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.

Counterclaim v. Revocation: Enercon Revisited - I

Before proceeding to the main issues in this series of posts, I would first like to highlight a few seemingly obvious but fundamental features of a patent. These may literally sound too overt and basic to one, but are essentially critical to stick by while analyzing the issues involved. These basic features are identified as below [The image is taken from here]:

-          A patent is primarily a claim or a set of claims wherein each claim tends to be either determinative or assertive of the claimed territory of protection.

-          It is possible that in an infringement case, only a single claim or a subset of claims of a patent is infringed by a person while other claims are not infringed.

-          It is possible that in a revocation proceeding (either before IPAB or in a counter-claim before High Court) one may challenge only a subset of claims of a patent and only those (or some of those) are revoked while other claims are held intact and valid (as is or after amendment).

-          It is possible that a claim or a set of claims are challenged and invalidated on one ground (of several grounds of revocation enlisted in section 64) while another claim or set of claims are challenged and invalidated on some other ground of revocation.

-          At the same time, it is also possible that the different set of claims are revoked or invalidated on the same ground but with different issues involving different facts, such as for example the reliance on new fact or document (discovered later) while relying on the same ground of novelty/obviousness.

-          It is possible that different set of claims are revoked or invalidated in the same proceeding or even different proceedings at different points of time and in those different proceedings, it is possible that the parties are same, related or different.

I believe all the above mentioned presumptions to be correct in view of the principles of patent law as well as within the framework of Indian Patents Act, 1970. I welcome any objections on these presumptions. Some of them are also supported in the arguments below. In light of these, we will now take up the issues:

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?

One would easily correlate this issues with the one purported to be dealt and resolved by the Delhi High Court in its judgment dated January 20, 2012 in the ongoing multi-faceted Enercon patent litigation. In particular, this was precisely the issue framed by the Court to be decided in the matter and I believe the Court did not do justice to the issue (not exactly the case in hand) in its judgment, which I did not found to be impressive enough to be set as a precedent.

A significant portion of the judgment deals with the applicability of the Doctrine of Election with its basic tenets and precedents. Although the elements of the doctrine were well identified, its applicability in this case is misplaced. Firstly, at the time of filing of the revocation proceedings (in 2009), the defendant had only one option viz to file for revocation of patents before IPAB and it could not have filed Counterclaim at High Court (as there was no infringement proceeding pending), so there is no point of election which could arise at that time. Subsequently, it is only after the infringement suits which were filed (in 2010), the defendants preferred to take the defence under section 107(1), which requires filing of a counterclaim of revocation of patent. As an alternative, the defendants could have asked the High Court to stay the infringement suit until disposal of the pending revocation proceedings at the IPAB, but it seems that such action doesn’t find any support in the statute. Defendants, therefore, followed the natural course of action to avoid prejudicing their case before IPAB as well as High Court. So the so called option of “Election” was technically neither available nor exercised by the defendants and they had just pursued according to what has been prescribed by the statute. It was the Court’s duty to decide judiciously on the issue by going a bit deeper into the subject rather than sweeping it superficially.

I believe that the Court should have better looked on the grounds (and perhaps the facts) raised and relied upon in the revocation proceeding of every patent before IPAB and compared them with the corresponding grounds (with facts) relied upon by the defendant in its counter-claim of revocation for respective patents. If the grounds are found to be entirely different (without any overlap), it would not be inappropriate for the Court to allow both the proceedings to run simultaneously; however, if the grounds are found to be identical or similar or overlapping, then it’s the duty of the court to device some way to avoid the parallel proceedings by staying the latter one (viz. the counter-claim and the clubbed infringement suit) until disposal of the revocation proceedings before IPAB which were already on fast track or so called ‘Rocket Docket’ (for readers of ‘The Litigators’). This would be appropriate to avoid any possibility of eventually conflicting findings and decisions from two different forums on the same issue (involving same subject/claims with same grounds of revocation and facts), which would result in an awkward situation for everyone. In this context, the plaintiff rightly argued before the court that there are several powers conferred upon the court, which allow the court to administer the proceedings in the action filed before it, so as to are borne in mind the convenience of parties, hierarchy of courts, and avoidance of conflicts between courts of co- equal jurisdiction or between a superior and subordinate courts, and to secure for the litigant an orderly, timely and just disposal of the cause. Some examples cited in this regard are: power to consolidate suits (Section 151); order separate trials (Order 2 Rule 6); to stay parallel proceedings, (Section 10 and Section 151); transfer of proceedings from one subordinate court to another or to itself (Section 24) etc. and the availability of such powers were indeed acknowledged and accepted by the Hon’ble Court. 

