Prof & LawyerPuttu Guru Prasad,

M.Com., M.B.A., L.L.B., M.Phil., PGDFTM., AP.SET., ICFAI TMF., (PhD) at JNTUK.,

  Senior Faculty for Management Science,Senior Faculty for Management Science,S&H Department, VVIT, Nambur,S&H Department, VVIT, Nambur,

1.1. Bowman v. Monsanto Co.,Bowman v. Monsanto Co.,2.2. Abbott .Vs. Sandoz Abbott .Vs. Sandoz 3.3. Horlicks vs Kartick SadhukanHorlicks vs Kartick Sadhukan4.4. Amar Nath Sehgal v. Union of Amar Nath Sehgal v. Union of

India,India,5.5. Colgate Palmolive vs. Mr. Patel & Colgate Palmolive vs. Mr. Patel &

OthersOthers6.6. DIAMOND v. CHAKRABARTYDIAMOND v. CHAKRABARTY

Bowman v. Monsanto Co., 569 U.S. ___ (2013) was a United States Supreme Court patent decision in which the Court unanimously affirmed the decision of the Federal Circuit that the Patent Exhaustion Doctrine does not permit a farmer to plant and grow saved, patented seeds without the patent owner's permission.

The case arose after Vernon Hugh Bowman, an Indiana farmer, bought transgenic soybean seeds from a local grain elevator for his second crop of the season.

Monsanto originally sold the seed from which these soybeans were grown to farmers under a limited use license that prohibited the farmer-buyer from using the seeds for more than a single season or from saving any seed produced from the crop for replanting.

The farmers sold their soybean crops (also seeds) to the local grain elevator, from which Bowman then bought them. After Bowman replanted seeds for his second harvest, Monsanto filed a lawsuit claiming that he infringed on their patents by replanting soybeans without a license.

In response, Bowman argued that Monsanto's claims were barred under the Doctrine of Patent Exhaustion, because all future generations of soybeans were embodied in the first generation that was originally sold.

In a unanimous opinion written by Justice Elena Kagan, the Supreme Court ruled that Bowman's conduct infringed upon Monsanto's patent rights and that the doctrine of patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.

The Court held that, when a farmer plants a harvested and saved seed, thereby growing another soybean crop, that action constitutes an unauthorized "making" of the patented product.

The case garnered attention in part due to its potential impact on policy about Genetically Modified Crops and self-replicating technologies, and due to the involvement of Justice Clarence Thomas, who previously served as a lawyer for Monsanto.

Commentators noted, however, that the Court's ruling was narrow in scope, and did not set a broad legal precedent with respect to the applicability of the doctrine of patent exhaustion to self-replicating technologies

Abbott v. Sandoz was a US patent law case argued before the United States Court of Appeals for the Federal Circuit that established a bright-line ruling regarding claims of patent infringement relating to disagreements over so-called “Product-by-Process" claims. The case was decided on May 18, 2009

BackgroundAbbott Labs had a patent on a specific

drug called Omnicef used to combat ear infections. Lupin Limited had a court rule that a generic form of Omnicef it produced did not infringe on Abbott's patent since their process to make the drug was different.

After the court had ruled in Lupin's favor, Abbott appealed and the case was combined with several other legal suits against smaller pharmaceutical companies, and thus was renamed Abbott v. Sandoz. The federal court affirmed the lower court's decision

CaseCase For several years, the courts have disagreed on

the product-by-process definition. Product-by-process refers to the question of determining if a product is legally different from another if it is created by a different process.

Federal courts have offered contradictory resolutions on the subject. The court determined that a patent may limit itself if it specifically defines the process of creation

DecisionDecisionDespite the legal discrepancies, the U.S.

Court of Appeals for the Federal Circuit (CAFC) held that using a different process in this case did not infringe on Abbott's patent and ruled in Sandoz's favor, along with ruling in favor of the other small pharmaceuticals companies.

Since Abbott had not patented all processes to create its drug, it could not protect from the processes being used by others

ImportanceImportance This case further enforces the product-by-

process definition, and holds that a patent does not protect from infringement through a different process unless necessarily described.

Patent-holders seeking to cover their products entirely must find ways to protect every process to create the same item if they want complete protection from infringement

This case revolves around the principle of infringement of trademark and copyright laws.

HORLICKS Limited (hereinafter referred to as H) is a foreign company engaged in manufacturing of a wide range of food products, including foods for infants, children and invalids, malted milk, biscuits, toffees, etc. under the trademark HORLICKS, of which it claims to be the original registered owner.

The trademark 'HORLICKS' was registered in India in relation to foods for infants, children as well as mailed milk as early as 1943, for biscuits in 1961 and in respect of toffees in 1966.

