Examination Guidelines for Pharmaceuticals Patents

There has been limited judicial consideration of how patent law applies to pharmaceutical inventions in India. Little specific guidance is available to patent examiners in assessing whether a particular pharmaceutical invention satisfies the requirements for patentability. The absence of judicial guidance in this area is problematic.

Indian Patent Office has published the Draft Guidelines on Pharmaceutical Patents to assist Indian patent examiners and patent applicants/patent agents in applying the Patents Act and Patent Rules to pharmaceutical inventions so that the Examiners and the Controllers adopt consistently uniform standards of examination. According to the Controller, a number of issues pertaining to product patenting are becoming clear through the decision of the Courts and therefore there is a need to develop such guidelines incorporating the analysis of Courts, for examination of pharmaceutical patents. These Guidelines are available over here.

The Guidelines is intended as a reference guide for examiners/patent applicants/patent agents on all aspects of patent practice, including: search and examination procedure, interpretation and application of the requirements of patentability under Indian law and relevant procedural provisions of the Patent Act, and practice and procedures in connection with patent applications filed under the PCT.

This article focuses on the important notable aspects of the Guidelines.

The Guidelines first of all categorizes the various kinds of claims the applications pertaining to pharmaceutical and allied subject matters can have:

Claims of Pharmaceutical Inventions

Patent application pertaining to pharmaceutical and allied subject matters comprises the claims relating to the following subject matters, but not limited to:

I. Product claims:

i. Pharmaceutical substances;

a. New Chemical Entities;

b. Formulations/Compositions;

c. Combinations/dosage/dose;

d. New forms of known substance such as;

Salts, Ethers and Esters; Polymorphs; Solvates, including hydrates; Clathrates; Stereoisomers; Enantiomers; Metabolites and pro-drugs; Conjugates; Pure forms; Particle size; Isomers and mixtures thereof; Complexes; Derivatives of known substance; and

ii. Kits;

iii. Product-by-process.

II. Claims for process/method of manufacturing;

III. Claims related to new property, new use of known substance or use claims, including second indications;

IV. Claims for method of treatment and/or diagnosis of human beings and animals;

V. Claims related to selection inventions.

Assessment of Novelty, Inventive Step and Industrial applicability

The assessment of novelty, inventive step and industrial applicability is similar to the patents filled in other technical domains. A claimed invention will be granted a patent only if the invention is a product and/or process.

Claimed inventions relating to the second use of already known compounds does not make the substance novel and/or inventive.

In product-by-process claims, the applicant has to show that the product defined in process terms, is not anticipated or rendered obvious by any prior art product. In other words the product must qualify for novelty and inventive step irrespective of the novelty or inventive step of the process.

A large number of illustrative examples are provided for determination of novelty and inventive step for various kinds of claimed inventions including compound (Markush) claims, combination/composition claims, product-by-process claim.

More clarifications on obviousness determination are provided, for example, the skilled person needs to eliminate hindsight analysis, reasonable expectation of success must be embedded which could motivate a skilled person, surprising (enhanced) effects cannot provide inventive step if the solution if from a limited set of alternatives which is obvious to try.

Inventions not patentable

Pharmaceutical related inventions not patentable under Section 3 (b), Section 3 (c), Section 3(d), Section 3 (e), Section 3 (i) are also discussed in the guidelines.

The patentability of pharamaceutical related inventions under section 3(d) has invoked many debates in the recent past and is discussed in detail. According to Section 3(d), an incremental invention, based upon an already known substance, having established medicinal activity shall be deemed to be treated as a same substance, and shall fall foul of patentability, if the invention in question fails to demonstrate significantly improved therapeutic efficacy with respect to that known compound. While interpreting what is “efficacy”, the Hon’ble Supreme Court held that in the context of the pharmaceutical patenting, the “efficacy” should be understood as  “therapeutic efficacy”. Also, the Supreme Court explained what would mean a “new product” in the context of Section 3(d): “…………the new product in chemicals and especially pharmaceuticals may not necessarily mean something altogether new or completely unfamiliar or strange or not existing before”. According to the Supreme Court, whether or not an increase in bioavailability leads to an enhancement of therapeutic efficacy in any given case must be specifically claimed and established by research data. However, it is important to note that Supreme Court has clarified further that the test of Section 3(d) of the Act does not bar patent protection for all incremental inventions of chemical and pharmaceutical substances. The term “combination” as appearing in Section 3(d) has been explained by IPAB as “The combination mentioned in the Explanation can only mean a combination of two or more of the derivatives mentioned in the Explanation or combination of one or more of the derivatives with the known substance which may result in a significant difference with regard to the efficacy.

A number of illustrative examples are provided for section 3d, 3e, 3i etc..

Sufficiency of description, clarity and support of the claims:

Sufficiency of description, best mode, clarity and support of the claims are included in sections 10(4) and 10(5) of the Patent Act. The Guidelines provide various illustrative examples on sufficiency of microorganisms included inventions, biological material included invention.

If the invention relates to a biological material which is not possible to be described in a sufficient manner and which is not available to the public, the application shall be completed by depositing the material to an International Depository Authority (IDA) under the Budapest Treaty.

The Guidelines further explains that non-technical terms like trademarks should be discouraged and the applicant should be asked to replace them with equivalent technical terms.

In regard to the Markush claims, the Guidelines explain that claims with Markush formulas may cover innumerable compounds and may be overbroad, thus leading to conclusion of inconsistency between description and claims. Also, such formulas can lead to the question of plurality of distinct inventions. Compounds represented by different alternatives should have a technical interrelation ship. Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship is considered met when the alternatives are of a similar nature.

Further, the functional claims (wherein the substances are defined in terms of their physiological properties/results) should be discouraged.

Unity of Invention

When there is a group of inventions in a specification they should be linked by a single concept or there should be a technical relationship among the claimed inventions, which makes the inventive contribution over the prior art.

In Markush claims the unity of invention shall be considered to be met when the alternatives claimed are of a similar nature. The Markush group of alternative chemical compounds can be regarded as being of a similar nature is subjected to the fulfillment of the following conditions:

a)They have a common property or activity,

b) All of the alternatives have a common structure, which is a significant structural element shared by all of the alternatives

The Guidelines also clarify that wherever there will be a conflict between the Guidelines and the Patent Act, the provisions of the Act will prevail.

