Enercon – Jeopardizing Patentees’ Rights

While a detailed analysis of the latest decision in the Enercon case [viz. judgment dated June 2, 2014 of the Hon’ble Supreme Court of India in Dr. Aloys Wobben and Anr. v.Yogesh Mehra and Ors.] is long overdue [and I wish to cover it in greater detail in subsequent post(s)], in this post I’d like to put spotlight on a critical piece of the finding by the Hon’ble Supreme Court in this judgment, which according to me is in stark contravention with the provisions of the patents act as well as the universal patents practice and standards.  

The relevant excerpt from para 18 of the judgment is reproduced below:

 “Therefore, it is unlikely and quite impossible, that an "infringement suit" would be filed, while the proceedings Under Section 25(2) are pending, or within a year of the date of publication of the grant of a patent.”

 [For those who are not aware, “proceedings Under Section 25(2)” refers to the post-grant opposition proceedings, which could be initiated by any ‘person interested’ within a period of one year from the date of publication of grant of patent. Disposal of these proceedings is not time bound.]

Although the above finding is an obiter dictum in the context of this case, it has a significant bearing on the rights of patentee under the Patents Act, 1970. A direct understanding from the above quoted para is that a patentee is not entitled to file a suit for infringement until expiry of the deadline to file post-grant opposition (viz. one year from the date of publication of grant of patent) or until disposal of post-grant opposition, if any, filed during that period, whichever is later. This, in effect, translates into a delay in culmination of the rights of patentee under the Patents Act, 1970 by at least one year (assuming no post-grant opposition is filed). In case a post-grant opposition is filed, the rights will be deemed suspended indefinitely [viz. until disposal of the post-grant proceeding(s), which presently takes a few years].

The excerpted observation is in direct conflict with the general near-universal position that the right of a patentee to sue for infringement crystallizes immediately upon grant of patent. The proviso to Section 11A (7) of the Indian Patents Act, 1970 also declares this to be true position in India, although couched in negative phraseology – “…the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted.” Uptil now, it has been commonly understood that the position in India is the same as almost everywhere in the world viz. that a patentee is entitled to institute a suit of infringement directly and immediately upon grant of patent.

This part of the judgment, therefore, clearly undermines the rights of patentees under the Patents Act and I’m not sure of the aftermaths. Any suggestions, inputs or updates are welcome! 

IPO v. Ravindranath Pradhan: Anticipation by Prior Claiming Ignored?

Continuing from my earlier post on the issue concerning anticipation by way of prior claiming in India, I came across a relatively recent judgment of Karnataka High Court - Union of India Ministry of Law Justice & Company Affairs (Legislative Department), The Controller of Patents & Designs Government of India and The Assistant Controller of Patents & Designs v. Dr. Ravindranath Pradhan [Writ Appeal No. 109 of 2008 (GM-RES), Decided On: 29.08.2013]. Although the case does not deal with the issue of anticipation and prior claiming, it appears that this issue was erroneously overlooked by the Court while deciding upon a related issue and should have been taken into consideration. The brief facts of the case are as follows:

Dr. Ravindranath Pradhan (Appellant/Petitioner) filed a patent application (No. 374/MAS/92) on June 19, 1992. The Patent Office, after scrutiny, raised certain objections under First Examination Report dated November 3, 1995 and the said objections were required to be complied with by 26.10.1996. The petitioner sent his reply to the said objections by speed post on 22.10.1996 which was delivered to the Patent Office on 30.10.1996. Since there was delay, the Patent Office refused the application and wrote a letter dated 18.03.1997 stating that the application was not put in order for acceptance within the period stipulated under Section 21(1) of the Act and therefore, deemed to have been abandoned. Petitioner preferred writ petition before the Karnataka High Court. The High Court while remanding back the matter to the Patent Office, held that since the delay was due to postal strike, the application ought to have been taken into consideration. Even after the remand, the application was not considered within the six months' time granted by the High Court. On 23.02.2001, petitioner was called upon to re-submit his application, which was acknowledged by the Patent Office on 09.04.2001.

Thereafter, by a communication dated 09.04.2001, the petitioner was informed that the application has been accepted and it is found to be in order. On 27.09.2002, the petitioner received notice of acceptance of complete specification under Section 23 of the Act from the Patent Office. After such acceptance, Sl. No. 187971 was granted to the petitioner's application and the Patent was received on 07.03.2003 after expiration of the term of opposition. The same was published in the official Gazette on 05.04.2003. In the patent granted to the petitioner, it was notified that the term of the Patent is for 14 years (which was the term under pre-2002 Act) from 19.06.1992. The petitioner contended that the Patent should be valid for a period of 14 years from the date of sealing and not from that date when the earliest effort was made by the petitioner to get his application scrutinized. The petitioner aggrieved by the illegal and arbitrary action on the part of the respondents in trampling upon his Patent by cutting short the life of the same, preferred the writ petition before the Court challenging the same. The learned single Judge held that under Section 17(2) of the Act (un-amended pre-2002 Act), the date has to be reckoned from the date on which the application is filed with full specification. It also stated that it is only on 23.02.2001 that the petitioner submitted his application with full specification and therefore, the period of Patent has to be reckoned only from that date. It is against this order, respondents appealed.

