Monthly Archives: January 2014

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

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

Brief summary of the case

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

Argument advanced by the appellant

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

Arguments advanced by the respondent

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

Judgment

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

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

Conclusion 

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

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

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A Change in Year Brings Change in IP Laws and Policy

The intellectual property (IP) concepts that are applied today to the national laws and international treaties and organizations date back to eighteenth century.  The IP laws vary from one country to another. The changes in Intellectual property laws also depend on the changes in technology. Due to emerging new technologies and R&D activities, the intellectual property also continues to be constantly evolving and changing.

Over the years countries worldwide have made efforts to make IP system more efficient and effective. This is because countries have realized that Intellectual property plays a significant role in promoting the economy of the country. Intellectual property is one of the fields that majorly encourages international collaborations, especially in the last 20 years. The importance of IP will continue to expand dramatically.

The changes in last two decades in the IP system are much more visible. The year 2013 has already passed while bringing many new changes in the IP. Changes were made ranging from IP laws and policies, and update in internet based database coverage of patents thereby streamlining the IP system. This has been a remarkable year for USPTO (United States Patent and Trademark Office) and EPO (European Patent Office). On January 1st, 2013 a highly refined patent classification scheme known as the Cooperative Patent Classification was launched which is jointly managed by the EPO and the USPTO. This classification system is also adopted by SIPO (State Intellectual Property Office, China) and KIPO (Korean Intellectual Property Office).

The Patent Translate tool managed by EPO, which is a machine translation of patent applications, was already available in 21 languages. Russian, Chinese and Japanese were added this year. Moreover, EPO and PATENTSCOPE have also started adding patent information in the database from other countries as well. WIPO has added China’s national patent collection to the searchable PATENTSCOPE database. EPO has added patent data, especially from Asia.

Efforts are made for streamlining  patent procedures for applicants wishing to obtain patent protection in a wide number of counties around the world. One such effort is made by members of European Union (EU) by introducing Unitary patent package (Unitary patent & Unified Patent Court). Unitary patents will be treated as a single patent in potentially 25 European Union (EU) member states and will not require separate validation and translation in each of those member states. The aim of the unitary patent system is to make Europe more attractive for investors and to bring Europe more into line with patent systems in Asia and the US. The regulations entered into force on 20 January 2013.

Another remarkable event this year was the enforcement of new Leahy–Smith America Invents Act (AIA) in USA which represents the most significant change to the US patent system. This act is designed to bring the US law in line with the rest of the world.  The Act switches the U.S. patent system from a “first to invent” to a “first inventor to file” system i.e. it shifts the systems’ emphasis from the date it was invented to the date its inventor dropped an application at the patent office.

Developed nations have always realized the significance of IP in promoting socio-economic growth. Fortunately, many developing countries are also now increasingly becoming aware of the importance of IP. For instance this year India joined the Madrid System for the International Registration of Marks, which will provide an opportunity to the Indian companies to register trademark in foreign countries. The policymakers in Africa are also making efforts to develop their intellectual property legislation and policy, to enable sustainable development and growth. Tunisia, which is one of the African countries also joined the Madrid System. 2013 is another significant year with loads of new reforms in IP system. Indian Patent Office also starts functioning as International Searching Authority and International Preliminary Examining Authority under the PCT this year.

But as we say there is always room for improvement, still there are many critical areas that require close scrutiny in the IP system. New technologies bring new challenges in IP system. However the countries worldwide are making efforts to ensure the effective and efficient IP policies.

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

IPAB: Nature of Jurisdiction, Power and Authority

Akash Patel, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at the nature of jurisdiction at the IPAB, its power and authority.

In a judgment dated July 08, 2013, a larger bench of Intellectual Property Appellate Board (hereinafter read as IPAB) had decided on two important issues, one relating to IPAB’s power to review its own order and the other relating to grant interim orders on a pending final application.

Background:

In the matter of M/s Shreedhar Milk Foods Pvt. Ltd. (Applicant) vs Mr. Vikas Tyagi (Respondent), Applicant requested for an interim stay order on the registration of Trade Mark on the ground that it was obtained by fraud. Applicant relied upon various decisions of the Court earlier, wherein interim stay was granted. He also referred to Indian Bank Vs.  Satyam Fibres (India) Pvt. Ltd. (Air1996 Supreme Court  2592) and  Grindlays Bank Ltd. Vs. Central Government Industrial Tribunal  And Others  (Air 1981 Supreme Court  606) in support of his contention that every Tribunal  should be considered to have such power ancillary or incidental as are necessary to do justice in a case where if prima facie case is  established, stay must be granted. Respondent opposed for granting stay on the ground that IPAB has no power to grant stay.

