Monthly Archives: July 2012

One Day Symposium On Advanced Patent Issues Related To Software, Electronics, Telecommunication Business Methods & Network Computing With Focus on US, EP, and Indian Scenario – Being Held in Mumbai and Delhi

IIPRD (Institute of Intellectual Property Research & Development) is happy to announce its International Symposium on Advanced Software, Electronics, and Business Method Patent issues. Presentation of all important Patent Issues relating to Prosecution and Enforcement Strategies, Identification of potential inventions, Types of claims allowed in each geography, and their relevance to the broadness of claims, Preparation of set of claims, including an experience sharing session on Drafting of Patent Applications, and Patent Prosecution can be expected from the speakers.

International symposium will be held at Mumbai on 4th Oct’ 2012 at Hilton Hotel and at Delhi on 5th Oct’ 2011 at Hotel Claridges. IIPRD is organizing the International Symposium in association with Birch Stewart Kolasch & Birch LLP, USA (BSKB), Carpmaels & Ransford, UK, and Khurana & Khurana, Advocates and IP Attorneys, India.

Key speakers include:

  1. Mr. Michael Mutter from BSKB, USA
  2. Mr. John Brunner from Carpmaels & Ransford, UK,
  3. Mr. Tarun Khurana from Khurana & Khurana.
  4. Speaker from Leading Indian R&D Organization (To be confirmed soon)

The speakers are a unique gathering of Patent Attorneys, who have extensive years of experience in their professional fields, and will put across to the delegates, a real insight of Patent Laws and Practices as prevalent and practiced in European Patent Office, United States, and India. The Workshop will provide an opportunity to receive first-hand information including recent Judgment on various issues from the experts in the fields. The speakers are selected such that the attendees can get to know the real insight and nitty-gritty followed at European, United States, and Indian Patent Offices. The speakers would share real-life cases and experiences that can help the attendees in following the best practices for building their respective patent portfolios. The speakers would also talk at length on the recent case laws and how courts of different geographies interpret the same application in different ways so that best practices for each geography can be put across.

About the Organizers:

IIPRD is a premier IP Consulting and Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics and Litigation Support Services to Indian and International Corporates and Global Law Houses. IIPRD has been established precisely to assist the business houses in strategizing their growth by leveraging their IPR’s through effective Creation, Promotion, Protection, and Commercialization of IP. IIPRD has been a part of large number of Out-Licensing deals for technology companies in Pharmaceutical and Hi-Technology domains such as NCE’s, Formulations, and Process Patents in Pharma domain and Telecommunication/Network and Green Technologies. IIPRD has a legacy of twelve years of existence and is among the first Indian IP Firms to have core focus on Commercialization, Technology Transfer, and Licensing for numerous Indian and Global Corporate.

BSKB was founded in 1976 with the merger of Birch & Birch and Stewart & Kolasch, BSKB now employs over 200 people in offices located in Virginia, San Diego, California and Falls Church. BSKB has consistently ranked in the top five of all law firms worldwide in the number of U.S. patents issued by the USPTO and is also consistently ranked in the top 50 law firms in trademarks submitted. Birch, Stewart, Kolasch & Birch, LLP (“BSKB”) is a highly respected international intellectual property law firm committed to obtaining and enforcing intellectual property rights for its clients. BSKB has been providing a full range of intellectual property services for over 30 years with specialization in chemistry, medical devices, biotechnology, pharmaceuticals, diagnostics, healthcare, computer science and mechanical and electrical technologies for its internal clients.

Carpmaels & Ransford has been at the vanguard of intellectual property for over 200 years and is the oldest firm of patent attorneys in the United Kingdom. The product of expertise and experience, underpinned by a lot of hard work makes Carpmaels & Ransford a leader in the field for acquiring patent rights in Europe, and around the world. Clients include many European, US and Asian household names. The firm is also highly-regarded for its tenacity and expertise in European Patent Office opposition and appeal proceedings, with its skills being sought in patent actions before the UK courts and in pan-European enforcement. Broad-based technical expertise is organised into dedicated teams with key technical and professional skills specific to emerging and established industries. Developments in the law and technology are closely followed.This enables Carpmaels & Ransford to maintain the highest levels of service that global clients have come to expect.

Khurana & Khurana is more than a full service IP Law firm and is among the youngest Indian IP Law firms to have been ranked and recommended by Legal 500 and Managing IP. K&K was formed in the year 2006 with the very focus of providing End-to-End IP Legal Services along with its Sister Concern IIPRD, which supplement each other in order to provide end-to-end services to the corporate world in the IP Field. K&K and IIPRD, through their team of over 40 IP Attorneys and Practitioners, together form a niche in the IP domain by taking any corporate from the stage of IP Creation and Protection through its team of Attorneys to the stage of IP Valuation, Licensing, and Commercialization. Team of IP Attorneys/Practitioners having high level of technical and legal competence gives the right competitive edge and positioning to K&K as a law firm focused on creating immense IP value for its clients. K&K today represents global Corporates across geographies and technology domains and helps then successfully enforce, litigate, and protect their IP Portfolio in India.

Further details can be seen at by clicking here.