The Court on the contrary, was found to be highly inspired by the circumstances in reaching its conclusion rather than focusing on point of law. The Hon’ble Court erroneously relied upon the expedited proceedings before IPAB to state that since they would be decided soon viz. much before the proceedings before High Court, there is no possibility of any clash. In fact the Hon’ble Court went on to state to the extent that:

“The aforesaid circumstances would show that the continuation of the proceedings before the two forums has not yet reached a stage of collision, as apprehended by Dr. Wobben.”

Reliance on the pace of proceedings to determine such critical issue of maintainability of the proceedings (involving same issue) before two forums is preposterous. Now with this, I would expect one to catch the basic points (enlisted in the beginning) in my argument, which is that there exists a possibility of a plurality of proceedings, simultaneous or otherwise, before the same forum or otherwise, involving the same patent and same parties but different grounds/issues/facts relied upon for challenging the validity of claims of a patent. So, the issue of maintainability of the revocation proceeding at IPAB and a Counter-claim for revocation in the High Court (or hypothetically even a separate revocation proceeding before IPAB) should be determined by the subject, in particular on the grounds raised and facts presented.

Now let us see if this finds a place in the statute. Section 104 mentions ‘infringement of patent’ and not claims, but this I believe is absolutely alright and is not contrary to the basic presumptions and arguments above, because infringement of any claim of the patent would be termed as infringement of patent itself. Secondly, section 107(1) states that “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 of defence.” This section also specifies patent and not claims, but the word ‘revocation’ used herein should be interpreted to include even partial revocation where only a claim or set of claims are revoked while others are held valid and intact. This is perfectly supported by referenced section 64 (grounds of revocation), wherein most of the grounds are directed to claims instead of entire patent. In fact, this is the scheme and fundamental aspect of the patent law that every claim is to be treated independently. I also support my contention with the fact that at least one provision of the Patents Act which provides deterrence against notorious and frivolous challenges to the validity of patent, particularly qualify claims. Section 113, which provides for certificate of validity states that once “the validity of any claim of a specification is contested and that claim is found by the Appellate Board or High Court to be valid, the Appellate Board or the High Court may certify that the validity of that claim was contested in those proceedings and was upheld.” Section 113(2) further provides that:

Where any such certificate has been granted, then, if any subsequent suit before a court for infringement of that claim of the patent or in any subsequent proceeding for revocation of the patent in so far as it relates to that claim, the patentee or other person relying on the validity of the claim obtains a final order or judgment in his favour, he shall be entitled to an order for the payment of his full costs, charges and expenses of and incidental to any such suit or proceeding properly incurred so far as they concern the claim in respect of which the certificate was granted, unless the court trying the suit or proceeding otherwise directs:

PROVIDED that the costs as specified in this sub-section shall not be ordered when the party disputing the validity of the claim satisfies the court that he was not aware of the grant of the certificate when he raised the dispute and withdrew forthwith such defence when he became aware of such a certificate. (emphasis added)

Thus it is evident that in such proceedings, it is the claims which are treated as a ‘unit’ and not the entire patent. In such case, if different claims are subject matter of different revocation proceedings at different forums, there is no harm in letting those proceedings continue simultaneously.   

Conclusively, if the grounds of revocation are different in the revocation proceeding at IPAB and in the Counter-claim in an infringement suit at High Court, then even though the parties and the subject patent is same, the proceedings can definitely go simultaneously. Else, it is the duty of court to stay the proceeding initiated later in time even in absence of any direct provision like section 124 in Trade Marks Act, 1999 where the Court proceedings are stayed until disposal of rectification proceedings before IPAB.

The difference in issues could emerge from difference in the grounds raised or facts presented or the claims involved. The last portion viz. difference in the claims involved, leads to another reasonable doubt (Issue 2) – whether the scope of counterclaim can travel beyond the scope of infringement suit. In other words, whether the defendant in its counter-claim for revocation go on to challenge the validity of even those claims which are not alleged to be infringed by the defendant in the suit filed by petitioner? I will take this issue in my next post, coming soon!

Any comments and suggestions are welcome.

Phase II Amendments: Assignees can be Applicants at USPTO

As the 1-year expiration term since the enactment of the Leahy-SmithAmerica Invents Act (hereinafter referred to as AIA) is coming to an end, several other provisions of AIA are ready to get their life. One of the most important amendments which are going to take effect is the one which has been looked upon dearly by most of the companies, universities and institutions and which will bring the US practice at par with the rest of the world in this context. Section 4 of AIA which shall come into force on September 16, 2012, allows the assignees of the inventors to file and prosecute a patent application at USPTO in their own name. This will bring US practice at par with the rest of the world. 

In particular, this will primarily effect an amendment in section 118 of U.S. Patent Law, 35 U.S.C. As the section presently stands, it permits the filing and prosecution of patent applications by assignees of the inventors only in cases under the narrow exceptions of death, incapacity, absence or refusal. In other cases, although a person to whom the inventor had assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant. The existing Section 118 is provided as below: 

35 U.S.C. 118 Filing by other than inventor.

Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention  or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.

