Inconsistency in the Designs Act: Real or Perceived?

I was just going through the definition of “design” in Section 2(d) of the Designs Act, 2000, which reads as follows:

d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957

The Designs Act, 2000 excludes a trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958, from the definition of “design”, but chooses not to exclude a trade mark as defined in section 2(1)(zb) of the Trade Marks Act, 1999 although the definition of trade mark is not identical in the 1958 and 1999 Trade Marks Acts. Is there a reason for the omission? Does it mean that a trademark under the current trade mark law qualifies as a protectable design under the current Designs Act? 

Rules 137 and 138 of Patent Rules: Supreme Court Issues Notice to IPO

Last Friday, the Supreme Court issued notice in a Special Leave Petition that was filed by an opponent in post-grant opposition. The facts of the case in brief are as follows:

1. M/s IPCA Labs was granted a patent 211104 by the Mumbai Patent Office in 2008 for “An Improved Industrial Process for Manufacture of Metoprolol Base and Salts thereof”.

2. M/s Polydrug Labs filed a post –grant opposition to the grant of the patent under Section 25(2) of Patents Act, 1970. The evidence supporting the opposition was filed along with the opposition itself.

3. Subsequent to the filing of the post-grant opposition, the patentee IPCA labs filed the counter-statement to the opposition along with its own evidence.

4. The Opponent sought extension of time from the Patent Office to file evidence in reply to the evidence filed by the patentee. (Rule 59 of the Patent Rules permits the Opponent to file reply evidence)

5. Extension of time was sought by the Opponent in Form 4, instead of under Rule 138 of the Patent Rules. Extension of time by filing Form 4 is applicable only in limited circumstances, and is not the appropriate form for seeking extension in an opposition proceeding. However, the cover letter filed by the Opponent along with the Form 4 made express mention of Rule 138.

6. Subsequently, a petition under Rule 137 was filed by the Opponent to condone the error created on account of filing of Form 4.

7. The Patent Office refused to accept the application for extension of time as well as the evidence in reply that was filed by the Opponent on grounds that there is no extension of time possible in filing of reply evidence. In other words, according to the Patent Office, the provision for extension of time under Rule 138 was not available for filing of reply evidence under  Rule 59 in an opposition proceeding. 

8. Further, the Patent Office took the view that it had no power under Rule 137 to condone the Opponent’s error in filing Form 4 instead of a petition under Rule 138.

9. Even in the review petition filed by the Opponent under Section 77, the Controller took the same view. The opponent filed a writ before the Bombay High Court against the order of the Controller, which was dismissed on grounds that the writ was premature.

10. The Opponent filed a Special leave Petition against the dismissal of the writ by the Bombay High Court in which the Supreme Court admitted the SLP and issued notice to the IPO.

A clear reading of Rule 138 makes it apparent that extension of time under the Rule is available in every situation except those which are specifically precluded from its applicability, namely Rules 24B, 55(4) and 80(1A). In all other situations, including an extension sought for filing reply evidence under Rule 59, the Controller has the power to extend time.

Further, by now, thanks to a decent number of decisions on Rules 137 and 138, it is clear that Rule 137 vests the Controller with broad powers to condone procedural irregularities, like the one in the instant case.

Coke v. Pepsi- A Hypothetical “Disparaging” Scenario

A random thought crossed my mind a few days ago during the course of a conversation with my friends. The thought was in the form of an advertisement for Pepsi, which goes something like this:

There are a bunch of teenagers having dope/cocaine in a rave party at a farmhouse in Pune. Indra Nooyi, the Chairman and CEO of Pepsi Co, walks into the farmhouse and snatches the cocaine from the hands of the teenagers and thunders:

“Say No to Coke, Say Yes to Pepsi! Say No to Death, Say Yes to Life!”

Would this hypothetical commercial attract an action for commercial disparagement against Pepsi by Coca Cola? Would the use of “Coke”, given the context in which it is used in the advertisement, provide Pepsi with an adequate defense against the allegation of commercial disparagement? 

Or would a court take the view that the use of “Coke” in the commercial would inevitably lead viewers to relate the word to Pepsi’s competitor Coca Cola, and hence hold the advert as an act of disparagement? 

Is it justified to postulate that merely because Coca Cola happens to be a competitor of Pepsi Co, the use of the word “coke” to refer to cocaine, isn’t available to Pepsi Co?

