Monthly Archives: May 2011

With newly amended TM rules, will India keep up the pace with other global countries?

The Process of trade mark registration in India being very slow is not only time consuming but also sometimes frustrating. Hopes soared high when in the beginning of year 2010, Trade Marks Registry assured attorneys and applicants that all records of the TM Registry were being digitized and on completion of digitization process, the movement of the filed would become faster. But despite whole of 2010 and half of 2011 gone, there is no visible relief. The process has only slowed down in the name of digitization and bringing transparency in the working of the TM Registry. The Registry issued a public Notice on 18 November 2010 informing general public that due to administrative reason all hearings of show cause notice for the month of November and December 2010 were canceled and fresh notices would be sent. Till date no notice for fresh hearing have been issued. Also no action seems to have been taken in case of responses to office actions filed as long back as May 2010.

Very recently a public notice dated April 25, 2011 has been posted on the India Trade Mark Office website, explaining that 44,404 trademark files have gone missing. What is interesting is that these missing files came to light not as a result of normal file maintenance practice but rather from the India Trade Mark Office’s efforts to modernize its files.

Admittedly, the office of the Controller of Patents, trade Marks and designs in India has recently introduced some new features to their official website to keep pace with the fast changing IP scenario in India. The Trade Mark Rules, 2002 have been amended and Trade Mark (Amended) Rules, 2010 have come into force with effect from May 20, 2010. The major change is amendment in Fourth Schedule of the Trade Mark Rules i.e. adoption of all 45 international classes.

Earlier international classes 43, 44 and 45 were merged in class 42 in India, but from May 20, 2010 separate application has to be filed for services covered under International class 43, 44, 45.

Another change in insertion of proviso to Rule 62(3), that provides for issuance of copy/ duplicate registration certificate without any additional cost, if the Registrar is satisfied on a claim of Registered Proprietor supported by evidence that registration certificate has not been received by him.

The Indian Trade Mark Laws continue to move forward to ensure “universalization” of its systems and processes. By way of notification dated 29th December 2010, published in the Gazette of India on 13/01/2010, the Department of Industrial Policy and Promotion, Ministry of Commerce and Industry, has made amendments to the Trademark Rules, 2002 (Rules). The Department has made Indian trademarks freely available for public search from the Registry’s website.

Although the free trade mark search was made available from 13th January 2011, the initial results obtained from the website were far from satisfactory. In the public search section, there were provided three grounds, for searching similar marks namely, word mark, device and phonetics. Whereas the device and phonetic search engines were not operational, the search for word mark did not yield complete results. But the working of the IPO search website has considerably improved recently with the operation of word as well as phonetic search criteria.

The amendment aims at bringing greater transparency and efficiency in the functioning of the Registry and also to “facilitate business decisions to apply for a trademark on an immediate basis from anywhere in the world”. By the same Notification, the Department has also increased the Official Fees for filing one trademark application in one class from current Rs.2500/- to Rs.3500/- and corresponding changes in the Rules.

The ongoing cascade of changes at the Indian Trademark Registry reflects its resolve to expeditiously adopt the International System for Trademark Registration in accordance with Madrid Protocol. The Indian Parliament has already passed the Trademark (Amendments) Act, 2009 to introduce the Madrid System in Indian Trademark laws. The Amendment Act is likely to be notified by the Central Government once all necessary systems and procedures are laid down at the Registry.

Following the judgement of Honorable High Court of Delhi in the case of Haldiram India (P) Ltd. Vs Union of India, the functioning of the Trade Marks Registry has been re-organized with the objective of establishing complete transparency and professionalism in the Registry. The Office of the Controller General has issued a Public Notice on 06/5/2011 enclosing a series of office orders detailing the re-organization of the Registry, where the functions of the Trade marks registry have been streamlined into 11 sections coming into effect from 02/05/2011. Each section has to carry out its functions purely on order of seniority.

Under these office orders, while the Trade Mark office functions relating to Examination of applications, Issuing Exam Reports and Considering reply to exam reports has been centralized at Mumbai, functions relating to Receipts and EDP section, Inspection and records, Opposition and Rectification Matters, Show-cause hearing notices, Assignments, Renewal and Registered user section are assigned to a separate section in each Registry under the supervision of an Officer in charge who is responsible for monitoring time bound implementation of the measures undertaken by the Registry to improve efficiency.

