Last week, I blogged on the decision of the Northern District Court of California awarding USD 1.05 Billion in damages to Apple against Samsung. Today, the Times of India has reported that the Tokyo District Court has dismissed Apple's claims of patent infringement by Samsung. I will share more details of the decision as and when I have them.
I write here primarily on Civil commercial litigation. Follow @jsaideepak on Twitter for updates. Subscribe to thedemandingmistress@googlegroups.com
Friday, August 31, 2012
Tuesday, August 28, 2012
IPAB: Recommendation of the Opposition Board Must be Shared with Patentee
In a decision delivered on August
3, 2012 Diamcad N.V. and Anr. v. Sarin
Technologies and Anr., the IPAB held that the recommendations of the
Opposition Board in a post-grant opposition must be shared with the Patentee in
order for the Patentee to meaningfully argue against the adverse findings/recommendations
of the Board which the Controller may rely upon to revoke the patent.
The relevant observations of the
IPAB are as follows:
“15. The Opposition Board may make
recommendations that the patent suffers from serious defects like lack of
novelty, lack of inventive steps etc. so the patentee is entitled to know
why the Opposition Board came to the conclusion, only then at the time of
hearing they will be able to meet the recommendations of the Opposition Board,
giving reasons why those recommendations were not to be accepted. On the other
hand if the Opposition Board recommends that the patent shall be granted since
the invention has novelty, inventive steps etc., unless the opponent has an
opportunity to see the recommendations he will not be able to persuade the
Controller why the recommendations of the Opposition Board must not be accepted.
In either case the opportunity which is mentioned in Section 25(4) of the Act
becomes an empty shell of an opportunity if the Opposition Board’s
recommendations remain secret.
Then again there is no purpose in
giving the Controller the discretion to require a member of the Opposition
Board to be present at the hearing, unless there is a possibility that the
member may be asked to explain why they made these recommendations. That
situation will never arise if the patentee and the opponent are totally in the
dark regarding the recommendations of the Opposition Board when they attend the
hearing. Therefore the judgment relied on by the learned Counsel for the
appellant in the Punjab
National Bank (cited
supra) case is clearly applicable to the present case. We
think that the grievance of the appellant is well founded. But we are not
remanding the matter as the appellant had applied for the certified copy of the
recommendations and has made its submissions after taking into consideration
those recommendations. So we feel that remanding the matter would only
unnecessarily delay the proceedings. But it is made clear that whenever
the Opposition Board makes recommendations both the patentee and the opponent
are entitled to know the contents of the recommendations before they attend the
hearing.
16.
The matter may be looked at from another perspective, too. If the
recommendations of the Opposition Board are adverse to the patentee and the
contents are made known to him before the hearing it is quite possible that he
may seek amendment of the claim and/or the specifications so that the defects
pointed out by the Opposition Board are rectified. The spirit of the enactment
is also to ensure that where there is a real invention, patent shall be
granted. This can be seen from Section 58 of the Act which provides that in any
proceedings for revocation if it is decided that the patent is invalid the
Appellate Board or the High Court may allow amendment under the Section instead
of revoking the patent. The same is applicable to the Controller also.
Therefore viewed from any angle we are of the opinion that the recommendations
of the Opposition Board must be made known to the patentee and the opponent
before the date of hearing. This objection of the appellant is sustained.”
Sunday, August 26, 2012
Bidding Adieu...
Due to reasons solely professional, this will have to be my last post on this blog. I have immensely enjoyed my time here, sharing my thoughts and ideas with the readers. My good wishes will always remain with the blog and its writers. I have a lot to thank my co-blogger Sai for - especially all the support, faith and freedom of thought that he has let me enjoy!!! Cheers and Keep Smiling!!!
Saturday, August 25, 2012
Apple Awarded USD 1.05 Billion in Patent Suit against Samsung
Samsung Electronics has been
ordered to shell out USD
1.05 Billion in damages to Apple by a US Court in a patent infringement
suit filed by Apple. This figure could apparently be trebled because the jury
has found Samsung guilty of willful infringement.
The US Court’s decision came a
day after a South
Korean Court’s decision which held that both companies had violated each
other’s patents. The South Korean Court has further ordered Apple to remove its
iPad, iPhone 3GS, iPhone 4, iPad 1 and iPad 2 from the Korean market since they infringe Samsung’s patents relating to wireless technology. The Korean Court
also imposed a ban on Samsung’s Galaxy S2 for infringing Apple’s patents on
bounce-back screen features.
