Saturday, February 19, 2011

Lessons for Patent Applicants

Last March, the Delhi branch of the Indian Patent Office gave a decision in Weyerhaeuser’s Application numbered 70/DEL/2005. 

The decision, in my opinion, is a must read to understand how the applicant has to strategize responses to examination reports.

In this case, the applicant had initially filed an application for a product patent.

The order says the application, although filed before January 1, 2005, was a non-mailbox application. It is relevant to note here that prior to the 2005 amendment to the Patents Act, product patents for pharmaceutical substances and substances manufactured by chemical processes were barred.

If Weyerhaeuser's application was for a kind of wood-pulp, it would fall within the scope of the products for which product patents were barred under the un-amended Act. I am not sure how was this treated as a non-mailbox application, unless the applicant had sought only a process patent. But the principal claim reads thus:

(1) A lyocell product, comprising:
at least 7% hemicellulose by weight; and at most 93% cellulose, wherein the pulp used to make the product has a viscosity less than 32 cP, a copper number less than 2, a weighted average fiber length less than 2.7 mm, and a coarseness less than 23 mg/100 m, wherein the pulp is derived from a wood material with a specific gravity of less than 0.41.

Clearly, the application was for a product patent. Anyways, the applicant's grievance was that despite the 2005 amendment coming in force during the examination of its application, the Patent Office did not examine its application for grant of a product patent.

This, according to the applicant, was owing to an internal decision taken by the Patent Office during that period, which disallowed product patents even after the amendment to the Act. Did the decision have  statutory sanction?...

Let me clarify the facts further. The "non-mailbox application" claimed a product patent, but was disallowed:
1.  firstly, because the patent office took an internal decision not to grant product patents even after amendment to the Act allowing product patents for all technologies

2. secondly, because the application was deemed to have been abandoned under Section 21 of the Act, namely the application was not put in order for grant within the time prescribed in Section 21 and

3. finally, because the invention was deemed to have been anticipated by a bunch of prior documents.

Meanwhile, during the pendency of the "non-mailbox application", the applicant, in order to secure his interests, thought it fit to file a divisional application during the pendency of his parent non-mailbox application.

This too was objected to by the Patent Office citing Section 16(2) and (3) of the Act. Section 16, in substance, proscribes claiming substantially the same invention in the parent and the divisional, to avoid double-patenting.

On Section 16, the Patent Office may have got the law right, but I think the non-application of the Act on grant of product patents seems to have cost the applicant dearly. That said, the applicant too ought to have appealed against the order of rejection of parent application, instead of filing a divisional.  (Probably he did, I don’t know for sure...)

I think this case is a lesson for practitioners to take into account unpredictability when they prepare their responses to office actions. It goes without saying that this also requires practitioners to bear in mind that not  everyone shares the same views, even those which most of us take for granted, when it comes to the interpretation of the Act. 

No comments:

Post a Comment