Patent Act, 1970

2j invention‖ means a new product or process involving an inventive step and capable
of industrial application;
2ja ―inventive step‖ means a feature of an invention that involves technical advance as
compared to the existing knowledge or having economic significance or both and
that makes the invention not obvious to a person skilled in the art
Pozzoli v BDMO

The approach to the issue of obviousness was laid down:

1. Identify the notional ―person skilled in the art‖

2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it.
3. Identify what, if any, differences exist between the matter cited as forming part of the ―state of the
art‖ and the inventive concept of the claim or claim as construed:

Ask whether, viewed without any knowledge of the alleged invention as claimed, those differences constitute
steps which would have been obvious to the person skilled in the art or do they require any degree of
invention?

William v Nye

Patent was claimed over the combination of two well known machines. This was denied. Interpretation: i) if
the two machines work independently of each other even after combination, then not patentable; ii) if the
two machines work synchronously after combination, i.e. if inter dependency is created, then patentable.

Biswanath Prasad Radhey Shyam Case

1) 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 and must
independently satisfy the test of invention or inventive step.
2) it stated that to be patentable the improvement or the combination must produce a new result, or a new
article or a better or cheaper article than what was already existing .
3) As per the court, an invention would have an inventive step if the combination of old known integers
may be so combined that by their working inter relation they produce a new process or improved result.
4) Mere collocation of more than one integers or things, not involving the exercise of any inventive faculty
would not according to the Court qualify for the grant of a patent.
5) The Court then stated that an invention must not be the obvious or natural suggestion of what was
previously known and if a person was able to make the invention based on the knowledge existing on the
priority date, the invention would lack inventive step

2l ―new invention‖ means any invention or technology which has not been anticipated
by publication in any document or used in the country or elsewhere in the world
before the date of filing of patent application with complete specification, i.e., the
subject matter has not fallen in public domain or that it does not form part of the
state of the art;
Fomento v Mentmore

Patent application for an improved nib for a ball point pen. The inventor first advertised the description and
made it public. Later application was filed but it was also rejected on grounds that there was anticipation of
invention both through prior use and prior publication. The Court of Appeals asserted that if the
information, whether in documentary form or in the form of the invention itself, has been communicated to a
single member of the public that is enough to amount to making available to the public.

Merrel Dow v Norton

Patented an anti-histamine drug called terfenadine. In further research, it was found that it forms an acid
metabolite in the liver (not identified earlier) once it has been swallowed. It later obtained patent for the
acid metabolite which was created by subsequent research. After expiry of patent for terfenadine, Merrel
Dow claimed that all those who produce terfenadine infringes the acid metabolite patent. The earlier patent
was that terfenadine + HCl (in stomach) = cure. The second patent was a combination of Terfenadine +
HCl. The Court found that the first and second patent had no difference as to efficiency. Since there is no
improvement in efficiency, it amounts to evergreening and not allowed. Further, the second patent requires
terfenadine to be used which was in public domain after the expiry of the first patent.

What are not inventions

3b an invention the primary or intended use or commercial exploitation of which would

be contrary to public order or morality or which causes serious prejudice to human,
animal or plant life or health or to the environment
R v. Leland Stanford / Modified Animal

The patent for an immunocompromised chimeric mouse was upheld and the EPO ruled that the
controversial nature of the technology did not act as a bar to patenting. In the opposition proceedings, the
patent was amended to exclude human and animal embryonic cells. On the issue of ordre public and
morality, the Opposition division carried out the balancing test and noted that the claimed invention
provided the only animal model for HIV-1 infection and could be used to test potential anti-AIDS therapies
before human trials were undertaken. It dismissed the hypothetical potential risks associated with the
invention.

3c the mere discovery of a scientific principle or the formulation of an abstract

theory4[or discovery of any living thing or non-living substance occurring in nature
Association of Molecular Pathology v US Patent and Trademark Office

The court found that the purification of a native DNA does not alter its essential characteristics, its
nucleotide sequence that is defined by nature and central to both its biological function within the cell and
its utility as a research tool in the lab. The US Supreme Court decided that cDNA was patent eligible but
genomic DNA (and fragments thereof including oligonucleotides) was not. A naturally occurring DNA
segment is a product of nature and not patent eligible merely because it has been isolated.

Funk Bros Seed v Kalo Inoculant

https://en.wikipedia.org/wiki/Funk_Bros._Seed_Co._v._Kalo_Inoculant_Co.

The majority opinion (per Justice Douglas) held that the properties of inhibition or of noninhibition in the
bacteria were ―the work of nature.,‖ and therefore not subject to being patented. ―[P]atents cannot issue
for the discovery of the phenomena of nature.‖

3d the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any
new property or new use for a known substance or of the mere use of a known
process, machine or apparatus unless such known process results in a new product or
employs at least one new reactant
Novartis AG v Union of India

https://en.wikipedia.org/wiki/Novartis_v._Union_of_India_%26_Others#Supreme Court_decision

In applying 3(d) of the Act, the Court decided to interpret "efficacy" as "therapeutic efficacy" because the
subject matter of the patent is a compound of medicinal value. Court acknowledged that physical efficacy of
imatinib mesylate in beta crystalline form is enhanced in comparison to other forms and that the beta
crystalline form of imatinib mesylate has 30 per cent increased bioavailability as compared to imatinib in
free base form.[39] However, as no material had been offered to indicate that the beta crystalline form of
imatinib mesylate will produce an enhanced or superior efficacy (therapeutic) on molecular basis than what
could be achieved with imatinib free base in vivo animal model, the court opined that the beta crystalline
form of imatinib mesylate, does not qualify the test of Section 3(d).

Thus in effect, Indian Supreme Court upheld the view that under Indian Patent Act for grant of
pharmaceutical patents apart from proving the traditional tests of novelty, inventive step and application,
there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing
drugs.