The Korean Court however did not
hold Samsung’s phones as being deceptively similar to that of Apple’s since a
consumer buying either of the products would take note of the logos of each company and other factors such as
operating systems, applications and prices before he purchases a phone. In short,
there was no scope for confusion.
Friday, August 24, 2012
Novartis Update: SC Adjourns the matter to September 11, 2012
Pharma times reports that the Supreme Court has re-scheduled arguments in the Novartis matter for September 11, the reasons for which are not available.
Thursday, August 23, 2012
Update on PIL on Section 107A(b)
Yesterday, arguments were heard by the Acting Chief Justice of the Delhi High Court for close to an hour in the PIL I filed challenging the circular issued by the Central Board of Excise and Customs (CBEC) with respect to Section 107A(b) of the Patents Act, 1970. Judgment has been reserved in the PIL.
Tuesday, August 21, 2012
Snippet: Supreme Court to hear Novartis Case Tomorrow
With all the hype
surrounding the Novartis’s Glivec case which is slated for hearing tomorrow
before the Supreme Court, it is virtually impossible to not give the case the
attention due to it. Most of us are aware of the facts of the case and the
primary arguments of the parties concerned. However, it remains to be seen if
merits of the case and genuine legal arguments rightly engage the attention of
the Hon’ble Apex Court, or will popular pressure mould the course of the case.
We humbly request our readers to share
with us any updates they may receive on the case.
Sunday, August 5, 2012
DST -Lockheed Martin India Innovation Growth Program
I stumbled on to what seems like
an amazing opportunity for budding Indian innovators who wish to showcase their
innovation and implement it in real time- the DST-Lockheed Martin Indian innovation
Growth Program, which as the name suggests has the Department of Science of
Technology, Govt. of India as one of its key partners, besides FICCI and
University of Texas IC2.
According to the official
website, the objective of the Program is to accelerate the launch of
early-stage Indian technologies into the global market place. The list of areas
of innovation which are covered under the Program is available here.
The top applicants to the Program
who will be selected through a competitive process will receive the following benefits:
- Attendance at an Entrepreneurial Workshop focused on technology commercialization.
- A detailed Quick Look© technology commercialization strategy and recommendations report prepared by the IC2 Institute. Participation in an Indian Technology Expo.
- Automatic enrolment in the DST - Lockheed Martin Innovator Competition, judged by an international panel of technology and business experts. Awards will be granted for the top prospects for commercialization in the coming year.
Also, according to the website- “The
Gold Medal winners from the DST - Lockheed Martin Innovator Competition will be
invited to work with commercialization experts from FICCI and IC2 Institute
to pursue appropriate business engagements in the U.S., India and other global
markets.”
Saturday, August 4, 2012
Snippet: Patent Applications related to Traditional Knowledge
The Indian Patent Office has made
available a list of patent applications which relate to Traditional Knowledge.
The list is available here.
Readers may note that under Sections 25(1)(k), 25(2)(k) and 64(1)(q), a patent
application/patent may be challenged on grounds of claiming indigenous
knowledge.
Friday, August 3, 2012
Excerpts from the PIL against Notice on PCT NP Applications- II
22. Arguments on
unconstitutionality: It is humbly
stated that even Indian applicants may and regularly choose to employ the PCT
Route since the PCT route gives them a preliminary opinion on the patentability
of their invention. The Impugned Notice has the consequence of applying
different norms for Indian applicants under the PCT Route and regular Indian
applicants, with there being no intelligible reason being proffered by the
Respondent to support this differential treatment. In other words, the mere
fact that an applicant chooses to file under the PCT Route is not sufficient
enough a reason to apply different standards in the absence of a statutory
provision which envisages such treatment. Therefore, the Impugned Notice
violates Article 14 of the Constitution since there is unreasonable
differentiation among Indian applicants.
