Monthly Archives: June 2013

Understanding Gene Patenting

We are sure that all of you must have learnt about the latest US Supreme Court decision in Association for Molecular Pathology V. Myriad Genetics on June 13, 2013, which has ended the long brawl of 5 years. Yes! the sole provider of BRCA1 and BRCA 2 tests, Myriad Genetics Inc., has lost the battle. Myriad had enjoyed sole monopoly over testing services for BRCA1 and BRCA2 in the United States, since the grant of 2 genes in 1990s.

On May 12, 2009, The American Civil Liberties Union and the Public Patent foundation sued the US Patent and Trademark Office, Myriad Genetics, and the University of Utah Research Foundation, (all holding the patents on the BRCA1 and BRCA2 genes) challenging 15 claims drawn from seven Myriad’s patents owned by, or exclusively licensed to, respondents. The patents violate patent law as genes are “products of nature” and they therefore can’t be patented. Others joining the plaintiffs included several organizations, cancer survivors, physicians, academic researchers and patient advocates, laboratory professionals, pathologists, and represented 150,000 geneticists.

On March 29, 2010, Southern District Federal Court of New York ruled against Myriad, stating that patents on BRCA1 and BRCA2 genes were invalid. Myriad appealed the case, which was heard by the US Court of Appeals for the federal circuit in April 2011. The court ruled in favor of Myriad, finding that patents can be obtained on specific genes.

The US Supreme Court instructed the Appeals court, in March 2012, to reconsider the case after a unanimous ruling invalidated 2 patents on a blood test that determines drug dosages, which had been licensed to Prometheus Laboratories. After 5 months, a divided appeals court (2 to 1) ruled in favor of Myriad. In May 2012, plaintiffs asked the Supreme Court to hear the challenge to Myriad’s patents again. Supreme Court agreed finally to hear the case, in November 2012.

Myriads patents in Challenge:

One of the 7 patents in challenge included US5747282, claim 1 of the patent encompasses any isolated DNA molecule that codes for the natural BRCA1 protein-including an ordinary BRCA gene isolated from a tissue sample taken from any patient. DNA coding is for the polypeptide and not for any specific gene. There are many polypeptides. That would encode the BRCA1 polypeptide. Claim 5, then is a claim on any 15-mer oligonucleotide found in any such sequence. The human genome consists of about one million oligonucleotides covered by this claim. The claim 1 of the patent US6033857 encompasses the comparison of the BRCA gene sequence with a wildtype sequence. The rest were method claims in the patent. Invalidating [it] meant to grant freedom to the plaintiffs to practice diagnostic tests on BRCA gene. Claim 1 of ‘857 is illustrated is one of the invalidated claims:

1. A method for identifying a mutant BRCA2 nucleotide sequence in a suspected mutant BRCA2 allele which comprises comparing the nucleotide sequence of the suspected mutant BRCA2 allele with the wild-type BRCA2 nucleotide sequence, wherein a difference between the suspected mutant and the wild-type sequences identifies a mutant BRCA2 nucleotide sequence.

The 3, 4, 9, & 10 claims were from U.S Patent 5709999,

3. A method for detecting a germline alteration in a BRCA1 gene, said alteration selected from the group consisting of the alterations set forth in Tables 12A, 14, 18 or 19 in a human which comprises analyzing a sequence of a BRCA1 gene or BRCA1 RNA from a human sample or analyzing a sequence of BRCA1 cDNA made from mRNA from said human sample with the proviso that said germline alteration is not a deletion of 4 nucleotides corresponding to base numbers 4184-4187 of SEQ ID NO:1, which comprises analyzing BRCA1 RNA from the subject and wherein a germline alteration is detected by hybridizing a BRCA1 gene probe which specifically hybridizes to nucleic acids containing at least one of said alterations and not to wild-type BRCA1 sequences to RNA isolated from said human sample and detecting the presence of a hybridization product, wherein the presence of said product indicates the presence of said alteration in said RNA and thereby the presence of said germline alteration in said sample.