Bio-Tech Patents

3j plants and animals in whole or any part thereof other than micro-organisms but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals
10(4) Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the
method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the
applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which
protection is claimed.
(d)be accompanied by an abstract to provide technical information on the invention:
Provided that—
(i) the Controller may amend the abstract for providing better information to third
parties; and
(ii) if the applicant mentions a biological material in the specification which may not
be described in such a way as to satisfy clauses(a) and (b), and if such material is not
available to the public, the application shall be completed by depositing2[the
material to an international depository authority under the Budapest Treaty] and by
fulfilling the following conditions, namely:—
3[(A) the deposit of the material shall be made not later than the date of filing the
patent application in India and a reference thereof shall be made in the specification
within the prescribed period];
(B) all the available characteristics of the material required for it to be correctly
identified or indicated are included in the specification including the name, address
of the depository institution and the date and number of the deposit of the material at
the institution;
(C) access to the material is available in the depository institution only after the date
of the application for patent in India or if priority is claimed after the date of the
priority;
(D) disclose the source and geographical origin of the biological material in the
 specification, when used in an invention.]
Rule The period within which reference to the deposit shall be made in the specification
13(8) under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three
months from the date of filing of the application.
Introduction

The consequences of the development in the 1970‘s of recombinant DNA technology, a tool for genetic
engineering have however posed problems for the patent system. Certain of these problems such as the
‗product of nature‘ issue encountered by attempts to patent material of natural origin, are inherent in any
patent system. The Patent Act, 1970 however did not mention anything about biotechnology inventions and
the reason for such was that at that time the biotechnology industry was not developed in India and was in a
nascent stage the world over as well. Once patents were granted for different biotechnology inventions in the
US as well as in the European Union the demand for adopting the same approach gained significance
throughout the world including India. The judiciary has been responsible for the evolution of patent law on
biotechnology inventions in the US as well as in the European Union. Following such intervention patent
laws were suitably amended and efforts were made to grant patents on biotechnological inventions. This
momentum set new trends in the history of patent law and influenced the adoption of international
conventions like Trade Related Intellectual Property Rights (TRIPS). The agreement states that patents shall
be made available to all types of inventions in all fields of science and technology. The agreement mandates
patenting of biotechnology inventions in the member states. After ratifying TRIPS, India modified all its
intellectual property laws including patents law and started marching towards patenting of biotechnological
inventions.

Article 27(1) of the TRIPS Agreement clearly states that patents should be granted for inventions in any
field of technology without discrimination, subject to certain clauses. This implies that biotechnological
inventions are patentable subject matter. The patenting of genes or DNA sequences is popular in the US, the
EU and Japan. However, patenting of genes or DNA sequences per se was not allowed in India until January
2005, but processes involving recombinant DNA technology to produce proteins involving a gene or a DNA
sequence was patentable subject matter. Product patents for DNA, RNA or genetic inventions are patentable
subject matter from January 2005 following the third amendment.

The basic criteria for a patent to be granted are novelty, nonobviousness (inventive step) and utility. For a
patent to be granted in India it should not be covered in the negative list in Section 3 which provides an
extensive list of what are not inventions under the Indian Patents Act. The inventions related to DNA
molecules or sequences must not be contrary to public order and morality.

An important exclusion in Section 3 (c) of the Indian Patents Act is that the discovery of an invention is not
patentable subject matter. Therefore, the question of whether a DNA sequence is a discovery or an invention
must be addressed first. This is based on an assumption that genes are naturally occurring, these are
discoveries, and not inventions.

The guidelines and rules of the European Patent Office clarify that DNA or gene sequences are patentable
subject matter as these are considered synthetic molecules isolated from the organisms and characterized and
produced as recombinant molecules or synthetic molecules containing the information as in the natural
genes.

The position in the US regarding discovery is different as compared to India and Europe. Under the US law ,
Section 101 reads ―Whoever invents or discovers and new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent there for, subject to
the conditions and requirements of this title.‖ In the case of Funk Brothers Seed Co v Kalo Inoculant Co, the
patent involved a process for inoculating leguminous plants with strains of naturally occurring bacteria to
allow the plants to fix nitrogen from the air. Wherein the Court laid down that, the claimed inventions are a
‗discovery of the phenomena of nature‘, and therefore genes should not be patentable. A gene is not an
‗invention.‘ However, while the Court never explicitly overrules Funk Brothers, it limited its holding in a
subsequent decision.

Diamond v Chakraborty

Chakrabarty (Plaintiff) developed a new species of bacterium capable of metabolizing hydrocarbons in a

manner unknown in naturally occurring organisms using recombinant DNA processes. The microorganisms
exhibited great promise in the treatment of oil spills. Plaintiff applied for a patent, which was denied by the
Patent Office (Defendant) on the basis that the microorganisms were products of nature and therefore
unpatentable. The Board of Appeals affirmed. The Court of Customs and Patent Appeals reversed, and the
United States Supreme Court granted review.

Issue: May a live, man-made microorganism be patented?

Held: (Burger, C.J.)Â Yes. A live, man-made microorganism is a non-naturally occurring composition and
therefore may be patented. Resolution of this issue is, regardless of its philosophical implications, strictly
a matter of statutory construction. The relevant statute here, 35 U.S.C. § 101, defines as patentable any
new and useful manufactured or decomposition of matter, among other things. It is a basic rule of
construction that words are given their natural, ordinary meanings. There can be little doubt that
microorganisms produced by recombinant DNA technology may be said to be manufactured and to be
compositions of matter. For purposes of patent law, the fact they are alive is not relevant. Although it is
true that naturally-occurring products may not be patented, a genetically-engineered microorganism is not
naturally occurring. While this Court recognizes that recombinant DNA technology is a controversial field,
it is ill-equipped to balance the competing values and interests manifested therein; this is a task for
Congress. Since the patent laws clearly include materials such as are at issue here within their scope, and
no specific law exists to exclude it, the only appropriate holding is that recombinant DNA-produced
microorganisms are patentable.

The legal framework of patenting microorganisms in most countries was that though they are not
specifically excluded from patentability, microorganisms were not granted patent protection on the ground
that it was contrary to natural laws. Section 3(j) of the Patents Act allows for patents for microorganisms. It
is worded in the form of an exception to an exception. The permissibility of patenting microorganisms was
considered in Dimminaco AG v Controller of Patents and Designs, a case which involved an invention
relating to a process for preparation of infectious Bursitis vaccine for protecting poultry.

