To Disclose or not to Disclose, that is the Question: Delhi High Court Answers

Abstract

The ‘covered’ v. ‘disclosed’ debate in the context of patent claims is one of the most hotly debated topic in patent law in India currently. In a judgment delivered in March, 2023, the Delhi High Court has delivered a judgment on the issue and has held that patent for selection of specific compounds already covered by a prior patent is prohibited under Indian patent law. In Boehringer Ingelheim Pharma GMBH & Anr. v. Vee Excel Drugs and Pharmaceuticals Private Ltd. the DHC while holding the species patent of Boehringer over Linagliptin to be vulnerable to revocation, vacated the interim injunction granted in favour of the Plaintiffs. Given the interpretation done by the Court, it becomes immaterial whether specific “disclosure” has been made or not in the genus patent; if the invention is explicitly "covered," it falls under the scope of the prior patent. The present essay examines the case while setting forth the Indian judicial jurisprudence on the issue thus far.

Keywords: Linagliptin, covered, disclosed, patents, Infringement, Interim injunction, Pharmaceuticals, Validity

JEL Classification: K00, I00