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Sunday, October 26, 2008

THE DOCTRINE OF OBVIOUSNESS

Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the latin word “obvius” meaning “in the way”. Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application. These requirements are to be strictly followed before a patent could be granted for any invention in any country all over the world.INDIAA. Obviousness under 1970 ActOnly a ground under opposition that too after grant and Revocation of PatentsThe invention is defined under Section 2(1) (j) the Indian Patents Act, 1970;(j) “invention” means any new and useful-(i) art, process, method or manner of manufacture;(ii) machine, apparatus and other article;(iii) substance produced by manufacture,and includes any new and useful improvement of any of them, and an alleged invention.As inventive step was not defined in an invention, there was no such provision during examination.Only after advertisement of acceptance of complete specification within 4+1 months, under Section 25(1) (e) not having the inventive step is a ground for opposition. (e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;Absence of inventive steps is also a ground for revocation under Section 64 (1) (f) of the Patents Act:-(f) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;Therefore under the 1970 Act onus that the invention does not involve any inventive step was on the person interested.B. Under the Patent Amendment Act in 2003 (that came into effect on 20.05.2003)No change in the definition of invention till 2003Definition of invention changed (Section 2(1) (j) now the “invention” means a new product and process involving an inventive step and capable of industrial application.After which the inventive step was also considered during the examination.And the Inventive step was defined under Section 2 (1)(ja) of the Patents Act“inventive step” means a feature that makes the invention not obvious to a person skilled in the art”.C. Further under the Patent Amendment Act, 2005 (which came into effect retrospectively 01.01.2005)The Definition of Inventive step was further revised.Now under Section 2(1)(ja) the “inventive step” means a feature of an invention that involve 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.Even the official manual of the Indian Patent practice acknowledges that “definition of inventive step has been enlarges to include economic significance of the invention apart from already existing criteria for determining inventive step”.But the expression “or” denotes that economic significance has to be given similar importance as to technical advancement and both have to interpreted in terms of knowledge and skill of the person skilled in art. Further it is apparent from the intention of the legislature that either the economic significance or technical advancement has to be present for qualifying the invention under the inventive step.D. Approach of Indian Patent Office1. Considers novelty and inventive step as one or the same thing.The Indian Patent Office considered the novelty and inventive step on the same lines which reflects in the examination report issued by them.2. Gives importance even to “A” category citations in the ISR/IPER for construction of Inventive step.In a mechanical manner the Patent Office gives importance to even ‘A’ category citations and requires elaboration and difference in terms of inventive steps with regards to such cited arts.3. Requires characterization in the claims-It has become the practice of the Indian Patent Office to require characterization clause in the main claim for determination of the inventive step. Wherein claims contains two portion one pre characterization one post characterization, the post characterization portion in considered to involve inventive step over pre characterization portion and thereon the dependent claims also relate to only post characterization portion.4. As per the Manual of Indian Patent practice: The inventive step has to be determined in the following manner.Has to be non-obvious when compared with the state of art, State of mind (Flash of Genius) is to be looked into, the following question has to be borne into mind “would a non-inventive mind have thought of the alleged invention?” if answer is “no”, then the invention in non-obvious. (In other words whether the invention would have occurred to a person skilled in the art, if yes, then it is obvious.)Whether the invention involves exercise of any skill or ability beyond than what is expected of a person skilled in the art.Combining the teaching of documents (Mosaics) with the art.Although as per the manual of Patent practice for consideration and determination of the inventive step, the invention has to be looked as a whole and no conclusion should be made by taking individual parts of the claims that might be known or found to be obvious, but still the practice differs from the manual and without taking regard to whole claims/ invention, objections are raised and the Applicant is made to himself point out the inventive step in the invention. INTERPRETATION OF OBVIOUSNESS IN FOREIGN COUNTRIES:The expression “inventive step” is predominantly used for instance in European Union while the expression “non- obviousness” is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same. Therefore the practice of the different patent office differs from each other.European Patents OfficeUnder Article 52(1) in conjunction with Article 56 of the European Patent Convention, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art. For assessment of the inventive step the European Patents Office follows the “Problem solution approach”.Problem-solution approach:In order to assess whether an invention involves an inventive step the Examining Divisions, the Opposition Divisions, and even the Boards of Appeal of the European Patents office apply the "problem-solution approach". The various steps included in this approach are:-Identifying the closest prior art, i.e., the most relevant prior art;Determining the objective technical problem, i.e., determining, in view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; andExamining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.This step is conducted according to the "could-would approach". Under this approach, “the question to address” in order to assess whether the invention involves an inventive step is as follows:Is there any teaching in the prior art, as a whole, that would (not simply could) have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:Identifying the inventive concept embodied in the patent;Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;Identifying the differences if any between the matter cited and the alleged invention; andDeciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.UNITED STATES OF AMERICA"Non-obviousness" is