Monthly Archives: August 2011

Nokia & IPCOM

The claimant, Nokia Corporation, seeks revocation of European Patent (UK) No. 1 841 268 (“the patent” or “268”) which belongs to the defendant IPCom. This action is yet another stage in the litigation which is pending in a number of jurisdictions in relation to the mobile telephony patent portfolio which IPCom purchased from Robert Bosch GmbH. Earlier this year, the company lost an appeal over another patent claim. The company was seeking to claim EUR12 billion (US$16 billion) from Nokia based on the calculation of 5 percent of Nokia’s mobile phone sales in countries covered by the patents, or EUR 600 million (US$840 million) a year over 20 years.

Nokia had been seeking the revocation of European Patent (UK) No. 1 841 268 (‘268 Patent) belonging to IPCom. In addition, by counterclaim, IPCom alleges infringement of 268 in respect of a number of mobile phones sold by Nokia. Nokia denies infringement. The ‘268 patent is itself a patent which was divided out of European Patent No. 1 186 189 (“the parent patent”). Like the parent patent, ‘268 is concerned with managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station.

Regarding the validity of the patent, Judge held that “It is of course always necessary, at the end, to take a step back and ask whether the claim embodies an inventive step, both in the case of the attacks based on specific publications and in the case of the common general knowledge. Nokia submitted that the invention achieved nothing in terms of functionality as compared with, say, IS-95. That is correct as far as it goes, but it does not follow that IPCom’s approach to achieving that functionality is obvious. It is entirely possible that invention lies in achieving the same functionality in a different way. In the end I was not satisfied that any of Nokia’s four starting points rendered IPCom’s solution obvious. It follows that I reject all the attacks on the 268 patent based on obviousness”

Infringement

There is a Product and Process Description for each of 14 types of Nokia device. The High Court held that the ‘268 Patent was infringed by two Nokia devices: “the A1″and “the A2″,but Nokia were granted a declaration of non-infringement in respect of Nokia’s devices, labeled B1,B2,C1,C2,D1,D2,E1,E2,F1,F2,G1 and G2.

High court clearly analysed the infringement by mapping the features of devices A1 and A2 of Nokia with the Independent claim 1 of ‘268. Independent claim1 of ‘268 patent is broken as follows:

[A] Mobile station for operation in a UMTS mobile radio network

[B] in which multiple user classes are distinguished

characterised in that the mobile station is arranged

[C] to read a user class from a SIM card

[D] to receive access threshold value bits and access class information over a broadcast control channel

[E] to determine an access threshold value from the access threshold value bits

[F] to use the access class information relevant for the user class to determine whether

[G] the mobile station is permitted to access a random access channel, for example RACH, independent of the received access threshold value bits

[H] or whether the access permission for the random access channel, for example RACH, is determined on the basis of an evaluation of the access threshold value.

Infringement

  • The Nokia device described as A1 operates as follows. The mobile is designed to receive two parameters of relevance. These are the dynamic persistence level, N, and the AC to ASC mapping information.
  • Any device operating in accordance with the A1 method must be a member of at least one Access Class (AC). There are 10 normal ACs, numbered from 0-9. Every device must be a member of one of those normal ACs and the number of the particular AC to which the device belongs is stored on its SIM card. There are another 5 special Access Classes (11-15) designated for use by special groups of users such as emergency services and network staff. All access classes may be barred at any time by the network.
  • The next thing which it is necessary to understand is how the A1 selects an Access Service Class (“ASC”) which it will use for its access attempt. These ASCs are different from the AC stored on the SIM.. The transmitted data includes an element entitled “AC-to-ASC mapping”. This allocates each AC to an ASC. There are 8 ASCs numbered from 0-7. The mapping is carried out by the device reading the information element (IE) in the System Information Block appropriate to its AC. The way this is done is set out in Table 2 taken from the A1 Product and Process Description. ACs 0-9 look at the first IE in the block, 10 the second, 11 the third and so on.

