Monthly Archives: December 2014

Belly Fireman! Rescued by Delhi High Court

In the recent decision of Delhi  High Court in the case of Reckitt Benckiser(India) Ltd v Dabur India Ltd, the Hon’ble court decided on the issue of deceptive similarity between the  television advertisement of Pudin Hara lemon fizz drink and Gaviscon

Facts of the case:

The plaintiffs is a member of  Reckitt Benckiser Group PLC who involved in the various consumer and healthcare products . It also manufactures Gaviscon which provide relief from heartburn and gastro oesophageal reflux. In the year 2006 the plaintiff started using Fireman Device for the advertising and promoting his product in the market. Fireman Device was registered in India in favour of the plaintiffs on 22nd October, 2007 in Class 5.

The defendant is the manufacturer of various Ayurvedic and non-prescription medicines such as Pudin Hara, , Hajmola, Glucose-D etc. Reckitt Benckiser alleging that the ads for Dabur’s Pudin Hara lemon fizz drink had “infringed its trademark and copyright”. The point of dispute is the image  of Fireman /fire fighter.

Issues involved/Contentions

  • In both the advertisement a person is suffering from gastro-oesophageal reflux disease/heartburn.
  • Both the advertisements show fire burning inside the oesophagus.
  • Then a person consumes medicine & the medicine converts into the image of a fireman which extinguishes the fire by sprinkling the product on the stomach walls.

Delhi High Court decision

Trademark infringement

After comparing the advertisement, the Delhi High court concluded that Dabur’s fireman device was not deceptively similar to the registered mark. The mark appears to be different in terms of colour, representation and number. Therefore there was no likely hood confusion and no infringement had occurred.

Passing off

The defendant product i.e  Pudin Hara Lemon Fizz  is sold in Indian market since April, 2010 whereas the plaintiff product i.e Gaviscon was introduced in Indian market in November 2011.Hence Reckitt Benckiser could not establish goodwill  in India prior to Dabur and the element of misrepresentation was also missing. So, Dabur had not committed the tort of passing off.

 Copyright infringement

The court concluded that there were several dissimilarity between both  the advertisement  in respect of their  colour, representation and image of fireman device. The court relied on the Supreme Court decision in RG Anand v Delux Films (1979 SCR (1) 218) to reiterate the established principle that only the manner of expression of ideas is protected under copyright law (not the ideas themselves). Thus, the court held that there had been no copyright infringement.

 The court has, however, said that if there is any modification in the television Commercial Ad, Dabur would need to take necessary permission from the court.

About the Author: Ms. Pallavi Sharma, Trademark Attorney at Khurana and Khurana, Advocates and IP Attorneys and can be reached at:pallavi@khuranaandkhurana.com

Gentle Update on Khurana & Khurana: Acquisition of Closer2Patents and Opening Up of Mumbai Branch Office

We are very glad to announce Khurana & Khurana, Advocate and IP Attorneys (K&K) ‘s acquisition of Closer2Patents, a growing IP Consulting Practice based in Mumbai, effective 1’st Jan 2015. With a practice currently spread across three offices, Delhi, Pune, and Bangalore in India, K&K is among the leading IP and Commercial Law Practices with over 50 Practitioners and rankings/recommendations from Legal 500, Chambers, IAM, Managing IP, among many others, wherein representation of numerous Fortune 500 Corporates, Medium Sized Entities, Universities, and Individual Inventors/Start-ups, makes K&K among the most promising IP and Commercial Law Firms in India. Mumbai based Closer2Patents, on the other hand, founded by Abhishek Pandurangi, is a 5 year old growing IP Consulting Practice with over 10 Practitioners and a strong Prosecution and Consulting Practice in the IP Space, wherein acquisition of Closer2Patentscomplements the geographic presence of the firm that is strongly committed to client satisfaction and very sensitive to their feedback. With the integration between the firms, K&K would now be starting with a Mumbai Office, which would be spearheaded by Abhishek as a Partner in the firm and would expand the service offerings to areas of Media and Entertainment. With a strong base of Pharma and High-Technology clients, an office in Mumbai would help K&K consolidate its Practice in the financial hub of the Country, and offer its existing and potential clients with its strong and efficient service offering.

Recent decision of IPAB in the case of E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors

This article is relates to a recent judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 4th December 2014 in the case “E.I.DU Pont De Nemours & Company V. Galpha Laboratories and Ors.

Brief Facts:

On 11th March, 2009 the trademark registry refused the opposition of the E.I.DU Pont De Nemours & Company (appellant herein) and allowed the application of trademark “NOMEX” under application No.499603 in Class 5 of the Galpha Laboratories (respondent herein) under the provisions of the Trade and Merchandise Marks Act,1958. Thus being aggrieved by the rejection by Indian trademark registry, an appeal was filed by the DuPont to IPAB. The copy of the decision made by IPAB can be accessed here.

