Saturday, 17 March 2012

The Travancore Mats & Matting Co. v. Kollekattu Joseph Scharia et al. at IPAB, Chennai

This post deals with a revocation application that was filed at the IPAB in Chennai. The applicant, The Travancore Mats & Matting Co. filed a revocation application under section 64 of the Indian Patent Act, 1970 for revocation of patent number 206494, titled “A METHOD OF MAKING COIR TUFTED RUBBER MATS”. The patent was filed on 05/05/2000 and belongs to Kollekattu Joseph Scharia (Respondent). The first independent claim of the patent is reproduced below:

The process of making coir tufted rubber mats in rolls, by tufting perpendicularly the evenly cut coir yarn into a soft flexible sheeted rubber compound obtained through mixing of natural rubber, synthetic rubber, reclaimed rubber, rubber chemicals fillers and process oil, in a kneader machine or in a mixing mill OR by mixing rubber latex, rubber chemicals, fillers and hardener in a planetary moving agitator.

The applicant, who has been in the business of manufacturing mats for several years, through their learned counsel, alleged that the respondent should not be entitled to the patent as the respondent is not the true and first inventor of the invention and obtained the invention wrongly. Further, the applicant also alleged that the invention is very well known to the public of India and was used by the public much before the respondent had filed for a patent for the invention. In addition to the above reasons, the applicant also argued that the patent lacks novel and inventive step and the “process of making coir tufted rubber mats” would have been obvious to a person skilled in the art. The applicant claimed that the respondent has obtained the patent illegally by failing to disclose material facts such as proof of manufacturing, sales of products that are important and relevant for consideration of the respondent’s eligibility to such a patent.

In responding to the applicant’s allegations, the respondent submitted that mats, as disclosed by the patent, were not known to the public or manufactured by anyone. Further, prior to the filing of the patent, the coir mats that were available in the market were mostly PVC tufted coir mats. The respondent claimed that the PVC mats are not eco-friendly and do not posses ant-skid properties. The respondents agreed that there were rubber tufted coir mats that were available in the market; however such rubber tufted coir mats suffered from various deficiencies and lacked effectiveness and the advantages that the mats as described in the patent owned by the respondent described. The respondent stressed that a substantial amount of time, effort, development and testing was invested to invent the mats described in the patent. The mats described in the patent are manufactured by embedding straight and evenly cut coir fiber from the coir yarn to rubber compounded sheets. The uniqueness of the manufacturing method allowed th mats to be cut into any desired shape and size without requiring any type of mould or hydraulic press.

The respondent highlighted the fact that the application for revocation of the patent was filed without any substantial objection or supporting documents, even though the applicant had alleged that the invention was known to the public. Consequently, the onus for establishing invalidity lied with the applicant and the applicant had failed to establish any grounds for proving invalidity by failing to submit any substantial evidence.

Justice Prabha Sridevan, who was hearing the case, dismissed the application for revocation of the patents with costs on the ground that the onus for establishing the invalidity was with the applicant who had failed miserably by not submitting any material evidence.  

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Thursday, 15 March 2012

Protection for Sexually Reproduced Plants

Many countries provide protection to inventions in the field of agriculture/horticulture either through patents or by an effective sui generis system (such as the Plant Variety Act of India, 2001), or both. Under the Indian Patent Act, sections 3(h) and 3 (j) disclose what can be construed as “patentable” for inventions related to plants.

The recently filed opposition to Monsanto patent on Indian melons at the European Patent Office triggered another debate on whether living organisms and their products are patentable. In the Monsanto patent, the process for melon breeding has been excluded from the scope of the patent; however, the patent office granted protection to the “plant” per se as well as plant products such as seeds, fruits etc. The process of breeding has been excluded because European Union do not provided patent protection for conventional breeding. 