This amendment broadens the scope of ‘fling by other than inventors’ by permitting (a) a person to whom the inventor has assigned or is under an obligation to assign the invention; or (b) who otherwise shows sufficient proprietary interest in the matter, to file and prosecute the application for patent. The amended section 118, as would be in effect post September 16, 2012, reads as below: 

35 U.S.C. 118. Filing by other than inventor.

A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

This amendment would certainly streamline the practice at all levels including the PCT applications, which till now almost invariably found mention of the inventors being the applicant for US whiles assignees for the rest of the designated states. The companies can now do away with this practice. It must be noted, however, that for PCT national phase, this provision shall be applicable only for those cases where the PCT applications will be filed after September 16, 2012. Which means, the PCT national phase applications which are entered in US after September 16, 2012, but for which the PCT application was filed before the September 16, 2012, will still be filed and prosecuted in the name of the inventors only. 

Recently the Federal Register rules for effectuating and implementing this Section 118 amendment were also released on August 14, 2012, which can be found here. The amendment has necessitated respective amendments in several rules under Rules of Practice in Patent Cases, 37 C.F.R. 1, mostly the rules pertaining to oath and declarations which were required to be filed by the inventors. Many such requirements have now been relaxed. The rules governing applicants for international applications (§§ 1.421, 1.422, and 1.424) have been amended consistent with the AIA to no longer require that an inventor be an applicant in the United States. Some of the other amendments sound regular ones, such as: (a) the power of attorney should be executed on behalf of the assignee, not by the inventors; (b) the assignee organization (a juristic entity) is to be represented by a patent practitioner. In fact some new forms have been prescribed by USPTO in light of these amendments and have been hosted here. 

EPO: Another step towards Unitary Patent System

EPO (European Patent Office), which is considered to be one of the most organized and efficient patent administrations, has been frontrunner in adopting and implementing a centralized mechanism, which has benefited significantly European industry and particularly SMEs. In this economic downturn, European Council has decided to take a step further towards an absolute Unitary Patent System to be implemented in Europe. Although this decision of unitary patent system was taken long back in March 2011 within purview of "enhanced co-operation" scheme to which all 25 member agreed, it did not took-off until now due to some pending issues on working of the system. On June 29, 2012, the Council has finally given its nod by closing all the pending issues and the proposed system will soon be in force.   

Before moving on to the newly proposed, and agreed, unitary patent system, lets have a brief look on the existing structure of patent prosecution and grant before EPO. Presently, as a regional organization, European Patent Office (EPO), which is a central European authority, grants European patents for the Contracting States to the European Patent Convention. This is, however, merely a unified grant procedure wherein although a single patent is granted in respect of all the designated member states in Europe, the granted patent is not, in effect, a single patent from the point of view of validation, enforcement and other post-grant aspects. Thus, apart from the procedural unification uptil grant of a common patent, all other aspects such as arrangements of validation, enforcement and litigation are technically unbundled and are dealt at the national level. The patents granted are, therefore, not European Union patents or even Europe-wide patents, but a bundle of national patents. This eventually results a proliferation of national proceedings, which is not only costly but also weakens legal certainty for users.

On June 29, 2012, after a long wait, European Council has reached a consensus to do away with this problem by implementing a unitary patent system with a new European Patent Court. Some of the major changes which will be affected along with the system are identified as below:

Presently, once a European patent is granted by the EPO, the Patentee has to get it validated in each EPO member state where he seeks patent protection. For this purpose, the majority of states require a full translation of the patent in their official language(s). The future unitary patent will be automatically valid throughout the territory of the EU member states in the EPO language in which it was granted. Please note, however, that his shall be applicable in respect of only those member states who have participated in the enhanced co-operation scheme and the Applicants will have the choice of having a unitary patent in respect of such member and European Patent in respect of other members. For information, the new procedure for “enhanced cooperation” was put in place by the Lisbon Treaty, which allows a smaller group of EU member states to take a proposal forward under certain conditions if a blockage persists. Members deciding not to join at the outset can do so later. This is one of the first times the mechanism (of enhanced cooperation) is used , as it was taken for the patent dossier in 2011, and 25 member states accepted the existing EPO language regime for the unitary patent.

According to Benoît Battistelli, President EPO, the issue of translation cost has been one of the main stumbling blocks in reaching the consensus. According to him, as long as a full or partial human translation of the Community or unitary patent in all EU languages was required, users saw the new system as far too expensive and unworkable. This was overcome in 2010 by a technical innovation (perhaps with help of GOOGLE) at EPO which reviewed its machine translation programme in September 2010 and decided to set up a new system, now operational, which offers free, high-quality translation, potentially in all EU languages, for purposes of public information.

