Date of Enforcement and Patent Amendments

The Indian Patents Act, 1970 has been amended in the years 1999, 2002, 2005 and 2006 to harmonize the patent laws and to make them more relevant to the new technologies. Some of the major changes have been allowance of product patents in drugs and chemicals, introduction of pre-grant opposition and changes in timeline and fee structure. Every amendment that is made is associated with a date of enforcement that tells us when the old provisions /act cease to exist and new provisions are enforced. 

This post deals with the apparent confusion that prevailed with respect to date of enforcement of patent amendments and interpretation of patent laws when scope of the laws is not easy to decode. The parties in contention are Philips Electronics India Limited (appellant), Asian Electronics Limited (respondent 1) and Controller General of Patents & Designs (respondent 2).  The appellant had filed an appeal in the High Court of Mumbai against the order of respondent 2 for granting of patent number 193436 (Application No. 545/BOM/1999) belonging to respondent 1. The matter was thereafter transferred by the High Court of Mumbai to the IPAB for hearing. 

Background of the case:

The patent application was accepted and notified in the Gazette of India Part III Section 2 dated July 17, 2004 under Patent Application No. 193436. The notice of opposition to the grant of patent under section 25 and Rule 55 was filed by the appellant on December 14, 2004(prior to the coming into force of the Patents (Amendment) Act, 2005). The opposition was filed on the grounds of non-compliance of section 8 by respondent 1. According to the appellant, respondent 1 has failed to disclose information about the status of foreign filing of the same application to the controller and as a result has failed to fulfill the statutory obligations. Failure to disclose the information about foreign filing has therefore established the grounds of section 25(1) and thus the patent application should not be granted.

The controller heard the matter on June 28, 2006 and ordered the grant of patent on July 24, 2006. The controller based his decision on section 15 of the Patents Act, 1970 as amended by the Patent Amendment Act 2002 (emphasis added), (hereinafter, “Old Act") rather than section 25. Aggrieved by the actions of the controller, the appellant alleged that the controller erred in construing that he could decide an opposition (that was filed under Section 25(1)) under Section 15 of the Patents Act. 

The counsel for the appellant argued that as the opposition was filed under section 25(1) of the Old Act, the decision on opposition should have been taken under the Old Act and not based on Patents Act 1970, as amended by Patent Amendment Act 2005 (emphasis added)(hereinafter, “Current Act”). According to the counsel, section 15 of the Current Act has no application in opposition proceedings and by considering section 15 rather than section 25, the appellant has been denied a statutory remedy by the controller thereby negatively affecting the outcome of the proceedings. 

The counsel based his reasoning on section 162(5) of the Current Act, the General Clauses Act and paragraph 7 of the Circular dated 14th March 2005 of the Controller General of Patents & Designs. Section 162(5) reads:

Notwithstanding anything contained in this Act, any suit for infringement of a patent or any proceeding for revocation of a patent, pending in any court at the commencement of this Act, may be continued and disposed of, as if this Act had not been passed.

In response to the allegations from the counsel of the appellant, the counsel for respondent 1 submitted that the provisions for continuing proceedings as described in section 162(5) cannot be extended and made applicable to all pending proceedings and were only applicable to specific pending proceedings. 

Decision of the IPAB Board:

After hearing the arguments of both the parties, the board observed that the opposition was filed on December 14, 2004 under the then existing section 25(1) and the matter was heard by respondent 2 on September 18, 2006. The board pointed out that before the matter was heard by respondent 2, the Patents (Amendment) Ordinance, 2004 had come into force amending the Patents Act, 1970 with effect from January 1, 2005 which was later replaced by the patents (Amendment) Act, 2005. The board brought to the attention of the parties the instructions given by the Controller General through office instruction dated January 14, 2005 on how to deal with the pending oppositions under section 25(1). 

The instruction read:

“The cases which have been accepted and notified in the Gazette for inviting opposition u/s 25(1) of the Act, before this Patents (Amendment) Ordinance, 2004 came into force, the opposition if any will be dealt with as per the old Act and rules and if no opposition is filed, the application shall directly proceed to grant.”

Further, sub-section 2 of section 1 of the Ordinance number 4 of 2004 stated:

“Sub-clause (ii) of clause (a), and clause (b), of section 37, sections 41, 42, 47, 58 to 62 (both inclusive) and 73 shall come into force on such date as the Central Government may, by notification in the Official Gazette, appoint; and the remaining provisions shall come into force on the 1st day of January, 2005.”

Moreover, the board specified that the appellant has got a right to go for appeal before the Honorable High Court as per the provisions available under section 116 (2) of the principal Act that were operative and in force when the impugned order was passed.

Section 116(2) reads:

“116 (2) Save as otherwise expressly provided in sub-section (1), an appeal shall lie to a High Court from any decision, order or direction of the Controller under any of the following provisions, that is to say, section 15, section 16, section 17, section 18, section 19, section 20, section 25, section 27, section 28, section 51, section 54, section 57, section 60, section 61, section 63, sub-section (3) of section 69, section 78, section 84, section 86, section 88 (3), section 89, section 93, section 96 and section 97.”

 The board concluded that the respondent 2 wrongly applied section 15 and ignored the Office instruction 1/2005 dated January 14, 2005 because of which respondent 2 failed to notice the date of enforcement of the amendments. Consequently, the decision of the respondent 2 is erroneous as instead of referring to section 25, the respondent 2 has referred to section 15 to decide the proceedings. The board has directed the order to be amended and asked the controller to base his decision under section 8 and section 25 of the old act as applicable on the date of filing of the opposition and not on section 15.  For further information, please refer to the IPAB site.

Is lack of communication at patent office hampering your patent application?