About the Author: Ms. Harsha Rohatgi, Patent Associate, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: harsha@khuranaandkhurana.com

PRINCIPLES OF ‘PRIOR ADOPTION AND USE’ VIS A VIS TRANSBORDER REPUTATION: JONES INVESTMENT CO V. VISHNUPRIYA HOSIERY MILLS

In the recent decision of Intellectual Property Appellate Board (IPAB) in the case of Jones Investment Co v. Vishnupriya Hosiery Mills, it was held that a multinational company cannot claim infringement of trademark by a local Indian company purely based on international presence, unless they can expressly establish that their presence extends to India or precedes that of the Indian company.

Facts of the case:

The appellant in this case is the Jones Investment Co. an American company who is engaged in the business of apparel, hosiery, footwear, etc. and uses the Trademark ‘Jones New York’ internationally thereto for the aforementioned goods. On the other hand, the Respondent is the Vishnupriya Hoisery Mills, a textile firm based in Erode, Tamil Nadu. The respondent applied for the registration of the trade mark ‘Jones’ for their textile products. This application was opposed by the appellant and in adjudication of the same Deputy Registrar of Trademarks dismissed the notice of the opposition on 9th March 2010. Thus being aggrieved by the decision of the Deputy Registrar, the appellants preferred this appeal in IPAB.

Arguments on behalf of the Appellants:

The counsel for the appellants mainly relied on two contentions inter alia. First, that the appellants had been using the mark ‘Jones New York’ since 1966 and thus they had acquired International reputation in the same. Further it was also contended that the appellants had registered their trade mark in India since 1997. Therefore, the registration of the trade mark with respect to same goods under the name ‘Jones’ by the respondent would cause confusion and would deceive the consumers.

Secondly, it was contended by the appellant that the respondent has not shown any substantial sale of their goods by using the impugned trade mark and the Deputy Registrar also pointed out that they have produced only meager sale. As such the respondent cannot claim reputation among the public in respect of their goods using the similar trade mark as adopted by the appellant. Also it was contended that in view of development of technology and communication the respondent cannot claim the ignorance of the international reputation of the appellant’s mark.

Arguments on behalf of the Respondent:

The counsel for the respondent submitted that the main issue involved in the case is that whether the appellants has established their use of trade mark ‘Jones New York’ in India on the date of application filed by the respondent before the Registrar for the registration of the impugned trade mark. And in response it was contended that till date the appellant is not using the trade mark ‘Jones New York’ in India. Therefore the question of transborder reputation of the appellants mark need not arise at all. The learned counsel relied on the decision of the Hon’ble Supreme Court in Milmet Oftho Industries & Ors vs. Allergan Inc reported in 2004 (28) PTC 585 among other cited cases.

Judgment:

IPAB at the outset stated that it is undisputed that the appellant till date is not using their trade mark ‘Jones New York’ in respect of their goods in India and it is their categorical statement that they proposed to use the same in India. The appellants failed to prove the use of the alleged trade mark since 1966 as they have filed their documents only from the year 1997 whereas the respondent have proved their claim of use of the trade mark since 1993 by producing relevant documents to substantiate their claim. Thus the question of confusion or deception need not arise.

The IPAB relied on decision of the Hon’ble Apex Court in Milmet Oftho Industries & Ors vs Allergan Inc. which is squarely applied to the present case that the multinational companies who have no intention of introducing their product in India should not be allowed to throttle an Indian company and the Indian company who has genuinely adopted the mark and developed product and it is first in the market cannot be prevented from using the mark.

Further the IPAB upheld the observation of the Deputy registrar that when the respondent is prior in adoption and use in India, the quantum of sales figure is immaterial. Thus the appeal was dismissed by IPAB with no order as to cost.

Conclusion:

The IPAB compared the facts and relied on Milmet and held that this was also a similar situation where the appellant company had no sales whatsoever in India under the trade mark ‘Jones New York’. Therefore, the appellant does not have any ground to ‘throttle’ the Indian business. Here it is pertinent to note that this was adjudicated only for the reason that the Appellants did not provide evidence to show that they had an established international reputation prior to 1997, whereas on the other hand the respondents substantially their presence in India since 1993. The operative test, therefore, in such cases is merely who is first in the market. Thus the IPAB has held in favour of the small firm like Vishnupriya Hosiery and against the big corporation solely in the interest of justice, equity and conscience. And if IPAB had held otherwise, it would lead to the growth of multinational corporations at the cost of small firms which is undesirable.

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

Clarification on Small Entity Status of Patent Applicants in India

I really wonder if the Indian Patent Act was already less troublesome that we needed a new set of rules, substantially increased fees, and more importantly introduction of the Small Entity Status of Applicants, which creates even more confusion on retrospectively payable fees, implications of change in status during prosecution, timeline for submission of Form 28, qualification for foreign applicants, among many other allied issues, which would now need clarity and potentially cause issues wherein there is deficiency of fees. Really hoping that this does not become a reason for abandonment of the patents applications, especially when even the provision of deposit account (Rule 7(5)), although mentioned in the Patent Act, is still not in practice.

Barely 2-3 days had passed by after our sending an update on the new rules and introduction of small entity status that we started receiving queries from across law firms, corporate houses with clarifications on small entity status for foreign entities. This led to this piece to help clarify certain doubts that have been asked for and we hope there is a FAQ released by the Patent Office soon to clarify and bring on record certain obvious questions arising out this amendment.

To go back one step, as a background, Rule 2(fa) of the Amended rules contains the definition of small entity. An entity will be a small entity if one of the two conditions is met:

(i)   the enterprise is engaged in the manufacture or production of goods, and has investments in plant and machinery that do not exceed ten crore rupees (approx. US$1,611,085),

(ii)  the enterprise is engaged in providing or rendering services, and has investments in equipment that do not exceed five crore rupees (approx. US$807,495)

The above amount limits are based on clause (a) and (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006), which can be accessed here.