the term for “inventive step” used in US patent law and codified under 35 U.S.C. §103. Thereby implying that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.Flash of geniusThe Flash of Genius Doctrine or Test was a test for patentability used by the United States Federal Courts for over a decade. The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen.The flash of genius test was eventually rejected by the 1952 patent statute's section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the Federal Circuit stated that this portion of section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).GRAHAM FACTORSThe factors a court will look at when determining obviousness and non-obviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking atthe scope and content of the prior art;the level of ordinary skill in the art;the differences between the claimed invention and the prior art; andobjective evidence of nonobviousness.In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:commercial success;long-felt but unsolved needs; andfailure of others.Teaching-suggestion-motivation (TSM) test:In Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 (Fed. Cir., 2000), it was held that there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires that some suggestion or motivation exists to combine known elements to form a claimed invention. The Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test.[2] The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of non-obviousness is the Graham analysis.In one case, Applicant attempted to patent peanut butter and jelly sandwiches with crimped edges instead of crusts. The invention was challenged in the court that ruled that crimping method, which was essentially known was an obvious means of protecting the contents of the sandwich. The patent was therefore rejected for failing the non-obviousness test. The list of non exhaustive rationales that may be used to find an invention obvious are as follows:Combining prior art elements according to known methods to yield predictable results;Simple substitution of one known element for another to obtain predictable results;Use of known technique to improve similar devices (methods or products) in the same way;Applying a known technique to a known device (method or product) ready for improvement to yield predictable results;“Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;Known work in one field of endeavor may prompt variations of it fro use in either the same field or a different one based on design incentives or other market forces if variations would have been predictable to one of the ordinary skill in the art;Some teaching, suggestion or motivation in the prior art would have led one of the ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.NON ENGLISH SPEAKING COUNTRIES:KOREA:In accordance with the Korean Patent Examination Guideline (KPEG) the following procedure is carried out for determining inventive step:whether there is some motivation to reach the claimed invention in the prior art for a person ordinary skilled in the art;whether the difference between the claimed invention and the prior art belongs to ordinary creative ability of a person skilled in the art; andwhether the claimed invention has any advantageous effect compared to the prior art.Until recently Korean courts used to mechanically judge inventive step based on determination of substantial identicalness of purpose, construction and effect of the claimed invention and the prior art, and were silent on the specific standard for determination of inventive step.However, recently on September 06, 2007 ([Supreme Court Ruling of 2005 HU 3284) for the first time Supreme Court suggested a specific standard for determining inventive step, which is different from the precedents. The Korean Supreme Court took a different approach in its interpretation of inventive step and ruled that inventive step should be denied when there is some suggestion or motivation to reach the claimed invention by combination or aggregation of the feature in the prior art or when the court can recognize that a person ordinary skilled in the art can easily come to the claimed invention by combination or aggregation of feature in the prior art in view of the level of technology, common general knowledge in the art, technical problem, progress trend of technology and needs in the pertinent technical field at the time of filing patent application.In Korea, the manner in which an invention was made (flash of genius) generally cannot be used to deny inventive step. Many Court rulings have admitted inventive step when they recognized difficulty in construction of the invention. Therefore, assertion on presence of flash of creative genius in the invention would be supportive for inventive step.In Korea, commercial success alone cannot be regarded as indicative of inventive step. However, commercial success can be supplementary evidence to strengthen the argument of inventive step when it coupled with other evidence for inventive step.Through several rulings such as Supreme Court Ruling of 94 HU 1817 (Nov. 28, 1995) and Patent Court ruling of 2002 HEO 8424 (Sep. 4, 2003), Korean courts took into account the commercial success as affirmative evidence supporting inventive step of the invention when the applicant proved that his/her commercial success has been derived from the technical feature of the claimed invention, not from marketing skill or advertisement.However, the Supreme Court clearly takes up the position that inventive step cannot be recognized only with commercial success itself (Supreme Court Ruling of 2004 HU 3546 (Nov. 10, 2005).The Korean Patent Examination Guideline (KPTG) prohibit hindsight reasoning in determining inventive step of an invention and recently the Korean Supreme Court has also clearly declared that hindsight reasoning should be prohibited in judgment on inventive step [Supreme Court Ruling of 2006 HU 138 (Aug. 24, 2007)].JAPANApart from the universal general approach followed all over the world, in Japan there is also a specific approach for formulating reasoning that includes steps of:Grasping the claimed invention and the cited invention (one or more cited inventions). In this case, the technical matter, which can be derived by taking the common technical knowledge into consideration, can be used for grasping the cited invention.Selecting one cited invention (primary cited invention) which is most suitable for formulating and comparing the claimed invention with such cited invention and then clarifying the identicalness and the difference in technical elements.Evaluating whether any reasoning for negating the inventive step of claimed invention can be formulated based on the content of the primary cited invention and other secondary cited invention(s) (including the well-known technique and conventional technique).Factors Affecting Formulation of Reasoning- It is evaluated whether or not the difference is mere selection of optimum materials in the cited invention, or mere design modification, or mere use of the well-known technique and conventional technique, and the like.