Amendment of claims in infringement Suit whether permissible without amending the plaint

Author: Sudhir Kumar

In Re: Glaverbel S.A. vs Dave Rose & Ors., Justice A. K. Pathak, Delhi High Court rejects IA seeking amendment in claims as allowed in another suit without amending the present suit. The Court also relied on certified copy of Patent Office wherein the amendment sought in claim did not reflect.

Here the Plaintiff vide an interlocutory Application 12535/2011 (under Section 151 of CPC)sought the amendment in present suit (CS (OS) no. 594/2007 of independent claim 1 as allowed in CS (OS) no. 593/2007.

The originally allowed claim under Patent No. 190380 read as under

A Mirror with no copper layer comprising:

i) a vitreous substance,

ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,

iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminum present at the surface of the silver coating layer and/or traces of silane; and

iv) at least one paint layer covering said silver coating layer."

Plaintiff had filed CS(OS) No. 593/2007, against one Shri Anand Mahajan for permanent injunction praying therein that the defendant be restrained from infringing the Indian Patent No. 190380 of the plaintiff as also for rendition of accounts. In the said case, plaintiff also filed an application under Sections 57 and 58 of the Patents Act read with Section 151 CPC being IA No. 13519/2007 seeking amendment in the Claim No. 1. By way of amendment, plaintiff sought to insert "a sensitizing material, typically tin, and" at the beginning of clause (ii) of Claim No. 1. After the proposed amendment clause (ii) of Claim No. 1 reads as under:-

"(ii) a sensitizing material, typically tin, and at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,"

A Single Judge of this Court vide order dated 10th September, 2009 reported in 2009 (41) PTC 207 (Del.) titled AGC Flat Glass Europe SA vs. Anand Mahajan and Ors. disposed of said application whereby allowed the aforementioned amendment. The operative portion of the order reads as under:-

"25. In view of the aforementioned discussion and well settled position of law and bearing the facts of the present case in mind, I find that the present amendment is merely a clarificatory/ elaborative one and does not alter the scope of the invention.

At best, even if the defendants' objections are accepted, the said amendment appears to be a disclaimer which also cannot come in the way of permitting the amendment and in fact, the same rather support the amendment. The merits of the controversy as to whether it is disclaimer or clarification will be decided at a later stage. The amendment is thus allowed as being a clarificatory one and the same does not attract the proviso of Sections 58 and 59 of the Patent Act, 1970."

It was contended by Plaintiff that the amendment in claim no. 1, as allowed vide order dated 10th September, 2009 passed in CS (OS) No. 593/2007, is clarificatory in nature and does not alter the scope of invention. Claim nos. 9 and 10 of the same patent specifically mention about sensitization of the mirror by tin chloride. This fact was taken note of by the Single Judge while allowing the amendment. Clerical correction of claim no. 1 does not change the nature of the claim no. 1. Besides this, order of amendment is "in rem" and has attained finality and can be read in this case without amending the pleadings of this case. Correctness or incorrectness of the order dated 10th September, 2009 cannot be gone into in this case. Amended claim no. 1, in terms of order dated 10th September, 2009, can be read in all other proceedings without amending the pleadings in other cases. Defendants have understood the claim no. 1 as a copper free mirrors in which first step is sensitization with tin chloride. This is evident from the averments made in para nos. 17, 18 and 19 of the written statement. Defendants in their written statement, have taken a plea that a patent claim "sensitization by tin chloride" is not new, therefore, the patent is invalid. Defendants have also cited prior art like "Franz", "Shipley", "Orban" and "Buckwalter" in para 18 of the written statement and have stated that "sensitization by tin chloride" is an old concept. Thus, no formal amendment of pleading in respect of claim No.1 is required in this case. Defendants are not prejudiced in this case even if amended claim No.1, as contained in the order dated 10th September, 2005 is read in this case. It was further contended that the whole purpose of opposing the present application by the defendants is to seek de novo trial. In other words, defendants will seek time to file amended written statement and recall of the Plaintiff's witnesses for further cross examination. This will not do any good to anyone except that final adjudication will get delayed. In nutshell, contention of plaintiff was that there is no need to amend the plaint. It was further contended that plaint is not required to be amended if not necessary. According to him existing pleadings are sufficient to indicate that defendant has understood the claim of plaintiff regarding sensitization by tin of the mirror manufactured by it. Subsequent event of amendment in claim No.1 can be taken note of in this case without amending the pleadings of this case.

The Defendant contended that the plaintiff is seeking amendment in claim no. 1 without amending the plaint, which is not permissible under the law. It was further contended that in the order dated 10th September, 2009 it has been categorically mentioned that the amendment does not attract the provisions of Sections 58 and 59 of the Patents Act; meaning thereby amendment in claim no. 1 was not allowed under the said provisions of Patents Act. Accordingly, amendment can be read only in CS(OS) No.593/2007 and not in other proceedings. Amendment in claim no. 1 permitted by the Court was not recorded in the Patent Office. Certified copy of the Patent Ex.PW1/3 has been issued by the Patent Office in the month of March, 2009, which does not contain amended claim no.1. This indicates that amendment was not allowed under Sections 58 and 59 of the Patents Act. Amendment could at best be read as an amendment of claim No.1 in that particular suit and not in patent records. It was further submitted that plaintiff has to amend claim no. 1 in this case and for the said purpose he has to file appropriate application under Order 6 Rule 17 CPC seeking amendment in claim no.1 which application is, otherwise, not permissible in this case as the trial has already commenced, inasmuch as, plaintiff's witnesses have already been cross- examined. The only contention acceptable under the law is that a plaint can be amended after the start of trial when the plaintiff had exercised due diligence and in spite of that he could not seek the amendment earlier. In the instance case, plaintiff was well aware of the order dated 10th September, 2009; whereas plaintiff's evidence was concluded in this case on 21st July, 2011, much thereafter. In any case even if such an amendment is permitted in the present suit the defendants have to respond to such amendment by filing amended written statement, inasmuch as, have to cross examine the Plaintiff's witnesses on this point. It was further contended that the plaintiff cannot be allowed to bring on record the amended claim no. 1 in this case indirectly so as to prejudice the defendants. Under the Patents law a patent can be obtained either in a product and/or in a process. Claims Nos.1 to 8 in the suit reflect product patents; whereas claim Nos. 9 to 20 are the process patent. By adding tin in the product claim no. 1, the plaintiff is trying to expand its monopoly even in a product having layer of tin by way of such amendment, which is not permissible under the law.

After considering the contentions of both the parties, the Court was unable to persuade itself to accept the contention of the plaintiff that the amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, can be read in this case without amending the pleadings of this case. Court observed that it is well settled that a case is decided on the facts involved therein as are emerging from the pleadings duly proved by the evidence adduced in support thereof. No judicial notice of the facts emerging from the pleadings and the evidence led in some other case can be taken for deciding the controversy between the parties in a different case. It is the fact pleaded and the evidence led in that particular case alone which has to be considered. Judicial pronouncements can be referred to at the bar in support of a legal preposition but the facts involved therein cannot be read as the facts of such cases where such reports are referred. Subsequent events can be considered only if the same are brought on record by seeking necessary amendment in the pleadings and not by noticing the same from the facts emerging from the pleadings and the documents of other cases, which may have been referred to in the reports. Even though plaintiff is at liberty to refer and rely on the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 in support of law laid down therein but the fact remains that the amended claim no. 1 cannot be read in this case. Judgment has to be pronounced in this case on the pleadings and the evidence adduced i.e. either documentary or ocular, in this case. It appears that plaintiff was conscious of this fact and for this reason only plaintiff had expressed its desire to amend the plaint initially, as is evident from the perusal of order dated 5th February, 2010. However, subsequently, on 3rd May, 2010 Plaintiff made a statement that he does not intend to file any application for amendment. Consequently, issues were framed. Merely because amendment of the pleading would result in delay in disposal of the suit by itself cannot be made a ground to adopt a shortcut by reading the amended claim No.1 as permitted in CS (OS) No. 593/2007 in the present case, without amending the pleadings. Plaintiff cannot be permitted to achieve its objective of amending the claim no. 1 in this case indirectly.