4. A method for detecting a germline alteration in a BRCA1 gene, said alteration selected from the group consisting of the alterations set forth in Tables 12A, 14, 18 or 19 in a human which comprises analyzing a sequence of a BRCA1 gene or BRCA1 RNA from a human sample or analyzing a sequence of BRCA1 cDNA made from mRNA from said human sample with the proviso that said germline alteration is not a deletion of 4 nucleotides corresponding to base numbers 4184-4187 of SEQ ID NO:1,wherein a germline alteration is detected by obtaining a first BRCA1 gene fragment from a BRCA1 gene isolated from said human sample and a second BRCA1 gene fragment from a wild-type BRCA1 gene, said second fragment corresponding to said first fragment, forming single-stranded DNA from said first BRCA1 gene fragment and from said second BRCA1 gene fragmentelectrophoresing said single-stranded DNAs on a non-denaturing polyacrylamide gelcomparing the mobility of said single-stranded DNAs on said gel to determine if said single-stranded DNA from said first BRCA1 gene fragment is shifted relative to said second BRCA1 gene fragment andsequencing said single-stranded DNA from said first BRCA1 gene fragment having a shift in mobility.

9. A method for detecting a germline alteration in a BRCA1 gene, said alteration selected from the group consisting of the alterations set forth in Tables 12A, 14, 18 or 19 in a human which comprises analyzing a sequence of a BRCA1 gene or BRCA1 RNA from a human sample or analyzing a sequence of BRCA1 cDNA made from mRNA from said human sample with the proviso that said germline alteration is not a deletion of 4 nucleotides corresponding to base numbers 4184-4187 of SEQ ID NO:1, wherein a germline alteration is detected by forming a heteroduplex consisting of a first strand of nucleic acid selected from the group consisting of BRCA1 gene genomic DNA fragment isolated from said sample, BRCA1 RNA fragment isolated from said sample and BRCA1 cDNA fragment made from mRNA from said sample and a second strand of a nucleic acid consisting of a corresponding human wild-type BRCA1 gene fragmentanalyzing for the presence of a mismatch in said heteroduplex, and sequencing said first strand of nucleic acid having a mismatch.

Claim 10 from U.S. Patent No. 5,710,001:

10. A method for screening a tumor sample from a human subject for a somatic alteration in a BRCA1 gene in said tumor which comprises gene comparing a first sequence selected form the group consisting of a BRCA1 gene from said tumor sample, BRCA1 RNA from said tumor sample andBRCA1 cDNA made from mRNA from said tumor sample with a second sequence selected from the group consisting of BRCA1 gene from a nontumor sample of said subject, BRCA1 RNA from said nontumor sample and BRCA1 cDNA made from mRNA from said nontumor sample, wherein a difference in the sequence of the BRCA1 gene, BRCA1 RNA or BRCA1 cDNA from said tumor sample from the sequence of the BRCA1 gene, BRCA1 RNA or BRCA1 cDNA from said nontumor sample indicates a somatic alteration in the BRCA1 gene in said tumor sample,  wherein the nucleic acid sequence is compared by molecularly cloning all or part of the BRCA1 gene from said tumor sample and from said nontumor sample to produce cloned nucleic acids and sequencing the cloned nucleic acids.

The Supreme Decision made

The Court said that “the Isolated DNA segment is structurally different but both protein coding exons and non-coding sequences is unchanged” hence, are same to native gene. And explained how the differences do not render isolated DNA “markedly different” from native DNA.

The judgement of the supreme court hence concluded that “court  of appeals should be affirmed insofar as it holds that cDNA is patent-eligible, and reversed insofar as it holds that isolated but otherwise unmodified DNA is patient-eligible.

The unchallenged claims implied to methods that are merely applications to the knowledge of the two genes and hence not patent-eligible. On this the Court  had found that however useful these applications may be, they should be treated as insufficient to create patent-eligible subject matter.

Isolated Gene patenting has never been questioned till now!!!!!