Secondly, the major difference between the unitary patent and the existing European patent will be in the post-grant phase, wherein the patent proprietor is required to decide on the geographical coverage where protection is needed. As per the new system, after the patent is granted, the patent proprietor can opt for: (a) a European patent with individual territorial protection in the designated states; or (b) a unitary patent with unitary territorial protection in all the states participating in the enhanced co-operation scheme; or (c) a combination of both schemes and request a European patent in a selection of those EPO member states not belonging to the enhanced co-operation scheme and a unitary patent for those belonging to the scheme.

In addition, the introduction of a central European patent court will benefit innovators by bringing down patent litigation costs and increasing legal certainty. The seat of the Central Division of new European Paten Court has also bee an issue of debate and reason for delay in this process since at least 2011 end. Finally an agreement was reached, on June 29, 2012 at the highest level of European government, on the seat of the court’s Central Division.

Putting in force such a system would certainly result in a true supranational patent system in Europe, something that has been discussed for decades and eagerly awaited by European industry.

I believe that the time is ripe for at least the South-East Asian countries (if not all Asian countries) to come together, take a leap and implement a similar mechanism for administration of patents, if not to this extent initially then atleast by entering a bi-lateral treaty for setting up a regional office. India, being a major player in South-East Asia, not only in terms of innovations originating therefrom, but also in terms of patenting and marketing, must take the lead.

Who should file the Foreign Filing License (FFL) under section 39 of the Patents Act, 1970?

A permission to file a patent application outside the home country (usually the country of basic application) obtained from the Patent Office of that country is commonly referred to as the Foreign Filing License (FFL). Most of the countries have enabled some mechanism in their patent law to monitor the export of inventions by its residents to other jurisdictions. The purported objective behind such check, perhaps, is to prevent the defence related inventions from being escaped to other jurisdictions without the State of origin being given first choice to use it. In effect, the State indirectly claims the first right of sale/exploitation of defence related inventions originating from its residents. The statutory provision for this in India is section 39 of the Patents Act, 1970, as reproduced below:

39. Residents not to apply for patents outside India without prior permission

(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed:

PROVIDED that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Focusing on Section 39(1) only, which is applicable to patent applications made be ‘person resident in India’. Since the phrase ‘person resident in India’ has not been defined, their lies some ambiguity pertaining to this and the ambiguity is not only as to ‘who falls in this category of person resident in India’ but travels much beyond its scope in light of different situations. To take the discussion forward and to understand the issues involved and their possible way outs, therefore, we can refer a few hypothetical cases as below:

Case 1: Where the inventor and the assignee (if any) both are residents of India [for individual applicants – the only authority I am aware of for the definition of ‘resident of India’ is FEMA (which although is not pari materia to the Patents Act, but may be the only reference material for this purpose)  which defines it as a person residing in India for more than 182 days in the preceding FY; for companies as the Applicants (as assignee of the invention) - a company which is incorporated in India is deemed to be resident in India; similarly for firms (who can also apply for a patent), it must be registered firm in India], then the applicant has to obtain an FFL if it wants to file an application in some other country before expiry of 6 weeks of filing in India (for these purposes, it is immaterial where the invention is conceived, what is relevant is what was the status of the inventor at the time of conceiving the invention). This is the most general case where both the Applicants are residents in India and therefore have to obtain the FFL as per the provision. Similarly, of course where none is resident in India, no need to obtain the FFL.

