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REVOCATION OF PATENTS ACCORDING TO INDIAN PATENT ACT, 1970: INSIGHT

This article focuses on the revocation proceedings which is one of the mechanisms available for annulations of Patents in India.

  1. What is revocation of a patent?

When a patent has been sealed or granted, it is not always the case that the patent shall stay unhindered by any third party till the life of the patent. The patent can be challenged by certain people on different grounds, and a method to cause the same is by filing a revocation petition/ post-grant opposition proceedings. This article focuses on the revocation proceedings.

  1. Why does one file a revocation petition?

As the Patent Act does not presume Patents granted to be valid, rights granted on such Patents cannot be absolute. Third parties which are required to seek permission from Patentee for practicing any of the exclusive rights bestowed upon him are also given a chance to challenge the validity of the Patents. This challenge can be instituted on own as well as on Patentee asserting infringement of Patent rights.

  1. Who can file a revocation petition?

As per Section 64 of the Patent Act, 1970, the following persons can file the petition in the High Court:

  • any person interested[1];
  • the Central Government
  • the person making the counter-claim in a suit for the infringement of a patent
  1. Where can a revocation petition be filed?

Thus, a revocation petition can be filed in the Intellectual Property Appellate Board by the interested person or the Central Government, or it can be filed as a counter-claim in a suit for infringement at the High Court.

To bring in the aspect about jurisdiction of suits of infringement and the corresponding revocation petitions, Section 104 of the Patents Act, 1970 states that no suit of infringement can be brought before a court inferior to the District Court having jurisdiction to try the suit and in the event of a counter-claim for revocation of the patent made by the defendant, such suit for infringement and the said counter-claim must be transferred to the High Court.

  1. What are the grounds under which a revocation petition can be brought?

Under Section 64, the following are the said grounds:

  1. the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
  2. the patent was granted on the application of a person not entitled to apply therefor;
  3. the patent was obtained wrongfully in contravention of the rights or the petitioner or any person under or through whom he claims;
  4. the subject of any claim of the complete specification is not an invention;
  5. the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known to publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13;
  6. the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;
  7. the invention, so far as claimed in any claim of the complete specification, is not useful;
  8. the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, that is to say, that the description of the method or the instructions for the working of the invention as contained in the complete specification are not by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of the art to which the invention relates, to work the invention, or that it does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protection;
  9. that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
  10. that the patent was obtained on a false suggestion or representation;
  11. that the subject of any claim of the complete specification is not patentable under this Act;
  12. that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
  13. that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
  14. that the applicant contravened any direction for secrecy passed under section 35
  15. that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
  16. that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
  17. that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
  1. Does revocation restrict itself to Section 64?

It is important to note that section 64 does not restrict grounds to be used in revocation to only those provided in section 64 whereas section 25 (2) setting out grounds used in post-grant opposition proceedings is restrictive in nature.

  1. What are the other provisions concerning revocation?

Under Section 65, if a patent is claimed to be related to atomic energy, a revocation petition can be filed against it. Such patent shall not be granted under the Atomic Energy Act, 1962 and shall be revoked. Under Section 66, if the Central Government is of the opinion that a patent or the mode in which it is exercised was mischievous to the State or prejudicial to the public, after giving an opportunity to the patentee to be heard, it may make such declaration in the Official Gazette and the patent shall stand revoked.

Moreover in the Enercon (India) Ltd and Ors. v Enercon Gmbh (2014) 5 SCC 1 , it was laid down by the Supreme Court that when post grant opposition proceedings are instituted by a party, he cannot institute a revocation petition or counter-claim of revocation proceeding against the same patent.

  1. “‘Person interested’ under Section 64 would mean a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register. (Ajay Industrial Corporation v Shiro Kanao of Ibaraki City AIR 1983 Del 496)”

About the Author :  Ms. Anjana Mohan, Symbiosis Law School, Pune, intern at Khurana and Khurana, Advocates and IP Attorneys. Views expressed in this article are solely of the intern and do not reflect the views of either of any of the employees or employers. Queries regarding this may be directed to swapnil@khuranaandkhurana.com or swapnils@khuranaandkhurana.com.

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Post-grant opposition and revocation proceedings under Indian Patent Act: what is better?

Patent Act, 1970 provides opposition/ revocation mechanisms to make sure that undeserving Patents are not granted in contravention of the provisions of the Act and if they are granted, they can be opposed/ revoked. Grant of patent can be opposed before as well as after grant of patent. Relevant sections for different mechanisms, locus standi, jurisdictions where they can be entertained, timelines within which they can be opted, and the grounds on which they can be based have been summarized in the below table:

Point of Comparison Pre-grant opposition Post-grant opposition Revocation
Section 25 (1) 25 (2) 64
Locus Standi Any person Person  Interested Person  Interested, Central Government or alleged infringer in a counter-claim
Jurisdiction Patent Office Patent Office Intellectual Property Appellate Board (IPAB) and High Court
Timelines Any time after publication of the application till the grant of the patent At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent Any time after grant of the patent
Grounds Limited  to those provided by section 25 (1) Limited  to those provided by section 25 (2) Not limited to the grounds provided by  Section 64

When we carefully analyse the mechanisms, it is evident that post-grant opposition gets stricter than pre-grant. However, down the time after grant, story again changes wherein in revocation, locus standi is also provided to central government, timeline for revocation is not restricted to 1 year after publication of grant and also the words ‘but on no other ground’ which appear in 25 (1) and 25 (2), do not appear in section 64. Absence of these words can be construed to mean section 64 does not require person to stick to the grounds provided by section 64 like section 25 (1) and section 25 (2) do.