About the Author: Mr. Mohinder Vig, Senior Trademark Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: iiprd@iiprd.com.

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The major changes proposed in Draft Patent (Amendment) Rules 2011

The Indian Patent Office released draft amendment to the Patent Rules on March 8, 2011. The Draft amendment is directed to rules 6, 9, 14, 15(3) and the First schedule of the Patent Rules and mainly relates to e-filing of patent applications and related forms.

Any interested person was entitled to send comments and suggestions regarding the draft amendment to Secretary to the Government of India in the Ministry of Commerce and Industry (Department of industrial Policy and Promotion). The deadline for sending comments and suggestions was 45 days from March 8, 2011 which has already ended. Now it is to be seen how the officially notified patent rules 2011 finally come out to be as in whether any other additions or modifications to already proposed draft rules have been made.

We also hope that once the rules are officially notified it would be possible for the Indian Patent Office to publish complete applications and subsequently all other prosecution history documents. The amendment rules would make it easier for patent applicants and practitioners by providing for online filing of documents. It could prove to be a good step in improving efficiency and transparency in filing and processing of Patent Applications and also in ensuring accuracy of Patent data as well as related certificates provided by the Patent office.

The major change suggested (proposed) under the draft Rules are as follows:
1. All patent documents duly authenticated by Applicant or Agent must be filed online. In case of Individual Applicant Government has proposed to provide assistance in E-filing to those for whom E-filing is not convenient and Controller has been vested with power of direct acceptance of their Patent documents in other forms and manner than explained above.

2. The Indian Patent Office in Delhi is to become the Indian International Searching Authority (ISA) and Indian International Preliminary Examining Authority (IPEA) for international applications under the PCT. There will be new rules defining procedures, time limits and fees for international search and international preliminary examination.

3. The rules also define a specific section relating to the format of applications to be submitted.
• All documents except affidavits and drawings, should be submitted in a font that is not less than 0.28″ and have at least 1.5 line spacing.
• The document should be on A4 paper, with defined margins (4 cm for top and left, 3cm for bottom and right).
• Each sheet must be numbered in Arabic numerals in the bottom center.
• The description and the claims be numbered every 5th line of each page of description and claims at right half of the left margin
• Signature on Patent documents in language other than in English and Hindi are to be accompanied by a transcription in English or Hindi capital letters;

4. Where the patent application relates to a sequence listing of nucleotides and/ or amino acids sequences, the sequence listing must be filed in computer readable form (ASCII text file) and additional fee would be applicable for filing sequence listing (which is not applicable as of now).

5. Where online transmission of Patent documents cannot be initiated or completed for whatever reasons, document can be handed over or sent by post to the Patent office so as to reach there within the stipulated time frame.

6. Amendment to specification and drawings may be submitted via the online system. Every page that is retyped or added and any drawing that is amended or added should be marked on the header as amended and should be incorporated in the original document to form a continuous document. Undertaking should be provided that non amended pages are the same as those originally submitted. Also, amended documents should be returned to the controller along with superseded pages or drawings duly marked, canceled and initialed by applicant or his agent.

7. In case of a delay in receipt of documents from the patent office, a condonation of delay petition may be filed immediately upon receipt of documents. The condonation period will not exceed the period between the date on which the party was supposed to have received the document by mail or electronic transmission; and the actual date of receipt of documents.

About the Author: Ms. Meenakshi Khurana, Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Meenakshi@iiprd.com.

DataCard Corporation Vs Eagle Technologies – Part 1

Introduction:
It is a direct Patent Infringement case, claimant “Data card Corporation” (Datacard) sued Eagle technologies for infringing its couple of patents: UK 1458572 (‘572) and UK 1534530 (‘530) and also couple of trademarks: UK 1399698 (‘698) and UK 1399699 (‘699). When I was searching case laws to understand the degree of obviousness, especially in the field of mechanical engineering, from English courts I came across this wonderful case and hence thought of blogging on the same. In Part – I, I have decided to pen down the insight arguments between the claimant and the defendant and also to summarize the judgment for the ‘530 Patent. Although, Eagle accepts the infringement of its products, it questions the validity of the “530 patent. The case principally involves thermal transfer printing.