  • Depending on which ASC has been allocated by the mapping process, the device works out a “persistence value” known as P(i), (not the same as the dynamic persistence level, N, sent by the network). The way this is done is set out in Table 1 taken from the A1 Product and Process Description.

  •  It can be seen that there is a difference between ASC 0 and the other ASCs. If a device is in ASC 0 the device automatically sets its persistence value, P(i), to 1. This conclusion is arrived at directly from the AC to ASC mapping and not from the other parameter of importance, the dynamic persistence level, N.
  • On the other hand, if a device is in one of the other ASCs (1-7), it has to carry out a calculation using the dynamic persistence level, N, sent by the network.
  • So P(N) is a function of (i.e. mathematically dependent on) the transmitted dynamic persistence level.
  • Devices which are mapped to ASC 0 by the network will automatically pass the persistence test because the random number can never exceed 1. Those devices which are mapped to ASC 1 or higher may or may not pass the persistence test. Whether they pass the persistence test depends on the value N sent by the network.

The judge held that Nokia device A1 in summary held that:

i) the bits used to transmit the dynamic persistence level, N, constitute the access threshold value bits;

ii) the AC to ASC mapping information constitute access class information;

iii) P(N) is an access threshold value which is determined from the access threshold value bits;

iv) the AC to ASC mapping information is used to determine whether the device is in:

a) ASC 0, in which case it is permitted to access the RACH independent of the received access threshold value bits because it has a P(i) value of 1 which is not a function of the persistence level N which is being broadcast by the network; or

b) an ASC other than 0 in which case it must determine access permission on the basis of an evaluation of P(N) which comprises a comparison of P(N) with a randomly generated number.

In the A1device the random number comparison gives a win/lose determination on permission, whereas in the A2 it determines the extent to which permission will be delayed. However, the judge held that, in both cases access permission is determined on the basis of an evaluation of the access threshold value and thus infringing ‘268 patent.

About the Author: Mr. Veera Raghavan, Patent Specialist at IIPRD and can be reached at: Raghavan@iiprd.com

Advertisements

Are food recipes patentable in India?

A few days back, one of our clients came to us asking whether his new food recipe, which he claimed to be new, can be patented in India or not. The answer of course is yes, though depending on a number of factors which we discuss hereinafter.

Patent Amendment 2005 of the Indian Patent Act 1970, as we all know, has introduced product patent protection for food, pharma and chemical inventions.  If we look at the Indian Patent Database, we will find a number of granted patents and hundreds of patent applications on one or other types of food compositions.  Talking specifically about food recipes, well, patenting food recipes which have a strong chance of succeeding can be a little tricky. No matter how tasty the food is or how much its creator is fascinated about it, the recipe, first of all must meet the basic conditions of patentability, which are that the recipe must be useful, novel and non-obvious.

As long as the recipe is used for making at least a nutritional composition, no matter whether it is for humans or pets, it passes the utility criteria. And the more novel and non-obvious the composition is, of course, the stronger would be the chances of getting a patent.

The recipe should not be a “Mere admixture of substances resulting in aggregation of properties of the components” according to Section 3(e) of the Indian Patent Law. For instance, merely taking the food items off the shelf and mixing them without doing anything special to the process fails the ‘inventive step’ (non-obviousness) requirement.

The common mistake being made while preparing a food recipe patent application is missing the non-obviousness requirement. One test of non-obviousness would relate to whether the recipe and composition thereof is obvious to someone skilled in the art of cooking? The answer must be no. If one is using certain ingredients that have never been combined before, the first bar of non-obviousness requirement is cleared. For instance, for making a tomato sauce, it is possible to obtain composition claims which would contain the ingredients and the proportional ranges, only if it has some inventive feature/ unexpected effect such as cholesterol free without loss of flavor or texture or mixing the ingredients in zero gravity for unexpected results among other such parameters. Almost all food patents claim both composition and processes for making the same.