  1. A new Form 28 has been introduced which needs to be filed by a small entity applicant. For Indian entities, Form 28 must be accompanied with the proof of registration under The Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006), whereas, for Foreign entities, Form 28 must be accompanied by any other document as proof. Such ‘any other document’ can be, for example, executed copy of Balance Sheet/P&L, Declaration by a Govt. Entity of Respective country, among other applicable documents)
  2. In case an application processed by a small entity is fully/partly transferred to a, say a large entity, the difference in the scale of fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from the large entity in the same matter, would be paid by the new applicant along with the request for transfer. Therefore, in case the Applicant transforms from a small entity to a large entity while filing the request for examination, as it presently appears, the increased fee would need to paid retrospectively, i.e., the difference in fee as would have been taken place at the time of filing of the Application, would also need to be paid.
  3. It would therefore be safer for companies to be aware of their current entity status at all times, as any change in the status, would lead to a change in the applicable fee, and as per the point 4 of the public notice dated 28’th Feb 2014 having Ref. No. CG/F/Public Notice/2014/307, it has been clarified that it shall be the sole responsibility of the Applicant(s) to select the correct category of the Applicant and file all supporting documents in respect thereof while filing an application or other documents, failure of which may attract provisions of section 142(3) of the Indian Patents Act.
  4. In case any Applicant believes that it is a small entity right now, they should, as soon as possible, file the executed Form 28 along with the MSME registration certificate in order to be eligible to pay the small entity fees. Even a provisional MSME registration certificate should ideally serve as an acceptable evidence, but the same may be at the discretion of the Examiner/Controller.
  5. Also, as the present online filing system does allow filing an application as a Small entity with no compulsion on the uploading of the Form 28, any such uploading of an application without an executed Form 28 may attract provisions under Section 142(3) of the Indian Patents Act,which may severely impact the patent rights during national phase filings, and therefore in case Form 28/Evidence thereof is not available, its much safer to file the Application as a normal (that is large) entity and then submit the Form 28 along with the evidence at a later date to gain benefits for subsequent activities.
  6. In case of joint applicants, as is usually the case, the highest fee category of the applicant among the joint applicants will be taken into consideration for the purposes of fee calculation.
  7. Incorrect claiming of Small entity status, or non-declaration of conversion from small-entity to large-entity, may also become a ground of revocation of patent by a third party trying to invalidation the patent in context, and therefore a careful note is to be made and stringent compliance of the amount limits should be done in case small-entity status is being claimed.

Roche sues Biocon and Mylan over biosimilar version of Herceptin in India

Trastuzumab/Herceptin has been amidst several controversaries off lately and this time it is regarding a biosimilar which has jointly been manufactured by Biocon and Mylan.

Background

Roche’s breast cancer drug Herceptin sold under the brand names HERCEPTIN, HERCLONTM and BICELTIS is a biological drug used primarily for the treatment for human epidermal growth factor receptor 2-positive (HER2+) metastatic breast cancer on a worldwide basis and enjoys a global reputation.

Since its the most prevalent cancer among Indian women,  with approximately 150,000 new patients getting diagnosed every year in India, the originator drug costing around US$3,000–US$4,500 (INR 1.64–2.45 lakh) for a month’s treatment, making it unaffordable to many of Indian citizens leading to lack of affordable treatment options for HER2+ patients which also lead to a campaign in March 2013 to urge the Govt to take appropriate measures to ensure affordability of Herceptin.

However after several months of deliberation and debates, the Department of Industrial Policy and Promotion (DIPP) refused a plea for compulsory licensing for Trastuzumab.

Also, last year in a very surprising development Roche decided not to pursue Herceptin patents in India.

Keeping in mind all these factors, the approval by the Drugs Controller General of India (DCGI)  and launch of Biocon’s CANMAb December last year the world’s first biosimiliar versions of Roche’s blockbuster cancer drug ‘Herceptin’ , is highly likely to be an alternative affordable option, being marketed at about 25% discount to the current list price of the reference product in India.

But inspite of all the pricing advantage, ex parte proceedings by Roche at the Delhi High Court last week has led to an injunction stopping two pharmaceutical companies i.e.; Biocon’s Canmab and its partner Mylan’s Hertraz from being launching, introducing, selling, marketing and/or distributing  its branded drug Herceptin on the grounds of not being able to satisfy the requirements for a biosimilar drug in accordance with the guidelines. Also, the other issue raised was that of passing off; where Roche contended that the defendants were seeking to pass off their products as being equivalent in quality and class to Herceptin by referring to their products as “biosimilar version of Trastuzumab/Herceptin.

Requirements for Biosimilars in accordance with guidelines

“Biosimilars” are biological products that are similar to the innovator biopharmaceutical product.

In view of the structural and manufacturing complexities involved in the production of the biopharmaceuticals, a biosimilar product can only be similar to the innovator biopharmaceutical product; it cannot be a generic equivalent of the innovator biopharmaceutical product.

Also, with the development and growth of the market for biosimilars in India and the international standards for approval of such products, the Guidelines on Similar Biologics were issued in 2012 which lay down specific standard for development and evaluation of similar biosimilar biologics.

After the issuance of the Guidelines on Similar Biologics, all the applications for manufacturing and marketing authorization of similar biologics in India are required to be evaluated on the basis of the standards set forth on it ie;

the demonstration of similarity depends upon detailed and comprehensive product characterization, preclinical and clinical studies carried out in comparison with a reference biologic.

However, Roche claims that DCGI has approved Biocon’s “protocol and design study for testing” related to the proposed drug even before its own regulatory guidelines were firmed up and there is no public record available, in the clinical trial registry India (CTRI) or elsewhere to show that these firms actually conducted phase-I or phase-II clinical trials for the drug.

Also, Roche has casted doubts in its submission saying the Indian drug regulator’s approval for biosimilars couldn’t have come about in ‘such a short period’ when its ‘prescribed procedure’ in the guideline is so long.

The Swiss company argues that there is no public record available, in the clinical trial registry India (CTRI) or elsewhere to show that these firms actually conducted phase-I or phase-II clinical trials for the drug.

In my opinion no matter whether it’s a biosimiliar of Herceptin or not, clinical trials should be rigorously practised according to the new guidelines issued by the Indian Govt.

With respect to the human safety, there is a very big question which highlights the negligence of the drug controller who gave an approval to Biocon and its partner Mylan without the necessary clinical trials being conducted.

About the Author: Sugandhika Mehta, Patent Intern at Khurana and Khurana and can be reached at: sugandhika@khuranaandkhurana.com

 

Patent (Amendment) Rules, 2014

The Patent (Amendment) Rules, 2014 has come in force with effective from 28th February 2014. The major changes are the hike in official fee and an introduction of a “small entity” to which a separate (reduced) fee shall be applicable. Further, in order to promote online filing of patents, different schedule of charges is proposed for the online and offline filing whereas high official fee is proposed for offline filing as compared to the online filing. Form 28 and Form 7A are the new forms introduced in the rules. The Controller’s public notice on the same is available here.