Case 2: Where the inventor is resident in India (as per the above meaning), but is on the payroll of a foreign entity and is merely working in India as its agent/ consultant. Assuming the employer entity owns the invention by virtue of the employer-employee agreement (or some assignment deed) and the entity now wants to file an application in some other country without filing in India. Will it be required for the company to obtain an FFL from the Indian Patent Office? I believe yes - it is required to obtain the FFL. The preamble to section 39 reads as “No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless – ...”. The answer, to me, lies in the phrase “cause to be made” which although is quite vague, but if subjected to judicial interpretation will quite surely be interpreted liberally so as to encompass the case wherein the inventor (resident in India) is not ‘making’ the application directly but assigning it and causing its assignee (not resident in India) to make the application. Thus the inventor (being resident in India) needs to obtain FFL before either making or causing to made an application outside India. Moving a step further to a similar case (Case 3), where the inventor (resident in India) is not an employee of the Applicant entity and has merely assigned its invention (before filing any patent application in India) to a foreign entity, which thereafter is planning to file a patent application in some other country. This case, in effect, is no different than Case 2, and the Inventor shall be at breach of this provision if the Assignee files the patent application outside India without FFL, as the inventor caused, albeit unknowingly, to make the application outside India without obtaining FFL. The inventor may possibly try to raise a defence that it has merely assigned the invention to the entity and doesn’t know its future course (of whether the entity filed a patent application or not) and thus should not be held liable. But this defence appears not to be a valid defence as the ignorance of law is no excuse and the inventor should be wary of the law while assigning its invention and must have ensured that it is not filed outside India by the Assignee without obtaining FFL. This, however, appears to be (but not actually) slightly unreasonable and unjustified. Moving even a step further to the extreme case (Case 4) of this, where the inventor assigned the invention (which is nothing but a disclosure) to the foreign entity and the entity doesn’t file any patent application in any country. This thus amounts to a mere disclosure (of presumably a defence related invention) without filing a patent application for the same in India (and thus not providing IPO an opportunity to stop its disclosure) and there appears to be no prohibition against it under the Patents Act, nor under any other relevant Act (like Atomic Energy Act etc.). It appears to be an obvious loophole in the objective behind section 39. Coming back to the issue, now the question is whether section 39 imposes a duty upon the inventor (Indian resident inventor) to keep track as to whether the assignee of its invention is filing a patent application in some country or not and to ensure that such filing is in compliance with section 39. For inducing reasonability on this aspect, the Court may set up some standards such as due diligence; or may draw a distinction between the cases where the inventor is the employee of the Applicant (Case 2) an where the inventor is not an employee of the Applicant cases where the assignment is pursuant to a specific assignment deed (Case 3). [The difference between these two situations, to me, is only virtual as both of them are mere assignment of the invention from the inventor to the Applicant and I believe that the Employer, ipso facto, is not the owner of the invention and there is always a deemed assignment (by way of employer-employee agreement) from the inventor to the Employer, which is also clear from the section 6 (who may apply for the patents). Also, there can always be an employer-employee agreement wherein the employee reserves its rights to file for patent application.] Since every patent office (including IPO) requires some proof of the assignment of the invention from the inventor to the applicant, the control rests with the inventor itself and while assigning the invention (if not an employee), it must do so with a saving clause that if any application for patent is filed in respect of the invention, the FFL must be obtained from IPO. And in cases (like case 2), where the invention is assigned automatically to the Employer, the Employer must know the laws of the jurisdiction in which its employees are engaged. It is simply a matter of awareness and practical enablement and there is no un-reasonability.

Similarly, in Case 5, where the inventor is not a resident in India but an employee of the Indian company (which is presumed to be resident in India) and the inventor making invention outside India, for which the Indian company is the applicant, the company is certainly required to obtain an FFL as in this case the resident in India is directly ‘making’ an application (irrespective of the fact that the inventor is not resident in India and the invention was not conceived in India).  And in such case even if the inventor itself were to be the Applicant (for example in US), the Indian company would be required to obtain an FFL from India as such application may still come under the purview of an application “caused to be made” by the resident in India (the Indian company). Similar analogies can be drawn in this case also.

I believe, therefore, that as per the statute if either of the inventor or the Applicant is resident in India, the FFL must be obtained from IPO.

Is India really a First-to-File System?

“Unlike USA, which is a first-to-invent patent system, India is a first-to-file patent system.” – This is perhaps one of the very first lines taught to me in my basic patents class and I accepted this omnipresent claim as a matter of fact. It´s been quite some time that I have dared to re-look at this seemingly irrefutable fact and struggling to accept its veracity. The bone of argument lies in section 6 of the Patents Act, 1970, which is:

  6. Persons entitled to apply for patents

(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—

(a) by any person claiming to be the true and first inventor of the invention;

(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

(emphasis provided)

Now this section confers legal rights, to apply for a patent, in favour of a person who claims himself to be a ‘True AND First Inventor’ of the invention [as is also evident from the language of Form-5 (Declaration as to Inventorship) – a compulsory form to be submitted with the Application for patent]. Now we consider two hypothetical situations to understand this in some detail:

a)      Situation 1 is where the Applicant or the Patentee ‘wrongfully obtained’ the invention from the actual viz. true and first inventor (who either did not apply for patent or applied only later) – such wrongful obtention is covered as a ground of Opposition in the pre-grant opposition [section 25(1)(a)] as well as in post-grant opposition [section 25(1)(a)] and also as a ground of revocation of patent [under section 64(1)(b)]. In such case the Applicant/Patentee is technically not the “True and First” inventor and thus the declaration made by the Applicant during the application is evidently false and thus irrespective of such explicit provisions of opposition/revocation, the Opponent may still have some remedy under common law. Section 26 and 52 further provides to the extent that if such ground is proved, the Controller may transfer the patent ‘as is’ (or with requisite amendments) in favour of the Opponent, and in case the Opponent has already preferred an application for the invention and the same is pending, the earlier priority dates of the wrongfully filed patent application shall be conferred upon the Opponent’s later filed genuine application, as if the Opponent filed its application on the earlier date. Thus whenever an application for a patent is filed, it is assumed that it is filed by the True and First Inventor (even if actually it is not done so by the True and First Inventor, whose identity is determined only later in time and in whose favour the original application/patent is transferred then).

