Recent decision of Delhi High Court in the case of GILEAD PHARMASSET, LLC V. UNION OF INDIA & ANR

Recently, the Delhi high court on dated 30th January 2015 set aside an order of the Deputy Controller of Patents and Designs. The impugned order rejected a patent to US drug maker Gilead for its hepatitis C drug “Sovaldi” on dated 13th January 2015. The detailed judgment can be found here.

Facts of the case:

M/S GILEAD PHARMASSET, INC, USA, filed a patent application on 30/05/2003 in USA and the corresponding application was filed in India through PCT on 27/12/2005 vide application no. 6087/DELNP/2005 (“A (2’R)-2′-DEOXY-2’FLUORO-2′-C-METHYL NUCLEOSIDE”). Two Entities, NATCO Pharma Ltd. and Delhi Network of Positive People +IMAK filed applications for pre-grant opposition, under Section 25 of the Act on dated 13 March 2014 and 17 March 2014 respectively. On 13th January 2015, the Patent Office rejected Gilead’s Hepatitis C drug, sofosbuvir (Sovaldi) on the basis of it failing to clear Section 3(d) of Indian patent act 1970 which prevents evergreening of patents and provides that no new form of an existing substance shall be patented unless the new form is more effective than the old one. The copy of the decision made by Controller General of Patents can be accessed here.  Being aggrieved by the order, the GILEAD filed the present writ petition under Article 226 of the Constitution of India.

Arguments advanced by the petitioner:

It was argued by the Counsel for the applicant that while passing the impugned order, Indian Patent Office (IPO) had taken recourse to the material and objections, which were placed on record by the applicants, who had filed their applications to oppose the grant of patent to the petitioner, under Section 25 of the Act. Further it was submitted that this aspect, was clearly demonstrable from the fact that, not only the grounds taken in opposition and documents cited were considered, while passing the impugned order, but even, the typographical errors contained in the applications, filed under Section 25 of the Act, got incorporated in the said order.

It was further contended that the once notice was issued to the petitioner for a hearing under Section 14 of the Act, to consider, whether to grant a patent as requested, IPO should also have heard the petitioner regarding objections raised in the application, under Section 25 of the Act. The learned counsel contended that, while documents in opposition filed by the entities, which had preferred applications under Section 25 of the Act were supplied, no opportunity, was given, to meet the objections raised by them.

Further it was submitted that the impugned order, had created a peculiar situation whereby, while it had returned a finding that the claims presented by the petitioner represented “novelty and inventive steps”, it sustained, the challenge, under Section 3 (d) of the Act, though the applicants, which had opposed grant of patent, had raised objections, on both counts.

Arguments advanced by the Respondent

On the other hand, the opponent contended that the exercise carried out by IPO under Section 14 and 15 of the Indian Patent Act, is quite different, from that, which IPO carries out while hearing applications filed under Section 25 of the Act. Further it was submitted that, while the material and/or objections filed by opponents, which had preferred applications under Section 25 of the Act, was supplied to the petitioner, IPO did not rely upon the same, while passing the impugned order.

Decision of the Hon’ble Court:

The hon’ble court observed that while petitioner’s request for a hearing under Section 14 of the Act was pending, two pre-grant oppositions were filed. Though, the documents filed by the opponents were supplied to the petitioner, no notice was issued to the petitioner with regard to the applications filed under Section 25 of the Act. Therefore, when hearing under Section 14 was finally granted to the petitioner on 24.07.2014, there was no clarity as to the extent and scope of objections, which it was required to meet while pressing ahead with its request for grant of patent. The petitioner, at best, would have prepared itself to rebut the objections raised in the FER. Further the court observed that combining S. 25 and the S. 14 proceedings, if Gilead would have been given an opportunity to be heard on both counts, it could have save not only time, effort but also have avoided the allegation of bias.

 The court accepted the Gilead’s claim and set aside the impugned order given by IPO and remanded for a fresh decision. The court also ordered IPO to fix a date of hearing both for Sections 14 and 25 proceedings and asked to send written communication to all concerned parties including the petitioner.

 Thus it would be interesting to see the decision by IPO after fresh consideration to the facts and circumstances in view of the fact that Gilead has already entered into license agreements with Generic companies of India for the drug “Sovaldi” as per the reported news in September 2014.

About the Author: Mr Sitanshu Singh, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at:Sitanshu@khuranaandkhurana.com

Music Rights for Use in Films

In recent times, music copyrights and their ownership/rights to producers, artists, among other stakeholders, have been under strong discussion across geographies. We are happy to have a written piece by Gemma Harrison, a freelance writer, on her high-level take on the Copyrights in Music.