Background:

The appellant’s Company is a limited company incorporated under Company’s Act 1956 having registered office in Mumbai. The appellant has production facilities for DuPont Crop Protection Products, Dupont Liquid Packaging Systems. The appellant has claimed that they have spent huge amount of time, money and efforts in promotion of trademarks registered under various classes in world over including India. The appellant has further claimed that they are registered proprietor of many trademarks covering more than 50 countries. The appellant has obtained registration and is registered owner of trademark “NOMEX” in many countries including India. The appellant has further stated that all the above registrations of the trademark has been renewed from time to time and are valid and subsisting. The appellant stated that they have obtained trade mark NOMEX under class 22, 16, 17, 23 and 24.

The appellant came to know through an advertisement dated 16th April, 1999 that vide journal No.1197, the respondent had filed an application under the name “NOMEX” vide application No.499603 dated 19th October,1988 under the Trade and Merchandise Marks Act, 1958 in respect of pharmaceuticals, medical preparations and substances in Class 5 claiming user as proposed to be used. The appellant has filed a Notice for Opposition dated 13th of August,1999 vide Opposition No.BOM-54010 against the registration of the trademark “NOMEX” in class 5 under the provisions of Trade and Merchandise Marks Act of 1958.

Decision by Assistant Registrar:

After hearing the pleadings by both the parties, the Assistant Registrar has passed an order on 11th of March, 2009 rejecting the Opposition of the appellant on the below grounds.

(i) The Assistant Registrar accepted the contention of the respondent herein that they took search on the trademark registry for the trademark “NOMEX” in Class 5 and also made a market survey in the market for medicinal products and there was no conflicting trademark in Class 5.

(ii) The Assistant Registrar held that there is no similarity and identical with the mark that of the opponent as per section 11(A) revised under section 11(1) of the Act. Hence, there is no possibility of confusion and deception under section 11 (C) revised under section 11 (3) of the

Trademarks Act, 1999. The goods of the applicants are entirely different from the opponent. Further the Assistant Registrar rejected the contention of the opponent that they have not proved prior user period from 1984 to 1988 and used his discretionary power under section 18(4) of the Act by granting registration of the trademark “NOMEX” in class 5 to the respondent.

Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said Trademark opposition.

 Arguments advanced by the Appellant:

It was argued by the appellant that the Assistant Registrar has failed to appreciate the appellant’s use of the trademark “NOMEX” in the international market since 1963 and in India since 1984. Further Trademark registry has failed to appreciate that the trademark adopted by the respondent is identical to the appellant, who is a prior adopter and user in India. It was further contended that the Assistant Registrar has erred in holding that usage of the mark by the respondent would not cause confusion and deception amongst the members of the public and trade as the respondent buyers are different from that of the appellant.

The appellant further claimed that “NOMEX” is a well-known trademark. The appellant also argued that the Assistant Registrar has failed to appreciate that the respondent has no use and is yet to use the mark and it is identical to the appellant trade mark. The Assistant Registrar has erred in holding the appellant has not proved prior user from 1984 to 1988.The Assistant Registrar erred by disallowing opposition of the appellant and further erroneously used his discretionary power under section 18(4) of the Act, which are contrary to principals of law. The Assistant Registrar has also erred in holding the respondent had taken proper steps, despite of no search report brought on record.

Arguments advanced by the Respondent:

The respondent contended that they had taken care and prior search in selection, adoption as there was no prior use of the trademark in the pharmaceutical industry. The respondent conceived and coined the trademark “NOMEX” for use in respect of medicinal and pharmaceutical preparations falling in Class 5. Further the respondent argued that the registration of application “NOMEX” in Class 5 will not cause prejudice to the appellant under section 9 of the Act as under section 8 to respondent trade mark is distinctive and capable of distinguishing from the goods of the appellant.

Decision of IPAB:

IPAB stated that while perusing the impugned decision of the Assistant Registrar of 11th , March, 2009, the Assistant Registrar has rendered a short cryptic order without assigning cogent reasons by simply quoting the provisions under the Trade and Merchandise Marks Act, 1958 revised under sections 11(1) and 11 (3) of the Trademark Act, 1999. The impugned order of the Assistant Registrar failed to disclose on what grounds or on what material record that he has allowed the registration to go ahead by rejecting the contentions of the appellant / opponent and further does not disclose any judicious reasoning, while exercising his discretionary power vested with him under section 18 of the Act for granting the registration to the respondent herein.

Further IPAB observed that the Assistant Registrar at one end admits in his order that the marks are similar and identical, without divulging sound reasoning as to how he had arrived into conclusion that the mark though identical and similar but still there is no confusion or deception. IPAB stated that the Registrar has failed to discuss the cogent reasons in accepting the application of the respondent allowing their trademark to be registered.

Thus in the light of averments, IPAB set aside the impugned order by trademark registry observing that the order was passed in gross violation of principal of natural justice and remanded the matter to the Assistant Registrar to consider the matter afresh by affording opportunity to both sides and pass orders on merits in accordance with law.

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

‘Pro Tem’ Relief to Xiaomi for importing and selling of Qualcomm based Handsets in India

Reportedly, a bench of Delhi High Court temporarily allowed Xiaomi to sell few of its devices in India about a week after the suspension of its sales in the third largest smart phone market of the world.