The Court in appeal also held that “[T]hough the first application for patent was filed on 19.06.1992, the authorities treated the said application as having been abandoned by the petitioner as within the period prescribed, he did not furnish the requisite particulars. It is at their request, a second application was filed on 23.02.2001 with complete specification. Therefore, the date of patent is the day on which the second application with complete specification was filed i.e., 23.02.2001. Fourteen years period is to be reckoned from 23.02.2001.”

Apparently, from the contents of the judgment, the facts of the case are not very clear as to what warranted the patent office to request the petitioner for re-submission of the complete specification on 23.02.2001 and what was the status of the new filing [viz. whether the filing made on 23.02.2001 was construed as only re-submission of the complete specification in the originally continuing application no. 374/MAS/92 or was deemed as new patent application filing (with separate application no. and the earlier application no. 374/MAS/92 deemed abandoned)]. In the former case, if the filing of complete specification on 23.02.2001 is merely RE-SUBMISSION of the complete specification under the previously continuing patent application no. 374/MAS/92 and the patent is eventually granted against the same application, then clearly 23.02.2001 cannot be construed as the date of filing of the complete specification for the purpose of ascertaining the date for commencement of the term of patent. The date (under the pre-2002 Act) which is considered for commencement of the term of patent, is the date on which the complete specification was first filed by the applicant. The law is quite unambiguous and settled on this aspect. Had this been the case, the Court should have clearly accepted the contention of the Patent Office and the 14 years period would commence from 1992.

If, however, the case is latter, viz. the filing of 23.02.2001 is deemed as new application (with complete specification), then there are several questions which arise:

(i)                 On what basis did the Patent Office abandon the previous application? Was the Petitioner/Applicant informed of the same? – When the Court had ordered that the Petitioner’s response to FER be taken on record (while condoning the delay caused by the postal department), the previous application (No. 374/MAS/92) was very much technically alive then. Any delay thereafter caused by Patent Office (such as in complying with the 6 month time period granted by the Court) cannot be used to prejudice the rights of the petitioner/applicant, particularly without informing the applicant that the application is being abandoned [with the legal consequences of abandonment of the patent application (one can refer here for the law on this aspect)].

(ii)               What right does Patent Office has to as the petitioner/applicant to file a new patent application? – Patent Office does not have any right to ask anyone to file a new patent application while abandoning its previous application. Such arbitrary action is not supported under the law. The new patent application no. (if any) is also not provided.

(iii)             Does the new filing amounts to postponing of the priority? – There is clear and set law on postponing the priority, and the Patent Office cannot, suo moto, take action to postpone the priority of any invention. Right of priority is one of the most essential rights under the patent law and that cannot be manipulated by the Patent Office arbitrarily outside the prescribed statutory law and without taking the applicant into confidence.

Even assuming that somehow the previous application was abandoned and the petitioner filed the new application, the priority could not have been postponed and in that case the previous application of the same application (petitioner), even if abandoned and even assuming it was never published (which is likely the case for 1992 application), will clearly anticipate the subsequent application at least through prior claiming if not directly. Section 13 (anticipation by previous publication and prior claim) does not provide any such exemption wherein the previous application by the same applicant will not be considered for the purpose of ascertaining novelty of the application under examination. Therefore, even if we ignore all other technical (or as one say hyper-technical) issues, the issue of novelty and anticipation is too fundamental to be so arbitrarily ignored.

Thus, irrespective of the factual status of the filing dated 23.02.2001 (viz. whether construed as part of the continuing application, or treated as new application) the conclusion reached at by the Hon’ble High Court seems to be erroneous and flawed in the application of law.  

Prior(/Even)-dated & Unpublished Applications Constituting ‘Prior Art’: Indian Law Needs an Upgrade

Each claim of a patent application carries a date of priority which demarcates the prior art for the purposes of determining novelty and inventive step of the claim. In firs-to-file jurisdictions, the date of priority is conferred upon a claim depending upon when the subject matter of the claim was first and fairly sufficiently disclosed in a patent application by the applicant to the patent office. As a general rule, anything which is available in the public domain before such date of priority is construed as ‘prior art’. A complicated situation, however, occurs in case where a patent application is found to claim a priority earlier than that of the claim under consideration but was actually published only after the date of priority of the claim. While such unpublished application is deemed not to be in the public domain as of the date of priority of the claim, it still appears to be entitled to claim seniority rights as against any claims with subsequent priority. Adoption of the strict rule of anticipation-by-publication-only may result in an undesirable multiple-patenting situation wherein two (or even more) persons may be granted exclusive rights in terms of patents for the same/similar invention. On the other hand, adoption of strict rule of priority-by-date would tend to curb the scope of protection for incremental innovations. In order to strike an appropriate balance, most of the jurisdictions have enabled sound and unambiguous statutory mechanism for addressing this problem. The corresponding provisions in India under the Patents Act, 1970, however, are unstructured and obsolete as of date.