Process claims on a recipe, generally have more success rates from point of view of obtaining patents than the composition claims in India. If the process of making a food product involves heating, mixing, frying, baking, fermentation, grinding, stirring, whipping, freezing, melting, molting, grilling, aging and so on, then one or more of these steps are the processes, which if found to be novel and involving an inventive step, are essential to the invention and can be patented. One of the granted Indian Patents, for example, claims a process for preparing tender coconut wine through fermentation of tender coconut water from tender coconuts ripened 7 months or below and further claims the produced wine to be highly healthy, hygienic and nutritional beverage. Another Indian patent publication at the Indian Patent Office claims a process for preparing a soy curd comprising the steps of selecting soy bean, soaking the soy bean, grinding and preparation of soy milk, making of soy curd for the fermentation, and final processing of soy curd.

Yet another Indian Patent Publication claims a food product comprising the whole roasted and ground roasted flax seeds, an antioxidant, a blend of spices and food additives, wherein the whole roasted flax seeds and ground roasted flax seeds are present in a ratio of from about 60:40 to about 90:10. The application further claims a process for the preparation of dough based food product comprising the steps of: (i) creaming stage, (ii)  dough making stage, wherein to the mixture of step (i), whole roasted flax seeds and other food additives are added and mixed for 30 minutes.

Preservation step in a recipe, if any, could be a defining step, and can increase the chances of obtaining a successful and enforceable patent. For example, an Indian patent claims a process of preserving food products for inactivating microorganisms in food products by introducing an edible phenolic compound in a food product and subjecting the resulting food product containing phenolic compound to high pressure conditions. Furthermore, if your food recipe contains some ingredients which in addition to giving nutritional benefits, also gives some therapeutic relief in some diseases, claiming the same is important for stronger protection.

I also recommend looking at some of the Patents/patents pending published at the Indian Patent Office to give a good idea to those having sense of patentable recipes on how the recipes are drafted and patented. Frito Lays (of famous Lays Potato chips) has a number of published patent applications at the Indian Patent Office on the processes of preparation for their recipes for different kinds of snacks.

Drafting a patent application is very crucial for making a strong recipe patent. Various parameters for example, proportions, cooking or mixing times, ingredients, should be kept as broad as possible which will also help reduce the potential of your competition writing around your claims with small variations. For example, if you want to claim a recipe for making flax seed biscuit, do not restrict your claims to biscuit, rather claim it as a food product. And if you are adding sugar in your process for the sweetness, remember honey, corn syrup or molasses can do the same and therefore, while drafting a patent, just claim the ingredient as sweetener. The proportions, the temperatures, the duration, among other allied parameters should be kept in a broad range. However, while claiming the ranges, be sure to be broad enough to protect your invention from your competitors but not as broad as to infringe upon another’s patented recipe. Conducting a good patentability search is as important in patenting food recipes as in chemical or pharma inventions.

Conclusion and Key Takeaways:

Food recipes are definitely patentable in India, though keeping in mind the below:

  • The recipe should not be within an ambit of Section 3 (e), wherein it is just a mere admixture of known ingredients.
  • The recipe must involve a special feature, an inventive step, for example, achievement of unexpected results such as fat free, sugarless yet retaining texture and flavor, addition of certain off shelf ingredients such as antioxidants, having nutritional/therapeutic value addition over similar known food products and very importantly new process steps, namely, heating for a particular time in a particular temperature range to get an unexpected result which would not have been obvious for any skilled artisan to achieve in view of prior art, other defining process steps can be mixing, freezing, fermentation, preservation, aging, grinding etc.
  • A process claim for a new recipe would have a better success rate of obtaining a patent than composition, (again depending on inventiveness of the composition itself) but at the same time enforceability of the protected IP should be considered and balanced out.
  • A skillfully drafted patent application claiming the elements intelligently.
  • Over and above, if your recipe does not meet the patentability criteria, there are always options such as copyrights available to get a certain level of protection, which although cannot be compared with the degree of protection accorded through a patent. Expression of your original recipe instructions in the form of say a book or any other form of compilation can always be a subject matter of copyright!

With this note, I wish you all a ‘yummy’ week ahead 🙂

Happy patenting !

About the Author: Ms. Meenakshi Khurana, Patent Specialist at IIPRD and can be reached at: meenakshi@iiprd.com