If the matter is viewed from another angle then also the course adopted by the plaintiff cannot be permitted. Amendment in claim no. 1 as allowed in CS (OS) No. 593/2007 has yet not been recorded by the Patent Office in its record. Certified copy of patent, issued by the Patent Office after more than 6 months of the order dated 10th September, 2009, contains un-amended claim no.1. It is this certificate which has been placed on record in this case and has been proved. Plaint also contains un-amended claim. Evidence led by the parties, which is in consonance with the pleadings of the parties, alone can be read at the stage of final adjudication of the matter. There is no gain saying in reiterating that evidence led beyond the pleadings cannot be looked into. Accordingly, the amended claim no. 1 cannot be read in this case without plaintiff taking necessary steps to get the claim amended in this case as well.

For the foregoing reasons, the Court held that plaintiff though can refer the order dated 10th September, 2009 passed in CS (OS) No. 593/2007 at the time of hearing but same cannot be permitted to be taken on record as a document so as to read the amended claim No.1, in this case. Amendment in claim no. 1, as permitted in CS (OS) No. 593/2007, cannot be read as amended claim No.1 in this case. As regards permission to the plaintiff for placing on record certified copy of amended patent no. 190380 as and when received from the Patent Office, the same also cannot be granted at this stage. However, plaintiff is at liberty to file appropriate application as and when he receives the certified copy from the Patent Office.

Accordingly application was disposed of in the above terms. Therefore Along with I.A. No. 13631/2011 (u/Sec. 151 CPC) by Defendants) became infructuous and was disposed of as such.

Article Source: http://www.articlesbase.com/patents-articles/amendment-of-claims-in-infringement-suit-whether-permissible-without-amending-the-plaint-5361866.html

About the Author

Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at sudhir@aswal.com. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.

Alcohol Advertising, packaging and Labelling requirements in India

The minimum legal age to purchase liquor in India ranges from 18 years in some state to 25 years in others. Under Indian Law, there are restrictions on advertising of alcohol. With effect from September 8, 2008, the Cable Television Network (Regulation) Amendment Bill has completely prohibited cigarette and alcohol advertisements in India through television. Some states allow advertising through bill boards, hoarding etc. subject to many restrictions. Further another mode of liquor promotion in India is through surrogate advertising (brand name promotion) through advertising bottled waters, juices, soda etc. and promoting sports and other events. There is lot of hue and cry over surrogate advertising as major thrust in such advertising is on liquor brand promotion. The government controlled channels are very cautious while broadcasting any surrogate advertisement. The available mode of advertisement is through product placement in the liquor vends, bars and sign boards.
The latest avenue for advertisement for alcohol brands is Social Media i.e. facebook, twitter etc. that allow access to target consumer directly. These platforms are exploited for brand promotion though contests and other innovative promotional activities. No specific regulations are made to check social media yet.
Alcohol (whether manufactured locally, bottled or Imported) is subject to the labelling provisions under the Standards and Weight and Measures (Packaged Commodities) Rules, 1997.
The labelling declaration must include:
a) Name and address of the Manufacturer, Packer or Importer
b) Generic and common name of the packaged commodity (i.e. Whisky/ Rum/ Vodka/ Scotch/ Wine/ Beer)
c) Net quantity in terms of standard units of weights and measures (in millilitres and litres) when packed.
d) Month and year of manufacture
e) Maximum Retail Price (MRP)
As the excise and other applicable laws in respect of alcoholic goods differ from one state to other, printing of "MRP" is not mandatory provided that the retailers display the retail sale price of the package prominently in their premises.
In addition, the standards of Weights and Measures (National Standards) Rule of 1998 prescribe that the alcoholic strength be declared on the label as percentage of volume and stated as "xx % Vol".
A warning as to injurious effects of alcohol must be printed on every unit (bottle/ packet). In some States safety holograms certifying that due duties/fees has been paid and the liquor is of prescribed standard, as approved by Excise Commissioners are required to be printed on each unit.

How to tackle Non Obviousness Objection by USPTO

Non Obviousness is a ground against patentability of an invention defined under 35 U.S.C. §103 of US Patent Law. This is equivalent to lack of inventive step in the invention that renders invention obvious of person skilled in art.

The Flash of Genius Doctrine or Test was a test for patentability used by the United States Federal Courts for over a decade. The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen. It was eventually rejected by the 1952 patent statute's section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the Federal Circuit stated that this portion of section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).

US Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) outlined factors that a court will look at when determining obviousness and non-obviousness in the United States, and are commonly referred to as the "Graham factors". As per the Graham Factors, the obviousness should be determined by looking at

a) scope and content of the prior art;
b) level of ordinary skill in the art;
c) differences between the claimed invention and the prior art; and
d) objective evidence of non-obviousness.

Factors that show "objective evidence of non-obviousness" are:
i. commercial success;
ii. long-felt but unsolved needs; and
iii. failure of others

Later on, the Federal Circuit in Winner Int'l Royalty Corp. v. Wang (202 F.3d. 1340, 1348 (Fed. Cir., 2000), (Teaching Suggestion Motivation Test) laid down that there must be a suggestion or teaching in the prior art (itself) to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements. As almost all inventions are some combination of known elements, the TSM test requires that some suggestion or motivation exists to combine known elements to form a claimed invention. The Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.

But the U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test. The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of non-obviousness is the Graham analysis.

Therefore, it must be established that there was no teaching, suggestion or motivation in the prior art that would have led one of the ordinary skill (the Applicant) to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. It should be established that there is neither a simple substitution of one known element for another to obtain predictable results nor use of known technique to improve similar devices (methods or products) in the same way. The claimed invention does not apply any known technique to a known device (method or product) ready for improvement to yield predictable results.

How to Keep Patent fiing and prosecution cost in check in India

How to keep Patent filing and prosecution cost in check in India

While filing the Patent Application in India, if certain procedural formalities are completed in time, they may result in cost saving in filing as well as later prosecution of Application. It is therefore necessary to complete the procedural formalities within stipulated time frames of entering Application in India.

Beside the basic mandatory requirements for filing Patent Application in India i.e.
Name, address, and nationality of applicant / Inventor; the complete specification must be provided in English and where the complete specification is on basis of priority document/ PCT Application; a certificate as to English translation must be provided (on basis of which your attorney can file a verification with Indian Patent office)

Other requirements that are to be complied with certain time after filing of Application are:

Priority Documents:
In case of PCT Application; the certified copy of priority documents are to be filed within 31 months from date of priority (where PCT/IB/304 not issued or supplied) along with their English translation, certificate of translation. In case of Conventional Application the Priority document or English translation thereof (where applicable) along with verification in support to be preferably filed along with the application or within 3 months of filing.

Statement and undertaking as to Foreign Applications:
Details of all corresponding foreign application for same or substantially the same invention (filed by applicant or any person through which Applicant claims or drives title) within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India;

Assignment Document:
Proof of right in favour of applicant from inventor (where the applicant is distinct from inventor) in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application;

Power of Authority:
Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India (legalisation/ notarisation not necessary) preferably to be filed within a month or to be filed mandatorily within 3 months if requisitioned by Controller otherwise the application shall not proceed towards publication.