Decision:

The larger bench has held that IPAB has power to grant interim order. They have also issued following guidelines while granting interim orders in order to avoid injustice:

  1. The Board will first explore the possibility of main matter being decided expeditiously.
  2. No interim orders shall be granted without hearing the other side, as provided for in section 95(2) of the Trade Marks Act.
  3. If the trade mark and patent have been in force for a considerable period that will be a condition against grant of interim orders.
  4.  Factors such as prima facie case, balance of convenience, irreparable injury, and hardship shall be kept in mind; and
  5. The order is preferably be so worded as to bind only the parties to the proceedings and no one else.

The Bench had also mentioned in judgment, that similar decision would also be applicable to proceedings under the Patent Act, 1970(hereinafter referred as the Patent Act) or under any other Act, which is brought under IPAB.

When IPAB was constituted in September 15, 2003 under section 83 of The Trade Mark Act, 1999, whatever power the High Court was vested with, got transferred to IPAB. IPAB has Original jurisdiction and Appellate jurisdiction and when the power of the High Court was vested in the IPAB, the power did not change. There was nothing contained in the language of section 95 of the Trade Marks Act to exclude the IPAB’s power to grant interim orders in the original application. Section 95 only modulates the manner in which interim order in appeals may be heard.

This is a significant judgment in the history of IPAB. The bench in this judgment has cleared matters that relate to its jurisdiction. Bench held that from the date of its establishment, it was clear that IPAB had both original and appellate jurisdiction. IPAB’s powers in relation to its jurisdiction are parallel to that of High Court as enshrined by Article 227 of the Constitution. In this decision, Bench has recorded the Jurisdiction, Power, and Authority of IPAB. IPAB had both original and appellate jurisdiction and has power in parallel with High Courts in the matters of Trade Marks, Patents and Geographical Indications.

Therefore, this decision will help any person aggrieved of natural justice by the unreasonable acts of the Controller to protect his rights. In such cases where the person feels that he is being aggrieved of his rights due to any unreasonable actions, he can very well approach the Board for seeking relief.

Therefore, based on the above-mentioned facts and background, it is clear for now that there may be distinction between Trade Mark and Patents as regards the possibility of approaching IPAB is concerned for matters relating to original jurisdiction of the IPAB.

Central Government’s power of Revocation of Patent in Public Interest

Gopikrishnan M and Akash Patel, interns at Khurana and Khurana, Advocates and IP Attorneys, looks at Central Government’s power of Revocation of Patent in Public Interest.

The Indian Patent Act,1970(hereinafter Act) empowers the Central Government to revoke any patent granted by the Indian Patent Office if it feels that the said patent is prejudicial to public interest. There are two provisions in the Patent Act, 1970 which empowers the Central Government to revoke granted patents. One is Section 65 of the Act which gives power to the Government to give directions to the Controller to revoke a patent if the Government is satisfied that the invention is one relating to atomic energy for which no patent shall be granted.

Section 65 of the Act says:

65. Revocation of patent or amendment of complete specification on directions from Government in cases relating to atomic energy. –

(1) Where at any time after grant of a patent, the Central Government is satisfied that a patent is for an invention relating to atomic energy for which no patent can be granted under sub-section (1) of section 20 of the Atomic Energy Act, 1962, it may direct the Controller to revoke the patent, and thereupon the Controller, after giving notice, to the patentee and every other person whose name has been entered in the register as having an interest in the patent, and after giving them an opportunity of being heard, may revoke the patent.

(2) In any proceedings under sub-section (1), the Controller may allow the patentee to amend the complete specification in such manner as he considers necessary instead of revoking the patent.

Another important provision related to the Central Government’s power is Section 66 which empowers the Government to revoke the patent if it feels that the mode in which it is exercised is mischievous to the State or generally prejudicial to the public. In such cases, the Central Government has the power to revoke the patent but only after giving an opportunity to the patentee to explain why his patent should not be revoked. After such hearing, if the Government feels that the patentee could not explain why the invention does not affect public interest, it can revoke the patent by making a declaration in the Official Gazette.

Section 66 of the Act says:

66. Revocation of patent in public interest. –

Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked.

The provision has been used twice in India to revoke patents. The first instance was in the year 1994 and the second one happened way later in 2012.

Revocation of Agracerus’s Patent

The first instance was when a process patent was granted to Agracetus, a U.S. company, for genetically engineered cotton cell lines. Around the year 1994, this patent was revoked in public interest because it was viewed as being prejudicial to farmers’ rights. The Govt was of the view that Cotton is an important crop essential to national economy and should not be the subject matter of patents.