Further observation also indicates that standard of obviousness required to oppose the patent during post-grant opposition is higher than that required during revocation.

Section 25 (2) (e) and section 64 (f) has been reproduced below:

Section 25 (2) (e): that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;

section 64 (f)

that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:

It can be seen that section 64(f) unlike section 25 (2) (e) does not require invention to be clearly not involving any inventive step. Interestingly section 64 not only allows other grounds than those provided by section 64 to be used in the revocation, it also provides more/ additional grounds than those provided by section 25 (2).

While it is clear that revocation at high court cannot be chosen unless patentee has asserted patent infringement, revocation at IPAB can be chosen any time after grant and even when patentee has not asserted infringement. Patent revocation cannot be sought once proceedings for patent opposition under section 25 (2) have been initiated and are pending. Therefore, one has to clearly think of the advantages revocation proceedings provide over post-grant proceedings.

Revocation of Valganciclovir patent by Controller of Patents, Chennai

Recently in a matter remanded from IPAB to Controller of Patents, Chennai, a decision of revoking Roche’s patent IN207232 for Valganciclovir was delivered after hearing both the parties. The subject patent was granted on January, 2009 followed which post grant oppositions were separately filed by CIPLA, Matrix, Ranbaxy and Bakul Pharma along with two NGOs Delhi Network of Positive People and lndian Network for People living with HIV/AIDS & The Tamil Nadu Networking People with HIV/AIDS (hereinafter INP+ and TNNP+), wherein INP+ and TNNP+ were allowed by the Apex court to raise all contentions in the form of an intervention cum affidavit before the Assistant Controller and the parties agreed to be heard along with CIPLA, Matrix, Ranbaxy and Bakul Pharma. In the opposition proceedings, the patent was revoked limiting it to single process claim by the Controller of Patents on 30.04.2010 and being aggrieved by this decision, Roche filed an appeal at IPAB challenging the decision. IPAB on 30.01.2014 set aside the Patent Controller’s decision to revoke the patent on technical grounds and remanded it to the Controller for re-consideration.

Issues before the controller:

  • Determining whether the expert evidence was prior art publication or disclosure

Answering the issue, controller observes that the expert evidence is not a prior art document to be relied upon for deciding a case, but it may be considered for understanding the prior art documents, if the evidence covers such prior art documents. The opinion of the expert evidence, if it is based on further laboratory or animal study of a given subject matter, it cannot be considered for concluding such invention because it is later acquired knowledge, but it can be used for understanding the present invention. Therefore, expert evidences cannot be considered as prior publications/disclosures, but it can be taken as opinion on the prior arts.

  • Deciding upon the obviousness of the present invention

The next issue which the controller addressed was whether the present invention was obvious with respect to prior art references. The controller observes that the present invention is obvious against two prior arts US 4957924 and EP 0375329A2.

Claim 1 of the present invention recites,

  1. The compound 2-{2-amino-1, 6-dihydro-6-oxo-purin-9-yl} methoxy-3-hydroxy-1-propanyl-L-valinate or a pharmaceutically acceptable salt thereof, in the form of its (R) or (S)- diastereomers, on in the form of mixtures of the two diastereomers.

Regarding this , the controller states that the monovaline ester of ganciclovir is disclosed in the form of Markush formula in EP ‘329, which covers both monovaline and di-valine ester of ganciclovir where support for the both mono and di-valine ester of gancicloviris is provided in the specification. Thus the disclosure of EP ‘329 is clear and unmistakable direction to the mono valine ester of ganciclovir. Hence, a skilled person working in the synthetic chemistry field can easily arrive at the present invention without further experimentation. Therefore mono valine ester of present invention is anticipated by EP’329. Controller further emphasizes that claim 1 of EP ‘329 clearly and unambiguously discloses as at least one of the substituents is valine residue which indicate the presence of mono valine ester. Therefore, EP’329 undoubtedly disclosed mono valine ester of ganciclovir.

With respect to process claim, controller observes that the synthetic method for preparing mono valine ester of ganciclovir as claimed in independent claim 12 of present invention may not be explicitly disclosed in EP ‘329, but said method is just a general method for coupling acid group in the amino acid with hydroxyl group, which can be adopted for any type of alcohols. Therefore, using EP’329, a person working in the synthetic chemistry can easily prepare ester of ganciclovir with lysine without undue burden.

Further the controller observes that the object of the present invention is to provide a prodrug of ganciclovir with improved oral bioavailability. Controller notes that the solution for poor absorption in the gastrointestinal tract for acyclovir is disclosed in US ‘924 patent. Therefore a person skilled in the art can perceive to prepare mono valine ester of ganciclovir from the teachings of both EP’329 and US’924 references. Thus all the claims including process claim are obvious to a skilled person in the art.