- It is evaluated whether or not there is any motivation which can be found in the cited invention for leading to the difference.- It is evaluated whether or not the specification discloses any advantageous effect based on the difference as compared with the cited invention. The proof of any advantageous effect is very useful for asserting the inventive step.Even if there is apparently a close relationship in the technical fields, common subject to be attained and common function/operation between the claimed invention and the cited invention, but if the cited references have a description which could negate the reasoning to combine these references, then the inventive step of the claimed invention may be positively evaluated. ENGLISH SPEAKING COUNTRIES:AUSTRALIA:Section 18(1)(b) of the Patents Act 1990 (Cth) requires that an invention involve an 'inventive step', and Section 45(1)(c) requires inventive step to be considered during examination.Section 7(2) provides that an invention is taken to involve an inventive step 'unless the invention would have been obvious to a person skilled in the relevant art' in the light of 'common general knowledge' in Australia and such other prior art information as may be added to that common general knowledge, as before the invention's priority date. There is thus only a limited prior art database available for an inventive step assessment - not every prior art document can be used.For determination of the inventive step it is necessary to construct a hypothetical person skilled in that relevant art and obtain an appreciation of the common general knowledge of such a person. That hypothetical person's knowledge will then be used as a standard in evaluating whether the invention is obvious in the light of this knowledge or involves an inventive step.The main question to be asked in a determination of inventive step has been distilled down to the following in Olin Mathieson v Biorex (1970) RPC157 at page 187, and approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Lid [2002] HCA 59 (12 December 2002):"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result}.In assessing whether an invention satisfies the requirements for the presence of an inventive step, the following (amongst others) are useful tools in assessing inventive step, but generally do not alone establish it:(i) Long Felt NeedIf the claim solves a "long felt need", there is a presumption that the claim is not obvious as other inventors must have also tried to solve the "long felt need" and not succeeded:In Lucas and Another v Gaedor Ltd and Others (1978) RPC 297 at page 358 it was held:" ... the question of obviousness is probably best tested, if this be possible, by the guidance given by contemporaneous events .... If an invention has resulted in the solution of a problem which has been troubling industry for years and achieves immediate success upon its introduction, then the suggestion after the event that the step was obvious inevitably rings a little hollow.(ii) Copying of the InventionCopying of the invention in preference to the prior art is indicative of an inventive step:In Samuel Parkes & Co Ltd v Cocker Brothers Ld (1929) 46 RPC 241 at page 248 it was held by the Court that:"When once it has been found ... that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is ... practically impossible to say that there is not present that scintilla of invention necessary to support the patent .... No evidence is more cogent of the success of the invention than that the defendants simply copied it and made profits by making and selling the products.(iii) Complexity of the WorkIf the work undertaken by the inventor in order to produce the invention was particularly complex, and not readily carried out, that is an indication that it was not a matter of routine. In such cases the invention would not be obvious.In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [58] it was held that:"The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.Commercial success may also act as a factor which points to inventiveness, as stated in a recent important decision from the Australian High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21:"Secondary evidence, such as commercial success... has a role to play in a case concerning inventive step... An Australian court should be slow to ignore secondary evidence or to rely on its own assumed technical expertise to reach conclusions contrary to such evidence. Australian courts have long recognised that the importance of such evidence and its weight will vary from case to case; it will not necessarily be determinative."The dangers imposed by the hindsight analysis were first noticed by the Australian Courts in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (1980) CLR 253"With the benefit of hindsight, it may be possible to say that each of the steps taken ... was logical, but that does not mean that the claimed inventive step was obvious”This case was appealed and, Australian High Court in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 and the Aickin J. held that in relation to the process of recreating the prior art, the misuse of hindsight is most common. Once a novel idea, object, process or combination has been published it will often be possible to work backwards to identify the integers which comprise the claimed invention scattered among the prior documents held in libraries. Such a process was held by the High Court not to demonstrate a lack of inventiveness.An approach used by the courts in HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437 to avoid this problem is the "problem-solution" approach."If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem. "The "problem-solution approach is based on the question of whether the claimed invention would have been obvious to the hypothetical skilled addressee when faced with a particular problem. The frame work of the "problem-solution" approach inherently embodies what happens in practice and is regarded by the Patent Office as covering the statutory framework. Given this, Australian Patent Examiners are instructed during examination to not take any inventive step objections without using the "problem-solution" approach and formulating a problem from the specification itself.In general terms, it has been the dangers posed by hindsight analysis that have caused Australian courts to stress that there need only be a 'scintilla of invention' for a particular step not to be obvious, and that the simplicity of an idea does not prevent it from being inventive.