‘530 Patent:-
The ‘530 patent entitled “Supply items for printers and the like, and method of loading supply items” has a priority date of 31st July 2002. The invention relates to printers, laminators and other equipment to produce data bearing identification. In particular, the invention relates to supply items (Ribbon, webs that carry laminate patches, cleaning tape, holographic overlays, and other exhaustible web materials) in such equipment and to a method for facilitating the loading of the supply item into the equipment.

The patent describes a supply item and a carrier that are modified to facilitate loading of the supply item onto the carrier in the proper orientation, and the carrier can be more easily loaded into the production equipment in the correct orientation.

The supply item 10 includes a print ribbon 12 wound onto a supply cylinder 14. The supply cylinder 14 includes first and second ends 20a, 20b and is generally hollow from the first end to the second end. Likewise, the take-up cylinder 18 includes first and second ends 22a, 22b and is generally hollow from the first end to the second end. Preferably, the ends 20a, 20b, 22a, 22b of the cylinders 14, 18 are designed to facilitate loading of the cylinders 14, 18 onto a carrier 24 in the proper orientation, thereby simplifying ribbon replacement. Mostly a difference in the geometry of the ends of the cylinders 14, 18 is used to achieve the simplified replacement.

With reference to Figures 1, the ends 20a, 20b of the cylinder 14 each define an opening having an area, with the area of the opening at the end 20a being substantially equal to the area of the opening at the end 20b. In addition, the ends 22a, 22b of the cylinder 18 each define an opening having an area. However, the end 22a of the cylinder 18 is closed by a wall 26 that forms part of a cap 28 that is connected to the end 22 of the cylinder 18. An opening 30 is provided in the wall 26. Thus, the area of the opening 30 at the end 22a is different than the area of the opening at the end 22b, and the area of the opening 30 is different than the area of the opening at the end 20a of the cylinder 14. The difference in the geometry of the openings at the ends 20a, 22a of the cylinders 14, 18 limit how the cylinders 14, 18 can be connected to the carrier 24. While the end of the cylinder 18 is described as having an opening 30 with an area less than the opening at the end of the cylinder 14, it is to be realized that the reduced area opening can be provided on the cylinder 14 rather than on the cylinder 18.

The inventive concept of claim 1, after amendment, explains that one end of one of the cylinders of a supply item has a different geometry to that of the other three ends so that the supply item can be correctly loaded onto a carrier having appropriately-shaped spindles.

Obviousness over Fargo Pro-L (US Patent No 5,755,519):

The Fargo Pro-L printer has four hubs, three of which are large and one of which is smaller. The ribbon is supplied on two cylinders. One of the ends of the cylinders is different to the other three ends in that it is fitted with a closely fitting circular insert. This insert has an aperture which is concentric with the circumference of the insert and the inner circumference of the cylinder. The insert contains a number of metal pins disposed in a circle concentric with the aperture. The aperture enables the end of the cylinder with the insert to fit onto the smaller of the four hubs, but is not large enough to fit properly onto the other three hubs.

Difference between ‘530 and Fargo Pro-L:
The differences are that, in Fargo Pro-L the cylinders are directly loaded onto hubs in the printer. On the other hand, in amended claim 1 of ‘530 the cylinders are loadable onto spindles on a carrier, the cylinders have ribs on their interior surfaces and the differences in the ends of the cylinder are capable of limiting how the cylinders can be connected to a carrier.

Defendants Arguments:

Eagle contends that there is a disadvantage with the method of loading the ribbon used in the Fargo Pro-L as it was fiddly to fit the cylinders onto the four hubs inside the printer. A well-known and obvious alternative method of loading a ribbon in 2002 was direct loading onto two spindles in the printer. Once the skilled team decided to adopt the direct loading onto spindles approach, it would have been immediately apparent to them that the cylinders would need to have ribs on the inside so as to enable the spindles to drive the cylinders. At that point they would have arrived at a supply item within amended claim 1, because the geometry of the ends of the cylinders would be capable of limiting loading onto spindles on an appropriate carrier.