  • Deciding upon the efficacy of substance under the subject patent under section 3 (d)

Deciding upon the efficacy of substance under the subject patent, the Controller observes that the new form L-monovaline ester of ganciclovir molecule has shown improvement in oral bioavailability than bis-valine ester of ganciclovir and ganciclovir, whereas there is no support in the specification pertaining to efficacy. Controller observes that the ester modification of the present invention was made to protect the substance from destruction in the gastrointestinal tract and make the molecule more bioavailable. Thus the controller has ruled that while bioavailability is one of the factors affecting efficacy, it cannot be directly equated to efficacy. Citing Hon’ble Supreme Court of India’s decision on Novartis case, the Controller rules that: “lmprovement in bioavailability of the new form cannot be considered directly related to efficacy. Even any unforeseen property observed in new form, unless such property directly relate to efficacy, it will be considered as inherent property of such substance. Since there is no direct relation shown for the improved bioavailability of new form of ganciclovir in the description with regard to significant difference in the efficacy, and therefore such a new form shall be considered as a same substance. Thus new form of the present case Monovaline ester of ganciclovir is considered as a same substance i.e. ganciclovir because,the difference in enhanced efficacy is not shown in the complete specification.” According to the controller, since there is no direct relation shown for the improved bioavailability of new form of ganciclovir in the description with regard to significant difference in the efficacy, therefore such a new form shall be considered as a same substance. Further regarding process used for preparing present invention, the controller held that the process used to prepare new form is a conventional process as it is already known process as disclosed in EP ‘329. Thus, the Controller rules that the present patent was a ‘mere use of a known process’ which was not patentable under S. 3(d), Patents Act.

  • Locus standi of the two NGOs as “person interested” under section 2(1)(t)

Deciding the locus standi of the two NGOs, as person interested under section 2 (1)(t) of patent act, Controller notes that NGOs would fall under the ambit of persons interested as the criteria of locus standi in post grant opposition is to be viewed in broader perspective to grant quality patent. According to the Controller, the two NGOs are the end users or directly affecting parties, if the patent is granted. Thus it is held by the controller that viewing in to the broader prospective, the two NGOs falls under the purview of under section 2 (1)(t) of the patent act and hence the parties have locus standi to oppose the patent.

Thus hearing all the parties and considering all facts and relevant arguments, the Controller revoked the patent granted for the drug Valganciclovir under section 25(4) of Indian Patent act.

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

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

Cipla Files Representation with Govt. Seeking Revocation of Novartis’ Patents

It has been recently reported in Economic times that Cipla has filed representation with the government (Department of Industrial Policy & Promotion) seeking revocation of five patents of Novartis on indacaterol, a respiratory drug for the treatment of chronic obstructive pulmonary disease (COPD) and marketed as Onbrez by Novartis. The central government, under section 66 of the Indian Patent Act, has the power to revoke patent in public interest, after giving patentee an opportunity to be heard.

According to section 66,

“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.”

Cipla has launched its generic version of indacaterol and alleged that Novartis held patents on indacaterol since 2008-09 without manufacturing in India and importing only in negligible amounts, as a result of which there is an urgent and unmet need to provide this drug to patients at affordable prices. According to Cipla, it has potential to manufacture adequate quantities of the drug to make available in the country.  Cipla’s launched generic version of indaceterol is reported to be 1/5th of the price of Novartis’ Onbrez.

This is the first time that an Indian generic company has asked the government to revoke patents on the ground of public interest under section 66. Otherwise, the revocation has always been sought on grounds under section 64 (for example obviousness, anticipation, insufficient disclosure, violation of section 8, 3d etc.), whether an Indian company has filed a revocation petition or a counter claim in an infringement suit. However, public health and drug price play significant role in deciding a patent’s fate in India especially in context of Compulsory Licensing of patent as it happened in Natco’s case. Even in Roche v. Cipla, public health and pricing issues were considered by the India courts, although the decision at the High Court was based on merits of the case and not in public interest.

It is highly expected that Novartis will take a legal course to challenge Cipla’s launch. Novartis has been very active to protect patents for its one of the blockbuster anti-diabetic drugs vildaglipton in India. Novartis has sought, just a few months ago, quia timet interim injunctions against several Indian generic companies including Glenmark generics, Bajaj healthcare, Cadila healthcare, Alembic pharmaceuticals against alleged patent infringement of vildaglipton even before they actually launched their generic versions and after they obtained marketing approvals from DCGI.

Thus Novartis will most likely file patent infringement suits seeking interim/permanent injunctions restraining Cipla from manufacturing and selling generic version of indacaterol in India.

On another note, Cipla could also have applied to obtain a compulsory license to manufacture and sell indacaterol before launching the drug. All three grounds of granting compulsory license under section 84(1) viz. reasonable requirements of public not being met, drug non-affordability and non-working of patent in India could have been proved by Cipla. According to Cipla, Novartis declared import of meagre 53,844 units for the year 2013 which do not satisfy even 4500 patients annually where there are more than 1.5 crore patients in need of the drug. Cipla also urged the government to consider COPD as an epidemic worthy of being qualified as a “public health crisis” as it claims 50 lakh lives annually in India, which is more than the toll from HIV-AIDS, malaria, cancer and tuberculosis.

