Category Archives: section 64

M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel , Section(64) patent act, 1970

Takshasheel Bouddha, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel &The Controllers of Patents & Designs. This judgment is with respect to Section 64 of Patent Act, 1970.

 Introduction:

The dispute was regarding of two patents i.e. Patent No.189027 and Patent No. 188787 granted to and held by respondent which the petitioner wanted to be revoked. Initially the petition for revocation was filed in honorable High Court of Gujarat from where it was transferred to IPAB. M/SAditi Manufacturing Company was petitioner while Mr. Bharat Bhogilalwas the respondent and both the parties were engage in the same set of business.

Both thepatents owned by respondent were on the same subject matter relating to the laser technology. Patent No.189027 was granted for a process of manufacturing engraved design articles on metals or non-metals using Lasers and Patent No. 188787 was granted for an improved laser marking and engraving machine.

 Petitioner‘s Argument

The petitioner M/S Aditi Manufacturing Company claimed that inventions are related to laser technology and engraving machine is not novel and it was already in public domain. The inventions also lack inventive step as per the requirement of Section 2(j)(a). A lot of prior arts were present disclosing identical product and process and therefore requirement of sections 3(k), 3(f) and 10(4) of ‘The Patent Act, 1970 were not met.

The revocation in both cases was sought on the ground that the invention has been used from 1996 by one Sarju Laser Marking Private Limited and sold in the market even before the date of patent.

The specification was notably alike to US Patent No. ‘789 dated 26/03/1985 for “Reliable low cost light weight CS pumped Nd:Yag laser with option at Q-switching”. The claims were analogous to US Patent No. 4467172 and Japanese Patent No. 141679.

The petitioner also relied on the publication by Excel Control Laser Inc. in 1992 which described both the machine and process

The counsel for the applicant argued that the word “improved” in the patent claimed is vagueand is not clear. It is ambiguous in nature and therefore more clarity should be there.

The petitioner further argued that it is just a collection of known integers.

They further contended that patent has been obtained by suppression of information and there is no inventive step.

The petitioner counsel relied on the proposition of law laid down regarding revocation in  Air Master Equipments India (P) Ltd. v/s. Mr. Ramesh Nana Mahtre;M/s Bishwanath Prasad RadheyShyamv/sM/s Hindustan Metal Industriesand Monosanto Company v/s CoromandalIndag Product (P) Ltd.

 Expert Witnesses:

IPAB relied upon the expert opinion of Dr. D.D. Bhawalkar who had obtained the degree of PhD in ‘Laser technology’ from the University of Southampton, U.K. He had an opinion that there is nothing new described in the patents. He has written to M/s Legasis Partners that the laser marker is identical to US Patent No. 178. He has also stated that Galvos is in the market for a long time.

IPAB also consider the opinion of Mr. Utpal Nandi, another expert and a qualified Engineer from the Raja Ramanna Center for Advanced Technology for about 30 years. In his opinion, the patentee has not disclosed the appropriate facts related to prior art in Patent Office. Furthermore laser marker which was developed from components available in the market in 1995 at the Raja Ramanna Center. In his view there is no novelty or innovativeness in the said invention and if the patentee claims that the machine is improved one, he should show where the improvement lies.

 Respondent’s Arguments

The patentee rebutted relating to the cause of action. He also vehemently opposed the presence of technology in public domain. He merely denied all the prior inventions stating that all are different from his invention and are not known components.He further argued that if laser beam is not focused properly, the object cannot be marked and that is the most important and basic step of their basic process that is patented.  They also contended that they are unaware of Excel Control Laser publication.

According to the respondent, the applicants being non-technical did not understand the technical aspect of the invention and further that it is not a combination of known-integers or rearrangements.

Decision of IPAB:

Objections raised by the applicant were sustained by IPAB and the patents were revoked on the grounds that the invention was already known and there is neither any novelty nor any inventive step.