Once the above requirements are complied; the application can proceed smoothly and Applicant can save cost towards filing petition for enlargement of time/ condonation of delay/ correction of procedural error. Non compliance of certain requirements also opens the application for any opposition and revocation.

To keep the cost in check, it would be advisable to seek clarification from Local Attorney whether they shall be charging additionally for compliance after filing or any late filing of documents. Accordingly cost estimate should be evaluated for Patent filing in India.

Enforcement of Trademark Rights

Under Indian Laws statutory protections is available to both registered marks as well as unregistered marks. In respect of trademarks Indian law provides both civil as well as criminal remedies for taking action against any infringement of a trademark.

Appropriate forum for infringement of Trade Mark:
A suit for infringement of trademark has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen.

Before Trademark Registry- Administrative Remedy
1. Opposition (before the Registrar)- Opposition can only be done after publication of the trademark and within 3 months of date of availability of Journal. One month extension is available if sought before the expiry of 3 months time.

2. Cancellation (before the Registrar as well as Appellate Board)- Cancellation on the ground of non-use for a period of 5 years and 3 months and proof of intention on part of the registered proprietor not to use the trademark at the filing date and non-use till the cancellation petition.

Before Courts- Civil Remedy
Under common laws, the proprietor of a trade mark, whether registered or unregistered, may sue for passing off in respect of any trade mark used by defendant that is identical with or deceptively similar to his trade mark. The registered proprietor also has the remedy to take infringement action.

1. Injunction- Ex parte/ permanent
2. Damages
3. Anton Pillar Order,
4. Seizure of goods
5. Rendition of accounts

Before Courts- Criminal Remedy
Besides Civil remedies, the proprietors of the trademark as well as licensed users also have the option to initiate criminal prosecution against the infringers etc. Following acts have been recognised as offences, against which a criminal complaint can be registered:-
• Falsifying a Trade Mark;
• Falsely applying a Trade Mark;
• Making or possessing instruments for falsifying a Trade Mark;
• Applying false trade description;
• Applying false indication of country of origin;
• Tampering with an indication of origin already applied to goods;
• Selling goods or possessing or exposing for sale of goods falsely marked;
• Falsely representing a trade mark as registered;
• Improperly describing a place of business as connected with the Trade Marks Office;
• Falsification of entries in the Register.
Procedure and punishment
The complaint for any of the above offences can be made/filed before the Magistrate within whose territorial jurisdiction the offence is committed.

Besides confiscation of goods and machinery, the Code of Criminal Procedure, 1973 also provides for imprisonment starting from 6 months to 3 years for the offences or fine or both.

Confiscation of imported goods bearing counterfeit marks

Indian Customs Act, 1962 provides for confiscation of imported goods bearing counterfeit marks if upon a representation made to Chief Customs Officer, he has reasons to believe that the alleged goods bear a false/ counterfeit Trade Mark. The Chief Customs Officer may require the importer of the goods or his agent to produce any documents in their possession relating to said goods along with informations as to the name and address of Consignor as well as importer of said goods and may initiate proper action for non compliance or offence

Trademark Registration in India

Following stages are ordinarily encountered while registering a trademark in India:
1. Filing of trademark application in India and issuance of fee receipt with application number
2. Issuance of official acknowledgement ordinarily within 30 days
3. Issuance of Official letter with objections, if any
4. Replying to official letter within 1 month
5. Hearing, if required
6. Provisional acceptance of trademark application subject to advertisement in Journal for inviting oppositions
7. Advertisement in the Indian trademark Journal
8. Opposition, if any, within 3+1 months from date of publication of the application
9. Registration of Trademark, if no opposition if filed or is set aside
10. Issuance of Registration Certificate

Express Examination of Application
Indian Trademarks law allows express examination of the trademark application on filing of additional official fee along with a declaration stating the reason for such request. Within 3 months from the date of request the Registrar shall issue an Examination report.

Advertisement of Trademark Application
After the trademark application has been provisionally accepted by the Registrar of the Trademarks, the application shall be advertised in the Indian Trademarks Journal inviting opposition from public to the trademark.

Trademark Opposition
After publication of the trademark in the Indian Trademarks Journal, the trade mark remains open to opposition by public for a period of 3 months, further extendable for a period of 1 month upon prior request.
On filing of notice of opposition the application shall not proceed towards registration until the opposition is set aside.

Registration of Trademark
If there is no opposition against the registration of the trademark application or the opposition proceedings have been decided in favour of the Applicant, the Trade Marks Registry shall accept the trademark and issue a registration certificate to that effect.

Term of Registration & Renewal
The duration of registration of a trademark is 10 years from the date of filing of application in India and is further renewable for every 10 years thereafter.

Trademark filing requirements in India

Following are the basic requirements for filing of a trademark application in India:
1. Name, address, nationality and particulars of the applicant (whether individual, society, trust, partnership firms or company)
2. International Class
3. Description of goods or services
4. User date in India or proposed to be used
5. Details of priority, if any, including application number, date of filing and country of filing
6. Translation and transliteration in English, if mark is not in Indian language

Power of authority has to be stamped as per Indian Stamps Act and preferably should be filed within one month from date of filing. Notarisation or legalisation is not mandatory.

Tradmark:
Specimen of the trademark for Agent:
• 12 copies if in black and white, if provided in print form or single copy if provided soft copy vide email
• 12 copies if in colour, if provided in print form or single copy if provided soft copy vide email
• For shape of goods 3-5 different views ( top, bottom, left side, right side and front view)

Description of goods or services
Under Indian trademarks law, the specification of goods or services must be within 500 characters. In event the description exceeds 500 words prescribed fee must be paid for each additional character along with an application to that effect.

Trademark Applications in India

Trademark Applications in India can be classified under two categories depending upon their priority claim.
1. Ordinary trade mark application without any priority
2. Conventional trade mark application- has to be filed within 6 months from date of filing of conventional application

In case of conventional trademark application, certified copy of the priority document has to be filed within 2 months from the date of filing of application in India.

Besides above trademark applications, there are also certification trademarks and collective trademarks that are registrable in India.

Trademark offices in India
There are five trademark registries in India located at New Delhi, Ahmedabad, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before trademark registry within whose territorial jurisdiction the agent/ attorney for applicant is located.

Trade Dress And Its Interpretation By Courts In India

Trade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, colour, graphic design or even the smell of the product.
The concept of trade dress was first brought in under the Trademarks Act, 1999 under the definition of ‘Mark’ which replaced the previous Trade and Merchandise Marks Act, 1958.

A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colours and any combination thereof. India allows registration in respect of goods as well as service marks, shape of goods, packaging or combination of colours.

What is a Well Known Mark

The concept of “well known mark” has been introduced in India and amended Section 2 (zg) defines a well known mark as:
“Well-known trademark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services.”
Consideration for determining a “well known mark”:
While determining whether the mark is well-known mark, the registrar will take in to consideration the following:
(a) The knowledge or recognition of the alleged well known mark in the relevant section of the public including knowledge obtained as a result of promotion of the trademark.
b) The duration, extent and geographical area of any use for that trademark.
c) The duration, extent and geographical area for any promotion of the trademark including advertising or publicity and presentation at fairs or exhibition of the goods or services in which the trademark appears.
(d) The duration and geographical area of any registration of any publication for registration of that trademark under this Act to the extent that they reflect the use or recognition of that trademark.
(e) The record of successful enforcements of the rights in that trademark, in particular the extent to which the trademark has been recognized as a well known trademark by any Court or Registrar under that record.
Whereas a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well known trademark for registration under this Act.
“Relevant section of Public” may be actual or potential consumers of, persons involved in channels of distribution of or business circles dealing with the type of goods or services to which the mark is applied.
The Registrar is not required to consider the following facts while determining a well known trademark.
a) The Trademark has been used in India
b) The Trademark has been registered
c) The application for registration of the Trademark has been filed in India.
d) The trademark is well known in or has been registered in, or in respect of which an application for registration has been filed in any jurisdiction other than India or
e) The trademark is well known to the public at large in India.