Judge dismissed Datacard five arguments that were crucial in determining the obviousness:
First, DataCard argues that the skilled team would have no motive to change from the hub design of the Fargo Pro-L. Judge did not accept this arg. and said that the absence of motive is not conclusive Changing from one well-known ribbon loading arrangement to another one is not something that requires a specific motive, because they are technically obvious alternatives to each other. Furthermore, in the present case there would be a motive, namely the desire for a less fiddly method of loading the ribbon.

Second, the skilled team would have motive not to change it. Judge refused this arg. and said by changing the loading method from hubs to spindles would not necessitate changing the insert, nor prevent the ribbon being identified by means of a Hall Effect sensor.

Third, if the skilled team decided to change from hubs to spindles, it would be into a complete re-design of at least the ribbon-loading aspects of the machine. Judge refused this point by saying if differential geometry of the ends of the cylinders in terms of preventing error loading when combined with suitable hubs would be apparent to the skilled team, then it would not take invention to appreciate that precisely the same advantage could be obtained when replacing hubs driven by means of notches with spindles driven by ribs.

Fourth, judge, for the above reasons, refused to accept Expert witness evidence that the two systems involved a different constructional principle, and therefore a wholesale re-design would be required.

Finally, DataCard submitted that account should be taken of Expert Witnesses evidence in his reports as well as his evidence in cross-examination. Although Judge have taken Witnesses evidence and its reports into account, this does not assist DataCard for the simple reason that in his reports Expert Mr Klinefelter did not consider the case which was put to him in cross-examination.

Obviousness over Brother (US Patent No. 6,257,780):
Judge is of the opinion that the arguments in relation to Brother are similar to those in relation to Fargo Pro-L. So far as amended claim 1 is concerned, Eagle’s case is that an obvious alternative to the different notches on the spools in Brother would be to drive the cylinders by means of ribs inside and to change the geometry of one end in a different way by making one of the apertures of the cylinders smaller than the others. Judge agreed to Eagles argument.

Obviousness over Sharp (Japanese Unexamined Patent Application No. H10-329378):
Sharp is a similar proposal to Brother. Counsel for Eagle accepted that Eagle’s case in relation to Sharp was virtually identical to its case in relation to Brother.

It is seen that the case laws, for obviousness, interpret the evidence and the prior arts from the person who is skilled in the technology. From his point of view Judge questions the Expert witnesses of both the parties. Infact Judge questions the witnesses as to whether the prior art leads a motive to develop to the present patent in question? Whether, skilled team can arrive only to this technology as an alternative to the existing technology in the prior art? and so on. There are certain differences in the degree of obviousness from US courts and English courts point of view. Graham factors, the core factors for finding the obviousness include many factors and are very rigid in nature.

In the next part, we will see the obviousness case of ‘572 patent to assess the degree of obviousness in the UK courts in a detailed manner.

Author – Veera Raghavan Rajendran,
Patent Specialist, IIPRD.
The Author of the Blog can be reached: Raghavan@iiprd.com.

Pine Labs Pvt. Ltd vs Gemalto Terminals India Pvt. Ltd & Others

The present case had been filed by plaintiff (Pine Labs Pvt. Ltd) against defenders (Gemalto Terminals Pvt. Ltd & others) for a decree of declaration, perpetual injunction and rendition of accounts. The suit was listed before High Court of Delhi on 7th October, 2009. Injunction was granted by court restraining the defendants, their assigns, licensees, agents, contractors, employees from in any manner infringing the copyright of the plaintiff.

Defendant filed an application to modify the injunction on 9th October, 2009. Court modified the interim injunction stating that, the defendant can continue providing services to Indian Oil Corporation Ltd. Fleet Card Program.
Brief History of the case:

Plaintiff is a software company, whereas Defendant 1 (Gemalto Terminals) provides computer hardware terminals to retail establishments. Defendant 2 is a bank which also engages in installing Fleet Card System for Hindustan Petroleum Corporation Ltd (HPCL). Defendant no. 3 is a company appointed by defendant no. 1 to modify and adapt the Plaintiffs software.
In 2003, Defendant no.1, Gemalto Terminals approached plaintiff to develop/write certain software and manage the operation of the Fleet Card Program proposed for Indian Oil Corporation Ltd. (IOCL). A work order was issued by defendant no.1 on 17th November, 2003. Plaintiff were asked to provide services for implementation of the system, including providing and maintaining server related hardware etc. along with development of required software. Plaintiff developed the software Version 1.00 and updated it to Version 1.03 with few additional features and completed work by August 2004 along with a written manual providing system specifications for the developed software.