Dimminaco AG v Controller of Patents

The application was for a patent on a process that resulted in the manufacture of a live vaccine that was
useful as a cure for infectious bursitis in poultry. The Patent Office had rejected the application as the
vaccine was a living vaccine and that the definition of manufacture did not include a process that resulted in
a living organism. The Calcutta HC has set aside the decision of the Controller and found that the Patents
Act did not prohibit the patenting of biotechnological inventions. As there is no statutory meaning of
manufacture, the court relied on the dictionary meaning of manufacture which does not exclude a vendible
product containing living organisms, and directed the Patent Office to reconsider the application. The
Controller pursuant to the decision of the HC has granted protection.

The controversial question pertains to how microorganisms are to be defined. By a broader definition, it will
include any microscopic organism. A narrower definition of the word would limit the definition to only
unicellular organisms. The narrow definition of microorganism confines the application of the definition to
organisms such as viruses, algae, bacteria, fungi and protozoa. It would exclude cell lines, genes and gene
sequences. Since the TRIPS Agreement approves patents for microorganisms, member countries of the
WTO have shown a tendency to expand the scope of the microorganism and microbiological process to
include genetic material and plants and animals. However, the TRIPS Agreement does not define the term
‗microorganisms‘, leaving the member countries with the necessary flexibility to decide the kinds of
microorganisms that will be entitled to protection. The Patent Office is unlikely to grant protection for
microorganisms which are living entities of living origin.

Cohen/Boyer Patents

The "Cohen/Boyer patents" were invented by Stanley Cohen of Stanford University and Herbert
Boyer of University of California, San Francisco. The patents cover inventions for splicing genes to
make recombinant proteins that are foundational to the biotechnology industry. Stanford managed the
patents and licensed them nonexclusively and broadly, earning over $200 million for the universities.

Association of Molecular Pathology v Myriad Genetics

Facts: Myriad Laboratories discovered the existence of genes BRCA 1 and BRCA 2 on the Human
Chromosomes, the mutations of which can cause breast cancer, amongst approximately 15 million genes in
the human genome. In addition, it synthesized a gene called the BRCA cDNA, which is a synthetic product
that mirrors the coding sections of the BRCA genes, and ―primers‖ used in diagnostics gene and applied for
a composition patent on it. Myriad‘s patents would, if valid, give it the exclusive right to isolate an
individual‘s BRCA1 and BRCA2 genes (or any strand of 15 or more nucleotides within the genes) by
breaking the covalent bonds that connect the DNA to the rest of the individual‘s genome. The patents would
also give Myriad the exclusive right to synthetically create BRCA cDNA. In Myriad‘s view, manipulating
BRCA DNA in either of these fashions triggers its ―right to exclude others from making‖ its patented
composition of matter under the Patent Act.
Issues:
1) Whether Myriad‘s claimed invention BRCA 1 and BRCA 2 and BRCA cDNA, the sequence of certain
human genes in both isolated and purified forms, falls within the scope of inventions for which a patent may
be granted.
2) Whether the product patents obtained by Myriad Laboratories on the discovery of genes, BRCA 1 and
BRCA 2 and BRCA cDNA, on the human genome valid under the provisions of 35 U. S. C. §101 and in
consonance with the relevant jurisprudence on the matter.
Rule:35 U. S. C. §101: ―Whoever invents or discovers any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.‖
Analysis: The Supreme Court considered the argument made by both the sides and held that, ―A naturally
occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated,
but cDNA is patent eligible because it is not naturally occurring‖. So, the discovery by Myriad
Laboratories, of the position of BRCA 1 and BRCA 2 genes was not patent eligible under the provisions of
35 U. S. C. §101. Although the section makes patents eligible for a new composition of matter, but ―laws of
nature, natural phenomena, and abstract ideas‖ ‗are basic tools of scientific and technological work‘ ‖ that
lie beyond the domain of patent protection, and hence these naturally occurring genes were not patent
eligible under the provision of the law.
Myriads discoveries falls within the law of nature exception. The primary work of the plaintiff was to
discover the already existing location of the genes BRCA 1 and BRCA 2. Mere discoveries cannot be made
patent eligible even though there are ground breaking
discoveries. Finding the location of the BRCA1 and BRCA2 genes does not render the genes patent eligible
―new . . . composition[s] of matter,‖ §101. Myriad‘s patent descriptions highlight the problem with its
claims: They detail the extensive process of discovery, but extensive effort alone is insufficient to satisfy
§101‘s demands. However, the court agreed to grant patent to the composition of cDNA because, it was
clear that this was not a ―product of nature‖, in the sense that it did not exist in nature, Its creation results
in an exons-only molecule, which is not naturally occurring. Its order of the exons may be dictated by
nature, Human intellect and skill had to involved to produce this matter in the laboratory. Its order of the
exons may be dictated by nature, but the lab technician unquestionably creates something new when introns
are removed from a DNA sequence to make cDNA.
The court differentiated this case from the Diamond. The case in diamond was that the plaintiff had created
a living organism by changing the strains in it through a laboratory process and hence, it was not naturally
occurring and patent eligible. Whereas in the present, with the exception of cDNA, the others were naturally
occurring and the plaintiff did not have to put in any work, intellectual and skill, in the production of the
DNA.
Relaxin Case
A suitable example for this exclusion in Europe is the Howard Florey Institute/Relaxin Case (V008/94).51
Here, the claims were toward a method for synthesis of peptides with relaxin activity, which included
synthesis of relaxin and certain analogues of relaxin. Relaxin is an ovarian hormone that softens and
lengthens the inter-pubic ligaments during pregnancy. It also dilates the cervix and inhibits contractions of
the uterus. The patent granted was for a process of producing relaxin from a cDNA fragment and a product
such as the gene sequences coding for the relaxin molecule. The patent was opposed by the Fraktion der
Grünen im Europäischen Parliament (the Green Party of the European Parliament) and Paul Lannoye on
the grounds that the subject matter of the patent was not patentable due to the lack of novelty and an
inventive step, and that it offends the ordre public and morality.52 The Opposition Division of the EPO did
not agree with the oppositions. The claimed DNA fragments encoding relaxin and its precursors were
cDNAs and these cDNAs do not occur in the human body. Thus the sequences were considered novel. Prior
to the cDNA encoding human H2-relaxin isolated by the Howard Florey Institute, the existence of this form
of relaxin was unknown. ‗It is established patent practice to recognize novelty for a natural substance which
has been isolated for the first time and which had no previously recognized existence‘. Since the isolated
gene was novel, the Institute was not preparing a known substance, but was using entirely new methods to
isolate the gene and produce the relaxin molecule. Thus this was considered as an inventive step.
Biotech Patents and Ethics

It is true that necessity propels any invention. In this new era our necessities are increasing fuelling
inventions but again it is our responsibility to protect our rights too.