Till now, we are not aware of any case in India wherein the government has revoked the patent in public interest under section 66. The outcome of government opinion to revoke said patents is thus eagerly awaited. This would act as precedent for all similar future cases. And if the government decides to revoke the patent under this section, the ongoing conflict between multinational innovator companies and Indian generic companies is going to intensify. Innovator companies criticize that India has weak patent laws not in compliance with international standards, whereas Indian government takes a stand that its patent laws are in compliance with TRIPs standards and are designed to meet the objectives of drug availability, affordability and accessibility.

 About the Author: Meenakshi Khurana, Partner at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: meenakshi@khuranaandkhurana.com

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

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

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

Section 65 of the Act says:

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

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

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

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

Section 66 of the Act says:

66. Revocation of patent in public interest. –

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

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

Revocation of Agracerus’s Patent

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

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

The main claim of the patent stated:

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

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

Government Action

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

Revocation of Avasthagen’s Patent

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

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

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

Government Action

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

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

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

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

Conclusion

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

GSK’s patent on lapatinib ditosylate revoked by IPAB

GSK’s granted patent IN221171 (‘171) on lapatinib ditosylate (marketed as Tykerb), a tyrosine kinase inhibitor for treating breast cancer, was revoked by IPAB by its order of 27th July, 2013.

A revocation application was filed by Fresenius Kabi Oncology Limited. The patent is revoked on ground of non-compliance with S.3d alone on basis of no proof of enhanced therapeutic efficacy vis-a-vis lapatinib di-HCl salt (known compound). Still IPAB discusses the grounds of obviousness and non-compliance with S.8 in detail as it considers these grounds important.

Section 3d

IPAB very straight forwardly failed the test of section 3d for the ‘171 patent. Taking precedent of Novartis Glivec case, it was held that there was no enhancement in therapeutic efficacy of the ditosylate salt as compared to the di-HCl salt and thus “the patent deserves to be revoked”. The only enhancement w.r.t the di-HCl salts was the increase in moisture absorption property and the increase in stability which are physico-chemical properties.

Next IPAB discussed the grounds of obviousness and Section 8, though it considers that non-compliance with Section 3d itself revokes the patent.

Obviousness

GSK’s basic patent (IN221017) on lapatinib was cited as prior art (D1) in view of three other prior art documents D2 to D4. It was argued that D1 describes a list of acid addition salts which exemplify 19 acid addition salts among which p-toluene sulphonic acid salts were one of them and even one Example 29 is a tosylate salt.

It was held that at the time of invention of ‘171 patent, the inventors knew that the HCl salts of lapatinib were hygroscopic and thus having stability issues (described in background section of the ‘171 patent). D3 and D4 are non-patent basic literature articles describing selection of salts and pharmaceutical salts respectively. D2 is a prior patent WO 98/25920 disclosing tosylate salts of 3-pyridoxyl alkylene azetidine-2-yl compound and that these are less hygroscopic, more crystalline, more stable, have a higher melting point and are readily purifiable as compared to hydrochloride salts. It was argued that D3 discloses that aryl groups are said to minimize hygroscopicity as opposed to the poorly stable hydrochloride and sulphate salts which teaches towards tosylate or ditosylate salt with reasonable expectation of success in combination with D1, D2 and D4. D2 further teaches tosylate salts to sorb less moisture, are more stable and crystalline.

IPAB clarified that the skilled person in obviousness analysis in Indian law is the person skilled in the art (Ms. SITA) rather than the person having ordinary skill in the art (PHOSITA) as used in US law, in reply to the Respondent’s citing of US case laws and description of skilled person as PHOSITA. IPAB held that the skilled person (Ms. SITA) would know at the time of the invention of the problem of the hygroscopicity and stability of HCl salts and it would be obvious to try for her to select ditosylate salt as taught by D1 in view of D2 to D4. IPAB further held that whether D2 belonged to another class of compounds (read analgesics) would be immaterial. IPAB asserts that:

“Salt selection especially if there is a wide range is not a matter of routine, according to the respondent. Even if we accept this as correct, it does not help the respondent. Ex D is about salt selection and it shows that aryl groups present a hydrophobic barrier to minimize hygroscopicity. The Person Skilled in the Art would look at Ex.C  and find that the tosylate salt of such 3-pyridoxyl alkylene azetidine-2-yl compound shows exactly the same qualities that the persons in this field are looking for in relation to Lapotinib. She knows that tosylate compound is a preferred compound from Ex B and that it can be prepared by Procedure D. She is not a dullard she can do experiments with skill. She is more likely to think “Let me try a tosylate first. If it demonstrates the same improvements as it has in Ex-C then I need not search further.” She would have tried a tosylate with a reasonable expectation of success.”

                                                                              Ex D = D3, Ex C = D2 and Ex B = D1

IPAB finally held that if the salt selection were to be made from a vast variety of salts by testing each compound with no clue available, then selection of one particular salt is not easy but in this case the clue is provided by D2 to D4 which makes the invention obvious.