Plaintiff and Defendant no.1 (earlier called as Axalto) entered into a Master Services Agreement (referred to as the MSA for brevity) on 24th June, 2004. According to Clause 7.1 of MSA, plaintiff is asserting its copyright in the software as well as the factum of assignment of the same to defendant no. 1. The clause states that “Axalto shall be entitled to all property, copyright and other intellectual property rights in the Project Materials which property, copyright and other intellectual property rights Pine Labs as beneficial owner assigns to Axalto. Pine Lab shall advise Axalto in writing and ensure that the Project Materials do not infringe the intellectual property rights of any third party.”

In 2009, Defendant no. 1 made a bid for a card program of HPCL, invited by defendant no. 2. Defendant no. 1 e-mailed plaintiff on 26th June, 2009 and informed that it had been awarded the HPCL fleet card program and it would be customizing the existing IOCL system, which the plaintiff had in fact created. On 29th June 2009, plaintiff responded to the mail expressing willingness to work on the said project.

Later, plaintiff discovered that defendant no. 1 had cub-contracted defendant no.3 to create software for HPCL fleet card, and plaintiff realized that defendant no. 1 transferred the source code of IOCL program to defendant no. 3. It is plaintiffs case that Clause 7.1 of the MSA provides no territorial or time constraints/ restrictions, but Section 19 (5) and (6) of the Copyright Act, 1957 would apply which states that in a case of copyright assignment, if no time/territory is mentioned, the assignment would be valid only for a period of 5 years and within the territory of India. As no new work was assigned to plaintiff from the defendant no. 1 regard to IOCL fleet card program, rights provided by plaintiff to the defendant no. 1 expired after 5 years; plaintiff would become exclusive owner of that software, according to Section 19 (5) of the Copyright Act, 1957.

The counsel for the plaintiff argued that the defendant no. 1 provided Version 1.03 of the software to defendant no.3. Plaintiff filed case against defendant no. 1 for infringement of copyright. Further, plaintiff came to know that the defendant no .1 was planning to use the same software in Africa. Plaintiff argues that it was illegal, as the agreement was valid only for 5 years that too only in Indian Territory. Utilization of software outside India will result in breach of Section 19 (6) of the Copyright Act. Plaintiff further agreed that Versions 1.03 to Version 1.08 were assigned to the defendant no.1 and copyrights of Version 1.04 – 1.08 were still valid as per agreement between the parties.

Defendant no. 1 filed case against plaintiff for protection of its intellectual property rights including copyright in various software applications; for restraining the plaintiff from claiming and representing itself as the owner of the said software and from disrupting the business of defendant no. 1 and for damages.

Defendant no.1 submitted that plaintiff agreed to assign defendant no. 1 as equitable owner of the software, for which it is now claiming to be the exclusive owner. Defendant no. 1 outsourced the work to plaintiff with clear understanding that all intellectual property rights would belong to defendant no. 1. Defendant further says that defendant still enjoys the copyright ownership in Version 1.04 – 1.08 of the software.