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Three Day International Symposium On Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios

IIPRD (Institute of Intellectual Property Research & Development) is happy to announce its International Symposium on Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios. Presentation of all important patent issues such as identification of potential inventions, Biosimilar Legislation, preparation of claim sets, prosecution and examination practices, drafting of responses of Office Actions, ANDA Litigation, and recent case law updates can be expected at the symposium.

The three day international symposium will be held at Hotel Hilton, Mumbai from 16th – 18th Sept’ 2012. IIPRD is organizing the international symposium with the help of international law firms Sughrue Mion PLLC, USA, Hoffman Eitle, Europe and Khurana & Khurana, Advocates and IP Attorneys, India.

Key speakers include

  1. Dr. Stephan Disser from Hoffman Eitle, Europe
  2. Dr. Leonard Werner-Jones from Hoffman Eitle, Europe
  3. Mr. Chid Iyer from Sughrue Mion, USA
  4. Ms. Renita S. Rathinam from Sughrue Mion, USA
  5. Mr. Michael R Dzwonczyk from Sughrue Mion, USA
  6. Dr. William Simmons from Sughrue Mion, USA
  7. Ms. Azy Kokabi from Sughrue Mion, USA
  8. Mr. Tarun Khurana from Khurana and Khurana, Advocates and IP attorneys, India

The speakers are a unique gathering of Patent Attorneys, who have extensive years of experience in their professional fields, and will put across to the delegates the real insight of Patent Laws and Practices as prevalent and practiced in United States. The Workshop will provide an opportunity to receive first-hand information including recent Judgment on various issues from the experts in the fields. The speakers are selected such that the attendees can get to know the real insight and nitty-gritty followed at United States. The speakers would share real-life cases and experiences that can help the attendees in following the best practices for building their respective patent portfolios. The speakers would also talk at length on the recent case laws and how courts of different geographies interpret the same application in different ways so that best practices for each geography can be put across.

About the Organizers:

IIPRD is a premier IP Consulting and Licensing Firm with a diversified business practice providing services in the domain of Commercialization, Valuation, Licensing, Transfer of Technology and Due-Diligence of Intellectual Property Assets along with providing complete IP and Patent Analytics and Litigation Support Services to Indian and International Corporates and Global Law Houses. IIPRD has been established precisely to assist the business houses in strategizing their growth by leveraging their IPR’s through effective Creation, Promotion, Protection, and Commercialization of IP. IIPRD has been a part of large number of Out-Licensing deals for technology companies in Pharmaceutical and Hi-Technology domains such as NCE’s, Formulations, and Process Patents in Pharma domain and Telecommunication/Network and Green Technologies. IIPRD has a legacy of twelve years of existence and is among the first Indian IP Firms to have core focus on Commercialization, Technology Transfer, and Licensing for numerous Indian and Global Corporate.

Hoffmann Eitle, founded in 1892, is not only one of the oldest but also one of the largest intellectual property law firms in Europe with a team of about 100 professionals and more than 300 total staff. The professionals include patent attorneys, attorneys-at-law and technical specialists. Hoffmann Eitle is consistently ranked as a top tier firm in intellectual property in relevant lawyers’ handbooks such as Chambers (Europe) and The Legal 500 (Europe and Germany). In 2010, Hoffmann Eitle received the JUVE award as the German Firm of the Year in intellectual property and patent law. Hoffmann Eitle handles all technological fields and legal aspects of intellectual property law. The firm has earned its excellent reputation by maintaining very high standards over decades, as is best illustrated by its success in international and pan-European prosecution work and in the litigation of many intellectual property rights for numerous companies ranging from small and medium-sized companies to major international corporations. Based in Munich and London, Hoffmann Eitle is able to provide competent advice on the two most important (and intrinsically different) legal systems in Europe. With an office also in Milan and having, in addition to German and British patent attorneys, Italian, Dutch, Belgian and Spanish patent attorneys in its team of professionals, Hoffmann Eitle is able to cover several important national European jurisdictions as well.

Sughrue Mion PLLC is one of the world’s leading intellectual property law firms managing traditional and non-traditional intellectual property rights, for about five decades, with a wide range of clients around the world. Sughrue’s more than 100 lawyers protect ideas- all ideas- and for the last 50 years have been helping their clients to develop, obtain, protect and leverage their intellectual property rights in technology areas ranging from a submicroscopic sequence of DNAto a vast constellation of satellites circling the globe. Sughrue’s Pharmaceuticals, Biotechnology, Chemical attorneys are trained in technical disciplines that include molecular and cellular biology, biophysics, pharmaceuticals, chemistry, immunology, virology, genetics and agriculture biotechnology. Their experts are particularly well versed in drafting claims to ensure the broadest possible coverage and have a long established expertise in handling patent interference proceedings that may be critical to determining basic patent rights in new areas of biotechnological and pharmaceutical industries. Their litigators who specialize in chemistry have tried cases relating to pharmaceuticals, biotechnology, industrial chemical processes, specialty chemicals, and nanotechnology. Sughrue Mion handles a wide range of IP litigation matters for clients around the world, and when it comes to serving their clients, they go beyond traditional boundaries, advocating innovative theories and redefining the frontiers of law as they apply to creativity and invention.