Section 8

IPAB rejects the ground of Section 8 in the absence of pleading and proof of violation. IPAB stated that:

“It is not enough to merely reproduce the language of the section. A S.8 violation has severe consequences and the case for it has to be made out. The facts have to be pleaded and the applicant must state how the particular undisclosed application was for the same or substantially the same invention. It is also not enough to just file the documents along with an affidavit. The least that the deponent shall state is how each application mentioned therein is for the same or substantially the same invention”

On another note, IPAB stressed the importance of compliance with S. 8 in a number of ways as shown below. In the opening sentence under the S. 8 heading itself, IPAB states that

S.8 destroys a patent which is otherwise patentable on grounds which have nothing to do with the invention, but only with the Inventor’s lapse during the grant proceedings”.

Further excerpts of IPAB are as below:

“The Controllers cannot ignore it and condone the breach. The patentee cannot  tell the Examiners, ” We are filing applications nineteen to the dozen, compliance is very difficult, and in any case there is the Super Kamadhenu the Internet which will give you what you want.”

In view of what is stated in the Ayyangar Committee Report, we are of the opinion if in any of the foreign offices the patentee had made a division or was required to make a division, in respect of the same or substantially the same invention or had amended or was required to amend in respect of the same invention or substantially the same invention such information regarding division or amendment would also be information required to be furnished under Section 8.”

Patentees must comply with S.8 (1) provision however inconvenient it is.”

Fresenius Kabi also filed revocation petition against GSK’s basic patent IN 221017 claiming Markush structure encompassing lapatinib and pharmaceutically acceptable salts (discussed as D1 hereinabove) on grounds of obviousness, non-compliance with S.3d and S.8. This revocation petition however was dismissed by IPAB. We would discuss this in detail in an upcoming article.

About the Author: Ms. Meenakshi Khurana, Patent Attorney at Khurana & Khurana and can be reached at: Meenakshi@khuranaandkhurana.com

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Tata Chemicals vs. Hindustan Unilever Limited Revocation Proceeding for IN 195937: Would compliance of Section 8 become a nightmare for Patent Applicants?

This article relates to a recent judgement of IPAB on 12’th July 2012 on revocation of an Indian Patent IN 195937, wherein certain interesting aspects relating to developing standards for revocation under Section 8 of the Indian Patent Act, 1970 have been discussed and put forth, quite strongly!!

Case Summary:

In summary, the case relates to IN 195937, which corresponds to Application No. 709/MUM/2002, of Hindustan Unilever Limited (HUL) issued on 26’th Aug 2005. First independent claim of the present subject matter relates to a filter cartridge and claims:

1. A filter cartridge for the treatment of water which comprises an inlet for the water to be treated, the inlet communicating with a downwardly extending hollow passage adapted for gravity flow of water there through, the hollow passage being connected at its lower end to at least one filter media, and an outlet for exiting treated water from the filter media;

Fig. 1 of ‘937 Patent is illustrated below:

 

In operation, impure water first passes through a hollow central tubular passage (TP) and thereafter, near its bottom end, traverses through a “U” path into a first annular concentric chamber (FCC) constituting a resin bed. After passing through the resin bed the water is allowed to travel upward into a second annular activated carbon chamber (SCC), which is again a concentric chamber operatively connected to the annular resin chamber.

The proposed novelty of the respondent (HUL) lies in:

1. Upward flow of water (from bottom) through the resin (filter media) for its treatment; and

2. Presence of a hollow space immediately on entrance of water into the cartridge so that there is a hollow passage between the inlet and the filter media, such that the water flows under gravity in the hollow passage and against gravity through the filter media to provide improved filtration and to avoid air entrapment.

Novelty and Obviousness Issues:

Two references US 6,387,260 (‘260 hereinafter) and European Patent 1106578 (‘578 hereinafter) were primarily relied for arguments by the Applicant for novelty and obviousness of the claimed subject matter.

‘260 patent in the Summary Section states “the filter cartridge comprises a housing with a filtration chamber therein and a sealed cavity in the upper portion thereof. A liquid inlet is at the bottom of the housing to permit liquid to flow from the container into the filter cartridge, upwardly through the filtration chamber, into a sealed cavity, and downwardly out of the filter cartridge through a fluid conduit of restricted cross sectional area the exit end of which is elongated to extend below the liquid inlet in the bottom of the filter cartridge. A vacuum is created in the sealed cavity which causes a siphon effect that draws additional liquid through the filter cartridge.”

Col 4, Line 41 of ‘260 also states “which contains liquid to be purified, into the lower part of filter cartridge 20 through apertures 21 the bottom thereof, and then upwardly through filtration media 7 within cartridge 20, through opening 22 and into sealed cavity 6 located at the upper part of the filter cartridge 20.”

Claim 1 of ‘260 states: 1. In combination, a) a filter cartridge for liquid purification comprising a housing having a top, a bottom, and a side wall, and having a filtration chamber therein characterized in that it has a sealed cavity in tile upper portion thereof; a liquid inlet in said housing to permit liquid to flow from an unpressurized source of liquid to be purified into the filter cartridge; means for providing a vacuum in the sealed cavity comprising a tubular element having an inlet in the sealed cavity and extending from the sealed cavity..

Fig. 1-4 are also relevant in structure and construction to ‘937 Patent.

