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Friday, September 25, 2009

ONE OF ITS KIND

Supreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors..

The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and “appeals against order passed by Controller of Patents under pre Grant or post grant opposition”.

It would be wise to state the brief facts of the matter in tabular form for better understating of the matter.

26.03.1999    Section 116 of the Indian Patents Act, 1970 amended by the Patents (Amendment) Act, 1999 w.e.f. March 26, 1999 that provides for appeal to High Court against orders passed by the Controller of Patents. At that time only provision/remedy to oppose the grant of patent was pre grant opposition.

14.6.2000 J.Mitra & Company Pvt. Ltd. the appellant herein filed an application for grant of Patent

25.06.2002 Patents (Amendment) Act, 2002 was promulgated by Legislature and to hear appeals against orders passed by the Controller Appellate Board established under Section 83 of the Trade Marks Act, 1999 was made the Appellate Board for the purposes of Patent Act (under Section 116) and under Section 117A provision was made that appeal against order of Controller under Section 25 (pre Grant Opposition) and other provisions shall lie only in the Appellant Board. But Section 116 and 117A were not notified and brought into force. Still at that time only provision to oppose the grant of patent was pre grant opposition under Section 25 and same brought into force vide Notification dated 20.5.2003.

20.11.2004 The application was notified by the Patent Office after scrutiny
                    Span Diagnostics Limited opposed the application under the provisions of Section 25 as stood then (Pre Grant Oppositon)

04.04.2005 The Legislature enacted the Patents (Amendment) Act, 2005 w.e.f. 01.101.2005 but not all provisions were simultaneously brought into force. Only certain sections of the Patents (Amendment) Act, 2005 were brought into force. Provisions for Pre Grant as well as Post Grant Opposition were made. But Section 117A was amended and expression Section “25” was replaced with Section 25(4),effectively meaning that appeal shall lie against order passed under Section 25(4) i.e. order passed by Opposition Board in Post Grant Patent. The Legislature allowed appeals only against decision passed by the Controller in a Post Grant Opposition not pre Grant Opposition. Though the provisions of Section 25 were brought into effect, but the provisions of Section 116 and 117A were not brought into effect.


21.03.2005 Pre-grant opposition was filed under Section 25(1) of the Patent Act. It is to be noted that Patent (Amendment) Act, 2005 was enacted only after filing of this opposition on 04.04.2005 but was brought into effect from 01.01.2005. Therefore only provision available for opposition on such date was under the Patent (Amendment) Act, 2002.

23.08.2006 Pre Grant Opposition was rejected by the Controller of Patents. And as the Section 116 and 117A was not enacted on such date only remedy was to file Appeal under the provisions of Section 116 of Patent (Amendment) Act, 2002 that provides for filing the appeal before the High Court.

22.09.2006 The patent was granted. From here contention of Appellant arises, that after grant of Patent

19.10.2006 Appeal filed before the High Court against the order passed by the Controller of Patents in the patent opposition being FAO no. 292/2006 & 293/2006.

02.04.2007 Provisions of Section 116 and 117A, brought into effect by notification by the Legislature

03.04.2007 Provisions of Section 117G, that called for transfer of all pending proceeding against any order or decision of Controller and all cases pertaining to revocation other than on a counter claim in a suit for infringement and rectification of register pending before any High Court to the Appellate Board was brought into effect by notification by the Legislature. The Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.


In words of Hon’ble Supreme Court “This matter is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005.”

The enactment of Patents (Amendment) Act, 2005, introduced for the first time a dichotomy in the Patent Law between “opposition to the pre-grant” and “opposition to the post-grant of patent” and also as to “appeal” that may be preferred against any orders that may be passed by the Controller of Patents in opposition proceedings. No doubt, the Amendment Act of 2005 brought major structural change in the Indian Patent Law as per India’s Obligation under WTO/GATT. As per the amendment the appeals against orders passed under the post-grant opposition by the Controller shall lie before the Appellate Board and not to the High Court. But the enabling provision i.e. Section 117A was not brought into force till April 2, 2007. Therefore, appeal if any has to be preferred before the High Court under Section 116 of the Patent (Amendment) Act, 1999.

Though the provisions for an appellate forum to hear appeals against order passed by the Controller of Patents were enacted by legislature in 2002, the Govt was not able to start functioning of the Appellate Tribunal till April 2007 and hence Section 116 and 117A were not brought into force.

The Legislature intended to provide for only one statutory appeal against order passed by the Controller that too in a Post Grant Opposition to the Appellate Board but by not bringing Amending Section 61 into force till April 02, 2007, appeals filed during the interregnum i.e. between 01.01.2005 to 01.04.2007, as in this case, became vulnerable and liable to be dismissed as misconceived as contended by the appellant before Supreme Court.

Supreme Court observed “quite often the commencement of an Act is postponed to some specific future date or to such date as the Appropriate Government may, by notification in the Official Gazette, appoint. At times provision is made for appointment of different dates for coming into force of different parts of the same Act.”

“An Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation.”

The Court while applying the above tests to the present case found that for the first time a dichotomy was introduced in the Patent Law by providing vide Section 25(1) for “opposition to pre-grant” and vide Section 25 (2) for “opposition to post-grant” of paten under the Patents (Amendment) Act, 2005. Earlier, there was no “post-grant opposition” and the only provision of challenge was a “pre-grant” challenge under Section 25 (1). By Patents (Amendment) Act, 2005, under Section 25(2) right is granted to an “aggrieved person” to challenge the patent even after its grant and the grounds of challenge are identical to Section 25(1) of the Act. Therefore giving a right after grant but limiting the right to only an “aggrieved person” and fixing the limitation period to one year after grant.

Though the Legislature further intended to limit the right to appeal only to post grant oppositions and obliterate appeal from “pre-grant proceedings” but the Executive did not bring the enacted law (Chapter XIX having provisions for appeals to the appellate board i.e. Section 116 and 117 A to H) into force vide a notification simultaneously along with other provisions of the Act especially Section 25 (1) and (2). As a result the chapter XIX containing amended Sections 116 and 117A(2) were not brought into force only on 2.4.07 (and 117G on 03.04.2007) whereas the concept of “Pre grant” and “Post-grant” oppositions were already brought into force w.e.f.1.1.2005. In words of the Hon’ble Supreme Court:

“This is where the legislative intent got defeated during the interregnum.”