This summer, the highest grossing film at the box office was Marvel’s Guardians of the Galaxy, as notable for its music choices as for its place in the growing range of Marvel superhero films sweeping Hollywood at the moment. Guardians of the Galaxy may have grossed upwards of $550 million worldwide, but it cost a cool $170 million to produce – not including Marvel’s expansive marketing campaign – and the music choices can’t have helped with that. Peppered liberally with a range of classic tunes from the 1980s, from David Bowie to 10cc, the familiar soundtrack of Guardians of the Galaxy was extremely visible, provided key plot points, and has spawned mix tapes and tie-in merchandise since the film’s release.

From a filmmaker’s perspective, it’s evidence of Marvel’s central market position, that they were able to negotiate such extensive rights to the tracks – many of which are extremely well-known or iconic. One can only fathom at how much it must have cost them.

Licensing Music for Filmmakers

There are several types of licence that filmmakers need to acquire in order to use a pre-recorded piece of music in films. First of all, the right to use a song differs from the right to use a specific recording of the song. This is particularly key for cover versions, where the rights to the song might not belong to the band who specifically recorded the version. Alternatively, some rights are likely to belong to the record company, with others being retained by the songwriters or performers. The rights to use of the underlying composition, and the specific recording or “master recording”, may very well belong to different people, all of whom have rights which they can enforce.

Once filmmakers have discovered who owns the rights, there are three types of permissions they typically need to obtain: the right to record and distribute copies of the song, to record the music in synchronisation with the moving pictures in the film, and thirdly to perform the song publically as part of the performance of the film. It’s complicated, and convoluted, and for popular songs it can be eye-wateringly expensive. In the case of Guardians of the Galaxy, where the screenwriters deliberately wrote the music into the film as a plot point, it’s a bold and ostentatious move, signifying their vast budgets, and even more vast bargaining power.

Bridgeport Music Inc v Dimension Films, Sampling and Fair Use

In 2004, the case of Bridgeport Music Inc v Dimension Films was heard in the United States, and reached the Court of Appeal. Bridgeport was centred on the digital sampling of a two-second guitar chord from a song, looped five times, without the permission of the rights holder. The federal judge decided that a two second clip was de minimis – that it was too small to cause any real harm to the claimant, and that the claim should be dismissed on that basis.

The Court of Appeal disagreed, deciding that the owner of copyright had an exclusive right to duplicate the work in question, or any part of it, of any length. The Court said, “Get a license or do not sample. We do not see this as stifling creativity in any way.”

The decision is controversial, and has not yet been followed by other Court of Appeal circuits. The reasons for this are several: firstly, it could lead to a single note being copyrightable by a party, which is widely seen as being far too restrictive. The chilling effect of not knowing how small a section of music is covered by copyright rules could be substantial. Others have said that the decision stifles fair use policies. Since the use of the clip in Bridgeport was transformative, for non-commercial purposes, and did not harm the market for the original work or its derivatives, fair use policy should be able to give the defendants some protection.

This could have a knock-on effect for filmmakers, especially those making educational films or films reporting or commentating on the news, which are given a higher status under fair comment rules. It remains the case that filmmakers still have to be careful about using pre-recorded songs in their films, especially since the licences they would need to obtain are extensive. Given that the United States case law has yet to encounter many cases of digital sampling or the use of new technology in copyright claims, we may expect the law to remain unclear or inadequate for a few years to come.

Further reading

Amendment in Design Rules and Fee

Controller General of Patents, Design and Trade Marks, Mr. Chaitanya Prasad, has issued a Public Notice on 1 January, 2015, wherein it has been put forth that, from December 31, 2014 Official Fees for filing a new Design application as well as other proceedings of Design has been amended. It has also been mentioned that applicants have been divided into two main categories and fee shall depend on type of applicant.

Highlights of amendments in Design rules:

  • Applicants have been divided in two main categories namely: “natural person” and “other than natural person(s)” categories. Second category of applicants has been further divided in to two sub-categories 1.) “small entity” 2.) “others except small entity” and fee structure is amended accordingly.
  • New form – 24 has been introduced which has to be submitted with all new applications for claiming the status of small entity.

