Saturday, December 31, 2011

Great Expectations from the New Year: A Reasoned Approach to the Law

Since 2011 is on its way out and all of us are eager to usher in the New Year, each of us for our own reasons, I thought I might set the tone for the coming year with a few “judicial” expectations, which resonate with at least a non-negligible cross-section of the Indian Patent Bar.

For quite some time now, Indian Patent Practice has been largely driven by consensus among practitioners, which in turn is born from experience with “Office Practice”. However, this is precisely the sore point because there is a dire need for interpretational guidance from Courts, the IPAB, and Patent Offices in that order because power/authority, more than logic, seems to dictate the course of judgments/decisions.

What the Courts hold, the IPAB follows, and the Patent Office applies. Therefore, for me, it is now the duty of Courts to use every opportunity that cases before them present, to interpret and clarify the law. That said, Courts are bound by a few rules which flow from our system of adversarial jurisprudence:

1. Courts are not at liberty to express their views on all and sundry unless the issue is relevant to a case at hand;

2. Even in issues which are relevant, Courts are bound by issues raised, submissions made by parties on those issues and the material placed before Courts to substantiate the submissions.

What comes out of this? To me, what this means is that it is the duty of parties to assist Courts to the best of their abilities, which is not necessarily antithetical to protecting their interests in a case. But then, more than parties, it is for counsels to put their best foot forward every time they put forth their Client's point of view on the law before Courts (This is not to be construed as taking a patronizing tone).

This is all the more necessary because Indian Courts still do not have a hang of Patent Law, so it falls on the able shoulders of the Indian Patent Bar to assist Courts on the subject and the law. Some of the best judgments are the product, not of the efforts of the Bench, but of the diligence, industry and legal acumen displayed by members of the Bar.

Specifically, is there something that we can do? For starters, I think what the Bench and the Bar can and must do is to stop quoting and citing precedents ad nauseam without explaining the relevance of precedents to the facts of a case.

Precedents are created, not by parroting precedents, but only by original thinking. Fastidious adherence to precedents will only create a tautologous monster, which may ultimately come back to haunt us and bite our celestial rumps!

In this regard, following are the observations of the Supreme Court in Haryana FinancialCorporation v. Jagadamba Oil Mills (AIR2002SC834):

“19. Courts should not place reliance on decisions without discussing as to how the factual situation fits in with the fact situation of the decision on which reliance is placed. Observations of Courts are not to be read as Euclid's theorems, nor as provisions of the statute. These observations must be read in the context in which they appear. Judgments of courts are not to be construed as statutes. 

To interpret words, phrases and provisions of a statute, it may become necessary for judge to embark into lengthy discussions but the discussion is meant to explain and not to define. Judges interpret statutes, they do not interpret judgments. They interpret words of statutes, their words are not to be interpreted as statutes.

21. Circumstantial flexibility, one additional or different fact may make a world of difference between conclusions in two cases. Disposal of cases by blindly placing reliance on a decision is not proper.

22. The following words of Lord Denning in the matter of applying precedents have become locus classicus:

"Each case depends on its own facts and a close similarity between one case and another is not enough because even a single significant detail may alter the entire aspect. In deciding such cases, one should avoid the temptation to decide cases (as said by Cordozo) by matching the colour of one case against the colour of another. To decide, therefore, on which side of the line a case falls, the broad resemblance to another case is not at all decisive."


"Precedent should be followed only so far as it marks the path of justice, but you must cut the dead wood and trim off the side branches else you will find yourself lost in thickets and branches. My plea is to keep the path to justice clear of obstructions which could impede it."

I couldn’t have said it better than the blessed Lord Denning! These words must guide us every time we find ourselves short of authorities to buttress our cases.

After all, “legal research” is not merely pulling out a judgment from a database and quoting from it without internalizing its essence. Legal research, for me, is to be able to use one’s common sense, the fundamentals of the subject, the wording of the statute, facts of the case and fairness to chart the course of logic. How else are precedents created?

I don’t intend to pontificate, the idea is to merely voice what most of us must have thought at some point or the other. Also, aren’t we just tired of looking for precedential reinforcements from either sides of the Atlantic? Don’t we look forward to the day when we cite Indian decisions? Or better, don’t we look forward to the day when Indian decisions are cited on either sides of the Atlantic? I, for one, certainly do!

Wishful thinking some might say, Optimism is my way of putting it (Please check out the Video Links at the top of the page). I have no qualms saying it’s a very real scenario which is not too far away in the future, provided we work for and  towards it.

On this note, on behalf of the blog, Here’s Wishing Everyone (not just our readers) a Happy and Prosperous New Year!

Friday, December 30, 2011

IPAB’s Yahoo Order: Analysis- II

This post continues from the last post analyzing the IPAB’s order on Yahoo’s patent application. In the last post, I had dealt with one of the prior art documents cited against Yahoo (D9-“Sullivan Article”). I had even disagreed with the IPAB’s logic on the issue of how novelty must be assessed.

In this post, I deal with (1) the other prior art document- D10, which is a set of responses on the applicant’s own website to FAQs relating to the invention, and (2) Section 3(k).

Anticipation- Section 32 of the Patents Act
The responses given to the FAQs, according to the Controller, described the invention in sufficient detail so as to anticipate the invention.

To this, the applicant’s response was that the information disclosed in the responses was not enough for a practitioner of the art to replicate or work the invention. Assuming that the information was sufficient, the alternative argument of the applicant was that it was entitled to protection under Section 32 of the Act, which exempts anticipation by public working which extends to a period of 12 months before the date of priority.

The above exemption is, however, restricted only to instances which may amount to use of the invention for “reasonable trial”.

My Thoughts
I am not sure if the reliance placed on Section 32 by the applicant was correct. I say so because Section 32 relates to anticipation by public working of the invention, but does not extend to plain and simple publication of information related to the invention.

This is clearly borne out from the wording of the provision since it refers to effecting working of the invention in public for the purpose of reasonable trial. The purpose underlying it is to exempt unavoidable public working of inventions which cannot be worked in private, let’s say a real-time trial of a turbine used in hydel power production. Therefore, for me, the applicant’s argument that the information in the responses to the FAQs too amounted to “anticipation by public working”, is legally untenable.

Provisions in Chapter VI, which deal with exemptions to anticipation, must be interpreted strictly since these are negative definitions as to what does not amount to anticipation. For instance, there’s a difference between saying that the number of arbitrators must be odd, and that the number of arbitrators must never be even. The second statement acts as a stronger/sterner caveat against appointing even number of arbitrators.