The patent statutes of most of the countries address to this issues by enabling dual standards of protection wherein such earlier dated but later published applications are deemed to constitute prior art only for the purposes of determining the novelty of the later dated claim but are excluded from the scope of prior art for the purposes of determining the inventive step. This approach while ensures that two patents are not granted for identical inventions in favour of two different persons, also enables the scope of protection of any incremental innovations, viz. the inventions which are new, if not non-obvious, over the previous one. This is by far the most common and perhaps the most reasoned approach adopted by the countries which serves the public interest without prejudicing the interests of the applicants. For example the European Patent Convention (EPC), provides that the content of European patent applications as filed, the dates of filing of which are prior to the date of filing of a later European patent application and which were published on or after that date, shall be considered as comprised in the state of the art for the purposes of examining novelty, while Article 56 of EPC at the same time provides that such applications are not considered to form part of the state of the art for the purpose of determining whether there has been inventive step involved. Likewise in Japan and Australia there are similar provisions confirming to this approach. There are, however, countries like US which adopts a more stringent approach and thus construe such earlier but unpublished applications as part of the prior art for the purposes of examining novelty as well as inventive step of any later applications. Particularly in US, this stringent approach has been in place since at least 1965, when in the case of Hazeltine Research Inc. v. Brenner [382 U.S. 252 (1965)], US Supreme Court while holding that such application is deemed to be in public domain for the purpose of evaluating obviousness even though the public had no access, it stated “To adopt the result contended for by petitioners would create an area where patents are awarded for unpatentable advances in the art.”

In India, the Patents Act, 1970 provides under section 13(1)(b) that such prior dated but unpublished Indian patent applications shall be construed as prior art for the purposes of determining novelty. Regarding the inventive step, however, except for the applications filed by same applicant (wherein the earlier application is not counted as prior art for inventive step under the concept of Patent of Addition) there is no clear provision when the applicants are different. Even the definition of the phrase ‘inventive step’ in the Act does not mark any direct indication as to whether such prior dated but unpublished applications are to be counted within prior art or not. The only inference that can be drawn in such situation is from the fact that the Patents Act provides explicit provisions only to ensure that such prior dated unpublished applications do not anticipate the application at hand and there is likewise an explicit omission of any provision regarding the inventive step.

Furthermore, there are variations in approaches towards the content of such earlier unpublished applications which is taken into account as prior art for the purposes of determining novelty and/or inventive step of any later dated application. Historically, under the UK Patents Act, it was only the eventually granted claims of such earlier applications which were effectively considered as prior art and not the entire disclosure of the patent specification. This was with a view to prevent the double patenting and was usually referred to as anticipation by ‘prior claiming’. This ‘prior claim’ based approach was however changed to the ‘whole content’ based approach in the subsequent legislation wherein the entire content of such earlier application is construed as prior art. This adoption of ‘whole content’ approach is primarily because of the three important reasons – firstly, it is found to be against the public interest for a later applicant to monopolise subject matter which, although he was not aware of it at the time of the application, would inevitably have come into the public domain; secondly, it is realized that the scope of claims of the prior application is not always fixed and is subject to amendments during examination and even post grant; and thirdly, the applicant of earlier application may later would like to protect or use the information disclosed otherwise than by the claims, he would be unjustifiably prevented by the later applicant. This is also the standard adopted by most of the patent legislations thought the world including Europe, Japan, Australia and US. In Europe, by ‘content’ of a European application in this context means the whole disclosure, i.e. the description, drawings and claims, including:(i) any matter explicitly disclaimed (with the exception of disclaimers for unworkable embodiments); (ii) any matter for which an allowable reference to other documents is made; and (iii) prior art insofar as explicitly described. Even if the content of the earlier application which is filed in a non-official language and its matter is erroneously omitted from the translation in the language of the proceedings and not published in that language, it is the content of the original text which is relevant for the purposes of Art. 54(3). India, however, still follow the ‘prior claiming’ approach and thus the prior art is limited only to the claims of the earlier dated unpublished applications.

In another aspect of this discussion, it involves the applications filed by the different applicant and claiming same date of priority. Considering the low possibility of having same date of priority for identical set of claims by two distinct persons, this aspect has not been specifically dealt in most patent law statutes and thus the law is not well settled on this issue. In absence of any direct provision in this regard it is assumed in many countries, like in Europe, that each application must be allowed to proceed as though the other did not exist. Similarly in US, there is no explicit provision dealing with the situation wherein two applicants independently develop the same invention and file applications with the same effective date, which means that multiple valid patent claims could issue to different persons. Some countries, like Japan, however, do have specific provision dealing with this particular aspect wherein it is provided that where two or more patent applications claiming identical inventions have been filed on the same date, only one applicant, who was selected by consultations between the applicants who filed the said applications, shall be entitled to obtain a patent for the invention claimed and where no agreement is reached by consultations, none of the applicants is entitled to obtain a patent for the invention. In India there is no statutory provision in this context and thus it may be assumed, as like in several other countries, that in such a situation a joint patent with equal undivided share may be issued to both the applicant as if they were joint-applicants. A more explicit provision, however, will do no harm.