H is also the owner of copyright of HORLICKS label and is exclusively entitled to reproduce and alter the features of the HORLICKS label in any material form as it deems fit.

Kartick Kartick Confectionery (hereinafter referred to as K) started manufacturing a similar look-alike product, namely, toffees under the trademark ‘HORLIKS’ infringing the trademark rights enjoyed by 'HORLICKS'.

K also reproduced the label of H thereby amounting to the infringement of the copyright of the latter.

H contended that since the consumers of the product under the trademark HORLICKS included infants, children and adults it was the obligated to ensure that the quality and standard of the product met the prescribed requirements under the law.

They further stated that they ensured that the products under the trademark HORLICKS were made under strict hygienic conditions.

Accordingly, if K is permitted to use the challenged trademark HORLIKS, the right of which was never granted neither permitted by H, the latter was at all times at a risk of facing the consequences of K’s conduct and unauthorized use.

Hence they filed for a suit seeking to permanently restrain K from infringing the H's trademark HORLICKS and also its copyrights which it enjoyed over the product.

A Single Judge Bench of the Delhi High Court comprising of Justice B Chaturvedi found out that H was indeed the original registered owner of the trademark HORLICKS in respect of food for children, malted milk, biscuits and toffees and all other products as a result of prior marketing and registration.

With regards to toffees registration was done in India in 1966. And the company carried out various advertisements of its products under the trademark HORLICKS and thereby enjoyed sufficient goodwill and reputation for its products in India.

The court ruled that use of the label and trademark HORLIKS by K in respect of toffees is very likely to cause confusion among the people.

It would thereby lead to deception, majorly as a result of K having copied the trademark HORLICKS and also its label as and how it appears on the products manufactured and marketed by H.

Accordingly the court restrained K from manufacturing and selling toffees or other related goods under the trademark HORLIKS or under any other name that is similar in expression to H’s trademark HORLICKS.

Further the court barred K from reproducing, printing or publishing any label which was a mere reproduction or imitation of K’s HORLICKS label, thereby protecting the latter’s copyright to the label.

This is a landmark case decided by the Delhi High Court which for the first time upheld the moral right of an author for his work under the Indian Copyright Act.

Amar Nath Sehgal (hereinafter referred to as the plaintiff) was a renowned Artist and Sculptor. He created a Mural to be placed in the lobby of Vigyan Bhawan, a premier convention center of Government of India, in New Delhi.

It was done at the direction of the appropriate authorities of the convention center. In the year 1979 the plaintiff came to know that the mural created by him was removed from the lobby of the convention center away from the public view.

This was done without the prior consent or permission of the plaintiff. Thereafter the plaintiff made several requests to the appropriate authorities to restore the mural. However, in spite of that the mural was not restored.

Aggrieved by this the plaintiff filed a suit before the Delhi High Court under the Section 57 of the Copyright Act, 1957 for violation of his rights.

He sought a permanent injunction against the authorities of the convention center, thereby restraining them from distorting or damaging his mural. And to further pay him the damages for the same.

The case was heard by the Single Judge Bench of the Delhi High Court comprising of Justice P Narendra jog.

He observed that the author had a express right in law to preserve, protect and nurture his creations through his moral rights.

Further that the Section 57 of the Copyright Act enables to protect the cultural heritage of the country through the moral rights of the artist.

The section provides that the author has the right to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honor or reputation.

Thus, the court ruled that the plaintiff had the right to maintain an action under Section 57 even though the copyright of the mural vested with the authorities of the convention center.

It further held that the authorities not only violated the plaintiff's moral rights with respect to the mural but also violated the integrity of the work in relation to the cultural heritage of the country as such.

Hence, the court ordered the authorities of the convention center to return the remainder of the mural to the plaintiff. And also to pay the damages to the plaintiff for all the damage caused to his work.

This is a case relating to the legal principle of infringement of a trademark. It was decided by a Single Judge Bench of the Delhi High Court comprising of Justice M Mudgal.

Colgate Palmolive Co. Limited (hereinafter referred to as the plaintiffs) is a company that has been manufacturing and marketing dental products in India under the well-known trademark 'COLGATE' since 1937.

The company undoubtedly is also an international leader in the trade of tooth paste and other dental related products. The plaintiffs registered their trademark in India in the year 1954.

Since then they have always marketed their products in red cartons which had the word COLGATE inscribed in white on it. They used a particular font for printing the trademark on the cartons.

Further they had even registered their label relating to colors in India in the year 1959.

From then on they have been exclusively enjoying the ownership rights over the trademark 'COLGATE' and also the label containing the red and white colors inscribed on it.

In the year 2003 the plaintiffs came to know that Mr. Patel and his company(hereinafter referred to as the defendants) were using the plaintiff's COLGATE trade dress in the packaging of their products with relation to the layout and color combination of the cartons.