EP ‘578, on the other hand, does not have an English translation, but does disclose a filter material 37 and central tube 31, wherein the central tube 31 distributes water and allows it to flow towards the filter material 37 to be filtered in the upwards direction, which clearly maps with the two inventive features of ‘937 as mentioned above. Following figure of ‘578 is of relevance,

Section 8 Deliberation:

Following gives a quick background of the family of the ‘937 Patent

  1. GB Priority Application was first filed vide Application No. 0307146 on 28.03.2003.
  2. PCT Application filed on 21.7.2003 taking priority of Indian and GB Application.
  3. PCT Application designated GB as one of the countries
  4. GB Application ‘146 terminated on 08.12.2003.
  5. The respondent, in response to the first and second examination reports, only informed about PCT Filing along with UK Application being pending but did not submit IPER, which was available when the second examination report was replied to.

In view of the above, let’s first have a quick look at relevant portions of Sections 8(1) and (2), which state:

Information and undertaking regarding foreign applications

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application [or subsequently 5[within the prescribed period as the Controller may allow

(a) a statement setting out detailed particulars or such application; and…

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Although, both the above clauses clearly state that relevant information/details pertaining only to a country outside India needs to be presented, the moot point held by IPAB was that IPER related to processing an application in a country outside India and that “the word ‘processing’ is an all encompassing word, it would take within it the series of actions or steps to be taken in order to achieve a particular end.

Furthermore, it was submitted that if under 8(1), the Respondent itself had mentioned the PCT details, then it inherently did assume the PCT to relate to a country and therefore was liable to fulfil the obligation of giving all the details of the PCT as well. This was inspite of the fact that the very patent that was discussed in IPER was also cited by the Indian examiner in the FER and therefore was already deliberated and considered for examination.  However, this argument too, according to IPAB, does not waive off the duty of the respondent to submit all relevant information.

The above decision, particularly in light of the interpretation of Section 8, raises few concerns:

  1. First, isn’t too much weightage being given to the manner in which compliance of Section 8 is being done by an Applicant.  I really wonder, in case ‘578 and ‘260 references not been relevant enough to destroy the novelty and render the subject matter obvious, would the argument on Section 8 alone, helped revoke the patent. I really hope no!!
  2.  Is it actually practical for patentees to submit all relevant information in the manner desired, in time, without any time delays, and without lapses? Requests under section 8(2) ask for translation of search and examination reports in all major countries and therefore such requests also include submission of office actions and responses thereto from countries such as Japan, China, and Korea. Is it actually practical for the Applicant to get all these documents translated at a significant cost merely for meeting the requirement of the Indian Patent Office?
  3. Although I do agree with the rational behind submission of ISR and IPER for PCT cases (especially when they are not yet published during the responses to the examination reports) and also agree with the decision in the present case with regards to interpretation of Section 8 (but would reserve my comments for brevity and rather focus on the concerns), I believe that putting forth such strong views in a decision, is giving nothing but a scare to International Applicants for the repercussion that their Applications could have in case there is single lapse, moreover when such a lapse is not even related to the claimed subject matter of the invention. I am also highly doubtful if even one granted patent in India would have actually, with complete accuracy, complied with the Section 8 requirement in time.

Personally, for the benefit of the entire fraternity, I believe it would be most beneficial if the Patent Office could, through an official notification, objectively point to the kind of references they expect, countries from which the references are to be disclosed, translation of which documents is absolutely critical, for compliance of Section 8, so that not only there is clarity at the Applicant’s end but also so that the process does not become a nightmare for them.

Finally, I am sure we are headed in a direction where we make things more comfortable for the patentee rather than for the infringer and hope not to come to a situation when the infringer raises “non-compliance of Section 8” as the sole ground for revocation under Section 64, and wins the case!!!

About the Author: Tarun Khurana, Patent Attorney, available at tarun@khuranaandkhurana.com

Question of claim amendments by patentee in India

We would discuss hereinbelow the various scenarios when the patentee can seek amendment of the specification and claims of his patent. Further this Article would examine as to when and when not the patent amendment should be allowed during pendency of patent infringement suit. The Author, at the end, presents a hypothetical case to raise questions unanswered by Indian courts at the moment.

The statutory provisions containing amendment of patent applications/patents are contained in sections 57 to 59. Section 57 explains that an Application for Amendment can be filed to the Patent Office any time after grant of the patent, subject to the condition that the Controller would not pass any order of refusal or acceptance during the pendency of a patent infringement suit or patent revocation proceedings. Further Section 58 points out that the High Court or Appellate Board instead of revoking a patent in a revocation proceeding may allow the patentee to amend the specification or claims in case the patent is held to be invalid. All these amendments must be by way disclaimer, correction or explanation and without going beyond the scope of the unamended specification (Section 59).

So the two scenarios seem to be clear:

  1. One is when the Patentee can file Application of Amendment at any time after the grant of the patent.
  2. Second is when patentee can amend his specification or claims after Application for revocation is filed against him and his patent (first independent claim) is held to be invalid.

