Category Archives: Patents

Patent Trolling

Introduction

A patent is an exclusive right that is granted to an inventor for a specified number of years to make, use, and sell an invention. Once the right s provided, no other person can use the invention without proper license from the patentee. This right is provided to protect such inventors legally from any harm. Later it is usually expected that the inventor will put it in the consumer market for use by licensing it to various other manufacturers.  But recently, many such inventors have been misusing such rights that are provided to them. Recently, many have been patenting items in the vaguest form that the legal system would allow, without the intention of using the patent in the future. Their aim is usually to get money by filing infringement suits against individuals or companies who are using products that is even remotely similar to their patented product. This practice is referred to as patent trolling. Thus, patent trolling can be defined as a practice of obtaining and using patents for licensing or litigation purposes rather than in production of one’s own goods or services; “its real business model is patent trolling.”

Analysis

These patent trollers are usually referred to as Non Performing Entities (NPE). These entities will not sell or produce their product but will rather just license money out of those who appear to have been infringing upon a patent that the NPE owns. Trolling had been becoming a very serious problem, where the small companies, enterprises and individuals had been facing most of the backlash due to the high number of cases being filed against them. Many companies settle as the risk of losing an infringement suit and paying millions of dollars is very risky, even if they don’t believe there is any sort of infringement. The act is more prevalent in USA than in Europe as Europe follows the policy ‘losers pay’ where the losing party has to bear the costs of both the sides. This deters people from filing false cases but this isn’t the case in USA. But in the recent case of TC Heartland LLC v. Kraft Foods Group Brands LLC the Supreme Court has given a very welcoming decision where the court said that patent case defendants could effectively be sued anywhere they do business. In the present case, the defendant weren’t allowed to shift the case to where its company was based but was not allowed by the lower courts, which were following a 1990 precedent from the U.S. Court of Appeals for the Federal Circuit. This decision brings a sigh of relief to many as many cases can now be moved away from ‘plaintiff-friendly’ districts to much more neutral districts where the defendants stand a chance of having a fairer outcome.

Strategies and Measures

The NPEs used a lot of different strategies to gain what they have been looking for. Some of the following measures are the most popular ones:

  1. They accumulate patents related to one area: The NPEs collect a number of patents related to one area which makes it nearly impossible and very expensive for the targeted company to come out of the infringement suit.
  2. They do not produce any product: The patent trollers never produce the product they have patented. This in turns makes it difficult to file a counter sue claim of infringement for the defendant. For example in a technological dispute.
  3. They sue a large number of defendants together: This strategy reduces their overall cost and given them the hope of a large payoff in the future.
  4. They claim a percent of the total revenue from the product:Even though their patent may cover a small aspect of the technology, the award granted can amount to millions for a successful product.

Thus, corporations have been asking for special laws or certain measures to be taken against such companies in order to avoid such suits and large amount of awards granted to them. Here are a few steps that companies can take against such troll patents:

  1. The Big Tent Coalition: The current laws allow even the users of a product, which is an infringement of a patent violation to be sued. The Bill will change that and later only legal action could be taken by the company or the individual who has created the product or service.
  2. How to prepare against such suits: One can always take certain precautionary measures to be safe against such frivolous suits. A company or an individual must always remember these thee simple steps before it opens its doors to others- be proactive, Insure, Ask an attorney.
  3. Giving proper Response: Response to a notice must always be made to the sender of the notice. Looking for ways to settle outside of courts could be a waste of time as the plaintiff already knows about such settlements.

Conclusion

Everyone is very much aware as to such troll patents but is still very far away from assessing them. The simple logic that everyone seems to follow is that everyone has a right to protect their patent even if they aren’t using them. It is simply seen as a way of doing business as it is a very common occurrence among big corporations. But the ones who are affected the most, the small companies and individuals need to be protected against such patent trollers as they face losses which takes years to overcome and even leaves them bankrupt. These NPEs target such companies who will very easily give into their demands looking at the vulnerable position that they are in and this is the reason that such vulnerable companies require protection.

 Author: Nishka Tyagi, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

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Power of Controller to Review Own Decisions: Scope of Section 77(1) (F) & (G)

It is a general rule that once pronounced by a Court a judgment becomes functus officio and it cannot be altered or changed. However, an exception to this rule lies in the equity principle of ‘writ of error’. Writ of error is a writ filed where an error in delivering a judgment can be rectified on the grounds that human failing should not cause impediment to justice. This writ lays the basis for the modern-day ‘Review Petitions’ filed in the courts whereby the same court and same judge are allowed to review and alter their own judgments under extraordinary or unusual circumstances. This article analyses the power of the Controller under section 77(1) (f) and (g) of The Patents Act, 1970 to review his own decisions.

Scope of Section 77:

Chapter XV of the Patents Act 1970 refers to the powers of a Controller. Section 77 specifically bestows certain powers of the civil court on the Controller. It lays down the that the Controller shall have powers of a Civil Court while trying a suit under Code of Civil Procedure, 1908 in respect of the following matters:

1. summoning and enforcing the attendance of any person and examining him on oath;
2. requiring the discovery and production of any document;
3. receiving evidence on affidavits;
4. issuing commissions for examination of witnesses or evidences;
5. awarding costs;
6. reviewing his own decision on an application made within prescribed time and in the prescribed manner;
7. setting aside an order ex parte on application made within prescribed time and in the prescribed manner;
8. any other matter which may be prescribed.

Thus, section 77 confers upon the Controller certain essential powers of a civil court in order to enable him to deliver decisions in any proceedings before him under the Patents Act. This section is significant as it tends to state that any decision passed by the Controller in any proceeding before him shall be executed and enforced like a decree of Civil Court.