Khurana & Khurana is more than a full service IP Law firm and is among the youngest Indian IP Law firms to have been ranked and recommended by Legal 500 and Managing IP. K&K was formed in the year 2006 with the very focus of providing End-to-End IP Legal Services along with its Sister Concern IIPRD, which supplement each other in order to provide end-to-end services to the corporate world in the IP Field. K&K and IIPRD, through their team of over 40 IP Attorneys and Practitioners, together form a niche in the IP domain by taking any corporate from the stage of IP Creation and Protection through its team of Attorneys to the stage of IP Valuation, Licensing, and Commercialization. Team of IP Attorneys/Practitioners having high level of technical and legal competence gives the right competitive edge and positioning to K&K as a law firm focused on creating immense IP value for its clients. K&K today represents global Corporates across geographies and technology domains and helps then successfully enforce, litigate, and protect their IP Portfolio in India.

Further details can be seen at by clicking here.

Spice Mobiles Ltd. and M/s. Samsung India Electronics Pvt. Ltd. Vs Shri Somasundaram Ramkumar Revocation Proceeding for IN 214388

In a major decision, the Intellectual Property Appellate Board (IPAB) on 1st June 2012 has revoked a patent IN214388 under section 57, 59 and 64(1)(e)(f) of Indian Patent Act, 1970. In this article, we would discuss certain aspects related to outcome of decision and some arguments put forth by the respondent during the trail.

The country’s top patent tribunal, IPAB, has ruled in favor of revoking a patent issued to SHRI. SOMASUNDARAM RAMKUMAR which relates to a Mobile Telephone with a plurality of Simcards allocated to different communication networks marking a victory for the Spice Mobiles Ltd and M/s. Samsung India Electronics Pvt. Ltd. in a long intellectual property battle. The copy of the decision made by IPAB can be accessed here.

A brief summary of the decision:

Patent application No.161/MAS/2002 bearing patent No.214388 was filed on 4.03.2002 at the Chennai (then Madras) Patent Office. During the Prosecution of patent application, the claims were modified and have been increased from initial 4 to finally 20. Patent was granted on 11.02.2008.

Both the applicants, Spice Mobiles Ltd and M/s. Samsung India Electronics Pvt. Ltd. filed for revocation of the said patent in 2009.

The Chairman gave her reasoning and conclusion separately and found that all grounds are satisfied in revocation of the patent. Her brief reasoning are as below:

Addition of New Subject Matter 

Both the applicants argued that the during the patent prosecution period, several amendments were done to the application. Following amendments took place in the allowed claim set resulting in an increase in the number of claims from 4 to finally 20 at the time of grant.

The original claim stated “A mobile phone having provision for incorporation of two or more than one SIM cards wherein two (or) more than one SIM card to receive and/or send two signals or more than one signal at a time

and the finally allowed claim stated

“A mobile phone is to be incorporated with a provision for a plurality of current simcards and/ or modified simcards, a plurality of current t simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/ earphone jacks for accepting a plurality of headphone/ earphone plugs and / or a plurality of Bluetooth devices in order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality of incoming and/or outgoing calls can be communicated simultaneously with the said respective simcards” during the time of grant.”

Furthermore, the specification pages also increased from initial 10 to 24 at the time of grant. Moreover, even the title changed during the time of prosecution of patent.

Applicants for the present revocation appeal argued that, in accordance to Sections 57 & 59 of the Indian Patents Act, 1970, a patent specification cannot be amended except through an explanation, correction or disclaimer. Furthermore, the applicants argued that the claims were amended by wholly incorporating, new features, and new matters wholly outside the scope of the original disclosure and claims. It was also contended that the respondent has completely changed the scope of patent specification by adding an additional subject matter in to the specification. The applicants further argued before the IPAB that the amendments were secured through fraud and also that the amendments were invalid since they were much broader than the original claims as filed by Respondent.

IPAB accepted the arguments that addition of new subject matter was not supported in the specification before amendment. IPAB further concluded that the amendments were too broad and that the amended claims 1-20 do not fall wholly within the scope of the invention. As a result, IPAB set aside the amendments to Ramkumar’s patent.

 Lack of Novelty under Section 64(1)(e)

Applicants also challenged the validity of patent on the ground of lack of novelty under section 64(1)(e). Both the applicants gave a list of prior art which they believe completely anticipated the invention. Furthermore, the applicants cited US references 6,178,335 (‘335 hereinafter) along with US 5,987,325 (‘325 hereinafter) which was believed to anticipate IN ‘388.

‘335 patent in the specification states that a personal communication system having a plurality of removable Insertible Subscriber Identity Module (SIM) accommodated in plurality of slots in the handset. The provision of plural SIM cards in the handsets enables the user to subscribe two or more different service providers and is thereby able to remove at least one of the modules for use in another handset.