During that period only the Respondent filed appeals against the orders rejecting the Pre Grant Oppositions by Controller of Patents being FAO No. 292/06 and 293/06 before the High Court under Section 116 of the Patents (Amendment) Act, 1999 , as it stood on date of filing of appeal i.e. October 19,2006”. On the date of filing of appeal, the amended Section 117A, suggested by Patents (Amendment) Act, 2005, was not brought into force, therefore, the Patents (Amendment) Act, 1999 prevailed under which an appeal lay before the High Court.

The Supreme Court held “Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time, we are of the view that the first appeals, filed by respondent no.3 in the High Court being FAO No.292/06 and FAO No.293/06, would remain in the High Court. The said appeals would be heard and disposed of by the High Court in accordance with law under Section 116 of the said 1970 Act as it stood on 19.10.06. The High Court will hear and decide the validity of the Order passed by the Controller dated 23.8.06 rejecting “pre-grant opposition” filed by respondent no.3. We are informed that there are hardly one or two matters of this nature which are pending.

Therefore, we are of the view that respondent no.3 cannot be let without remedy. In the special circumstances of this case, particularly when after 2.4.07 appeals against orders rejecting “pre-grant opposition” are not maintainable and particularly when FAO No.292/06 and FAO No.293/06 were filed by respondent no.3 prior to 2.4.07 under the old law, we are of the view that these two appeals shall be heard and decided by the High Court in accordance with law. The Appellate Board after 2.4.07 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4), i.e., in cases of orders passed in “post-grant opposition”. Therefore, there is no point in transferring the pending FAO No.292/06 and FAO No.293/06 to the Appellate Board which has no authority to decide matters concerning “pre-grant opposition”. Moreover, it may be noted that even Section 117G, which refers to transfer of pending proceedings to the Appellate Board, is also brought into force vide Notification dated 3.4.07. Keeping in mind the peculiar nature of the problem in hand, we are of the view that ends of justice would be subserved if the High Court is directed to hear and decide the appeals bearing FAO No.292/06 and FAO No.293/06 in accordance with law as it then stood, i.e., under Section 116 under Patents (Amendment) Act, 1999 against Orders passed by the Controller in “pre-grant opposition” proceedings.

The Section 6 of the General Clauses Act 1897 clarified the position of law and intent:

6. Effect of repeal.- Where this Act , or any Act made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then, unless a different intention appears, the repeal shall not—
....



c). affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or

The provision along with ratio laid down by Hon’ble Supreme Court in GSK case concerning the Exclusive marketing rights (GSK Case)  made amply clear that where any enactment is repealed, it shall not affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed, unless, a different intention appears.

Applying the same ratio in the present matter, though the rights were accrued to respondent before the provisions of Section 116 as envisaged under Patents (Amendment) Act, 2005 was enacted, but the provisions of Section 117A made very clear that intention of legislature is different i.e. no appeal shall lie against any order passed by Controller of Patents in Pre Grant Oppositions.

The pendency of only very few such appeals against pre grant orders during the interregnum made the Hon’ble Supreme Court to keep the matter with the High Court. Otherwise, the interpretation of “appealable orders” under 117A read with 117G might have settled the position of law as to what about the provisions against which right to appeal is taken away subsequently.

Wednesday, September 23, 2009

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”.

To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.

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.

INDIA

A. Obviousness under 1970 Act

Only a ground under opposition that too after grant and Revocation of Patents

The invention was defined under Section 2(1) (j) the Indian Patents Act, 1970;

(j) “invention” means any new and useful-art, process, method or manner of manufacture; machine, apparatus and other article; 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 2003

Definition 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 Office

1. 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.)

5. 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 Patent Office

Under 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; and

Examining 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; and

Deciding 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 genius

The 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 FACTORS

The 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 at

the 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; and

objective 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; and

failure 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 endeavour may prompt variations of it for 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; and

whether 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)].


JAPAN

Apart 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.


OTHER 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 Need

If 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 Invention

Copying 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 Work

If 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.


Conclusion:

Broadly the interpretation of obviousness or lack on inventive step is similar, the only difference in approach of the particular Patent office. In India lack of any judgment by the Supreme Court of India on the subject matter leaves the interpretation of obviousness to practice of Indian patent office. In absence of authorities the interpretation varies from Examiner to Examiner and involves use of discretionary power.

COMPUTER SOFTWARE & BUSINESS METHOD PATENTS IN INDIA

COMPUTER SOFTWARE & BUSINESS METHOD PATENTS IN INDIA


India like European Union does not allow patents for inventions related to mathematical or business method or computer programme “per se” or algorithms. 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 programme per se or algorithms;

The Section makes it amply clear that algorithms are not patentable in India. Though as per the Indian Patent Act, mathematical method, business method or computer programme per se are not allowed. The draft patent manual defines how inventions pertaining to above should be handled by the Indian Examiners and lays down parameters under which such inventions shall be patentable in India.

The proposed patent manual defines computer implemented invention as any invention the performance of which involves the use of computer, computer network or other programmable apparatus, or an invention one or more features which are realized wholly or partially by means of a computer programme/ programmes. Further, patent manual defines Computer programmes as a set of instructions for controlling a sequence of operations of a data processing system which closely resembles a mathematical method. Computer programme may be expressed in various forms e.g., a series of verbal statements, a flowchart, an algorithm, or other coded form and maybe presented in a form suitable for direct entry into a particular computer, or may require transcription into a different format (computer language). It may merely be written on paper or recorded on some machine readable medium such as magnetic tape or disc or optically scanned record, or it maybe permanently recorded in a control store forming part of a computer.

Though proposed patent manual emphasises on disclosure of mode of operation for inventions involving apparatus and necessary sequence of steps for process related invention, yet it lays down categorically that a hardware implementation performing a novel function is not patentable if that particular hardware system is known or is obvious irrespective of the function performed. It manifests that for such kind of invention insertion of method steps in apparatus or some dependency shall be required to make them non-obvious.

The patent manual has also broadly categorised inventions related to computer/ computer programmes as below:

(a) Method/process;
(b) Apparatus/system; and
(c) Computer program product

METHOD/PROCESS:

Further to make the invention patentable in India, the method claim should clearly define the steps involved in carrying out the invention and should have a technical character. In other words, it should solve a technical problem. The claims should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity. The claim orienting towards a “process/method” should contain a hardware or machine limitation. Technical applicability of the software claimed as a process or method claim, is required to be defined in relation with the particular hardware components. Thus, the “software per se” is differentiated from the software having its technical application in the industry. Therefore, as per the patent manual, a claim directed to a technical process which process is carried out under the control of a programme (whether by means of hardware or software), cannot be regarded as relating to a computer programme as such.