The PTO has regularly issued patents directed to isolated genomic DNA, and various government agencies have previously sought and obtained such patents. The patent-eligibility of isolated DNA was never tested in litigation, however, until petitioners filled this suite.Gene patents have been among the most controversial segments of intellectual property. There are up to 3,000-5,000 U.S patents on human genes and 47,000 on inventions involving genetic material. U.S patent Law requires that the “Purified and Isolated” gene fragments have a “specific and substantial utility”. There is much debate regarding gene patens as to whether isolated, purified genes are patentable under Sec. 101 of the U.S Patent Act. A department of health and human services (“HHS”) Advisory Committee studies gene patents and patient access, and found that gene patents can harm genetic research, by hindering faster test development.

Why to patent Human genome for it being our common heritage?? The recent  discussions over the litigation of Association for Molecular Pathology V. Myriad Genetics, involving the validity of Myriad’s BRCA 1 and 2 gene patents, largely overlooked the impact of gene patents on patients. The Fifth Amendment Due process clause protects the right to bodily integrity and its knowledge. The right being a fundamental right of the patients, to which the government cannot intrude upon unless it can show that, the infringement is convincingly in the government’s interest. The patients should have the right to access information and medical treatment for their own body. Patents grant an inventor the right to exclude, but enforce no compulsion on the patent holder to make available the invention to the public.

In 1980, USPTO began issuing patents on three different versions of gene. One being the “cDNA or Complementary DNA  fragments”-  The other two versions of DNA include isolated fragments or the whole of yht raw DNA in a gene. A gene is a double helix structure consisting of base pair sequence, some are expressed and majority of are not. In a cDNA only the expressed base pairs are organized in the same order as the native gene. To make it clear, the other versions are SNP and EST. An EST (Expressed Sequence tag), is a short sequence of the complementary DNA that was expressed by the full length gene. A polymorphism, such as an SNP (Single nucleotide polymorphism), is a variation in gene DNA sequence of some members of a specie. Myriad’s patents extended to all three types of DNA extracted from the two BRCA genes.  It all started in the early 1990s, when a genecist at Berkleley, Mary-Claire King, announced that her laboratory had found probable location of BRCA 1 on Chromosome 17. Then a “transatlantic race” began, where the major competitor was Mark Skolnick, genecist at the university of Utah and cofounder of Myriad Genetics. Mark and his colleagues won the race in 1994; they had found and isolated BRCA1 from the rest of DNA and tangle of protein that forms chromosome 17. In 1995, Myriad had also identified and isolated BRCA2, Which resides on the chromosome 13.

Let’s go through some of the other similar cases which have left a mark:

Diamond V. Chakrabarty : A land mark case, Where the Supreme Court’s ruling in 1980 allowed patents on a genetically modified bacterium, which possessed the capability that no other naturally occurring bacterium did. At first the application was rejected by a patent examiner, because under patent law, at that time, Living things were not patentable subject matter under Sec. 101 of Title 35 U.S.C. However Sidney A. Diamond, Commissioner of patents and Trademarks, appealed to the Supreme Court that the fact that micro-organisms are alive is without legal significance for purpose of the patent law. The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980. The Patent was granted on March 31, 1981.

Mayo Collaborative Services V. Prometheus Laboratories  was a case decided in 2012, by the Supreme Court of the United States that held that claims directed to a method of giving a drug to patient, measuring metabolites of that drug, and with a known threshold for efficacy in mind, deciding whether to increase or decrease the dosage of the drug, were not patent eligible subject matter. This reversed the decision of Court of Appeals for the Federal Circuit’s holding that the claims were patentable because they included substantial physical limitations.

In June 2004, a case arose in a dispute between Mayo Collaborative Services and Prometheus Laboratories concerning a diagnostic test. Prometheus sued Mayo for infringement in the southern district Court of California and in March 2008, the district court held the patents invalid. The two US patents in the case are 6,355,623 and 6,680,302, which are owned by Hospital Sainte-justine in Montreal.  The invention identifies a relationship between concentration of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm.