Addition of new clauses in Design Rules:

  • A new clause has been inserted after rule 2(c) as under:

‘(ca) “person other than a natural person”, shall include a “small entity”;’

  • Another clause has been inserted after rule 2(e) which defines definition of small entities as under:

‘(ea) “small entity” means,

  1. In case of enterprise engaged in the manufacture or production of goods, an enterprises where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of the section (7) of the Micro, Small and Medium Enterprises Development Act , 2006 (27 of 2006); and
  2. In case of enterprise engaged in providing or rendering of services, an enterprises where the investment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of the section (7) of the Micro, Small and Medium Enterprises Development Act , 2006 (27 of 2006);
  • In rule 5(2) after clause (d), two new clauses have been inserted, as under :-
  1. “(e) in case an application processed by a natural person is fully or partly transferred to a person other than a natural person, the difference, if any , in the scale of fees between the fees charged from a natural person and the fees chargeable from the person other than natural person in the same matter shall be paid by the new applicant with the request for transfer.
  2. (f) in case an application processed by a small entity is fully or partly transferred to a person other than a natural person (except a small entity), the difference, if any , in the scale of fees between the fees charged from the small entity and the fees chargeable from the person other than natural person (except a small entity) in the same matter shall be paid by the new applicant with the request made for such  transfer.”,
  • In rule 6 after sub-rule (1), the following proviso has been inserted,:-

                 “Provided that in the case of small entity, every document, for which a fee has been specified,  shall be accompanied by Form-24.”

Amendments in Design Fees:

Following table gives the detailed fee structure after the amendment:

Untitled1 Untitled2

The notification can be seen here.

Belly Fireman! Rescued by Delhi High Court

In the recent decision of Delhi  High Court in the case of Reckitt Benckiser(India) Ltd v Dabur India Ltd, the Hon’ble court decided on the issue of deceptive similarity between the  television advertisement of Pudin Hara lemon fizz drink and Gaviscon

Facts of the case:

The plaintiffs is a member of  Reckitt Benckiser Group PLC who involved in the various consumer and healthcare products . It also manufactures Gaviscon which provide relief from heartburn and gastro oesophageal reflux. In the year 2006 the plaintiff started using Fireman Device for the advertising and promoting his product in the market. Fireman Device was registered in India in favour of the plaintiffs on 22nd October, 2007 in Class 5.

The defendant is the manufacturer of various Ayurvedic and non-prescription medicines such as Pudin Hara, , Hajmola, Glucose-D etc. Reckitt Benckiser alleging that the ads for Dabur’s Pudin Hara lemon fizz drink had “infringed its trademark and copyright”. The point of dispute is the image  of Fireman /fire fighter.

Issues involved/Contentions

  • In both the advertisement a person is suffering from gastro-oesophageal reflux disease/heartburn.
  • Both the advertisements show fire burning inside the oesophagus.
  • Then a person consumes medicine & the medicine converts into the image of a fireman which extinguishes the fire by sprinkling the product on the stomach walls.

Delhi High Court decision

Trademark infringement

After comparing the advertisement, the Delhi High court concluded that Dabur’s fireman device was not deceptively similar to the registered mark. The mark appears to be different in terms of colour, representation and number. Therefore there was no likely hood confusion and no infringement had occurred.

Passing off

The defendant product i.e  Pudin Hara Lemon Fizz  is sold in Indian market since April, 2010 whereas the plaintiff product i.e Gaviscon was introduced in Indian market in November 2011.Hence Reckitt Benckiser could not establish goodwill  in India prior to Dabur and the element of misrepresentation was also missing. So, Dabur had not committed the tort of passing off.

 Copyright infringement

The court concluded that there were several dissimilarity between both  the advertisement  in respect of their  colour, representation and image of fireman device. The court relied on the Supreme Court decision in RG Anand v Delux Films (1979 SCR (1) 218) to reiterate the established principle that only the manner of expression of ideas is protected under copyright law (not the ideas themselves). Thus, the court held that there had been no copyright infringement.

 The court has, however, said that if there is any modification in the television Commercial Ad, Dabur would need to take necessary permission from the court.

About the Author: Ms. Pallavi Sharma, Trademark Attorney at Khurana and Khurana, Advocates and IP Attorneys and can be reached at:pallavi@khuranaandkhurana.com

Gentle Update on Khurana & Khurana: Acquisition of Closer2Patents and Opening Up of Mumbai Branch Office