A submission made by defendant no. 1 is that Version 1.03 of the software is not in use by it as Version 2.00 is being used and the source code of the same was handed over by the plaintiff to defendant no. 1 on 6th, 19th and 20th August, 2009. Defendant no. 1 has then pointed out several alleged admissions on the plaintiffs part in the plaint.
Defendant no. 1 denied plaintiffs allegation of infringement of copyright as false as the software applications to be used by defendant no. 1 are completely different from the ones being used by it currently. These codes are also different from the IOCL Version 1.03 and its subsequent modifications. Defendant No.1 has also referred para 14 of the plaint wherein the plaintiff has admitted that the plaintiff had agreed to assign the copyright in the software development to the defendant No.1. the defendant No.1 has referred clauses 7.2, 7.3 and 7.4 of MSA which read as under:
7.2 – “At the request, and expense of Axalto, Pine Labs shall do all such things and sign all such documents or instruments reasonably necessary to enable Axalto to obtain, defend and enforce its right in the project materials.
7.3 – “Upon request of Axalto, and in any event, upon expiration or termination of this Master Agreement, Pine Lab shall promptly deliver to Axalto all copies of the project material then in Pine Labs custody, control or possession.”
7.4 – “The provisions of this clause shall survive the expiration or termination of this Agreement.”
The senior counsel for the defendant No.1 has argued that in the absence of execution of an actual assignment document, Section 19 of the Copyright Act has no application in the facts of the present case as Section 19 (1) of the Copyright Act lays down the word assignment and assignment means it should be expressly in writing. Therefore, Sections 19(5) & (6) of the Copyright Act are not applicable in the present case.

Plaintiff argued that, in view of the evidence produced by the plaintiff from the website of the defendant no.1 after the passing of interim order dated 7th October, 2009, there is a sufficient material on record to show that the defendant No.1 is still reproducing the work of Version 1.03 in material form wherein the plaintiff has filed screen shots and transaction receipts of HPCL drive track plus program which show almost complete similarity with the IOCL program developed by the plaintiff.
Judgment:
In this case, two issues to be decided:
I) ownership of the copyright and
II) valid assignment of the copyright

I) Ownership of the copyright :
Understanding about ownership becomes important as it is only the owner under Section 18 of the Act who can assign either the current or the future work. The ownership of the copyright is statutorily recognized under Section 17 of the Copyright Act which provides for the rule that the author shall be the owner of copyright, subject to the provisions of the Act.
Section 17 proviso (c) deals with a situation where the work is created in the course of the employment of the employer. In such a case, the work shall belong to the employer who shall be the owner of the work in the absence of any contract to the contrary. This furthers the discussion of the issue relating to contract of employment and contract for employment, which are clearly distinguishable from each other and determine the applicability of the section. In the former case, ownership vests with the employer unless there is agreement/ intention to the contrary and in the latter, ownership vests with the employee unless there is an agreement/ intention to the contrary. The degree of control, supervision, time spent, directions and specifications given by the employer determines the nature of employment.
If we examine the present case from the perspective of a contract of employment, the ownership of the work belongs to the defendant no. 1 who was the employer and there is no need to look into any further agreement or the MSA. It is another thing that the plaintiff in the allegation made against defendant and in the agreement has taken the status of an independent contractor, which means that the plaintiff has created the software for the employer under a contract for service.
Prior to entering into the MSA, the plaintiff wrote an email communication dated 20th February, 2004 wherein the plaintiff has stated that the work has been created for a valuable consideration for and on behalf of the Defendant no. 1 and the plaintiff has been paid in full and the copyright and other rights vest with the Defendant no. 1 and the plaintiff does not claim any right in the same.
Hence, at this stage it is suffice to say that prima facie, doubt can be expressed over the ownership of copyright as claimed by the plaintiff, be it from the standpoint of the contract of employment or contract for employment.

II ) valid assignment of the copyright :
MSA is not as assignment but an “agreement to assign”.
It is admitted by both the parties that the basic system design and the fundamental operative software was contained in version 1.03. All the subsequent versions were primarily adaptations of version 1.03 with a few additional new features, improving the performance of version 1.03. The plaintiff has admitted that the copyright in the new versions vests in the additional features mentioned above. However, these additional new features are not really useable without the source code in version 1.03. From the above, it is clear that even if the rights pertaining to version 1.03 revert back to the plaintiff (which although according to this court is prima facie not possible) for the reasons given in the preceding Para’s of the order, it is not clear how the rights pertaining to the other versions, which are valid and subsisting can revert back. Thus, the contention of the plaintiff is without any substance and is prima facie, irrational and is not sustainable. Therefore, the plaintiff is disentitled from the grant of interim relief on this reason as well.
The rights of the plaintiff revert back to it for the software and thus lead to an enforceable right.

