Indian Patent Office Rejects Google’s Patent Application for Targeted Advertising

Why do applicants apply for patents on ineligible subject-matter in India when the statutory proscriptions are so much more clearly worded than, let’s say, in the US? 

I couldn’t help asking myself this question after reading a decision of the Mumbai Patent Office rejecting Google’s patent application for a "computer-implemented" method for targeted advertising.

In a hearing held on April 8, 2011 under Section 14 of the Patents Act, Google’s application 1083/MUMNP/2007 for a patent on “Associating Features With Entities, Such As Categories Or Web Page Documents, And/Or Weighting Such Features” was rejected under Section 15.

The principal claim as originally filed read thus:

1. A computer-implemented method comprising:

accepting, by a computer system including at least one computer, a keyword-to-category association;

generating, by the computer system, at least one result using the keyword-to-category association;

serving, by the computer system, the generated at least one result to a user;

tracking, by the computer system, user behavior with respect to the served at least one result updating, by the computer system, a score of  the keyword-to-category association using the tracked user behavior; and

storing, by the computer system, the updated score of the keyword-to-category association in association with the keyword-to-category association

This was amended to read as follows:

1. A computer-implemented method comprising:

accepting, by a computer system including at least one computer, a keyword-to-Category association;

generating, by the computer system, at least one result using the keyword-to-category association

serving, by the computer system, the generated at least one result to a user;

tracking, by the computer system, user behavior with respect to the served at least one result

updating, by the computer system, a score of the keyword-to-category association using the tracked user behavior; and

storing, by the computer system, the updated score of the keyword-to-category association in association with the keyword-to-category association.

In the decision, the Patent Office seems to have primarily objected on grounds that the claim does not disclose an inventive step...but my question is, does this claim even satisfy the requirement of Indian law as far as eligibility of subject-matter is concerned??

Does the principal claim, in its original or amended forms, qualify as a system claim merely because the words “computer system” are present?

Para 1 of the Complete specification reads as follows:

"The present invention concerns advertising. In particular, the present invention concerns improving targeted advertising."

How does this invention not fall within the excluded/unpatentable subject-matter as spelt out in Section 3(k) of the Act? Where is the technical problem for which a technical solution is disclosed in the claim?

A further reading of the decision informs us that Section 3(k) was cited as the second ground of objection...shouldn’t patent-eligibility figure on the top of the priority list in examining a patent application?

That said, to give due credit to the Patent Office, the patent application was ultimately rejected citing Section 3(k) of the Act.

I am not against grant of patents to computer-implemented inventions (CII), but as the law stands today, my humble opinion is that the “invention” disclosed in Google’s application cannot be treated as a CII.

I think India should consider introducing preliminary examination of patent applications at the stage of filing to filter applications like these so that quality time may be invested in examining other applications. 

Stale News: Chairman of Central Pollution Control Board in a Patent Controversy

Yesterday, the Times of India carried a news report according to which, the Chairman of the Central Pollution Control Board (CPCB), Mr.S.P.Gautam, has been trying to push his own patent on lyophilliser, a device used for freeze drying, for use by the Board.

Apparently, a directive by the CPCB too was passed requiring the leather industry to buy the technology claimed in the CPCB Chairman’s patent, which has not been tested yet.

When this issue, which involves conflict of interest, was brought to the attention of the Minister for Environment and Forests, Ms.Jayanthi Natarajan, she promised to probe into the matter.

I wonder if in developing the invention, the CPCB Chairman used the resources of the government. If yes, how did he file and get a patent in his name? Does the Government have an IP policy for its employees? I’ll read up more on this and share my findings with the readers.

Appeals to IPAB: A Few Thoughts

The Intellectual Property Appellate Board (IPAB), although functional for some time now, its true powers are still in haze. What orders of the Controller are appealable before the IPAB?  

Can an interlocutory order passed by the Controller or the Opposition Board in a pre-grant or post-grant opposition be appealed before the IPAB?

Let me explain this question better with a plausible hypothetical. A patent X is granted to P and a post-grant opposition under Section 25(2) is filed by Q against the grant of the patent X. P files his counter-statement along with evidence within the stipulated time. 

