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!

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