On September 2009, The Federal Circuit reversed the District Court, finding that the claims were patentable. Mayo appealed to the Supreme Court and in June 2010 the Court immediately vacated the federal circuit decision and remanded the case back to the Federal Circuit. The Federal Circuit still found that the two steps of the invention were transformative and that the claim as a whole was patentable. The Federal Circuit went into more depth on the third step, the “mental step”, noting that “a subsequent mental step does not, by itself, negate the transformative nature of prior steps. Thus, when viewed in the proper context, the final step of providing a warning based on the results of the prior steps does not detract from the patentability of Prometheus’s claimed methods as a whole. On appealing again to the Supreme Court by Mayo, the court gave its “unanimous”  decision on March 20 2012. The court called the correlation between the naturally produced metabolites and therapeutic efficacy and toxicity to be an Unpatentable “natural law” and found the first two steps to be not “genuine applications of the law. And hence concluded that a newly discovered law of nature is itself Unpatentable and the application of that newly discovered law is also Unpatentable if the application merely relates upon elements already known in art.

“The anticommon effect”: Recently the court of Appeals for the Federal Circuit (CAFC) issued a patent law decision, ruling against the applicant in In re Fisher, but maintaining the decision of the USPTO Board of Appeals and Interferences.  The decision bars patent protection for gene fragments that do not have a “specific and substantial” utility.

What Fisher tried to do? There were two researchers at the Monsanto Company Laboratories who harvested and purified DNA from the maize plant during it flowering phase, this research was valuable as would give the researchers an idea of the genes which were expresses and ultimately what proteins were present particularly at the time of development of the maize. The Fisher patent application had used the short nucleic acid sequences thought to be gene fragments or EST, as research tools that could obtain the genetic and protein information.

What is specific and substantial utility? In 2001, the standards of applying “specific and substantial utility” were finalized by the USPTO. This decision is so far the first case of CAFC on this ground.  The guidelines specifically say that: the claimed invention should be useful for any particular practical purpose.”

All seven uses specified in the application of Fisher, none met the standard of the guidelines. All the uses claimed can be applied to any ESTs and not to a particular one. The CAFC further identified that using ESTs as research tools was too insubstantial to meet the standard. The applicant didn’t know that what genes, if any, contained the ESTs, nor what proteins may be involved, and why they were important.

This decision would render hundreds of pending applications worthless and would raise a bar for proving gene and protein related inventions useful.

Conclusion:  Gene Patenting has become a crucial part of medicine. The patenting of gene related inventions not only affect the researchers but also hits the common man. By cDNA being patentable is small compromise the PTO has made. The patenting of gene should be treated in such a way that it facilitates both academic research and commercial testing.  This can be employed by following the similar licensing practices that are being followed by cystic fibrosis Patents, which are nonexclusively licensed for diagnostic use and have been variably licensed for gene transfer and other therapeutic applications. The steps which would hinder the patients to right of information of their own body, due to overpriced testes should be avoided by the Government. Ways like compulsory Licensing for practicing research in development of diagnostic tests can be made permissible.

About the Author: Ms. Shailee Gupta, Woman Scientist, TIFAC Trainee at Khurana & Khurana and can be reached at: shailee@khuranaandkhurana.com

Follow us on Twitter: @KnKIPLaw.

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Day of reckoning for domain name bullies!

Eversince the advent of the Domain Name System, the entire world has experienced a radical metamorphosis that has brought about a revolution in the way we communicate and connect. Domain names have dramatically expanded the reach of businesses and brands to hundreds of millions of people and have incontrovertibly become an indispensable tool for business communication. Domain names, usually composed of brand names or trademarks, are not mere internet addresses but have significantly grown in importance and represent a business entity as capably as a brand itself.

It is apparent that depriving a rightful owner of its domain name is as grave an offence as transgressing any other Intellectual Property. Unfortunately, this practice, known as, Reverse Domain Name Hijacking, is on the rise as trademark owners are attempting to secure domain names by making false cybersquatting claims against a domain name’s rightful owner.

Reverse domain name hijacking is the practice by which trademark owners assert expansive trademark rights in an effort to strip legitimate holders of their domain names. This occurs when big corporations intimidate people or companies out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement, dilution, or unfair competition in any manner.