I. Organ Transplantation - Organ transplantation is a big moral issue for biological based invention. It
possess a big moral issues. The biological invention facilitate the organ transplantation is opposed by
numerous intellectual based on religious faith. Also it is anticipated by some that it may give rise to
illegal Human trafficking.
II. Biological Weapons - Biological weapons are the most dreaded ones today, far more dangerous than
nuclear, chemical or conventional weapons. Discussion on this issue is most crucial.
III. Bioinformatics- It is a methology of biological studies implemented with the help of computer
programme. It is generally used for gene identification and prediction of upcoming diseases. Many
believe that this could bring legal turmoil in the society. Also it may hamper the natural living of
humans.

Another area of controversy in genetic patenting is how gene samples are obtained. Prior consent is required
to collect genetic samples, and collection of samples from people requires consent at the national and
community levels as well as the individual level. Conflicts have resulted when consent is not obtained at all
three levels. The question of benefit sharing also arises when obtaining genetic samples, specifically the
potential responsibility of the collector to share any benefits or profits of the discoveries with the population
or person from whom the sample came.[16]
The last major ethical issue involving gene patents is how the patents are used post-issuance. A major
concern[who?] is that the use of patented materials and processes will be very expensive or even prohibited to
some degree by conditions the patent owner sets.[20] Limiting access like this would directly impact
agricultural institutes and university researchers, among others. Some[who?] fear that holders of biotechnology
patents would exploit their rights in order to make larger profits, at the potential expense of farmers,
healthcare patients, and other users of patented technologies.
The ethics of using patents to increase profits are also debated. A typical argument in favor of biotech
patents is that they enable companies to earn money that the companies in turn invest in further research.
Without these patents, some worry that companies would no longer have the resources or motives to
perform competitive, viable biotech research.
Biotech Patenting in India
The 2014 Indian Patent Office (IPO) annual report stated that approximately 43,000 patent applications were
filed between April 2013 and March 2014. Over 2,300 of these related to biotechnology and other related
fields (eg, biochemistry, microbiology, biomedical devices and chemical or biological inventions related to
traditional knowledge – see Figure 2). Although the report indicates no criteria for patent selection in these
fields, it gives a preliminary indication of biotechnology patenting activity in India. Although patent filing in
India in general has increased in the last few years, biotechnology patent filing has decreased (see Figures 3
and 4). This is consistent with the global trend. Among other things, it could be attributed to more stringent
criteria for patentability and grant of patents in this domain.
Computer Software Patents/Business Method Patents
3k a mathematical or business method or a computer programme per se or algorithms;
Check CRI Guidelines
The logic behind denying patents for software per se in India is to promote innovation. If software, per se, is
patented a majority of the software inventions will be owned by a minority of firms. This scenario is
unimaginable in a developing country like India, where programmers must be given the freedom to
innovate. To develop better software's programmers or coders must have access to the open source software.
Keeping in line with this spirit, Section 3(k) does not allow software patents without hardware applicability.

At this point, it is important to note that Section 3(k) does not intend to place a blanket ban on software
patents in India. It only says that computer programs per se are not patentable. The phrase computer
programs per se' has not been defined and it has therefore been the source of some ambiguity. To this end,
the Government passed Guidelines that help define the extent or rather the manner in which software
inventions are patentable.

Computer Related Invention Guidelines

In the absence of any guidelines on the issues of patents on computer related inventions (CRI), it was found
that while some patent offices refused to grant software patents, others were inclined to grant patents on
software. In order to remove inconsistencies related to grant of patent in India, the Controller of Patents
issued guidelines related to CRI first in 2015 (known as CRI Guidelines 2015). The gist of the 2015
guidelines was that the patent offices in India were prohibited from issuing business method patents while
computer programs could be patentable on the fulfilment of certain conditions.
Following tests should be applied for CRIs:
1. If the claims are in conjunction with novel hardware, the examiner should proceed to other steps to
determine the patentability of the invention;
2. If the contribution lies solely in the computer programme, the claim should be denied; and
3. If the contribution lies in both the computer programme as well as the hardware in question, the examiner
should proceed to the other steps involved in assessing patentability.

Ericsson (Publ) v Lava International Ltd

The Court stated that the bar on section 3(k) applies to algorithms which are theoretical in nature and/or
abstract formulae. This bar does not apply when in a patent involving modern day technology, algorithms
are employed in order to perform certain calculations or selections which are thereafter utilized by various
hardware components or elements to produce/improve a technology and create a practical effect or result in
a physical realization. The court further stated that mere mention of an algorithm or a mathematical
formula in a patent document should not be inferred to mean that the invention is nothing but an algorithm.

Ericsson (Publ) v Intex Technologies (India) Ltd

The Court stated that any invention which has a technical contribution or has a technical effect and is not
merely a computer program per se is patentable.

In a nutshell, USA, post 2014 recognizes the software patentability but India only recognizes software
patentability only if it is somehow linked to some hardware or computer network.

Potential industrial applicability or the application are the inherent requirements for the grant of the patents.
In short, invention must have some practical industrial application, which has been defined in section
2(1)(ac) of Indian Patents Act, 1970 as follows:

"capable of industrial application", in relation to an invention, means that the invention is capable of being
made or used in an industry;

"The requirement of workability and usefulness are both connected to the requirement of industrial
applicability. If an invention is not workable, it means that it is also not industrially applicable. The patent
specification must disclose a practical application and industrial use for the claimed invention wherein a
concrete benefit must be derivable directly from the description coupled with common general knowledge.
Mere speculative use or vague and speculative indication of the possible objective will not suffice‖.