Xiaomi as well as online seller Flipkarthave been injuncted by Delhi High Court in its order dated 8th December 2014 from selling its line of smart phones for it has been prima-facie found to be infringing patents of Swedish technology company Telefonaktiebolaget LM Ericsson. We have reported on Xiomi injunction which can be found here.

Being aggrieved by the order passed by Single judge of Delhi High Court dated 8th December 2014, Xiaomi filed appeal challenging the order. Xiaomi had contended that Ericsson suppressed the fact that the Chinese mobile maker has also used chipsets of Qualcomm which has a license to use patents of the Swedish company. The bench was also told by Senior Advocate KapilSibal and Advocate AjitWarrier, appearing for Xiaomi, that on each Tuesday around one lakh units are expected to be sold on the site. Xiaomi has contended that it did not infringe Ericsson’s patents as Qualcomm has obtained a license from the Swedish company for its patented technology.

Therefore, reportedly on Tuesday 16th December 2014, the Hon’ble High Court granted permission to Xiaomi to continue importing smart phones which comprises of Qualcomm chipsets in them until the next scheduled date for the matter on 8th January 2015 subject to the condition that Xiaomi shall deposit 100 Indian Rupees for each device sold by them towards royalty in favor of the Registrar General of the Delhi High Court and the amount so deposited be kept in a fixed deposit.

Further, the court has also directed Xiaomi to furnish an affidavit, prior to the next date of hearing before the single judge, which shall disclose the number of devices sold by it till then along with the particulars of the invoices of the Qualcomm chipsets purchased by it.

As reported, an Ericsson spokesman said in an email to Reuters that “Xiaomi needs a license from Ericsson for all their phones imported to India, which will be clarified in the upcoming hearing” whereas Xiaomi said company would not comment on the developments.

As per the company’s website, Xiaomi Mi3 and Redmi 1S use Qualcomm chips while Redmi Note device uses a processor from MediaTek Inc.

Sources: Reuters and NDTV

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

Revocation Application/ Proceeding Summary: Improved Diffuser for an Air Conditioning System

Applicant in this case is M/s Air Master Equipments India (P) Ltd and Respondents are:

  1. Mr. Ramesh Nana Mhatre, who is the inventor and Applicant of the granted patent application being discussed, and
  2. Controller of Patents who granted the patent post examination and prosecution. Title of the application is ‘An improved Centre Core, Intermediate Core and an outer frame for a diffuser for use in central air conditioning system and an improved diffuser incorporating them and the method of manufacturing the same’ and case number is TRA/1/2008/PT/CH. The order number of case being discussed is NO 75/2011

 To brief a bit on the understanding the subject matter, in a central air conditioning system, air that is conditioned to a desired temperature at one source is distributed to various places through a network of ducts, and a diffuser is required at every outlet of the duct. Generally, these ducts are of square or rectangular cross section, most probably due to their easy self-resting and properly adjusting nature in corners of the ceiling in the buildings and vehicles, and therefore the diffuser used at the outlet of an air distribution duct is also of square or rectangular shape. The diffuser fitted at the end of the air distribution duct projects/exposes out from the ceiling of a room or any other space required to be air conditioned, and therefore plays a part in interior decoration or overall look of the room/space. Respondent, through his invention, therefore wishes to solve following drawbacks in existing diffusers:

  1. Sometimes, the side sections of each core and outer frame are welded together at corners to avoid gaps, or corner sections, after fixing into the grooved channel sections on the back of two adjacent side sections, are crimped for assembly. The cores are inter-connected through connecting strips that are welded to the collars of each core. The welding and crimping operations require extra equipment as well as these operations are very time consuming thereby increasing the cost of production.
  2. Due to the grooved channel sections at the back side of each side section and corner sections used for the assembly or cores, the weight of the diffuser is increased which also increases the cost of production.
  3. To avoid gaps at the corners of the core(s), the side sections of the cores are produced with high precision, which increases the cost.
  4. On assembly some times there remains a gap between two side sections, at the corners of the core(s), due to which diffusers are rejected, resulting into a big loss of production i.e. material and labour and which further increases the cost of production.
  5. When a diffuser is attached to a duct and conditioned air is blown through the duct, it is noticed that the air is not diffused equally to all sides at the corner sections as the grooved channel sections or ridges at the back surfaces of the cores come in the path of air and disturb the equal and proper diffusion of air in all directions. The enclosed collars of the centre core and intermediate core(s) rebounds the air, thereby reducing the flow or air through corners of the diffuser.
  6. As the diffuser is manufactured in several pieces, which are assembled, manufacturing process is cumbersome, time consuming and labour oriented and increases the cost of production.
  7. Due to the grooved channel sections and corner sections or ridges and welding spots on the back surface of the core(s), dust is accumulated therein, which is difficult to clean.
  8. Dust is also accumulated in gaps at corners on the front surfaces of the cores, which gives a dirty look to the diffuser and tarnish interior decoration look of the room/space.

 A main object of this invention is therefore to obviate the above mentioned drawbacks of the existing diffusers and to provide an improved diffuser for central air conditioning system, wherein each of the central core and/or the intermediate core(s) and/or the outer frame are manufactured in a single piece and both the outer as well as inner surfaces of the cores and/or the outer frame are smooth without any extra section, projection or groove which dispenses with the requirement of extra material, and the time taken for assembly is also very much reduced and at the same time there is no obstacle in the flow path of air, which is diffused equally in all the directions. As the cores are manufactured in a single piece, there is no question of any gap at the corners thus no chance of rejection of the product and no need of any welding and crimping operations and hence the cost of production of the diffuser will obviously be very less.