Similarly, when Section 34 states that other than instances covered by Sections 29-33, there are no other exceptions to anticipation, it requires us to interpret the windows provided under Sections 29-33 in a very restricted/limited fashion. Ergo, there is no scope for including publication of information related to an invention under Section 32 of the Act.

The Controller’s Reasoning
The Controller, instead of questioning the applicant’s very reliance on Section 32, adopted an approach based on priority date. His argument went something like this:
A. The information in the responses to the FAQs was available three months before the date of priority, which meant that the invention must have been worked prior to the information being disclosed in the responses.
B. The Controller then assumes that such working of the invention must be “much earlier” to the priority date, and hence beyond the 12-month period.
C. Consequently, protection could not be sought by the applicant under Section 32

Needless to state, the argument is vague for there is no basis for the Controller’s assumption that the invention must have been necessarily worked before the 12-month grace period. The IPAB too found this approach vague and set aside the finding of the Controller of this issue. This could have been avoided if the Controller had questioned the very basis of the applicant’s (flawed) reliance on Section 32 of the Act.

Section 3(k)
Here’s an opening observation by the IPAB on the issue:

Finally we come to the ground of non-patentability under S. 3 (k). If the claimed subject matter is not an invention or if the invention is not patentable or if it is excluded by S.3 of the Act, then none of the other objections need to be considered. Only if the claimed subject matter is a patentable invention we need to look at anticipation, obviousness etc.

On one hand the IPAB takes the above position, and on the other, with respect to the issue of novelty, the IPAB took the view that the Controller erred in excluding ineligible subject-matter from the claims before comparing it with prior art to assess novelty of the invention! (I had discussed this in my last post on the Order)

What exactly is the invention claimed by Yahoo?

“A tool enabling advertisers to target web search terms relevant to their business and to pinpoint the placement of their web site description within the search results provides a powerful advantage to businesses and others seeking to increase their web exposure.

The web site promoter first selects a search term comprising one or more keywords relevant to the content of the web site to be listed. The web site promoter influences the rank position for the search listing through an ongoing online competitive bidding process with other web site promoters. The bidding process occurs when an advertiser enters a new bid amount for an existing search listing or enters a bid amount for a new search listing. Preferably, the promoter’s bid is then processed in real time. This bid amount is compared with all other bid amounts from other promoters for the same search term, and generates new rank values for all search listings having that search term. The rank value determines the position where the promoter’s web site description will appear on the search results list page that is generated when the search term is entered into the query box on the search engine by a searcher. A higher bid will result in a higher rank value and a more advantageous placement, which is preferably near the beginning of the search results list page. Preferably, the quantity used in the competitive bidding process is a money amount that the web site promoter will pay to an owner of the Internet search engine each time the advertiser’s web site is referred by the search engine. Most preferably, this money amount will be deducted from an account balance that is retained in the promoter’s account for each time the promoter’s web site is referred by the search engine.”

The core of the invention deals with a method of connecting the keyword entered by a user with the results stored in the database of the search engine and deciding the placement of a search result relating to a particular website based on the bid placed by the owner of the website for successful “click-throughs” (clicks that translate to visits to the website itself). In short, ranking of a search result was based on the bid amount placed by the owner of a website.

Obviously, an algorithm connects these factors to decide the ranking of a search result. If so, should the invention be approached as an algorithm or a business method? I am inclined to see the application more as an algorithm, as opposed to a means of doing business. However, the IPAB chose to characterize the application as a business method, without clearly giving its reasons for doing so.

The IPAB cites excerpts from decisions from the US and the EPO which speak of the advisability or otherwise of grant of patents to business methods. However, there is no attempt on the part of the IPAB to define a business method, or at the very least, to explain why the application claimed constitutes a business method. The only reasons it offers are as follows:

However, the above extracts from the European Patent Office order only show that the claimed invention is only a method of doing business which is, the advertisers pay for better placement and the bid is registered and the amount debited from the advertiser’s account according to the bid made. Even if we use the description employed by the learned counsel for the appellant that it is an auction combined with the Yellow Pages, all happening in real time it is still a method of doing business, by providing service to advertisers who want to have the prime place in the selected page and for which they bid and their account is debited accordingly. In doing so the service product seeks to place the facts (bid amount) or advertisement (information) in hierarchy based on the payments made. This is nothing but doing the advertisement business electronically. Even the technical advance that is claimed over the existing art is only an improvement in the method of doing business and S.3(k) is clear that business method cannot be patented, the fact that there is an advance has not improved the case.  Therefore, we affirm that this ground alone is sufficient to reject the present application.

Concluding Thoughts
On the whole, the decision of the IPAB leaves much to be desired in terms of flow of logic and analytical rigour/sharpness. The Board seems to have proceeded on a visceral feel that since the application smelt like and appeared as a business method, it must obviously taste like one. This, the IPAB concludes without so much as attempting to taste and digest the invention.

This clearly shows that it is not enough to cite foreign precedents; what is important is the original application of principles set out in the precedents to the facts of a given case. 

This case presented the IPAB with a great opportunity to clarify several aspects of the law such as assessing novelty, import of Section 32 and distinguishing a business method from an algorithm. That opportunity appears to have been squandered...lets hope the standard of reasoning in our decisions evolves and elevates with passage of time.

Thursday, December 29, 2011

IPAB’s Yahoo Order: Analysis- I

This post continues from the last post on the IPAB order on Yahoo's patent application.
Brief Facts
Title of the Invention: System and Method for influencing a position on a search result listing generated by a computer network search engine

Date of Filing: May 12, 2004 (with a priority date of May 28, 1999 from a US application)

Date of Issuance of FER: December 30, 2004

I haven’t been able to lay my hands on the complete specification, but from what I could glean from the order, the invention apparently relates to “competitive bidding”. The Patent Office raised 17 objections in the FER, of which the primary objections were:

A. Ineligibility of subject-matter under Section 3(k) of the Patents Act
B. Insufficient distinctiveness of Claims 62 and 63

To meet the objections, the applicant submitted new set of claims, which among other things, included “technical subject-matter” to overcome the 3(k) objection. However, objections were raised again citing raising Section 3(k) and lack of novelty. To this the applicant responded by deleting 25 “apparatus claims”.

