all Law.

Patentability of ‘Selection Inventions’ has been a hotly contested issue in India, especially in the context of pharmaceutical inventions. A selection patent is one whose subject matter (compounds or compositions) forms part of a larger known class or Markush structure of compounds which is the subject matter of a prior patent. A selection patent, referred to as species patent, has a specific coverage while the prior patent, referred to as genus patent, has a broader coverage. Recently, two decisions of the Delhi High Court have adjudicated patentability of the species patent with respect to the genus patent as part of infringement proceedings.

Link: Patentability of Selection Inventions – Analysis of recent Delhi High Court decisions | Lakshmikumaran & Sridharan Attorneys (lakshmisri.com)

Audio Source:  An article published on the LKS website in April 2023.

Authors: Gursimran Singh Narula, Associate and Vindhya S. Mani Associate Partner, LKS

Every year, the announcement of the Union Budget is eagerly awaited as one of the key tax policy events in India. This year was no different.

Amongst various tax amendment proposals announced this year, proposal for taxing ‘cash’ benefits and perquisites is likely to have a wide-reaching impact on the taxpayers, especially in the context of waiver of debts due from a corporate debtor. More than the corporate debtor, the amendment may prove to be burdensome for the lender waiving such debts due to withholding tax liability imposed upon such lender.

This article aims to discuss the proposed amendment and its impact in the context of waiver of debt.

Link: Tax on ‘Cash’ benefits and perquisites – Applicability on waiver of debts | Lakshmikumaran & Sridharan Attorneys (lakshmisri.com)

Audio Source:  An article published on the LKS website in March 2023.

Authors: Harshit Khurana, Principal Associate, LKS

This podcast describes the amendment in claims that were allowed by the High Court in Delhi. Justice Hari Shankar in this landmark judgement had allowed amending claims from method of treatment to product (i.e., implant claims). This case will serve as a milestone since till date amending method of treatment claims to any other allowable claim format (such as product) has been considered as non-allowable under Section 57 and 59 of the Act. the Hon' Justice has looked at the facts of the case, such as, the implants per se were well supported and explained in the as-filed specification and the Applicant is well within its right to claim for such an implant. Ayyangar Committee Report, which forms the basis of our current act was also discussed and the Justice noted that the intention of the report was to allow wider permissibility in claim amendments before the grant and it is not needed for the invention to be identical before and after the amendment. Special reliance was also placed on different case laws and orders which altogether suggest that the object of patent law is to encourage scientific research, new technology and industrial progress. Therefore, rejecting the claims outright under Section 59 without substantial examination will be against the very purpose of the Act.

Link: A ray of hope: Delhi High Court allows amending method claims to product claims | Lakshmikumaran & Sridharan Attorneys (lakshmisri.com)

Audio Source: An article published on the LKS website in March 2023.

Authors: Prosenjit Chattopadhyay, Partner and Swati Upadhyay, Assoicate  LKS

The imposition of trade remedial measures in India is a two-step process – the investigation conducted by the Directorate General of Trade Remedies (‘DGTR’) under the Ministry of Commerce and the final imposition of measures by the Department of Revenue under the Ministry of Finance (‘MoF’). This division of powers is clearly laid out in the Customs Tariff Act (‘CT Act’).

Audio Source: An article published on the LKS website in March 2023.

Authors: Devinder Bagia, Partner, and Aayush Rastogi, Senior Associate LKS.

With India setting ambitious target to become net zero by 2070, the recent amendments to the Energy Conversation Act, 2001 brings in a regulatory framework in moving towards the stated goal of becoming a low carbon intense economy. A significant introduction in this amendment is the introduction of carbon markets that would enable entities to trade credits earned from conservation of energy in line with the Paris Agreement (COP21). The practical and implementation aspects of the carbon credit trading will be clearer once the trading scheme is notified in future. With renewed focus on sustainable development goals to secure future generations, we may see more similar policy reforms in the future and this amendment to Energy Conversation Act, 2001 is only a first in the lot. 