Some of the Salient features of the amended rules:

1. A revised fee structure has been provided for filing of patent application as well as other proceedings before the Patent Office in the First as well as Fourth Schedule of the amended rules. You can have a complete look at the fee structure here

2. A third category of applicant for patent has been introduced in the form of “small entity”. The fees charged to them have been fixed and are in between the fees for natural person and legal entity. Small entity is defined as an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under Micro, Small and Medium Enterprise Development Act, 2006.

3. A new Form 28 has been introduced. Form 28 has to accompany every new application. For subsequent documents for which a fee has been specified and for which the fee applicable for a small entity is claimed, it must be ensured that a Form-28 must be filed at least once.                                                                 In case of change in status of applicant (for example when an applicant no longer remains a “small entity”), it is a duty of the applicant to inform the Patent office about such change.

4. A new Form 7A has been provided for filing “Representation Opposing Grant of Patent” (Pre-grant opposition). Earlier there was no form for filing pre-grant opposition. However, like before, no fees shall be payable for the same.

5. The amended rules provide for 10% additional fee when the applications for patent and other documents are filed through the physical mode, i.e., in hard copy format as opposed to the online mode.

6. 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 fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from the person other than a natural person (except a small entity) in the same matter, shall be paid by the new applicant with the request for transfer.

IPAB strengthening the Principles of Natural Justice

This article relates to a judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 20th January 2014 in the case “Abraxis BioScience LLC USA Vs Union of India” for a patent application no. 2899/DELNP/2005. The said patent application was rejected by Indian patent office. Thus being aggrieved by the rejection of the patent application by Indian patent office an appeal was filed by the applicant to IPAB. The copy of the decision made by IPAB can be accessed here.

Background                                                                                               Abraxis BioScience, a global biopharmaceutical company, acquired by Celgene Corporation, USA (hereinafter Applicant), filed a patent application on December 09th 2002 in USA and the corresponding application was  filed in India through PCT on June 29th 2005 vide  application no. 2899/DELNP/2005 (“composition and method for delivery of pharmacological agents”).   A pre grant opposition was filed for the same application by NATCO Pharma Ltd on Sept 2008. During examination of the patent application, the Indian Patent office raised certain objections for the said patent application on July 24th 2009. But as alleged by the appellant, no opportunity has been given for hearing as per section 14 and 15 of the Act in order to clear the objections raised by the Indian patent office for the reason that appellant has not submitted reply to the first examination report within the prescribed period. Even the appellant was deprived of opportunity for filing an appeal against the order passed as per provision u/s 14 and 15 of the Act. And further Indian patent office without following the mandatory requirement of section 14 and 15 of the Act, proceeded with the pre grant opposition as filed by Natco Pharma. Further, in the proceedings of pre grant opposition, the Indian patent office suo-moto raised one more ground of opposition regarding insufficiency as per section 25 (i) (g) of the Act which was neither pleaded nor argued by the opponent. Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said patent application mainly on the ground of violation of natural justice principles. Considering the facts and circumstances of the case and weighing the evidence on record, IPAB set aside the order of patent office and remanded the matter for fresh consideration and also directed that the procedure be completed within three months from the date of the IPAB order.

Arguments advanced by the Appellant                                                          It was argued by the counsel for the appellant that the impugned order of patent office suffers from gross violation of principles of natural justice. The counsel also submitted that the appellant has been deprived of an opportunity of hearing as per provision under Section 14 of the Indian patent Act in spite of making specific request for the reason that the appellant has not submitted their reply to the First Examination Report before 07.01.2009. However said finding is incorrect as the appellant submitted its reply for the First Examination Report on 06.01.2009 itself.

It was further contended that without complying with the mandatory requirement under Section 14 of the Act, the Assistant Controller of Patents proceeded with the hearing on the pre-grant representation under Section 25 (1) of the Act. Furthermore, it was also contended that the learned Assistant Controller has suo-moto taken additional ground of opposition “insufficiency” under section 25(1)(g) of the Act which was neither pleaded by the opponent nor even argued during the hearing. Thus such findings on the basis of said additional ground cannot be justified being a serious error of law.

Arguments advanced by the Respondent                                                      The counsel for 4th respondent contended that there is no illegality or infirmity in the impugned order. It was further contended that as the appellant participated in the proceedings of hearing under Section 25 (1) of the Act, they could not contend any plea of depriving of an opportunity of hearing as per provision under Section 14 of the Act. Even it was argued by said respondent that they were not furnished with the copy of evidence filed through appellant and as such no opportunity was given to reply to that evidence.

Decision of IPAB                                                                                              The IPAB stated that there is clear evidence that the specific request made by the appellant for hearing under section 14 of the Act was denied and rejected by patent office. And also a response was filed to the first office action on 06.01.2009 itself with the request for hearing under Section 14 and 15 of the Act. But unfortunately, the said request was denied by the Assistant Controller of Patents stating that the said request was not made before 07.01.2009 and such finding is factually wrong as the said request was made by the appellant even on 06.01.2009 itself.

The IPAB also stated that an Assistant Controller is well aware about the affording opportunity to the appellant as well as to the opponent. Inspite of making the above said observations, the learned Assistant Controller has not given opportunity of hearing to the appellant as per the mandatory provision under section 14 of the Act.

Further, it was also stated that an order passed under Section 14 and 15 of the Act is an appealable order and the appellant has been deprived of their right to appeal against an adverse order if passed under Section 14 and 15 of the Act.

Further, IPAB also held that formulation of an additional ground of opposition on “insufficiency” under section 25(1)(g) of the Act by the assistant controller which was not at all raised or pleaded by the respondent, is unsustainable in law.

Thus in the light of averments, IPAB remanded the matter to the Assistant Controller of Patent for fresh consideration by affording opportunity to both sides, that is, applicant and opponent. As it is pointed out by the learned counsel for the 4th respondent that the affidavit of evidence filed by the appellant, the 4th respondent was not served with any copy of the affidavit of evidence as such learned Assistant Controller of Patent is directed to serve copy of the same to the 4th respondent and he will be given opportunity to reply the same. It is made clear that the learned Assistant Controller of Patent shall complete the hearing and dispose of the matter within a period of three months from the date of receipt of the order.