Main requirements of a Trade Mark:

The two main requirements of a trade mark are:
(i) It must be distinctive (adapted to distinguish the goods/services of the applicant from that of others) and
(ii) It must not be deceptive.

Therefore while selecting a trademark, words that are directly descriptive of the goods, common surnames or geographical names should be avoided as these confer weaker protection to the proprietor even if registered.

Prima facie, a word having a direct reference to the character or quality of goods is not registrable. However it is registrable, if it has acquired distinctiveness through long and continuous use. Under Indian Trademarks law more significance has been given to “use” of the mark than “filing of application towards registration”.

What is a Trademark

A ‘Trademark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It also denotes the origin of goods and carries goodwill of the business in respect of which it is used.
What is a Mark:
A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colours and any combination thereof. India allows registration in respect of goods as well as service marks, shape of goods, packaging or combination of colours.

Further a single multiclass application can be filed in India in respect of all the international classes.

Trademark law in India
Indian Trademark Law has been codified in conformity with the International Trademark Law and is about to undergo an amendment to be at par International Trademark Law. India has also signed Madrid Protocol that will allow Foreign Applicants to file an International Application designating India (once notification is issued in this regard).

Enforcement of Patent Rights in India

Patent infringement proceedings can only be initiated after Grant of patent in India but it may include claim retrospectively from the date of publication of Patent in Indian Patent Journal subject to law of limitation. Under the Limitation law does not allow action/suits in respect of matter where cause of action had arisen more than three years from the date of suit.

Ordinarily the following acts are considered amounting to infringement of an invention: -
• Making
• Using
• Selling
• Distributing
• Importing
• Offering any of the above
All persons or incorporations directly or indirectly involved in any of the above stages may be held liable for infringement.

Appropriate Courts for Patent Infringement:
A suit for infringement has to be filed in a District court or High court (depending upon pecuniary jurisdiction) within whose territorial jurisdiction the cause of action has arisen. However, as soon as a counter claim for revocation of patent is filed against the suit for infringement of patent, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to High Court for decision.

Burden of proof in case of Patent Infringement:
The onus of establishing the infringement is on the plaintiff. However, in case of patent involving a process for obtaining a product where the plaintiff first establishes that the products obtained are identical, the court may shift onus on the defendant.

Interim Injunction in case of Patent Infringement:
The Court may also allow interim injunction against the infringer.

Defences to Infringement of Patent in India
The following defences are available in India as a defence in Patent Infringement:
1. Any of the grounds under which Patent can be revoked
2. By govt of India or for Govt. of India for its own use
3. Experiment or research
4. Imparting instructions to pupils
5. For Patent in respect of Medicine or drug, for its own use of Govt. of India, for distribution in Govt. Dispensary and hospitals or by gazette notifications to other dispensaries, hospitals and medical institutions.

Compulsory Licensing for Patents

After 3 years from Grant of Patent compulsory Licensing can be granted by Controller of Patents to any interest persons, including the license under the Patent, on the following grounds:

(a) The reasonable requirements of the public with respect to the patented invention have not been satisfied; and
(b) The patented invention is not available to the public at a reasonable price.
(c) The invention is not worked commercially to fullest extent in territory of India.
The circumstances constituting "failure to meet the reasonable requirements'' of public in respect of a patent are as follows:
(i) Inadequate manufacture in India or failure to grant licenses on reasonable terms with in a period of 6 months from applying by the applicant resulting in:
(a) Prejudice to an existing trade or industry or its development,
(b) Prejudice to the establishment of a new trade or industry in India,
(c) Prejudice to the trade or industry of any person or class of persons,
(d) Demand for the patented article not being met adequately by local manufacture,
(e) Failure to develop an export market for the patented articles made in India,
(f) Prejudice to the establishment of commercial activities in India;

(ii) Prejudice to the establishment or development of trade or industry in India in goods not protected by the patent arising from restrictive conditions imposed by the patentee;
(iii) Non-working of the patent in India on a commercial scale;
(iv) Demand for the patented articles being met by importation from abroad; and
(v) Commercial working of the patented invention in India being hindered or prevented by import of the patented articles from abroad.

Grant of Compulsory license is for the remaining term of patent unless a shorter period looks reasonable and required in case to the Controller.
While granting the license the Controller shall take into account the nature of invention, time elapsed, ability of applicant, his efforts for obtaining a license on reasonable terms. While granting a compulsory license reasonable royalty is also paid to the patentee having regard to nature of Invention, its utility, expenses incurred in maintaining patent grant in India and other factors.
Normally request for grant of Compulsory License is published and Patentee and other interested persons are afforded reasonable opportunity to defend the grant. But in case of national emergency and other urgent condition in public interest the Controller may first grant the License and then notify the Patentee and other interested persons.
Under special circumstances of medical emergency supported by notification by foreign country in this regard controller may grant compulsory license to meet the medical emergency in that country.

Statement as to working of Patent in India:

Patentee or his licensee in India is required to file a statement as to working of patent in India as to extent to which the invention has been commercially worked in India on FORM 27. Ordinarily the statement in respect of a calendar year (from January to December) has to be filed by next March 31 of calendar year. But, if the information is required by the Controller specifically it has to be supplied within 2 months of such requisition unless an extension has been sought as well as provided by the Controller.

Patent procedure in India

Patent prosecution in India includes the following stages:
1. Filing of patent application;
2. Publication of patent application on request or after 18 months from date of filing or priority whichever earlier, subject to filing of duly stamped power of authority, abstract as per Indian patent law & practice and specification in English or Hindi language;
3. Filing of request for Examination within 48 months from date of application or priority whichever is earlier;
4. Issuance if First Examination Report (FER) containing all the objections to grant of patent for complying within 12 months from date of issuance of same;
5. Responding to FER and compliance within 12 months within 12 months of FER;
6. Issuance of any further Examination report/s till all objections are complied as per satisfaction of the Examiner;
7. Responding to further Examination reports till all objections are complied or objections are contested within 12 months from date of issuance of FER;
8. Interviewing the Examiner or attending discussion;
9. Hearing with Controller, if requested within prescribed time and objections are contested and Examiner is not satisfied even after interviewing or discussion;
10. Acceptance of patent application on or before final date of acceptance i.e. 12 months from date of issuance of FER;
11. Grant of Letter Patent Document by Patent office;

PCT National Phase Patent filing requirements in India

The basic mandatory requirements for filing a PCT National Phase Patent Application in India are as follows:
1. Name, address, particulars and nationality of applicant/s for patent;
2. Name, address and nationality of inventor/s of patent;
3. Complete Specification (in English) with description, claims, drawings, abstract as per the Indian Patent Law and Practice otherwise the application shall not be published;

Other requirements:
4. Declaration as to inventorship within 1 month of filing application;
5. Certified copy of priority documents to be filed within 31 months from date of priority where PCT/IB/304 not issued or supplied;
6. English translation of priority documents along with verification in support within 31 months from date of priority;
7. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India;
8. Proof of right in favour of applicant from inventor (where the applicant is distinct from inventor) in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application;
9. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India (legalisation/ notarisation not necessary) preferably to be filed within a month or to be filed mandatorily within 3 months if requisitioned by Controller otherwise the application shall not proceed towards publication.