Compulsary License for patents in India

Patents are granted to encourage the inventors to disclose their inventions and also to grant them monopolistic right to exploit the invention. The objective of Patent Grant in India is to ensure that the inventions are worked in India on a commercial scale and to the fullest extent without any undue delay.Accordingly, any interested person after expiry of 3 years from grant of patent even though if he is a license under the patent, may make an application to the Controller for grant of compulsory license on the grounds that:(a) the reasonable requirements of the public with respect to the patented invention have not been satisfied; and(b) the patented invention is not available to the public at a reasonable price.(c) the invention is not worked commercially to fullest extent in territory of India.The circumstances constituting "failure to meet the reasonable requirements'' of public in respect of a patent are as follows:(i) Inadequate manufacture in India or failure to grant licenses on reasonable terms with in a period of 6 months form applying by the applicant resulting in:(a) Prejudice to an existing trade or industry or its development,(b) Prejudice to the establishment of a new trade or industry in India,(c) Prejudice to the trade or industry of any person or class of persons,(d) Demand for the patented article not being met adequately by local manufacture,(e) Failure to develop an export market for the patented articles made in India,(f) Prejudice to the establishment of commercial activities in India;(ii) Prejudice to the establishment or development of trade or industry in India in goods not protected by the patent arising from restrictive conditions imposed by the patentee;(iii) Non-working of the patent in India on a commercial scale;(iv) Demand for the patented articles being met by importation from abroad; and(v) Commercial working of the patented invention in India being hindered or prevented by import of the patented articles from abroad.Grant of Compulsory license is for the remaining term of patent unless a shorter period looks reasonable and required in case to the Controller.Further, it is to be noted that while granting the license the Controller shall take into account the nature of invention, time elapsed, ability of applicant, his efforts for obtaining a license on reasonable terms. While granting a compulsory license reasonable royalty is also paid to the patentee having regard to nature of Invention, its utility, expenses incurred in maintaining patent grant in India and other factors.Normally request for grant of Compulsory License is published and Patentee and other interested persons are afforded reasonable opportunity to defend the grant. But in case of national emergency and other urgent condition in public interest the Controller may first grant the License and then notify the Patentee and other interested persons.Under special circumstances of medical emergency supported by notification by foreign country in this regard controller may grant compulsory license to meet the medical emergency in that country.