We are very glad to announce Khurana & Khurana, Advocate and IP Attorneys (K&K) ‘s acquisition of Closer2Patents, a growing IP Consulting Practice based in Mumbai, effective 1’st Jan 2015. With a practice currently spread across three offices, Delhi, Pune, and Bangalore in India, K&K is among the leading IP and Commercial Law Practices with over 50 Practitioners and rankings/recommendations from Legal 500, Chambers, IAM, Managing IP, among many others, wherein representation of numerous Fortune 500 Corporates, Medium Sized Entities, Universities, and Individual Inventors/Start-ups, makes K&K among the most promising IP and Commercial Law Firms in India. Mumbai based Closer2Patents, on the other hand, founded by Abhishek Pandurangi, is a 5 year old growing IP Consulting Practice with over 10 Practitioners and a strong Prosecution and Consulting Practice in the IP Space, wherein acquisition of Closer2Patentscomplements the geographic presence of the firm that is strongly committed to client satisfaction and very sensitive to their feedback. With the integration between the firms, K&K would now be starting with a Mumbai Office, which would be spearheaded by Abhishek as a Partner in the firm and would expand the service offerings to areas of Media and Entertainment. With a strong base of Pharma and High-Technology clients, an office in Mumbai would help K&K consolidate its Practice in the financial hub of the Country, and offer its existing and potential clients with its strong and efficient service offering.

Recent decision of IPAB in the case of E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors

This article is relates to a recent judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 4th December 2014 in the case “E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors.

Brief Facts:

On 11th March, 2009 the trademark registry refused the opposition of the E.I.DU Pont De Nemours & Company (appellant herein) and allowed the application of trademark “NOMEX” under application No.499603 in Class 5 of the Galpha Laboratories (respondent herein) under the provisions of the Trade and Merchandise Marks Act,1958. Thus being aggrieved by the rejection by Indian trademark registry, an appeal was filed by the DuPont to IPAB. The copy of the decision made by IPAB can be accessed here.

Background:

The appellant’s Company is a limited company incorporated under Company’s Act 1956 having registered office in Mumbai. The appellant has production facilities for DuPont Crop Protection Products, Dupont Liquid Packaging Systems. The appellant has claimed that they have spent huge amount of time, money and efforts in promotion of trademarks registered under various classes in world over including India. The appellant has further claimed that they are registered proprietor of many trademarks covering more than 50 countries. The appellant has obtained registration and is registered owner of trademark “NOMEX” in many countries including India. The appellant has further stated that all the above registrations of the trademark has been renewed from time to time and are valid and subsisting. The appellant stated that they have obtained trade mark NOMEX under class 22, 16, 17, 23 and 24.

The appellant came to know through an advertisement dated 16th April, 1999 that vide journal No.1197, the respondent had filed an application under the name “NOMEX” vide application No.499603 dated 19th October,1988 under the Trade and Merchandise Marks Act, 1958 in respect of pharmaceuticals, medical preparations and substances in Class 5 claiming user as proposed to be used. The appellant has filed a Notice for Opposition dated 13th of August,1999 vide Opposition No.BOM-54010 against the registration of the trademark “NOMEX” in class 5 under the provisions of Trade and Merchandise Marks Act of 1958.

Decision by Assistant Registrar:

After hearing the pleadings by both the parties, the Assistant Registrar has passed an order on 11th of March, 2009 rejecting the Opposition of the appellant on the below grounds.

(i) The Assistant Registrar accepted the contention of the respondent herein that they took search on the trademark registry for the trademark “NOMEX” in Class 5 and also made a market survey in the market for medicinal products and there was no conflicting trademark in Class 5.

(ii) The Assistant Registrar held that there is no similarity and identical with the mark that of the opponent as per section 11(A) revised under section 11(1) of the Act. Hence, there is no possibility of confusion and deception under section 11 (C) revised under section 11 (3) of the

Trademarks Act, 1999. The goods of the applicants are entirely different from the opponent. Further the Assistant Registrar rejected the contention of the opponent that they have not proved prior user period from 1984 to 1988 and used his discretionary power under section 18(4) of the Act by granting registration of the trademark “NOMEX” in class 5 to the respondent.

Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said Trademark opposition.

 Arguments advanced by the Appellant:

It was argued by the appellant that the Assistant Registrar has failed to appreciate the appellant’s use of the trademark “NOMEX” in the international market since 1963 and in India since 1984. Further Trademark registry has failed to appreciate that the trademark adopted by the respondent is identical to the appellant, who is a prior adopter and user in India. It was further contended that the Assistant Registrar has erred in holding that usage of the mark by the respondent would not cause confusion and deception amongst the members of the public and trade as the respondent buyers are different from that of the appellant.

The appellant further claimed that “NOMEX” is a well-known trademark. The appellant also argued that the Assistant Registrar has failed to appreciate that the respondent has no use and is yet to use the mark and it is identical to the appellant trade mark. The Assistant Registrar has erred in holding the appellant has not proved prior user from 1984 to 1988.The Assistant Registrar erred by disallowing opposition of the appellant and further erroneously used his discretionary power under section 18(4) of the Act, which are contrary to principals of law. The Assistant Registrar has also erred in holding the respondent had taken proper steps, despite of no search report brought on record.

