justice Aftab Alam and Justice Ranjana Prakash Desai of the Supreme Court (1 April 2013) rejected Novartis's appeal. Key holdings: (i) "Efficacy" in pharmaceuticals means "therapeutic efficacy" — the ability to produce desired therapeutic effect. (ii) Increased bioavailability (30% in this case) is not enhanced therapeutic efficacy. (iii) Section 3(d) sets a "second tier" of patentability standards specifically for chemical substances/pharmaceuticals to prevent evergreening. (iv) Section 3(d) is constitutionally valid; not violative of Article 14; not in conflict with TRIPS. Significance — Globally cited; established that Section 3(d) sets a higher standard than ordinary inventive step. Therapeutic efficacy is the operational measure for pharmaceuticals. Inspired similar provisions in South Africa, Argentina, Philippines. |
📖 F. Hoffmann-La Roche v. Cipla (Single Judge — 7 Sept 2012; Division Bench — 27 Nov 2015) Facts — Roche held Patent IN 196774 on Erlotinib Hydrochloride (Tarceva). Cipla launched generic ERLOCIP. Roche sued for infringement; Cipla counter-claimed for revocation. Single Judge holding (Justice Manmohan Singh) — Patent valid; Roche failed to prove Cipla's ERLOCIP infringed. Division Bench holding (Justice Pradeep Nandrajog and Justice Mukta Gupta) — Reversed in part. Held compound claim covered all polymorphic forms; Cipla's ERLOCIP infringed. Section 3(d) recognises incremental innovation but requires substantial efficacy increase. Section 3(d) is patent eligibility provision, not patentability ground per se. Aftermath — Cipla's SLP withdrawn; settlement; Cipla acknowledged Roche's patent validity. Significance — Leading Indian Division Bench decision on patent infringement framework; comprehensive treatment of claim construction, polymorph claims, Section 3(d) interpretation. |
3. Compulsory Licensing
📖 Bayer Corporation v. Natco Pharma Ltd. (Patent Office, 9 March 2012) Facts — Bayer's patent IN 215758 on Sorafenib Tosylate (Nexavar). Bayer priced at ₹2,80,428/month — out of reach for most Indian patients. Natco offered ₹8,800/month under voluntary licence; rejected by Bayer December 2010. Natco applied for compulsory licence July 2011. Holding — Controller P.H. Kurian (9 March 2012) granted compulsory licence to Natco. Findings: only 2% of patient need met; ₹2,80,428/month not "reasonably affordable" — 41x per capita income; patent not "worked" in India (only imports). Terms — 6% royalty on net sales; selling price ₹8,800/month; supply free to 600 needy patients/year; non-exclusive; non-assignable; for life of patent. Significance — INDIA'S FIRST AND ONLY COMPULSORY LICENCE TO DATE. Globally cited. |
📖 Bayer Corp. v. Natco Pharma Ltd., 2013 (3) MIPR 110 (IPAB) IPAB Affirmation (4 March 2013, Justice Prabha Sridevan) — Affirmed Controller's order. "Working" does not absolutely require local manufacture but Bayer's mere imports were inadequate; ₹2,80,428/month prima facie not "reasonably affordable"; 6% royalty reasonable per UNDP 2001 guidelines. Significance — IPAB affirmation of all three Section 84(1) grounds operating cumulatively. |
📖 Bayer Corporation v. Union of India, 2014 (60) PTC 277 (Bom) Bombay HC Affirmation (15 July 2014, Division Bench) — Upheld IPAB. "Working" determined case-by-case; importation may suffice with justification but not in this case. 6% royalty reasonable. Section 84 constitutionally valid; TRIPS-compatible read with Paris Article 5A. Significance — Sealed the Bayer-Natco compulsory licence as binding precedent. Bayer chose not to appeal to Supreme Court. |
📖 BDR Pharmaceuticals v. Bristol-Myers Squibb (Compulsory Licence Application, 2013) Facts — BDR applied for compulsory licence on dasatinib (Sprycel) for chronic myeloid leukemia. Holding — Controller rejected. BDR had not made adequate prior efforts to obtain voluntary licence — Section 84(6)(iv) procedural prerequisite. Significance — Established voluntary-licence efforts as procedural prerequisite. Distinguishes from Bayer-Natco where Natco had documented voluntary licence rejection. |