Claim 2 of ‘335 patent states that “ A method of operating a personal communication handset that has: a plurality of subscriber identity modules disposed in the handset; a transceiver for receiving and transmitting signals from and to a base station cell; an electronic switch having a plurality of input ports, each one of the ports being electrically connected to a corresponding one of the plurality of subscriber identity modules, … and; wherein the one of the modules selected by the control signal provides the base station with the subscriber identification information stored therein; and, ….”

Fig 1 also believed to have anticipated ’388 patent

‘325 on the other hand also discloses about the Dual SIM and simultaneous communication in a wireless telephone.

‘325 patent, in the claim 1. states “A method of control access of a telephone in telephone systems comprising the steps of: accepting in said telephone a first subscriber identification module (SIM) card, said first SIM card containing a first universal identification number; accepting in said telephone a second SIM card, said second SIM card containing a second universal identification number; attempting to register said telephone in a first telephone system using said first universal identification number; attempting to register said telephone in said first telephone system using said second universal identification number concurrent with said first number being registered; determining from said first SIM card if it contains first data for more than one providing telephone system and selecting said first providing telephone system for registration of said first universal identification number; determining whether said registration attempt with said first universal identification number in said first providing telephone system is unsuccessful; and attempting to register said first universal number with an alternate providing telephone system if said attempt is unsuccessful.”

Lack of inventive step Section 64(1)(f)

Third ground of challenge by the Applicants was the “lack of inventive step” in ’388 Patent. The applicants submitted that the invention doesn’t involve an inventive step and rather a combination of known components. Further, the applicants primarily cited JP 2001/238284 (‘284 hereinafter) and WO99/41921 (‘921 hereinafter) for arguments for inventiveness of the claimed subject matter, details of which won’t be touched upon for brevity of this piece.

Violation of Section 8

One last argument by the Applicants was for the breach of Section 8 of Patent act, 1970. The applicants argued that the respondent didn’t provide details of corresponding patent applications as required under Section 8 (1) undertaking on Form-3. Further, the respondent suppressed the information relating to the withdrawal of application filed in Japan. The applicant further argued that the ISR and IPER information were not submitted in patent office which is a violation of Section 8(2). Implications of non-compliance and IPAB’s perspective of such non-compliance has already been discussed in detail in the Tata Chemicals discussed separately, and hence discussion of this article would not touch upon that aspect.

Furthermore, the ground of violation of section 8 was not taken up by the IPAB as the patent was already revoked on the ground of anticipation and lack of inventiveness.

The IPAB finally revoked the patent on the above said grounds and also advised Patent Office to apply its discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in the present case.

Finally, this decision put an unclear mark on what extent an explanation or clarification can be made for a specification during prosecution period.

We would now discuss the response of respondent during the trial in accordance with section 57.

  1. The respondent claimed that the added subject matter and amendments were made only due to explanation of the specification asked by the patent office during the prosecution of patent.
  2. The respondent further cited Section 57(6) of Patent Act which explains right of an applicant for a patent to amend his specification to comply with the directions of the Controller issued before the acceptance of the complete specification or in the course of proceedings in opposition to the grant of a patent.
  3. Further, the respondent cited that the explanation and amendments were done only to satisfy the patent office, but not voluntarily.
  4. The respondent explained in front of board that during time of filing the respondent was new in the field of patent, thus the specification was not in order.

IPAB stated that Section 57(6) of patent act never permits an applicant to file an application which is defective in its description of the invention so that it can be subsequently rectify the defects by providing additional further descriptive material. Also, the apex board stated that the explanation and clarification cannot be stretched beyond the limitations under section 59 of patent act.

Further IPAB also directed the patent office to apply discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in this case.

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

Tata Chemicals vs. Hindustan Unilever Limited Revocation Proceeding for IN 195937: Would compliance of Section 8 become a nightmare for Patent Applicants?

This article relates to a recent judgement of IPAB on 12’th July 2012 on revocation of an Indian Patent IN 195937, wherein certain interesting aspects relating to developing standards for revocation under Section 8 of the Indian Patent Act, 1970 have been discussed and put forth, quite strongly!!

Case Summary:

In summary, the case relates to IN 195937, which corresponds to Application No. 709/MUM/2002, of Hindustan Unilever Limited (HUL) issued on 26’th Aug 2005. First independent claim of the present subject matter relates to a filter cartridge and claims:

1. A filter cartridge for the treatment of water which comprises an inlet for the water to be treated, the inlet communicating with a downwardly extending hollow passage adapted for gravity flow of water there through, the hollow passage being connected at its lower end to at least one filter media, and an outlet for exiting treated water from the filter media;

Fig. 1 of ‘937 Patent is illustrated below:

 

In operation, impure water first passes through a hollow central tubular passage (TP) and thereafter, near its bottom end, traverses through a “U” path into a first annular concentric chamber (FCC) constituting a resin bed. After passing through the resin bed the water is allowed to travel upward into a second annular activated carbon chamber (SCC), which is again a concentric chamber operatively connected to the annular resin chamber.

The proposed novelty of the respondent (HUL) lies in:

1. Upward flow of water (from bottom) through the resin (filter media) for its treatment; and

2. Presence of a hollow space immediately on entrance of water into the cartridge so that there is a hollow passage between the inlet and the filter media, such that the water flows under gravity in the hollow passage and against gravity through the filter media to provide improved filtration and to avoid air entrapment.