23. Arguments on
Public Interest: It is humbly
submitted that one of the reasons that the Respondent has issued the Impugned
Notice with respect to national phase PCT applications is that, in quite a few
instances in the Indian Patent Office relating to National Phase PCT
applications, the Indian Patent Office does not conduct a search and
examination of its own; instead, it relies upon the results of the
International Search Report (ISR) and International Preliminary Report on
Patentability (IPRP) issued in the International Phase of the PCT Route. This
is contrary to the mandatory duties of search and examination stipulated under
the Act under Section 12 of the Act, which apply to all patent applications
filed before the Patent Office, regardless of the route through which they are
filed. Section 12 of the Act is reproduced hereinbelow:
"12. Examination of application: (1) When a request for examination has been
made in respect of an application or a patent in the prescribed manner under
sub-section (1) or sub-section (3) of Section 11B, the application and
specification and other documents related thereto shall be referred at the
earliest by the Controller to an examiner for making a report to him in respect
of the following matters, namely:
(a) whether the application and
the specification and other documents relating thereto are in accordance with
the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful
ground of objection to the grant of the patent under this Act in pursuance of
the application;
(c) the result of investigations
made under Section 13; and
(d) any other matter which may be
prescribed.
(2) The examiner to whom the
application and the specification and other documents relating thereto are
referred under sub-section (1) shall ordinarily make the report to the
Controller within such period as may be prescribed."
24. Nowhere does Section 12 carve out exceptions
for National Phase PCT applications with respect to search and examination. The
very purpose of these provisions is that the Indian Patent Office must apply
Indian law and standards of patentability to applications filed before it,
regardless of the observations in the ISR and the IPRP. Since the PCT itself
states that the ISR and IPRP are non-binding opinions, it makes it incumbent on
the Indian Patent Office to thoroughly perform its duties under Section 12
since this provision represents the first line of defense to protect public
interest from grant of unwarranted and frivolous patents. Through the Impugned
Notice, the Indian Patent Office seeks to ensure that the contents of the
Indian National Phase Application are same as that of the International
Application so that the results of the ISR and the IPRP can be accepted in toto
without any search or examination being undertaken under Section 12 of the Act.
In a way, the Impugned Notice facilitates non-performance of mandatory duties
of search and examination which puts public interest in grave peril because
patent rights are not mere private rights, but have a concrete public interest
angle to them.
25. As
submitted earlier, under the framework of the Act and as rightly laid down by a
Division Bench of this Hon’ble High Court in Franz Xaver Huemer v. New Yash
Engineers (AIR 1997 Del 79), a granted patent may be challenged only under the
grounds enumerated in Section 64 of the Act, none of which pertain to
non-performance of mandatory duties by the Indian Patent Office. In short,
under the law, a patent cannot be revoked nor its validity be challenged on
grounds of improper or non-examination of the patent by the Indian Patent
Office. In light of this, it becomes all the more imperative to ensure that the
Indian Patent Office performs its mandatory duties since opaqueness in grant of
a patent has a tangible adverse effect on public interest. Consequently, the
Impugned Notice must be quashed since it renders secondary the public interest
aspect of the quid pro quo equation which patent rights represent. The instant
PIL is an attempt to protect such public interest since there are no recourses
available under the Act post the grant of the patent to challenge it on
procedural or administrative grounds.
26. Annexed herewith as Annexure B is Appendix C from the annual report of the Indian
Patent Office for the year 2009-10. The said Appendix captures the number of
patent applications filed in the last 10 years before the Indian Patent Office.
Out of the 34, 287 patent applications filed before the Indian Patent Office in
2009-10, close to 23,431 applications are National Phase PCT applications. In
short, they constitute close to 68.37% of the total number of patent
applications filed before the Indian Patent Office in 2009-10. The Appendix
reveals that this proportion has remained more or less the same over the last
10 years. If the Patent Office chooses to rely on the findings in the ISR and
the IPRP in such a huge chunk of patent applications, without undertaking
search and examination of its own, the adverse consequences on Indian public
interest can only be imagined. Consequently, it is imperative that the Impugned
Notice be quashed and guidelines be issued by this Hon’ble Court in accordance
with Section 12 of the Patents Act, 1970 and Patent Rules, 2003 on search and
examination of patents by the Indian Patent Office. It is submitted that such
guidelines are necessary for two reasons. First, the public at large must not
suffer due to grant of patents which claim unpatentable subject-matter and
which have been let through due to non-adherence to the framework of the Act. Second,
genuine patentees must not suffer due to improper examination of their
applications despite having fulfilled all their statutory obligations.
Therefore, it is humbly prayed that besides quashing the Impugned Notice, this
Hon’ble Court also issues guidelines for search and examination in accordance
with the Act.