Section 77(1) (f) refers to the power of the Controller to review his own decision. The Civil Court has a similar power under Section 114 and Order 47 Rule 1 of the Code of Civil Procedure, 1908. A small parallel between the two provisions is drawn below:

Contents
Section 77(1)(f) of Patents Act
Section 114 of CPC
Initiation of review proceedings
On application of aggrieved party made in Form 24
On application of aggrieved party in prescribed format under Order 47
Limitation
Must be filed within one month from the date of communication of such decision to the applicant.[Rule 130 of Patent Rules 2003]
Must be filed within 30 days from the date of passing of such decree by the civil court.[Order 47]
Whom to apply
The Controller who passed the earlier decision
Application to be made to the very judge who passed the decree or made the order
Grounds for review

An application for review may be made on any of the following grounds-

(i) discovery of new and important matter or evidence; or
(ii)on account of some mistake/error apparent on the face of the record or;
(iii)for any other sufficient reason

An application for review of on order/decree may be made on any of the following grounds-

(i) Discovery of new and important matter or evidence; or
(ii) Mistake or error apparent on the face of the record; or
(iii) Any other sufficient reason

Appeal
No appeal shall lie from the Controller’s decision of review under section 77(1) (f).[Section 117 A]
No appeal shall lie from any order/decree passed in a Review Petition[Order 47 Rule 7(1)]

Therefore, from the above table it can be concluded that the powers of a Controller under Section 77(1) (f) of the Patents Act, 1970 are equivalent to the powers of a Civil Court under Section 114 of the Code of Civil Procedure, 1908. The mentioned provision thus gives wide powers to the Controller to review his own decision on the above mentioned grounds. If the order of the Controller concerns to any other person in addition to the applicant, the Controller shall immediately transmit a copy of application to the other person concerned.

Similarly, Section 77(1) (g) lays down the provision regarding setting aside of ex-parte orders passed by the Controller. The term ‘Ex Parte’ orders relate to those orders which are passed in the presence of just one party and without hearing the other. Clause (g) of the Section allows an applicant to make an application under Form 24 within one month from the date of communication of such order to the applicant or within such further period not exceeding one month as the Controller on request made (under Form-4) may allow. If the order of the Controller concerns to any other person in addition to the applicant, the Controller shall immediately transmit a copy of application to the other person concerned.

The order passed by the Controller in review is not appealable. Section 117A of the Act lays down the provisions for appeal from the decision/order of the examiner, controller or the state government to the Intellectual Property Appellate Board (IPAB). This is a mandatory provision laying down strict standards for appeal to IPAB. It clearly states that the appeal is allowable only in matters specifically mentioned under sub-section (2) of Section 117A.

The issue of appeal from a review application was discussed by the IPAB in the case of Andrews Ponnuraj Vairamani v. Controller of Patents, Chennai[1]in the year 2012. The IPAB while laying down the difference between these sections stated that Section 117 A is a special provision allowing appeals to the IPAB in certain specified circumstances whereas Section 77(1) (f) is a general provision laying down the grounds for allowing review of decisions made by the Controller. Review can be done only by the Controller and not the IPAB. This decision of the Controller is final and Section 117 A does not specify Section 77 as a ground for appeal to IPAB, thus leaving no scope for making cases appealable before IPAB under section 77 of the Patents Act, 1970 Further, it was held that- “Appeal is a creature of statute and is not an inherent right. Unless there is a specific provision for appeal, there can be no appeal. Where there is no provision to appeal against a review petition then appeal herein is not maintainable…” (Para 11&12).

Thus, it can be concluded that the Controller has wide powers under Section 77 which are equivalent to the power of a Civil Court under Code of Civil Procedure. Parties may seek review of the decision of the Controller where they feel that some grave error has occurred on the part of the Controller. However, the only drawback of this provision is that the review application is filed before the same Controller and therefore may, at times result in the party seeking for such reviews, prejudiced. However, this provision is a welcome move to ensure justice. Also, this decision of the Controller is final and no appeal can lie against an order passed upon a review application. This ensures that unnecessary hindrance due to repeated frivolous litigations/prosecutions is avoided.

Author: Aishwarya M. Pande, Legal Intern, at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] Andrews Ponnuraj Vairamani v. Controller of Patents, Chennai; MANU/IC/0115/2012

[2] Section 77 of Patents Act, 1970

[3] Section 114 read with Order 47 of the Code of Civil Procedure, 1908

[4] Manual of Patent Practice and Procedure

[5]http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent–practice_and-procedure.pdf

[6]http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf

Copyrighting Patents

The nature of Intellectual Property Rights is such that, like any other law, it has loopholes as well as overlaps. These overlaps arise due to the fact that IPR protects ideas by their expressions and expression can be in more ways than what can be imagined by one person. There are subject matters which are eligible for the protection of more than one kind of IP. The prime example is the overlap between design and copyrights which has been statutorily dealt with under the Copyrights Act.

However, the recent debate has been with regard to Copyrights and Patents. Now, both of these are as far apart as two IP protection sects can be. Copyright protects literary, dramatic, artistic, cinematographic, musical works whereas Patent grants rights to functional inventions which are novel, useful and non-obvious. However, these rights find a commonality in the patent applications. It is pertinent to disclose the information relating to the working of the invention in the patent application by way of specifications. These specifications also include certain drawings and sketches of working models of the invention. There has been a long standing question whether these applications, which consist of the originally authored specifications and drawings, are eligible to be granted a copyright. Or alternately, can the specifications in the patent application be infringing upon copyrights owned by other authors/scholars.