 It appears that the decision given by IPAB is well balanced in view of the fact that the patent office while dealing with application erred to follow the principles of natural justice by not giving an opportunity to the appellant of hearing in spite of the mandatory requirement.  Thus the IPAB ordered fresh consideration of application by patent office and also ordered in favoured of 4th respondent that they shall be given an opportunity to serve a copy of affidavit of evidence and to reply the same.

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

A Tiny Antenna Threatens Broadcasters

Chet Kanojia’s Aereo have shaken up the Television Industry. A 43 Year old immigrant from India, who as an outsider saw a system that most took for granted and who knew he could build a better mousetrap, or at least a different one. Aereo, Mr. Kanojia’s two-year-old company, has figured out how to grab over-the-air television signals and stream them to subscribers on the Internet. It is an invention that could topple titans.

The man at the center of this movement is Mr. Kanojia, a self-described “back bencher” in his youth, who spent too much time smoking and drinking and too little time studying in his hometown, Bhopal. Now he has transformed himself into a lean long-distance runner and workaholic pursuing what he describes as a simple ambition: improving the world through technology.

Mr. Kanojia does not fit the profile of a poor immigrant bootstrapper. He grew up in an upper-middle-class household in Bhopal where his parents were so conscious of his future that they largely spoke English instead of the native Urdu.

After earning an undergraduate degree in mechanical engineering in India, he came to the United States and earned a master’s in computer systems engineering from Northeastern University.

His aspirations are idealistic and democratic, as well. Aereo, he says, is not so much about making money — after all he made plenty after he sold his first company, Navic Systems, which made software that helped cable companies interact with their customers, to Microsoft in 2008 for a reported $250 million.

Aereo- a technology company based in New York City that allows subscribers to view live as well as time-shifted streams of over-the-air televisionon Internet-connected devices. The service launched in February 2012and is backed by Barry Diller’s IAC.

Aereo works by setting up thousands of tiny antennas, then it sends the signals received by those antennas to subscribers over the Internet. (Bloomberg LP, which owns Bloomberg Business week, is an Aereo partner and offers its cable channel on the service.) Because each antenna is assigned to a specific customer, Aereo says it’s not providing a public broadcast, allowing the company to avoid retransmission fees.

As of October 2012, Aereo could be used on Windows, Mac, and Linux PCs  with a compatible browser or iOS devices including the iPhone, iPad, iPod Touch or Apple TV (2nd & 3rd Gen) via AirPlay. As of January 21, 2013, Aereo can be watched on Roku without the use of iOS device via a stand-alone app.

As of June 2012, the service offered 28 channels, including all major broadcast channels. In August 2012, the company announced new monthly and yearly pricing options, $1 a day and ‘Aereo Try for Free.’ Monthly plans start at $8 for 20 hours of DVR storage, there are also yearly subscriptions.

Aereo provides this service by leasing to each user an individual remote antenna. This distinguishes Aereo from purely internet-based streaming services.

Immediately following Aereo’s launch in New York City the company was sued by a consortium of major broadcasters, including CBSComcast‘s NBCDisney‘s ABC and 21st Century Fox‘s Fox for copyright infringement.

To entertainment companies, this is Cheating. According to Copyright Law- An individual can watch anything with the help of an Antenna as long as it is for their personal use. But according to the Broadcasters, Aereos transmissions constitute a “public performance” that requires Aereo to pay for retransmitting them.  Further they claim that Aereo is violating copyright and stealing their content.

Broadcasters say that Aereo is taking advantage of a legal loophole and that the transmission of content without a license is a copyright violation. Because the broadcasters expect to bring in more than $4 billion in retransmission fees this year, the stakes are high. DirecTV (DTV), Time Warner Cable (TWC), and Charter Communications (CHTR) have all said they would consider using similar technology to avoid paying fees if Aereo’s techniques were deemed legal.

The top court in the country on Friday agreed to hear the case pitting television broadcasters against Aereo, an online subscription service with arrays of miniature antennas that grab over-the-air programming, stream it online to paying members, and store it for them in a remote DVR.

Although, Aereo is pretty confident it can win as two courts have already ruled that its service is legal. It wants the Supreme Court to put an end to the controversy so it can move on, as Aereo says the uncertainty is holding it back from what would otherwise be a fruitful future. The company this week said it has raised $34 million to fund further expansion.

Table stakes :

Copyright law distinguishes between private performances and a public ones. Pulling up “The Walking Dead” on your DVR and watching it on your couch — that’s a private performance, and kosher with copyright law. Your cable company providing you with AMC so you and millions of others can watch “The Walking Dead,” that’s public performance.

On the surface, Aereo’s business seems akin to the latter example, a public performance. But Aereo has an individual antenna for every subscriber, and an individual copy of the content for each user. It’s setting up each member’s antenna of his or her behalf, connecting it to the Web, and letting that member use the antenna however they see fit, as though it were an antenna in their own home. Aereo calls that private.

Strictly speaking, retransmission fees are the reason broadcasters are suing Aereo. Today, nearly all US viewers watch TV via a paid distributor like cable — estimates put it at more than 90 percent. You pay the cable company to watch free broadcast shows, and as a result, the cable company must pay the networks for retransmitting their content.

Aereo’s model circumvents these big payments, and broadcast networks are incensed.

Networks relish their retransmission fees. Though most of their sales still comes from advertising, retransmission fees are a revenue innovation and are growing fast. Where retransmission fees didn’t exist a few years ago, they’ve grown to an estimated $3.3 billion last year and may be worth more than $7 billion a few years from now.

 Cable stakes :

Aereo is tiny, however. The retransmission fees networks are missing out on are a drop in the bucket. The networks’ bigger fear is their giant distributors will do the same.

“Broadcasters are worried not so much about Aereo but the Aereo principle applying to their big retrans consent accounts,” like cable, satellite and fiber-optic TV companies, said David Wittenstein, a media and information technology lawyer at Cooley in Washington DC.

In other words, the networks aren’t worried about the drop in the bucket. They’re worried Aereo will kick the whole bucket over.

Copyright owners like them collect about $100 million a year from the licensing charges distributors pay when they retransmit broadcast programming, the brief said. If retransmission fees disappear, pro leagues risk losing those millions too. That could force rights holders to move to paid cable networks, “where Aereo-like services cannot hijack and exploit their programming.”