Indian Patent Number 168950 titled “A method of producing transformed Cotton Cells by tissue culture” was granted to Agracetus of USA based on the patent application number 919 Cal 87 (filed on 24/11/1987) by the Indian Patent Office.

The main claim of the patent stated:

A method of producing transformed cotton cells by method of tissue culture of immature cotton plants for generation into mature cotton plants, the process comprising exposing hypocotyl tissue of the same immature cotton plant on a medium to a culture to transformation component non-oncogenic Agrobacterium tumefaciens and harbouring a TI plasmid having a T-DNA region, including both foreign chimerix and a selection agent resistant gene.

No “pre grant” opposition was filed by any party and the Patent Office ended up granting the patent.The implications of granting such a patent was realized later and there was mounting criticism from the farmer community that this patent was prejudicial to their interests as it would impact the farming of a major crop of national importance and have negative ramifications on the Indian economy. After China and the US, India is the world’s third largest cotton producing nation. At least 190 million people in the developing world drive all or part of their cash income from cotton growing and handling.

Government Action

In October, 1994, the Indian Government revoked Agracetus’s controversial patent on transgenic cotton. The Indian Government under Section 66 of the Patent Act decided to summarily revoke the patent, “because of its far-reaching implications for India’s Cotton economy”. The government observed that the patent would affect the farmers and the cotton industry which would eventually result in negative ramifications on the Indian Economy.Later the United States also followed suit and revoked Agracetus’s patent.

Revocation of Avasthagen’s Patent

The Second instance was during the year 2012 when the Government revoked Avasthagen’s Patent invoking the provisions of Section 66. Avasthagen had obtained a patent protection for a medicine/tonic for controlling diabetes from the Indian Patent Office. This patent was granted for “synergistic ayurvedic/ functional food bioactive composition”. The patent was for the composition consisting of jamunlavangpatti and chundun and this composition was to be used for treatment of diabetes.

The government of India referred to the Traditional Knowledge Digital Library (TKDL) to revoke the patent. The patent which was granted in April, 2012 was revoked on the grounds of being mischievous and prejudicial to the public.

Avesthagen filed for a patent in European Patent Office (EPO) for the above said composition but when the examiners checked the patent with TKDL database, they provided a report due to which the patent was not granted. The report said that patent did claim subject matter disclosed by TKDL. CSIR had made individual intervention for the same. In April, 2012 a patent was granted to Avesthagen and this was the same patent which was rejected by EPO. IPO said that they did not have access to TKDL database that is why their examiners approved the patent.

Government Action

On getting knowledge about the same, the Government revoked patent invoking Section 66 of the Act.  The Government of India stated in revocation that the use of Jamun for the treatment of diabetes have been long known to India and thus the extract of Jamun will also give effective therapeutic activity for diabetes, and therefore the patent claims subject matter already disclosed and known in public domain through the Traditional Knowledge of India.

Avesthagen argued stating that it might be a TK that these plants are used for treating diabetes but it was not known that when given in combination they shows an aggressive effect. They also stated that by formulating the medicine, they have used an approach which is “innovative, noble and scientific” and screened the medicine for efficacy and safety using modern technology. On defending the patent, the company said that in developing formulation from 3 drugs they used a different approach. They told the DIPP that they had originally selected about 100 plants for the same, which was later shortlisted to 10. On patent being prejudicial to people, the Company said that the invention was novel and provided scientific validation to Indian TK and also said that they will support Indian farmers from whom the plant was bought and will provide employment to people.

The government countered it by saying that for centuries it was known that these plants were used for management of diabetes and thus, this was not an invention. An official of the court stated that when plants are known to act against a particular disease, extracts would certainly perform the same function. Government also said that a patent cannot be granted for validating something that is part of TK.

The Central Government was not content with the arguments raised by Avasthagen and it revoked the Patent which was granted by the IPO.

Conclusion

If we look at the history of Section 66, it can be observed that the Government of India has invoked its powers to revoke patents only twice. In both situations, the Government ensured that public interest is not disturbed due to grant of those patents. The section acts as a correctional provision and the Government is considered as the adjudicating authority, which ensures that interest of public is given more priority than personal interests. The public at large need not approach the Court every time for striking down every such patent. The presence of such provision hence lowers the burden on the Judiciary. Now that the Traditional Knowledge Digital Library is accessible to the Government, it is being anticipated by many that the Government may try to weed out more of such patents.