This post deals with a recent application that was filed at the IPAB and highlights the importance of timely communication on all matters at the patent office. The journey of a patent application from filing to its grant is time bound. Every action comes with a deadline and failures to meet the deadlines have their own consequences.  This is what happened when a patentee was not informed about the grant of his patent by the patent office and the patentee subsequently filed for amendments in the patent application. Thus, the question that needs to be answered is whether the amendments that were filed by the patentee (without having information on the grant of his patent) correspond to amendments for the pre-grant application or for the post-grant application?

B. Braun Melsungen AG, a German medical and pharmaceutical company, had filed an application (1857/MAS/1998) for a patent titled “AN I. V. CATHETER” on August 18, 1998 at the Indian Patent Office. On May 27, 2005, the agents of the patentee were intimidated that the application was in order to grant but the letters would be issued after the disposal of pre-grant opposition. Form 13 was filed on September 10, 2007 for changing the counsel by the patentee and the counsel was informed on December 19, 2007 that patent has been granted on the application and the grant of patent has been recorded in the Register of Patent Office on December 3, 2007 (Ref: Patent No. 210062 (1857/MAS/1998), dated August 18, 1998 granted on September 17, 2007”).

The situation gets tricky on September 19, 2007 (see image) when the counsel for the patentee filed another Form 13, this time for amending the claims in the patent application. The patentee cancelled all the original 54 claims and replaced the claims with new set of 28 claims. The required payment for form 13 was made on September 21, 2007 because of which the date of filing of form 13 was considered as September 21, 2007. The examiner allowed the amended claims stating that the allowed claims were well within the scope of the claims of the specification before the amendments. What makes matter even more interesting is the fact that the patentee had filed another application under rule 137 and rule 138 for condonation of delay under section 8(1)(b). Section 8(1) (b) deals with the filing date for international application under PCT where India has been designated.   Rule 137 and rule 138 deal with specials powers given to the controller on matters where no special provisions are made in the patent act.

Suru International, an Indian company that manufactures syringes, catheter and cannulas, had raised a pre-grant opposition for 1857/MAS/1998 on the grounds that the invention was not novel and that the patentee had not only failed to comply with section 8 (1) (b) but also the fact that the patent office was treating the amendments as pre-grant amendments.

Upon examination of patent records, it was revealed that 1857/MAS/1998 was allotted number 210062 on September 17, 2007. Further, it was revealed that notice of allotment of a patent number to an application under rule 37 of patent rules 2003 is not communicated to the officers at the patent office. Based on the above information, the IPAB has asked the patent office to consider the matter afresh from September 21, 2007. As form 13 was filed after grant of patent, the IPAB has decided that the responses filed after date of grant will be dealt in accordance with provisions on post-grant applications. 

The IPAB has gone one step ahead and called for greater transparency and communication at the patent office so that examiners are aware of when Form 13 are filed, when the patent is granted and when the number has been allotted. IPAB also placed importance on the availability of information and requested that once a patent number is allotted, it should be made immediately available on the patent office website so that the patentee’s are well informed about the status of their applications.

Recent IPAB Decision - A hotchpotch of arguments

What happens when a pre-grant opposition is filed for an Indian patent application and the following happens:

• The pre-grant opposition application is withdrawn by the respondent on the grounds that the party (respondent) is no longer interested in pursuing the matter.
• The documents cited as prior art in the pre-grant opposition belong to the inventor of the current application and has been abandoned.
• The most important cited document is not from the same technology area.
• There is no agreement between the experts testifying on the matter of novelty and inventive step.

This is what happened in a recent IPAB decision in which the patent application was not allowed for grant. The patent in suit is 40/2007/PT/MUM, titled “NOVEL AGRICULTURAL COMPOSITION”. The patent application discloses an agricultural composition comprising an effective amount of a sulphur active ingredient and a dispersing agent. According to the appellant (patentee), the novel feature of the invention was the ability to instantly convert sulphur to its sulphate form so that desired quantity of sulphur is made available for assimilation by plants. The composition was in the form of grains (0.1 mm to 2.5 mm) that were soluble in water and ranged from 2 to 12 microns in particle size. 

Background: Seven documents were cited in the first examination report, the response to which was filed by the appellant by limiting and modifying the initial set of 15 claims to 13 claims. Thereafter, the pre-grant opposition was filed by the respondent. The most important document from a prior art view disclosed all the elements of the current application. However, the difference lay in the fact that the document was targeted towards fungicides whereas the current application targeted the easy assimilation of sulphur in its sulphate form by plants. Further, the percentage by weight of each ingredient was different in the cited document and the current application.  Even though the respondent withdrew their appeal and did not go ahead with the opposition, the board nonetheless stressed on the fact that it was the duty of the board to not allow an application to go forth to the public merely because the opposition is withdrawn.

For deciding the novelty and inventive steps, the board relied on the fact that the process of assimilation of sulphur in sulphate form was known in the art and the main area of contention was with respect to the particle size and the speed at which the sulphur containing composition gets oxidized and becomes sulphate. In order to throw light on the novelty and inventive step, the board agreed with the findings of the controller who had concluded that agricultural composition included both fungicidal composition and nutrients required for the plants. As a result of this, the cited document acted as deciding prior art for the current application. The board stated “The use of sulphur as a nutrient is a known use, the rapid oxidation by change in particle size is known, there are prior arts which feature economic advantage of the composition as also sustained release.” The above argument was also used while considering the testimony of 10 experts in the field of horticulture and sulphur. There was difference of opinions with respect to what the experts thought of the novelty and inventive steps of the invention with one expert going as far as stating in his testimony that the claims (as filed) did not do justice to the invention and only dependent claims 12 and 13 in combination with examples in the specification brought out the novelty of the invention. Further details can be found on the IPAB site.

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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