An example is also cited in the proposed patent manual on what kind of claims shall be allowable.

“a method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable.”

“Here the signals are collected from a definite recited structure and hence allowable.”

What is significant here is that patent office is not emphasising on embedment of hardware components in the method claims, as the only condition for patentability of method claims, but requires it as a machine/hardware limitation. Therefore the essential of method claims are:

a) It should solve a technical problem;
b) It should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity; and
c) It should contain a hardware or machine limitation.

APPARATUS/SYSTEM:

As per the proposed patent manual the apparatus claim should clearly define the inventive constructional hardware features. This could act as a limitation, as ordinarily hardware or machine don’t involve novel or inventive constructional feature but are programmed to perform in a novel or inventive way. Further, it suggests that the claim for an apparatus should incorporate a “process limitation” for an apparatus, where “limitation” means defining the specific application and not the general application. As a general rule, a novel solution to a problem relating to the internal operations of a computer, although comprising a program or subroutine, will necessarily involve technological features of the computer hardware or the manner in which it operates and hence may be patentable.

An example is also cited as to what manner process limitation shall be inserted in the claim. For example, in a computer comprising means for storing signal data and a first resistor for storing data, the clause starting with “for” describes the function or process carried out by the apparatus, and form the part of “process limitation” here.

Therefore the essential of apparatus/system claims are:

a) It should clearly define the inventive constructional hardware features; and
b) It should incorporate a “process limitation” for an apparatus, where “limitation” means defining the specific application and not the general application.

COMPUTER PROGRAM PRODUCT:

A careful interpretation and analysis of the provision makes it clear that it is computer programme per se that are not allowed as they are subject matter of copyright in India. The reason for not considering the software as patentable subject matter was to avoid duality of protection available to software. But subject matter of copyright can be only their literal presentation of software which includes coding decoding or algorithm form and more precisely it is their algorithms form that the Indian Patents Act does not consider the patentable subject matter.

The proposed patent manual considers the claims relating to software programme product as nothing but computer programme per se simply expressed on a computer readable storage medium and as such are not allowable. Therefore requires something tangible to bring them out of provisions of Section 3 (K) of the Indian Patents Act i.e. embedding of hardware components.

For example, if the new feature comprises a set of instructions (programme) designed to control a known computer to cause it to perform desired operations, without special adoption or modification of its hardware or organization, then no matter whether claimed as “a computer arranged to operate etc” or as “a method of operating a computer”, etc., is not patentable and hence excluded from patentability.

It creates an ambiguity as whether a patent shall be allowed where all criteria for method or process claims as required by patent office are met. The only distinction from the previous categories could be that in present category “mode of implementation of the invention” is not mentioned in the claim, which in any case should not change the very character of the invention.

Patent manual further clarifies that the claim might stipulate that the instructions were encoded in a particular way on a particular known medium but this would not affect the issue. e.g., A program to evaluate the value of PI or to find the square root of a number are held not allowable. However, an invention consisting of hardware along with software or computer program in order to perform the function of the hardware may be considered patentable. e.g., embedded systems.

Therefore, claims must have few hardware components as an essential part of the invention and some form of interdependence should be shown between the software and hardware components. Hence, claims relating to methods utilising computer programs for its operation are patentable, as long as they do not claim computer programs itself.

Therefore the essential of computer program product claims are:

a) Must involve hardware components;
b) Computer programmes should perform function of the hardware; and
c) There should be interdependence between the software and hardware components

BUSINESS METHOD:

In history of inventions relating to business methods filed in India, major reasons for negating the invention was lack of industrial application, which is one of the major condition to qualify as an invention and consideration whether same in non-patentable being business method may be considered only if the subject is first found to be invention.

Invention is defined under Section 2(1)(j) of the Indian Patents Act, 1970 and reads as follow:-

“Invention” means a new product or process involving an inventive step and capable of industrial application.”

In Melia's Application (BL O/153/92), where an application relating to a scheme for exchanging all or part of a prison sentence for corporal punishment was held to lack industrial applicability and also to be a method for doing business.

In John Lahiri Khan’s Application (BL O/356/06) a method for effecting introductions with a view to making friends was held not to be industrially applicable, even though it could be carried out by a commercial enterprise. It was also found to be non-patentable as a method of doing business.

“Capable of industrial application” is defined under Section 2(1)(ac) of the Indian Patents Act, 1970 and reads as follow:-
“Capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.

In re: Bernard Bilski, US Federal Court of appeal in its judgement dated October 30, 2008 upheld that business methods cannot be patented. The court observed that the sole analysis for determining whether an invention is patentable should be the “machine-or- transformation test” i.e. requiring involvement of a machine (like in case of computer program product) or transforming an article (for details refer to case law).

Though there are no specific, guidelines in proposed draft manual as to how to treat inventions pertaining to business methods, the requirements for patentability as in case of computer programmes or mathematical methods becomes of great significance and could be relied.

Therefore the business method per se may not be patentable, but its technical implication can be a subject matter of patentable invention.

MATHEMATICAL METHOD:

A mathematical method is one which is carried out on numbers and provides a result in numerical form (the mathematical method or algorithm therefore being merely an abstract concept prescribing how to operate on the numbers) and not patentable. However, its application may be patentable if performed function is technical process and claim is directed to such technical process not the mathematical method.

Reference has been made to Vicom/Computer-related invention [1987] 1 OJEPO 14 (T208/84) wherein the invention concerned a mathematical method for manipulating data representing an image, leading to an enhanced digital image. Claims to a method of digitally filtering data performed on a conventional general purpose computer were rejected, since those claims were held to define an abstract concept not distinguished from a mathematical method. However, claims to a method of image processing which used the mathematical method to operate on numbers representing an image can be allowed. The reasoning was that the image processing performed was a technical (i.e. non- excluded) process which related to technical quality of the image and that a claim directed to a technical process in which the method used does not seek protection for the mathematical method as such. Therefore the allowable claims as such went beyond a mathematical method.