We would now discuss the third scenario that is the amendment by the patentee during the pendency of a patent infringement suit. In one case before the Delhi High Court in 2009, the patentee (plaintiff) filed an application for amendment (under section 58) of claim 1 during pendency of patent infringement suit. (AGC Flat Glass Europe SA Vs Anand Mahajan and Ors) The patentee added words “a sensitizing material, typically tin” in claim 1 on a mirror without copper layer in its coating.

The question was whether this amendment was allowable or not. The defendant contented that this amendment changes the scope of the original invention. On this, the court referred to UK decisions and divided such amendments into two categories: “the first one is a situation where the patentee has been apprised of prior art by an opponent and amendment is undertaken to overcome the prior art; the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent”. The second category did not apply to this case. The amendment was held to be allowable in this case.

The Court pointed that the amendment was within the scope of the invention as the description clearly mentioned the presence of a sensitizing process as one of the three stages in manufacture of mirrors and patentee’s amendment is by way of explanation.

Till now it becomes clear that the Court may allow the patentee to amend his specification or claim during the pendency of infringement proceedings, of course subject to the conditions of Section 59.  However, there are no existing decisions upon certain other facts which I would like to bring here by way of a hypothetical case. Suppose, a patent has been granted to an Applicant in 2008 in India whose equivalent United States patent was granted in 2009. The Indian patent’s first independent claim says,

  1. A composition comprising “A” and “B” in weight percentages of “x to y” %  and “p to q” %.

Consider “A” and “B” as two broad classes of compounds. The dependent claims claim the specific compounds in narrowed concentration ranges.

The first independent in US has been narrowed down by the Applicant to the specific compounds contained in those classes following the rejections of novelty by USPTO in light of the closest prior art Z. The US equivalent’s first claim is:

  1. A composition comprising “A1” and “B1” in weight percentages of “x1 to y1” % and “p1 to q1” %.

Now suppose a competitor company launched a product in India containing the specific compounds A1 and B1. The patentee (patentee) filed a suit for infringement of its patent. The competitor company (defendant) files a counter statement invalidating the patent’s first independent claim in light of the prior art Z. The Patentee then files an application of amendment amending its claim 1 by bringing the claim limitations of dependent claims into claim 1 to overcome the prior art cited.

Now the question is, should patentee be allowed to do this claim amendment at this stage? From our understanding of the precedents, we believe that the patentee should not be allowed to make such claim amendment. Delhi High Court in the previous discussed case clearly referred to UK decisions on claim amendment issues which point that the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent.

In this hypothetical case that we are discussing, it is clear that the patentee had clear knowledge of the prior art Z since the US patent was granted but he did not take any steps to amend the Indian Patent after that. Further, isn’t the patentee under continued obligation under section 8 to keep the Controller updated of the office actions in other countries till the grant of the patent which the patentee failed to do so in this case. The Indian Patent was granted after the US patent grant. I believe the patentee should feel the brunt now for not amending the claim earlier and in this case, the patent should not only be revoked on grounds of anticipation, but also wrongful obtainment of patent Section 64 (1)(c). Further, if such claim amendment is allowed, the patentee, as a precedent, would always get a free hand to amend his claims anytime during the patent life, and to draft the first claim unreasonably broad, knowing fully well of the invalidation actions that can be put on in front of him post the grant of the patent.

About the Author: Meenakshi Khurana, Patent Specialist at Khurana & Khurana, Advocates and IP Attorneys.

ENERCON INDIA LTD. (EIL) VS. ENERCON GMBH (EG)

This article is directed to interested persons who have not been regularly following the Enercon Case, one the few patent litigation battles which have seen the light of day and is setting new standards in decision making on issues relating to formality rejections and obviousness/inventive step issues. This article puts a quick snapshot of what has happened so far in the contention along with the facts involved in the case:

Introduction Facts:

  1. EG is among the world’s leading wind turbine manufacturers and had set up EIL in 1995 having 56% stake in the company. After company level disputes EIL litigated against EG with as a result retaining control of EIL and Mr. Mehra remaining the Managing Director of the company.
  2. Disputes over certain Licensing agreements led to EIL filing invalidation appeals/revocation petitions at the Intellectual Property Appellate Board for 23 patents (in the name of Mr. Wobben) of EG in Jan 2009. After hearing both parties through October and November, 2010, a bench of the IPAB, consisting of Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member revoked 12 EG’s patents. Decision of IPAB on the preliminary matters relating to Misc. petitions, dated 27’th July 2010, can be seen here in which IPAB directed miscellaneous petitions to be considered along with the respective original Revocation applications thereby dismissing the writ petition.
  3. EG made an appeal against this preliminary order of the IPAB, praying for the Madras High Court to issue a writ of certiorari to strike down the impugned order. Judgment is made available here. The issue at discussion was the whether Mr. Yogesh Mehra, MD, of EIL, had the locus standi to maintain the application for revocation. On the one hand, according to the respondent, Mr.Yogesh Mehra relied on a Board resolution dated 27.04.2007, which according to them authorized him to institute suits and proceedings on behalf of the company. This was contraverted by the writ petitioner EG by stating that the resolution dated 27.04.2007 was void and non-est. The Madras High Court relied on the decision by the Hon’ble Supreme Court in the case of M/s. Fomento Resorts and Hotels Ltd. and specifically took note of the fact that when, there is a possibility of appeal all issues have to be taken up and decided. As the facts of the case clearly indicate that there is a definite possibility of appeal against the decision of the Tribunal and the present writ petition itself is one such illustration. Therefore, court ordered that the Tribunal rightly directed miscellaneous petitions to be considered along with the respective Original Revocation Applications thereby dismissing the writ petition.
  4. Substantive disclosures of how the 12 patents were striked down have not been right now made available but one such order was for Patent No. 199045 dated 3’rd December 2010 has been shared by MIPR.
  5. Furthermore, even though issues relating to locus standi were raised by the EG’s counsel which discussed on whether Mr. Mehra could be considered as an interested person, our discussion is strictly on the technical side of patent revocation and not on the legalities relating to authorization of Managing Director who has not been duly authorized by the Board of the Indian Company viz. EIL to sign the revocation application and further his ability also to file the affidavit in respect of the revocation application for the revocation of the subject patent..