Q wants a month’s extension under Rule 138 to file his reply evidence under Rule 59 of the Rules. The Controller denies extension on grounds that the reason tendered for the extension is frivolous or that the law does not permit him to extend time in the case of reply evidence being filed under Rule 59. An interim order to that effect is passed against Q.

Can Q appeal before the IPAB against this interim order? Does Section 117A, which deals with appeals to the IPAB, allow for such appeals? If no, is a writ petition the only recourse left against such interim orders?

How does Section 117A read? It says:

(1) Save as otherwise expressly provided in sub-section (2), no appeal shall lie from any decision, order or direction made or issued under this Act by the Central Goverment, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.

(2) An appeal shall lie to the Appellate Board from any decision, order or direction of the Controller or Central Govt under........ sub-section (4) of Section 25.......

To understand if an appeal lies from an interim order passed by the Controller in a post-grant opposition proceeding, it is important to understand the combined effect of the underlined portions of the Section.

A. Sub-section (1) states that the appealable order or decision or direction must be “expressly provided” for in sub-section (2).

B. Sub-section (2) in turn says an appeal shall lie from “any decision, order or direction of the Controller” under all provisions specifically mentioned therein, including Section 25(4).

C. Section 25(4) refers to an order of the Controller in the post-grant opposition to either “maintain or amend or to revoke” the patent.

Since Section 25(4) refers only to an order to maintain/amend/revoke the patent, how can it be said that an interim order passed in a post-grant opposition too is appealable under Section 117A?

A possible argument could be based on the wording of sub-section (2) of Section 117A. It reads “any decision or order or direction”. If the intention was to restrict appealability to only final orders passed, and not to interim orders/directions, where was the need to include the word “any”? and where was the need to include the words “decision or order or direction”?

Clearly, the conclusion tilts towards appealability of interim orders before the IPAB.

Not just that, one must also take into account the fundamentals of writ jurisprudence. In a writ jurisdiction, the Court’s power to deal with the merits of the case is very limited. This is because in a writ proceeding, the Court is entitled to reverse the decision only if there is an egregious error which is against the express provisions of the law or canons of natural justice.

In other words, a Court does not sit in appeal over the findings on merits in flexing its writ jurisdiction. Therefore, to file a writ against an interim order of the controller to challenge his findings on merits, would be impermissible under the law.

Consequently, the plausible conclusion is that the IPAB has to entertain an appeal from interim orders passed by the Controller in circumstances envisaged under Section 117A(2).

Another way of looking at it could be that the very constitution of the IPAB as an appellate authority would be rendered otiose if parties start approaching High Courts against interim orders of the Controller. 

Lesson for Applicants: No Room for Internal Docketing Errors

Deadlines are of the essence in patents, and I think patent prosecutors understand this better than anyone else (I wouldn’t call myself a patent prosecutor, I am a litigator). 

To avoid human error, most prosecuting firms and in-house IP teams have softwares to remind them of the deadlines, but there is still room for error when entries are made.

A decision of the Delhi Patent Office delivered in a hearing dated July 26, 2011 in connection with the application 5043/DELNP/2011 drives this point home better. The facts of the case in brief are as follows:

1. The application in question was a national phase PCT application filed by Durect Corporation, which claimed priorities from two US applications, the first of which was dated November 3, 2006 and the second was dated June 22, 2007.

2. The national phase application was recieved by the Indian Patent Office on February 8, 2010.

3. The application was returned by the patent office on grounds that the national phase application was filed beyond the stipulated period of 31 months from the date of priority.

4. Durect corp filed a writ petition in which the Delhi High Court directed the Patent Office to consider the patent application of Durect along with its petition under Rules 137 of the Patent Rules for condonation of irregularity.

Accordingly, a hearing was held by the Delhi Patent Office. Durect Corp attributed the delay in filing the national phase application to an error in the internal docket records of the company, wherein the later priority date of June 22, 2007 was entered and treated as the reference date to calculate the 31 month period for national phase entry.