Diamond v Diehr

Diamond v. Diehr, 450 U.S. 175 (1981), was a United States Supreme Court decision which held that
controlling the execution of a physical process, by running a computer program did not
preclude patentability of the invention as a whole.
The original patent application, in this case, was filed for a ―process for molding raw, uncured synthetic
rubber into cured precision products.‖ The process of curing synthetic rubber depends on a number of
factors including time, temperature and thickness of the mold. Using the Arrhenius equation it is possible to
calculate when to open the press and to remove the cured, molded rubber. The problem was that there was,
at the time the invention was made, no disclosed way to obtain an accurate measure of the temperature
without opening the press. The invention solved this problem by using embedded thermocouples to
constantly check the temperature, and then feeding the measured values into a computer. The computer then
used the Arrhenius equation to calculate when sufficient energy had been absorbed so that the molding
machine should open the press.

The patent examiner rejected this invention as an unpatentable subject matter under 35 U.S.C. 101. He
argued that the steps performed by the computer were unpatentable as a computer program
under Gottschalk v. Benson. The Board of Patent Appeals and Interferences of the USPTO affirmed the
rejection. The Court of Customs and Patent Appeals(CCPA), the predecessor to the current Court of
Appeals for the Federal Circuit, reversed, noting that an otherwise patentable invention did not become
unpatentable simply because a computer was involved.
The case was taken to Supreme court where it was argued in October of 1980. In March of 1981, the court
issued its ruling where it reiterated its earlier holding that mathematical formulas in the abstract are not
eligible for patent protection. But it also held that a physical machine or process which makes use of a
mathematical algorithm is different from an invention which claims the algorithm, as such, in the abstract.
Thus, if the invention as a whole meets the requirements of patentability—that is, it involves ―transforming
or reducing an article to a different state or thing‖— it is patent-eligible, even if it includes a software
component.
Parker v Flook

Updating a numerical value (counter/ alarm limit) which is used in the chemical process of hydrocarbon
conversion. A mathematical formula which was previously unknown needed to be used and solved. But
updating counter value did not have the application to this process as such, and the mathematical formula
could not be wholly preempted. The effective change was in a state of non- physical thing. Therefore, the
patent was denied.

Enercon India Limited v. Aloys Wobben, Germany

In this particular case, an invention was presented which had the automated steps for controlling the wind
turbine which depended on the external conditions by the use of computer system. The board decided that it
was not merely a computer software per se or a set of rules or procedure like algorithms and thus its
patentability cannot be objected to.16 The patent application was granted.

Business Method Patent

Business Methods claimed in any form are not patentable subject matter. The term business methods
involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods
and services. This exclusion applies to all business methods and, therefore, if in substance the claims relate
to business methods, even with the help of technology, they are not considered to be a patentable subject
matter. The reason for not giving patent protection to business methods may be that it may unnecessarily cut
competition and promote monopoly, which may ultimately give rise to unnecessary litigations.

Yahoo v Controller of Patents & Rediffcom India Limited

In this case, section 3(k) was discussed in great detail, and the patent application was rejected owing to a
business model being embodied via technology. It was implied that the business model disguised as
technological innovations would not meet the criteria for the patents being granted in India.

In the case of Yahoo, the patent claims included features of a software tool targeting search terms relevant
to Yahoo's business. Accordingly, the IPAB concluded that the technical advance proposed by Yahoo was
simply a method of doing business, even if it was a technically smarter way of doing business and, therefore,
cannot be patented in accordance with provisions of Section 3(k) of the patents act.

Alice v CLS Bank

Alice Corp. v. CLS Bank International was a decision made in 2014 by the United States Supreme Court
about patentable subject matter (patent eligibility). The issue, in this case, was whether certain claims about
a computer-implemented, electronic escrow service for assisting financial transactions covered abstract
ideas are ineligible for patent protection. The patents were held to be invalid because the claims were drawn
to an abstract idea, and implementing those claims on a computer was not enough to change that idea into
patentable subject matter.

Although the Alice opinion did not mention software as such, the case was widely considered as a decision
on software patents or patents on software for business methods.

Four patients on electronic methods and computer programs were owned by Alice Corporation (―Alice‖)
for financial-trading systems on which trades between two parties who are to swap payment are settled by a
third party in ways that decrease ―settlement risk‖—the risk that one party will carry out while the other
will not. Alice alleged that CLS Bank International and CLS Services Ltd. (collectively ―CLS Bank‖) began
to use similar technology in 2002. Alice also blamed CLS Bank of infringement of Alice‘s patents, and when
the parties did not solve the issue, CLS Bank filed suit against Alice in 2007, seeking a declaratory judgment
that the claims at subject were invalid. Alice countersued, alleging infringement. The district court declared
each of Alice‘s patent invalid ruling that the claims concerned abstract ideas, which are not eligible for
patent protection under 35 U.S.C. 101.

Alice appealed the decision at the United States Court of Appeals for the Federal Circuit. A panel of the
appeals court decided by 2-1 in July 2012 to reverse the lower court‘s decision. But the members of the
Federal Circuit vacated that decision and set the case for reargument en banc. It ordered that the parties
address the following questions:
 What test should the court adopt to determine whether a computer-implemented invention is a patent-
ineligible abstract idea?
 Whether the presence of a computer in a claim could ever make patent-ineligible subject matter
patentable?
 Whether method, system, and media claims should be considered equivalent under § 101?
A panel of ten judges of the Federal Circuit issued seven different opinions, with no single opinion
supported by a majority on all points. Seven of the ten judges upheld the district court‘s decision that Alice‘s
method claims and computer-readable medium claims were not patent-eligible, but they did so for different
reasons. The panel as a whole did not agree on a single standard to determine whether a computer-
implemented invention is a patent-ineligible abstract idea.

The keen interest of the software industry and patent professionals in the issue was illustrated by many
companies and groups filing 52 amicus curiae briefs urging the Supreme Court to decide the issue of
software patent eligibility.
The Supreme Court unanimously invalidated the patent, presenting the following opinion:

Relying on Mayo v. Prometheus, the court found that an abstract idea could not be patented just because it
is implemented on a computer. In Alice, a software implementation of an escrow arrangement is not patent
eligible because it is an implementation of an abstract idea. Escrow is not a patentable invention, and
merely using a computer system to manage escrow debts does not rise to the level needed for a patent.
Under Alice, the ―Mayo framework‖ should be used in all cases in which the Court has to decide whether a
claim is patent-eligible.
The Court held that Mayo explained how to address the problem of determining whether a patent claimed a
patent-ineligible abstract idea or instead a potentially patentable practical implementation of an idea. This
requires using a ―two-step‖ analysis.
In the first Mayo step, the court must determine whether the patent claim under examination contains an
abstract idea, such as an algorithm, method of computation, or other general principle. If not, the claim is
potentially patentable, subject to the other requirements of the patent code. If the answer is affirmative, the
court must proceed to the next step.
In the second step of the analysis, the court must determine whether the patent adds to the idea ―something
extra‖ that embodies an ―inventive concept‖.