Arguments advanced by the Respondent:

The respondent contended that they had taken care and prior search in selection, adoption as there was no prior use of the trademark in the pharmaceutical industry. The respondent conceived and coined the trademark “NOMEX” for use in respect of medicinal and pharmaceutical preparations falling in Class 5. Further the respondent argued that the registration of application “NOMEX” in Class 5 will not cause prejudice to the appellant under section 9 of the Act as under section 8 to respondent trade mark is distinctive and capable of distinguishing from the goods of the appellant.

Decision of IPAB:

IPAB stated that while perusing the impugned decision of the Assistant Registrar of 11th , March, 2009, the Assistant Registrar has rendered a short cryptic order without assigning cogent reasons by simply quoting the provisions under the Trade and Merchandise Marks Act, 1958 revised under sections 11(1) and 11 (3) of the Trademark Act, 1999. The impugned order of the Assistant Registrar failed to disclose on what grounds or on what material record that he has allowed the registration to go ahead by rejecting the contentions of the appellant / opponent and further does not disclose any judicious reasoning, while exercising his discretionary power vested with him under section 18 of the Act for granting the registration to the respondent herein.

Further IPAB observed that the Assistant Registrar at one end admits in his order that the marks are similar and identical, without divulging sound reasoning as to how he had arrived into conclusion that the mark though identical and similar but still there is no confusion or deception. IPAB stated that the Registrar has failed to discuss the cogent reasons in accepting the application of the respondent allowing their trademark to be registered.

Thus in the light of averments, IPAB set aside the impugned order by trademark registry observing that the order was passed in gross violation of principal of natural justice and remanded the matter to the Assistant Registrar to consider the matter afresh by affording opportunity to both sides and pass orders on merits in accordance with law.

About the Author: Mr Sitanshu Singh, Patent Associate, Khurana & Khurana, Advocates and IP Attorneys and can be reached at:Sitanshu@khuranaandkhurana.com

‘Pro Tem’ Relief to Xiaomi for importing and selling of Qualcomm based Handsets in India

Reportedly, a bench of Delhi High Court temporarily allowed Xiaomi to sell few of its devices in India about a week after the suspension of its sales in the third largest smart phone market of the world.

Xiaomi as well as online seller Flipkarthave been injuncted by Delhi High Court in its order dated 8th December 2014 from selling its line of smart phones for it has been prima-facie found to be infringing patents of Swedish technology company Telefonaktiebolaget LM Ericsson. We have reported on Xiomi injunction which can be found here.

Being aggrieved by the order passed by Single judge of Delhi High Court dated 8th December 2014, Xiaomi filed appeal challenging the order. Xiaomi had contended that Ericsson suppressed the fact that the Chinese mobile maker has also used chipsets of Qualcomm which has a license to use patents of the Swedish company. The bench was also told by Senior Advocate KapilSibal and Advocate AjitWarrier, appearing for Xiaomi, that on each Tuesday around one lakh units are expected to be sold on the site. Xiaomi has contended that it did not infringe Ericsson’s patents as Qualcomm has obtained a license from the Swedish company for its patented technology.

Therefore, reportedly on Tuesday 16th December 2014, the Hon’ble High Court granted permission to Xiaomi to continue importing smart phones which comprises of Qualcomm chipsets in them until the next scheduled date for the matter on 8th January 2015 subject to the condition that Xiaomi shall deposit 100 Indian Rupees for each device sold by them towards royalty in favor of the Registrar General of the Delhi High Court and the amount so deposited be kept in a fixed deposit.

Further, the court has also directed Xiaomi to furnish an affidavit, prior to the next date of hearing before the single judge, which shall disclose the number of devices sold by it till then along with the particulars of the invoices of the Qualcomm chipsets purchased by it.

As reported, an Ericsson spokesman said in an email to Reuters that “Xiaomi needs a license from Ericsson for all their phones imported to India, which will be clarified in the upcoming hearing” whereas Xiaomi said company would not comment on the developments.

As per the company’s website, Xiaomi Mi3 and Redmi 1S use Qualcomm chips while Redmi Note device uses a processor from MediaTek Inc.