Any suggestions are welcome!

Applicability of Article 137 of Limitation Act in filing application for rectification under section 71 of Patents Act

Section 71 of the Patents Act provides for rectification of any entry in the register of patents upon application by any aggrieved person. The entries which should be maintained in the Register of Patents are provided in section 67 as:

(a) the names and addresses of grantees of patents;

(b) notifications of assignments, extensions, and revocations of patents; and

(c) particulars of such other matters affecting the validity or proprietorship of patents as may be prescribed.

Thus, the entries in the register as referred to in section 71 are the entries pertaining to the formal details post grant of a patent. Thus it must be noted here that this is a separate then the provision for amendment of application under section 57 (which is applicable post grant also) and the provision for correction of clerical errors by the Controller under section 78 (either suo moto or upon a special request made by a person interested). While section 57 and 78 relates to amendments/corrections in the patent application and/or the complete specification accompanying the patent application, the scope of section 71 is limited to the entries in the Register and has nothing to do with the patent application or the specification.

As provided in the section, the rectification can be requested in an application by any person aggrieved before the IPAB (which was High Court until 2002 amendment). Since a wrong entry in the Register of Patents could well be equally prejudicial to any other person as it may be to the patentee in different circumstances, the scope is rightly left open for any person who can establish its grievance in order to have the right to apply for rectification under this section. Section 71 only prescribes the manner of disposing off the rectification application, wherein the rectification is ultimately effectuated by an order from IPAB for the making, variation or deletion of any entry in the register which it think fit. The Patents Act and for that matter the Patents Rules are however silent about the time limit by when the aggrieved person can file an application for rectification, any consequences of delayed filing or scope of condonation.

In an old but perhaps the only case (which I am aware of) dealing with this particular issue is the case of   Bayer Aktiengesellschaft of Leverkusen Federal Republic of Germany v. Controller of Patents, Government of India (AIR 1982 Cal 30). Although this is a case of pre-amendments, but fortunately there has not been any amendment in this section apart from the one according to which the adjudicating authority is IPAB rather than High Court. In this case, the aggrieved party is the patentee who filed a petition for rectification of the entry relating to Patent No. 139978 in the register. This was the time when the term of patent used to be different for drugs (5-7 years) and for other products (14 years). It was alleged by the petitioner that the claimed compound is an intermediate product and is not intended nor is capable of being used as a drug or medicine as defined in the Act. The Controller, however, classified this product as a 'drug' and fixed the period of the patent for 7 years from the date of the sealing. According to the petitioner the period of this compound should have been 14 years and hence filed the application for rectification of the register by deleting 7 years and inserting in its place 14 years.

Without going into the merits of the case whether the claimed compound was a ‘drug’ or not, lets limit our discussion to the issue of limitation and thus maintainability of the petition, which was also the prime issues in this case.

In this case, the patent document was issued to the Patentee on 28-6-1977 providing for 7 years protection from 5-5-1974 ending on 5-5-1981. The patentee, however, filed the petition for rectification only on 1-12-1980. The Controller argued that the application under Section 71 of the Act would be governed by the residuary Article 137 of the Limitation Act of 1963 and as such the application should have been taken out within 3 years from the date of receipt of the patent documents on 28-6-1977 when his right to apply accrued, and thus the application dated 1-12-1980 is time barred and not maintainable. The Controller, in support of its contention, relied upon the case of Kerala State Electricity Board, Trivandrum v. T.P. Kunhaliumma, [1977] 1 SCR 996, wherein it was held that :

"The changed definition of the words 'applicant' and 'application' contained in Sections 2(a) and 2(b) of the 1963 Limitation Act indicates the object of the Lamitation Act to include petitions, original or otherwise under special laws. The interpretation which was given to Article 181 of the 1908 Limitation Act on the principle of ejusdem generis is not applicable with regard to Article 137 of the 1963 Limitation Act. Article 137 stands in isolation from all other Arts, in Part I of the third division. Article 137 includes petitions within the word 'applications'. These petitions and applications can be under any special Act."

The court was agreed with the Controller’s contention and accepted the principle emphasized in the cited case, while holding that:

“In my opinion, the decision reported in [1977] 1 SCR 996 puts an end to the controversy regarding applicability of 1963 Limitation Act to special laws or local laws. There is no doubt that in this case Article 137 will apply as no time limit was put by the Act itself and this application has to be made to the High Court. This application should have been made within 3 years from the date when the petitioner's right to apply accrued. It was not disputed by the petitioner that the relevant patent was sealed on 23-4-1977, recorded in the register on 4-6-1977 and the Patent documents were issued to the petitioner on 28-6-1977. This application made on 1-12-1980, was clearly beyond three years from the date of accrual of right to apply and is barred by limitation on the face of the application.”