 Respondent No. 2 (Controller of Patents) was satisfied that the invention was patentable and accordingly the patent was granted vide No. 181821 on 18th Jan, 1995. On 25th August 2006 the Respondent No. 1 sent a legal notice to the Applicant, wherein according to this notice, the Applicant was inter alia informed of the patent in favour of the Respondent and that the Applicant was not entitled to manufacture or sell air diffusers identical to the patented product or substantially similar to it. The Applicant sent a lawyer’s reply dated 13-9-2006 alleging that  the patented product was known in the market, it was neither new nor novel, and that there is concealment of material facts and that the patent was obtained by fraud. It was also alleged that the Respondent was nothing but a job-worker.

 After this exchange of correspondence, the Applicant filed O.P. 704 of 2006 before the Hon’ble Madras High Court for revocation of the patent. This was transferred to IPAB. Counter statement was filed and both sides also filed the evidence to support their case.  Applicant submitted that there was no novelty in the invention and it was obvious and also submitted that the main feature of the invention even according to the Respondent was that it was a single piece centre core to facilitate clean flow of air. He submitted that diffusers have been known for long and there was evidence to show that there was prior art where the single piece units were known. He referred to Series 5700 louvre face ceiling diffusers. From the paper book, he pointed out that there is specific reference to one piece stamped steel construction and that this prior art was also meant to provide an economic solution to air distribution problems requiring equal throw in all directions. According to him, this anticipated the patented product. Further, he submitted that if the only difference is the manner in which the inner assembly can be removed, that hardly qualifies for the grant of a patent.  He then referred to another prior art.  Series 5800 and 5800A louver face Directional Diffusers. He submitted that this too indicated provision of equal throw, quick release of inner assembly for immediate access and ease of installation. According to him, the fact that the prior art was used for ceiling air–conditioners while the patent product was for central air-conditioner will not make it non-obvious.  He also referred to Titus and Trox catalogues, without bearing any dates. On being asked to provide the dates of these documents, he was unable to give any acceptable evidence. Therefore, only two prior arts were provided by the applicant.

 Respondent (Patentee) on the other hand submitted that till 1995 there was no prior art that anticipated the claimed subject matter. All the single piece units were extruded aluminium, which meant that metal sheets were cut and joined. The patented product was, on the other hand, made as a single unit from a special die in a metal press.

 Respondent also produced, before the IPAB board, samples of the prior art and the patented product and submitted that it was wrong to call the Respondent a job worker and that he had won many awards and recognition of his expertise. He submitted that the patented product was supplied by the Respondent to persons in the same business not only in India but abroad too. He submitted that while the prior art shows joints, corners and gaps, the patented product is one smooth surface with no gaps or joints. Also, in the prior art, the assembly is detached by turning clockwise, whereas in the patent product, it is held by spring and is removed by applying pressure. He also submitted that in the prior art, there is a buttoned hole in the centre cone, while the patented product has an outwardly and downwardly directed slanting surface with neither a button nor hole. He submitted that the prior art has uneven surface and crimping and that the air is distributed by rebound, whereas in the patented product, there are no hindrances to the flow of air. The patented product has clear slots while the prior art does not. He further submitted that the prior art is limited to 2 or 3 cone inner assembly, whereas the patented product can have multiple cores depending on the requirement. The Respondent further pointed out to the tabular column in the Respondent’s counter statement where each and every distinguishing feature of the patented product is explained and submitted that the prior art does not teach the invention and that the patented produce is new and non-obvious.  He also submitted that, in addition to the counter statement, the Respondent has marked in evidence the affidavit of one Mr. Pankaj Dharker of impeccable credentials who has affirmed that the product is an invention. He submitted that there is no proof of wrongful use or suppression of information and therefore the Applicant can not raise these grounds without proof. As regards prior publication, the Respondent submitted that there should be material to show that it was published. Respondent further submitted that as regards the ETL report, no reliance can be placed on it without an affidavit to file it as evidence, and in any event, it only refers to diffusers constructed of extruded aluminium, which can not be prior art as far as this product is concerned.