If there is no addition of an inventive element to the underlying abstract idea, the court should find the
patent invalid under § 101. This means that the implementation of the idea must not be generic,
conventional, or obvious if it is to qualify for a patent.

The ruling concluded with these pointers:

 A mere instruction to implement an abstract idea on a computer ―cannot impart patent eligibility‖.
 The mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.
 Stating an abstract idea while adding the words ―apply it‖‗ is not enough for patent eligibility.
 Nor is limiting the use of an abstract idea to a particular technological environment.

Enfish LLC v Microsoft Corp

Enfish, LLC v. Microsoft Corp is a 2016 decision by United States Court of Appeals for the Federal
Circuit in which the court, for the second time since the United States Supreme Court decision in Alice
Corp. v. CLS Bank upheld the patent-eligibility of software patent claims. The Federal Circuit reversed the
district court‘s summary judgment ruling that all claims were patent–ineligible abstract ideas under Alice.
The patents in the case were US6151604 and US6163775 granted to Enfish LLC. The patents claimed a
logical model for a computer database. Contrary to conventional logical models, Enfish‘s logical model
included all data entities in a single table, with column definitions provided by rows in that same table. The
patents described this as the ―self-referential‖ property of the database.
When Enfish sued Microsoft for infringement, the district court held the ruling that the fact that the patents
claim a ―logical table‖ demonstrated abstractness, since the term ‗logical table‘ refers to a logical data
structure, as opposed to a physical data structure. The court further added that:

In essence, the claims capture the concept of organizing information using tabular formats. As such, the
claims preempt a basic way of organizing information, without regard to the physical data structure. There
can be little argument that a patent on this concept, without more, would greatly impede progress.
Given these observations, the Court determines that the claims are addressed to the abstract purpose of
storing, organizing, and retrieving memory in a logical table. This abstract purpose does not become
tangible because it is necessarily limited to the technological environment of computers. . . . When a claim
recites a computer generically, the Court should ignore this element in defining the claim‘s purpose.
The court then proceeded to the second step of the Alice analysis, which is to determine whether ―the claims
contain additional limitations that amount to an inventive concept.‖ The court concluded: ―The claims do
not. Instead, the claims recite conventional elements. These elements, when viewed individually or in a
combination, do not sufficiently cabin the claims‘ scope.‖
The district court, resultantly, invalidated the patents. Enfish appealed and the case was taken up by the
federal circuit.

The Federal Circuit interpreted the first step of the Alice analysis as asking ―whether the focus of the claims
is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a
computer database) or, instead, on a process that qualifies as an ‗abstract idea‘ for which computers are
invoked merely as a tool.‖
Since claim 17 was focused on an improvement to computer functionality itself, and not on economic or
other tasks for which a computer is used in its ordinary capacity; The FC resultantly issued the ruling
that ―we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning
of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the
self-referential table‖. Therefore, the court does not need to proceed to step two of the Alice analysis.
The Federal Circuit rejected the conclusion of district court Judge Pfaelzer that the claims were abstract,
and rejected the argument that the claims are directed to ―the concepts of organizing data into a logical
table with identified columns and rows where one or more rows are used to store an index or information
defining columns.‖

Instead, the court insisted, ―describing the claims at such a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to § 101 swallow the rule.‖ The Federal
Circuit further added that ―the district court oversimplified the self-referential component of the claims and
downplayed the invention‘s benefits.‖ The court explained that its ―conclusion that the claims are directed
to an improvement of an existing technology is bolstered by the specification‘s teachings that the claimed
invention achieves other benefits over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements.‖
While the claims at issue in other cases such as Alice merely added ―conventional computer components to
well-known business practices,‖ Enfish‘s claims ―are directed to a specific improvement to computer
functionality.‖
The FC concluded the § 101 analysis as such:

Because the claims are not directed to an abstract idea under step one of the Alice analysis, we do not need
to proceed to step two of that analysis. . . . [W]e think it is clear for the reasons stated that the claims are
not directed to an abstract idea, and so we stop at step one. We conclude that the claims are patent-eligible.

State Street Bank and Trust v Signature Financial Group Inc

Case Facts
Signature Financial Group Inc., herein after referred to as Signature was issued the US Patent No. 5, 193,
056, herein after referred to as ‗056‘ Patent. in the year 1993. The patent deals with a data processing
system called ‗Hub and Spoke‘, which enables the administrator of a mutual fund to combine the advantages
of economies of scale in administering investments and the advantages of a partnership. The system does
this by enabling a structure that organizes mutual funds in an investment portfolio as a partnership. State
Street Bank tried to obtain a License from Signature over ‗Hub and Spoke‘ but the negotiations failed. The
failure of negotiations prompted State Street Bank to file for a declaratory motion asserting invalidity of the
‗056‘ Patent for failing to fall within the scope of patentable subject matter.

Issue
Whether a data processing system falls under the scope of patentable subject matter under section 101?
Rule
A data processing system falls under the scope of patentable subject matter if it produces a concrete, useful
and tangible result.

Analysis
The ‗056′ Patent claims a machine which is made up of specific structures, corresponding to the means plus
function elements recited in the claims. A machine is one of the four categories of patentable subject matter
under section 101.
Section 101 states that any new and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof is patentable. The repetitive use of the term ‗any‘ in the section
indicates the intent of congress not to place any restrictions or read any limitations on the scope of
patentable subject matter. This was affirmed by the supreme court in Diamond v. Chakrabarty, where it held
that anything under the sun made by man is patentable.