I would like to know the views of our readers on the possible arguments and counter-arguments.

Snippets: Draft GI Manual Published, Comments Invited

The Indian Patents, Designs and Trademarks Office has published the Draft Geographical Indications Manual. Comments and suggestions on the contents of the manual may be mailed to sukhdeep.ipo@nic.in by April 20, 2011.

Connecting Compulsory Licensing and “Recentness” of a Patent

Section 84 of the Patents Act deals with compulsory licensing mechanism. Sub-section (1) of the provision reads as follows:

(1) At any time after the expiration of three years from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—

(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or

(b) that the patented invention is not available to the public at a reasonably affordable price, or

(c) that the patented invention is not worked in the territory of India.

What exactly is the import of sub-section (1) in terms of timing of the application for grant of a compulsory license and the working of the invention by the patentee? Let’s consider a hypothetical situation here.

1. A person X applies for a patent on August 15, 2007 and begins commercial exploitation of the invention which is the subject-matter of the patent application from August 16, 2007.

2. The patent is granted on December 25, 2010.

3. A person Y makes an application under Section 84 for grant of a compulsory license in January 2014.

In considering Y’s application for grant of a compulsory license, does Section 84 require the Controller to have regard to the patentee’s efforts to work the invention only after the grant of the patent i.e. December 25, 2010? Or must the Controller also have regard to the patentee’s efforts to commercially work the invention prior to the grant but after the date of filing of the application for a patent i.e. from August 16, 2007?

In other words, are the patentee’s efforts to work the invention prior to the grant of the patent critical in considering a request for a compulsory license by a third party? Probably the question is academic, but I would like to find an answer all the same.

Sub-section (6) of Section 84 reads as follows:

(6) In considering the application filed under this section, the Controller shall take into account,—

(i) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention;

(ii) the ability of the applicant to work the invention to the public advantage;

(iii) the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted;

(iv) as to whether the applicant has made efforts to obtain a licence from the patentee on  reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit:

PROVIDED that this clause shall not be applicable in case of national emergency or other circumstances of extreme urgency or in case of public non-commercial use or on establishment of a ground of anti-competitive practices adopted by the patentee, but shall not be required to take into account matters subsequent to the making of the application.

The provision requires the Controller to take into account the time elapsed since the sealing of the patent and the efforts taken by the patentee/licensee to make full use of the invention. Although the provision states that the Controller “shall” consider the time which has elapsed since the sealing of the patent, it also requires him to factor into his analysis the “efforts taken by the patentee/licensee to make full use of the invention”.

These “efforts” would and should include efforts take by the patentee/licensee prior to the grant of the patent as well, since commercial working of the patented invention is not contingent on the grant of the patent (and most entities typically begin commercial exploitation of the invention as soon as they file the patent application).

Further, Section 84 consistently uses the words “patented invention”, as opposed to merely “patent”. In particular, sub-section (6) uses the word “invention”. If the legislature had intended the Controller to only consider the patentee’s efforts at commercialisation only after the grant of the patent, Section 84 would have referred to “working of the patent” instead of “working of the invention”.

Even otherwise, after grant of the patent, the invention is deemed as a patented invention right from the date of filing, and not just from the date of grant.  

Therefore, it follows that the efforts of the patentee prior to the grant of the patent, too is relevant in forming an opinion on the working of the invention.

How do I tie or connect this to the issue of “recentness” of a patent? In a few decisions, Indian Courts have linked the grant of an interim injunction to the “recentness of the patent”. The underlying rationale or objective behind this criterion of “recentness” is seldom understood in its entirety.

“Recentness”, as discussed by Indian Courts, does not refer to the time elapsed since the grant of the patent; it in fact refers to the time elapsed since the commercial exploitation/working of the patented invention. In other words, a prayer for an interim would be all the more justified if the patented invention has proven itself in the market during its life, which begins from the date of filing.

What this means is that in granting an interim injunction, the Court has regard to the efforts of the patentee even prior to the grant of the patent. Restricting the scope of this enquiry to merely the time elapsed since the grant of the patent is not only unfair, it also defies legislative logic since the term of the patent starts, not from the date of grant, but from the date of filing.

I’d like to know the opinions of our better-informed readers on this point.