I believe that while the application of Article 137 of the Limitation Act for putting a time limit of 3 years in this particular case might have been justified in light of the facts that the Patentee was specifically made aware of the particular entry by means of the issuance of patent certificate to him and he simply sat on his right (to make an application for rectification) which he didn’t exercise until the patent was about to expire. This, however, may not always be the situation as it is quite possible that the aggrieved person is not aware of the wrong entry in the Register for quite long, particularly when the aggrieved person happens to be other than the patentee. For example any wrong entry pertaining to the validity of patent may seriously affect the right of third parties, who have no reasonable means to know of the entry on the Register. It must be noted that the Article 137 of the Limitation Act provides a time limit of 3 years from the date on which the right has accrued and technically the right in such cases to file a petition for rectification accrues from the date on which the wrong entry was made on the register (since after that any aggrieved person can file a petition for rectification). Thus, if Article 137 of the Limitation Act were to be set as standard for all cases in counting the time limit for filing rectification petition under section 71, then in each such case the time limit shall technically expire as soon after completion of 3 years from the making of such wrong entry in the register, whereas it is possible that any aggrieved person comes to know of an apparent mistake only after 3 years. It would then be highly unjustified and irrational to deny the applicant such right to get the entry rectified and let the wrong entry be maintained on the register. If at all any limitation of time is to be applied in such cases, it must be counted from the date on which the knowledge of the wrong entry could be attributable to the applicant. Still, however, in situations where the applicant is approaching the authority beyond any such prescribed time period or limitation, the authority cannot prima facie afford to deny the rectification where the mistake is apparent and the responsibility of maintaining purity of the Register stands significantly higher than denying the applicant its time barred right.  Thus, it is likely that Article 137 of Limitation Act or for that matter any time limit for the purpose of filing a petition for rectification cannot be applied without taking into account all the circumstances of the case. This is perhaps the reason why no particular time limit is expressly provided in the statute.

Any comments are welcome!

Counterclaim v. Revocation – II (Scope of Counterclaim for revocation: Can it travel beyond the scope of alleged infringement?)

Taking the discussion further from my earlier post on the issue 1 [“Can a counterclaim for revocation in a suit of infringement before High Court be allowed to proceed hand-in-hand with a revocation proceeding before the IPAB involving the same patent and same parties?” ], I now take up the Issue 2, as mentioned in the said post, viz. Whether the scope of a counterclaim for revocation (against a suit for infringement) can travel beyond the scope of the said infringement suit? In other words, whether a defendant in its counter-claim for revocation can go on to challenge the validity of even those claims which are not alleged to be infringed by the defendant in the infringement suit filed by petitioner?

Although this is a sequel to my earlier post and whatever discussed therein is obviously a prerequisite to understand the connected issue of this post, I would still like to emphasize upon one of the findings (of my earlier post) that it is a ‘claim’ (or a set thereof) which should be dealt as a unit for the purposes of infringement and revocation proceedings and not the entire ‘patent’ always even though the relevant provisions in the Act or Rules may loosely refer otherwise [for e.g. the preamble to section 64(1) etc.]. I believe this holds the key to reach a logical conclusion for both the issues within the realm of the statute. 

In a case where a suit of infringement of a patent is filed by Petitioner against Defendant, section 107 provides that the defendant shall have, in its defence, all the grounds (of revocation of patent) enlisted in section 64 of the Patents Act. It need not be mentioned that these are not the only grounds available for defence in a suit for infringement, and it is possible for the defendant to simply assert non-infringement on merits without taking resort to the counterclaims of revocation viz. it may simply acknowledge the validity and enforceability of the patent while maintaining its stand that its actions are beyond the scope of the patent and are thus not infringing the patent. In such cases, the court is required to first determine the SCOPE of the patent claim (rather than its VALIDITY) - which is quite similar to the so called Markman’s Hearings in US involving interpretation of claims followed by infringement analysis. Thus, the Defendant is free to not to invoke its powers to challenge the validity of the claims. 

The alternative aggressive approach, which is presumably in fashion today, is to challenge the validity of patent itself in the suit of infringement on any of the grounds of revocation as available under section 64(1). A counter-claim for revocation is actually a fresh suit in itself and is by default clubbed by the Court with the suit of infringement. The critical questions which arises here is – the suit for revocation of what? Revocation of the entire patent including all claims therein? Or revocation of only those claims which have been alleged to be infringed by the defendant?