Therefore anyone interested in protecting an invention in India or for any part of the world has to more careful at the time of filing basic application (priority application). The specification as well as claims should be modified in pretext of above before filing of patent application or else the description must have sufficient support for modification of the claims to include hardware components. One of the safest criteria deployed by the Examiner to find whether any hardware features are involved in the invention is to require inclusion of reference numerals for hardware components in the description as well as claims.

Sunday, September 20, 2009

Supreme Court allows appeal of Entertainment Network (India) Ltd. “Radio Mirchi” and refers matter back to Copyright Board for compulsory license

M/s Entertainment Network (India) owner of FM Radia “Radio Mirchi” Ltd filed an appeal in the Supreme Court against M/s Super Cassette Industries Ltd owner of “T-Series” brand.

The matter involved interpretation of Section 31 of the Copyright Act, 1957.

On applications of various Radio Stations for grant of compulsory license to all the radio stations, the Copyright Board at Hyderabad in terms of Section 31(1)(b) of Copyright Act, the Board vide its judgement dated 19.11.2002 fixed the standard rate of payment for a period of two years. Super Cassettes was not a party therein. The Board fixed royalties initially for a period of two years. An appeal there against was preferred before Bombay High Court.

Meanwhile on 28.1.2003, the appellant filed an application before the Copyright Board at Delhi for grant of compulsory licence in terms of Section 31(1)(b) of the Act against Super Cassettes i.e. respondents. The respondents filed an objection contending that as the suit for infringement was pending before the Delhi High Court, no application for compulsory license could be entertained. The High Court, on an application filed by the appellant, clarified that the respondent was free to canvas its submissions before the Copyright Board that the person infringing the Copyright should not be granted compulsory license. The Board directed the parties to come with their respective witnesses. However, when respondent intended to present oral evidence, it was declined and application was allowed granting a compulsory license to Appellant.

Appellant filed an appeal against the said order before the Bombay High Court questioning the rates of compensation only and was tagged with various other appeals filed against the order dated 19.11.2002 passed by the Copyright Board at Hyderabad. Bombay High Court opined that in terms of Section 31 of the Act, grant of compulsory license on reasonable remuneration is permissible

Respondents preferred two-fold appeals before the Delhi High Court and by judgment dated 30.6.2004, the respondent's appeal was allowed remitting the matter back to the Copyright Board to reconsider the application of the appellant for grant of compulsory license under Section 31 of the Act after giving adequate opportunity to the parties to adduce evidence and to dispose of the same by a reasoned order. The High Court furthermore directed that the appellant must file an undertaking that it would not broadcast the sound recordings of the respondent. Against said order the present appeal was filed before the Supreme Court of India.

The supreme Court has to deal with two judgments one from the Bombay High Court and another from the Delhi High Court. Whereas the Bombay High Court opined that in terms of Section 31 of the Act, grant of compulsory license on reasonable remuneration is permissible; the Delhi High Court held otherwise.


The Supreme Court vide its judgement dated May 16, 2008 held that as it was a case of abuse, the Board had the jurisdiction to entertain any application for grant of compulsory licence. How far and to what extent appellant has infringed the right of the respondent is a matter which may be taken into consideration by the Board. A suit was filed and injunction was granted. Apart from the fact that the appellant offered to take a license held negotiations with the respondents in the suit as soon as it came to know that Super Cassettes is not a member of PPL, it gave an undertaking. Each case must be considered on its own facts. However, we do not approve the manner in which the Board has dealt with the matter. It has refused to examine the witnesses. It took up the matter on a day for hearing which was fixed for production of witnesses. Supreme Court was of the opinion that the order of the Board should be set aside and the matter be remitted to the Board again for the consideration of the matter afresh on merit and on those terms appeal was allowed.

The matter is being heard in the Copyright Board on day to day basis. Meanwhile appointment of Dr. Raghbir Singh as Chairman of Copyright Board, who is hearing the present matter is under controversy. As per the Copyright Act qualification for post of Chairman he is not qualified to be a High Court judge. The post of judge of High Court is a constitutional post and as per Article 217 (2) of the Constitution: "A person shall not be qualified for appointment as a Judge of a High Court unless he is a a citizen of India and- (a) has for at least ten years held a judicial office in the territory of India; OR(b) has for at least ten years been an advocate of a High Court or of two or more such Courts in succession;" and from the qualification and work experience it appears that he has never held a "judicial office" as per the provisions of Article 217(2) of the constitution. It is to be noted that any judgments passed by him, may be challenged in the Courts later and might be required to be heard de novo again.

TEMPORARY BREATHER AGAINST CRIMINAL PROSECUTION FOR “LAKHANI” FOR FALSE LODGING COMPLAINT UNDER COPYRIGHT AS WELL AS TRADEMARK ACT