It appears that on June 9, 2006, the Patent Office found the application in order for grant. Unfortunately for the applicant, a pre-grant opposition was filed on October 22, 2007 which was decided against the applicant on March 30, 2009. The pre-grant rejection was based on ineligibility of subject-matter and lack of novelty (anticipation).

The applicant appealed to the IPAB against the pre-grant rejection.

Two prior art documents were cited against the applicant on the issue of novelty. The first was an article titled “Search Engine Report” by Danny Sullivan (referred to as D9 in the order) and the second was a copy of Frequently Asked Questions (FAQs) from the applicant’s own website (referred to as D10).

The Sullivan article basically describes a method of getting better placements in the results lists of search engines, which involves payment by the entity seeking better placements. The higher the payment/bid, the better is the placement in the search results. The placement of searches is done by entities/sites which function as referral sites for an entity which seeks more eyeballs.

For instance, could act as a referral site for Reliance and ensure that search results relating to Reliance are placed better, subject to the payment of a certain fee by Reliance for every successful click.

In the pre-grant proceedings, the above-described Sullivan article was deemed as anticipating the application of the applicant. However, this finding was arrived at by the Controller after having discarded certain features claimed in the patent application. The features were discarded on grounds that they did not constitute “technical subject matter” and were hence ineligible.

The IPAB took the view that when dealing with the issue of novelty, the Controller ought to have simply compared the features described in the Sullivan article with the features claimed in the patent application without looking into the issue of eligibility of claimed subject-matter. The IPAB therefore took the view that the Controller’s analysis with respect to the Sullivan article was flawed.

My Thoughts
The approach to novelty that the IPAB seems to advocate raises an important question, which was dealt with in the much-discussed Symbian v. Controller of Patents decision, which I had discussed elsewhere quite some time ago. The question that must be asked is as follows:

In ascertaining novelty, must the claimed invention be compared as it is with prior art? Or must only eligible/patentable subject matter be compared with prior art?

The Controller excluded non-technical subject matter before evaluating the invention for novelty against the prior art. On the other hand, the IPAB took the view that the entire invention must be compared with prior art without filtering the claim for ineligible subject-matter.

The Aerotel test (in the UK) requires identification of actual contribution made, and examination of its eligibility as patentable subject-matter as the primary step in scrutinizing a patent. To me, this makes sense because criteria such as novelty, non-obviousness and industrial applicability are to be touched upon only after eligibility is satisfied in the first place.

Eligibility is the primary threshold which must be surmounted before requisite standards of novelty and non-obviousness are met with. The analysis of the contribution of an invention to the state of art is strictly restricted only to those aspects of the invention which fall within the scope of permissible/patentable/eligible subject-matter.

Therefore, was it incorrect on the Controller’s part to exclude non-technical/ineligible subject-matter from the claimed invention, before evaluating it for novelty? I don’t think so...

Consequently, I do not agree with the IPAB’s approach to novelty, assuming that the result was ultimately the right one.

More to come in the next post. 

Wednesday, December 28, 2011

Stale News: IPAB Dismisses Yahoo’s Appeal from Pre-Grant Patent Rejection

In a 32-page order dated December 8, 2011, the IPAB dismissed the appeal filed by Yahoo Inc against a pre-grant opposition order in which Yahoo's application for a patent on “System and Method for Influencing a Position on a Search Result Listing Generated by a Computer Network Search Engine” was rejected.

The primary (and it appears the sole ground) for dismissal of the appeal was Section 3(k) of the Patents Act which bars grant of patents to computer programmes per se. We will undertake a detailed analysis of the decision shortly and welcome opinions from readers and practitioners on the decision.

I thank Ms.Sunita Sreedharan for drawing my attention to the order!

Tuesday, December 27, 2011

Matrix Labs v. Roche: Madras HC Rules It has No Jurisdiction

An ex parte injunction, which was granted by the Madras High Court in September 2010, was vacated by a Division Bench of the same Court on grounds that the Court did not have jurisdiction to entertain the suit.

The suit for patent infringement was filed by Roche against Matrix Labs alleging infringement of its patent 196774 on Erlotinib Hydrochloride. Roche claimed that the Madras High Court had jurisdiction over the matter for the following reasons:

A. Matrix Labs had filed a revocation petition against Roche’s patent 196774 at the IPAB in Chennai. Since the petition was filed in Chennai, the cause of action had arisen in Chennai vesting the Madras HC with jurisdiction

B. Matrix had allegedly tested the drug in clinical trials in a Chennai-based lab, and hence a part of the cause of action had arisen in Chennai.

The Division Bench rejected the first ground, and rightly so, since it was “a statutory compulsion” for every opponent to file revocation proceedings at the IPAB in Chennai. Mere filing of revocation proceedings at the IPAB, which is located in Chennai, cannot and did not vest the Madras HC with jurisdiction over the matter.

The second ground too was rejected since Roche’s allegation was based on the fact that past clinical trials of Matrix were conducted at a Chennai-based lab. However, no evidence of testing of Erlotinib in Chennai seems to have been adduced by Roche. Therefore, there was not enough evidence for the Court to conclude that a part of the cause of action had arisen within Chennai.

Assuming that tests had indeed been conducted within Chennai, this would still be squarely covered under Section 107A(a) of the Act, which deems reasonable use relating to the development and submission of information, as non-infringing (bolar exemption).

The drug Erlotinib Hydrochloride (aka TARCEVA) has already been the subject-matter of patent infringement suits filed before the High Court of Delhi. In fact, in Hoffman La Roche v. Cipla, the Delhi High Court took a prima facie view which impugned the validity of the Erlotinib patent.

I realize that according to the dicta of the Supreme Court (and principles governing equitable reliefs such as an interim injunction), prima facie views are just that- prima facie, and hence inconclusive. Be that as it may, in a regime like India where the trend is typically against grant of interim injunctions, I really am not sure why did the patentee in this case choose to try its luck in a different Court. May be it was just that- trying its luck.

One interesting side note is that the Madras HC appears open to grant of injunction in a case of threatened infringement. This is not unusual or uncommon or impermissible in other matters, but for an Indian Court to be open to such a remedy in a patent infringement suit is certainly noteworthy... 

A Strange Case of Errors

Why don’t patent offices issue examination reports well in time bearing in mind that the applicant may need time to think and respond?? Here’s a case which is not very uncommon and I am sure quite a few applicants might even relate to:

1. FER was issued in a patent application on November 15, 2007, which was returned by the original agents on record stating that the case had been transferred to another agent.