Some trademark legal scholars have speculated that reverse domain hijacking may be met with cancellation of the company’s mark under the doctrine of trademark misuse. Additionally, victims of reverse domain name hijacking have a specific cause of action under the new anti-cyber squatting legislation.

A recent entrant to this infamous list is the Consumer products giant “Procter & Gamble”, who has been found guilty of reverse domain name hijacking. What is even more astonishing is that P&G made outrageously false and misleading claims about its trademark “Swash” and then couldn’t save itself from the embarrassing unfolding of events.

The domain at issue was <swash.com>, owned by Marchex Sales, Inc. of Las Vegas, Nevada and the Complaint was filed with the WIPO Arbitration and Mediation Center on November 2, 2012.

The facts of the case are summarized below:

P&G claimed that it obtained registration for the trademark “SWASH” throughout the world, including under the Madrid System, and with the OHIM, and USPTO, with the earliest registration, under the Madrid System, dating back to the year 1993. It further contented that it had earned more than USD 40 million in SWASH product sales and had spent in excess of USD 4 million in research, development and advertising pertaining to those products and that it came to know about Marchex’s registration of the disputed domain name around May 1, 2012.

However, the WIPO Panel later found that P & G had misrepresented material facts to the panel. After being pressed, P&G made the shocking revelation that it had actually made sales of only $60,000. Also, the 1993 trademark was actually assigned to P&G after Marchex had owned the domain and it was not valid in the United States. The Panel also made the finding that P&G had abused the process of UDRP in an attempt at reverse domain name hijacking in contravention of the UDRP Rules at paragraph 15(e). An excerpt from the Administrative Panel Decision reads:

“The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000. Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature.”

The whole case can be read here.

Aftermath:

Procter & Gamble eventually ended up buying the domain <swash.com> from Marchex after its failed attempt to steal the domain name by paying only 5 to 10K USD in UDRP plus the attorney fees.

Even though, this case should have been an eye opener for domain name bullies, especially after the astringent criticism P&G is facing, Avaya Corporation, a multinational company with over 17,500 employees worldwide, tried to apply a ploy in bad faith in an attempt to deprive a registered domain name owner. Avaya too, later on   admitted that the Respondent (Avayo Electronics) is a manufacturer of data and telecommunication products which do not compete with its own products and the Panel found that the Respondent adequately showed that it is commonly known as “AVAYO” in its business name.

While there is no financial penalty for being branded a reverse domain name hijacker, odds are that future Procter & Gamble UDRP filings are going to be given extra scrutiny by WIPO panelists!

One can only hope that these cash rich bullies would take a lesson from the not so Swash-buckling stunt P&G tried to pull off!

About the Author: Mr. Anirudh Sarin, Trade Mark Attorney at Khurana & Khurana and can be reached at: anirudh@khuranaandkhurana.com

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IPO displays Month & year of RFE that are being examined

Indian Patent Office (IPO) makes available a dynamic grid here also shown below:

rfe1

IPO will make the month and year for the Request for Examination (RFE) filed that are currently being examined and the First Examination Report (FER) being issued, for each of the Groups, as displayed hereinabove.

IPO also states that if FER is not received for the RFE which is filed 3 months prior to currently displayed month and year, the grieved Applicant/Agent can submit the grievance by pressing the below link:

rfe2

The following table appears when the above button is pressed:

rfe3

Remarks

The availability of this display is likely to at least produce some streamlined time of expectation of the issuance of FER. At present, there is great erraticity in time of issuance of FER. As we can see from the above grid, the issuance of FER is delayed to a great extent as compared to the statutory timeline of issuance of FER which is “ordinarily 6 months from the date of RFE or date of publication whichever is later”. Currently most of the applications being examined and FER being issued are the ones for which FER was filed in 2008,09, a gap of 3-4 years from the date of filing of RFE! We hope that the current ongoing recruitment of the patent examiners may expedite and streamline the issuance of FER vis-a-vis filing a RFE.