📖 Lee Pharma v. AstraZeneca (Compulsory Licence Application, 2015) Facts — Lee Pharma applied for compulsory licence on saxagliptin diabetes drug. Holding — Controller rejected on similar grounds — inadequate voluntary licence efforts. Significance — Reinforces BDR pattern. Indian compulsory licensing requires substantive voluntary licence engagement first. |
4. Pre-Grant and Post-Grant Opposition
📖 Pre-grant opposition to Glivec — Foundation of Section 3(d) jurisprudence Facts — Novartis's Glivec patent application was opposed pre-grant on Section 3(d) grounds by multiple parties including the Cancer Patients Aid Association. Holding — Patent Office refused the patent in 2006 citing Section 3(d). The refusal was the precursor to the 2013 Supreme Court judgment. Significance — Demonstrates the operational power of Section 25(1) "any person" pre-grant opposition. Civil society organisations played crucial role in challenging multinational pharmaceutical patents. |
📖 Roche Tarceva polymorph rejection — Section 3(d) at examination stage Facts — Roche's patent application for the polymorph B form of erlotinib hydrochloride was refused pre-grant on Section 3(d) grounds. Holding — Pre-grant rejection withstood appeals. The underlying compound patent IN 774 was granted and survived post-grant Section 25(2) challenge, but the polymorph patent was refused. Significance — Illustrates the precision of Section 25 mechanisms — pre-grant rejection of polymorph claim did not affect the compound patent. |
5. Software and Computer-Implemented Inventions
📖 Yahoo Inc. v. Controller of Patents, 2009 (39) PTC 81 (IPAB) Facts — Yahoo applied for a patent on a method of providing online advertisements. Patent Office refused under Section 3(k) — computer programme per se. Holding — IPAB affirmed refusal. Held the invention was a business method implemented through software; falls within Section 3(k) exclusion. Significance — Early IPAB application of Section 3(k) to software. Confirms restrictive Indian interpretation. |
📖 Telefonaktiebolaget LM Ericsson v. Intex Technologies, 2015 (62) PTC 90 (Del) Facts — Long-running standard essential patent (SEP) litigation involving Ericsson's LTE/3G patents. Intex sued for non-infringement of Ericsson's patents. Holding — Delhi HC granted interim injunction to Ericsson; required Intex to deposit royalty pending trial. Significance — Indian SEP framework; FRAND (Fair, Reasonable, And Non-Discriminatory) terms; technology licensing context. Subsequent settlement. |
6. Pharmaceutical Patents
📖 Merck Sharp & Dohme Corp. v. Glenmark Pharmaceuticals, 2015 (62) PTC 257 (Del-DB) Facts — Merck sued Glenmark for infringement of patent on sitagliptin (anti-diabetic drug). Interim injunction granted at Single Judge stage; Glenmark appealed. Holding — Delhi HC Division Bench upheld interim injunction. Glenmark's claim that the patent was anticipated by prior art rejected at interim stage. Significance — Important pharmaceutical patent enforcement precedent. Demonstrates strong Indian protection for granted patents at interim stage. |
📖 Bayer v. Cipla / Sorafenib Suit, 2015 (Del HC) Facts — After the compulsory licence to Natco, Bayer sued Cipla for infringement of the same Sorafenib patent. Cipla had launched its own generic version. Holding — Delhi HC injunction proceedings led to settlement. Cipla agreed to pay royalty and continue generic version under settlement terms. Significance — Demonstrates the strategic value of compulsory licence for generic launches. Settlement-based resolution. |
7. Influential International Cases
📖 Catnic Components Ltd. v. Hill & Smith Ltd., [1981] FSR 60 (HL) UK House of Lords — established "purposive construction" of patent claims. Indian relevance — Adopted by Indian courts as the operative claim construction methodology. Cited in Roche v. Cipla and many others. |
📖 Improver Corp. v. Remington Consumer Products Ltd., [1990] FSR 181 UK Patents Court — formulated three Improver questions for variant analysis. Indian relevance — Adopted by Indian courts as the standard analytical framework for doctrine of equivalents. |