Countries have taken different stands in the matter. Germany, for instance, excludes patent documents from the copyright protection from the time they are published.[1] However it is necessary for a person to cite the source when using it in a scholarly or academic work. Switzerland as well exclusively exempts the patent documents from being copyrighted.[2] On the other hand the position in UK differs depending on when the patent was filed. All the applications filed prior to 1989 were protected by the Crown Copyright. However, after they enforced their 1988 Copyright Act all the applications prior to 1989 remained with the government  unless they had a copyright notice on them, and the copyright for all the applications filed after that date lies with the applicant and no use can be made unless with express license except for the purpose of ‘dissemination of information’.[3] USA holds a different position for copyrighting patent applications. It has been stated that all the information posted on the website of the USPTO is considered to be in the public domain but the government holds international copyright over it. However, the applicants are allowed to specify their copyright on the patent drawings or other materials.[4]

There have been very few cases which discuss the copyright ability of patent applications. The US case that accepted that copyright subsists in a patent application was In Re Yardley.[5] In more recent cases, it has been questioned whether patent applications can be challenged in court as infringing a copyright. In American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman, Lundberg & Woessner P.A. [6], the University alleged that the firm infringed their copyright by attaching a scholarly article in their patent application. The firm on the other hand took the defense of ‘Fair Use’ and stated that the articles were taken from the USPTO website itself. In two other cases, American Institute of Physics and Blackwell Publishing, Ltd. v. Winstead PC[7]  and John Wiley & Sons, Ltd. and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff LLP [8]—and again, after intervention by the PTO—the plaintiffs similarly amended their complaints to disclaim any allegation of infringement based on submission of copies of copyrighted articles to the PTO, or on retention of file copies of the works submitted to the PTO.[9] The defendants in all these cases stated that disclosure of prior art was necessary in order to secure a patent for their invention and thereby should be included under the exclusion of ‘Fair Use’. The court accepted this and said that as long as it proves to be of evidentiary value and is a requisite for disclosure for the government the use can be deemed to be fair.

Contrarily, the UK courts do not follow the same rationale. In Catnic Components Ltd. & Anr. v. Hill and Smith Ltd. the court held that the copyright in a patent ceases to exist once it is published. The court was of the opinion that the main underlying principle behind granting a patent is full disclosure. The idea is to bring the invention into public domain so as to boost innovation. Copyright on the other hand restricts the rights of other people by giving exclusive rights to the owner of the copyright. It is a conflict between the most basic objectives of the two rights. Furthermore, scholars have pointed out that granting copyright could in effect hamper the innovations further. The term of a patent is a maximum of twenty years but in case of copyrights the term is much longer and continues to be in effect 60 or 70 years after the death of the owner, depending on the domestic laws of the country. This creates a problem as to the fact that even after the invention is out in the public domain there would still be rights which will be otherwise attached and thereby will beat the purpose of being in public domain. These questions have not yet arisen in front of the Indian courts and the law is also silent on it, nothing has been stated explicitly. But the position of other countries gives us a fair idea as to how allowing copyright in patent applications or not can lead to different scenarios and raise different questions.

Author:  Yashvi Padhya, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1] https://www.dpma.de/english/patents/faq/index.html#a22

[2] https://www.admin.ch/opc/en/classified-compilation/19920251/index.html#a5

[3]http://webarchive.nationalarchives.gov.uk/20140603113132/http://www.ipo.gov.uk/types

/copy/c-other/c-other-faq/c-other-faq-type/c-other-faq-type-patspec.htm

[4] https://www.uspto.gov/terms-use-uspto-websites

[5] 493 F.2d 1389 (CCPA 1974)

[6] D. Minn. Civ. No. 12-528

[7] N.D. Tex. No. 3:12-CV-1230

[8] N.D. Ill. No. 12 C 1446

[9]http://www.mondaq.com/unitedstates/x/283736/Copyright/Can+a+Patent+Application+

Violate+the+Copyright+Laws

An Overview Of The Issues & Suggestions About Sec 146 Of The Patents Act, 1970 And Form 27

As a result to the PIL filed by Prof. Shamnad Basheer, complaining against IPO for noncompliance of section 146 (working statement of Patent invention), in the year 2015,  the Delhi High Court, recently in January 2018, passed an order directing the Government to submit an affidavit outlining a plan for putting in place a standard operating procedure/enforcement mechanism with respect to Form 27 as well as taking an action against errant patentees. With respect to this, the Patent Office invited the stakeholders to come up with  their suggestions for making Section 146 and Form 27 effective.

The IP India portal has provided with suggestions provided by various organizations (here and here), few of which has been majorly discussed by most of the stakeholders as provided below:-

    • One Form One Patent: The first and foremost issue that most of the stakeholders such as Dr. S.K. Murthy Core-Committee Member, In-House IP professionals (IHIPP) forum, DR. P. Ganguly Vision- IPR(Patent Professional Firm), Federation of Indian Chambers of Commerce and Industry(FICCI) raised was the provision of submitting different forms for different Patents. Most of the organizations are with a view that bringing in a single form for multiple Patents would fulfill the business objectives of the present world.

 

    • One Product One Patent: Many stakeholders including S.S. Rana & Co., Singh & Singh Law Firm LLP which pointed out that presently, Form 27 runs on the presumption that one product is equivalent to one patent, which is not the case with many industries where one product is not based on one patent but is actually covered in portfolio of patents and such portfolios are owned by different Patentees. S. Majumdar & Co, an IPR Firm based in Kolkata mentioned that there are many cases especially in FMCG industries, Information and Communication Technology, semi- conductors, Electronic companies, etc, where one product is equivalent to various Patents. Therefore, It is suggested that form 27 may allow patentees to make a statement to the effect that Patent is not worked in a standalone format but form a part of the portfolio licensing program. H. K. Acharya & Company, an IPR Agent firm suggested that it would be sufficient to provide information about product in which the Patented product/process is used rather than providing all the technologies, applications and product where the patent is so deployed or used. Dr. Shital Chopra ASSOCHAM suggested that the forms should provide single statements for multiple Patents, specifying single Patent forms a part of the portfolio license.