 Distributor stakes:

Pay-TV operators, meanwhile, are loathe to keep paying skyrocketing retransmission fees. Time Warner Cable’s willingness to temporarily remove CBS channels from its lineup during their fee negotiations this summer illustrated that. But most cable clients of Wittenstein don’t want Aereo to win, because Aereo offers a low-cost alternative to their video service, and they’re worried about generational viewing shift.

“Cord cutters,” people who forsake traditional pay-TV service for Internet-based alternatives, are still a rare breed, but those who cut the cord are young. If today’s kids become accustomed to Internet-based TV, tomorrow’s households will turn to the Internet rather than cable or satellite.

Adding another wrinkle for pay TV, the Aereo case could imperil a precedent known as the Cablevision case. In 2008, the cable provider Cablevision won its court battles against media companies to offer network DVR, a cloud-based recording system that doesn’t require recording hardware in the home. Without network DVR, you can’t access your recorded shows on the go, and the content is locked to the box attached to your TV. The Supreme Court declined to hear an appeal of the Cablevision case in 2009, and pay-TV operators have been rolling out the cloud-based services ever since.

If the Supreme Court rules against Aereo, it could do so by striking down the Cablevision decision.

Dark clouds elsewhere:

The worries about cloud storage don’t stop with remote DVR. Cablevision, Aereo, and others have argued that the broadcasters are challenging the legal underpinning of all cloud-based services. That means Dropbox, or your Amazon cloud-storage locker.

Most cloud-locker companies don’t hold any licenses for the content. Why would they? If customers store their own movies or MP3s and stream them from the lockers, those are private performances.

Aereo’s single-antenna, single-copy setup is the basis for its claim of being a private transmission too.

So which way will it go? 

Who is likely to come out on top: the broadcasters or Aereo? As with any case before the bench, it’s a difficult call.

Aereo has been victorious in courts thus far. In April, the Second Circuit Court of Appeals denied a preliminary injunction sought by the television networks, and denied a motion it be reheard before a full panel of judges. A judge in Boston ruled along the same line.

However, FilmonX, a company offering a service similar to Aereo’s, hasn’t had as much success, failing to deflect injunctions in Los Angeles, D.C., and Boston courts. While it’s unclear whether Aereo and FilmonX are based on the same technology, the latter’s court failures cast uncertainty on Aereo’s record.

No matter who wins, one thing is certain — Aereo will be changing the course of television history, just as it wanted.

About the Author: Ms Sheetal Tiwari, Trademark Attorney at Khurana and Khurana and can be reached at: sheetal@khuranaandkhurana.com

Strengthening the Remedy against Modern Tort of Passing Off: Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd

This article is to highlight the recently decided case of Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd, by the Hon’ble Delhi High Court regarding passing-off action based on the principles of common law.

 Brief Facts of the Case:-                                                                                  The plaintiff is a private limited company engaged in the business of global speciality and hospitality management services.  It is the owner of the mark ‘The Noodle House and claim its adoption since 2003. The defendant in this case is Star Restaurants Private Limited engaged in the similar nature of business as that of Plaintiff. The plaintiff allege that in the year 2008 it learnt about the proposed launch of the defendant’s restaurant “THE NOODLE HOUSE” in the same vicinity proposing to offer the same cuisine as the plaintiff’s restaurant. Thus the plaintiff filed the present suit alleging passing off and infringement of its trade mark and copyright in the mark “The Noodle House” by the defendant engaged in the business of same nature as that of Plantiff. The plaintiff prayed for permanent and mandatory injunction against the defendants and its representative using similar or deceptively similar mark to the Plaintiff’s mark “The Noodle House”.

 Arguments Advanced:                                                                                   The learned counsel for the Plaintiff contended that the plaintiff has adopted the trade mark ‘The Noodle House’ in the year 2003 for which registration is pending and by its extensive and continuous use the trademark has emerged as the plaintiff company’s most popular chain. Further it was submitted that the trademark is a fanciful and invented combination of words and has come to be associated exclusively with the plaintiff’s business. It was also contended that the popularity of the plaintiff’s trademark is evidenced by its net sales under the trademark for the year 2008, which amounted to Rupees Twenty Million. It was further submitted that the proposed launch of the defendant’s restaurant under the identical trademark is in a vicinity close by to the plaintiff’s location and that too for the same category of products and services as those of the plaintiff. Thus the use of the trademark “THE NOODLE HOUSE” by the defendant for identical services is with the intention to free ride on the plaintiff’s popularity. However on the other hand the defendant failed to provide any explanation regarding the genuine basis for the adoption of the Trade Mark ‘The Noodle House’.

Judgment:                                                                                                        It was held by the Hon’ble Court that in the absence of any explanation from the defendant as to why the impugned mark was adopted by them, it is crystal clear that the intention of the defendant is to ride on the goodwill and reputation of the Plaintiff’s business and pass off its service of restaurant as that of Plaintiff. The adoption of the mark by the defendant would result in the dilution of the Plaintiff’s trade mark and would cause irreparable loss to the reputation of the plaintiff. Thus the suit was decreed in favour of the Plaintiff to the extent of grant of Permanent Injunction. However there was no order as to damages in the light of short duration between filing of suit and grant of injunction and in view of absence of any evidence from the plaintiff to establish whether the defendant’s restaurant launched at all. However the plaintiff was entitled to costs of the suit.

Conclusion:-                                                                                                    The court while deciding the case discussed the five elements of modern tort of passingoff as laid down by Lord Diplock in Erwen Warnink BV Vs. J Townend & Sons. The five elements of modern tort of passing off are (i) misrepresentation; (ii) made by a trader in the course of trade (iii) to customers of goods and services supplied by him (iv) which is calculated to injure the business or goodwill of another trader and (v) which causes actual damage to a business or goodwill of a trader. Thus considering the above elements the Court granted the injunctive relief to the Plaintiff. Pertinently the court while passing the order of injunction also considered the fact that the defendant’s restaurant was in the vicinity of the Plaintiff’s restaurant in addition to the similarity of the mark and services, and this would cause irreparable loss or damage to the Plaintiff because of likelihood confusion and deception being caused in the mind of potential customer or target population. However due to lack of evidence on record regarding the actual damages incurred by the plaintiff and the circumstances being unclear whether the defendant’s restaurant launched or not, the court disentitled plaintiff for damages.