About the Author: Mr. Nagaraj Mannikeri is a Patent Consultant at Institute of Intellectual Property Research & Development (IIPRD).

INDIAN GRANTED PATENTS…ENFORCEABLE?

The Indian Patent Act, 2005, like for most other geographies, does accord to and follow the disclosure guidelines put forth by the TRIPS and has similar Patentability grounds, especially for non-Pharmaceutical subject matters, in which the contention over 3(d) leads to a different interpretation over efficacy grounds. Furthermore, special provisions such as those provided under Section 8 of the Patent Act, enable the Indian Patent Office to retrieve additional and more relevant information about the prosecution that happens with the family foreign Patent Applications of the Indian national phase patent application. Moreover, additional prior art available by means of results cited by ISR, literature/patents cited by the Applicant, earlier Patent/Prosecution History of the Applicant, gives way for searching more relevant and anticipating applications.  Furthermore, with the Indian Patent Office being accorded as an ISR, is it now time that the Indian Granted Patents have certain extent of serious patent prosecution done, not from a formality compliance perspective, but more importantly from novelty/obviousness standards.

For the present discussion, let’s take an exemplary and recently Indian granted Patent 245829 (‘829), having a publication of grant on 11/02/2011, the Application No. for which is 4445/CHENP/2006 and the Applicant being Utstarcom, Inc. In summary, the invention relates to address-based network communications and more specifically to determination of a prefix portion of an address. Abstract of the granted Patent states:

A network element (10) can retain a plurality of prefix identifiers as are used to formulate an address to be used by individual network users. Pursuant to a preferred approach, one or more of these prefix identifiers are pre-correlated to a given domain name while at least one other prefix identifier is pre-correlated to the absence of a domain name. So configured, a specific prefix identifier can be allocated for use by a given network user as a function, at least in part, of the domain name (or lack of a domain name) as may be presented by that network user when seeking to establish a network connection.

The first independent claim as granted as per the Indian Patent Office is:

1. A method comprising:

receiving a communication from a network user seeking to establish a network connection;

when the communication presents a domain name as corresponds to the network user:

identifying a first prefix identifier as having been pre-correlated to the domain name;

providing to the network user the first prefix identifier;

when the communication does not present a domain name as corresponds to the network user

providing to the network user a second prefix identifier, which second prefix identifier is reserved for use with network users that do not present a domain name.

As it is evident from the first claim itself, the invention relates to two scenarios of mapping between “Domain name” and “Prefix Identifier” or “IP Address” or “Network Address”. In case the domain name is given by a network user, an IP Address corresponding to the same is returned back and in case the domain name is not provided by the network user, a new/second prefix identifier is generated and provided to the user. This is typically a well known function of a DNS system, wherein the claimed novelty seems to relate to generating a second prefix identifier in case domain name is not presented by a user.

As at the time of writing this article the Application Status search of the Indian Patent was not working, I am assuming that as the patent was granted in Feb 2011, the FER was issued somewhere around Jan-Feb 2010. From a strategic perspective, it would not have made sense to see the prosecution status of the corresponding applications in geographies such as EP or US, more so given the fact that Section 8 of the Indian Patent Act asks the Applicant’s to submit detailed updates on filing/publication/prosecution/abandonment/grant activities related to the corresponding foreign applications. It is to be noted that for the Corresponding application EP 1759300, the application was withdrawn by the Applicant on 28.08.2009, before the Indian Patent Office issued the FER. The same was the case in the corresponding US Application, wherein the Applicant itself failed to respond to the Final Office Action.

A close look at the cited portions of the Prior arts cited in the ISR, specially US 6324585, could also have given help in identifying anticipating documents, specially with the claimed subject matter being broad and relating to the overall functionality of a standard DNS system. Furthermore, prior arts discussed in US prosecution including ‘585 and US 2004/0258005 and US 2002/0172206 give clear pointers to claimed subject matter.

Furthermore, even if the above due-diligence was not considered worth, a very brief and quick search with the most basic keyword string (Dynamic AND “domain name” AND “network address”) would have revealed so many below mentioned and relevant patents, based on which the patentability of the subject matter involved could have been evaluated. Based on our quick due-diligence, we found following relevant patents that covers ‘829 subject mater partly or wholly.