 Submissions were heard and the matter was examined by Hon’ble Justice Prabha Sridevan, wherein it was concluded that the Respondent was most certainly not a job worker and that the evidence filed by the Respondent shows the number of awards and recognition of his merit that he has received from various people including the Government. It was further held that the Applicant also did not seriously urge that stand and that the applicant had not filed any evidence apart from the two prior arts to support its case. It was further stated that the Respondent, on the other hand, had filed a very important piece of evidence that was the affidavit of the expert in the field and spoke of the disadvantages that existed in the diffusers prior to 1995. Evidence of Pankaj Dharker showed that in the existing art, because of the corner sections and the grooved channels, flow of the air was obstructed and that there was a reduction of airflow because in the prior art air rebounded. It was also appreciated that the assembly of various parts was a costly process and that the prior art required joining of the various parts and if this was not done with a high degree of accuracy, there was likely to be higher rate of rejection. Furthermore, it was noted that the prior art designs were aesthetically inferior and that the accumulation of dust was high. His affidavit showed the prior art and the patented product in comparison, both with photographs and with explanatory notes. From the affidavit of the respondent and the supporting evidence, it was concluded that the prior art series 5700 and 5800 did not teach the patented product, and that the claimed subject matter was a new invention that served the object of the invention and also avoided the existing drawbacks of the prior art. 5700 and 5800 are the same except for the fact that 5700 has a 2 cone assembly, while 5800 has a 3 cone assembly. The TROX and the Titus catalogues were not considered since there was no date and It was not know if they are prior to the patented product, but the expert dealt with even those products and has given the opinion that they do not teach this invention. A test for obviousness was applied and it was concluded that the invention was non-obvious. In view of the reasons stated above, it was confirmed that the invention was novel and non-obvious and the revocation application was dismissed.

About the Author: Mr Ankur Sehgal, Patent Associate at Khurana and Khurana, Advocates and IP Attorneys and can be reached at: ankur@khuranaandkhurana.com

News Snippet: Novartis sues Cipla for infringement of patents covering “Onbrez”

In a latest update, Novartis has sued Cipla for infringing its patents on “Onbrez” (Indacaterol) after Cipla lunched its generic version for Indacaterol in October claiming “urgent unmet need” for the drug in India.

Earlier, as we have reported here, Cipla approached Govt. of India to exercise its statutory powers to revoke the five patents covering Indacaterol granted to Novartis, which is yet to be decided.

Novartis requested high court to permanently restrain Cipla from manufacturing Indacaterol in any form and selling it in India. It also sought damages for infringing the five Indian patents covering Onbrez.. In reply, Cipla contended that “Onbrez” sold by Novartis is too expensive and is not easily available to the public. Delhi High Court has reserved its verdict on January 9 after hearing detailed arguments by both parties.

CIPLA’s plea for revocation of Novartis Patents for Onbrez may face major set back by the Government

As reported in TOI, the Indian Government has found very little merit in Cipla’s plea for waiver and cancellation of Patent rights for chronic obstructive pulmonary disease (COPD) drug over which Novartis has exclusive rights. We have reported on Cipla’s plea here.

Background:

Cipla, previously approached the Department of Industrial Policy and Promotion (DIPP) to exercise its statutory powers under Section 66 and Section 92 (3) to revoke Indian Patents IN222346, IN230049, IN210047, IN230312 and IN214320 granted to Novartis AG for the drug Indacaterol and is currently selling under the brand name Onbrez. The said drug is one of the preferred medications for COPD.

The relevant sections 66 and 92 of the Indian Patents Act are as follows:

  1. Revocation under section 66:

Section 66 states “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”.

  1. Special provision for compulsory licences on notifications by Central Government

Section 92 (3) states Notwithstanding anything contained in sub-section (2), where the Controller is satisfied on consideration of the application referred to in clause (i) of sub-section (1) that it is necessary in—

(i) a circumstance of national emergency; or

(ii) a circumstance of extreme urgency; or

(iii) a case of public non-commercial use,

which may arise or is required, as the case may be, including public health crises, relating to Acquired Immuno Deficiency Syndrome, Human Immuno Deficiency Virus, tuberculosis, malaria or other epidemics, he shall not apply any procedure specified in section 87 in relation to that application for grant of licence under this section:

 Provided that the Controller shall, as soon as may be practicable, inform the patentee of the patent relating to the application for such non-application of section 87.”

Cipla’s Contention in the Representation:

  • Cipla argued that the causes of COPD are several and the sheer magnitude of the disease as per the publicly available data which is sufficient for the Central Government to invoke the provisions of Section 92 and to treat it as an “epidemic” or a “public health crisis”. Such exercise of power in the present case would be in consonance with the avowed purpose for which Section 92 has been enacted.
  • Cipla also contended that Novartis has been granted these patents since 2008-09 but has chosen not to manufacture the same in India. However, Novartis merely imports a negligible quantity of these products manufactured in Switzerland through its licensee Lupin Pharma as per its own data filed before the Patent office. As submitted by Novartis in IPO in Form 27, the import for the year 2013 is a meagre 53,844 units which do not satisfy even 4,500 patients annually which is a shortage is more than 99.97 percent.
  • Further Cipla contended that cost of the drug is also very high for a patient in India. The estimated cost of the drug Indacaterol as imported and sold by Lupin Limited, under the trademark Onbrez is about Rs.2000/- per month per patient. On the contrary, the proposed drug of Cipla under name UNIBREZ would be costing approximately Rs. 400 per month.