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Draft Patents (Amendment) Rules 2013

Indian Patent Office (IPO) has recently published Draft Patents (Amendment) Rules 2013 here and has invited comments (objections or suggestions) from public within 45 days from the publication of the notification (12th June 2013).

The main changes proposed are the following:

1. There is a 100% hike in official fees for almost all the proceedings before the Controller, as stated in First Schedule.

For example, the filing fee has increased from INR 1000 (~USD 20) to INR 2000 (~ 40) for a natural person and from INR 4000 (~ USD 80) to INR 8000 (~USD 160) for a legal entity. Fee for each additional claim and sheet have also doubled from INR 200 (~USD 4) to INR 400 (~ USD 8) per claim (for natural person) and from INR 800 (~USD 16)to INR 1600 (~USD 32) per claim (for legal entity).

The fees for filing request for examination have also doubled from INR 2500 to INR 5000 for a natural person and from IN 10,000 (~USD 200) to INR 20,000 (~ USD 400) for a legal entity.

So is the fee for filing amendment of the application before and after grant.

The Transmittal fee for PCT application have also doubled from INR 2000 (natural person) and INR 8000 (legal entity) to INR 4000 and INR 16000 respectively. So is the fee for requesting certified copies of the priority documents.

The renewal fees for all years are doubled too.

In fact, out of the entire schedule 2, there are only about 3-4 proceedings for which fees have not increased. For example,

  • application for filing Compulsory licence under 84(1), 91(1), 92(1), 92A, and
  • application for filing revocation of patent under 85(1). [This application is for revocation of a patent for which compulsory licence has been granted and 2 years have lapsed from such date of grant of compulsory licence and the patent has either not been worked in the territory of India, or reasonable requirements of public are not met or the patented invention is not available to the public at a reasonably affordable price.]
  • filing request for early publication under 11A(2)

2. In addition to a fee hike, there would be an additional surcharge of 10% on all official fees when a patent application and other documents are filed in hard copies. [new proviso in Rule 7(1)].

3. Pre-Grant Opposition would now be filed in Form 7 (A). At present, there is no form for filing Pre-grant opposition. Pre-grant opposition can be filed on just plain sheet of paper. [amendment to Rule 55(1)].

4. There would be an additional surcharge of 10% on the costs awarded in certain proceedings before the Controller, as stated in the Fourth Schedule, when the documents are filed in hard copies.

Remarks

The surcharge on physical filing will promote more of e-filing which is a welcome move by the IPO. This should decrease paper burden on the IPO and in turn increase efficiency. Even in foreign patent offices like USPTO there is a surcharge on physical filing. On another hand, a 100% fee hike could have been lessened. This fee hike would not be welcomed especially by Indian individual inventors, academic institutions and the like. On a separate note, the IPO’s fees were seen as one of the lowest official fees and such a fee hike may not likely impact the foreign filings in India much.

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LOWENBRAU vs. LOWENBRAU- A NON-USE CONTROVERSY

Gajendra Khichi, an intern at Khurana and Khurana talks about case of non-use of trade mark. Through this post, he gives special emphasis on the case of M/s. Lowenbrau Buttenheim vs. M/s. Lowenbrau Munchen, which created quite a stir regarding non-use of trade mark.

The object of the trademark law is to protect the rights of the bona fide users of the mark and not to create trademark holders who do not intend to use the mark but register it only for the purpose of preventing others from using the mark. The Trade Marks Act, 1999 prevents such registration and even if the mark is registered without intention to use it, the same can be removed from the register on application.

This post analyses the concept of removal of mark for non-use under as provided under Section 47 on the basis of recent decision of IPAB in M/s. Lowenbrau Buttenheim vs. M/s. Lowenbrau Munchen[1], is a case of non-use of trade mark where an ex parte order was passed against respondent by the IPAB

The respondent in this case was the registered owner of the following trademarks:
Sr. No. Type Application No. Class Filling Date Registration Date
1. Label 280783 32 12/06/1972 15/03/1999
2. Label 196881 32 08/07/1960 15/11/1962
3. Word 642375 32 18/10/1994 23/03/2005
4. Label 258875 32 19/08/1969 20/08/1988

The respondents had not used the trade mark. Even though they had obtained registration as early as in 1960’s, they had decided to manufacture and sell beer only in September 2007.