PRAYER
28.
In light of
the above, it is humbly prayed that this Hon’ble Court be pleased to:
(a)
Declare that
PCT applicants have the right to amend the contents of their specification before
they file a National Phase PCT application under the Patents Act, 1970; and consequently
(b)
Quash the Impugned Notice No. CG/Public Notice/PO/2012/15 dated July 2,
2012 issued by Controller General of Patents, Designs and Trademarks as being
unconstitutional to the extent it goes against Prayer (a);
(c)
Issue
guidelines on search and examination of patent applications in accordance with
Section 12 of the Patents Act, 1970 and the corresponding Rules under Patent
Rules, 2003;
(d)
In the
interim, stay the Impugned Notice to the extent it goes against Prayer (a) until
the disposal of the instant Petition;
Such other orders as the court may deem fit in the interest of
justice.
It is prayed accordingly.
J.Sai Deepak
Petitioner
Excerpts from the PIL against Public Notice on PCT NP Applications- I
15.
With specific regard to amendment of national
phase patent applications, which is the subject-matter of the instant Petition,
the relevant provision of the PCT which is to be referred to is Article 28. The
said provision of the PCT reads as follows:
Article 28: Amendment of the Claims, the
Description, and the Drawings, before Designated Offices
(1) The applicant shall be given the
opportunity to amend the claims, the description, and the drawings, before each
designated Office within the prescribed time limit. No designated Office shall
grant a patent, or refuse the grant of a patent, before such time limit has
expired except with the express consent of the applicant.
(2) The amendments shall not go beyond the
disclosure in the international application as filed unless the national law of
the designated State permits them to go beyond the said disclosure.
(3) The amendments shall be in accordance
with the national law of the designated State in all respects not provided for
in this Treaty and the Regulations.
(4) Where the designated Office requires a
translation of the international application, the amendments shall be in the
language of the translation.
16.
Sub-articles 1, 2 and 3 of Article 28 are of
immediate relevance to the Petition. As regards the extent of amendment
permitted in the National Phase patent applications, the caveat spelt out in
sub-article 2 applies. According to sub-article 2, no amendment of the national
phase application shall go beyond the scope of disclosure in the International
application as originally filed, unless otherwise provided for under national
laws. The corresponding provisions of the Indian Patents Act which must be
referred to in order to understand the extent of amendment permitted under
Indian law are Sections 10(4A) and 138(4A). Both provisions abundantly clarify
that for the purposes of the Act, the international application filed before
the WIPO in the International Phase shall be treated as a “complete
specification”. This means that the scope of amendments carried out in the National
Phase patent application cannot go beyond the subject-matter disclosed in the
International Application. Simply put, according to the Act, an applicant may
not claim more than what he did in the International Phase.
17.
On the
issue of timing of the amendment, sub-article 1 clarifies that national patent
offices must afford the applicant an opportunity to amend the patent
specification to bring it in conformity with national laws. Reading
sub-articles 1 and 3 together, it becomes clear that the “prescribed time
limit” in the provision refers to the time limit for amendment of specification
prescribed by national patent laws for applications under the PCT Route. It is
critically submitted that there exists no such prescribed time limit under any
specific provision, Section or Rule, of the Indian Patents Act for amendment of
National Phase PCT applications. Even Rule 20 of Patents Rules, 2003, which
deals with PCT applications, makes no mention of any specific time period for
amendment of applications. More importantly, there is no provision which
requires or stipulates that amendment of a patent specification in the PCT
route may be carried out only after the filing of the National Phase PCT
Application. In other words, the Respondent does not have the power to issue
any directive or Notice which does not have any statutory basis. It is humbly
submitted that surprisingly nowhere in the Impugned Notice is there a reference
to the provisions of the Act or the PCT upon which the Notice is based. This
further corroborates the Petitioner’s stance that the Impugned Notice has no
basis in the Act. A directive or a Notice may be issued only if it is based on
or supported by a provision of the Act. Therefore, in the absence of any
express provision spelling out the time limit for amendment of National Phase
PCT applications, the Impugned Notice of the Respondent lacks statutory basis,
and is hence arbitrary.
18.