Conventional Patent filing requirements in India

The basic mandatory requirements for filing a Conventional Patent Application in India are as follows:
1. Name, address, particulars and nationality of applicant/s for patent;
2. Name, address and nationality of inventor/s of patent;
3. Complete Specification (in English) with description, claims, drawings, abstract as per the Indian Patent Law and Practice otherwise the application shall not be published;

Other requirements:
4. Declaration as to inventorship within 1 month of filing application
5. Priority document or English translation thereof (where applicable) along with verification in support to be preferably filed along with the application or within 3 months of filing, to be filed mandatorily within 3 months if requisitioned by Controller;
6. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India;
7. Proof of right in favour of applicant from inventor (where the applicant is distinct from inventor) in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application;
8. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India (legalisation/ notarisation not necessary) preferably to be filed within a month or to be filed mandatorily within 3 months if requisitioned by Controller otherwise the application shall not proceed towards publication.

Ordinary Patent filing requirements in India

The basic mandatory requirements for filing an ordinary patent application in India are as follows:
1. Name, address, particulars and nationality of applicant/s for patent;
2. Name, address and nationality of inventor/s of patent;
3. Provisional specification or complete specification (in Hindi or English) with description, claims, drawings, abstract as per the Indian Patent Law and Practice otherwise the application shall not be published;

Other requirements:
4. Declaration as to inventorship within 1 month of filing application or along with complete specification where completed specification is filed after filing a provisional specification;
5. Proof of right in favour of applicant from inventor (where the applicant is distinct from inventor) in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application;
6. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India;
7. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India (legalisation/ notarisation not necessary) preferably to be filed within a month.

Different types of Patents in India

Patents can be classified under three categories on basis of their priority claim:
1. Ordinary patent application (without any priority claim)
2. Conventional patent application (with priority claim from a conventional country )
3. PCT national phase patent application (with priority claim and based on PCT application)

Ordinary Patent Application
Ordinary patent application in India can be filed along with a provisional or complete specification. It is further distinguishable from other patents that it does not claim any priority from any other application.

Convention Patent Application
Convention Patent Application claims priority from a convention application and has to be filed in India within 12 months from date of priority and has to be accompanied by a complete specification.

PCT National Phase Patent Application
PCT national phase patent application has to be filed in India after filing of PCT application in WIPO and within 31 months from the date of priority and has to be accompanied by a complete specification.

what is a Patent specification

Specification is a technical disclosure statement that describes the whole invention that the applicant is claiming. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention. It also enables a person ordinarily skilled in the art to understand and perform the invention.

Specifications are of two types:
(i) Provisional: It ordinarily contains the brief disclosure of the invention and is filed to claim the priority for the invention while the complete specification is developed and the patent application is prepared and filed. It does not contain claims and have to be followed by a complete specification within 12 months.
(ii) Complete: It describes the whole invention that the applicant is claiming. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention.

Patents in India

Patent grants statutory monopolistic rights to Patentee in with respect of an invention. Patent rights encourage research and development by providing exclusive rights to patentees to commercially make use of the inventions as well as restrain others from using the same without permission of the Patentee. Patent rights act as economic incentives to patentee in lieu of disclosure of invention to public so that the same could be used for further scientific and technological research and development. Patents being statutory rights are enforceable only within the territorial jurisdiction of the country/state where they have been granted. It is possible to claim priority from an application filed in a country/ state and file Conventional or PCT Application on basis of said application.

For the purpose of the Patents, invention means a “new product or process” involving an “inventive step” and “capable of industrial application”. The invention must be novel. The "Inventive step must involve some technical advance as compared to the existing knowledge or have economic significance or both and hence making the invention not obvious to the person skilled in the art. Capable of industrial application means that the invention must be capable of being made or used in an Industry.

Not all inventions are Patentable. For an invention to be patentable, it must be new, useful and non-obvious and must pass through certain parameters prescribed by Patent Act for Patent rights in India. Section 3 of the Indian Patent Act provides for Inventions that are not considered patentable.

a. an invention which is frivolous or which claims anything obvious contrary to well established natural laws;
b. an invention the primary or intended use or commercial exploitation of which would be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
c. the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
d. the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.
Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;".;
e. a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
f. the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
g. (omitted)
h. a method of agriculture or horticulture;
i. any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
j. plants and animals in whole or any part therefore other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
k. a mathematical or business method or a computer programme per se or algorithms;
l. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
m. a mere scheme or rule or method of performing mental act or method of playing game;
n. a presentation of information;
o. topography of integrated circuits;
p. an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.”

Section 4 also bars invention relating to atomic energy from patentability.

Supreme Court of India adjudicates on dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law

Author: Sudhir Kumar

Supreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors..

The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and "appeals against order passed by Controller of Patents under pre Grant or post grant opposition".

It would be wise to state the brief facts of the matter in tabular form for better understating of the matter.

26.03.1999 Section 116 of the Indian Patents Act, 1970 amended by the Patents (Amendment) Act, 1999 w.e.f. March 26, 1999 that provides for appeal to High Court against orders passed by the Controller of Patents. At that time only provision/remedy to oppose the grant of patent was pre grant opposition.

14.6.2000 J.Mitra & Company Pvt. Ltd. the appellant herein filed an application for grant of Patent

25.06.2002 Patents (Amendment) Act, 2002 was promulgated by Legislature and to hear appeals against orders passed by the Controller Appellate Board established under Section 83 of the Trade Marks Act, 1999 was made the Appellate Board for the purposes of Patent Act (under Section 116) and under Section 117A provision was made that appeal against order of Controller under Section 25 (pre Grant Opposition) and other provisions shall lie only in the Appellant Board. But Section 116 and 117A were not notified and brought into force. Still at that time only provision to oppose the grant of patent was pre grant opposition under Section 25 and same brought into force vide Notification dated 20.5.2003.

20.11.2004 The application was notified by the Patent Office after scrutiny

Span Diagnostics Limited opposed the application under the provisions of Section 25 as stood then (Pre Grant Oppositon)


04.04.2005 The Legislature enacted the Patents (Amendment) Act, 2005 w.e.f. 01.101.2005 but not all provisions were simultaneously brought into force. Only certain sections of the Patents (Amendment) Act, 2005 were brought into force. Provisions for Pre Grant as well as Post Grant Opposition were made. But Section 117A was amended and expression Section "25" was replaced with Section 25(4),effectively meaning that appeal shall lie against order passed under Section 25(4) i.e. order passed by Opposition Board in Post Grant Patent. The Legislature allowed appeals only against decision passed by the Controller in a Post Grant Opposition not pre Grant Opposition. Though the provisions of Section 25 were brought into effect, but the provisions of Section 116 and 117A were not brought into effect.


21.03.2005 Pre-grant opposition was filed under Section 25(1) of the Patent Act. It is to be noted that Patent (Amendment) Act, 2005 was enacted only after filing of this opposition on 04.04.2005 but was brought into effect from 01.01.2005. Therefore only provision available for opposition on such date was under the Patent (Amendment) Act, 2002.

23.08.2006 Pre Grant Opposition was rejected by the Controller of Patents. And as the Section 116 and 117A was not enacted on such date only remedy was to file Appeal under the provisions of Section 116 of Patent (Amendment) Act, 2002 that provides for filing the appeal before the High Court.

22.09.2006 The patent was granted. From here contention of Appellant arises, that after grant of Patent

19.10.2006 Appeal filed before the High Court against the order passed by the Controller of Patents in the patent opposition being FAO no. 292/2006 & 293/2006.

02.04.2007 Provisions of Section 116 and 117A, brought into effect by notification by the Legislature

03.04.2007 Provisions of Section 117G, that called for transfer of all pending proceeding against any order or decision of Controller and all cases pertaining to revocation other than on a counter claim in a suit for infringement and rectification of register pending before any High Court to the Appellate Board was brought into effect by notification by the Legislature. The Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.