The history sheet of protection for living beings, including plant varieties and their products, is far from being clean. There have been many interesting cases where the courts have tried to understand the intent of the congress as well as interpret the sections in patent laws targeted towards the protection of living beings as inventions. Diamond v. Chakrabarty (In the Supreme court of United States) proved to be a landmark case that went on to be cited in many subsequent patent litigation cases. Another interesting patent litigation case was contested between Farm Advantage v. Pioneer Hi-Bred in the year 2001. 

Farm Advantage v. Pioneer Hi-Bred: The main areas of contention in the case were patentability of sexually reproduced seeds by breeding under 35 USC 101 as well as determining the intent of the congress in providing dual protection for the same plant products under plant varieties protection act and utility patents.

Background: This was the first case that addressed the issue of whether patent protection could be sought for sexually reproduced plants. Pioneer was granted 17 utility patents relating to inbred and hybrid corn seed products. The seeds were sold under a limited license that allowed the purchaser to use the seeds for production of single crop (emphasis added) and denied the purchaser from using the seeds for propagation or seed multiplication or for the production or development of a hybrid or different seed variety. However, Farm Advantage sold the seeds to certain farmers, who in turn planted the seeds in their fields. When Pioneer filed a lawsuit alleging infringement of its utility patents, Farm Advantage filed a counter-claim arguing that sexually reproducing plants are not patentable and the 17 patents were invalid.

Outcome: The supreme court ruled in favor of Pioneer clearing certain bit of smoke that hovered on whether sexually reproduced plants obtained through breeding were patentable or not.

Monday, 12 March 2012

Natco granted India's first compulsory license for the Patented Drug Nexavar

Natco has been granted a compulsory license from the Indian Patent office for the patented drug Nexavar. The patent for Nexavar is owned by Bayer. I had blogged in the past on the application for compulsory license by Natco for producing a generic version of the patented drug Nexavar here.

The patent office gave the compulsory license to Natco and stated that Bayer had not met the requirements of the market because of which the life saving drug was not available to the common man at affordable prices. This is the first instance of patent office granting a compulsory license. To read more about compulsory licensing in India and the corresponding sections in the patents act, 1970, please click on the following link:

For further read:

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Sunday, 11 March 2012

RTI and the Patent Office

The RTI has been a major weapon in the common man’s armory in his fight against the rampant corruption present in the government offices. It is no surprise that this post deals with the usage of RTI as a tool to tackle the ineffectiveness of the Indian Patent Office.
Bharat Kumar, the appellant, had filed an RTI application on 25.4.2011 seeking information on why the patent office has failed to provide necessary information that explains the delay in grant of his patent application 2254/Del/2005, titled “Titanic Audio”.  On receipt of the RTI application, the respondent, Ashok Kumar, CPIO informed that appellant that a request was made to B.P. Singh, group leader of electrical division to furnish the necessary information. 

To the dismay of the appellant, B.P. Singh replied that the appellant should seek the information from the section where the file is presently located. To make matters worse, B.P. Singh then went on leave without informing the CPIO. Consequently, the CPIO made a request to the appellant seeking additional time till June, 2011.  Upon the return of B.P Singh to the office, the RTI file was again sent on 3.6.2011 seeking the required information. However, B.P. Singh has not provided information to the appellant till date. (A delay of more than 100 days!)

A show cause notice is going to be issued in the matter and the Information Commissioner, Sushma Singh has ordered B.P. Singh and Ashok Kumar to present themselves for the hearing of the show cause notice. Further, an order has been issued directing that the required information to the appellant be provided within 10 days of the receipt of the order.
When I looked up the patent application 2254/Del/2005 on Indian Patent Office, the status of the application reads “Abandoned under Section 9(1)”. Further, I found a letter from the appellant dated 4.1.2008 requesting for information on the status of his patent application. The letter is available here

One thing that is clear from the above case is that, henceforth, the patent office ought to be more diligent in handling its daily matters so that such situations can be avoided in future. The common man is now more aware of his rights than ever before. The nexus between the RTI and the common man is becoming stronger and stronger.