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

Understanding ITC Litigation (Section 337 Cases)

Having seen regular and growing number of queries from Indian Companies on U.S. International Trade Commission (ITC) cases in the US (primarily companies having domestic market in the US), this is a brief attempt to give clarity on jurisdiction that ITC provides, types of cases handled, advantages/disadvantages of the ITC routes, among few other characteristics of the cases filed.

Introduction:

U.S. International Trade Commission (ITC) has, in the last few years, become a key destination for both Domestic and Foreign IP litigants for different types of Trade Disputes. ITC, in essence, is basically an independent, quasi- judicial Federal agency with broad investigative responsibilities on matters of trade. ITC is enabled to investigate effects of dumped and subsidized imports on domestic industries and conduct global safeguard investigations. The Commission is also involved in adjudicating cases involving imports that allegedly infringe intellectual property rights. The Commission also serves as a Federal resource where trade data and other trade policy-related information are gathered and analyzed for development of sound and informed U.S. trade policy. The Commission makes most of its information and analysis available to the public to promote understanding of international trade issues.

Basic functions of ITC can be viewed here. ITC therefore, not only focuses on IP issues, but handles and has jurisdiction over any action that is to be taken by an appropriately hurt entity on issues relating to import injury, handling Freedom of Information Act Requests (FIAR), customs, Antidumping and Countervailing Duties (AD/CVD), among other like matters. However, ITC is best known for its IP practice, wherein, Section 337 investigations conducted by the U.S. International Trade Commission often involve claims regarding intellectual property rights, including allegations of patent infringement and/or trademark infringement by imported goods, which may lead to unfair practices in import trade. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. Other forms of unfair competition involving imported products, such as infringement of registered copyrights, mask works or boat hull designs, misappropriation of trade secrets or trade dress, passing off, and false advertising, may also be asserted. In addition, antitrust claims relating to imported goods may also be asserted.

337 Investigations:

A primary remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States. In addition, the Commission may issue cease and desist orders against named importers and other persons engaged in unfair acts that violate Section 337. Expedited relief in the form of temporary exclusion orders and temporary cease and desist orders may also be available in certain exceptional circumstances. Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative law judges and review by the Commission.

Many of the highest profile, multi-forum IP disputes now include proceedings before the ITC. Since ITC cases go to trial faster than almost any forum in the world, they can be the first to be resolved in these multi-forum disputes and often spearhead resolution of the other cases. Most ITC disputes, as can be seen here, are Patent Infringement Suits filed by Patent holders who must prove that it has a domestic industry with respect to the patent in order to be entitled to relief, against foreign companies that are exporting/ attempting to export potentially patent infringing products to the US. Apart from patent infringement suits, other subject matters relating to, but not limited to, copyright infringement, mask work infringement, misappropriation of trade secrets, passing off, false advertising, and potentially even violations of the antitrust laws may also be asserted under Section 337. However, most of this instant article pertains to allegations being made in context of patent infringements.

Procedure:

As a procedure, following the key steps taken during the case till the same is disposed off:

1. Section 337 investigations are initiated by the Commission following the receipt of a properly filed complaint that complies with the Commission’s Rules.3A Commission notice announcing the institution of an investigation is published in the Federal Register whenever the Commission votes to institute a Section 337 investigation.

2. When an investigation is instituted, the Chief Administrative Law Judge at the Commission assigns an Administrative Law Judge to preside over the proceedings and to render an initial decision (referred to as an “Initial Determination”) as to whether Section 337 has been violated. The Commission also assigns an investigative attorney from the Commission’s Office of Unfair Import Investigations (“OUII”), who functions as an independent litigant representing the public interest in the investigation.

3. In the notice announcing initiation of an investigation, the Commission identifies entities that may participate in the investigation as parties, namely, the complainant(s) that allege a violation of Section 337, respondent(s) that are alleged to have violated Section 337, and the Investigative Attorney.

4. Section 337 investigations are conducted in accordance with procedural rules that are similar in many respects to the Federal Rules of Civil Procedure. These Commission procedural rules (found in 19 C.F.R. Part 210) are typically supplemented by a set of Ground Rules issued by the presiding Administrative Law Judge. The procedural rules and Administrative Law Judge’s Ground Rules provide important instructions and details regarding such matters as the taking of discovery and the handling of motions.

5. A formal evidentiary hearing on merits of a Section 337 case is conducted by the presiding Administrative Law Judge, giving parties the right of adequate notice, cross-examination, presentation of evidence, objection, motion, argument, and other rights essential to a fair hearing.

6. Following a hearing on the merits of the case, the Administrative Law Judge issues an Initial Determination (“ID”) that is certified to the Commission along with evidentiary record. Commission may review and adopt, modify, or reverse the ID or it may decide not to review the ID. If the Commission declines to review an ID, the ID becomes the final determination of the Commission.

7. In the event that the Commission determines that Section 337 has been violated, the Commission may issue an exclusion order barring the products at issue from entry into the United States, as well as a “cease and desist” order directing the violating parties to cease certain actions. The Commission’s exclusion orders are enforced by U.S. Customs and Border Protection. Commission orders become effective within 60 days of issuance unless disapproved by the President for policy reasons.

8. All appeals of Commission orders entered in Section 337 investigations are heard by the U.S. Court of Appeals for the Federal Circuit.

Owing to extremely pressing and short time durations between activities relating to cross-examination, presentation of evidence, objection, motion, arguments, litigating in the ITC enables an efficient resolution in a short period of time, and in a pressure-packed forum that can make or break the commercial success of the products at issue, wherein the entire case, starting from the complaint, to discovery, pretrial hearings, trial, post-trial briefs, to subsequent review by the Commission, typically happens within about 18 months.

Other pointers:

  1. Remedies: Unlike in federal district court litigation, ITC does not enable money damages as a remedy and the commission has authority to issue only two types of remedial orders: (1) limited or general exclusion orders and (2) cease and desist orders. Exclusion orders can include Limited Exclusion Order (LEO) that direct the U.S. Customs and Border Protection (CBP) to exclude all infringing articles imported by parties found by the commission to have violated Section 337, whereas a General Exclusion Order (GEO) directs CBP to exclude infringing goods from the United States, regardless of whether the persons importing those goods were parties to the investigation that led to the issuance of the GEO.
  1. Jurisdiction: ITC possesses authority to investigate whether certain allegedly imported and infringing articles should be allowed into US and to provide appropriate remedial relief, if necessary. In sum, the commission has in rem jurisdiction over imported goods rather than in personam jurisdiction over the parties who import those goods and the commission’s remedial orders can reach the products of parties over whom a district court may not have personal jurisdiction.
  1. Subject Matter Jurisdiction: ITC can only try cases wherein the complainant proves to the satisfaction of the ITC, that there has been importation into the United States, sale for importation, or sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a U.S. patent. A second requirement is that a complainant must allege and establish the existence of a protectable domestic industry. For instance, in patent-based investigations, violation of Section 337 can be found “only if an industry in the United States, relating to the articles protected by the patent concerned, exists or is in the process of being established.”