IIPRD – Search Results

Search Result 1: US 6338082 – (Cited Portion for the first element of the independent claim which claims mapping between a domain name and a prefix identifier (IP Address)): A client of the DNS is called a resolver 114 . Resolvers 114 are typically located in the application layer of the networking software of each TCP/IP capable machine. Users typically do not interact directly with the resolver 114 . Resolvers 114 query the DNS by directing queries at name servers, which contain parts of the distributed database that is accessed by using the DNS protocols to translate domain names into IP addresses needed for transmission of information across the network. DNS is commonly employed by other application-layer protocols—including HTTP, SMTP and FTP—to translate user-supplied domain names to IP addresses. When a browser program 112 (e.g., an HTTP client), running on a user’s machine, requests a URL having a resolvable domain name, in order for the user’s machine to be able to send an HTTP request message to a server 120 , the user’s machine must obtain the IP address of the domain name. The user machine then runs the resolver 114 (DNS client) on the client-side of the DNS application. The browser 112 extracts the domain name from the URL and passes the domain name to the resolver 114 on the client-side of the DNS application. As part of a DNS query message, the DNS client 114 sends the domain name to a DNS server system 120 ′ connected to the Internet. The DNS client 114 eventually receives a reply, which includes the IP address for the domain name. The browser then opens a TCP connection 116 to the HTTP server process 120 located at the IP address.

Search Result 2: US 6425003 – (Relevant Cited Portion for the second element of the first independent claim which claims mapping between “no domain name” and a “second (new) prefix identifier”):  A method and apparatus for resolving where to forward DNS (domain name service) requests for a user simultaneously logged into more than one service existing on a data communications network utilizes an active service list (ASL) to keep track of the services that the user is currently logged into. The active service list includes a list of services sorted in a particular order based on information about the service and sometimes the order in which the user logged into the services. Each service has a profile that defines, among other things, the IP Address space for the service and a Domain attribute. To determine the appropriate service and, therefore, the appropriate DNS server for a DNS request, the QName from the DNS request is compared to the configured Domain attribute(s) for each service in the order of the ASL. If a match is found, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the matched service. If no domain match is found and the user is logged into an Internet Service, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the first Internet Service found in the user’s ASL. If no domain match is found and the user is not logged into an active Internet Service, then the DNS request is not re-directed, but rather forwarded unmodified.

 Search Result 3: US 6,944,167 – In one embodiment of the present invention, a domain name server receives a request for the public address of a private network host, using a public Internet Protocol (IP) address. The domain name server then determines if a valid public address for the private network host exists in an address data structure maintained by the domain name server. If a valid public address is found, the domain name server returns it to the requesting host. If a valid public address is not found, then the domain name server requests a public address from a network address translator identified with the private network. The network address translator then determines whether a public network address is currently assigned to the private network host. If not, and one is available from a pool of public network addresses available to the network address translator for the private network, then the network address translator allocates a public network address for the private network host. The network address translator then sends the domain name server the public network address or an indication that such address or the host was unavailable. An appropriate public network address might not be assigned for many reasons, including all public numbers are currently used or reserved; the private network host is not running; or security considerations preclude public access to the private network host.

It would be appreciated that the above prior arts have only been given for exemplary purposes after a very brief search merely to draw relevancy to the concern and no comprehensive evaluation of patentability has not been done based on these.

It further needs to be considered of how the first independent claim passes the bar for Section 3(k). The claimed method merely aims at providing a new IP address to a user request which does not have a domain name. The method clearly does not involve any change in structure of the mechanism of data/packet communication, or packet format, or increases the efficiency of transmission, or produces a tangible output in any manner whatever to qualify the concerned test and merely gives an IP address from a pool of prefix identifiers, a step that DNS is already is configured to do.

There are many more allied issues that might crop up for discussion when many more of such patents are evaluated for actual merit but the two I would last put across are: What worth would be such patents, both from enforceability and commercial perspective, if they would be invalidated the day they are litigated? Secondly, what credibility would such Indian Granted Patents have if the Patentees themselves are not even confident that they would be able to enforce their rights when the need arises?

References:

1. Indian Patent office database

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.