Novelty and Obviousness Issues:

Two references US 6,387,260 (‘260 hereinafter) and European Patent 1106578 (‘578 hereinafter) were primarily relied for arguments by the Applicant for novelty and obviousness of the claimed subject matter.

‘260 patent in the Summary Section states “the filter cartridge comprises a housing with a filtration chamber therein and a sealed cavity in the upper portion thereof. A liquid inlet is at the bottom of the housing to permit liquid to flow from the container into the filter cartridge, upwardly through the filtration chamber, into a sealed cavity, and downwardly out of the filter cartridge through a fluid conduit of restricted cross sectional area the exit end of which is elongated to extend below the liquid inlet in the bottom of the filter cartridge. A vacuum is created in the sealed cavity which causes a siphon effect that draws additional liquid through the filter cartridge.”

Col 4, Line 41 of ‘260 also states “which contains liquid to be purified, into the lower part of filter cartridge 20 through apertures 21 the bottom thereof, and then upwardly through filtration media 7 within cartridge 20, through opening 22 and into sealed cavity 6 located at the upper part of the filter cartridge 20.”

Claim 1 of ‘260 states: 1. In combination, a) a filter cartridge for liquid purification comprising a housing having a top, a bottom, and a side wall, and having a filtration chamber therein characterized in that it has a sealed cavity in tile upper portion thereof; a liquid inlet in said housing to permit liquid to flow from an unpressurized source of liquid to be purified into the filter cartridge; means for providing a vacuum in the sealed cavity comprising a tubular element having an inlet in the sealed cavity and extending from the sealed cavity..

Fig. 1-4 are also relevant in structure and construction to ‘937 Patent.

EP ‘578, on the other hand, does not have an English translation, but does disclose a filter material 37 and central tube 31, wherein the central tube 31 distributes water and allows it to flow towards the filter material 37 to be filtered in the upwards direction, which clearly maps with the two inventive features of ‘937 as mentioned above. Following figure of ‘578 is of relevance,

Section 8 Deliberation:

Following gives a quick background of the family of the ‘937 Patent

  1. GB Priority Application was first filed vide Application No. 0307146 on 28.03.2003.
  2. PCT Application filed on 21.7.2003 taking priority of Indian and GB Application.
  3. PCT Application designated GB as one of the countries
  4. GB Application ‘146 terminated on 08.12.2003.
  5. The respondent, in response to the first and second examination reports, only informed about PCT Filing along with UK Application being pending but did not submit IPER, which was available when the second examination report was replied to.

In view of the above, let’s first have a quick look at relevant portions of Sections 8(1) and (2), which state:

Information and undertaking regarding foreign applications

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application [or subsequently 5[within the prescribed period as the Controller may allow

(a) a statement setting out detailed particulars or such application; and…

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Although, both the above clauses clearly state that relevant information/details pertaining only to a country outside India needs to be presented, the moot point held by IPAB was that IPER related to processing an application in a country outside India and that “the word ‘processing’ is an all encompassing word, it would take within it the series of actions or steps to be taken in order to achieve a particular end.

Furthermore, it was submitted that if under 8(1), the Respondent itself had mentioned the PCT details, then it inherently did assume the PCT to relate to a country and therefore was liable to fulfil the obligation of giving all the details of the PCT as well. This was inspite of the fact that the very patent that was discussed in IPER was also cited by the Indian examiner in the FER and therefore was already deliberated and considered for examination.  However, this argument too, according to IPAB, does not waive off the duty of the respondent to submit all relevant information.

The above decision, particularly in light of the interpretation of Section 8, raises few concerns:

  1. First, isn’t too much weightage being given to the manner in which compliance of Section 8 is being done by an Applicant.  I really wonder, in case ‘578 and ‘260 references not been relevant enough to destroy the novelty and render the subject matter obvious, would the argument on Section 8 alone, helped revoke the patent. I really hope no!!
  2.  Is it actually practical for patentees to submit all relevant information in the manner desired, in time, without any time delays, and without lapses? Requests under section 8(2) ask for translation of search and examination reports in all major countries and therefore such requests also include submission of office actions and responses thereto from countries such as Japan, China, and Korea. Is it actually practical for the Applicant to get all these documents translated at a significant cost merely for meeting the requirement of the Indian Patent Office?
  3. Although I do agree with the rational behind submission of ISR and IPER for PCT cases (especially when they are not yet published during the responses to the examination reports) and also agree with the decision in the present case with regards to interpretation of Section 8 (but would reserve my comments for brevity and rather focus on the concerns), I believe that putting forth such strong views in a decision, is giving nothing but a scare to International Applicants for the repercussion that their Applications could have in case there is single lapse, moreover when such a lapse is not even related to the claimed subject matter of the invention. I am also highly doubtful if even one granted patent in India would have actually, with complete accuracy, complied with the Section 8 requirement in time.

Personally, for the benefit of the entire fraternity, I believe it would be most beneficial if the Patent Office could, through an official notification, objectively point to the kind of references they expect, countries from which the references are to be disclosed, translation of which documents is absolutely critical, for compliance of Section 8, so that not only there is clarity at the Applicant’s end but also so that the process does not become a nightmare for them.