 It is pertinent to note that Section 66 has been invoked only on two occasions earlier. Firstly it was invoked for the case of a process patent granted to Agracetus, an American company for genetically engineered cotton cell lines. The said patent was revoked by the Central Government in the year 1994 keeping in mind public interest and the fact that genetically engineered cotton, being a product of concern for the national economy, particularly for agriculturists, ought not to be the subject matter of a patent monopoly. Secondly in 2012, a patent granted to Avesthagan Limited for a “synergistic ayurvedic/ functional food bioactive composition” i.e. the composition consisting of Jamun, Lavangpatti and Chandan to be used for treatment of Diabetes. In light of the public interest in using traditional knowledge for curing and treating Diabetes, the said patent was also revoked under Section 66 of the Act. However pertinently, both the patents were revoked due to cloud over patentable subject matter.

It would be prejudiced to comment on the fate of the matter at this stage. However as per TOI the Govt. may turn down the plea of Cipla for revocation of Novartis patent.

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

Xiaomi Injunction: Yet another injunction given too soon?

In CS(OS)  3775/2014, as we understand from multiple sources, Xiaomi has been injuncted from manufacturing its line of smart phones for it has been prima-facie found to be infringing on certain standard essential patents of Ericsson. Although the order is not uploaded as yet, we understand that the patents used against Xiaomi, by Ericsson, are the same essential patents on which Ericsson had also earlier filed an infringement suit against Micromax, not too long back ago. The question being examined is if it was actually necessary to issue the order ex-parte or whether a short date could have been given to Xiaomi to be served the plaint and summoned for the hearing. Also, we surely would expect Xiaomi to file an appeal to vacate the order quite soon.

                We also understand from sources (such as Spicy IP) that the ex-parte order injuncts Xiaomi from selling, advertising, manufacturing or importing devices that infringe the SEPs in question. The judge also directed the Customs officials to stop the imports under the IPR Rules, 2007. Moreover, local commissioners have been appointed to visit Xiaomi officers to ensure the implementation of these orders. There are presumed to be around eight valid Ericsson declared standard patents in context, based on which interim injunction/Custom enforcement/IPR enforcement rules were also issued against Micromax. During the appeal in the Micromax case as well, it was argued by the counsel appearing for the appellant that there is no presumption in favour of a patent holder on the strength of a patent being registered, and had also urged that normally the rule of law is not to grant injunction when issues pertaining to violation of patents arises for consideration before the Courts for the reason damages would be a good measure. We earnestly believe the same to a very strong argument keeping in context that damages/accounting of profits can always be retrospectively granted/ordered to be paid for, and moreover to a company as huge as Ericsson, how can the loss be irreparable, as the same can always be regained even if the defendant is given an opportunity to present its arguments. Furthermore, even in the Micromax case (CS(OS) 442/2013)), if just within a span of around 10 days, an initial licensing arrangement could be agreed to between the parties (Ericsson and Micromax) through an initial royalty rate of 1.25% of sale price for GSM phones, 1.75% of sale price for GPRS + GSM phones, 2% of sale price for EDGE + GPRS + GSM phones, and 2% for WCDMA/HSPA, couldn’t the same have been taken as a precedent and Xiaomi been ordered to start paying the same royalty instead of simply granting a blanket injunction against the company, which makes it even harder to impose on the existing set of products/devices out there in the market, and making it a hazy picture even for the current distributors/vendors/suppliers. In fact, in the same case (CS(OS) 442/2013)), a recent order on 12’th Nov 2014 further revised/lowered the royalty rates, which would be applicable retrospectively from the date of the suit, wherein the rates have now come down to .8% for GSM and GPRS and GSM devices, and around 1% for other devices. Furthermore, in the same very case, in the order of 14’th Oct 2014, the plaintiff (Ericsson) agreed to produce six agreements with different operators  containing the terms and conditions, in a sealed cover, which according to them are somewhat similarly placed as the current Defendant company. The question in context that comes in mind is then why couldn’t a similar arrangement been asked for, having already had such a strong precedent, wherein the same plaintiff (Ericsson) could have been asked to submit agreements/arrangements with few other similar Indian parties, and then an initial royalty rate could have been imposed on Xiaomi till the next hearing.

                Having seen a growing number of ex-parte interim injunctions being issued by the High Courts, it gives visibility to a disturbed atmosphere where no opportunity whatsoever is being given to the Defendant to make an argument and try to arrive at a settlement, and instead a strong push back is created against the Defendant that makes it much harder for them to file an appeal, get the interim vacated, and in the meanwhile, although for a short period, comply with the harsh interim orders, which may have a long term impact on its hard-built reputation/sales, all especially in cases where the only injury to the plaintiff is monetary in nature and not actual products/services/customers being disturbed. We earnestly hope that the Micromax case could have been taken as a strong precedent and anticipating an appeal, a higher royalty rate could have been imposed.

About the Author: Mr Paras Khurana, Patent Associate at Khurana and Khurana, Advocates and IP Attorneys and can be reached at: paras@khuranaandkhurana.com

OMNIBUS CLAIMS

Omnibus is a Latin word meaning ‘For all, for everyone’. The dictionary defines omnibus as ‘A printed anthology of the works of one author or of writings on related subjects’. The key discussion in this article will be pertaining to omnibus claims as relevant to a Patent application, their significance, scope and current status of allowance of omnibus claims with respect to different geographical regions.