Further, it is submitted that there is
nothing in the Act which forbids or bars filing of already amended National
Phase patent applications. As stated with respect to the Convention route, the
point which is of critical relevance to the PIL is that after the filing of the
International Application under the PCT Route and until the filing of a
National Phase patent application in India under the Act, it is the applicant’s
sole prerogative to fashion the contents of his Indian application in
accordance with his objectives, bearing in mind the conditions for retaining
the priority date of the basic application and substantive patentability
requirements of the Indian Patents Act. Critically, there can be no
interference or intrusion with or into this prerogative of the applicant. With
specific reference to the Indian Act, until a corresponding National Phase
Patent application is filed as required under Section 7(1A) of the Act read
with Rule 20 of the Rules, the Indian Patent Office does not have the power to
influence the contents of a prospective Indian application. Only after the
application is filed, the Indian Patent Office assumes the right to direct the
applicant to amend the application to satisfy the requirements of the Act.
19. Further,
Section 7(1A) read with Rule 20 refers to a “corresponding application”, but
does not even remotely allude to or suggest or state an “identical”
application. It must also be understood that Section 3 of the Act which
enumerates “What Are Not Inventions” plays a pivotal role in the construction
of a patent document since every patent applicant has to steer clear of the
proscriptions of this Section. If the Impugned Notice of the Respondent were to
be correctly understood, the true import of the Notice is that, according to
the Respondent, unlike other applicants, an applicant under the PCT Route does
not have the prior right to amend the contents of his International Application
in order for it overcome the cardinal subject-matter eligibility barriers spelt
out in Section 3. This proposition is not only lacking in statutory support,
but also is fundamentally erroneous. This is because every patent applicant,
prior to the filing of an application for a patent under the Act, has the
sacrosanct right to draft his patent application in a way he chooses to,
bearing in mind the requirements and preclusions of the Act. This right is
available to every applicant, regardless of the route he chooses to employ for
filing the Indian patent application. It is critically submitted that no
Convention or Treaty permits or envisages unequal treatment of patent
applicants merely because they choose to employ a certain mechanism to file
their applications. The Impugned Notice has the unjustified effect of
curtailing this sacrosanct prerogative of applicants under the PCT route,
thereby employing different standards to these applicants.
20.
It is
further submitted that as part of the National Phase Patent Application, the
applicant, akin to other patent applicants, has to submit Form 1 under the Act
which, inter alia, requires the
applicant to declare that “there is no
lawful ground of objection to the grant of the patent” to him. The Impugned
Notice renders this declaration useless by requiring the PCT applicant to file
the un-amended application knowing fully well that some of his patent claims
are clearly hit by lawful objections under Section 3 of the Act. This has a
graver consequence for the applicant and for the public at large. Section
64(1)(j) of the Act provides for a ground of revocation of a patent if the
patent was obtained on a false suggestion or representation. If a PCT applicant
were to comply with the directions of the Impugned Notice, he would be forced
to make a false representation to the Indian Patent Office. This proves that
the Impugned Notice is not only baseless, but is also unlawful. On the other
hand, if the Patent Office were to let through the unpatentable content without
carefully examining it and grants a patent, it could potentially hurt public
interest because it would end up handing the patentee a monopoly which he ought
not to have been granted in the first place. Therefore, besides being unlawful
the Impugned Notice could hurt members of the public.
21.
It is
also submitted that if the Impugned Notice were allowed to remain in force, the
consequence would be that an applicant would end up filing a specification
which he knows contains unpatentable content under Indian law, only to be
subsequently objected to by the Indian Patent Office. This objection would form
part of the First Examination Report (FER) issued by the Patent Office under
Rule 24B of the Patent Rules, 2003. This would further contribute to
protracting the process of examination and grant of the patent, which in India
is already way beyond the stipulated time frame under the Act. This would also
add to the applicant’s costs. The only other alternative would be for an
applicant to file an application for amendment immediately after the filing of
the National Phase application under Section 7(1A). This is precisely the
directive issued by the Respondent. Besides this alternative having no
statutory support and contravening the statute, the Respondent’s insistence on
amending the contents of the National Phase applications only after
the filing of the applications has the effect, intended or otherwise,
of unjustifiedly adding to the costs of the applicants thereby contributing to
increased revenues of the Indian Patent Office, besides prolonging the process
of grant. It is humbly submitted that the Indian Patent Office is one of the
most cash-rich wings of the Government. The Impugned Notice would only end up
adding to the coffers of an already self-sufficient entity, without adding to
the efficiency of the patent filing or examination process in any manner.
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