In a decision passed on June 1, 2012, the IPAB has revoked the dual sim patent of S.Ramkumar numbered 214388. The revocation of the patent was sought for by Spice Mobile and Samsung Electronics, both of who had filed revocation petitions before the IPAB under Section 64 of the Patents Act.
The patent was revoked on grounds of anticipation (lack of novelty) and lack of inventive step. The other grounds which were raised against the patent by Spice Mobile and Samsung were insufficiency of disclosure, mere combination of known elements and violation of Section 8 of the Patents Act.
Apart from substantive issues, the IPAB had to deal with Ramkumar’s contention that a counter-claim for invalidity of the patent was pending before the Madras High Court. On this issue, the IPAB cited the decision of the Delhi High Court in the Enercon matter i.e. a counter-claim under Section 64 is a different remedy from a revocation petition and therefore both can simultaneously subsist. I am not in agreement with this view, the reasons for which I have set out in an earlier post.
One of the primary contentions of Spice and Samsung was that the amendment which was undertaken to the specification was outside the scope of the original matter described, and hence impermissible. Following are the IPAB’s observations on the issue:
“31. If we see the purpose of amendments under section 57 (6) and the limitation imposed on the amendments under section 59 we find that it is necessary, in our view to take into consideration the following:
1.Does Section 57(6) permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently make good that defect by providing additional further descriptive material?
2. Are all the routes for amending defects, subject to Section 59?
3. Does even refining of description in the specification by way of explanation be held to be an amendment to cure the deficiencies that are not permissible under section 59?
32. In considering the whole question of discretion in respect of amendments under section 57 (6) in the present case it is also necessary, in our view to take into consideration the nature and extent of amendment, when they are primarily for explanation and it is in public interest to allow them, in absence of very compelling reasons to the contrary. However these amendments in any case cannot be stretched beyond the limitations imposed by section 59. The purpose of Section 57(6) is not to permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently make good that defect by providing additional further descriptive material.
33. When we apply the above tests relating to the amendment to the present case we find all the matter which was added during the prosecution of application was not merely explanatory as additional elements such as plurality of headphones/earphones jacks; a plurality of Bluetooth devices; concept of simultaneous communication with respective SIM Cards and providing a conference facility of voice signals to simultaneously enable more than one person participate in a communication were added. These elements were not disclosed in the specification even implicitly. Additional drawings relating to additional matter were also filed to support the claims for these elements. We find that effect of the added matter in the specification and claims is such that it described the matter not in substance disclosed or shown in the specification before the amendment. Further amended claims 1-20 do not fall wholly within the scope of the claims 1-4 as originally filed. We are convinced that amendments carried out during the prosecution of the application in the specification, drawings and claims extend the scope of disclosed matter and claims, which is particularly prohibited by Section 59. The applicants therefore succeed in proving that new matter has been added by the Respondent 1 during the prosecution of the application which was allowed by Respondent 2. The Respondent 2 ought to have sought for explanation from the Respondent 1. Respondent 2 ought to have applied his discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in the present case. Therefore, we are constrained to set aside the amendments allowed during prosecution of the application.”
I shall deal with this opinion of the IPAB in detail in a later post. The troubling aspect of the IPAB’s decision is the lack of rigorous analysis on the issue of novelty. From paragraphs 35 to 51, the IPAB goes on to list out the arguments of Spice, Samsung and Ramkumar. It is from Paras 52-55 that the IPAB gives its own views on the issue of novelty.
In my humble opinion, the analysis lacks rigour and depth which is expected of a special Tribunal such as the IPAB. Even if the conclusion is the right one, I have said this often, the process of arriving at the conclusion must be of use in understanding certain general principles or precepts which may be applied in future cases. I am not sure if the IPAB’s decision in this case satisfies this requirement.
Again on the issue of lack of novelty, I do not find adequate articulation of the logic applied by the IPAB to form the opinion that the impugned patent lacks inventive step.
Since lack of novelty and inventive step are the primary grounds on which the IPAB has based its decision, as a student of the subject, I do not have much to glean from it. I am open to being corrected on this point.