Patent claims are the most integral part of a patent application, precisely claiming the aspects of the process/ product/ technology that the inventor claims to be novel. These precise claims are described in the detailed description in terms of their functionality, advantages and novelty as compared to the prior art based on the Patent subject under discussion. Claims provide the basis for extent of protection conferred in a patent application and are therefore the most important part of the application forming the basis for examination/patent prosecution and litigation proceedings. The two basic types of claims are independent claims and dependent claims. Claims further can be defined as Jepson claim, Markush claim, Means-plus-function claim, Product-by-process claim, Swiss-type claim and Omnibus claim based on the structure.

An omnibus claim is a claim which refers to the description and/or drawings as the subject matter of the claim.  Omnibus claims limit the claim scope to only what the applicant actually disclosed.  Despite of this however, there have been cases where the omnibus claim was the only claim left at the end of validity challenges and sometimes the sole remaining claim upon which to base an infringement action. Therefore for patent applications that are not very strong, omnibus claims can play an integral role to serve the purpose of filing the patent application and forms the sole basis of protection of claimed novelty. A key difference between omnibus claims and independent/dependent claims is that while non-omnibus claims draw boundaries of what is being claimed as the novelty and dependent features of novelty, omnibus claims expand those boundaries to include the parts of the invention mentioned in the specification and drawings but not expressly mentioned in the claims. This is why an omnibus claim is usually added as the last claim in order to include the drawings and description within the scope of the claims and ensuring that no aspect of the invention has been missed out. Hence, inclusion of omnibus claims is recommended in jurisdictions where applicable, for the sake of protecting whatever is disclosed in the drawings and specification apart from the claim.

Omnibus claims can be narrowly or broadly drafted based on the patent application and scope of coverage, and can also include both narrow and broad omnibus claims. The narrow omnibus claims are intentionally limited in scope, and examples thereof are the following:

            An article as claimed in Claim 1, substantially as herein described and illustrated.

            A method/process as claimed in Claim 10, substantially as herein described and illustrated.

            A compound as claimed in Claim 1, substantially as herein described and illustrated.

            Use of a compound in the manufacture of a medicament substantially as herein described and illustrated.

            A substance or composition for use in a method of treatment as claimed in Claim 1, substantially as herein described and illustrated.

These narrow omnibus claims should be construed as being limited to each and every feature which could possibly be relied upon to distinguish the invention over prior art.  They are intended as a last ditch attempt to obtain a valid claim which will be infringed by a competitor exploiting the preferred version or versions of the invention, as described and illustrated with reference to the Examples and/or drawings. In the worst situation a narrow omnibus claim could end up as the only valid claim after a successful attack  on  the  validity of the other claims in a patent, e.g. in defence of an infringement action by the patentee.  Indeed, in the case of Frank & Hirsch (Proprietary) Limited v Rodi & Wienenberger Aktiengesellschaft, 1959 BP 24 TPD, it was the narrow omnibus claim in the patent in question, which was held to be both valid and infringed.

Few examples of broad omnibus claims are the following:

            A new article, substantially as herein described.

            A new building method, substantially as herein described.

            A new compound, substantially as herein described.

            A new use of a compound, substantially as herein described.

A substance or composition for a new use in a method of treatment, substantially as herein described.

            A new process for preparing a compound, substantially as herein described.

Where a patent application includes several independent conventional (i.e. non-omnibus) claims which cover several different aspects of the invention, a single broad omnibus claim such as the following may be drafted:

            A new article, building method, or building system, substantially as herein described.

            A new compound, pharmaceutical composition, preparation process, or use in the manufacture of a medicament, substantially as herein described.

Considering the above we can conclude that use of omnibus claims can be a huge advantage and a very useful tool while drafting a patent application in order to provide maximum protection. However omnibus claims can also be misused to claim more than true intended novelty as prescribed by the inventor. For this very reason world-wide use of omnibus claims is mixed.  Currently, New Zealand, South Africa and the United Kingdom permit omnibus claims.  The United States, South Korea, China, Israel, Australia and India do not permit omnibus claims.  The use of omnibus claims in Canada and under the European Patent Convention is strictly limited.

About the Author: Mr Ankur Sehgal, Patent Associate at Khurana and Khurana, Advocates and IP Attorneys and can be reached at: ankur@khuranaandkhurana.com

Business Method Patents

During the recent visit of Indian Prime Minister to USA, one of the issues that figured prominently in talk agenda was IP related issues. American business community especially those from pharmaceutical industry had been lobbying with their government to pressurize India to bring Indian Patent Act and its provisions in aligned with global systems so that their investments can be legally protected.As of late India has been looking for increased investment both in infrastructure projects and technology they chose the Indian Prime Minister’s visit as a way to get their concerns addressed.

With above backdrop, it is natural to look for areas in IP domain where Indian Patent Act and its provisions deviate from those of other countries. One issue on which Indian Patent Act differs from many others especially USA is non-patentability of Business Method Patents in Indian Patent Act.

Summarized below is the information related to Business Method Patents and policy and practices adopted by different countries in this respect.

Overview:
Business Method Patents is one of the most amazing topics in the patent industry though in India according to the Indian patent Act and Rules these are not patentable. A business method may be defined as “a method of operating any aspect of an economic enterprise”.First of all let us have a look at some basic points related to Business Method Patents and how these Patents help in improving/growing business for both independent inventors and major corporations.