Lakhani Rubber Udyog Ltd. Manufactures Hawai Chappel. They are registered owners of a trademark. Lakhani Rubber Udyog Ltd. filed a complaint with the Senior Superintendent of Police, Jallandhar against M/s. Saraswati Utpadan Pvt. Ltd. alleging that they are marketing inferior goods with the label 'Lakhani' illegally and requesting action under Section 63 of the Copyright Act read with Section 78-79 of the Trade and Merchandise Marks Act, 1958. On enquiry the complaint was found to be incorrect as no infringing material was discovered on the said premises belonging to Saraswati Utpadan Pvt. Ltd. as alleged in the complaint.
A complaint was filed by Saraswati Utpadan Pvt. Ltd. against the Lakhani Rubber Udyog and in enquiry report Senior Superintendent of Police, the Superintendent of Police stated that application submitted by the aforesaid Lakhani Rubber Udyog, Faridabad was found to be false after investigation. Due to which the Saraswati Utpadan Pvt. Ltd. had lost its goodwill. Therefore the SHO, Adampur is being directed to take action against the aforesaid officer of Lakhani Rubber Ltd. U/s 182 IPC.
The Station House Officer of the Police Station, Adampur thereafter filed a complaint petition before the Chief Judicial Magistrate against the Managing Director of Lakhani Rubber Ltd. as well as complaints (i.e. Appellants herein).
The Appellant questioned the legality and/or validity of the said report under Section 195(1) of the Code of Criminal Procedure, 1973 and other provisions before the High Court of Punjab and Haryana by filing an application under Section 482 of the Code. By reason of the impugned judgment dated 17.8.2005, the High Court dismissed the said application.
As per the provisions of Section 195(1) of the Code of Criminal Procedure, 1973 the complaint petition could have been filed only by the Senior Superintendent of Police, Jalandhar or any authority higher in rank to him.
It was contended by the Respondents that as the complaint petition having been filed pursuant to the directions of the Senior Superintendent of Police itself by SHO, it is valid in law.
Section 182 of the Indian Penal Code, indisputably, provides for an offence falling under Chapter X of the Indian Penal Code.
Section 195 provides for prosecution for contempt of lawful authority of public servant, for offences against public servant and for offences relating to documents given in evidence. It contains an embargo stating that 'no court shall take cognizance of an offence punishable, inter alia, under the aforementioned provision except on the complaint in writing by the public servant concerned or by some other public servant to whom he is administratively subordinate'.
Supreme Court in its judgement dated 22/04/2008 held that the High Court, committed a manifest error in so far as it held that the as the complaint was addressed to the SHO, he was the appropriate authority to lodge a complaint in respect of an offence punishable under Section 182 of the Indian Penal Code. The fact that the search was made pursuant to the directions issued by the Senior Superintendent of Police, Jalandhar is not in dispute.
Section 195 contains a bar on the Magistrate to take cognizance of any offence. When a complaint is not made by the appropriate public servant, the Court will have no jurisdiction in respect thereof. Any trial held pursuant thereto would be wholly without jurisdiction. In a case of this nature, representation, if any, for all intent and purport was made before the Senior Superintendent of Police and not before the Station House Officer.
No complaint, therefore, could be lodged before the learned Magistrate by the Station House Officer. Even assuming that the same was done under the directions of Senior Superintendent of Police, Jallandhar, Section 195, in no uncertain terms, directs filing of an appropriate complaint petition only by the public servant concerned or his superior officer. It, therefore, cannot be done by an inferior officer. It does not provide for delegation of the function of the public servant concerned.
In terms of sub-section (3) of Section 340 of the Code, a complaint may be signed by such an officer as the High Court may appoint if the complaint is made by the High Court. But in all other cases, the same is to be done by the presiding officer of the court or by such officer of the court as it may authorize in writing in this behalf. Legislature, thus, wherever thought necessary to empower a court or public servant to delegate his power, made provisions therefor. As the statute does not contemplate delegation of his power by the Senior Superintendent of Police, we cannot assume that there exists such a provision. A power to delegate, when a complete bar is created, must be express; it being not an incidental power.
The Supreme Court relied on the ratio laid down in Daulat Ram v. State of Punjab [(1962) 2 SCR 812], by Hidayatullah, J. (Single Judge) as well as decision was followed by a Division Bench of this Court in State of U.P. v. Mata Bhikh & Ors. [(1994) 4 SCC 95] and held that said decisions are squarely applicable to the facts of the present case and for the reasons aforementioned, the impugned judgment cannot be sustained and set aside judgement thereby allowing the appeal.
The Supreme Court further held that another complaint petition would be maintainable at the instance of the appropriate authority.

SUPREME COURTS BARS CHALLENGE TO “PETER SCOT” ON PRINCIPLES OF ACQUIESCENCE AND/ OR WAIVER

Khoday Distilleries Limited (Now known as Khoday India Limited) filed an appeal against judgment and order dated 12th October, 2007 passed by a Division Bench of the High Court of Judicature at Madras in Trade Mark Second Appeal (TMSA) No. 2 of 1998 affirming the judgment and order dated 25th September, 1998 passed in T.M.A. No.3 of 1989 whereby and whereunder an appeal preferred by the appellant herein under Section 109 of the Trade and Merchandise Marks Act, 1958 arising out of an order dated 12th May, 1979, against rectification of its mark by The Scotch Whisky Association and others before Registrar of Trademarks.
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Khoday is a company incorporated under the Companies Act, 1956 and manufactures whisky under the mark “Peter Scot” since May, 1968. Its application for registration of its mark was accepted and allowed to proceed with the advertisement, subject to the condition that the mark would be treated as associated with Reg. T.M. No.249226-B. The said trade mark was registered.

Respondents came to know of the appellants mark on or about 20th September, 1974. They filed an application for rectification of the said trade mark on 21st April, 1986. Appellant by way of affidavit explained coining of the mark “Peter Scot” where “Peter” was his father’s name and “Scot” was his nationality. Another factor behind the coining of this brand name was the internationally known British explorer, Captain Scott, and his son Peter Scott, who is widely known as an artist, naturalist and Chairman of the World Wildlife Fund.

However, the application for rectification was allowed. The appellant then preferred an appeal was preferred there against by the appellant before the High Court in terms of Section 109 of the Act. In one of the affidavit filed on behalf of the respondents affirmed by Ian Barclay it was stated that the respondents were aware of infringement of mark as far back in 1974 but as no action was taken in relation thereto till 1986, the application for rectification was barred under the principles of waiver and acquiescence.

A learned Single Judge of the High Court dismissed the said appeal and as regards the plea of acquiescence held that the acquiescence if it is to be made a ground for declining to rectify, must be of such a character as to establish gross-negligence on the part of the applicant or deliberate inaction which had regulated in the appellant incurring substantial expenditure or being misled into the belief that the respondents though entitled to, had deliberately refrained from taking any action and were unmindful of the use of the mark by the person in whose name it was registered and held that the facts of this case are not such as to warrant the conclusion that there has been acquiescence.

On an appeal a Division Bench of the High Court, dismissed the said appeal and appellant approached the Supreme Court against said order.

Taking into considerations all peculiar facts of the case as well as precedents laid down by Supreme Court it was observed that stand of respondents to object to the evidence that was produced before the learned Single Judge with regard to the increase in the volume of sale of Peter Scot, on the other hand urging that if a comparison is made of the Indian whisky and Scotch Whisky it would appear that some Indian whiskies are costlier than some of the Scottish brands. The stand taken by the respondents is self contradictory and is not fair and Supreme Court was of opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver.

As regards the question as to consideration is as to whether the use of the term Scot would itself be a sufficient ground to form an opinion that the mark Peter Scot is deceptive or confusing. The Supreme Court relied upon precedents operating in Australia and United States of America.

