INDIA Trends and Developments Contributed by: Pravin Anand, Vaishali Mittal and Gursimran Singh Narula, Anand and Anand
by the defendants, the Court decreed the suit in favour of the plaintiffs and awarded granted damages. Scope of amendments to patent applications In Abbvie Biotherapeutics Inc and Another v Assis- tant Controller of Patents , a single judge of the Delhi High Court refused to grant amendments to the patent application in an application concerning therapeutic methods using anti-cMet antibody-drug conjugates (ADCs) in treating cMet-overexpressing cancers, dosing schedules, dosage ranges and strategies for resistant tumours. In order to overcome the con ‑ cerned objection under Section 3 (i), the applicant filed amended claims for a product ADC claim instead of a method claim, as filed. The Court noted that the amended claims omitted references to dosing sched ‑ ules. The Court also noted that the amended claims omitted references to several limitations from the originally filed claims and were an attempt to expand the scope of protection, instead of narrowing it down, which is permissible by way of disclaimer. Thus, it was held that the proposed amendments were beyond the scope of Section 59 (1) of the Patents Act. In Fresenius Medical Care Deutschland Gmbh v Controller General of Patents , the Court allowed the amendments for an invention concerning microvesi ‑ cles (MVs) derived from adult stem cells for use in the therapeutic treatment of a tumour disease. The patent applicant incorporated the features of the dependent claim into the independent claim. The Court noted that, since the amended claims were only in the nature of an explanation and disclaimer, they did not broaden the scope of unamended claims. Right to cross-examination before the Patent Office In Novartis AG v Controller of Patents and Designs and Another , the Court disallowed a writ petition filed by Novartis AG requesting to cross-examine opponent experts who had adversely opined against the validity of Novartis’s Indian Patent No 414518. The subject patent was granted in December 2022, and a post- grant opposition was filed against the granting of said patent. Notably, the opponents had filed further evi ‑ dence in July 2024. The filing of further evidence was contested by the patentee but was permitted by the Controller and later upheld by the High Court, grant ‑
ing leave to the patentee to file rebuttal evidence in a specific timeline. This rebuttal evidence was filed in June 2025. The patentee also filed a petition seeking cross-exam ‑ ination of the opponent’s experts in July 2025 con ‑ cerning the affidavits dated July 2024. The request was deferred by the Patent Controller, and the Con‑ troller went on to decide the post-grant opposition. This led to the filing of a writ petition by the patentee before the High Court. The Court, however, denied the request filed by the patentee. It was held that in ear ‑ lier writ petitions the patentee had only sought leave to file rebuttal evidence and did not ask for leave to cross-examine the opponent’s experts, either before the Court or before the Controller. It was further clari ‑ fied that, as per the Patent Act and related Rules, a right to seek cross-examination of an expert has to be expressly sought. If no such request is made, the affidavit is read in evidence as it is. The appropriate stage to request cross-examination of an opponent’s expert is at the earliest opportunity, after service of the expert’s evidence. Said right is to be elected for use by the patentee on the basis of its reply and even before it elects to file its own rebuttal evidence. Maintainability of revocation petition after expiry of the patent In Macleods Pharmaceuticals Ltd v The Controller of Patents and Another , the Court clarified that the scope of a revocation petition under Section 64 of the Patents Act and the defence of invalidity under Section 107 of the Patents Act are entirely different. It was further held that a patent infringement suit does not become infructuous upon expiry of the patent, as the cause of action – in so far as damages – sur ‑ vives. Applying the same rationale, it was observed that upon expiry of the patent it cannot be said that the revocation petition cannot survive. If the defend ‑ ant succeeds in its revocation petition and the subject patent is revoked, the plaintiff’s suit would be liable to be dismissed. Hence, the revocation petition cannot become infructuous merely upon expiry of the patent.
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