Audio Source: An article published on the LKS website in February 2023.

Authors: Kumar Panda, Senior Associate LKS.

This podcast examines the decision made by the Hon’ble High Court of Delhi (‘High Court’) on an appeal (2022/DHC/004697) filed under Section 117A(2) of the Patents Act, 1970 (‘Patents Act’). The appeal was filed by Avery Dennison Corporation (‘Appellant’) seeking to set aside an order passed by the Controller of Patents and Designs (‘Respondent’) refusing the grant of the Appellant’s patent application for lacking inventive step. The High Court, after considering the facts of the case, decided that the assessment of the claimed invention by the Respondent was erroneous and directed that the patent application may proceed for a grant. The podcast also  highlights the fundamental principles discussed by the High Court for analysis of an ‘inventive step’ in India.

Audio Source: An article published on the LKS website in February 2023.

Authors: Eeshita Das, Senior Patent Analyst and  Archana Viswanathan, Principal Associate.

The arbitral awards are given for various reasons and to know the GST implications on each of these awards it is pertinent to understand the nature of the awards given. The arbitral award may provide compensation to the parties, in the form of damages or it may be reimbursement of the amount which is incurred by one of the parties to the contract. Recent circular passed by CBIC Circular No. 178/10/2022-GST dated 3.8.2022 clarifies that the damages are amount paid to compensate the injury, loss or damage suffered by one of the parties due to breach of contract and such amount shall not qualify as consideration towards supply of any goods or services. However, the Circular has not been expressive with respect to various reasons for which the arbitral award is granted and thus the direct approach that the award is in the nature of damage and that the GST is not applicable would jeopardize the actual GST implication on such award.


Audio Source: An article published on the LKS website in December 2022.

Arbitral award: Compensation or consideration | Lakshmikumaran & Sridharan Attorneys (lakshmisri.com)

Authors:  Jagannadh Grandhi, Associate Partner LKS, and Kumari Nivedita, Associate LKS

GST was introduced vide 101st Constitutional Amendment Act to provide Center and State Government, the power to levy GST on supply of goods under Article 246A. The States lost power to assess VAT on sale of goods and hence, VAT laws were to be aligned till 16.09.2017. 

 Thus, VAT limitation period could have been amended within above time; however, few State Governments have enhanced limitation period, beyond above time. Various High Courts [Kerala, Gujarat and Telangana] held that States lost their power to administer VAT after above time. However, Bombay High Court observed that States gained power to administer tax on local supply of goods under Article 246A and hence, VAT amendment was held valid. 

 However, Article 246A empowers States only for administering GST and not VAT. Hence, amendment in limitation period after 16.09.2017 may not be legally sustainable.

Audio Source: An article published on the LKS website in January 2023
Value addition’ in Value Addition Tax: Extension of limitation period | Lakshmikumaran & Sridharan Attorneys (lakshmisri.com)
Author: Rinku Panbude 

The previous article published in our firm’s IPR Amicus, Issue No. 135 (December 2022)[1] highlighted evolving jurisprudence and the principles for filing divisional applications in India as laid out by the erstwhile Intellectual Property Appellate Board (‘IPAB’) and the Delhi High Court.

A key prerequisite for filing a divisional application, as mentioned in the previous article, is that the presence of plurality of invention has to exist, not just in the specification, but also in the claims of the parent (first mentioned) application.

This prerequisite can be clearly drawn from the following orders:

(1) Order No. OA/66/2020/PT/DEL dated 27 October 2020, of IPAB, Esco Corporation v. Controller of Patents & Designs[2];

(2) Order No. OA/3/2015/PT/MUM dated 27 October 2020, of IPAB, UCB Pharma S.A. v. Controller of Patents & Designs[3]; and

(3) Boehringer Ingelheim International GMBH v. The Controller of Patents & Anr., dated 12 July 2022, of the Delhi High Court[4].

Emphasis is drawn on to some excerpts of the above-mentioned orders:


Aythors: Gaurav Gupta, Director and Shashank Kinra, Senior Patent Analyst   LKS