PATENTIBILTY OF MICROORGANISMS IN INDIA

Inventions pertaining to Microorganisms and other Biological material were subjected to product patent in India unlike many developed countries. But with effect from 20.05.2003 India has started granted patents in respect of invention related to microorganisms though India was not obliged to introduce laws for patenting microorganisms per se before 31.12.2004. Microorganisms patenting per se being considered to be a product patent the period of protection was 5 years from the date of grant or 7 years from the date of filing of application for patent. Now grant of patents for microbiological inventions is for a period of 20 years from the date of filing.The most vital and important distinction between the legal practices of the India and developed countries is that India (developing countries) do not allow patenting of microorganisms that already exist in nature as the same is considered to be a discovery as per the provisions of the section 3(d) and therefore not patentable. But genetically modified versions of the same microorganisms that result in enhancement of its known efficacies are patentable.The grants of Patent in respect of Microorganisms depend upon the regulations concerning the requirements for the deposition of Microorganisms under the Budapest Treaty of which India has become a member and accessibility of that microorganism from the depositories. As per proviso (ii) to section 10(d) the Microorganism if not being described fully and particularly and is not available to public the said Microorganism is to be deposited before the International Depositary Authority under the Budapest Treaty with 3 months of making application in India. All details, available characteristics of the Microorganisms and details of depositary institutions shall be mentioned in specification for correctly identifying the same. Further access to the same is required to be made available only after date of Application in India or date of priority. For the purpose of Microorganisms and other Biological materials Microbial Type Culture Collection and Gene Bank (MTCC) is an internationally recognised depository institution.
It is therefore advisable before proceeding to file a patent application in respect of Microorganisms and other biological material to ensure that the same is not hit by the provisions of the section 3(d) of the Indian Patent Act and the invention is not a mere discovery of what already exist in nature and in case of genetically modified variant of the Microorganism or other biological material the invention results in enhancing the efficacy of the already exiting strain of the Microorganism or other biological material.

YAHOO!’S YODEL FIRST SOUND MARK GRANTED IN INDIA

Yahoo!’s yodel became the first sound mark to be granted by Indian Trade Marks Registry. As per the definition of mark under the Indian Trademark Act, a ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof. As per the provision of the Indian Trade marks Act a ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It also denotes the origin of goods and carries goodwill of the business in respect of which it is used.Further, the Indian Act requires that trademark must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and must not deceptive.The Trademarks Registry granted registration to Yahoo!’ yodel on August 18, 2008. The sound mark can be registered in India as they are capable of being represented graphically i.e. in the form of musical notes thus satisfying the requirement of the Indian Trade Marks Act. As per the Indian Trade Marks Act one of the essential and inherent requirement of a trade mark is that it should be capable of being represented graphically and must be able to distinguish the good or services in respect of which it is employed from that of others.Smell marks are still not registered in India as it cannot be represented graphically like musical notes although they satisfy other requirements of the Indian Trade Marks Act.