2. In March 2008, a change of address application was filed by the newly appointed agent.

3. The FER was re-issued only on October 20, 2008, i.e. just a month before the expiry of the 12-month period for putting the application in order for grant. Of course, the FER did clearly mention that the response had to be submitted on or before November 15, 2008.

4. The response to the FER was submitted by the newly appointed agent only in March 2009 (why? Did the agent expect the delay to be condoned? But then, there is no condonation possible for timelines mentioned in Rule 24B under Rule 138).

5. A hearing was held, upon request by the agents, on October 12, 2009, in which the application was finally deemed as abandoned.

A few questions that are on the top of my mind are as follows:

A. Why did it take 7 months for the Patent Office to re-issue the FER to the new agent after the change of address was submitted? At the end of the day, the applicant has suffered largely owing to the delay in re-issuance of FER.

B. How can a hearing be sought under Section 21? How did the Patent Office grant a hearing in a matter where deemed abandonment under Section 21 had already taken effect?

The short question is, does the patent office have the power to grant hearings in situations strictly covered by “automatic” provisions such as Section 21? It is obvious that there is no room for exercise of discretion under Section 21(1), unless the case falls under Section 21(3).

Simply put, the effect of deemed abandonment is set in motion the moment the 12-month period expires, with absolutely no room for interference either by the applicant or the patent office. Then, how and why was the hearing granted in this case? Although, this situation would not have arisen had the FER been issued well in time to the new agent. 

Sunday, December 25, 2011

Stale News: Roche Sues DRL for Infringement of US Patent on Valcyte

Hoffman la-Roche has filed a suit against Dr.Reddy’s Labs for infringing Roche’s US patent on Valcyte. The US patent was granted in 2000. Most of our readers might know that Roche lost the post-grant opposition in India with respect to an Indian patent on the same drug.

It would be interesting to see how US standards of infringement and invalidity are applied to Valcyte. We’ll keep our readers posted on the developments in the case. 

Stale News: Delhi Courts Issue Notices to Social Networking Sites

A few days ago, a Delhi Court issued an ex parte order directing 22 social networking sites to remove derogatory content which might hurt religious sentiments.  The order was issued in a petition lodged by Mufti Aijaz Arshad Qasmi. The websites were asked to respond to the petition by yesterday i.e. December 24, 2011.

In another private complaint, another Delhi Court has issued notice to Facebook, Orkut, Google and Youtube for publicly exhibiting obscene lascivious comment.

One wonders if it’s sheer coincidence that these complaints were filed in the immediate aftermath of Kapil Sibal’s call for censorship of the internet. After all, in this country, it isn’t that difficult to plant complainants...

Policing Netizens?!?!?!

I am told that during one of India’s toughest political times, when editorials were curtailed due to an Emergency, one prolific newspaper carried Nobel laureate Rabindranath Tagore’s wonderful words:

Where the mind is without fear and the head is held high
Where knowledge is free
Where the world has not been broken up into fragments
By narrow domestic walls
Where words come out from the depth of truth
Where tireless striving stretches its arms towards perfection
Where the clear stream of reason has not lost its way
Into the dreary desert sand of dead habit
Where the mind is led forward by thee
Into ever-widening thought and action
Into that heaven of freedom, my Father, let my country awake

Recently, our Minister for Communications and Information Technology, Kapil Sibal who is also one of India’s most renowned figures in the legal fraternity, made a statement regarding policing the internet and social media. While his statements were the much heated subject of discussion in the Indian media over the course of last week, they indeed do attract one’s attention, at least for a moment or two, to look at the pros and cons of doing so, pertinently in the context of social media.

Of course as far as policing one’s parallel life on the internet goes, in my mind several issues may arise. The most prominent of these issues is the constitutionality of such policing, vis-à-vis the Freedom to Speech and Expression, guaranteed under the Constitution. Undoubtedly, as we all tweet, Facebook or share via Google+, not just do we share our lives, but these platforms have given us an opportunity to become more vocal and on several occasions, severely critical as well.

However, with the expansion of media, whereby one can “voice” one’s opinion, is the need for policing also called for? My personal opinion, which I believe is the majority opinion, is an emphatic NO. While the Constitution guarantees the Freedom to speech and expression, the same is unrestricted across the media of communication. Additionally, since Art. 19(1)(a) is a guaranteed freedom, I believe that the only action viable, if at all, would be a civil defamatory suit for libel.

Having said this, my concern runs somewhat deeper, beyond what Mr. Sibal has to say. I worry most about copyrighted content and sharing the same, particularly of videos.

If one were to consider such content, the same is being dealt with by making access to the content itself unavailable to a particular geography -just as many websites, youtube videos, online telecasts are not available to a particular ISP addressee.

However, I am unsure if the walling off content would prevent someone from “reposting” a link on an online forum. The catch here is that while a video may be unavailable in a particular geography, I may be able to access the same the moment I shift location.

On one hand, since one may consider the absence of commercial benefit to the profile hosting such content, and may advocate this use to be fair, on the other hand, the mere lack of commercial benefit shouldn’t amount to misuse. If a pay-per-view system be in place, would this form of contributory infringement come to rest? Or, since songs, et al. do speak our minds the best, more often than not, would our Freedom of Expression?!?!?

There is a new song that has become a rage amongst the Indian public, called Kolaveri di, and has had over a couple billion hits. Thanks to social media and sharing, the song has acquired the popularity that it has. Now, that was someone’s mind without fear and head held high!!!

Tuesday, December 13, 2011

Musings over Moral Rights

The world of Copyright, in my opinion, today best reflects the fine move that went on from Industrial to Intellectual Property, albeit in the opposite order.

Copyright, has under its wings, a wide array of creative works (not that inventions cannot have their creative side), most of which today, have undoubtedly acquired a more commercial nature than ever. However, what seems to create the fine balance between its commercial and creative characterestics, is perhaps the presence of a scheme for moral rights.

The Hegelian theory of Personality Justification, that appears to fit the mould of copyright in the best way, talks about property being an extension of one’s personality. We see that in every piece of creative work around us, thus creating room for art critics, historians, curators and so on. Perhaps the theory of Moral rights, also grew in and from the European era of Renaissance, wherein self- expression, freedom of thought and concepts akin came to life.

This having been said, the law in the United States never ceases to amaze me.

On one hand, the United States Constitution, vide Article 1, Section 8, Clause 8, empowers authors with the gift of copyright. On the other hand, the only place for moral rights appears to be in the Visual Artists Rights Act (VARA). Moral rights as outlined therein allow an author of a visual work to avoid being associated with works that are not entirely his/her own, while also preventing the defacement of their works.