Business Method Patents are a class of Patents which disclose and claim new methods of doing business and include new types of e-commerce, insurance, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Every company has its own strategy and goals and accordingly evolves an approach to achieve them. The approach may involve method of marketing their product, method of giving importance and weight age to their client, method of carrying out business transactions including financial transactions and other such related aspects. Companies invest huge amounts of their resources to innovate and develop new and unique systems. These companies would like to ensure that their innovative methods and approach is be protected. Business Method Patents can be one way of protecting such systems.Hence Business Method Patents help inventors or companies to prevent or stop their competitors or other firms from making use of their unique ideas and work.

A cutting-edge issue in regard to business-method patents is whether they are patent-ineligible because they are not “technological,” regardless of whether they meet the other criteria of patent-eligibility and patentability.

History :

For many years, the USPTO took the position that “methods of doing business” were not patentable. However, with emergence in the 1980 and 1990s of patent applications on internet or computer enabled methods of doing commerce, USPTO found that it was no longer practical to determine if a particular computer implemented invention was a technological invention or a business invention. Consequently they took the position that examiners would not have to determine if a claimed invention was a method of doing business or not. They would determine patentability based on the same statutory requirements as any other invention. The allowance of patents on computer implemented methods for doing business was challenged in the 1998. The court affirmed the position of the USPTO and rejected the theory that a “method of doing business” was excluded subject matter.The USPTO continued to require, however, that business method inventions must apply, involve, use or advance the “technological arts” in order to be patentable. This was based on an unpublished decision of the U.S. Board of Patent Appeals and Interferences. However, this requirement could be met by merely requiring that the invention be carried out on a computer.

In October 2005 the USPTO’s own administrative judges overturned this position in a majority decision of the board in Ex Parte Lundgren, Appeal No. 2003-2088 (BPAI 2005). The board ruled that the “technological arts” requirement could not be sustained as no such requirement existed in law.

In light of Ex Parte Lundgren, the USPTO issued interim guidelines for patent examiners to determine if a given claimed invention meets the statutory requirements of being a process, manufacture, composition of matter or machine. These guidelines asserted that a process, including a process for doing business, must produce a concrete, useful and tangible result in order to be patentable. It does not matter if the process is within the traditional technological arts or not. A price for a financial product, for example, is considered to be a concrete, useful and tangible result.

There have been further US supreme court rulings on the subject and as on date, litmus test for patent eligibility of business processes is: first, processes that transform an article from one state or thing to another are patent-eligible regardless of whether their use requires a machine. Processes involving transformation of abstract financial data,are probably patent-ineligible. Second, processes that do not make patent-eligible transformations are patent-eligible only if they are claimed to be carried out with a “particular machine.

First Business Method Patent was filed in Japan by a software company. United State was the second country to get Business Method Patent in patentable criteria. Since then number of Business Method Patentshave been filledandgranted. This indicates the confidence and success which the business companies have in Business Method Patents. [Source: Wikipedia]

CLASSIFICATION

Business Method Patents have also been part of international discussions and the same have been included in WIPO agreement.  According to international classification done by WIPO Business Method Patents are divided into a number of classes which basically fall in G06Q class and are defined as :

“DATA PROCESSING SYSTEMS OR METHODS, SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES, NOT OTHERWISE PROVIDED FOR”

Business Method Patents in different countries:

  • Business Method Patents in USA:

USA is one of those countries in which large amount of business Method Patents have been filed during last 20 years and many big companies invest large amounts of money and other resources for planning new ideas for doing business which lead to the development in Business.

  • Business Method Patents in Europe:

According to European Patent Convention Article 52 which deals about patentable invention, 52(2c) talks that any “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;” are not Patentable.

  • Business Method Patents in Japan:

In Japan Business Method are well known and comes under the patentable subject matter. However, patents are not issued solely for business methods and the business method must invariably contain a technical aspect that is both tangible and real for patents to be awarded.

  • Business Method Patents in India:

According to Indian patent act section 3, which deals with inventions which are considered not patentable, any “mathematical method or business method or a computer program or algorithms are not patentable”. However, they are patentable if a new method solves a “technical” problem and an apparatus/system is developed from it.

Opinion:

Allowing business methods to be patented or incorporating Business Method Patents into Indian Patent Act could allow investors to have more confidence in our system and thus encourage them to increase their investment in our infrastructure and other projects.

The importance and value of patenting a business method can be illustrated by the case of Netflix, a leading internet subscription services company that was awarded a patent for its computer-implemented approach for renting movies and TV shows to customers in 2003. In 2006, Netflix filed a patent infringement suit against their primary competitor, Blockbuster. The case was later settled out of court.

In my opinion Indian patent authority should add Business Method Patents into its patentable category as it will lead to improved business ethics and at the same time will motivate more and more companies from abroad to invest in India. Also it helps companies who invest large amount of resources for growth of the company by way of unique business ideas, to secure themselves and stop competitors from using their ideas/work.

About the Author: Mr Paras Khurana, Patent Associate at Khurana & Khurana and can be reached at: paras@khuranaandkhurana.com