 

    • Quantum Valuation: De Penning & De Penning, Federation of Indian Chambers of Commerce and Industry, IPR International Services, KRISHNA & SAURASTRI ASSOCIATES and others observed that Form 27 has nowhere described the method of calculating sales and commercial use of Patents, it becomes difficult to calculate the value of Patent in the market because  of various confusion such as whether taxes is to be included or not or whether the end product is to be valued, etc. While recommendations from Federation of Indian Chambers of Commerce and Industry, Huawei Technologies Co Ltd, China emphasized that provision of submitting such quantum and valuation’ should be removed, there were few stakeholders such as Bosch Group of Companies, CIPA Patents Committee, Chartered Institute of Patent Attorneys (‘CIPA’), London and Hindustan Unilever Ltd., Lal Lahiri and Salhotra,  which showed their concerns over the same and have expressed its interest in a guidance notice in order to clarify on how to ascertain the quantum.

 

    • Simple, Clear and Unambiguous: Few Academicians such as Raj S. Davé IPR Chair Professor for Excellence at Gujarat National Law University and Justice Asok Ganguly, Former Supreme Court Justice of India and Adjunct Professor at Gujarat National Law University, Prof. Shamnad Bashir ,Nirma University Pankhuri Agarwal, reseach associate N. Sai Vinod, Advocate along with Hrishikesh Raychaudhury Corporate Law Group , Singh & Singh Law Firm LLP and other stakeholders pointed out that the existing Form is ambiguous regarding the information related to the commercial scale, scope of public requirement, disclosures and reasonable price etc. It is requested to make it simple, clear and unambiguous and limit it to statutory requirements that has to be met, which is ‘whether the Patent has been worked or not.’

 

    • Information regarding Manufacturing in India and Imported to India: The current form is concerned with the information regarding ‘working of Patent in India’, however, nowhere in the Act, the term ‘working Patent’ has been defined. Obhan & Associates, KRISHNA & SAURASTRI ASSOCIATES and ALG India Law Offices LLP highlights that there exists an ambiguity with respect to the term ‘working’ which may or may not involve manufacturing in India, the quantum value of production of products sold in India or for only exporting purpose.  It is suggested that the Act must clearly explain as to ‘what is working Patent’ and is also recommended that ‘Working Patent’ must be limited to India as far as it meets the public requirement. Huawei Technologies Co Ltd, China interprets the IPAB decision of Bayer Corporation v. Union of India and Article 27(1) of TRIPS agreement and identifies that the term ‘working’ may include importation.

 

    • Frequency of Form of Submission: According to Section 146 of Act, information regarding the working Patent is to be submitted annually, with intervals not being less than six months apart. Therefore, this increases the burden on the Patent office as well as the Patentees and it is also difficult to collect the relevant information on such a frequent basis. The  same issue was brought forth by Eri Honda(Ms.) Corporate Intellectual Property and Legal Headquarters Canon Inc., Japan, Japan Pharmaceutical Manufacturers Association, Japan, Remfry& Sagar  and  Obhan & Associates. It is pertinent to note that most of these stake holder have suggested to  reduce the frequency of submitting a statement to once in every three years.

 

    • Confidentiality: Most of the stakeholders such as In-House IP professionals (IHIPP) forum, Anand & Anand, K&S Partners, Lexorbis IP Attorneys etc, are concerned about disclosing the confidential information related to their licensees and other related data due to the requirement of the publication of the submitted information. SKS LAW ASSOCIATES went ahead and noted that such provision/practice is not business savvy. Further, Singh & Singh Law Firm LLP highlighted that such disclosure of information is also contrary to section 62 of the Patent Act which provides for an opportunity to the Patentee to request the Controller to not to disclose the information to anyone except the order of the Court. Moreover, on a careful perusal of Section 146(3)  r/w Rule131(3), it can be observed that the use of the word “may” in the provision,  puts a discretionary power  on the controller to disclose the information or not. However, the Controller is required to apply his mind while practicising the  descretion vestedin  These stakeholders also Laxmikumaran & Srihdaran mentioned that provision for providing such information may be retained, however, the disclosure of such statements must be done away with.

 

    • Exemption from Form 27: while deliberations for modifying Form 27 was going on, few of the stakeholder also suggested to give exemption from submitting Form 27 for the first three years of the patent issued because the statutory limit for compulsory licensing is three years.

 

    • Penalties: Section 122 provides for penalty for not complying Form to 27. Such penalty includes imprisonment as well, which is believed to be harsh. Thus, stake holders like Hindustan uniliver or Industries in association with USA (Global Innovation Policy Center (GIPC) and U.S.- India Business Council (USIBC)), have suggested to strikeout such penalty for failing to provide working statement. Moreover, IP firm Remfry and Sagar, came up with a view that compulsory licensing as a penalty  for non-compliance of provision would be enough for deterring the errant Patentee. However, there are few that stakeholders like  who strongly  support the said provision with a view that striking off  of criminal penalty would dilute the system leading to its rampant misuse.

 

  • Miscellaneous: There are suggestions like removal of sec 146 and rule 131 completely, in order to ease the business of Industries. where digitalization is taking over the world and most of the most important work can be done through internet. It is recommended to digitalise the form in order to make it convenient for the Patentee to submit the Form.