b)      In the Second situation, which is more difficult and involves prime issue of this post, is where an invention is conceived independently by two inventors – A and B (assuming all fair play and no wrongful obtention). For the purpose of details, A conceived the invention on June 1, 2009 and filed an application for patent on July 1, 2009, whereas B conceived the invention on March 1, 2009 (and presumably B is able to prove its claim of date beyond reasonable doubt through its records) and applied for the patent only on August 1, 2009. Now, A applied for patent on July 1, 2009, but technically he may be the True inventor but certainly not the First inventor (Note the requirement is of being True AND First Inventor) of the invention and thus is not entitled to make the application, which should be bad in law and may be void ab initio (unless later transferred in favour of real ‘True and First Inventor’ with retrospective effect). On the other hand, novelty of the invention in B’s Application (B being ‘True and First Inventor’ in real sense) on August 1, 2009 is technically killed by Section 13(1)(b) and should not be able to pass the examination in light of the A’s application as prior art. So on the face of it, both A’s and B’s Applications are defective and none should be able to get the patent. The escape route is B challenging A’s application on the ground and consequently the A’s application is transferred in favour of B as if it is actually made by B on July 1, 2009, then B will be able to proceed with the application without section 13(1)(b) causing any obstacle as B is now granted the priority of July 1, 2009 (and if this is so, India is anything but first-to-file system). This, however, is feasible only if B is able to challenge the A’s application. But unfortunately, the grounds of pre-grant Opposition or post-grant Opposition as provided under section 25 (being exclusive grounds) uses the terminology “wrongfully obtained the invention”, which is not the case here. So B may never be able to file a pre-grant or pot-grant Opposition against A’s application. Grounds of revocation, under section 64(1)(b), however, does allow B to file a petition for revocation as the ground is “that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor” and B can always say that A is not entitled under the Act to apply for the patent.

Thus the issue is whether B should wait for grant of patent for A’s application and then file a rectification or does it have any recourse available under common law to challenge the declaration made by A as false (even though unknowingly) and thus A’s application being void? I am still not able to figure out the solution to this hypothetical situation. Any suggestions and comments are welcome!

Grounds of Opposition [s.25] v. Grounds for Revocation [s.64] under The Patents Act, 1970

Contentious matters under the Patents Act, 1970 are governed primarily by Section 25 and section 64 of the Act. These two sections enumerate the specific and exclusive grounds available to challenge a patent/application for patent under the Act. Here I would like to draw out a contrast between these two seemingly similar set of provisions (sets of grounds). As per the Act, there are three ways to place a challenge against a patent / application for patent – pre-grant opposition; post-grant opposition; and revocation of patent. A pre-grant opposition could be filed by any person from the date of publication of the patent application uptil technically the date of grant of patent on any of the grounds enlisted in section 25(1). The post-grant opposition could be filed only by any ‘person interested’ within one year from the date of publication of the grant of patent on any of the grounds enlisted in section 25(2). Apart from the fact that a pre-grant opposition could be filed by ‘any person’ and a post grant opposition could be filed only by a ‘person interested’, the grounds available for pre-grant [25(1)] and post-grant opposition [25(2)] are ditto. I therefore will treat these grounds available for opposition as a single set of grounds against the set of grounds of revocation available under section 64. The revocation can be filed by any person interested or Central Government from the date of grant of patent till the expiry of patent. Section 25 provides for 11 grounds [(a) to (k)] of opposition whereas section 64 provides for 17 grounds [s. 64(1)(a) to (q)] for revocation of a patent (see here for the The Patents Act, 1970 and The Patents Rules, 2003). Here I will try to chalk out a comparative analysis among these two sets of available grounds and will also try to deduce the possible reasoning behind introduction of such changes.    

COMPARISON:

1.      Section 25(a) provides for wrongful obtention of the ‘Invention’ (or any part thereof) as ground for opposition. This ground probably touches section 6 of the Act which identifies the ‘Persons entitled to apply for patent’ viz. true and first inventor(s), its/their assignee(s) or legal representative(s). There is however a situation in which the applicant doesn’t lie within the ambit of section 6 as a person entitled to apply for patent and still has not wrongfully obtained the invention i.e. where the person is although a true inventor but not the first one [note the requirement is ‘true and first inventor’ (which raises some doubt as to whether India is actually first to file country? I will try to cover this aspect in a subsequent post.)] and has invented separately but just after the true and first inventor. In such case, this ground of opposition is not available. On the other hand, if the person has wrongfully obtained the invention, it certainly is not entitled to apply for patent. It must be noted that atleast for pre-grant opposition, this ground could also be invoked by ‘any person’ (and not only interested person), and there is not much logic in making this ground available for a person who is not actually the proprietor or person interested in the invention. This seemingly harmless ground of opposition available to ‘any person’, therefore, could theoretically be used a tool to harass the applicant to prove its title over the invention and in particular cases that the claimed inventor is the true and first inventor of the invention. The corresponding provisions for revocation under section 64 are section 64(b) and (c), wherein the section 64(b) also correlates directly to section 6 while providing the applicant of patent not entitled under the Act to apply for the patent as being a ground for revocation [this ground of revocation, therefore, is also available against the patent granted to the hypothetical true but not the first inventor]. Interestingly, there is another provision – Section 64(c) – which provides for a similar remedy and makes wrongful obtention of the ‘Patent’ (and not the invention) in contravention of the rights of the petitioner as a ground for revocation. Although it seems to encompass section 64(b) within its ambit, it is much wider in its scope and its applicability; and also as per the principles of interpretation of the statutes, it must be presumed to be not completely redundant vis-a-vis Section 64(b). It appears that the word ‘Rights’ in the phrase ‘contravention of the rights of the petitioner’ are not limited to the rights within the Act and are also not limited to being the ‘Rights’ of the Inventor (or person entitled to apply for patent). The right could therefore be a right under any other statute or under common law and could be invoked by any person interested. It is presently difficult to hypothesize the situation in which a person (not in the category of persons entitled to apply for patent under section 6) could first prove its interest and then its rights which are contravened by the patentee to wrongfully obtain the patent and more so such ground being allowed to the extent to revoke the patent. If we confer a strict interpretation to the term ‘wrongfully’ to include anything which is not in compliance with any provision of the Act, then we may come across a situation wherein the Controller had demanded the applicant (during the prosecution of the patent application) to insert a reference of another patent(s) under section 19 of the Act which was not complied by the Applicant and the patent was thus (wrongfully) granted without insertion, then the patentee of the to be referenced patent could invoke this ground for revocation of the patent. This is just one possible situation which I could think of. Any new situation and or cases in which the petitioner has/could invoke such ground for revocation of patent are welcome from readers.

2.      Section 25(1)(b) provides for lack of novelty of the invention in light of any document published (before the priority date of the claim) in India or elsewhere as a ground of opposition. It basically covers section 13(1)(a) and 13(2) of the Act on the grounds of novelty as ground of opposition. The corresponding provision for revocation is section 64(1)(e) of the Act which makes a direct reference to the documents referred under section 13 and thus covers this as a ground of revocation (with other grounds as discussed later). The grounds for opposition and revocation on this aspect therefore are almost identical without any inferential variation.

3.      Section 25(1)(c) provides for lack of novelty as ground of opposition wherein the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant's claim but having priority date earlier than that of the applicant's claim. Thus it makes a reference to the documents covered under section 13(1)(b) of the Act. It must be noted that such earlier priority claims being published after the Applicant’s claim are considered only for the purpose of novelty and never for the obviousness [unlike documents referred under section 13(1)(a) and 13(2), as discussed later, and therefore these are classified as separate categories]. For the corresponding provision for revocation, although this would automatically be covered under the already discussed section 64(1)(e) of the Act which encompasses all documents referred in section 13 of the Act, the more relevant counterpart would be section 64(1)(a), which provides, as a ground of revocation, the case where  invention 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. Very interestingly, this takes into account only those valid claims of earlier priority date which have been part of a granted patent in India and in case where the earlier priority (but later published) claim (as part of a patent application) has not yet been granted as a patent in India, the applicant of such patent application would not be able to invoke it as ground of revocation for the granted patent unless its own claim (patent application) is granted as a patent in India. In a hypothetical situation, it is also possible that the claim of earlier priority is published even after grant of the later priority claim in India (maximum time for publication is 18 months and theoretically minimum time for grant of patent is about 7-8 months) and thus the applicant having earlier priority would certainly like to file a revocation. Although the applicant of earlier priority claim can always take recourse to section 64(1)(e) to place reliance on its later published un-granted claim, I am unable to find the logic behind introducing such critical change in section 64(1)(a) as compared to the ground for opposition. Any views or suggestions by readers are welcome.

4.      Section 25(1)(d) covers what was publicly known or publicly used in India before the priority date of the claim and is equally covered as a ground of revocation under section 64(1)(e) of the Act. However the distinction lies in the explanation to Section 25(1)(d), which provides that an invention relating to a process shall be deemed to have been publicly known or publicly used in India if a product made by that process had already been imported into India before that date (except where such importation is for the purpose of reasonable trial or experiment only). This explanation starts as “For the purposes of this clause...” and is therefore applicable to the respective ground of opposition only. In the similar ground for revocation, however, there is no such explanation and as per the principles of interpretation of statutes, such omission amounts to deliberate exclusion of the effect of such proviso/explanation from the place of omission. It is therefore can be said that for raising a ground of opposition, the importation of product could be counted as use of the corresponding inventive process, whereas for revocation it is not. Again there is lack of logical explanation towards enabling this change.