Sources: Reuters and NDTV

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

Revocation Application/ Proceeding Summary: Improved Diffuser for an Air Conditioning System

Applicant in this case is M/s Air Master Equipments India (P) Ltd and Respondents are:

  1. Mr. Ramesh Nana Mhatre, who is the inventor and Applicant of the granted patent application being discussed, and
  2. Controller of Patents who granted the patent post examination and prosecution. Title of the application is ‘An improved Centre Core, Intermediate Core and an outer frame for a diffuser for use in central air conditioning system and an improved diffuser incorporating them and the method of manufacturing the same’ and case number is TRA/1/2008/PT/CH. The order number of case being discussed is NO 75/2011

 To brief a bit on the understanding the subject matter, in a central air conditioning system, air that is conditioned to a desired temperature at one source is distributed to various places through a network of ducts, and a diffuser is required at every outlet of the duct. Generally, these ducts are of square or rectangular cross section, most probably due to their easy self-resting and properly adjusting nature in corners of the ceiling in the buildings and vehicles, and therefore the diffuser used at the outlet of an air distribution duct is also of square or rectangular shape. The diffuser fitted at the end of the air distribution duct projects/exposes out from the ceiling of a room or any other space required to be air conditioned, and therefore plays a part in interior decoration or overall look of the room/space. Respondent, through his invention, therefore wishes to solve following drawbacks in existing diffusers:

  1. Sometimes, the side sections of each core and outer frame are welded together at corners to avoid gaps, or corner sections, after fixing into the grooved channel sections on the back of two adjacent side sections, are crimped for assembly. The cores are inter-connected through connecting strips that are welded to the collars of each core. The welding and crimping operations require extra equipment as well as these operations are very time consuming thereby increasing the cost of production.
  2. Due to the grooved channel sections at the back side of each side section and corner sections used for the assembly or cores, the weight of the diffuser is increased which also increases the cost of production.
  3. To avoid gaps at the corners of the core(s), the side sections of the cores are produced with high precision, which increases the cost.
  4. On assembly some times there remains a gap between two side sections, at the corners of the core(s), due to which diffusers are rejected, resulting into a big loss of production i.e. material and labour and which further increases the cost of production.
  5. When a diffuser is attached to a duct and conditioned air is blown through the duct, it is noticed that the air is not diffused equally to all sides at the corner sections as the grooved channel sections or ridges at the back surfaces of the cores come in the path of air and disturb the equal and proper diffusion of air in all directions. The enclosed collars of the centre core and intermediate core(s) rebounds the air, thereby reducing the flow or air through corners of the diffuser.
  6. As the diffuser is manufactured in several pieces, which are assembled, manufacturing process is cumbersome, time consuming and labour oriented and increases the cost of production.
  7. Due to the grooved channel sections and corner sections or ridges and welding spots on the back surface of the core(s), dust is accumulated therein, which is difficult to clean.
  8. Dust is also accumulated in gaps at corners on the front surfaces of the cores, which gives a dirty look to the diffuser and tarnish interior decoration look of the room/space.

 A main object of this invention is therefore to obviate the above mentioned drawbacks of the existing diffusers and to provide an improved diffuser for central air conditioning system, wherein each of the central core and/or the intermediate core(s) and/or the outer frame are manufactured in a single piece and both the outer as well as inner surfaces of the cores and/or the outer frame are smooth without any extra section, projection or groove which dispenses with the requirement of extra material, and the time taken for assembly is also very much reduced and at the same time there is no obstacle in the flow path of air, which is diffused equally in all the directions. As the cores are manufactured in a single piece, there is no question of any gap at the corners thus no chance of rejection of the product and no need of any welding and crimping operations and hence the cost of production of the diffuser will obviously be very less.

 Respondent No. 2 (Controller of Patents) was satisfied that the invention was patentable and accordingly the patent was granted vide No. 181821 on 18th Jan, 1995. On 25th August 2006 the Respondent No. 1 sent a legal notice to the Applicant, wherein according to this notice, the Applicant was inter alia informed of the patent in favour of the Respondent and that the Applicant was not entitled to manufacture or sell air diffusers identical to the patented product or substantially similar to it. The Applicant sent a lawyer’s reply dated 13-9-2006 alleging that  the patented product was known in the market, it was neither new nor novel, and that there is concealment of material facts and that the patent was obtained by fraud. It was also alleged that the Respondent was nothing but a job-worker.

 After this exchange of correspondence, the Applicant filed O.P. 704 of 2006 before the Hon’ble Madras High Court for revocation of the patent. This was transferred to IPAB. Counter statement was filed and both sides also filed the evidence to support their case.  Applicant submitted that there was no novelty in the invention and it was obvious and also submitted that the main feature of the invention even according to the Respondent was that it was a single piece centre core to facilitate clean flow of air. He submitted that diffusers have been known for long and there was evidence to show that there was prior art where the single piece units were known. He referred to Series 5700 louvre face ceiling diffusers. From the paper book, he pointed out that there is specific reference to one piece stamped steel construction and that this prior art was also meant to provide an economic solution to air distribution problems requiring equal throw in all directions. According to him, this anticipated the patented product. Further, he submitted that if the only difference is the manner in which the inner assembly can be removed, that hardly qualifies for the grant of a patent.  He then referred to another prior art.  Series 5800 and 5800A louver face Directional Diffusers. He submitted that this too indicated provision of equal throw, quick release of inner assembly for immediate access and ease of installation. According to him, the fact that the prior art was used for ceiling air–conditioners while the patent product was for central air-conditioner will not make it non-obvious.  He also referred to Titus and Trox catalogues, without bearing any dates. On being asked to provide the dates of these documents, he was unable to give any acceptable evidence. Therefore, only two prior arts were provided by the applicant.