In words of Hon'ble Supreme Court "This matter is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005."

The enactment of Patents (Amendment) Act, 2005, introduced for the first time a dichotomy in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and also as to "appeal" that may be preferred against any orders that may be passed by the Controller of Patents in opposition proceedings. No doubt, the Amendment Act of 2005 brought major structural change in the Indian Patent Law as per India's Obligation under WTO/GATT. As per the amendment the appeals against orders passed under the post-grant opposition by the Controller shall lie before the Appellate Board and not to the High Court. But the enabling provision i.e. Section 117A was not brought into force till April 2, 2007. Therefore, appeal if any has to be preferred before the High Court under Section 116 of the Patent (Amendment) Act, 1999.

Though the provisions for an appellate forum to hear appeals against order passed by the Controller of Patents were enacted by legislature in 2002, the Govt was not able to start functioning of the Appellate Tribunal till April 2007 and hence Section 116 and 117A were not brought into force.

The Legislature intended to provide for only one statutory appeal against order passed by the Controller that too in a Post Grant Opposition to the Appellate Board but by not bringing Amending Section 61 into force till April 02, 2007, appeals filed during the interregnum i.e. between 01.01.2005 to 01.04.2007, as in this case, became vulnerable and liable to be dismissed as misconceived as contended by the appellant before Supreme Court.

Supreme Court observed "quite often the commencement of an Act is postponed to some specific future date or to such date as the Appropriate Government may, by notification in the Official Gazette, appoint. At times provision is made for appointment of different dates for coming into force of different parts of the same Act."

"An Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation."

The Court while applying the above tests to the present case found that for the first time a dichotomy was introduced in the Patent Law by providing vide Section 25(1) for "opposition to pre-grant" and vide Section 25 (2) for "opposition to post-grant" of paten under the Patents (Amendment) Act, 2005. Earlier, there was no "post-grant opposition" and the only provision of challenge was a "pre-grant" challenge under Section 25 (1). By Patents (Amendment) Act, 2005, under Section 25(2) right is granted to an "aggrieved person" to challenge the patent even after its grant and the grounds of challenge are identical to Section 25(1) of the Act. Therefore giving a right after grant but limiting the right to only an "aggrieved person" and fixing the limitation period to one year after grant.

Though the Legislature further intended to limit the right to appeal only to post grant oppositions and obliterate appeal from "pre-grant proceedings" but the Executive did not bring the enacted law (Chapter XIX having provisions for appeals to the appellate board i.e. Section 116 and 117 A to H) into force vide a notification simultaneously along with other provisions of the Act especially Section 25 (1) and (2). As a result the chapter XIX containing amended Sections 116 and 117A(2) were not brought into force only on 2.4.07 (and 117G on 03.04.2007) whereas the concept of "Pre grant" and "Post-grant" oppositions were already brought into force w.e.f.1.1.2005. In words of the Hon'ble Supreme Court:

"This is where the legislative intent got defeated during the interregnum."

During that period only the Respondent filed appeals against the orders rejecting the Pre Grant Oppositions by Controller of Patents being FAO No. 292/06 and 293/06 before the High Court under Section 116 of the Patents (Amendment) Act, 1999 , as it stood on date of filing of appeal i.e. October 19,2006". On the date of filing of appeal, the amended Section 117A, suggested by Patents (Amendment) Act, 2005, was not brought into force, therefore, the Patents (Amendment) Act, 1999 prevailed under which an appeal lay before the High Court.

The Supreme Court held "Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time, we are of the view that the first appeals, filed by respondent no.3 in the High Court being FAO No.292/06 and FAO No.293/06, would remain in the High Court. The said appeals would be heard and disposed of by the High Court in accordance with law under Section 116 of the said 1970 Act as it stood on 19.10.06. The High Court will hear and decide the validity of the Order passed by the Controller dated 23.8.06 rejecting "pre-grant opposition" filed by respondent no.3. We are informed that there are hardly one or two matters of this nature which are pending.

Therefore, we are of the view that respondent no.3 cannot be let without remedy. In the special circumstances of this case, particularly when after 2.4.07 appeals against orders rejecting "pre-grant opposition" are not maintainable and particularly when FAO No.292/06 and FAO No.293/06 were filed by respondent no.3 prior to 2.4.07 under the old law, we are of the view that these two appeals shall be heard and decided by the High Court in accordance with law. The Appellate Board after 2.4.07 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4), i.e., in cases of orders passed in "post-grant opposition". Therefore, there is no point in transferring the pending FAO No.292/06 and FAO No.293/06 to the Appellate Board which has no authority to decide matters concerning "pre-grant opposition". Moreover, it may be noted that even Section 117G, which refers to transfer of pending proceedings to the Appellate Board, is also brought into force vide Notification dated 3.4.07. Keeping in mind the peculiar nature of the problem in hand, we are of the view that ends of justice would be subserved if the High Court is directed to hear and decide the appeals bearing FAO No.292/06 and FAO No.293/06 in accordance with law as it then stood, i.e., under Section 116 under Patents (Amendment) Act, 1999 against Orders passed by the Controller in "pre-grant opposition" proceedings.

The Section 6 of the General Clauses Act 1897 clarified the position of law and intent:

6. Effect of repeal.- Where this Act , or any Act made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then, unless a different intention appears, the repeal shall not—

....


c). affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or

The provision along with ratio laid down by Hon'ble Supreme Court in GSK case concerning the Exclusive marketing rights (GSK Case) made amply clear that where any enactment is repealed, it shall not affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed, unless, a different intention appears.

Applying the same ratio in the present matter, though the rights were accrued to respondent before the provisions of Section 116 as envisaged under Patents (Amendment) Act, 2005 was enacted, but the provisions of Section 117A made very clear that intention of legislature is different i.e. no appeal shall lie against any order passed by Controller of Patents in Pre Grant Oppositions.

The pendency of only very few such appeals against pre grant orders during the interregnum made the Hon'ble Supreme Court to keep the matter with the High Court. Otherwise, the interpretation of "appealable orders" under 117A read with 117G might have settled the position of law as to what about the provisions against which right to appeal is taken away subsequently.

Article Source: http://www.articlesbase.com/patents-articles/supreme-court-of-india-adjudicates-on-dichotomy-introduced-for-the-first-time-by-the-patents-amendment-act-2005-in-the-patent-law-1359496.html

About the Author

Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at sudhir@aswal.com or www.aswal.com. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.

Interpretation of Obviousness

Author: Sudhir Kumar

Definition:

Obviousness is a noun, derived from word obvious meaning easily seen, recognised or understood. The word obvious has originated from the Latin word “obvius” meaning “in the way”.

To interpret the doctrine of obviousness it is necessary to first understand the objective of grant of Patent.

Object of grant of patent is to encourage scientific research, new technology and industrial progress and for that object exclusive privilege is granted. At the same time before awarding patent for any invention it has to be considered that the invention must be novel, must involve an inventive step and must have industrial application. These requirements are to be strictly followed before a patent could be granted for any invention in any country all over the world.

INDIA

A. Obviousness under 1970 Act

Only a ground under opposition that too after grant and Revocation of Patents

The invention was defined under Section 2(1) (j) the Indian Patents Act, 1970;

(j) “invention” means any new and useful-art, process, method or manner of manufacture; machine, apparatus and other article; substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

As inventive step was not defined in an invention, there was no such provision during examination.

Only after advertisement of acceptance of complete specification within 4+1 months, under Section 25(1) (e) not having the inventive step is a ground for opposition.