The defendants used the word 'AJANTA' printed in white color in a red background in their cartons.

Subsequently the plaintiffs filed a suit before the Delhi High Court seeking a permanent injunction against the defendants, thereby restraining them from using the trade dress that was similar in layout and appearance even though the names printed on the cartons were different.

They contended that the defendants had infringed their trademark and copyrights.

And further that they were indulging in unfair competition by trying to sell their products using the brand name of trademark COLGATE.

On the other hand, the defendants contended that there was nothing distinctive in the color combination of the plaintiff's container and that the plaintiff could not have a trademark in color combination.

Further they claimed that the red and white label was common to the toothpaste trade.

The Honorable Judge observed that essential feature of the plaintiffs' mark was COLGATECOLGATE inscribed in white color on a red background and not merely red and white color combination alone.

He held that the printing of the word ‘AJANTA’ ‘AJANTA’ on the defendants’ cartons in white color on a red background does not give rise to any infringement of the plaintiffs’ trade dress.

Also affirmed the contention of the defendants that red was a basic color and the red & white color combination is common to the tooth paste trade in the domestic as well as the international market.

Hence there cannot be any monopolization of the same by any party.

However, he finally held that the defendants were liable for trying to sell their products using the brand name of COLGATE since there was sufficient resemblance between the plaintiffs' and the defendants' product.

Further the court ruled that if the defendant alters the packaging there would not arise any question of infringement of the copyright and trademark of the plaintiff.

Accordingly the court ordered them to substitute gold for white color in the description of ‘AJANTA’ in their cartons.

Thus, the injunction application was disposed of by the court and the defendants were permitted to market their products provided they made the required alterations in their packaging of the products.

Title 35 U.S.C. 101 provides for the issuance of a patent to a person who invents or discovers "any" new and useful "manufacture" or "composition of matter."

Respondent filed a patent application relating to his invention of a human-made, genetically engineered bacterium capable of breaking down crude oil, a property which is possessed by no naturally occurring bacteria.

A patent examiner's rejection of the patent application's claims for the new bacteria was affirmed by the Patent Office Board of Appeals on the ground that living things are not patentable subject matter under 101.

The Court of Customs and Patent Appeals reversed, concluding that the fact that micro-organisms are alive is without legal significance for purposes of the patent law.

MR. CHIEF JUSTICE BURGER delivered the opinion of the Court.

We granted Certiorari to determine whether a live, human-made micro-organism is patentable subject matter under 35 U.S.C. 101.

In 1972, respondent Chakrabarty, a microbiologist, microbiologist, filed a patent application, assigned to the General Electric Co. General Electric Co.

The application asserted 36 claims related to Chakrabarty's invention of "a bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.

" 1 This human-made, genetically engineered bacterium is capable of breaking down multiple components of crude oil.

Because of this property, which is possessed by no naturally occurring bacteria, Chakrabarty's invention is believed to have significant value for the treatment of oil spills.

2 .Chakrabarty's patent claims were of three types:

First, process claims for the method of producing the bacteria;[447 U.S. 303, 306]

Second, claims for an inoculums comprised of a carrier material floating on water, such as straw, and the new bacteria;

and third, claims to the bacteria themselves.

The patent examiner allowed the claims falling into the first two categories, but rejected claims for the bacteria. His decision rested on two grounds:

(1) that micro-organisms are "products of nature," and

(2) that as living things they are not patentable subject matter under 35 U.S.C. 101.

Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals, and the Board affirmed the examiner on the second ground.

3 Relying on the legislative history of the 1930 Plant Patent Act, in which Congress extended patent protection to certain asexually reproduced plants, the Board concluded that 101 was not intended to cover living things such as these laboratory created micro-organisms.

The Court refers to the logic employed by Congress in choosing not to perpetuate the "dichotomy" suggested by Secretary Hyde. Ante, at 313.

But by this logic the bacteria at issue here are distinguishable from a "mineral . . . created wholly by nature" in exactly the same way as were the new varieties of plants.

If a new Act was needed to provide patent protection for the plants, it was equally necessary for bacteria.

Yet Congress Provided for patents on plants but not on these bacteria.

In short, Congress decided to make only a subset of animate "human-made inventions," "ibid”., patentable.

Prof & Lawyer .Puttu Guru Prasad,Prof & Lawyer .Puttu Guru Prasad,M.Com., M.B.A., L.L.B., M.Phil., 

PGDFTM., AP.SET., ICFAI TMF.,(PhD) at JNTUK., 

Senior Faculty for Management Sciences,

Vasireddy Venkatadri Institure of Technology

Nambur , Guntur, A.PCell: 93 94 96 98 98, 9059 457 336

Email: pgpjntuk@gmail.com      My Blog Link: puttuguru.blogspot.in