 Respondent (Patentee) on the other hand submitted that till 1995 there was no prior art that anticipated the claimed subject matter. All the single piece units were extruded aluminium, which meant that metal sheets were cut and joined. The patented product was, on the other hand, made as a single unit from a special die in a metal press.

 Respondent also produced, before the IPAB board, samples of the prior art and the patented product and submitted that it was wrong to call the Respondent a job worker and that he had won many awards and recognition of his expertise. He submitted that the patented product was supplied by the Respondent to persons in the same business not only in India but abroad too. He submitted that while the prior art shows joints, corners and gaps, the patented product is one smooth surface with no gaps or joints. Also, in the prior art, the assembly is detached by turning clockwise, whereas in the patent product, it is held by spring and is removed by applying pressure. He also submitted that in the prior art, there is a buttoned hole in the centre cone, while the patented product has an outwardly and downwardly directed slanting surface with neither a button nor hole. He submitted that the prior art has uneven surface and crimping and that the air is distributed by rebound, whereas in the patented product, there are no hindrances to the flow of air. The patented product has clear slots while the prior art does not. He further submitted that the prior art is limited to 2 or 3 cone inner assembly, whereas the patented product can have multiple cores depending on the requirement. The Respondent further pointed out to the tabular column in the Respondent’s counter statement where each and every distinguishing feature of the patented product is explained and submitted that the prior art does not teach the invention and that the patented produce is new and non-obvious.  He also submitted that, in addition to the counter statement, the Respondent has marked in evidence the affidavit of one Mr. Pankaj Dharker of impeccable credentials who has affirmed that the product is an invention. He submitted that there is no proof of wrongful use or suppression of information and therefore the Applicant can not raise these grounds without proof. As regards prior publication, the Respondent submitted that there should be material to show that it was published. Respondent further submitted that as regards the ETL report, no reliance can be placed on it without an affidavit to file it as evidence, and in any event, it only refers to diffusers constructed of extruded aluminium, which can not be prior art as far as this product is concerned.

 Submissions were heard and the matter was examined by Hon’ble Justice Prabha Sridevan, wherein it was concluded that the Respondent was most certainly not a job worker and that the evidence filed by the Respondent shows the number of awards and recognition of his merit that he has received from various people including the Government. It was further held that the Applicant also did not seriously urge that stand and that the applicant had not filed any evidence apart from the two prior arts to support its case. It was further stated that the Respondent, on the other hand, had filed a very important piece of evidence that was the affidavit of the expert in the field and spoke of the disadvantages that existed in the diffusers prior to 1995. Evidence of Pankaj Dharker showed that in the existing art, because of the corner sections and the grooved channels, flow of the air was obstructed and that there was a reduction of airflow because in the prior art air rebounded. It was also appreciated that the assembly of various parts was a costly process and that the prior art required joining of the various parts and if this was not done with a high degree of accuracy, there was likely to be higher rate of rejection. Furthermore, it was noted that the prior art designs were aesthetically inferior and that the accumulation of dust was high. His affidavit showed the prior art and the patented product in comparison, both with photographs and with explanatory notes. From the affidavit of the respondent and the supporting evidence, it was concluded that the prior art series 5700 and 5800 did not teach the patented product, and that the claimed subject matter was a new invention that served the object of the invention and also avoided the existing drawbacks of the prior art. 5700 and 5800 are the same except for the fact that 5700 has a 2 cone assembly, while 5800 has a 3 cone assembly. The TROX and the Titus catalogues were not considered since there was no date and It was not know if they are prior to the patented product, but the expert dealt with even those products and has given the opinion that they do not teach this invention. A test for obviousness was applied and it was concluded that the invention was non-obvious. In view of the reasons stated above, it was confirmed that the invention was novel and non-obvious and the revocation application was dismissed.

