Friday, November 4, 2011

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

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:

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 Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.

Saturday, October 22, 2011

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.

Friday, July 22, 2011

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.

Tuesday, July 19, 2011

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