On the other hand the applicant is the registered proprietor of the trade mark Lowenbrau Buttenheim in Germany registered on 05/08/1988. A company under the name Lowenbrau Buttenheim India Pvt. Ltd. was incorporated by the applicant in India as early as 14.04.1999. The goods of applicant under trade mark Lowenbrau Buttenheim were available in India since 1999 through its licensee. Applicant argued that the respondents have concealed the fact about the coexistence of M/s. Lowenbrau Buttenheim, Germany. It was also argued that the applicant is serving its goods in Germany, United States and Korea through its establishments under the trade mark Lowenbrau Buttenheim since 1880. So applicant is first user of the mark.

The court observed that respondents have although obtained registrations as early as 1962, 1988, 1999 & 2005 respectively but have not used it in trade.  The respondents are only preventing others from using which is not a good practice.

Analysis

Section 47 of the Act provides that when the mark has not been used, it can be removed from the register. The said Section prescribes two conditions as observed in, Shri Kanishk Gupta vs. Liberty Footwear Company[2]  it was held that under Section 47 two things has to be proved by the applicant viz. non-use and absence of bona fide intention to use the trade mark when the application for registration was made. Distinction has been made between clause (a) and clause (b) by saying that under clause (a) applicant has to prove both absence of bona fide intention on the part of applicant for registration as well as non-use up to a date three months before the date of the application for revocation. While clause (b) is applicable where there was no bona fide use of the trade mark for five years from the date of actual registration of the mark up to a date three months from the date of application for revocation. The fact that the registered proprietor has a bona fide intention to use the trade mark at the date of application of registration becomes immaterial and the trademark is liable to be removed.

The IPAB in this case rightly held that where the proprietor of a mark gets registration and there is no use by him, in this situation the mark is liable to be removed from the register. The trademark law protects the mark against use by others only where use is bona fide but where proprietor merely sits on the mark no protection is available as the later has not been considered as a good practice under law.

[1] ORA/212 TO 215/2008/TM/DEL, Decided on 6th May, 2013

[2] MIPR 2008 (3) 0227 – ORA/104/2006/TM/DEL

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Advocate as a Patent Agent, without passing the exam?

Gaurav Jit Singh, an intern at Khurana and Khurana talks regarding a recent judgement about case of declaring any advocate as Patent Agent without passing the Patent Agent Examination and the judgement from the court.

The judgment, dated March 15, 2013, declares amendment introduced via Section 67 (a) of the Patents (Amendment) Act of 2005 for Section 126 of the Patent Act, 1970 as illegal, unconstitutional, ultra vires and void.

Any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent.

Tracing legislative history of Section 126:

The original Section 126 read as follows:

“Section 126. Qualifications for registration as patent agents

(1) A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely: –

a. he is a citizen of India;
b. he has completed the age of 21 years;
c. he has obtained a degree from any University in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,-

(i) is an advocate within the meaning of the Advocates Act, 1961; or

(ii) has passed the qualifying examination prescribed for the purpose;

(d) he has paid such fee as may be prescribed.

(2) Notwithstanding anything contained in sub-section (1), a person who has been practicing as a patent agent before the 1st day of November, 1966 and has filed not less than five complete specifications before the said day, shall, on payment of prescribed fee, be qualified to have his name entered in the register of patent agents.”

Under the original provision, the requirement was to have “a degree from any university” in addition to being an Advocate or passing the patent agent examination. Two categories of individuals could act as patent agents the first category was composed of advocates, the second of those who possessed a degree in “science, engineering and technology” and who had cleared a qualifying exam.

The first amendment of 2002 replaced the phrase “degree of any university” with “degree in science, engineering or technology” in section 126(1)(c)(i). This amendment allowed advocates to become patent agents directly without any additional requirements provided they meet the new requirements i.e. a degree in science, engineering or technology.