However, the importance of Moral rights in the US has found some life, through judicial deliberation.

A much debated scheme of thought came by, vide the Google Book Settlement decision, rendered by Justice Denny Chin of the Southern District of New York.

While it is impossible to quote from the decision, since the thoughts of the judge are weaved throughout the judgment, the approach to moral rights is exceptionally subtle, with reference in a couple of instances as “international” rights or concerns.

I have read this forty eight page decision, now, over a couple of times. And,to be honest, the simplicity with which Justice Chin appears to have brought about the nexus between Copyright as an Intellectual Property, the Commercialization that often drives authors, and associated concerns is a delightful read.

Non-working Isn’t a Ground of Revocation of a Patent: Why?

Section 64 of the Patents Act, which lists the grounds for revoking a patent, is exhaustive. No ground which is not mentioned in Section 64 can be used to impugn the validity of a patent. This much is obvious. But why does not Section 64 provide a ground for revocation of a patent for non-use/non-working of the patent?

The only remedies available under the Patents Act for non-working of a patent appear to be an application for compulsory license under Section 84 and an application for revocation under Section 85.

A reading of Section 85, in fact, tells us that an application for revocation under Section 85 may be made only after the expiration of 2 years from the date of the order granting the first compulsory license. It appears, under the framework of the Act, for a patent to be invalidated on grounds of non-working, it is mandatory to first apply for a compulsory license before seeking revocation under Section 85.

May be the Patents Act is not so anti-patentee after all…..

But why should an un-worked patent not be revoked directly? Why is the compulsory license route mandatory before seeking revocation of a patent for non-working? Why shouldn’t revocation be an option after three years from the date of grant? Shouldn’t an “interested person” have the option of choosing between revocation and compulsory license, instead of reaching the former after the latter? 

Monday, December 12, 2011

Isn’t Arbitration a Better Alternative for Patent Infringement Disputes?

In an earlier post, I had expressed concerns on the ability of Courts (at least in India) to do justice to patent infringement suits. 

Continuing in the same vein, I think Courts would do well to invoke powers vested in them under Section 89 of the Code of Civil Procedure to refer patent matters to arbitration cells of Courts.

Arbitration may prove to be a much more expeditious way of seeing a patent dispute through, instead of wading through the sea of formality which is characteristic of conventional Courtroom litigation. (There is nothing radical in this suggestion, this thought has been out there for quite some time now and literature on this issue abounds)

Besides, considering the fact that Indian Courts are yet to get the hang of the rudiments of patent litigation such as construction of claims before battle lines are drawn, arbitration may prove to be much more conducive a forum for the level of sophistication that patent litigation demands and deserves.  

Of course, there are several “ifs” and “buts” to this proposal. For instance, if parties to the dispute are intransigent and there do not appear to exist “elements of a settlement which may be acceptable to the parties” (a requirement of Section 89 of the CPC before matters are referred for arbitration or mediation), I am not sure if the Court may still refer the matter for arbitration.

That said, in practice, Courts do not seem to put too much stock in this requirement of “elements of a settlement” between the parties. Matters are routinely and mechanically referred for arbitration or mediation. Without commenting on the propriety of doing so, if this practice of unilaterally referring matters to mediation and arbitration cells is here to stay, Courts might as well do the same for patent matters.

Having said that, patent litigation allows Courts to clarify certain aspects of the law and provide the Patent Office, applicants and practitioners some much required judicial guidance on standards and interpretational bottlenecks. Referring matters to arbitration might affect the evolution of a patent jurisprudence which is the dire need of the hour.

On too many issues of critical importance, there’s a herd mentality, with very few enlightened souls questioning the adoption of certain practices. Litigation, in more ways than one, helps in evaluating the legality and wisdom of such practices. 

The only issue with litigation (which is THE issue) is that it lacks speed and one can never be sure if the peculiarity of patent law and the dialectics of the business of innovation are understood by Courts.

Hoping that at least some of us would explore arbitration as an option to resolve disputes, I intend to write more on arbitration in general, and its application to IP disputes. Suggestions, material and comments are welcome!

Thursday, December 8, 2011

Two Patents on the Same Invention- Is There a Way Out?

Most of our readers are aware of the patent dispute (C.S.(O.S.) 740 of 2006) between Hindustan Unilever and Eureka Forbes, where it has been reported that both entities have been granted patents by the Indian Patent Office on substantially the same invention.

This matter is listed for arguments on December 20, 2011 before the High Court of Delhi. The facts in brief are as follows:
1. HUL filed for a patent on a gravity-fed water purifier system in 2002 on which a patent 198316 was granted in 2006.

2. Eureka Forbes too filed an application for a patent, subsequent to the date of filing of HUL’s application. Eureka Forbes was however granted a patent prior to the grant of HUL's patent.

3. HUL alleged that Eureka Forbes’ product infringed its patent 198316, but the latter claimed that its product was covered by its own patented invention (which is probably different from HUL’s patented invention).

What recourse does HUL have? On what grounds can Eureka Forbes’ patent be revoked? Besides claiming that its patent is earlier in time thanks to Section 45 (which relates to the date of the patent) of the Patents Act, HUL may explore Section 64(1)(b) of the Act.

Section 64(1)(b) provides a ground under which a patent grant be challenged on the basis that it was granted on the application of a person who was not entitled to apply for a patent in the first place.

Which provision of the Act deals with entitlement to apply for a patent? Section 6. Under Section 6, only a “true and first inventor” or his assignee or the legal representative of either the inventor or the assignee may apply for a patent.

“True and first inventor” has been traditionally interpreted in India to mean “first to file” (I’d like to explore this assumption sometime). This means under Section 64(1)(b), a patent may be revoked on the ground that the person who applied for it was not the first to file for a patent on the invention. If this interpretation is tenable and reasonable, this ground is an easier way of resolving the dispute, subject to both inventions being construed as identical.

It appears Section 64(1)(b) does not have an identical counterpart in Sections 25(1) and (2) which deal with pre and post-grant oppositions. That said, Section 25(1)(c) and Section 25(2)(c) come very close to the above application of Section 64(1)(b).

On a different note, one wonders why there are marked differences in grounds available under Section 25 and Section 64.

Opinions and Corrections are Welcome!