The Supreme Court observed that we are concerned with the class of buyer who supposed to know the value of money, the quality and content of Scotch Whisky. They are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin. Respondent No.3, the learned Single Judge as also the Division Bench of the High Court, therefore, failed to notice the distinction, which is real and otherwise borne out from the precedents operating in the field. The SC further observed that had these tests been applied the matter might have been different. In a given case probably SC would not have interfered but intend to do so only because wrong tests applied led to a wrong result.

It has held that so far as the applicability of the 1999 Act is concerned, having regard to the provisions of Sections 20(2) and 26(2), we are of the opinion that the 1999 Act will have no application.

The Supreme Court vide its judgement dated 27/05/2008 allowed the appeal and dismissed the impugned judgement of High Court, thereby cancelling the rectification proceedings in respect of “Peter Scot’ mark and reinstating the Registration.

CHALLENGE TO A PROVISION ACCRUED BEFORE IT IS REPEALED IS MAINTAINABLE IF THE REPEALING ACT IS SILENT

Supreme Court of India in a landmark judgement as to interpretation of Indian Patents Act and to the maintainability of challenge to a provision after it is repealed, held that challenge to Controller’s refusal to application for Exclusive Marketing Rights of GSK is maintainable even though the Act under which EMR application could be granted was repealed on January 1, 2005.
GSK has filed a black box application in respect of product patents in 1998, as before 2005 product patent application were neither examined not Granted, GSK in the year 2000 filed an EMR application for grant of exclusive license to market the product in India for 5 year. The application was rejected in 2002 against which GSK preferred a writ petition before High Court. In 2004 the matter was decided in favour of GSK by the High Court and Ld. Single Judge was pleased to allow re-examination of the EMR application of GSK. However, pursuant to order of the High Court, the application for EMR was re-examined and was again rejected on 28-12-2004 just 3 days before the provision relating to EMR was repealed by the Indian Patents Act, 2005.
GSK again preferred a writ petition against the order of the Controller rejecting the EMR application, the said writ was objected in view of repealing of provision relating to EMR as India started examining as well as Granting product patent applications in the Patents (Amendment) 2005 Act. It was contended by the Patent office that 2005 Amendment has repealed the provision for granting EMR, therefore leaving no scope for further consideration of the EMR application and in view of Section 78 of the Patent (Amendment) Act 2005, the pending applications for grant of EMR filed before January 01, 2005 i.e. GSK’s application for EMR shall be deemed to be as a request for Examination for grant of patent.
Section 78 of the Amending Act reads as follow:

78. Transitional Provision- (1) Notwithstanding the omission of Chapter IVA of the principal Act by section 21 of this Act, every application for the grant of exclusive marketing rights filed under that Chapter before the 1st day of January, 2005, in respect of a claim for a patent covered under sub-section (2) of section 5 of the principal Act, such application shall be deemed to be treated as a request for examination for grant of patent under sub-section (3) of section 11B of the principal Act, as amended by this Act.
.....
.....
This was contested by GSK, saying that on January 01, 2005 no such application for Grant of EMR was pending, in fact the application was disposed off even before the amending provision came into effect. Therefore right to challenge the impugned order rejecting the EMR application before any appropriate forum vested in Petitioner before the amending provision of Act came into effect, hence said Section 78 of the Amending Act has no application to the facts of the case. But the High court differed and decided the matter in favour of the Controller of Patents.

GSK filed a Special Leave Petition under Article 136 of the Constitution of India before the Supreme Court of India against the said order of the High Court. The Supreme Court observed that the Amending Act is silent on the issue of maintainability of pending proceedings initiated under the repealed Act, therefore provision of the General Clauses Act of 1897 shall apply.

Section 6 of the General Clauses Act 1897 reads as follows:
6. Effect of repeal.- Where this Act , or any Act made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then, unless a different intention appears, the repeal shall not—
....
....
c). affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or
....
The above provision makes it amply clear that where any enactment is repealed, it shall not affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed, unless, a different intention appears. Accordingly the Supreme Court held the GSK’s petition was maintainable.

Delhi High Court declines Cadila Healthcare's plea to restrain use of 'Sugar Free'

The Delhi High Court in its interim order rejected Cadila Healthcare's plea to restrain Dabur India and Shree Baidyanath Ayurved Bhawan from using ‘Sugar Free’ in their products.
Dabur India was using the mark 'Sugar Free Chyawanprakash' and and Shree Baidyanath Ayurved Bhawan was using the mark 'Sugar Free Chyawanprash Granules' in their Chywanprakash and Chyawanprash Ganules respectively.
Cadila Healthcare that controls a major sugar substitute business in India, had approached Delhi High Court to restrain Dabur India as well as Shree Baidyanath Ayurved Bhawan from using its trademark Sugar Free or any other mark that is identical or deceptively similar to ”Sugar Free”.
Justice Badar Durej Ahmed rejected Cadila's claim against use of mark ‘Sugar free’ by Dabur India and Shree Baidyanath Ayurved Bhawan on the ground that same is likely to cause confusion or deception among consumers about the origin of goods.
India allows fair use of the marks as a defence to any infringement action and if the same principle is taken into consideration the chances of Cadila suceeding in its claim are very remote. Both Dabur India as well as Shree Baidyanath Ayurved Bhawan could take the defence that their use of expression "sugar free" is for fair description of goods.

PATENT FILING REQUIREMENTS IN INDIA

To minimize the cost of Patent filing and prosecution in India, there are number of things an attorney should take in to account.

In the event you are filing a PCT national phase application, provide your associate/agent in India following information:
(i) Application details including title of the invention, names, addresses and Nationality of the inventors; applicants.
(ii) Complete specification as filed before the International office with claims, drawings and abstract (or provide the application number only, if it is filed as well as published in English)
(iii) English translation of the International Application if filed and published in language other than English.
(iv) Certified copy of the priority document/s if Form PCT/IB/304 is not available within 31 months from the date of earliest priority
(v) English translation of the priority documents, if filed and published in language other than English within 31 months from the date of earliest priority.

Priority documents are to be filed in India within 31 months from date of priority, therefore if Form PCT/IB/304 is not available, provide your associate the certified copy of priority documents along with your instruction, so that all documentation can be completed on time.

Where the International application or the priority application are in language other than English, provide an English translation of the same to your associate.

Demand from your associate that power of authority as well as other formal documents be sent to you for execution and supply the power of authority to your associate within one month of filing application in India. Power of authority is not required to be legalised or notarised, the only requirement is stamping as per the Indian Stamps Act, which shall be done by your associate/ agent in India.

