Tuesday, 28 February 2012

Electronic Register of Indian Patent Agents released by Patent Office

Searching for a patent agent got easier! The CGPDTM has made public the list of Indian Patent Agents through an Electronic Register. One can search for a patent agent using either Agent Number or Agent Name.

All the patent agents are requested to check for their information and inform the patent office in case of any discrepancy.

Wednesday, 22 February 2012

The funny side of Section 3(K) - Indian Patent Act

It will not be wrong to say that Section 3(d) in the past has invoked a lot of response from patent practitioners and industry experts. However, recent IPO decisions indicate that section 3(k) of the Indian Patent Act will generate a lot of debate and arguments in the coming few years and may soon take over section 3(d) as the most argued section. In Yahoo v. Controller, and Rediff, the IPAB differentiated the “Indian patent laws” from the “foreign patent laws” and re-emphasized the fact that business methods are not patentable in India. In what I may call as an “interesting argument”, one of the arguments, among others, that Yahoo contested in front of the IPAB was:
Google has been granted multiple business method patents in India, then why is the patent office and the IPAB prejudiced against Yahoo and why is differential treatment being netted by the office?” While IPAB agreed that there was an indication of differential treatment and a “more” uniform approach for deciding the outcome of such cases was the need of the time, the fact that the instant application failed to fulfill section 3(k) of the Indian patent act and lacked novelty when considered with section 2(1) (j) of the Indian patent act, was enough grant to refuse the appeal of the patentee.

The same is also true for software patents. In another bizarre response to an examination report (5763/DELNP/2005), the patent agent for the respondent, which happened to be Microsoft, argued that the claims do not fall under the category of software patents as the invention has been claimed as a “SYSTEM” as opposed to a “Computer Program” or instructions. One may call the response from the patent agent witty and funny. However, the assistant controller turned out to be “wittier”. The assistant controller observed that the system claim had been simply adapted from the method claim by simply amending the preamble to read “A system for …” and rest of the claim was a complete copy of the method claim. This, according to the assistant controller was nothing but a method claim and sheer addition of “A system” in the preamble could not qualify the claim as a machine or an apparatus claim. The application was rejected as lacking novelty in accordance with section 2(1) (j) and failing to comply with section 3(k).

Another observation that I have made is that the examiners tend to provide prior art references along with stating that the invention does not fall under a statutory class. I understand that it is normal during examination to reject applications based on multiple sections (for instance, in US context, 102, 103, 112 etc.), however, what is the rationale of first stating that invention fails to qualify the statutory classes (for instance, 101 rejection in US) and then providing references as prior art. Some may argue that it is easier to overcome the statutory rejection by bringing in some kind of operability in the claims to overcome the rejections, but then, is overcoming such a rejection as simple as it is portrayed? What's your say?

Tuesday, 14 February 2012

Another Social Networking Lawsuit against Facebook

The number of litigation cases in the area of social networking is slowly increasing. Facebook, which was recently sued by MacroSolve for patent infringement has been sued again in Delaware District Court for patent infringement. Little known, California based, Real Time Social Inventions LLC has sued Facebook, Salesforce.com Inc., Rockmelt Inc., Conduit USA Inc., Yammer Inc., Glam Media Inc. and Oracle Corporation for infringement of US7,853,881 (the ‘881 patent) on February 14, 2012. 

The ‘881 patent was issued on December 14, 2010 and includes 3 independent claims and 22 dependent claims. The ‘881 patent i9s related to social networks where members may interact online and live (in real-time) in the context of some particular content or activity.  

The first independent claim reads:

A method of interacting in real-time with online users accessible through a computer network, comprising: accessing by a first user a first real-time social network comprising a community of members having a specific predetermined common interest, the first real-time social network being within an interactor zone that includes one or a logical collection of related real-time social networks, the first user accessing the first real-time social network using an interactor client application that allows the first user to communicate in real-time with other online users who are members of said first or another one of said real-time social networks; displaying in real-time to the first user identities of other users who are online at the time and who are members of the first or another one of said real-time social networks within said interactor zone and who choose to be identifiable; and enabling using the interactor client application real-time interaction by the first user with said selected ones of said other online users.

The assignment history of ‘881 patent discloses the original assignee as ISQ Online, which is an online shopping application that utilizes social networks for its functioning.