Software Patents India

Unlike many countries computes software still are not included in the definitions of patentable invention under Indian Patent Law. Though Indian Govt. in April 2005 brought an ordinance to include computer softwares imbedded in hardware like computer, mobile, televisions etc. and having industrial application under the definition of patentable invention by amending the clause (k) of section 3 under chapter II of Indian Patent Act, 1970 but under pressure of the software professional lobby did not enacted the same. The relevant provision under the Indian Patents Act reads as under:
CHAPTER II
INVENTIONS NOT PATENTABLE
3. What are not inventions.- the following are not inventions within the meaning of this act,--……
(k) a mathematical or business method or computer programe per se or algorithms;
But still a number of applications relating to inventions pertaining to the computer software are filed every year in India and by clever camouflaging of the words these applications are successfully proceeded to the stage of grant of patents.
Indian Patent law technically bars grant of patents pertaining to the inventions relating to computer softwares "per se", so if the invention is shown relating to a computer hardware or some form of generic hardware in embedded is patentable. All that is required that method claims should refer to a hardware component or there shall be inclusion of hardware or device in method claims. New Draft manual of Patents also allows invention relating to computer software if there is a hardware feature in embedded form to establish dependency of method steps on hardware device.
Though even after several rounds of discussions there is nothing concrete that is coming our from the meeting as regards to India's stand on computer software. There is still strong likelihood of Indian Government relenting to include the computer softwares under the category of patentable inventions as a large number of computer softwares now days are invented by the Indian software professionals, but at the same time there is lot of opposition from software programmers who are oppose to any sort of restriction to use on software programmes.

Stands of Software programmers can not be outrightly rejected by Government but at the same time it has to be understood that unless there would be any incentive from development in computer software that would also discourage further research and development in the field and would ultimately harm the industry itself. There has been suggestions to grant Patent to software programmes and reduced the period of grant at the same time, which could be win-win situation to both parties.

Further one by filing patent application in India in relation to software inventions can hope that in near future Indian Government enacts the desirable changes to grant patents to inventions pertaining to the computer softwares. Therefore anyone interested in filing a PCT application national phase or Convention application has to more careful at the time of filing original application for the first time in a foreign country. The language of specification as well as claims has to be accordingly modified at the time of filing of original application and there shall be sufficient dependency of software features on hardware components to make subject matter patentable in India.

GSK, EMR, Supreme Court and Novarits, saga is far from over

Pursuant to Shamnad's post on Spicy IP, where at the end an interesting question wasraised. But even if EMR could be granted from date of first rejection thatis 2002 even then the term got over in 2007. But if EMR could be granted forsaid period, then interesting question would be the infringment action thatGSK can take against generic manufactures during pendency of the EMR asSection 78 of the repealing act provided for the infringement action inrespsect of EMR till their term is over.What GSK now possess is a paper decree and same lacks any teeth. This alsobrings attention towards novartis gleevac case, where a appeal is pendingagainst order of Controller in IPAB. In said matter the order was passed byController under Section 25(1) from which no appeal can be preffered and theremedy in such event is a writ petition, But referring the matter to IPABwhich lacks jurisdiction to entertain appeal against pre grant oder willagain lead to a paper decree.

SALE PROMOTION OR LOTTERY

Although in India sales promotions offering one item free with another are restricted as they give impression to intended consumers that something is offered free of charge when the same is fully or partly covered by the amount charged. Nevertheless now a days a lot of brands especially apparel brands are offering one apparel along with other through out the year, these offers are neither end of season sale nor on some special occasion, but are given to allure the customers believing that they will get one item free in the cost of one but the cost of apparel is deliberately kept at a price where in a routine course 2 such apparels can be offered for sale. Many companies like “Cotton County” and “Koutons” have immensely advertised themselves and lured the innocent customers in garb of the these promotional advertisements. Further many states in India have banned the lottery and gambling also stands illegal in India. The very objective of banning lottery was to stop the element of uncertainty which is inherent in any lottery. Now many fast food chains like “Mc'Donald” where the targeted customers are children of impressionable age, have introduced this lottery concept in the form toy marketing. Instead of offering the toys for sale the food joints are encouraging the children to play the game by paying a specified amount per attempt. Children are to use a liver to pick anyone of the toy in a single attempt. Though here skills can be said to be employed and the whole concept may not be based on uncertainty, nevertheless it is a form of gambling when the same is not allowed in any sport, then the same should not be allowed in case children. If this is a sale promotion the same can be allowed without any charge as a complimentary gift.