 

It is incredible to note that the stakeholders were also as much a part of this process as the Government. As much as 64 stakeholders came forward with various issues with regard to Form 27 and its solutions. Stakeholders included major keyplayers in the market such as Bosche, Japanese IP Group, FICCI, Huawei Technologies Co Ltd, China, CIPI, London and many more. There were other responsible academicians from various Law universities and the rest were Intellectual Property Firms such as Lexorbis, Anand and Anand, S.S Rana and others.

The above mentioned are the few suggestions to the issues that have been recommended by majority of Organizations. It can be observed that Form 27 needs to be a little flexible with the changing dynamics of Industries of the Contemporary practices. Also, the Act needs to be more clear about its provisions and explanations with respect to ‘Working Patent’ , ‘disclosure of information’ and frequency of submission of Form 27. This would not only make the procedure smoother for the Patentee, but would also help the Patent Offices to function swiftly. The proposed revised form may be something like as provided below.

                                    Blog_form

Author: Pratistha Sinha, Associate, Yogita Shinde, Intern  and Mudiganti Sai Krupa, Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

The Spinning Story of the Fidget Spinner

The 2017 fad of fidget spinners hasn’t yet faded, but in fact is intensively growing globally. For those who are not aware of this toy, it is a spinning toy meant to relieve stress in adults and kids. Arguably, depending on your taste you may find this spinning movement either stress relieving or irritating. Whatever the case maybe, if you have seen this toy, you ought to have thought about the huge profits the patent owner must have received from this basic toy. The devastating fact is that she does not make even a single penny of these sales.

After the recent boom in the sales of this toy, a few US newspapers claimed to have found the original inventor, Catherine Hettinger, a woman living in Orlando, USA. She held the patent on “a spinning toy” for 8 years since January 1997 until she had to abandon the patent for she could not afford the renewal fees. In accordance with the USA law to enjoy a 20 year term for patent, maintenance/renewal fees should be paid at 3.5, 7.5 and 11.5 years after the grant of patent.

Though, she claimed to have sold thousands of these toys at fairs in Florida, and apparently pitched the idea to couple of companies like Hasbro, it got her nowhere. Finally not wanting to invest more than she reaped, she decided to abandon the invention.

When you analyze this situation closely, one might argue that even if she had paid her renewal fees in 2005, since her patent was granted in 1997 under the old US patent law (which grants a patent for a term of 17 years), she still wouldn’t have reaped the benefits of her invention in 2017. In addition, the trending fidget spinners are not identical to her original design:“A finger spinner comprising: a thin, round, single thickness, primary sheet of plastic material molded to form a unitized central finger placement area means and a skirt balance, “and thus it may not even come under her patent’s exclusive protection. Moreover, new versions of the spinner are already in the market like fidget cubes, dice etc.

Even though her being the inventor of fidget spinner is still debated, she has started her own Kickstarter campaign to sell her original design and bring back the “classic fidget spinner”.

 Analysis

Time and again, a patent owner is inflicted with the question of payment of maintenance fees incase his invention is not yet profitable or even financially breaking through. It is quite a dilemma for them to decide whether it’s worth loaning money further in hope of the invention kicking off or to abandon the patent and save the rest of his money. It is often advised to pay the maintenance fees for the 20-years life of your patent, since the non-payment of the same makes the time and money invested in the patent application process entirely futile.

In case, your invention isn’t as lucrative as you imagined, it is always better to seek advertising and marketing agencies which may help you commercialize your invention into products which may one day be a global trend. Thus, it is suggested to always consult an IP expert to review your invention before taking any drastic steps so as not to lose out on the profits of your hard work. Only in the most exceptional circumstances would it be suggested for you to abandon the patent in its life term.

Author: Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]http://www.freepatentsonline.com/5591062.html

[2]https://www.theguardian.com/lifeandstyle/2017/may/03/fidget-spinner-inventor-patent-catherine-hettinger

[3]http://time.com/money/4765380/fidget-spinners-inventor-catherine-hettinger-profits/

Role of Section 3(k) in Patent Application by Apple Inc.

This article focuses on the involvement of Section 3(k) in the process of patent application of Apple titled ‘a method for browsing data items with respect to a display screen associated with a computing device and an electronic device’. For reference to those unaware of this section, S 3 of the Indian Patents Act, 1970 bars patent eligibility of some inventions.,

Section 3 (k):

A mathematical or business method or a computer programme per se or algorithm;

Bibliographic Details:

 Patent Application number  461/KOLNP/2009
 Title  A method for browsing data items with respect to a display screen associated with a computing device and an electronic device
 Applicant  Apple Inc.
 Date of Filing  03/02/2009
 Date Of Publication  15/05/2009
 Date of First Examination  Report  13/3/2014
 Date of Grant of Patent  08/05/2017

Claims:

Apple stated that their method involves a graphical user interface which generally consists of a text-based browse window which allows the user to browse through and select a particular media track on electronic devices, including cell phones. This media-management program could be linked with an online media store so as toallow the user to purchase new media which could also be transferred to the devices.

The following objections were raised in First Examination Report with respect to Section 3(k):

1. Due to the absence of technical features in the claims disclosed, it is not patentable. The said objective of this alleged invention was to browse media content with multiple browsers whose operations are synched, the alleged invention relates to a GUI wherein the contents of first and second browse windows are synched automatically. Thus being a software program itcomes under the ambit of computer programs per se i.e., the clause of section 3(k) of the Act.
2. Due to the lack of novelty or any inventive featuresin the claims with respect computer readable material, this alleged invention is not allowable u/s 3(k) of the Act.

Apple’s Reply to First Examination Report (above-mentioned claims):

Apple contended that “the claimed ‘method’ consisted of concrete and tangible steps of providing … , displaying … , receiving … , moving … , etc., to thereby browse data terms with respect to a display screen associated with a computing device. These steps ought to be considered as a practical application of computer program. Although the steps of the method can be performed by means of software, the method constitutes a practical application of this computer software to produce a useful result bringing an improved technical effect while presenting advantages and overcoming drawbacks of the hitherto known techniques.”