The following requirements can be complied within 6 months from date of filing of the application, if your associate/agent charges for late submission of documents these documents/information can be supplied along with the instructions to file the application.
- Where the Applicant is not the inventor, provide your associate with the Assignment deed or any other document by which the inventor/s have assigned their rights to the Applicant.
- Details and status of corresponding Applications in other countries for the same or substantially the same invention.

It will not only save the filing cost but also will minimize your prosecution cost as you would not be required to file petitions along with official fee for not complying with the formal requirements on time and seeking extension of time.

In India, the Patent rights accrues from the date of publication of application in India, it is therefore advisable to ensure speedy publication of the application. Ordinarily in case of the PCT national phase applications the statutory period of waiting till publication i.e. 18 months is already over, therefore the associate should be advised to expedite the publication by chasing the concerned authorities.

A Patent application in India is not examined unless a request for Examination is filed within 48 months from the date of priority. The ordinary time frame from filing of request to issuance of examination report is 18-24 months therefore it is also advisable to file the request for examination as soon as possible (not to wait for 48 months deadline) to expedite the grant in India.

The time frame for putting the application in order of Grant is 12 months from date of issuance of the examination report, but it is advisable to file the response and initiate the discussion with the examiner as soon as possible to avoid any last minute hassles.

PATENTED DRUGS- NO MARKETING APPROVALS TO GENERIC COMPANIES

The Government of India is finalising a system that will prevent generic manufactures from getting marketing approval to sell patented drugs in India. As a result the generic companies may no longer get market approval for launching generic versions of drugs in respect of which a Patent Grant is in force in India. Drug Controller General of India will seek list of patented drugs from the pharma companies about the valid patents rights in India and shall prepare a data base of such patents, after which no marketing approval shall be given to their generic versions till such patent right is in force in India.

Such a move will avoid infringement and counter claim litigation in respect of pharma companies in Indian Courts and will require that generic manufactures file Post Grant/ revocation proceedings before the Patent Office etc. and only after their claim is declared successful, they can claim for marketing approval for generic versions. Further, to delay grant of Patent rights the generic companies will file number of Pre grant oppositions so that no patent is granted or at least grant of Patent is delayed. This system will be ineffective where a marketing approval has already be granted by Indian Authority, in such a case the effective remedy will be to initiate infringement proceedings against the infringer.

Now, the Pharma companies entering India have to be more careful as they can be assure that all possible measures shall be taken by the generic companies to delay their Patent Grant in India. Moreover, no pharma company would like that their Patent application is successfully opposed because of inefficient Attorneys that failed to plug the loop holes. In India, there are a number of IPR firms doing Patent works, which are not proficient with the legal interpretation of statue as they lack Attorneys with effective court experiences and fail to legally safeguard all interest of client. Most glaring example being the way the Pre grant opposition in respect of Novartis and LG Life Science were handled by the famous IPR firms in India.

Apart from above, the innovative pharma companies round the globe require that the time for filing and disposing pre grant opposition be reduced or at least fixed in India, so that the application can proceed towards grant at the earliest and this proposed system can be used efficiently by the companies.

TRADEDRESS AND ITS INTERPRETATION BY COURTS IN INDIA

Trade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, colour, graphic design or even the smell of the product.

The concept of trade dress was first brought in under the Trademarks Act, 1999 under the definition of ‘mark’ which replaced the previous Trade and Merchandise Marks Act, 1958.

The Trademarks Act, 1999 came into force in India on September 15, 2003. Under the Trademarks Act, 1999, the definition of the ‘mark’ was revised. The definition of the mark is as follows:

Section 2. Definition and interpretation.-
..
..
(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;

(q) “package” includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper an cork;


In case of shape of goods registration of the trademark besides other criteria is still subjected to provision of Subsection (3) of Section 9 of the Trademarks Act, 1999, which reads as follows:


(3) A mark shall not be registered as a trademark if it consists exclusively of –
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which results from the nature of the goods themselves; or
(c) the shape of goods which gives substantial value to the goods.


Indian Courts have been repeatedly recognizing the concept of the trade dress even prior to 1999 or 2003 by under common law remedies. Few of the prominent cases are as follows:

Recently in one matter Delhi High Court has restrained Ajanta India Ltd. from using the trade dress of a red and white packaging for its toothpowder on a complaint of Colgate-Palmolive. Earlier Ajanta was using a red can for marketing its toothpowder and later it switched to a red and white can which was virtual mirror image of Colgate-Palmolive. The Ajanta was allowed two months to exhaust its stocks of injuncted cans.

Similarly in another matter, Kangaro Industries Limited, a renowned name in the office equipment and stationary goods approached Delhi High Court against “Evershine STY” on the ground that it is copying their unique get-up Lay-out and colour combination of blue and warm grey and selling their product under the Trademark “Frog”. The High Court ex parte restrained the “Evershine STY” and its agents etc. from using the impugned label, cartoon, packaging material as may be deceptively similar to the “Kangaro’s”

In Cadbury India Limited and Ors. Vs. Neeraj Food Products, the Delhi High Court held the trademark “JAMES BOND” to be physically and phonetically similar to the registered trademark “GEMS” of the Cadbury. The High Court further held the packaging of Neeraj food product to be similar to that of Cadbury and eventfully Neeraj Foods was restrained from using said trademarks as well as the packaging similar to that of Cadbury.

Therefore the concept of the tradedress is well recognized and settled in India and its importance with relation to trade has been repeatedly upheld by the Courts in India.