Mathematical Algorithms are not patentable only if they represent nothing more than abstract ideas.
However, if they are reduced to some practical application, they are patentable. The ‗Hub and Spoke‘ data
processing system transforms data in discrete dollar amounts by using a machine and mathematical
calculations into final share price. Such a transformation constitutes a practical application of a
mathematical algorithm, formula or calculation as it produces a concrete and tangible result and is
therefore patentable.

Conclusion
Mathematical algorithms and Business Methods are not unpatentable per se. A mathematical algorithm is
patentable if it produces a concrete useful and tangible result when applied to a physical structure or
process. A business method is just like any other method or process and is patentable if it satisfies all
patentability requirements.

In Re Bilski

In a 132 page decision containing three lengthy dissents and a concurrence, the Federal Circuit Court of
Appeals sharply limited the patentability of ‗business method‘ patents. Bilski sought to patent a business
method for hedging risks in the field of commodity trading. His method involved the application of
mathematical algorithms to data, and subsequent purchase of appropriately identified option contracts.

Machine or Transformation Test

The Federal Circuit held that business methods could be patentable as a ‗process.‘ Said the Court:

We rejected [a categorical] exclusion in State Street, noting that the so-called ‗business method exception‘
was unlawful and that business method claims (and indeed all process claims) are subject to the same legal
requirements for patentability as applied to any other process or method.‖ We reaffirm that conclusion.
… [A]lthough invited to do so by several amici, we decline to adopt a broad exclusion over software or any
other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set
forth by the Supreme Court.

However, to do so, it must involve a ‗process‘ that ―is tied to a particular machine or apparatus or …
transforms a particular article into a different state or thing.‖ To be ‗transformative‘ the process must
transform either a ―physical object or substance or an electronic signal representative of any physical
object or substance.‖ Moreover, ―the involvement of the machine or transformation in the claimed process
must not merely be insignificant extra-solution activity.‖ Because Bilski‘s process only resulted in the
purchase or sale of legal obligations – option contracts - and was not tied to any particular machine, it did
not pass muster under this ‗machine or transformation‘ test, and hence was not patentable.

We hold that the Applicants‘ process as claimed does not transform any article to a different state or
thing. Purported transformations or manipulations simply of public or private legal obligations or
relationships, business risks or other such abstractions cannot meet the test because they are not physical
objects or substances, and they are not representative of physical objects or substances. Applicants‘
process at most incorporates only such ineligible transformations.

The Federal Circuit urged that in applying this ‗machine or transformation‘ test, it was following past
United States Supreme Court precedent.

State Street Rejected

The Court further rejected the test it had adopted ten years prior for the determination of patentability of
processes such as business methods in State Street Bank and Trust Co. v. Signature Financial Group, 149
F.3d 1368 (Fed. Cir. 1998). In that case the Federal Circuit affirmed the patentability of a business method
for computerized mutual funds pooling.
Under section 101 of the Patent Act, ‗whoever invents or discovers any new and useful process, machine,
manufacture or composition of matter, or any new and useful improvement thereof, may obtain a patent
therefore, subject to the conditions and requirements of this title.‖ In State Street Bank, the court relied on
Section 101‘s language that the inventor of a ‗useful process‘ was entitled to a patent. A mere mathematical
algorithm is not patentable, however, because it is a fundamental principle. The Court held that if a
process, such as a mathematical algorithm, produced ‗a useful, concrete and tangible result,‘ it was
patentable. Finding that the invention at issue met this test, the State Street court held that it was patentable
(―Today we hold that the transformation of data, representing discrete dollar amounts, by a machine
through a series of mathematical calculations into a final share price, constitutes a [patent eligible
invention] because it produces ‗a useful, concrete and tangible result‘ …‖) and the business method patent
was born.

The Bilski Court rejected this test. Said the Court:

But while looking for ‗a useful, concrete and tangible result‘ may in many instances provide useful
indications of whether a claim is drawn to a fundamental principle or a practical application of such a
principle, that inquiry is insufficient to determine whether a claim is patent eligible under Section 101. And
it was certainly never intended to supplant the Supreme Court‘s test. Therefore, we also conclude that the
‗useful, concrete and tangible result‘ inquiry is inadequate and reaffirm that the machine or transformation
test outlined by the Supreme Court is the proper test to apply.

Standard Essential Patents

Introduction

Recent wars between the smartphone giants over the patent issues have brought into focus the importance of
Standard Essential Patents (SEPs). SEPs are patents essential to implement a specific industry standard. This
implies that to manufacture standard compliant mobile phones, tablets and other electronic devices, such
manufacturers will have to use technologies that are covered by one or more SEPs. Standards are technical
requirements or specifications that seek to provide a common design for a product or process. Patents which
are essential to a standard and have been adopted by a Standard Setting Organization (SSO) are known as
SEPs.
The concept of SEPs evolved in India when Ericson in 2011 objected to the importation of handsets by
Kingtech Electronics (India), claiming that the handsets infringed several of their SEPs in AMR Codec
(Adaptive Multi-Rate) technology. This was the starting point for SEP litigation in India. The Indian Patents
Act, 1970 (the "Act") does not contain any special provision for SEPs. Further, the Act does not lay down
any specific criteria or terms and conditions to be complied with while licensing a patented technology.

The prospect of licensing of SEPs plays a vital role in a company's incentive to invest in standardization
activities, besides other motivations such as directing the standard development towards technological
solutions where the respective company is strong and can offer specific services or infrastructure. However,
the exclusive rights conferred by patents on inventors may defeat the object of making standards available to
all for public use. In order to address this problem, most SSO's have defined IPR policies where SSO
members must commit to licensing their SEPs on terms and conditions that are "Fair, Reasonable and Non-
Discriminatory" (FRAND). These commitments are meant to protect technology implementers while
ensuring that Patent holders receive an appropriate reward for their investment in research and development.

Standard Setting Organization and Standard Essential Patents Framework

SSOs can be governmental, quasi-governmental or private. These are responsible for setting, developing,
coordinating, interpreting and maintaining standards. The Bureau of Indian Standards is India's national
SSO. In the Information and Communications Technologies sector the Telecom Engineering Centre is the
only formally recognized telecom standards/ specification/type approval body in India. Global ICT
Standardization Forum for India, Telecommunications Standards Development Society, India (TSDSI), and
Development Organization of Standards for Telecommunications in India are private SSOs in the Indian
ICT sector.