Monday, December 5, 2011

Almost Famous

In the recent past, the Delhi High Court, seems to have been flocked by cases dealing with celebrity personalities. One such case that has caught my attention, and more so has begged me to put in some thought, is the judgment dealing with Arun Jaitley’s right to use his name as a domain name, viz., Mr. Arun Jaitley vs. Network Solutions Pvt. Ltd.

To be brief about the facts, Arun Jaitley, spokesman for one of India’s leading political parties, moved to get registered. Facing difficulty in doing so, he sent a letter addressing Network Solutions, LLC (the registrant as revealed by a search), to which a reply was received stating that the said domain name was already taken. 

An offer to purchase the said domain through Network solution’s Certified Offer Service was also made. However, on scouting around a bit, Mr. Jaitley discovered that the website was “Pending Deletion”, since it had not been renewed by the previous owner.

While I agree with the final outcome of the case, deciding that Arun Jaitley should be the rightful regstrant of the domain name, I am somewhat unconvinced by the manner in which the law of passing off was applied.

To cut a long story short, the judgment relies on decisions dealing in the applicability of trade mark law in the sphere of domain names, primarily keeping focus on Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. To describe these decisions in the broad sense, these decisions apply trademark law to afford protection to domain names that were being infringed vide the use of deceptive URLs.

In my view, the application of these decisions to the case is somewhat flawed. As I read the judicially deliberated law protecting domain names, the law on trademarks is applied to domain names owing to the commercial nature facilitated by both. Where a domain name does not refer to a trade mark per se, I think the tennets of the Uniform Domain Name Resolution Policy should be relied upon, as against an extensive reliance on trade mark law, as in this decision.

As averred by his counsel, Arun Jaitley is a name that has acquired fame and reputation, as one of India’s most renowned lawyers. However, now that he is a full time politician, I wonder if he could still project his name to have a trade mark sort of status. In my view, the only reason to adopt a passing off sort of argument would be its judicially adopted straight jacket treatment vis-a-vis cyberlaw.

Further, while our law does recognize a common law right in a trade mark, however, from a reading of the Act, a name that acquires a trade mark status, whether under common law, or by registration based on acquired distinctiveness, the same must be used in relation to goods and services. 

Additionally, acquired distinctiveness is only a means to acquire a trademark registration, but the Act nowhere purports that every name, personality or term that has acquired a secondary significance to it, should necessarily be protected as a Trade Mark.

This case in my view is a case of false and misleading description, which per the Indian Trade Marks Act, does not cover individual personalities. This is a stark contrast to the Lanham Act, that covers the protection of personalities as well.

Further, I think this case makes one for a tortious claim of misrepresentation.

Although the law of passing off has its roots in the law of torts, and a case such as this could only be best described by using the term “passing off”, however, I strongly feel that in this instance, delinking from the law of trade marks, and the adoption of a direct tort related approach was necessitated.

Thursday, November 24, 2011

Goodwill Hunting - Of Trademarks, Assignments, and the Business Concerned

One aspect that can make trademarks and related transactions interesting, is the treatment of goodwill associated with the mark.

Under the Trade Marks Act, 1999, a registered or unregistered mark may be transferred with or without the goodwill of the “business concerned”. A reading of the provision in the statute, can often lead one’s mind to conflicting opinions and interpretations of law.

The use of this phraseology, created a sudden doubt in my mind, thanks to the haste I exercised- Is “Business concerned” to be interpreted as the business concerned with the trademark, or does it refer to the business entity, that used the trademark?

In the course of my research, I stumbled upon a case that discussed, in a somewhat indirect, yet interesting manner, the assignability of a trademark and the goodwill associated thereby, vis-a-vis an action for infringement. The 2007 Delhi High Court decision in Doctor Morepen Ltd. vs. Yash Pharma Laboratories Ltd., dealt in the use, assignment, and consequent infringement of a mark, used inrespect of a lemon based pharmaceutical preparation.

The mark LEMONLATE (along with copyrights, technical knowhow etc.), was assigned by Yash Pharma to Morepen. Later, Yash Pharma adopted the mark LEMOTAB, in respect of a medicine for common cold and flu. 

In deciding whether a case of infringement had been made out, the court noted that Yash Pharma even at the time of the assignment, was cognizant of the fact that the word 'LEMO' was derived from lemon, and that 'LEMOLATE' was a coined word. The assignment had been made for a “hefty” consideration, accompanied by an undertaking, that they would not coin another mark similar to the coined 'LEMOLATE'.

The court stated that after giving this specific undertaking, and after receiving consideration, the defendant was precluded from using the term LEMO in respect of similar formulations. Observing that both the drugs being over the counter drugs, the court opined that the use of similar trade names, elevated the likelihood of confusion amongst consumers.

While the court did not directly attack goodwill or any aspect with respect to the intent to assign, the Court clearly noted as below:

“...the assignment agreement marks the entering of the plaintiff into the shoes of defendant to take full advantage of the trademark and maintenance of secrecy about the change in ownership reflects the intention that the market of the plaintiff may not be affected. By bringing a tablet almost in the similar name 'LEMOTAB', the defendant is not only infringing the trademark but also announcing indirectly that it has sold 'LEMOLATE' and now it has come up with another tablet which would be competing with 'LEMOLATE'.”

This case in my opinion, removes all doubt regarding assignment of a mark and goodwill. As I read it, not only does goodwill associated with the mark, need to be assigned, but the assignor also needs to give up any intent, plan or speculation to bring into the market, any mark likely to interfere with the goodwill appending the assigned mark.

In light of this decision, it seems apparent to my mind, that “with or without the goodwill of the ‘business concerned’” should be interpreted to mean the goodwill associated with the business as a business entity, and not the business appending or necessarily travelling with the mark.

If an interpretation otherwise be adopted, it seems to nullify the purpose of an assignment, which in fact is to ride upon the goodwill (and perhaps reputation) associated with the mark, without inviting any legal impediments.

I am a however informed that there are instances where goodwill need not necessarily be assigned. But in a situation such as this, wouldn’t such an assignment qualify as a naked or void one? (I understand that a similar position is adopted under the US law.)

Further, what strengthens my line of thought, is that it would be more lucrative for a person seeking assignment of a mark stripped away from its goodwill, to use an absolutely new mark and build on its goodwill independently, rather than paying for and using an assigned mark, while also incurring expenses on building its reputation afresh.