In 2005, the Act was amended again and section 67(a) of the Patent (Amendment) Act, 2005 deleted section 126(1)(c)(i). The provision which allowed advocates to register as patent agents directly, as a “matter of right” without the need to take any qualifying examination was removed. Pursuant to this amendment, even those advocates with science and engineering degrees did not have a right to directly qualify as a patent agent. Instead all advocates would now be treated like any other citizen and would have to pass the qualifying examination in order to register as a patent agent.

Case/Contentions of the case:

The writ petition filed in 2006 by an advocate, Mr.SP.Chockalingam , after he was deemed ineligible by the patent office to appear for the patent agent examination in accordance with Section 126 of the Patents Act, as it stands today since 2005. The Petitioner challenged the 2005 Amendment and filed the writ petition to declare it illegal, unconstitutional, ultra vires and void.

The first contention was that, the amendment was discriminatory in nature and violative of the fundamental right guaranteed under Article 14, 19 (1) (g) and 21 of the Constitution is also not beneficial to the interest of the common people and the country. It was contended that, amendment to the Act prevented advocates who are more qualified in preparing documents, drafting, transact business before the Controller of Patent, instead it permitted only the degree holders in science, engineering or technology, who have passed the departmental examination conducted by the respondents to be presented as patent agent; curtailing the profession of legal practitioners against the Advocates Act, 1961, such an amendment could not be deemed as a reasonable classification within the purview of Article 14 or as an reasonable restriction under fundamental rights guaranteed under Article 19 (1) (g).

It was argued by the petitioner, that advocates being law graduates of recognized law college or university are entitled to practice as per Section 30 of the Advocates Act, however, after the unreasonable amendment, an advocate has to depend on the other category of patent agent for drafting, filing and appearing before the Controller of Patterns, hence, the amendment is violating Article 21 of the Constitution.

It was argued by the petitioner, that advocates being law graduates of recognized law college or university are entitled to practice before the Supreme Court of India, but are barred from practicing before the controller unless they clears the patent exam; forcing an advocate to depend on a patent agent for drafting, filing and appearing before the Controller, violating an advocates to right practice as listed in Section 30 of The Advocates Act, 1961.

Furthermore, right of patent agents under Section 127 and section 132 (b) of the patent act, itself makes it clear that the same is nothing but the normal duty of any advocate relating to drafting, presenting, filing papers and arguing cases before the Court or Tribunal or other authority, though the nomenclature is patent agents, for which, qualification has been prescribed under Section 126 of the Act, to register as patent agent.

It was noted that the respondents conducts two written papers (as prescribed by them), to qualify to become patent agent, the first test your knowledge about the Act and the Rules there under, and other one is drafting and interpretation of patent specifications. On the other hand to become an advocate, one should have passed BL or LL.B through a recognized university and such degree should have been approved by Bar Council. The Respondents cannot say that in imparting legal education or conducting law examinations, by a recognized law college or university would be inferior to that of the respondents, by conducting these qualifying departmental examination, respondents are unreasonably claiming supremacy over the law degree given by universities and law colleges.

The petitioner urged the High Court to consider whether the 2005 Amendment had been made in public interest, based on reasonable classification or unreasonable class legislation, which would create only a monopoly of certain group of persons, who are amenable to the authorities in the name of patent agents under the Act.

Judgement/Conclusion:

The High Court not only struck down the 2005 Amendment but also criticized the fact that the qualifying exam conducted by Respondents was placed over a law degree in terms of qualifications. Selecting certain group of persons to register as patent agents, deleting advocates, more qualified persons, held to be unreasonable and against the larger interest of the general public. The 2005 Amendment was held to be based on an unreasonable restriction.

Consequent to this judgment, any advocate holding degree in science, engineering or technology would be eligible to file, appear and undertake all responsibilities of a patent agent. He is not required to qualify any exam to practice as a patent agent.

The petitioner expects an appeal to be filed soon believing respondents would be unlikely to let go of the monopoly they had been enjoying for such a long period of time.