The question before the Delhi Patent Office was if this delay could be condoned under a combined reading of Sections 80 and 81 and Rules 137 and 138.

It was submitted by Durect that docketing error has to be considered as sufficient cause for delay according to the PCT, and Rule 82bis was specifically cited to support this submission. Besides, Section 5 of the Indian Limitation Act too was marshalled to buttress Durect’s case.

In a surprisingly well-researched decision, the Patent Office rejected all the above submissions for the following reasons:

1. The PCT requires national law to provide for mailing delays, which Indian law duly provides for under Rule 7 of the Patent Rules. Docketing errors may or may not be permitted and this is left to the discretion of member nations of the PCT. Indian law does not recognize internal docketing errors as valid reason.

2. Not just that, even the PCT, at best, recognizes a two-month delay in case of docketing errors. In this case, the delay was 8 months

3. Rule 137 is to be employed by the Controller to condone procedural foibles such as filing of the wrong document or application, so long as a third party’s interest is not affected. However, this Rule did not have the potency to cure delayed national phase entry.

4. For Rule 138 to apply, extension must be sought within the stipulated period, which is 31 months in this case, and at best a month’s extension could have been granted, but not an 8-month extension.

Although it is unfortunate that the decision went against Durect, I think this case is a standing example for applicants to ensure that they take utmost care even when entering details in their internal docket management systems.

That aside, this decision, considering the detailed analysis of provisions undertaken by the Patent Office, is a welcome development and is hopefully a sign of better things to come.

Thanks are due to Sandeep Kanak Rathod for bringing this decision to my attention.

Kolkata High Court: Rule 138 of the Patents Act

Earlier last month I had blogged on the Supreme Court’s decision in the Polydrug case in which Rule 138 of the Patent Rules was in issue. The Supreme Court in that case categorically ruled that the Controller of patents has the power to extend the statutory period by one month under all provisions which have not been expressly excluded from the purview of Rule 138.

Sandeep Kanak Rathod of genericpharmaceuticals blog has been kind enough to share with me another matter relating to Rule 138 which is pending before the Kolkata High Court.

In this case, Hindustan Unilever filed a writ petition before the Kolkata HC challenging the acceptance of counter-statement filed in a post-grant opposition by a patentee beyond the two month period provided under Rule 58.

According to Hindustan Unilever, which is the post-grant opponent, notice of the opposition was issued to the Patentee by the Controller vide a letter dated June 30, 2008. The patentee filed his counter-statement on September 1, 2008 along with an application for extension of time under Rule 138.

No details of the date of receipt of the notice of opposition are mentioned in the Kolkata HC’s order, but if the notice was received after July 1, 2008, the patentee could be well within his rights to seek extension of time under Rule 138 since the application would be within the prescribed two-month period to file the counter-statement.

The Kolkata HC has issued an interim order holding that acceptance of the counter-statement of the patentee by the Controller was wrong prima facie and has stayed the post-grant proceedings until the disposal of the writ petition. 

Domestic Courts and "Foreign" Infringement: What is the Law?- II

In the previous post, Mihir Naniwadekar had examined the background to the Mocambique rule, and he now analyses the decision of the UK Supreme Court where issues pertaining to the applicability of the rule to intellectual property arose.

In Lucasfilm, Counsel for the Appellant before the Supreme Court, Jonathan Sumption QC, framed the issue narrowly: the court notes, “the appellants do not take issue with the application of the Moçambique rule to intellectual property so far as it is limited to patents and other intellectual property rights dependent on the grant or authority of a foreign State, and to cases where what is in issue is the validity of the patent, as opposed to its infringement.”

By framing the issue thus, counsel was able to steer the Court away from concerns over the act of state doctrine, and concerns over comity. Indeed, in the facts, this narrow proposition would also be sufficient for the appellants, for on the facts (as emerging from Mann J’s judgment at first instance), “the substantial dispute has always been about the ownership of the relevant copyrights and their infringement rather than about their subsistence.”