 Exemplary Cases

1. In Dec, 2010, Motorola Mobility brought a patent infringement case at ITC against Microsoft concerning five of Motorola Mobility’s patents. Of the five, the claims were brought down to just one patent, namely U.S. Patent No. 6,069,896, which specifies a peer-to-peer wireless invention. The dispute was actually between Google and Microsoft, since Google bought Motorola Mobility about a year ago, largely to boost its patent holdings. Concerned patented technology uses Microsoft’s Xbox gaming consoles, wherein the Commissioners at the U.S. ITC refused an appeal by Motorola Mobility to examine findings of ITC Administrative Law Judge David P. Shaw that were determined in March, 2013. Shaw found that Microsoft did not infringe a single patent held by Motorola Mobility. Six Commissioners at the ITC agreed with the administrative law judge’s initial determination, including that “Motorola failed to establish indirect infringement on the merits.” They concluded that the investigation was now “terminated” in a notice, which can be accessed here.

2. In June 2013, ITC cleared video-streaming site Netflix of infringing four patents owned by digital entertainment company Rovi. In its preliminary order, administrative law judge, David Shaw, rejected Rovi’s infringement claims covering interactive television programme guides. One patent was found invalid. The complaint was filed in April 2010, targeting Netflix and consumer electronics companies Roku, LG Electronics, Mitsubishi and Vizio. Roku, which is the only one of those not to strike a licensing deal with Rovi, was cleared by the ITC on June 7 2013 of infringing one The asserted patents mainly cover the ability to customise the display of TV programmes, such as recommending shows based on customer preferences. Several claims within one patent – “Interactive computer system for providing television schedule information” – were found invalid on the grounds of anticipation and obviousness.

In sum, the speedy and specialized nature of ITC forum makes the commission an attractive proposition for getting relief, without factoring into issues such as equitable balance, counterclaims, inordinate costs (although ITC has short-term high costs), which are typical in federal district courts.

About the Author:Sheetal Tiwari, Trademark Attorney, at Khurana & Khurana, IP Attorneys and can be reached at sheetal@khuranaandkhurana.com

Applicability of the principle “Proof of the right” to Conventional application

This article relates to a recent judgment of IPAB in the case “NTT DoCoMo Inc. Vs The Controller of Patents and Designs” for a patent application No. 794/CHE/2006 which was refused to proceed further by the Indian patent office. The copy of the decision made by IPAB can be accessed here.

Brief summary of the case

In summary, the application relates toTRANSMISSION RATE CONTROL METHOD AND MOBILE STATION filed by NTT DoCoMo Inc., a Japanese company on 2nd May 2006, bearing patent application number 794/CHE/2006. The application was filed as a conventional application with priority from Japanese application No. 3.2005-134640 dated 2nd May 2005 filed at Japanese Patent Office. However,c during examination of patent application by IPO, the examiner raised an objection regarding “proof of the right should be filed” inter alia.  The appellant however failed to submit proof of the right in due time and the application got rejected by Indian patent office. The appellant being aggrieved by the rejection challenged the order given by patent office in Intellectual Property Appellate Board (IPAB). Hence this appeal was filed.

Argument advanced by the appellant

The counsel for the appellant mainly relied their contentions based on the provisions of Section 6 (Persons entitled to apply for patents), Section 7 (Form of application) and Section 135 (Convention applications) of Indian Patent Act, 1970. The counsel contended that the section 6 is applicable only in respect of ordinary application and not in conventional application. It is further contended that so far as Section 7(2) is concerned, the authority is to consider only the right of the appellant to apply and not in respect of proof of such right. Appellant also stated that as per section 135, there is no requirement of any production of proof of right for a conventional application which excludes from the application of section 6 and 7 (2).

Arguments advanced by the respondent

The Respondent argued that in addition to the lack of proof of the right, there were a number of flaws in the application. The appellant deleted the relevant column meant for conventional application in the application and also neither obtained the signature of the inventors in column 9(i) of Form-1 nor alternatively provided the assignment deed signed by the inventors assigning the invention to the appellant. Thus the appellant failed to comply with these basic stipulations for filling out Form-1 while applying for a patent, especially when the appellants had stated that they were the assignees to the patent.

Judgment

Considering the provisions of the Indian Patent Act, 1970, IPAB made it clear that section 6 deals in respect of the person entitled or competent to apply for patents. IPAB further stated that said provision cannot be confined to ordinary application but it is also applicable to the conventional application. In view of section 7(2), the IPAB further stated that if the application is made by virtue of an assignment of the right to apply for the patent for the invention, the appellant shall produce or furnish within such period as may be prescribed from the date of filing application the proof of the right to make the application. In view of section 135, IPAB held that there is no such provision discussed in said section that proof of the right shouldn’t be filed for conventional application. Further to bring out clarity, IPAB also referred section 139 which states all the provisions of the Act shall apply in relation to a conventional application and the patent granted in pursuance thereof and the person apply in relation to an ordinary application.

Thus in the light of above averments, IPAB upheld the Patent Office’s decision to reject the impugned patent application. Further, it also opined that the Controller ought to have given opportunity to the appellant for submitting an amended application as provided by Section 15 of the Patent Act instead of refusing to entertain the application. Therefore, IPAB set aside the Controller’s impugned order and remanded the matter for reconsideration giving an opportunity to the appellant to submit an amended application with the required documents.

Conclusion 

Thus it can be concluded that the decision given by IPAB is well balanced judgment where the IPAB rejected the appellant’s contention regarding non-applicability of “proof of the right” to conventional application. But at the same time IPAB referred to section 15 and opined that an opportunity in the interest of justice shall be provided to the appellant for filing an amended application with the required documents. Thus IPAB remanded the application to the Indian patent office.

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

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