📖 Graver Tank & Manufacturing Co. v. Linde Air Products, 339 U.S. 605 (1950) (US SC) US Supreme Court — established function-way-result test for doctrine of equivalents. Indian relevance — Routinely applied alongside Improver questions in Indian infringement cases. |
📖 KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (US SC) US Supreme Court — relaxed the "teaching, suggestion, motivation" test for obviousness. Indian relevance — Strengthened Indian inventive step analysis; "obvious to try" reasoning. |
📖 Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014) (US SC) US Supreme Court — Two-part test for software/business method patentability under 35 USC § 101. Indian relevance — Restrictive US interpretation aligns with India's Section 3(k) restrictive approach. |
8. Procedural and Recent Decisions
📖 Patel Field Marshal Agencies v. P.M. Diesels Ltd., (2018) 2 SCC 112 Facts — Although a trademark case, set principles applicable to patents on relationship between civil suit and rectification. Holding — Civil suit can be stayed pending rectification. Significance — Procedural framework for parallel revocation/infringement proceedings. |
📖 Natco Pharma Ltd. v. Union of India, 2019 (Del HC, Justice Kameshwar Rao) Facts — Natco filed PIL challenging the inadequacy of Form 27 working statements. Holding — Delhi HC directed amendments to Form 27 to ensure meaningful disclosure of working statements. Implemented through 2020 revised Form 27. Significance — Strengthened the working-disclosure regime; supports compulsory licensing applications. |
9. Master Quick-Reference — All 25 Key Patent Cases
# | Case | Year | Significance |
|---|---|---|---|
1 | Bishwanath Prasad v. Hindustan Metal | 1982 SC | Inventive step — "more than workshop improvement" |
2 | Catnic v. Hill & Smith (UK HL) | 1981 | Purposive claim construction (adopted in India) |
3 | Improver v. Remington (UK) | 1990 | Improver questions for doctrine of equivalents |
4 | Graver Tank v. Linde Air (US SC) | 1950 | Function-way-result test for equivalents |
5 | KSR v. Teleflex (US SC) | 2007 | Obvious-to-try doctrine |
6 | Yahoo v. Controller of Patents | 2009 IPAB | Section 3(k) software patents restrictive |
7 | Glaverbel v. Dave Rose | 2010 Del | All-elements novelty + motivation to combine |
8 | Bayer v. Natco Pharma (Patent Office) | 2012 | India's only compulsory licence |
9 | Roche v. Cipla (Single Judge) | 2012 Del | Patent valid; Roche failed to prove infringement |
10 | Bayer v. Natco Pharma (IPAB) | 2013 | Affirmed compulsory licence |
11 | BDR v. BMS | 2013 | Voluntary licence prerequisite for compulsory licence |
12 | Novartis v. Union of India | 2013 SC | Section 3(d) anti-evergreening foundational case |
13 | Alice Corp. v. CLS Bank (US SC) | 2014 | Restrictive software patentability (parallel to Section 3(k)) |
14 | Bayer v. Union of India | 2014 Bom | Working = case-by-case; importation may suffice |
15 | Lee Pharma v. AstraZeneca | 2015 | Voluntary licence prerequisite reinforced |
16 | Ericsson v. Intex | 2015 Del | SEP and FRAND framework |
17 | Roche v. Cipla (Division Bench) | 2015 Del-DB | Comprehensive infringement framework; reversed Single Judge |
18 | Merck v. Glenmark | 2015 Del-DB | Sitagliptin pharma patent enforcement |
19 | Bayer v. Cipla | 2015 Del | Settlement after compulsory licence to Natco |
20 | Patel Field Marshal v. P.M. Diesels | 2018 SC | Civil suit + rectification procedural relationship |
21 | Natco v. Union of India | 2019 Del | Form 27 reform direction |
22 | Form 27 amendment (Patents Rules) | 2020 | Implementation of Natco directions; consolidated Form 27 |
23 | IPAB abolition | April 2021 | Tribunals Reforms Act 2021; appeals to High Court |
24 | Patents Amendment Rules 2024 | 2024 | Differential fees; 80% educational reduction; consolidated Form 27 |
25 | Roche-Cipla Settlement | 2017 | Cipla acknowledged Roche's patent validity |
🎯 EXAM POINTERS — TOPIC 62
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