The Institute of Electrical and Electronic Engineers and International Telecommunication Union are
prominent SSOs in the cellular and Wi-Fi space. The TSDSI is the first SSO which was established in India
in 2013 with an aim to develop and promote India specific requirements in the field of telecommunications.

The SSO-SEP framework confers considerable power on the SEP holder. An entity that wishes to use a
technological standard must obtain permission from an SEP holder, which the latter may choose to withhold
by refusing to license its Patent. The FRAND declaration attempts to balance inequalities with the idea that
an entity should have the right to obtain a license to desired technology on FRAND terms. However,
working out a FRAND-encumbered agreement and determining what constitutes a FRAND practice is
controversial. Also, in practice, it is almost impossible to determine what a FRAND royalty actually
amounts to.

The important conditions with respect to adoption of SEPs are that,

 Firstly, the members must disclose, prior to the adoption of a standard, IP rights that would be
essential to the implementation of a proposed standard, and
 Secondly, that members must commit to license their SEPs to third parties at FRAND rates.

These policies have to be adhered to ensure the widespread adoption of standards, the very purpose for
which a SSO is made. Therefore, licensing SEP on FRAND terms is a voluntary contract between the SSO
and the SEP holder. However, the meaning of FRAND has not been defined by SSOs; it depends upon the
nature of the transactions between the SEP holder ("licensor") and the SEP implementer ("licensee").

Major issues involved in SEP litigation

1. Patent holdup:

Once a patent is adopted as a standard and achieves commercial acceptance, it becomes 'locked-in'. It is
necessary for a manufacturer to use the same; otherwise his product would be incompatible with other
companies' products and hence unmarketable. Such a situation strengthens the SEP holder's bargaining
power because the licensee does not have alternatives to the same technology. Patent holdup occurs when a
SEP holder takes advantage of a locked-in patent by trying to impose unreasonable royalty rates. Unless
constrained by a SSO to comply with FRAND licences, the SEP holder can exploit the locked in position to
obtain significantly higher royalties than it would have obtained before the patent was incorporated as a
standard. However, even after committing to FRAND such a situation arises due to the vague nature of
FRAND.

In the cases of Micromax and Intex the CCI1 noted, "hold-up can subvert the competitive process of
choosing among technologies and undermine the integrity of standard-setting activities. Ultimately, the high
costs of such patents get transferred to the final consumers."

Further, in such cases the licensor binds the licensee by a non-disclosure/confidentiality agreement with
respect to the terms of the license which restrains the other licensees from acquiring knowledge of the
royalty rates imposed on such previous licenses. This acts as an impediment in the conduct of licensing
negotiations between the parties and thus leads to major competition concern in FRAND litigations.

2. Royalty base

The reasonableness of a royalty amount depends on the correct selection of the royalty base. The SEP
holders tend to impose the royalty rate on the net sale price of the final product rather than only on the
component which comprises the infringed patent. This means even if SEP is used in a single component of a
multi component product, the implementer would be liable to pay the royalty on the components which do
not include the SEP. In such cases, the whole idea of FRAND diminishes as calculating a royalty on the
entire product carries a considerable risk that the patentee will be improperly compensated for non-
infringing components of that product.

In Virnetx Inc. v. Cisco Systems2, the US Court of Appeals for the Federal Circuit held that the royalty base
must be closely tied to the claimed invention rather than the entire value of the product.

3. Royalty Stacking

Royalty stacking is the situation where royalties are layered upon each other leading to a higher aggregate
royalty. This happens when different SEP holders impose similar royalties on different components of same
multi component product, leading the royalties to exceed the total product price.

This concern was raised by the CCI in the cases of Micromax and Intex3 wherein the Delhi High Court had
ordered Micromax to pay royalty to Ericsson on the basis of net sale price of the phone rather than the value
of technology used in the chipset incorporated in the phone which was said to be infringed. CCI noted
that "For the use of GSM chip in a phone costing Rs. 100, royalty would be Rs. 1.25 but if this GSM chip is
used in a phone of Rs. 1000, royalty would be Rs. 12.5. Thus increase in the royalty for patent holder is
without any contribution to the product of the licensee. Higher cost of a smartphone is due to various other
softwares/technical facilities and applications provided by the manufacturer/licensee for which he had to
pay royalties/charges to other patent holders/patent developers. Charging of two different license fees per
unit phone for use of the same technology prima facie is discriminatory and also reflects excessive pricing
vis-a-vis high cost phones."

4. Availability of Injunctive relief

Threat of injunction becomes a powerful weapon when used by a SEP holder for enforcing its royalty rates,
as in such a case an SEP implementer would think that accepting an unreasonable royalty would be less
risky than curbing an action of infringement. The use of injunctive relief against willing licensees is prima
facie breach of FRAND commitment as the FRAND royalty rates by itself are an adequate remuneration to
the SEP. Such an action is also considered to be abusive of dominant position and hence a violation of
competition laws. Therefore, an injunction should only be claimed when the licensee is unwilling to pay the
judicially determined FRAND royalty or where monetary compensation is not an adequate remedy.

The underlining principle behind granting of injunction is that a party must suffer an irreparable damage if
the same is not granted. The law on injunction in India is based on the principles of equity. In the said case,
the remedy available to the SEP holder is in the form of royalty. The only thing which is to be determined is
whether the quantum of the same is adequate. Further, a SEP holder indulging in setting up a SSO,
inevitably accents to license the technology on FRAND terms. In such a case, even if the royalty is low,
injunction should not be granted unless there is irreparable injury caused to the SEP holder.

Conclusion

The law with respect to SEP is unclear and judgements with respect to the same have differed from territory
to territory. It has to be realised that SEPs are not used by the licensees due to a lack of choice of
alternatives, but the same is done in order to maintain operability and compatibility between the symbiotic
technologies. It has to be realised that a country such as India cannot afford to lose its global image on the
basis of lack of development of IPR jurisprudence. While companies must be mandated to pass their
technology on the basis of FRAND commitments, it is also pertinent to note that rights of the patent holder
are also to be safeguarded. Therefore, in the disputes related to SEP it would be prudent if adequate trial is
given to both the parties and rates are determined by the Court without prejudice to any party and keeping in
mind the interests of the end consumers at large.