We shall hypothesize two situations in order to cover the possibilities. In case 1, lets presume that the person who is alleged to be infringing the patent doesn’t qualify the criteria of ‘person interested’, which although seems to be unlikely (considering that the person is purported to be an infringer), but may theoretically be possible in cases of contributory infringement or when the defendant is not the actual manufacturer of the product but only a merchandiser, importer etc. In such case where the alleged infringer is not a person interested, it, ipso facto, doesn’t have any right under the Patents Act to initiate any proceedings for revoking or invalidating or challenging a patent or a claim thereof (technically after the date of grant of patent) before any judicial or quasi-judicial forum. It is because of the fact that once a patent is granted, it can be subject to challenge (by a third party, other than the government) only through the post –grant opposition [under section 25(2) before the Controller] or through the revocation [under section 64(1) before IPAB], and in both cases the statute sets a pre-requisite of ‘person interested’ to initiate the proceedings. In case, however, a suit of infringement is filed against such person (who is not a person interested and doesn’t have the rights to challenge the patent otherwise), said rights (for challenging the patent) automatically deemed to stand vested in that person by virtue of section 107(1) of the Patents Act, 1970 immediately upon filing of such suit of infringement. Section 107 is reproduced herein below:

107. Defences, etc. in suits for infringement

(1) In any suit for infringement of a patent, every ground on which it may be revoked

under section 64 shall be available as a ground for defence.

(2) In any suit for infringement of a patent by the making, using or importation of any machine, apparatus or other article or by the using of any process or by the importation, use or distribution of any medicine or drug, it shall be a ground for defence that such making, using, importation or distribution is in accordance with any one or more of the conditions specified in section 47.

It must be appreciated that these rights are triggered only when the infringement has been alleged by the Patentee and are provided as a mere tool to the defendant to defend itself against such allegation. This conferment of rights does make a lot of sense as it tends to provide equal opportunities for both the parties. Following the principles of equity, however, the scope of these special rights so conferred in such situation must correspond, evenly, to the scope of alleged infringement only viz. the defendant should be allowed to challenge the validity of only those claims against which the infringement has been alleged and not any other claim (of the same patent) for the same reasons he was not entitled to challenge them before the institution of the suit of infringement. Thus if the petitioner has contended the infringement of only claims 1-10 (of total 30 claims in the patent), then the defendant in such case attains the equitable and statutory rights to challenge the validity of only those allegedly infringing claims viz. claims 1-10 and the defendant is still deficient of the rights to challenge the validity of the rest of the claims viz. claims 11-30. This seems to be in-line with my earlier contention that it is the ‘claim’ (or a set thereof) which constitutes a unit for the purpose of infringement and revocation proceedings and not always the entire patent (all the claims). It is also possible in such situation that the defendant challenges the validity of some of the allegedly infringing claims while only defends otherwise in respect of the rest of the allegedly infringing claims. In other words, the scope of the Defendant’s rights to challenge the validity shall not exceed the scope of alleged infringement, although the Defendant is at liberty to not to exercise it or to exercise it partially or fully. The benchmark is – the defendant, at the most, can challenge the validity of only those claims which are alleged to be infringed. Although this limited scope of challenge may appear to contradict the reference of the word ‘patent’ in section 107(1), but it seems justified for the same reasons that the preamble to section 64(1) also refers to the word ‘patent’ only (and as discussed earlier that the grounds make specific reference to claims etc.). As also discussed in my earlier post, the reference of ‘patent’ in the relevant sections need not be taken strictly to refer to the entire patent (viz. all claims) and should, at times, as and when applicable, be inferred as a subset of claims of the patent.

Proceeding to the case 2, where the person who is alleged to be infringing the patent is actually a ‘person interested’ within the meaning of the Act. In such case, the reasoning tendered above shall apply to the extent of procedural aspects of the rights. As per the statute, a ‘person interested’ is entitled, even without the institution of a suit of infringement against it, to challenge the validity of a patent (meaning thereby even a subset of claims of the patent and not necessarily the entire set of claims always) either by means of post-grant opposition [under section 25(2), before the Controller within 1 year of the date of publication of grant of patent] or by means of initiating revocation proceedings [under section 64, before the IPAB at any time after the grant of patent]. Thus, the institution of a suit of infringement against such interested person doesn’t seem to be actually conferring upon the alleged infringer any additional rights. This is true, however, only to the extent that there is no new right, in terms of the nature of rights, which has been created towards challenging the validity of the patent, but the difference in the procedural context is still maintainable viz. the forum before which such right could be evoked and ultimately adjudicated. In other words, the defendant in such case shall be entitled to challenge in its counterclaim before the High Court the validity of only those claims against which the infringement has been contended by the petitioner, and if the defendant is desirous of challenging the validity of claims other than those alleged to be infringed, than it has to take recourse to the corresponding statutory rights by filing a fresh proceeding under post-grant opposition before the Controller or a revocation before the IPAB, as the case may be. Such challenge to the validity of claims falling outside the scope of infringement shall not or should not be accepted as part of the Counter-claim before the High Court. Thus, in this case, its is the right to challenge the validity of patent in a counter-claim before the High Court which is exclusively triggered and conferred upon the defendant upon filing of a suit of infringement, which right (to challenge the validity of patent) otherwise allows the defendant only to raise it before the Controller or the IPAB. This is also in-line with finding in the earlier post that the proceedings for revocation before IPAB and counter-claim before the High Court could be maintainable and adjudicated simultaneously provided that the subject matter of the challenge differs viz. even though it involves the same patent, then either the set of claims which are subject to challenge are different or the grounds of challenge (of the same set of claims) are different or even when the grounds and claims are same, the facts relied upon to challenge the validity of claims are different (for example reliance upon different citations for challenging the novelty of the invention etc.). I am afraid that this would somehow also require a stricter interpretation of section 104 wherein it is provided that if the counterclaim of revocation is filed in a suit of infringement before a district court, the matter shall automatically stands transferred to the High Court. In such matters, I believe, that the district court must determine the scope of such revocation first – if it falls within the scope of such infringing claims, then the matter as prescribed should be transferred to the High Court. In case, however, the Defendant has attempted to challenge more than what is allowed (viz. outside the scope of infringement), then the District Court should outright reject the counter-claim to the extent that it is exceeding the determined scope (of infringement) because for that the claim is not maintainable before district court (which is not the appropriate forum) and should have been filed before Controller or the IPAB, as the case may be.