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Absence of inventive steps is also a ground for revocation under Section 64 (1) (f) of the Patents Act:-

(f) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;


Therefore under the 1970 Act onus that the invention does not involve any inventive step was on the person interested.

B. Under the Patent Amendment Act in 2003 (that came into effect on 20.05.2003)

No change in the definition of invention till 2003

Definition of invention changed (Section 2(1) (j) now the “invention” means a new product and process involving an inventive step and capable of industrial application.

After which the inventive step was also considered during the examination.

And the Inventive step was defined under Section 2 (1)(ja) of the Patents Act

“inventive step” means a feature that makes the invention not obvious to a person skilled in the art”.

C. Further under the Patent Amendment Act, 2005 (which came into effect retrospectively 01.01.2005)

The Definition of Inventive step was further revised.

Now under Section 2(1)(ja) the “inventive step” means a feature of an invention that involve technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

Even the official manual of the Indian Patent practice acknowledges that “definition of inventive step has been enlarges to include economic significance of the invention apart from already existing criteria for determining inventive step”.

But the expression “or” denotes that economic significance has to be given similar importance as to technical advancement and both have to interpreted in terms of knowledge and skill of the person skilled in art. Further it is apparent from the intention of the legislature that either the economic significance or technical advancement has to be present for qualifying the invention under the inventive step.

D. Approach of Indian Patent Office

1. Considers novelty and inventive step as one or the same thing.
The Indian Patent Office considered the novelty and inventive step on the same lines which reflects in the examination report issued by them.

2. Gives importance even to “A” category citations in the ISR/IPER for construction of Inventive step.

In a mechanical manner the Patent Office gives importance to even ‘A’ category citations and requires elaboration and difference in terms of inventive steps with regards to such cited arts.

3. Requires characterization in the claims-

It has become the practice of the Indian Patent Office to require characterization clause in the main claim for determination of the inventive step. Wherein claims contains two portion one pre characterization one post characterization, the post characterization portion in considered to involve inventive step over pre characterization portion and thereon the dependent claims also relate to only post characterization portion.

4. As per the Manual of Indian Patent practice: The inventive step has to be determined in the following manner.

Has to be non-obvious when compared with the state of art,
State of mind (Flash of Genius) is to be looked into, the following question has to be borne into mind “would a non-inventive mind have thought of the alleged invention?” if answer is “no”, then the invention in non-obvious. (In other words whether the invention would have occurred to a person skilled in the art, if yes, then it is obvious.)

5. Whether the invention involves exercise of any skill or ability beyond than what is expected of a person skilled in the art. Combining the teaching of documents (Mosaics) with the art.

Although as per the manual of Patent practice for consideration and determination of the inventive step, the invention has to be looked as a whole and no conclusion should be made by taking individual parts of the claims that might be known or found to be obvious, but still the practice differs from the manual and without taking regard to whole claims/ invention, objections are raised and the Applicant is made to himself point out the inventive step in the invention.

INTERPRETATION OF OBVIOUSNESS IN FOREIGN COUNTRIES:

The expression “inventive step” is predominantly used for instance in European Union while the expression “non- obviousness” is predominantly used in United States of America. The assessment of the inventive step and non-obviousness varies from one country to another while the underlying basic principal remains the same. Therefore the practice of the different patent office differs from each other.

European Patent Office

Under Article 52(1) in conjunction with Article 56 of the European Patent Convention, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art. For assessment of the inventive step the European Patents Office follows the “Problem solution approach”.

Problem-solution approach:

In order to assess whether an invention involves an inventive step the Examining Divisions, the Opposition Divisions, and even the Boards of Appeal of the European Patents office apply the "problem-solution approach". The various steps included in this approach are:-

Identifying the closest prior art, i.e., the most relevant prior art;

Determining the objective technical problem, i.e., determining, in view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and

Examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

This step is conducted according to the "could-would approach". Under this approach, “the question to address” in order to assess whether the invention involves an inventive step is as follows:

Is there any teaching in the prior art, as a whole, that would (not simply could) have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves?

If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step.

The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This must have been the case for the skilled person before the filing or priority date valid for the claim under examination.

A set of rules regarding the approach taken by the United Kingdom courts was laid out by the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, in determining the requirements for inventive step:

Identifying the inventive concept embodied in the patent;
Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
Identifying the differences if any between the matter cited and the alleged invention; and

Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

UNITED STATES OF AMERICA

"Non-obviousness" is the term for “inventive step” used in US patent law and codified under 35 U.S.C. §103. Thereby implying that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.

Flash of genius

The Flash of Genius Doctrine or Test was a test for patentability used by the United States Federal Courts for over a decade. The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen.

The flash of genius test was eventually rejected by the 1952 patent statute's section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the Federal Circuit stated that this portion of section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).

GRAHAM FACTORS

The factors a court will look at when determining obviousness and non-obviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". The court held that obviousness should be determined by looking at

the scope and content of the prior art;

the level of ordinary skill in the art;

the differences between the claimed invention and the prior art; and

objective evidence of nonobviousness.

In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are:

commercial success;

long-felt but unsolved needs; and

failure of others.

Teaching-suggestion-motivation (TSM) test:

In Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 (Fed. Cir., 2000), it was held that there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements.

This requirement is generally referred to as the "teaching-suggestion-motivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires that some suggestion or motivation exists to combine known elements to form a claimed invention. The Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.

The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test.[2] The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of non-obviousness is the Graham analysis.

In one case, Applicant attempted to patent peanut butter and jelly sandwiches with crimped edges instead of crusts. The invention was challenged in the court that ruled that crimping method, which was essentially known was an obvious means of protecting the contents of the sandwich. The patent was therefore rejected for failing the non-obviousness test.

The list of non exhaustive rationales that may be used to find an invention obvious are as follows:

Combining prior art elements according to known methods to yield predictable results;

Simple substitution of one known element for another to obtain predictable results;

Use of known technique to improve similar devices (methods or products) in the same way;

Applying a known technique to a known device (method or product) ready for improvement to yield predictable results;

“Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

Known work in one field of endeavour may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if variations would have been predictable to one of the ordinary skill in the art;

Some teaching, suggestion or motivation in the prior art would have led one of the ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

NON ENGLISH SPEAKING COUNTRIES:

KOREA:

In accordance with the Korean Patent Examination Guideline (KPEG) the following procedure is carried out for determining inventive step:

whether there is some motivation to reach the claimed invention in the prior art for a person ordinary skilled in the art;

whether the difference between the claimed invention and the prior art belongs to ordinary creative ability of a person skilled in the art; and

whether the claimed invention has any advantageous effect compared to the prior art.

Until recently Korean courts used to mechanically judge inventive step based on determination of substantial identicalness of purpose, construction and effect of the claimed invention and the prior art, and were silent on the specific standard for determination of inventive step.

However, recently on September 06, 2007 ([Supreme Court Ruling of 2005 HU 3284) for the first time Supreme Court suggested a specific standard for determining inventive step, which is different from the precedents. The Korean Supreme Court took a different approach in its interpretation of inventive step and ruled that inventive step should be denied when there is some suggestion or motivation to reach the claimed invention by combination or aggregation of the feature in the prior art or when the court can recognize that a person ordinary skilled in the art can easily come to the claimed invention by combination or aggregation of feature in the prior art in view of the level of technology, common general knowledge in the art, technical problem, progress trend of technology and needs in the pertinent technical field at the time of filing patent application.

In Korea, the manner in which an invention was made (flash of genius) generally cannot be used to deny inventive step. Many Court rulings have admitted inventive step when they recognized difficulty in construction of the invention. Therefore, assertion on presence of flash of creative genius in the invention would be supportive for inventive step.