Finally, I am sure we are headed in a direction where we make things more comfortable for the patentee rather than for the infringer and hope not to come to a situation when the infringer raises “non-compliance of Section 8” as the sole ground for revocation under Section 64, and wins the case!!!

About the Author: Tarun Khurana, Patent Attorney, available at tarun@khuranaandkhurana.com

India simplifies Process of filing PCT National Phase Applications

In a promising move by the Indian Patent Office (IPO), the Controller General of Patents, Designs and Trademarks (CGPDT) has issued new instructions for filing PCT National Phase Applications in India. The public notice was issued on July 02, 2012 and is in force since July 06, 2012. The copy of the notice can be accessed here.

There are two major points highlighted in the notice. One is the elimination of the need to file the PCT Application and related documents which are already notified/ published with the WIPO. The other is the clarification provided that no amendment of the PCT Application is allowed while entering the Indian National Phase. These instructions are applicable to both physical and e-filing.

One of the very positive outcomes of this notice is the elimination of the redundant processes of submitting PCT international application and related documents such as IB 304, 306, ISR’s among others, which are available with the International Bureau (IB) of the WIPO. The Applicant is no longer required to file the documents which are already available with WIPO. This was a long felt need which finally paves its way to an efficient and simplified filing of a PCT National Phase Application. This will also reduce errors in data entry to obviate need for corrections in PCT national phase applications.

These new instructions only apply to PCT National Phase Applications entering India, which do not claim priority of any PCT National Phase Application filed previously in India. The documents filed by the applicant should exactly correspond with the latest information available on the record of IB on the date of filing of the PCT National Phase Application in India.  The information must have been notified/ published by the IB, in accordance with the PCT and the Regulations made there under. Any request pending with the IB will be of no significance and will not be reflected in the documents. If any such request is reflected in the documents, the information notified/published by IB will prevail. Thus all those documents, say for example the IPRP (International Preliminary Report on Patentability), which are not yet published at the IB but are available with the Applicant, should be filed with the IPO.

However, in slight contrast to the above mentioned requirement, non-submission of unpublished (or even published) PCT Application related documents may have unfavourable consequences at the IPO. This is recently being reflected in a patent revocation decision by the IPAB (Intellectual Property Appellate Board) wherein one of the grounds of the patent revocation is the non-submission of the IPER with the IPO (on the basis of statement and undertaking under section 8 of the Indian Patent Act). Although in the present case, non-submission of IPER was held as a ground because the IPER was not published until the Indian patent was granted and therefore was expected by the Applicant to submit the same, the point to consider is that the decision also stated that “IPER related to processing an application in a country outside India” and that “the word ‘processing’ is an all encompassing word, it would take within it the series of actions or steps to be taken in order to achieve a particular end.” The suggestion therefore, at this stage, would be that even if only minimal documents are now required for filing during the national phase entry; upon submission of Form 3, all search and examination reports including ISR and IPER should be submitted.

Coming back to the notice, the IPO also eliminates the need to add the complete specification and abstract in Form 2. Only last page of the published PCT (latest version) claims along with date and signature is what is needed. However for the PCT Applications filed/published in language other than English, the Application is required to file the translated complete specification and abstract in English along with the Translation Verification Certificate.

Another point clarified (re-confirmed) in said notice is that the Applicant is not allowed to amend any part of the Application while entering the Indian National Phase. Any amendment in the claims or specification can only be made subsequent to filing by filing Form 13 (Application for amendment). The fees, during the national phase entry, would also be calculated in accordance with the number of claims and sheets as available in the PCT Publication.  Article 19 and Article 34 Amendments notified/published at the IB are to be taken into consideration. However, this stance of IPO (and inconsistency thereof from other global patent offices) has been debated for quite some time now, as certain claims, such as method of treatment or CRM claims, which are not allowable in India, would unnecessarily have to be paid for. A strong clarification on this argument has not yet been given for far by the IPO and Applicants would therefore, for the time being, have to shell out significantly more fees for additional claims.

However, fortunately the IPO’s current fee structure is relatively economical with respect to other major Patent Offices and hopefully this may not cause any bigger impact on the International Applicants.

On an ending note, the simplified process of National Phase Filing without need of filing the PCT published/notified documents is a welcoming move by the IPO saving unnecessary documentation and valuable resources of both the IPO and the Applicants.

About the Author: Meenakshi Khurana, Patent Attorney, available at meenakshi@khuranaandkhurana.com

Ayur- Generic Term or not?

India is the home to the science of Ayurveda. Recently, the question whether ‘Ayur’ could be monopolized as a trademark was sought to be answered in an order passed by the Intellectual Property Appellate Board.

Alex Hotels and Resorts, Bangalore have been using the mark ‘Ayurtheeram’ since 01/06/2005 and were granted registration for the said mark under Application no. 1384396 in the Indian Trade Marks Registry. Three-N-Products (P) Ltd., was granted registration of the mark ‘Ayur’ for their products which mainly consisted of hair,skin and face care  products. Their brand ‘Ayur’ was in business since 1984 and had manufactured almost 155 variants in their products. Three-N-Products filed an appeal in the IPAB against the registration of the mark ‘Ayurtheeram’ used by Alex  Hotels and Resorts claiming that it was an dishonest adoption of the mark and they intended to trade upon their goodwill and reputation.