On a concluding note, I believe that the scope of counterclaim for revocation cannot exceed the scope of the alleged infringement in terms of the claims.

Any suggestions, inputs and comments are most welcome!

Examination and its commencement under the Patents Act: A conflict within the law

While discussing this issue with one of my close friend, I realize that there seems to be a clear conflict on this point among the Patents Act, 1970 and the Patents Rules, 2003.

From the general perception under the Patents Act, let’s assume for the time being that the term ‘Examination’ here refers to the formal examination of the patent application for the purpose of identifying the patentability of the alleged invention encompassed therein (although the term ‘Examination’ may bear a wider perspective then aforesaid and deserve a broader interpretation with consequences on the commencement thereto, the possibilities of which I shall discuss in the latter part of this post).

The formal examination of the application is considered to commence when the Controller actually refers the application and specification and other documents to the Examiner for preparing a report on patentability. All further steps are irrelevant for the present discussion and are thus avoided here. Of course such reference by the Controller of the application to the Examiner takes place only if the applicant has filed a request for examination (RFE). However, there is a prevalent conception that the examination does not or cannot commence also unless the application has been published viz. the actual examination can commences only if the request for examination has been filed as well as the application has already been published (of course we are not taking into account here that the applications are taken up for examination in the sequential order of the filing of the request for examination, which is quite well settled). This conception is in fact even rightly supported by Rule 24B (2)(i), as reproduced below: 

“The period within which the Controller shall refer the application and specification

and other documents to the examiner in respect of the applications where the request

for examination has been received shall ordinarily be one month from the date of its

publication or one month from the date of the request for examination whichever is

later.” (emphasis provided)

I do understand that this discussion is purely academic as this issue may sound extremely redundant and impractical from the view of as things currently stand at the patent office. This is because the currently pending backlog at the patent office doesn’t allow any application to be taken up for examination before about 4-5 years and by then in all possibilities the application would have been published (either under requested or by default after 18 months). For this problem, lets hypothesize a situation where the patent office has zero backlog and the turnaround time has reduced to 1 day with prompt action by Controllers and Examiners (I wish I see this happening in my lifetime!). In such a scenario, if a standard patent application (not PCT or Convention application, just to avoid any complexities) with complete specification is filed at the Patent Office on January 1, 2012 along with the request for examination, then the Controller shall, according to Rule 24B(2)(i) shall still have to wait for the application to be published (which is June 30, 2013, unless published early on request) in order to commence the examination viz. to refer the application to an Examiner.

Now let’s see what the relevant section has to say in this context. The section 12 of the Patents Act is reproduced below:

     

“12.  Examination of application

   (1)  When a request for examination has been made in respect of an application for a

patent in the prescribed manner under sub-section (1) or sub-section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely,—

(a)    whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder;

(b)   whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;

(c)    the result of investigations made under section 13; and

(d)   any other matter which may be prescribed.

(2)  The examiner to whom the application and the specification and other documents

relating thereto are referred  under sub-section (1) shall ordinarily make  the report to the Controller within such period as may be prescribed.” (emphasis provided)

Thus the statute, on the contrary provides that when a request for examination has been filed, the Controller shall, AT THE EARLIEST, refer the application with specification and other documents to the Examiner viz. commences the Examination. There is no reference of subjectivity to the publication of the application here. More interestingly, while this section 12 was amended in 2005 to insert, as one of the other amendments, the phrase “at the earliest”, the conflicting provision under Rule 24B(2)(i) came into effect under Patent (Amendment) Rules 2006 only viz. within a short span of about 1 year only.

This appears to be a clear conflict in law. There could have been a scope of harmonious interpretation of the statute in case the Act has merely mentioned something to the effect that upon filing the request for examination the Controller shall refer the application to the Examiner and one could in that case say that the Rule just adding another requirement (of publication) to be checked by the Controller before he actually refers the file to the Examiner after the filing of the RFE. Unfortunately, that is not the case since the Act specifically added the phrase “at the earliest”, which doesn’t leave any scope of the dependency upon publication (which is not even mentioned in the section) in order to commence the examination. Thus, going by the general rules of interpretation of statute, the Act trumps the Rules and in case of clear conflict the Act prevails. In this case, accordingly, section 12 shall prevail against the Rule 24B to the extent of conflict.       