PCT FILING INDIA

National Phase Entry of PCT Application:
All PCT Applications designating India are considered as Indian Patent Applications filed on the date of the International Application. The period for entering into national phase is 21 months if India is designated or 31 months if India is designated as well as elected; from the priority date.Following are the basic requirements for entry into National Phase in India:
(i) Application setting out the title of the invention, names, addresses and Nationality of the inventors; applicants.(ii) Complete specification a filed before the International office with claims, drawings and abstract.(iii) Prescribed Fees in cash/by local cheque /by demand draft.(iv) Translation of International Application if the Application is not filed in English.Once the national processing has started, the following documents may be furnished:
(i) assignment deed where the applicant is not the inventor, (ii) Declaration of inventorship by the Applicant,(iii) Statement and undertaking regarding corresponding Applications in other countries,(iv) Power of Attorney to agent (duly stamped),(v) Verification of translation,(vi) Copy of Priority document (if not already filed with International Bureau or if not filed in English),(vii) International Search Report(viii) International Preliminary Examination Report.
At the time of national phase entry, amendments to the International Application can be made, but such amendments cannot go beyond the disclosure made in the original Application. No extraneous or new matter is to be added.
It is possible to file a complete specification in respect of two or more provisional specifications if the invention disclosed in them is cognate or development of each other. However there would not any relaxation in payment of fees.
In case of PCT application request for early Examination may be filed any time prior to 31 months from the date of priority.
After a request for examination is filed, the Controller ordinarily assigns the Application to an Examiner within one month of request. The Examiner will examine the Application and issue an Official Report to the Controller ordinarily within one month but not exceeding three months. The Controller shall then communicate the report to the Applicant ordinarily within one month. An application is examined for the following matters:
(i) Novelty,
(ii) Obviousness,
(iii) Utility,
(iv) Patentability under the Patents Act, 1970 and as amended, and
(v) Anticipation.
The Applicant is provided 12 months' time to respond to the issues raised in the Examination report, which period is not extendible. Once objections are met, the application is accepted by the Controller and, thereafter, is advertised in the Official Gazette for opposition, if any to the grant.When the period for Opposition has expired or where the Opposition is decided in favor of the Applicant, the Patent will be granted in favor of the applicant. Once a patent is granted, it is valid for 20 years from its date of filing. It must be renewed every year by paying prescribed fee. After a Patent has been granted, articles manufactured under the patented invention may be represented as "Patented.'' The number of the Patent must be indicated on the product.

Amendments to Patent Law India

The Government of India in May 2006 brought amendment in the existing Patent rules with a view to bring in more transparency, relaxing rigid time frames for compliance, time bound processing and simplify various procedures associated with processing of Patent applications in India.As per the changes notified under the Patents (Amendment) Rules, 2006, official fees can now also be paid through Electronic means. Further the patent Applications are now to be published in the Journal ordinarily within one month after expiry of the statutory period of 18 months or one month from the date of request for publication under Rule 24A in case of request for an early publication.Further, to ensure time bound disposal of patent applications, definitive timeframes have been prescribed e.g. patent application ordinarily has to be referred by the Controller to an examiner within one month of a request for its examination or its publication, whichever is later and the controller shall be required to take a decision within one month of the submission of report by the Examiner, and the first examination report must be issued in six months of the date of request for examination of a patent or six months from date of publication whichever is later.Further the time for granting permission to file Patents abroad has been reduced to just 21 days from day of request.With a view to soften the rigid time frames for compliance and to make the system more use-friendly, the timeframe for making a request for examination has been extended from 36 to 48 months and the time for putting an application for patent in order of grant has been extended to twelve months from issuance of first objection report.For ushering transparency in grant of patent no patent shall be granted prior to six months from date of publication of application. Therefore the effective timeframe for filing a pre-grant opposition got extended from 3 to 6 months and the time for filing reply statement and evidence to pre-grant opposition has been extended from 1 to 3 months. Further Patent Certificate shall now be issued within 7 days from the date of grant of patent.

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