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Wednesday, 7 March 2012

Extraterritorial Patent Infringement

It is well known that patent rights are inherently territorial and cannot provide protection to patent owners in a foreign land if the patent owner has not applied for patent in the foreign land. 35 USC 271 (a) is related to Infringement of a patent and states that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” Thus, for an infringement to occur, all the infringing acts have to occur in the territory in which the patent protection is provided.

So what happens when all the infringing acts are not performed within the country? For example, the manufacturing of some (or all) components of a patented machine occurs in the country where patent protection is present and the manufacturing of other components and assembly of all the components to make the machine happens in a foreign country? Do the patent laws address these kinds of situations where rights of patent owners may be wrongly exploited by third parties? Consider the case of Deepsouth Vs Laitram (sometime in 19th century) where the Supreme Court ruled that shipping of unassembled parts outside United States did not constitute patent infringement.

The patent laws have been amended several times to address such situation and there have been many famous case laws that specifically address the question of “Extraterritorial Patent Infringement”. Section 271 (f) (1) and 271 (f) (2) were enacted in 1984 to address the loopholes in the patent system. These sections imposed liability on exporters of components if they actively induced in assembling the components outside United States to make the patented article or when the exported components did not have any other use except when they infringe the patented article. In 1988, section 271 (g) was added which imposed liability on people who imported into United States unpatented components made by process covered by a US patent. 

Some of the case laws for building an in depth understanding of extraterritorial patent infringement are provided below. The “doctrine” of Extraterritorial Patent infringement becomes even more unique with the advent of software patents. A lot of software inventions involve processes/methods that can (and currently are) being performed in more than one country. When patent protection is not present in all such countries, the situation becomes even more interesting. Same is the case with import and export of intangible information. In the era of globalization and increased focus on harmonization of patent laws across the globe, extraterritorial patent infringement will continue to receive its fair share of attention.

Famous case laws on Extraterritorial Patent Infringement:
1.       NTP Vs. RIM
2.      AT&T Vs. Microsoft
3.      Eolas Technologies Vs. Microsoft
4.      Bayer Vs. Housey

Thursday, 1 March 2012

Auto-rickshaw Meters Stuck in a Patent Row

Mumbai Mirror reports that the implementation of the new tamper proof electronic meters used in taxis and auto-rickshaws is likely to face patent hurdles. A Pune based electronic meter manufacturing company, Standard Meter Manufacturing Company has filed a petition in the Bombay High Court on Wednesday,  February 29, 2012. In a statement made by Rajendra Pillay, the owner of Standard Meter Manufacturing Company, he has alleged that the the installation of electronic meters is unwarranted and unconstitutional.

The auto union has complained that the implementation of tamper proof seal - a stainless steel mechanism and a plastic cover with a unique numbering series, will give the manufacturing company complete monopoly on the electronic meters market. Moreover, a new seal has to be brought every time the electronic meter is open, which will give the manufacturing company unfair advantage and increase the burden on the taxi and auto-rickshaw owners.

The patent application at issue - 1184/MUM/2003, titled "CLASSIC METER" was filed on 2003-11-14 and was published on 2007-03-16. The Abstract of the patent states:

"The Classic Meter is of Height 12.3 cms, Width 16.9 cms, Length 16.9. The total weight of the taximeter without accessories is 1.5 kgs. (b) Total number of display windows-4 Nos. (c) There is a digital display of fare based on the distance covered and time taken. The LED indicators show the status of 'Hired', 'Stopped' and 'For Hire'. (d) This product adheres to the constructional requirements of Bureau of Indian of Standards. The performance required for IS:2747 has been confirmed to and the approval has been received from the authorities. (e) The option of providing roof lamp for the above mentioned indication is also available."

No information is present in the abstract that discloses the mechanism of the tamper proof seal. However, one thing is for sure, the number of IP cases in India is definitely increasing and more and more number of people and company have started using their IP to exercise their rights in the market.