SAMSUNG LOSES CHALLENGE TO CONSTITUTIONALITY OF INDIA'S CUSTOMS REGULATIONS GOVERNING IMPORT OF IP GOODS

Samsung India Electronics Pvt. Ltd, Indian arm of Samsung Electronics Co. Ltd has challenged the constitutionality of India's customs regulations governing the import of IP goods in Delhi High Court by filing a writ petition. Samsung India is aggrieved by action of the Indian customs department that is not clearing its imports of dual-SIM-card mobile phones in view of application for registration of patent rights filed by the patentee in respect of similar technology with custom office. More precisely Samsung India has challenged the custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 read with Circular No. 41/2007 Custom Circular dated 29.10.2007 called Instructions for implementation of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 issued by Central Board of Excise and Customs. Under said provisions any right holder (patentee or licensee) can register his/their patent for a period of 5 years with intellectual property rights cell of Office of Commissioner of customs on filing of an application along with grounds of suspicion, brief disclosure of technology and executing an indemnity bond.
The brief history of the matter is as follows:
March 4, 2002 Patent Application filed in the Chennai Patent Office with 4 claims and 12 drawings being Patent Application no. 161/MAS/2002 titled as “Mobile Phone with multiple number of SIM Cards to receive and/or to send multiple number of signals at a time”
March 03, 2003 PCT application filed in WIPO PCT/IN03/00044
September 12, 2003 International Publication no. WO 03/75543 A2 with 11 claims and 11 drawings, titled as “Mobile phone with multiple number of SIMCards to transreceive multiple number of mobile companies towers at a time”
January 4, 2004 Amended claims filed on WIPO, 11 claims replaced by 19 claims, first time plurality of headphone/earphone jacks or plugs are disclosed.
January 8, 2004 International Search Report was published on WIPO
March 4, 2004 Amended claimed published on WIPO
January 5, 2006 Revised ISR published on WIPO
January 23, 2006 Amended Claims filed before WIPO, claims increased to 17 from 11
April 6, 2006 Amended claims with statement published on WIPO
November 17, 2006 Patent Application was amended, no. of claims was increased to 20, drawings to 13 and title was changed to “Mobile telephone having a plurality of SIMcards allocated to different communication networks”. First time plurality of headphone/ earphone jacks, plurality of headphone/ earphone plugs and plurality of Bluetooth devices were disclosed and claimed.
June 1, 2007 Patent Application published in Indian Patent Journal with 20 claims, titled as “Mobile telephone having a plurality of SIMcards allocated to different communication”
February 11, 2008 Patent Granted being Patent No. 214388
December 08, 2008 Defendant no. 1 filed an e-application no. UTRN0.TINMAA4PR0009 with Officer of Commissioner of customs, intellectual property rights cell at Chennai under under custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 read with Circular No. 41/2007 Custom Circular dated 29.10.2007 called Instructions for implementation of Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 issued by Central Board of Excise and Customs
January 27, 2009 Office of Commissioner of customs, intellectual property rights cell at Chennai communicated vide letter no. F No.SIIB/IPR/1/08-ACC to Defendant no. 1 that his application has been registered and has been allotted UPRNo. A01671NMAA4PR.
The claims that are allowed to Mr. Ram Kumar by Chennai Patent Office are related to mobile instruments having provision for plurality of current or modified sim sockets for accommodating plurality of current or modified sim cards and essentially having plurality of headphone/earphone jacks for accepting plurality of headphone/earphone plugs and/or plurality of Bluetooth devices in order to operate simultaneously so as a plurality of incoming/ outgoing calls can be communicated simultaneously with respective simcards. The above invention is totally different from dual-sim technology as dual sim technology envisage mobile devices with incorporation of plurality of sim cards, and the present patent is step further then that as mobile device disclosed here has a provision for plurality of sim sockets for accommodating plurality of sim cards and having plurality of headphone/earphone jacks for accepting plurality of headphone/earphone plugs and/or plurality of Bluetooth devices to operate simultaneously so that a plurality of incoming/ outgoing calls can be communicated simultaneously with respective simcards.
This is not for the first time that provisions of Indian Laws are challenged by MNC companies, Novartis has in the past tried same. But in the instant matter there is nothing wrong in the Indian Custom regulations, if any fault can be attributed it has to be on Chennai Patent office that has granted a Patent with title that is confusing the custom authority, which being non technical are not clearing the shipments. Though the brief disclosure of technology by Mr. Ram Kumar made to Custom office makes it clear that his invention is different from dual sim or multi sim technology.
As per Rule 7 of the custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 if Deputy Commissioner of Customs or Assistant Commissioner of Customs (suo motto or on a notice by patentee) has reasons to believe that imported goods are suspected to be goods infringing IP rights, he has to suspend the clearance of goods. In case of suo motto action Deputy Commissioner of Customs or Assistant Commissioner of Customs must have some prima facie evidence or reasonable grounds. The reasons of suspension have to be immediately issued to importer, right holder (patentee or licensee) or their respective authorised representative by speed post or fax/email. There is provision that if the right holder or his authorised representative does not join the proceedings within 10 working days from date of suspension of clearance (or within further extended period of 10 days in appropriate cases), the case may be decided ex parte on merit and goods could be cleared.
Further in case of suo motto action the right holder has to file an application/ notice and execute indemnity bond etc. within 5 working days from suspension of clearance otherwise the custom office has to release the goods subject to other requirements under custom act.
Therefore Indian Customs regulations provide reasonable opportunity to importers whose goods are not cleared. The stipulated time frame for representation is also just and if any loss or damages are caused to importer because of any such non-action, they could seek damages as custom authorities are indemnified by the right holder. Further, the issue of technology has to be settled by one importer once in respect of a particular patented product and henceforth the decision could be relied by importer as well as custom authorities.
It has been a settled principal of law where alternative remedy is available resort to writ petitions (extra ordinary jurisdiction) should not be taken. Apart from administrative relief from the custom authorities the importers could also take relief under Section 105 of the Indian Patent Act by filing a suit in the court for declaration that there product is not infringing a particular patent.
Further mobile instruments under no circumstances can be said to be perishable goods that will get perish if not cleared within a time frame by custom authorities warranting exercise of extraordinary jurisdiction.
As per the recent information; the Samsung has withdrawn the writ petition and Ramkumar has got a stay again Samsung and many others dual SIM importer mobile companies apart from Micromax which has filed a declaration suit under Section 105 of the Indian Patent Act that their instrument does not violate Ramkumar's Patent and has got a stay order from the Gurgaon District Court. This order was appealed in Punjab and Haryana High Court and the High Court directed the court to decide on the interim application within a stipulated time frame and the trail court has accordingly passed the order in favour of Micromax holding that their mobile set does not infringe patent grant of Ramkumar.
The Custom office in India at Mumbai and various other location found that the import of dual SIM technology by others is not way infringing upon the patent rights of Ram Kumar. Byond Tech, a leading mobile importer in India and part of canpex Group Company also successfully got a stay order allowing them to import Dual SIM mobiles from Pune Court.

Madrid Protection in India: Advantages and Disadvantages

India became member of Madrid Protocol on July 8, 2013. The Initial advantages of Madrid system were huge as compared to filing a conventi...

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