Having said this, I am unable to reconcile a line of logic behind the allowance of an assignment devoid of the mark’s goodwill. However, in view of businesses having multiple marks, and possibly multiple lines of business, I can imagine a situation whereby a mark is assigned (perhaps a mark different from the house mark), but not the goodwill of the business as a whole.

Debate and Disapproval on this string of thought is welcome.

Friday, November 18, 2011

"Stay of a Suit" under the Trade Marks Act

For an Intellectual Property lawyer, developing an understanding of the various IP legislations alone, is insufficient. In fact, a hold over procedural law is just as vital; pertinently, where the two cross paths.

One such instance where this aspect has been brought to the fore, is the decision rendered by the Delhi High Court in The Financial Times v. Bennett and Coleman.

The case, discussing “stay of a suit” under Section 124 of the Trademarks Act, 1999, looked at the “tenability” of a stay when a rectification proceeding is pending. The mark in contention was “FT”, a much popular abbreviation, by which Financial Times is referred.

Noting the facts of the case, the Court affirmed that Bennett and Coleman had a right to contest the inherent non-distinctiveness of a trade mark, (either by filing an application for its rectification under Section 57, citing relevant grounds, or by approaching the Court). This right to contest was termed as sacrosanct, and beyond the scope of interference of any Court.

However, in this case, the defendant chose to move to Court in an infringement suit, in order to assert the invalidity of the FT mark by claiming non-distinctiveness, and consequently to preserve their rights to use the same. Later in the year 2007, they moved an application for rectification.

Further, in the year 2010, the defendant chose to approach the Delhi High Court for stay of the suit under Section 124 of the Trade Marks Act. The Court noted that this move was made close to nine years, post the initiation of the initial infringement suit. Looking at the complicated history behind the pending proceedings, the Court also noted that the issue had been referred to mediation, where it remained pending for close to three years.

The Court taking note of the long pending and complicated course that the case had taken, looked at the “Prima facie tenability” of the suit, and stated:

The Court is also conscious that a blanket acceptance of the defendant’s plea of prima facie tenability of the argument that the letter marks are inherently incapable of distinctiveness would lead to certain unforeseen results especially in cases like the present.”

Further, commenting that staying such a suit, would have a “colouring” effect upon the decision of a Tribunal,the Court stated:

The Court is conscious that this reason cannot be invoked under all circumstances, because Section-124 does empower prima facie examination of tenability. Nevertheless, while exercising that jurisdiction, a fine distinction has to be kept in mind between the nature of “tenability” of such a plea, while considering a temporary injunction motion, and one for stay of suit.”

The beauty of the decision, in my view, is that while the case discusses an aspect, which at first glance seems to have its roots dug deep into the Civil Procedure Code, it has been discussed simply on the basis of facts, with reasoning derived from the impact of a vital provision of the Trade Marks Act, 1999.

In my view, this judgment is a must read for all Trade Mark practitioners!!!

Thursday, November 17, 2011

When is a “Well-Known” mark a well-known mark?

In an earlier post, I had written on the distinction between “goodwill” and “reputation” of a trademark. I had also written on how reputation alone is sufficient for a well-known mark to exercise its exclusionary prerogative against third parties in a foreign jurisdiction. 

However, there are a few nuances of well-known marks that I had reserved for this post to explore and explain.

It must be understood that intellectual property rights are, by default, territorial rights. Therefore, any rule which is an exception to this default mode of territoriality must satisfy certain stringent conditions in order to be enforceable. 

A well-known mark is an exception to the rule of territorial application of trademark rights, and therefore, the owner of a well-known mark too must meet certain essential conditions beyond reproach. What might those conditions be?

Before I proceed any further, I must clarify that when I speak of enforcement of a well-known mark in a foreign jurisdiction, I refer to a situation where the owner of the mark does not have a registered trademark in the foreign jurisdiction, nor has he used it in the course of business in that foreign jurisdiction. In other words, his only justification for the enforcement of the mark is its status as a well-known mark i.e. “reputation”.

For the owner of a well-known mark to have the ability to preclude third parties in foreign jurisdictions from using the mark in the same field of business, the mark should have become well-known prior to the date of adoption of the mark by a third party in the foreign jurisdiction.

Let’s take “Infosys” as an example, which was founded in 1981 in India. Let’s assume that in 1985, a Brazilian entity had adopted “Infosys” in connection with the same field of business.

In the absence of a registered trademark in Brazil, and in the absence of use of the mark by Indian Infosys in the course of business in Brazil, would it have been possible for the Indian entity to prevent the Brazilian entity in 1985 from using the mark? The answer to this question is as follows:

1. The only way the Indian entity could have done so, is if it could have proven that before the date of adoption of the mark by the Brazilian entity in 1985, the Indian entity’s mark enjoyed a well-known status. In short, it had a reputation to reckon with before 1985.

2. This requirement needs to be qualified further. It is not enough for the Indian entity to show that it enjoyed a reputation in several jurisdictions. It is imperative to show that the entity enjoyed a reputation in Brazil before 1985. This has to be established on the basis of advertisements, trade talk, anything that can objectively establish knowledge of the Indian entity in Brazil prior to the adoption of the mark by the Brazilian entity.

Seen from this perspective, the requirement of “local reputation”, although without actual use in the course of trade, has the effect of “territorializing” the jurisprudence of well-known marks. 

The corollary to this proposition is that, at a given point in time, it is perfectly legitimate for different entities in different jurisdictions to use the same trademark, without having the right to exclude others in foreign jurisdictions. This is similar to different entities holding patents in different jurisdictions on the same invention.

One judgment that is worth reading on this issue is Roca Sanitario S.A. v. Naresh Kumar Gupta

More on this later...

Saturday, November 12, 2011

Provisional and Complete Specifications- "Fair Disclosure" and Priority Dates

Last evening, a regular reader and well-wisher of the blog, Ms.Anita Kalia, asked me to write a post on internal consistency in Section 11 of the Patents Act. I thank her for giving me something to think and write about.

Before I proceed to discuss Section 11 specifically, I ought to spend some time on provisional and complete specifications. Section 10 of the Act spells out the contents of specifications, both provisional and complete.

Following are contents which are common to provisional and complete specifications under Section 10:
1. Title of the Invention
2. Description of the Invention
3. Drawings, mandatory if the Controller of patents directs

Claims need not and typically do not form part of the provisional specification, but does the Act say that claims cannot form part of the provisional? No.

Under Section 10(4), claims must form part of the complete spec., but they may form part of the provisional. Existence of claims in provisional spec. does not automatically make it a complete spec., if the applicant wishes to file and treat it as provisional.