The appellants (Three-N-Products) launched their brand ‘Ayur’ for mainly hair, skin and face care products.  They were in business since 1984 and had manufactured almost 155 variants in their products. They also had foreign registrations, copyright registrations and since they were using the mark continuously and extensively, there was a possibility of confusion and deception caused for the appellant’s mark ‘Ayur’ and the respondent’s mark ‘Ayurtheeram’.  Moreover, the Learned Registrar did not consider the fact that the appellants have been using the mark earlier than the respondents and the explanation of the adoption of the mark by the respondents has also not been clearly explained. Further, the appellants also had hotels registered in class 42 and a mark ‘Ayurgram’ which has been registered from 2003.

The respondents, on the other hand, contended that they have been using the mark since 2005 for their hotels. They stated that they have coined the word from ‘Ayu’ which means ‘life’ and ‘Theeram’ which means ‘land’. Further, they stated that ‘Ayur’ is a generic term and the appellants cannot have monopoly over it.  It was adopted in a bona fide manner and the fact that it was in conjunction with another word, strengthens their bona fide use.  The State also honoured them with the Green Leaf classification which makes it well known in the state.

The main question arose whether ‘Ayur’ could be monopolized as a trademark or not.

The IPAB held that the word ‘Ayur’ or ‘Ayu’ cannot be said to be an invented word since it directly denotes the science of Ayurveda. They rejected the contention of the appellants that the word ‘Ayur’ should be used only by them and no other. They further held hat ‘Ayur’ and ‘Ayurtheeram’ were not at all identical or deceptively similar. Further, the ‘Green Leaf’ classification which was granted to the respondent showed their enhanced reputation in their state. The word was associated in the public consciousness with ‘Ayurveda’ and ‘healthy life’, hence no one could appropriate it to oneself. The order further directed for the removal of the word ‘Ayur’ and its other variants which was registered in the name of Three-N-Products, from the Trade Marks registry.

It’s a short story cut even shorter but is indeed embarrassing that Three-N-Products lost their own Trade Mark while trying to seize another’s Trade Mark.

About the Author: Ms. Madhuri Iyer, Trade Mark Associate at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com

Inherent Anticipation: In re Montgomery

The Federal Circuit in this case addressed the issue of anticipation by inherency in the context of method of treatment claims. The panel affirmed that a claim to ‘a new use for a known compound’ was inherently anticipated by a reference which disclosed a plan for a proposed clinical trial that had not been carried out and the results of the trial were not obtained until after the effective filing date (priority date) of the Montgomery’s patent application.

Before discussing this case in particular, let us first see what inherent anticipation is. It is well-known that a prior art reference can defeat patentability under 35 U.S.C. § 102 by expressly disclosing all of the elements of a claimed invention. However, the prior art reference may also anticipate if an apparently missing element of the claim is inherent in the prior art. Thus, the prior reference can also defeat patentability without having to expressly disclose all of the elements in the claim. The elements may simply inhere in a disclosed composition or process. This latter type of reference is said to be called as “inherent anticipation.” In relying upon this doctrine, one must provide a basis in fact and/or technical reasoning reasonably to support a determination that the allegedly inherent characteristic necessarily will be present if the teachings of the prior art are followed. The fact that a prior art source may possibly possess the elements of the claimed subject matter is not sufficient to anticipate the claimed subject matter. Thus, Inherency must be a necessary result and not merely a possibility.

In re Montgomery, the patent application at issue (U.S. Patent Application No. 11/118,824) is directed to inhibitors of the renin-angiotensin system (RAS).

The claims at issue were the following:

42.  A method for the treatment or prevention of stroke or its recurrence, wherein said method comprises administering, to a patient diagnosed as in need of such treatment or prevention, an inhibitor of the rennin-angiotensin system, said inhibitor having a ClogP of greater than about 1.

43.  The method as claimed in claim 42, wherein the inhibitor of the rennin-angiotensin system comprises at least one inhibitor of angiotensin-converting enzyme.

45.  The method as claimed in claim 43, wherein the inhibitor of angiotensin-converting enzyme comprises ramipril.

The USPTO Patent Examiner had rejected the claims as anticipated by four prior art references. The USPTO Board of Patent Appeals affirmed the rejections and on appeal, the Federal Circuit focused only on one reference, the HOPE reference: “The HOPE (Heart Outcomes Prevention Evaluation) Study: The Design of a Large, Simple Randomized Trial of an Angiotensin-Converting Enzyme Inhibitor (Ramipril) and Vitamin E in Patients at High Risk of Cardiovascular Events, 12 Can. J. Cardiology 127 (1996)”. The HOPE reference described the design of a large clinical trial of administering ramipril and vitamin E with the objective of preventing myocardial infection, stroke, or cardiovascular death. The HOPE clinical trial study found that patients receiving ramipril had a significant reduction in the risk of stroke, however, these results were not published until after Montgomery’s priority date.