It further submitted that even if it this method employs software or algorithms for controlling the steps for achieving the desired result/effect having a sufficiently qualified technical character, does not make it eligible for exclusion from patentability. This method permits the computer program’s functionality to be realized, and should not therefore be deemed to be a computer program per se and thus should be patentable.Additionally, Apple admitted to have deleted the ‘computer readable medium’ claims from the specification.

Hearing Notice:

However, the Patent Office notified the Applicant of the above mentioned objections to be outstanding and set a Hearing Date for 04/06/2017.

Controller’s Decision:

The Kolkata Patent Office observed the response to First Examination Reportand accepted Apple’s submission of the invention being novel and not a computer program per se, thus granting it a patent.

Analysis:

This case is a classic example where the Patent Office has interpreted the words “computer program per se” to include software programs. However, it is observed that even though this objection is raised in the First Examination Report , once the Applicant amended the claims so to as to specify the inventive steps involved in the said ‘method’ and explained the technical contribution of the said method making it an invention, it was accepted by the Patent Office. This change is credited to CRI Guidelines of 2016, wherein computer programs are patentable if they are ‘in conjunction with novel hardware’. The terms used to explain novelty are “technical improvement of prior art/forms/methods”. Many companies like Facebook and Google have utilized this new interpretation of the sectionto their benefit by using terms like “technical improvement of prior art/forms/methods” to explain novelty.In conclusion one can say that as long as your invention is fulfilling the novel hardware criterion, the fact that a software program may be involved with the invention will not be an issue.

Author: Ms. Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us atswapnils@khuranaandkhurana.com.

References:

[1]http://www.financialexpress.com/industry/apple-gets-itunes-like-indian-patent-for-media-programme/663075/

[2]http://ipindiaservices.gov.in/decision/461-KOLNP-2009-36006/461KOLNP2009.PDF

Do Software Patents actually fall under the ambit of Section 3(k)?

Section 3k is often criticized for its ambiguity of the words “computer programme per se”. Though the Indian Patent Act doesn’t explicitly disallow software programs, a lot has been left to interpretation of the same, which in turn has been to many companies’ benefit. This article will analyze the patentability of software programs with support of a few cases.

Earlier in Accenture Global Service GMBH v. Assistant Controller of Patents & Design and the Examiner of Patents where applicant sought for a patent on a method to generate a data mapping document. The objection against the method’s technical effect being unidentifiable, the applicant submitted that the present claims recite “technical solution to a technical problem of need for a data document design system and design tools that addresses one of the most important technical challenges faced by database systems is data migration.”  After analyzing the inventions on merits, the Patent Office observed that the invention is not software per se, it is rather a system having web-services and software and thus, is not falling in the category of section 3(k) and patent was granted in May 2013.

In 2009, Facebook sought a patent on a method “for generating dynamic relationship-based content, personalized for members of the web-based social network”. The objections against the grant was ‘the method being nothing but an algorithm implemented through software thus falling under Section 3(k) and being non- patentable.’ The applicant contended that section 3(k) was not applicable in this case because the invention “implements a technical process and has a technical effect” and further went on to explain the intricacy of the method. These amendments to the claims satisfied the Patent Office’s objections and thus it granted the patent in February 2017.

Another patent was granted to Facebook on 25th April, 2017 “for a method of providing access to user profile data maintained by Facebook to third-party application“. Facebook submitted that “the present invention included hardware limitation and provided technical improvements and benefits like checking privacy setting associated with the user profile and based on the privacy setting the access is provided to the third party application and the third party application personalizes the user content data.” The Patent Office concluded that this doesn’t fall under purview of Section 3(k), and duly granted it a patent.

In Feb 2005, Google sought for a patent on an invention titled, ‘phrase identification in an information retrieval system’. One of the claims disclosed it to be a basic mathematical algorithm with the logical steps thus falling under section 3(k) of the Patents Act, 1970[1] and therefore not being patentable. However, Google reasoned that its invention is not an algorithm or a computer program per se, “but provides a technical solution to a technical problem of how to automatically identify phrases in a document collection”. It claimed that the technical solution i.e. the end product which is an index, stored in a memory consisting of related valid phrases, is inventive. On hearing the above submissions, the Patent Office concluded that it is “a technical advancement over the prior art” and thus granted it the patent in May 2017.

In 2009, Apple applied for a patent on a ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device’. The objections against the invention was that it was merely a software program and thus falling within the scope of computer programs per se i.e., under the provision of section 3(k) of the Act. Apple submitted that the method “although the steps of the method can be performed by means of software, the method constitutes a practical application of this computer software to produce a useful result bringing an improved technical effect while presenting advantages and overcoming drawbacks of hitherto known techniques.” Accepting this submission, the Kolkata Patent Office granted the patent.

It is pertinent to note that the ambiguity regarding the provision under section 3k was cleared by the CRI Guideline 2016, which provided that Patents on computer programs can be conceded if the inventor demonstrates that the invention incorporates a computer program “in conjunction with a novel hardware. However, the CRI guidelines have failed to explain the term ‘Novel Hardware’. Hence, the question regarding patentability of software still remains ambiguous. Also the position regarding the mathematical or business program remains the same, being a non-patentable subject matter. But looking at the practice followed by the Patent Office Office of granting the patents to softwares which can be considered as business method under section 3k of the Patent Act.

Author: Ms. Avadhi Jain, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com and  info@khuranaandkhurana.com.