Sunday, 12 February 2012

National IP Awards - 2012

The CGPDTM, in collaboration with the The Confederation of Indian Industry (CII) is inviting applications for National Intellectual property Awards 2012.The objective of the awards is to recognize and reward individuals and corporations who have contributed in harnessing the intellectual property of the country as well as helped in building an Eco-system that enhances creativity and innovation.

A similar initiative was  taken by Technology Information, Forecasting and Assessment Council (TIFAC) last year to identify patents that can be commercialized, brought to the market or licensed. 

The CGPDTM will provide Rs. 1,00,000 as cash prize and a citation to the winners. The jury will comprise professionals from India and overseas. In order to decide the winners, a period of last 5 years (2006-2011) will be considered. The awards have been distributed in to the following categories:
1.      Top Indian Academic institution in Patent
2.      Top Indian Private Company (Large scale) in Patent
3.      Top Indian Public Sector Company in Patent
4.      Top Indian Private Company (MSME) in Patent
5.      Top Individual in Patent
6.      Top Organization in Trade Mark
            7.      Top Organization/individual in Design 

The last date for submitting the completed application form is 1st March 2012. The complete application form can be downloaded from here

Best of Luck! 

Wednesday, 8 February 2012

Conflicting guidelines between PCT and Indian Patent Act 1970, read with Patent Rules, 2003?

I came across two recent IPO decisions (And there are plenty of these) where the applicant failed to file the “Request for Examination” (form 18) within the prescribed time limit. As you are all aware, an applicant has to file a request for examination with the patent office in India for getting the patent application examined. If the applicant fails to file the request for examination, then the patent application is not examined and is deemed to be withdrawn by the applicant.

The patent application numbers are 3775/DELNP/2010 and 7318/DELNP/2008 and correspond to national phase applications for their international applications. The background information of 3775/DELNP/2010 is provided below. The same parallel can be drawn for the 7318/DELNP/2008 application as it is almost an identical case. (The patent agent is also same in both the cases).

The 3775/DELNP/2010  was filed as National Phase Application on 28/05/2010  and is based on International Patent application PCT/US2008/082149 dated 31/10/2008 which in turn claims priority from US application number 60/984260 having earliest priority date of 31/10/2007. The 3775/DELNP/2010 was published in Indian Journal no. 45/2011 on 11/11/2011. The agent for 3775/DELNP/2010 submitted the request for examination on 07/12/2011. The request for examination was refused by the patent office as the due date expired on 31/10/2011 in accordance with Rule 24B(1)(i) of the patents rule 2003.

The issue to address is “Should the applicant look for information on WIPO website only for further processing of patent application under national phase”?

Why did the problem arise? 

The confusion with respect to the due date was primarily because of two reasons, namely, changes in the WIPO guidelines (not the major reason) and failure on applicant’s part to appropriately read and interpret the information present on the WIPO site while completely ignoring to cross check with the official website of the Indian Patent office.
PCT guidelines, as on 14/01/2010 treated the period of filing the RFE (Form 18) as 48 months from date of filing of application in India. I have reproduced the previous version of the guideline below:
“A patent application shall not be examined unless the applicant makes a RFE in the prescribed manner within 48 months from the date of priority or from the date of filing of the patent application, whichever is later.
The PCT guidelines were updated on 10/11/2011 to treat the period of filing RFE as 48 months from the date of priority of the application or from the date of filing of application, whichever is earlier.

While deciding the case, the deputy controller observed that the patent office issues as Application Filing Receipt (AFR) to the applicant when a patent application is filed in India. The timeline in this receipt under note 4 clearly indicates that “if you wish to get you application examined, you should file a request for examination in Form 18 within 48 months from the date of priority or date of filing, whichever is earlier”.  The deputy controller argued that it was the foremost duty of the patent agent to go through the AFR and take note of the same. Further, it was important for the patent agent to access the website of Indian patent office which has summarized the list of all amendments and includes the latest version of all the changes. Moreover, the deputy controller states that the information on WIPO site is merely informative in nature and can be considered as mandatory is information regarding international phase and NOT national phase.

Conclusion: Based on all the above arguments, the request for examination has been refused and the patent application has been deemed as withdrawn by the applicant. Thankfully, WIPO has updated the guidelines on its website and has now cited the relevant sections of each patent office for various phases associated with the national phase of an application. Nonetheless, this case shows how tricky the patent laws can be and why it is imperative for keeping oneself abreast with the amendments.