In Korea, commercial success alone cannot be regarded as indicative of inventive step. However, commercial success can be supplementary evidence to strengthen the argument of inventive step when it coupled with other evidence for inventive step.

Through several rulings such as Supreme Court Ruling of 94 HU 1817 (Nov. 28, 1995) and Patent Court ruling of 2002 HEO 8424 (Sep. 4, 2003), Korean courts took into account the commercial success as affirmative evidence supporting inventive step of the invention when the applicant proved that his/her commercial success has been derived from the technical feature of the claimed invention, not from marketing skill or advertisement.

However, the Supreme Court clearly takes up the position that inventive step cannot be recognized only with commercial success itself (Supreme Court Ruling of 2004 HU 3546 (Nov. 10, 2005).

The Korean Patent Examination Guideline (KPTG) prohibit hindsight reasoning in determining inventive step of an invention and recently the Korean Supreme Court has also clearly declared that hindsight reasoning should be prohibited in judgment on inventive step [Supreme Court Ruling of 2006 HU 138 (Aug. 24, 2007)].

JAPAN

Apart from the universal general approach followed all over the world, in Japan there is also a specific approach for formulating reasoning that includes steps of:

Grasping the claimed invention and the cited invention (one or more cited inventions). In this case, the technical matter, which can be derived by taking the common technical knowledge into consideration, can be used for grasping the cited invention.

Selecting one cited invention (primary cited invention) which is most suitable for formulating and comparing the claimed invention with such cited invention and then clarifying the identicalness and the difference in technical elements.

Evaluating whether any reasoning for negating the inventive step of claimed invention can be formulated based on the content of the primary cited invention and other secondary cited invention(s) (including the well-known technique and conventional technique).

Factors Affecting Formulation of Reasoning

- It is evaluated whether or not the difference is mere selection of optimum materials in the cited invention, or mere design modification, or mere use of the well-known technique and conventional technique, and the like.

- It is evaluated whether or not there is any motivation which can be found in the cited invention for leading to the difference.

- It is evaluated whether or not the specification discloses any advantageous effect based on the difference as compared with the cited invention. The proof of any advantageous effect is very useful for asserting the inventive step.

Even if there is apparently a close relationship in the technical fields, common subject to be attained and common function/operation between the claimed invention and the cited invention, but if the cited references have a description which could negate the reasoning to combine these references, then the inventive step of the claimed invention may be positively evaluated.

ENGLISH SPEAKING COUNTRIES:

AUSTRALIA:

Section 18(1)(b) of the Patents Act 1990 (Cth) requires that an invention involve an 'inventive step', and Section 45(1)(c) requires inventive step to be considered during examination.

Section 7(2) provides that an invention is taken to involve an inventive step 'unless the invention would have been obvious to a person skilled in the relevant art' in the light of 'common general knowledge' in Australia and such other prior art information as may be added to that common general knowledge, as before the invention's priority date. There is thus only a limited prior art database available for an inventive step assessment - not every prior art document can be used.

For determination of the inventive step it is necessary to construct a hypothetical person skilled in that relevant art and obtain an appreciation of the common general knowledge of such a person. That hypothetical person's knowledge will then be used as a standard in evaluating whether the invention is obvious in the light of this knowledge or involves an inventive step.

The main question to be asked in a determination of inventive step has been distilled down to the following in Olin Mathieson v Biorex (1970) RPC157 at page 187, and approved by the High Court in Aktiebolaget Hassle v Alphapharm Pty Lid [2002] HCA 59 (12 December 2002):

"Would the notional research group at the relevant date in all the circumstances ... directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result}.

In assessing whether an invention satisfies the requirements for the presence of an inventive step, the following (amongst others) are useful tools in assessing inventive step, but generally do not alone establish it:

(i) Long Felt Need

If the claim solves a "long felt need", there is a presumption that the claim is not obvious as other inventors must have also tried to solve the "long felt need" and not succeeded:

In Lucas and Another v Gaedor Ltd and Others (1978) RPC 297 at page 358 it was held:

" ... the question of obviousness is probably best tested, if this be possible, by the guidance given by contemporaneous events .... If an invention has resulted in the solution of a problem which has been troubling industry for years and achieves immediate success upon its introduction, then the suggestion after the event that the step was obvious inevitably rings a little hollow.

(ii) Copying of the Invention

Copying of the invention in preference to the prior art is indicative of an inventive step:

In Samuel Parkes & Co Ltd v Cocker Brothers Ld (1929) 46 RPC 241 at page 248 it was held by the Court that:

"When once it has been found ... that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is ... practically impossible to say that there is not present that scintilla of invention necessary to support the patent .... No evidence is more cogent of the success of the invention than that the defendants simply copied it and made profits by making and selling the products.

(iii) Complexity of the Work

If the work undertaken by the inventor in order to produce the invention was particularly complex, and not readily carried out, that is an indication that it was not a matter of routine. In such cases the invention would not be obvious.

In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 at [58] it was held that:

"The tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps is not the taking of routine steps to which the hypothetical formulator was taken as a matter of course.

Commercial success may also act as a factor which points to inventiveness, as stated in a recent important decision from the Australian High Court in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21:

"Secondary evidence, such as commercial success... has a role to play in a case concerning inventive step... An Australian court should be slow to ignore secondary evidence or to rely on its own assumed technical expertise to reach conclusions contrary to such evidence. Australian courts have long recognised that the importance of such evidence and its weight will vary from case to case; it will not necessarily be determinative."

The dangers imposed by the hindsight analysis were first noticed by the Australian Courts in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (1980) CLR 253

"With the benefit of hindsight, it may be possible to say that each of the steps taken ... was logical, but that does not mean that the claimed inventive step was obvious”

This case was appealed and, Australian High Court in Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248 and the Aickin J. held that in relation to the process of recreating the prior art, the misuse of hindsight is most common. Once a novel idea, object, process or combination has been published it will often be possible to work backwards to identify the integers which comprise the claimed invention scattered among the prior documents held in libraries. Such a process was held by the High Court not to demonstrate a lack of inventiveness.

An approach used by the courts in HPM Industries Pty Ltd v Gerard Industries Ltd, 98 CLR 424 at page 437 to avoid this problem is the "problem-solution" approach.

"If the invention were novel it would nevertheless fail for want of subject matter if in the light of what was common general knowledge in the particular art, it lacked inventive ingenuity because the solution would have been obvious to any person of ordinary skill in the art who set out to solve the problem. "

The "problem-solution approach is based on the question of whether the claimed invention would have been obvious to the hypothetical skilled addressee when faced with a particular problem. The frame work of the "problem-solution" approach inherently embodies what happens in practice and is regarded by the Patent Office as covering the statutory framework. Given this, Australian Patent Examiners are instructed during examination to not take any inventive step objections without using the "problem-solution" approach and formulating a problem from the specification itself.

In general terms, it has been the dangers posed by hindsight analysis that have caused Australian courts to stress that there need only be a 'scintilla of invention' for a particular step not to be obvious, and that the simplicity of an idea does not prevent it from being inventive.

Conclusion:

Broadly the interpretation of obviousness or lack on inventive step is similar, the only difference in approach of the particular Patent office. In India lack of any judgment by the Supreme Court of India on the subject matter leaves the interpretation of obviousness to practice of Indian patent office. In absence of authorities the interpretation varies from Examiner to Examiner and involves use of discretionary power.

Article Source: http://www.articlesbase.com/patents-articles/interpretation-of-obviousness-466483.html

About the Author

Author is an Advocate and Registered Patent And Trademark Attorney with Aswal Associates and handles IPR division of the firm and is having the vast experience of having being associated with various premier IPR firms of India in the past. The author is also a member of APAA and can be reached at sudhir@aswal.com or www.aswal.com