The question is, do claims filed in a provisional spec. have priority dates? Section 11 of the Act, which deals with priority dates, makes it amply clear that there shall be a priority date for each claim in a complete specification.

Therefore, the concept of priority of claims is to be primarily associated with complete specification, and not provisional. It would be obvious to state that priority date, in a way, is legal fiction which antedates the claim to matter disclosed earlier in the provisional spec. 

Be that as it may, the term “priority date” is not to be used in connection with claims drawn in the provisional spec. The claims drawn in a provisional spec. are given priority dates, only when they again form part of the complete spec.- this is the effect of Section 11(1).

How do we simplify the gist of Section 11? The common sentiment that runs along the sub-sections of Section 11 is the extent of disclosure of claimed subject-matter in the provisional spec. This is evident from sub-section(2) which refers to a “claim (that) is fairly based on matter disclosed” in provisional spec.

Sub-section(3) of Section 11 refers to a situation where a single complete specification is filed pursuant to more than one provisional specifications. Here, there are two situations that the sub-section speaks of:

A. Sub-clause(a) of this sub-section speaks of a situation where the subject-matter of a claim in the complete specification is fairly disclosed in one of the provisional specifications. In this case, the priority date of the claim is the date of filing of the provisional specification in which the claim is fairly disclosed.

B. Sub-clause (b) of this sub-section refers to a situation where the subject-matter of a claim in the complete specification is partly disclosed in both the provisional specifications. This means, the subject-matter is not fairly disclosed in a single provisional specification. Since “fair disclosure” is the litmus test, the provision deems the subject-matter to be “fairly disclosed” only in the later filed provisional specification. This is why the priority date of such claim is the date of filing of the later filed provisional specification.

Now let’s jump to Sub-Section(5) which appears to be (only appears, but is not) at loggerheads with sub-section (3)(b). Sub-section(5) reads as follows:

Where, under the foregoing provisions of this section, any claim of a complete specification would, but for the provisions of this sub-section, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.

To me, there is no inconsistency or confusion between sub-section (3)(b) and (5). According to sub-section(5), if the complete specification has two priority dates (although strictly speaking it cannot), it means the subject-matter of the claims have been fairly disclosed in two provisional specifications. In such a situation, the priority date is the earliest priority date.

Simply put, sub-section 3(b) presumes that the subject-matter has not been fairly and intelligibly disclosed until the second provisional specification is filed, where the subject-matter attains completion.

On the other hand, sub-section (5) addresses a different situation i.e. the subject-matter is fairly disclosed in both provisional specifications, and therefore it must receive the benefit of priority of the earlier filed specification.

This is why I said that priority dates are integrally connected to the concept of “fair disclosure” of subject-matter.

Opinions and corrections are welcome!

Patent Injunctions: Isn’t it Time to Get Out of the Rut?

It has become customary for defendants in patent infringement suits to cite judgments without ever addressing the facts of the case or applying precedents to the facts of the case. (I have written on similar lines earlier)

Standard arguments are- “The patent is recent”, or “injunctions ought not to be granted in patent matters”, both of which, according to me, are preposterous and baseless inanities.

I think these arguments have become convenient exit routes for Courts to avoid deliberation on technology in patent matters and to reduce the scope of arguments to these simplistic issues, which ironically have no basis in the statute.

In particular on the issue of recentness, I had written in the IAM Magazine a few months ago. I had written that one so-called rule of caution that was observed for several years by Indian Courts in patent suits, is the ‘six-year rule’.

This rule was originally prescribed in Terrells on Patent (Ninth Edition). In this book, according to the author, unless the patentee could show undisturbed possession for 6 years, he is not entitled to an interim injunction. This rule was subsequently applied by the Madras High Court in Manicka Thevar v. Star Plough Works (1965).

Fortunately, it was the Madras High Court in Mariappan v. Safiullah (2008) that observed that the 6-year rule has no place under the current framework (if at all it ever had a place).

Ironically, although the 6-year rule was done away with, our Courts again invented the “recent patent” rule. In Hindustan Lever v. Godrej Soaps (1996), the Calcutta High Court took the view that an interim injunction should not be granted if the patent sought to be enforced is a “recent” one.

The Bombay High Court applied this “recent patent” rule in Novartis Ag v. Mehar Pharma (2004) citing the Calcutta High Court’s decision in Hindustan Lever.

Thankfully, the Madras High Court interpreted the Hindustan lever decision in Novartis Ag v. Adarsh Pharma (2004) and rightly observed that the Calcutta High Court had never stated that an interim injunction must never be granted where the patent is of recent origin.

That said, the “recent patent” rule continues to be invoked in patent matters which baffles me no end. Funnily, the continued use of a “recent patent” rule militates against the very objective behind doing away with the 6-year rule. What is the logic behind introducing something so vague called “recent patent” after shunning the 6-year rule?

Not just that, Section 11A(7) specifically says that from the date of publication, an applicant for a patent has “like rights and privileges” as that of a patentee. If the intention of the legislature was to forbid enforcement of a so-called “recent patent”, then how does Section 11A(7) grant an applicant “like rights and privileges”?

In other words, does not the “recent patent” rule go against the express intention of the legislature as reflected by Section 11A(7)? What is surprising is that we seem to adhere fastidiously to dated precedents without checking if they are consistent with the law as it exists today. Its more of a “cut/copy-paste” job...

To me the “recent patent” rule reeks of an anti-innovator mindset which is probably a hangover from our cozy relationship with the erstwhile Soviet Union.

It is my opinion that arbitrary notions such as “recentness” must be done away with and patent jurisprudence must be based on something more concrete and reasonable. Most rules of caution which are applied to enforcement of patents have the objective of preventing enforcement of unworked patents by trolls.

This means, interim relief ought not to be denied in cases where the patentee satisfies working requirements under the Act, regardless of how recent the patent may be.

Also, given the high rate of obsolescence of technology, use of the “recent patent” rule makes no commercial sense. Courts must recognize that intellectual property rights, particularly patent rights, are not academic rights. They function in the realm of business, and so business realities must be acknowledged.

If patent grant itself takes 2-3 years at a minimum, and then the patentee has to wait for another 2-3 years before he overcomes the “recentness” barrier, effectively he has no protection for 6 years in a term of 20 years, by which time the technology may become obsolete.

By insisting on such a rule, haven’t we brought back the 6-year rule through the back door?...