References:

[1] http://www.iiprd.com/section-3-k-indian-patent-act-case-studies/

[2] http://ipindiaservices.gov.in/decision/830-CHENP-2009-29876/830chenp2009-GRANT.pdf

[3] http://www.financialexpress.com/industry/mark-zuckerbergs-facebook-gets-patent-in-india-for-creating-relationship-based-content/559789/

[4] http://ipindiaservices.gov.in/decision/6799-CHENP-2009-35703/6799-chenp-2009.pdf

[5] http://ipindiaservices.gov.in/decision/647-KOL-2005-36087/647KOL2005.PDF

[6] http://ipindiaservices.gov.in/decision/461-KOLNP-2009-36006/461KOLNP2009.PDF

Patent (Amendment) Rules 2017

Department of Industrial Policy and Promotion (DIPP) has amended Patent Rules 2003 with effect from 1st December 2017 called as the Patent (Amendment) Rules, 2017. The definition of “startup” under rule 2(fb) has been substituted with a new definition. A more liberal definition of startup has been incorporated that can allow domestic as well as foreign entities to claim benefits such as fast-track mechanism and lower fee for filing patents.

According to the Patent (Amendment) Rules, 2017:

“Startup” means

(a) an entity in India recognized as a startup by the competent authority under Startup India Initiative.
(b) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/ registration as per Startup India Initiative and submitting declaration to that effect.

Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.[1]

According to the Patents (Amendment) Rules, 2016 startups were defined as entities which are working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property where more than five years have not been lapsed from the date of incorporation/registration with a maximum turnover of INR 25 crore per year.[2] However, according to the Patent (Amendment) Rules, 2017, a startup can be any Indian entity recognized as a startup by the competent authority under the Startup India Initiative or a foreign entity that fulfils criteria for turnover and period of incorporation/registration as per Startup India Initiative.

Under Startup India Initiative an entity shall be considered as a Startup, if it fulfils following criteria:

1. incorporated as a private limited company or registered as a partnership firm or a limited liability partnership in India;
2. incorporated or registered in India not prior to seven years, however for Biotechnology Startups not prior to ten years;
3. turnover for any of the financial years since incorporation/ registration has not exceeded INR 25 crores;
4. has not been formed by splitting up or reconstruction of a business that was already in existence; and
5. working towards innovation, development or improvement of products or processes or services, or if it is a scalable business model with a high potential of employment generation or wealth creation.[3]

In view of the foregoing, it can be concluded that the period of incorporation/registration that was 5 years under 2016 rules has been extended to 7 years (10 years in case of biotechnology startups) by the 2017 rules. Also, foreign companies can now claim benefits if they fulfill above mentioned criteria for turnover and period of registration as per Startup India Initiative. Further, to claim benefits for filing patents, Indian entity should be recognized as a startup by a competent authority under Startup India Initiative, whereas foreign entity may provide equivalent documents as an evidence for fulfilling criteria for turnover and period of incorporation/registration as per Startup India Initiative along with a declaration to that effect.

[1] http://www.egazette.nic.in/WriteReadData/2017/180577.pdf

[2] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_42_1_Patent__Amendment_Rules

[3] Notification Number G.S.R. 501 (E), https://startupindia.gov.in/notification.php#

Amendments in Patent Application Process in Singapore

The process of applying for patents in Singapore will become much easier and more efficient after Intellectual Property Office of Singapore (IPOS), in its continued efforts to ease patent application process, has introduced few changes in Patent forms 1 and 12B. According to a circular released on November 21, 2017 on IPOS website [1], these changes will be effective from 10 December 2017 [1] and will be available to Patent Applicants from that date. IPOS claims that after these changes the patent application process will be enhanced for general Applicants.

Amendments to ‘Patents form 1’ [2]

a. Patents forms 1 & 8 will be merged

This change will allow Applicants to enter details of inventors for which the patent has been applied in part 7 of the newly merged form i.e. merged ‘form 1’ & 8. There will be no need to file a separate form 8. It is a welcome move for the Applicants as they will not have to fill multiple forms. In addition to this, the Applicants will now be able to derive rights from the Inventor. Applicants can do this by filling in part 8 of the newly merged form. However, these amendments will not change the process of correcting the details of the inventors i.e. Patents Form 13 will not be applicable for such amendment or correction. Applicants will also be able to submit the details of the inventor separately by filling Patent Form 8 which will still be available for submissions.

b. A separate attachment for sequence listing

A new document will also be available for “sequence listing” for attachment at the time of filing of patent applications. A “sequence listing” is a list of biological sequences in the format prescribed by WIPO Standard ST.25 (Presentation of nucleotide and amino acid sequence listings) using controlled vocabulary (i.e. defined terms for certain features). This document will be available to patent applicants in case they do not want to include sequence listing as a part of description or claims. Also, the applicants will be able to paginate this document and will be able to indicate the page count of sequence listing document in a separate field.

In addition to this, if Applicants want to submit sequence listing as a separate reference document, not forming part of the description or claims, such document can be submitted using the mentioned “sequence listing” document type with a cover letter attached to indicate that it will serve as a reference document only.

c. A new feature of auto-population during divisional filings

Yet another efficient and productive move by the IPOS is the introduction of auto-population feature when a divisional application is being filed. This means that when an Applicant files a divisional application, relevant information from the parent application will be auto-populated for the convenience of the Applicants. Having said that, the Applicants will still be able to amend the auto-populated fields if they choose to do the same.

 Amendments to Patents ‘Form 12B’ [3]

Similar to the changes in Patents form 1, for the ease of Applicants, Patents Form 13 will also be merged with Patents Form 12B. Applicants don’t need to fill Form 13 in case they wish to make amendments to the specification when requesting for an examination review report using Patents Form 12B, and can do so by selecting the option “Written submissions and proposed amendments are filed” in Patents form B. With this selection, the Applicant will be required to submit both a clean and a marked up copy of the amendment of the specification.