[The detailed facts are interesting in their own right, especially for Star Wars fans, but for the purposes of our present discussion an elaboration of the facts would serve no purpose other than lengthening an already long post. The interested reader should refer to the judgment of Mann J. at first instance, which is reported in (2008) EWHC 1878 (Ch)]

The Respondents argued that the Mocambique rule, as extended in Hesperides, was still good law; and continued to apply to “claims for infringement of all foreign intellectual property rights, including copyright, because such claims are essentially local”. Consequently, it was argued that such claims “must be brought in the place where the rights have been created, irrespective as to whether there is any claim to title…”

The Supreme Court rejects this argument in an illuminating passage quoted below (from the combined judgment of Lord Walker and Lord Collins):

“We have come to the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant… It is clear that much of the underpinning of the Moçambique rule and the decision in Potter v Broken Hill Pty Co Ltd has been eroded… 

The basis for what remains of the rule was said by the House of Lords in the Moçambique case to be that controversies should be decided in the country of the situs of the property because the right of granting it was vested in ‘the ruler of the country’ and in the Hesperides case to be the maintenance of comity and the avoidance of conflict with foreign jurisdictions. It is possible to see how the rationale of the Mocambique rule can be applied to patents, at any rate where questions of validity are involved.

For example the claims might touch on the validity of patents in sensitive areas, such as armaments, and that no doubt is part of the rationale for article 22(4) of the Brussels I Regulation. But it is very difficult to see how it could apply to copyright. It is true that copyright can involve delicate political issues.

Thus in a very different context Brightman J had to deal with the international consequences for copyright protection of the samizdat circulation in the Soviet Union of Solzhenitsyn's August 1914 without having been passed by the Soviet censor: Bodley Head Ltd v Flegon [1972] 1 WLR 680.

But such cases can be dealt with by an application of the principles of public policy in appropriate cases…There is no room for the application of the act of state doctrine in relation to copyright in this case, even if (contrary to the view expressed above) actions of officials involved with registration and grant of intellectual property rights were acts of state.

The requirement to apply for copyright registration in the United States is limited to the "copyright in any United States work" which in practice means that published works first published outside the United States are exempted from compliance with US registration provisions.

In the present case the copyrights were treated as United States works and were registered. Registration is a pre-requisite to proceedings in the United States: United States Copyright Act, section 411. But the unchallenged evidence before the judge in this case was that registration was not a prerequisite to subsistence but only to suit, and it was possible to register at the time of suit. Consequently the provision is purely procedure…”

The Court thus held that Tyburn was wrongly decided and that in personam jurisdiction could be sufficient to bring an action for infringement of a foreign copyright. The case also highlights the conceptual problems with applying real property based reasoning to intellectual property, and further indicates that the differences between the type of intellectual property in question require nuanced consideration.

Insofar as infringers are concerned, beware: in some cases, the long arm of the law is so long that it can extend to overseas infringement also!

Stale News: Supreme Court Rules on Rule 138 of Patent Rules

This April, I had blogged on a Special Leave Petition filed before the Supreme Court, which related to the power of the Controller under Rule 138 of the Patent Rules to permit extension of time in filing evidence in reply by an opponent in a post-grant opposition.

The issue central to the Special Leave Petition (filed by Mumbai-based Polydrug Laboratories) before the Court was as follows:

Does the Controller have the power under Rule 138 to extend the time period stipulated under Rule 59 for filing of evidence in Reply by the opponent?  

Yesterday i.e. on August 16, 2011, the Supreme Court categorically ruled in the affirmative stating that Rule 138 was unambiguous in its import and that it vested the Controller with the power to extend the time period stipulated under Rule 59. 

The Court observed that although Rule 59 did not explicitly envisage an extension, Rule 138 was wide enough in its ambit to provide for an extension of the time laid down in Rule 59.

As pointed out in my last post on this case, 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.

The consequence of this decision of the Supreme Court is that the Petitioner i.e. Polydrug Laboratories, who is the post-grant opponent, can legitimately place its evidence in reply on record, and the evidence has to be considered by the Opposition Board when deciding the post-grant opposition filed by Polydrug against the Indian patent IN211104 held by IPCA Laboratories.

Hopefully, the law on this point is finally settled and there will be no further confusion in its application by the Patent Office.