Analysis of One Exemplary Patent:

Indian Patent No. 199045 (Corresponding WIPO Application can be accessed here)

Abstract:

The present invention concerns a wind power installation having a tower head of the wind power installation, comprising a flange for receiving a connection which is suitable for receiving the tower head ,f the wind power installation. Therefore the object of the invention is to provide a tower of a wind power installation having a flange for receiving a connection, wherein the tower does not suffer deformation in respect of its cross-section, in particular in the region of the flange, by virtue of the inherent weight of the tower, during manufacture and/or transport. A tower of a wind power installation for carrying a tower head of the wind power installation, comprising a flange for receiving a connection which is suitable for receiving the tower head of the wind power installation, characterized in that there is provided a partition or a ring bulkhead in the tower interior at a spacing of between preferably 1.0 m and 7.0 m from the flange, and the partition or the ring bulkhead substantially forms a disc which is connected to the tower wall in the tower interior and passes through the tower.

First Independent Claim as granted:

1. A wind power installation having a tower head of the wind power installation, comprising: a tower for supporting the tower head, the tower having an interior and a flange for receiving a connection that is suitable for receiving the tower head of the wind power installation; and a ring bulkhead in the tower interior at a spacing of between 1.0 m and 7.0 m from the flange, wherein the ring bulkhead substantially forms a disc that is connected to an interior wall of the tower.

Reliance was made on US Patent No. 3,761,067 having cited portions Col 1 (Lines 3-5) disclosing cooling towers, Col 1 (Lines 25-30, and Lines 43-44) for giving relation to the same problem that patent under revocation is attempting to provide a solution for, Col 1 (Lines 46-54) and Col 1 Lines 62-65 disclosing stiffening rings for force distribution, wherein the rings are ring or disc shaped.  ‘067 therefore disclosed the proposed inventive step of the subject patent by disclosing a ring structure in the tower, wherein the ring is disc shaped.

It was furthermore stated that a tower having a flange was already admitted by the Applicant of the patent under contention to be existing in the art and hence made part of the Background section of the patent application by stating that “A flange is usually provided at the end of the tower, in the case of the steel towers. That flange forms the flat support surface of the tower for receiving an azimuth mounting, in which respect ball-type rotational connections as are known in the general art are predominantly used as the azimuth mounting. This is shown in Figure 1.” Hence a flange for receiving a connection of a tower head couldn’t be considered as an inventive step.

Reliance was also made on US Patent No. 1,947,515 titled Elevated Tank wherein Page 2 Lines 90-99 was submitted to have disclosed use of a ring 27 which was riveted or welded circumferentially within the tower.

Reliance was also made on US Patent No. 4,261,931 titled “Cooling tower with fluted wall” discloses with cited portion being Col 5, Lines 30-40 wherein horizontal circular rings were disclosed to withstand the compressive loads.

Reliance was also made on US Patent No. 4,010,580 on similar inventive step grounds.  It was also stated that all the above four cited prior art references have not been discussed or been deliberated before in the prosecution for the corresponding patent in other geographies including US, EP, or India and hence the prior arts are valid and should be considered relevant.

It was finally concluded that “Comparing the inventive features in ’067 patent and the inventive features as construed from the principal claim 1, no difference in the invention claimed in the claim of the impugned patent could be perceived or notices.” It was therefore ordered by Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member that the application for revocation of patent has been allowed.

  1. After having 12 of its patents striked down by IPAB, EG, in Feb 2011, surprisingly filed an appeal before the writ jurisdiction of the Delhi High Court against the Orders of the IPAB striking down 12 patents belonging to Dr. Wobben even though the case would typically have come under the jurisdiction of Madras High Court as IPAB that heard the revocation proceedings was based on Chennai and not in Delhi.
  1. In April 2011, it has also been reported that Enercon GMBH has also filed further writ appeals before the Madras High Court against the Orders of the IPAB revoking several of his patents. The appeals have therefore been filed in both the jurisdictions
  1. In the latest bit of update on the progress of the case, Enercon GMBH filed applications for withdrawal of three of its appeals for counterclaim against 3 of its revoked patents were accepted by the Delhi High Court. As the appeals against the other 9 revoked patents are going on in Madras High Court, it is quite possible that these 3 withdrawn appeals might get filed at the Madras High Court for consistency and other possible reasons.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.