About the Author: Mr Ankur Sehgal, Patent Associate at Khurana and Khurana, Advocates and IP Attorneys and can be reached at: ankur@khuranaandkhurana.com

News Snippet: Novartis sues Cipla for infringement of patents covering “Onbrez”

In a latest update, Novartis has sued Cipla for infringing its patents on “Onbrez” (Indacaterol) after Cipla lunched its generic version for Indacaterol in October claiming “urgent unmet need” for the drug in India.

Earlier, as we have reported here, Cipla approached Govt. of India to exercise its statutory powers to revoke the five patents covering Indacaterol granted to Novartis, which is yet to be decided.

Novartis requested high court to permanently restrain Cipla from manufacturing Indacaterol in any form and selling it in India. It also sought damages for infringing the five Indian patents covering Onbrez.. In reply, Cipla contended that “Onbrez” sold by Novartis is too expensive and is not easily available to the public. Delhi High Court has reserved its verdict on January 9 after hearing detailed arguments by both parties.

CIPLA’s plea for revocation of Novartis Patents for Onbrez may face major set back by the Government

As reported in TOI, the Indian Government has found very little merit in Cipla’s plea for waiver and cancellation of Patent rights for chronic obstructive pulmonary disease (COPD) drug over which Novartis has exclusive rights. We have reported on Cipla’s plea here.

Background:

Cipla, previously approached the Department of Industrial Policy and Promotion (DIPP) to exercise its statutory powers under Section 66 and Section 92 (3) to revoke Indian Patents IN222346, IN230049, IN210047, IN230312 and IN214320 granted to Novartis AG for the drug Indacaterol and is currently selling under the brand name Onbrez. The said drug is one of the preferred medications for COPD.

The relevant sections 66 and 92 of the Indian Patents Act are as follows:

  1. Revocation under section 66:

Section 66 states “Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked”.

  1. Special provision for compulsory licences on notifications by Central Government

Section 92 (3) states Notwithstanding anything contained in sub-section (2), where the Controller is satisfied on consideration of the application referred to in clause (i) of sub-section (1) that it is necessary in—

(i) a circumstance of national emergency; or

(ii) a circumstance of extreme urgency; or

(iii) a case of public non-commercial use,

which may arise or is required, as the case may be, including public health crises, relating to Acquired Immuno Deficiency Syndrome, Human Immuno Deficiency Virus, tuberculosis, malaria or other epidemics, he shall not apply any procedure specified in section 87 in relation to that application for grant of licence under this section:

 Provided that the Controller shall, as soon as may be practicable, inform the patentee of the patent relating to the application for such non-application of section 87.”

Cipla’s Contention in the Representation:

  • Cipla argued that the causes of COPD are several and the sheer magnitude of the disease as per the publicly available data which is sufficient for the Central Government to invoke the provisions of Section 92 and to treat it as an “epidemic” or a “public health crisis”. Such exercise of power in the present case would be in consonance with the avowed purpose for which Section 92 has been enacted.
  • Cipla also contended that Novartis has been granted these patents since 2008-09 but has chosen not to manufacture the same in India. However, Novartis merely imports a negligible quantity of these products manufactured in Switzerland through its licensee Lupin Pharma as per its own data filed before the Patent office. As submitted by Novartis in IPO in Form 27, the import for the year 2013 is a meagre 53,844 units which do not satisfy even 4,500 patients annually which is a shortage is more than 99.97 percent.
  • Further Cipla contended that cost of the drug is also very high for a patient in India. The estimated cost of the drug Indacaterol as imported and sold by Lupin Limited, under the trademark Onbrez is about Rs.2000/- per month per patient. On the contrary, the proposed drug of Cipla under name UNIBREZ would be costing approximately Rs. 400 per month.

 It is pertinent to note that Section 66 has been invoked only on two occasions earlier. Firstly it was invoked for the case of a process patent granted to Agracetus, an American company for genetically engineered cotton cell lines. The said patent was revoked by the Central Government in the year 1994 keeping in mind public interest and the fact that genetically engineered cotton, being a product of concern for the national economy, particularly for agriculturists, ought not to be the subject matter of a patent monopoly. Secondly in 2012, a patent granted to Avesthagan Limited for a “synergistic ayurvedic/ functional food bioactive composition” i.e. the composition consisting of Jamun, Lavangpatti and Chandan to be used for treatment of Diabetes. In light of the public interest in using traditional knowledge for curing and treating Diabetes, the said patent was also revoked under Section 66 of the Act. However pertinently, both the patents were revoked due to cloud over patentable subject matter.

It would be prejudiced to comment on the fate of the matter at this stage. However as per TOI the Govt. may turn down the plea of Cipla for revocation of Novartis patent.

About the Author: Mr Sitanshu Singh, Patent Associate, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: sitanshu@khuranaandkhurana.com

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