Regardless of what has been discussed above, one could also take a view that the term ‘Examination’ is quite broad even in the context of its usage in the Act/Rules, wherein a general meaning of the term ‘Examination’ could be inferred from the prescriptions under section 12 (1) (a) to (d), in which (a) states “whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder”. In such case, isn’t the Controller under an obligation to scrutinize every patent application soon after its filing at least from the perspective of its subject matter to determine whether the application is related to a defence related invention and if it is so then to raise an objection within 6 weeks of the filing (because after 6 weeks, under section 39 of the Act, the Controller loses control over the Applicant in respect o filing corresponding patent applications in other countries). Is it not a check of the application is within the requirements of the Act viz. a part of the Examination, which effectually is deemed to have begun even before the filing of the RFE.  I am not sure if this scrutiny is or can be construed as part of the Examination. Certainly the exclusion of any prescribed manner of this scrutiny in the Act/Rules cannot be the reason. The reference of the application or for that reason any other matter by the Controller to the Examiner(s) is purely discretionary. Even in the seemingly mandatory provision under Section 12 and Rule 24 that the Controller “shall” refer the application to the examiner, the “shall” should be treated as “may” or it may be deleted altogether as a redundant provision. This is because the Controller is the point of authority under the Act and as per Section 73 of the Act, the Examiners “may” be hired by govt. to facilitate the Controller in discharging its functions under his authorization. The Controller is given enough wide powers to delegate the work or to retain it. It is understandable that the Rules have been made to regularize the procedure and make it more transparent, they should, at the same time, address all possible situations. In a hypothetical situation, assuming there are so few patent applications (say only 1 per month) are filed at the Patent Office so that the govt. need not hire the Examiners believing that only one individual person (viz. the Controller) could examine and handle it on its own. In such case, the rule and perhaps the section become redundant and infructuous to this extent.   

In respect of the publication, Examination and Grant of patent, I have always been of the view that the baseline is that the Patent should not be granted before the expiry of six months of the date of publication [under Rule 55(1A), in order to provide sufficient time for pre-grant opposition] irrespective of when, how and by whom the examination is commenced.

Any suggestions and inputs are welcome!

Indian Patent Agent Exam: Amendments and deteriorating standards

A Notification [No. S. O. 2296(E)] was published in the Gazette of India by Department of Industrial Policy and Promotion, Ministry of Commerce & Industry on September 26, 2012 and hosted at the Indian Patent Office website (at here) on November 7, 2012. This notification effectuates certain amendments to Rule 110 of the Patents Rules, 2003, which relates to the qualifying criteria for the examination of patents agents. In brief, this amendment while retaining the overall pass percentage to 60% of total (of all three exams) and maintaining the sectional cut-offs for the Exam I and II, it:

(a) reduced the maximum number of marks allotted to the viva voce from 100 to 50; and

(b) also did away with the requirement of sectional cut-off of 50% in respect of viva voce.

This means, that the total marks for the exam would now be 250 (instead of 300 earlier) viz. 100 each for paper I and II and 50 for viva voce, and one will have to score a total of 150 marks (viz. 60% of total) without any relevance of the score in viva voce (whereas the person will still have to score at least 50% in Exams I and II independently).

In nutshell, the significance of the viva voce has been greatly undermined in the qualification procedure and in fact one is given an option to qualify the exam without even appearing in the viva voce. This is sort of an unfortunate but expected move from the ministry after the judgment dated February 28, 2012 of Delhi High Court in the case of Ms Anvita Singh v. Union of India and Anr. I have not been able to digest the rationale behind the judgment in that case, wherein petitioner was found aggrieved because she could not clear the sectional-cut-off for the viva voce and she claimed herself to be in practice and diligent upon the subject. Woefully, the court relied upon her performance in previous exams and her graduation also. Going by such standards for changing the course of a qualifying examination, then every year thousands of students who fail to make it due to marginal sectional cut-offs in different exams, perhaps including civil service exams, and who are among the toppers in their graduation courses, must also challenge the examination procedure as flawed because they were good enough (by general performance) to clear the cut-offs.

The inclusion of viva voce in the qualifying exam is actually the demand of the practice and is in line with what is expected from patent practitioners.  The articulation skills and verbal proficiency are indispensable for patent practitioner or perhaps any practitioner practicing any field of law.

I am a firm supporter of bringing in new and innovative changes in the qualifying procedures and criterion in order to keep pace with the changing requirement of society and industry so as to make the whole system dynamic. But in this case not only the reasons for invoking such changes are absolutely unacceptable and baseless, the changes themselves are shortsighted and compromising. Where the standards for qualification should be scaled up (with an equivalent support in training and educational programs for aspirants so that more and more students qualify tougher and tougher exams), we are viewing a downgrade in the entire system. It seems like a village school, where the students who could not clear the exams went on to the headmaster to complain that the examination system is flawed and the students should be allowed to bring in and use their help books.

Nevertheless, we can expect the exam notification very soon, followed by the exams, followed by a more skewed result list.