Conclusion

Such amendments in the Patent Application process as mentioned above will be available from December 10, 2017. Further, these changes will ease the application process and will allow Applicants some flexibility in sequence listing, and amending details of inventors as well as amending the specification.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

 References:

[1] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/circulars/(2017)-circular-no-8—enhancements-to-patent-application-process.pdf

[2] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/patent-forms-and-fees/form-pf1—otc.pdf

[3] https://www.ipos.gov.sg/docs/default-source/resources-library/patents/patent-forms-and-fees/form-pf12b—otc477c1877c2d0635fa1cdff0000abd271.pdf

The Budding Patent Law in Myanmar

Myanmar, also known as Burma, a least developed country in mainland South-East Asia, is still in its embryonic phase of Intellectual Property Laws. The country is not presently a signatory to the Paris Convention for the Protection of Industrial Property or any other treaty protecting patents. The Burma Patents and Designs (Emergency Provisions) Act 1946 came into force in 1993 in the country, but has been repealed, and therefore currently Myanmar does not have any standard through which Patents can be applied and enforced. This brings about a scenario where goods that are patented, and for which companies or individuals hold relevant patent rights outside Myanmar, can be produced and used for commercial purposes and traded in Myanmar without the permission of the actual rights owner. There is no regulation or any law for protection of inventions and related IP. As a result, it is currently not possible to apply for patents in Myanmar.

Current setting for Patent Protection: Though, there is a gap between the redundant Patent Law and enforcement of new law, Patent protection has found its way through section 18(f) of the Registration Act under which Declaration of Ownership with the Myanmar Registry Office of Deeds and Assurances can be filed by the Patent owners. This declaration is a solemn statement of facts made by the Patent owner. After the declaration is registered, it is advisable to publish a Cautionary Notice in a daily English Language newspaper informing the public about the ownership of the patent which warns the potential infringers of legal action by patent owners. There is no substantive examination of the patent filed by way of such Declaration. The Declaration is valid for three months period with possibility of renewal. Nonetheless, this Declaration doesn’t grant any patent rights and currently, in absence of a proper legislation, there is actually no option to enforce patents in Myanmar.The Specific Relief Act (Section 54(b) and (c), and Illustration (u)) allows for patent infringement lawsuit, but it is ambiguous as to how such lawsuit may be conducted and decided upon in absence of patent law and the required legal standard. Thus, this law provides limited patent protection. Moreover, priority claim registration is not available under the Registration Act.

  Furthermore, Technology Transfer Agreements are enforceable if they are registered with the Myanmar Scientific and Technology Research Department but it doesn’t cover patent licensing. As there is no specific law for protection of patents in Myanmar, most entrepreneurs as an alternate way of protecting their inventions, spend extensive amounts in protecting their trademarks through the available means. By doing so, they protect the brand reputation and goodwill of their products as a minimum that they can achieve.

TRIPS and MyanmarMyanmar has acceded to Trade Related Aspects of Intellectual Property Rights (TRIPS), and therefore it is required that the country complies and implements the laws in consonance with the Agreement by no later than 1st July 2021. Consequently, Myanmar is drafting IP laws particularly Patent Laws to ensure its legislation is in line with the TRIPS. Thus, the status of IP Law seems to be improving as the country has drafted a new legislation for regulation of Patent which is supposed to be in compliance with TRIPS Agreement.

The Draft Law for Patents: The Draft law has been framed and published in 2015 and it is endowed with the procedural and substantive provisions found in patent laws of most Paris Convention countries. The Attorney General’s Office and Ministry of Science and Technology were instrumental in drafting the said law that is expected to be promulgated by the end of 2017 or in early 2018. According to the Draft Patent Law, to be patentable, the invention must be novel involving an inventive step and should also have an industrial applicability. These requirements are the basic three requirements as per the international standards of patent protection globally.

 According to the draft bill, Patent applications can be filed with the Myanmar Intellectual Property Office (IPO) and the registration system has been kept similar to the other ASEAN countries. IPO shall be responsible for all IP registrations in the country. After the receipt of the application for the patent filed, preliminary examination will be conducted by the IPO following publication of the patent application only after making sure that it does not defy the integrity, national security, and public safety. If it is found that the patent application is contrary to national security and public safety, the rights will get transferred to the Myanmar Government. After the publication, a three months period will be provided for any opposition which can be raised from the date of publishing of the patent application, it will be subsequently followed by substantive examination and finally grant or reject the application. The life of protection of Patents will be twenty years, subject to annual fees.

The draft bill has also provided for the grant of compulsory licenses wherein, the Myanmar Government will have the right to issue compulsory licenses for specific vital pharmaceuticals and the owner of the rights can’t deny such grant of license subject to royalties. The interest of the patent owners has been protected by the law and specific remedies have been provided in case of infringement of the patents which include civil litigation and criminal prosecution. Also, the patent owners can apply to appropriate courts for grant of preliminary injunctions.

At present, it is extremely difficult to enforce patent protection in Myanmar in absence of proper Patent law and legal standards. Innovations and intellectual inventions can’t be protected in Myanmar, so it is highly worthwhile to think before bringing such innovations into place in Myanmar. However, it is a sigh of relief for the inventors and investors, that the country has acceded to TRIPS, the law for patent protection has been drafted and is set to arrive anytime soon.

References:

[1] http://www.youripinsider.eu/patent-protection-myanmar/

[2] http://www.myanmarpatent.com/patent.htm

Author: Ms. Pratistha Sinha, Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at anirudh@khuranaandkhurana.com.