The case also contains an interesting discussion regarding anticipation by inherency between the majority opinion and the dissenting opinion. The majority determined that the claims were inherently anticipated by the HOPE reference, which discloses a plan for a clinical trial. The majority opines that for a prior art reference to inherently anticipate a method, the description of the method in that reference does not need to be carried out in fact—that is, the description of the method need only enable the claimed result. However, in the dissent, the Judge emphasized on the importance of inevitability, stating that “were inevitability not required for inherency, a mere proposal for further experimentation could anticipate a claimed invention”.

The majority pointed out that the HOPE reference discloses a detailed protocol for the administration of ramipril to stroke-prone patients, and that administering ramipril to stroke-prone patients “inevitably” treats or prevents stroke. The majority stated that inherent anticipation requires that the claimed method have been actually performed, and that HOPE does not disclose actual performance of the method: “We stated [in Schering, 339 F.3d at 1381] that anticipation ‘requires only an enabling disclosure,’ not ‘actual creation or reduction to practice,’…the prior art patent inherently anticipated as long as it ‘disclose[d] in an enabling manner the administration of loratadine to patients.’ Id. At 1380; see also SmithKline Beecham Corp. v. Apotex, 403 F.3d 1331, 1343-1344 (Fed. Cir. 2005).” Thus, the majority determined that the HOPE reference inherently anticipates the claims at issue, emphasizing that it did not matter whether the HOPE clinical trial actually had been carried out because anticipation requires only an enabling disclosure.

In the dissent, Judge Lourie disagreed with the majority’s reasoning. The dissent points out, “[a]n invitation to investigate is not an inherent disclosure” and emphasized that the keystone of the inherency doctrine is inevitability. The dissent determined that the HOPE reference failed to meet this requirement of inevitability because the HOPE reference “truly expresses only a hope, not achievement of that hope”. He noted that “a mere description of a process that, if it had been carried out, might yield a particular undisclosed result is not an inherent anticipation of that result.” It would be interesting to see how the inherent anticipation is analysed in view of these two differing opinions in future.

About the Author: Meenakshi Khurana is a Patent Attorney at K&K and is available at meenakshi@khuranaandkhurana.com

Let’s Google it !

David Elliot, from Arizona, owned 750 websites with domains like ‘googlegaycruises.com’ and ‘googledonaldtrump.com’ among many others.  His argument was that he needed to use the word ‘google’ because he was developing an internet based business that will promote charity, commerce, community, relationships, personal health etc. He further stated that he did not register the domain names in the hope of attracting internet users who are seeking to avail the company Google’s specific search engine service. In fact, the users who wanted to search for a topic, typed the word ‘google’ and came across Elliot’s websites. He had even spelt the word ‘google’ correctly in all the domain names, when he could have misspelt the same in order to create confusion among the users.

Google applied for its first trademark in 1997 and since then it has received a number of certificates covering its mark. On July 8, 1998, one of the co-founders of Google, Larry Page himself used the word ‘Google’ as a transitive verb when he wrote on a mailing list- ‘Have fun and keep googling!’

The District Court of Arizona ruled the case in favour of Google, forcing Elliot to hand over all the domain names to Google.

Elliot, now has sued Google, claiming that they should not be allowed to use the word ‘Google’ as its trademark anymore since ‘google’ means ‘search on the internet’, which made it a common transitive verb. His complaint states that the American Dialect Society declared it to be the ‘word of the decade’. He further claims that in 2010, Google itself had claimed that it would lose its trademark if the word ‘google’ was used synonymously for any search.

If consumers start using a trademark as a common word, then it becomes a generic term. A trademark or service mark that becomes generic in a particular country, is no longer entitled to protection since it is freely available to use.

There are many well known cases where certain brands could not hold on to their trademark. In Bayer Co., Inc. v. United Drug Co., 272 F. 505, ‘aspirin’ was held generic (in the United States) for acetylsalicylic acid pain reliever. But it was still protected in about 80 countries. Bayer also lost its case to protect its Trade Mark ‘Heroin’. Other brands like Kleenex and Xerox tried to save their marks, but in vain, since people commonly ask for a Kleenex instead of a tissue and for a xerox when they want to photocopy something. Band-aid did the same with bandages. In Haughton Elevator Co. v. Seeberger (Otis Elevator Co.), 85 U.S.P.Q. 80, ‘escalator’ was held as a generic term for ‘moving staircase’. In King-Seely Thermos Co. v. Aladdin Indus Inc., 321 F.2d 577, ‘thermos’ was held to be a generic word for vacuum-insulated bottles. In DuPont Cellophance Co. v. Waxed Prods. Co., 85 F.2d 75, ‘cellophane’ was held generic for transparent cellulose sheets. In Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, ‘pilates’ was held generic for a form of exercise.

Now, Google needs to prove that users associate the word ‘google’ with the company and not as a transitive verb in itself.

About the Author: Ms. Madhuri Iyer, Trade Mark Associate at Khurana & Khurana and can be reached at: Madhuri@khuranaandkhurana.com