5.      Section 25(1)(e) is directed towards opposition on the grounds of obviousness and lack of inventive step wherein it takes into account all the documents published before priority date [under section 13(1)(a) and 13(2). Note again that the earlier priority and later published claims under section 13(1)(b) are specifically not included for the purpose of obviousness] as well as what was used in India before the priority date of claim. It must be noted that only ‘what was used in India’ is included and ‘what was publicly known in India’ is omitted here from the aspect of obviousness. One reason behind this omission could be the reason that the obviousness, unlike novelty, is itself a very subjective phenomena and tendering another subjective factor such as ‘what was publicly known’ towards its accountability will tend to multiply the unwarranted subjectivity. This hypothesis however is annulled by the fact that this ground of ‘what was publicly known in India’ is actually specifically included in the corresponding provision for revocation viz. section 64(1)(f). Other than this there is not much difference in these grounds.

6.      Section 25(1)(f) engulfs section 3 (what is not an invention within the meaning of the Act) and section 4(invention not patentable) as grounds of opposition. The corresponding provisions for revocation are sections 64(1)(d) covering section 3 and 64(1)(k) covering section 4. The provisions are almost identical and so are the grounds available for opposition and revocation on these aspects.     

7.      Section 25(1)(g) provides a ground of opposition that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed viz. the requirement under section 10(4)(a) of the Act. This ground of opposition although seems to be very vague and ambiguous (in light of the fact that there are no specific guidelines with regard to the disclosure in patent specification), but they are not only essential they are justifiably very well-founded as ground of opposition available to any person, as they touches the hinges of patent system itself. The corresponding provision for revocation is section 64(1)(h) which in addition to section 10(4)(a) also includes section 10(4)(b) viz. lack of disclosure of the best method of performing the invention. Even the requirements of sufficient and fair disclosure are very explicitly described. It is quite unjustified from the Patentee’s perspective to include an additional ground (of best mode) to challenge the patent once the patent has already been granted and the patentee has already, believing the validity of its patent, incurred costs in development and production. It must be noted here that these grounds (specifically of opposition) are exclusive and if a ground is not specifically mentioned therein, it means it is simply not available.

8.      Section 25(1)(h) refers to the requirement under section 8 of the Act and rule 12 of the Rules. Non-furnishing of the information or furnishing of wrong information are the grounds of opposition. Under section 8, the applicant is required to furnish the details of filing and prosecution of corresponding patent application(s) in other jurisdictions within 6 months of filing of the application in India; and an undertaking to the keep the Controller informed, regularly, of any such applications till the grant of patent in India. Similar ground is available for revocation of patent under section 64(1)(m).

9.      Section 25(1)(i) provides a peculiar ground of opposition. The ground of objection being that that the convention application is not filed in India within twelve months from the date of the basic application in convention country from which the priority is claimed. The first question which came to my mind is why the ground of opposition is confined to only this particular deadline viz. why only convention application deadline being a ground and why not that the PCT national phase application in India was not entered within 31 month from priority application and also why not that the complete specification was not filed within 12 months from the date of provisional application. While searching for the reason behind this, I could realize that for the 31 months deadline in PCT National Phase applications, there is a specific provision (Rule 22 of The Patents Rules 2003) for non-compliance (which renders it ‘deemed to be withdrawn’ in case of non-compliance); and in case of 12 months deadline to file complete specification after provisional specification, there is also a specific provision (section 9 of the Act) for non-compliance (which renders the application as deemed to be abandoned if the deadline is not met). In case of the convention applications, however,  section 135 of the Act provides only that the if the convention application is filed within 12 months from the basic application the date of priority of the claims is the date of basic application. It is, to my knowledge, nowhere mentioned, and perhaps it is not required also, to mention the non-compliance of this 12 months deadline, which will have an obvious effect of ineligibility of the applicant to claim priority. But this could be a reason for inclusion of this as a ground of opposition in case the convention application (claiming priority from the basic application) is actually filed after 12 months period and for which there is no specific provision for non-compliance. Readers are welcome to share their view on this. There is no counterpart provision for revocation of patent.   

10.  Section 25(1)(j) provides non-disclosure or wrong-disclosure of the source or geographical origin of biological material used for the invention. An almost exactly similar ground for revocation is provided under section 64(1)(p).

11.  The last ground of opposition under Section 25(1)(k) is the ground that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere. An almost exactly similar ground for revocation is provided under section 64(1)(q).

Then there are additional grounds for revocation of patent which are not available for opposition. I will cover those grounds in the subsequent post.