Initiatives by the CGPDTM office

The Controller General of Patents Design and Trademarks (CGPDTM) office is taking various measures to make the system of the patent office more user friendly and transparent. Two steps taken in this regards are :

  1. SMS alert facility for patent applications has been operationalized – The CGPDTM has started the SMS alert facility for Applicants and Agents whereby they will receive alert informing them the progress of applications at various stages of processing. The alerts will also be indicating  timelines and non-compliance which may lead to refusal/abandonment of applications. The updates would be sent on the mobile numbers provided in the address for service.
  2. Publication of Examination reports generated – CGPDTM will publish in the weekly official journal of the Patent Office, the details of the First Examination Reports (FER) generated.

This is indeed a commendable step towards streamlining the processes especially when the of FERs issued every month is significantly higher than ever in the past. For reference, Journal dated 27th October, 2017   shows reports for the week of 16th October 2017.

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WIPO AND IPO Collaborate

Controller General of Patent Design and Trademark and Director General of World Intellectual Property Office (WIPO) have signed Cooperation agreement on 5th October 2017 at Geneva Switzerland to facilitate the exchange of data between these offices including Indian Patent documents , search and examination reports through WIPO CASE and WIPO Digital Access Services (DAS) to make priority documents available electronically.

The agreement also envisages the regular data exchange between WIPO and Indian Patent Office (IPO).

 

Constitution of confidentiality club for Telecom Patent dispute resolution

The Delhi High Court in a recent decision has allowed an application of the plaintiff, Ericsson to constitute a Confidentiality club (See decision  here- )Ericsson v Xiaomi- Confidentiality Club Order (2). Ericsson had filed a suit for permanent injunction against the defendants, XIAOMI seeking a restrain from violation and infringement of its rights in its patents being as (i) IN 203034; (ii) IN; (iii) IN 234157; (iv) IN 203686; (v) IN 213723; (vi) IN 229632; (vii) IN 240471; (viii) IN 241747. The said suit is pending adjudication before Delhi High Court and is currently at the initial stages of trial.

Ericsson filed an application seeking constitution of confidential club. It was argued by Ericsson that the court has to determine as to whether Ericsson has offered to XIAOMI a licence on fair, reasonable and non-discriminatory (FRAND) terms and whether Ericsson is entitled to damages or payment of royalties from the Defendants for sales made by it devices infringing Ericsson’s patented technology and if so, for what period and on what terms. It was further argued that in order to assist Court, Ericsson would be producing various patent licensing agreements with similarly placed parties, including competitors of the Defendants. These agreements are highly confidential in nature and contain, apart from licensing rates, business sensitive information relating to such similarly placed parties, hence the plaintiff is seeking constitution of confidentiality club wherein all confidential licence agreements relating to similarly placed parties be permitted to be filed in sealed cover and be kept in the safe custody of the Registrar General and its access shall be to limited personnel from either side.

The defendants were not averse to the constitution of such confidentiality club but pressed the defendant/clients be allowed to be a party to such club or to have an access to the information.

The Court appreciated that in today’s world of globalization, where competition is at its peak, the organizations may not be inclined to disclose trade secrets/confidential agreements or its details, it had entered with different parties lest may cause serious prejudice to such parties. Hence the Court held that there is no impediment if the confidential club is created and its access is limited with procedure to be adopted as below :

  1. All confidential license agreements relating to similarly placed parties be permitted to be filed in a sealed cover and be kept in the safe custody of the Registrar General;
  2. Each party be directed to provide on an affidavit, a list of no more than five lawyers (who are not and have not been in-house lawyers of one of the parties) and no more than three external expert witnesses, who alone will be entitled to see the aforesaid confidential documents/patent license agreements;
  3. Said lawyers and expert witnesses will be bound by confidentiality orders passed by this Court and will not make copies or disclose the contents of the said aforesaid confidential documents/patent license agreements to anyone else or anywhere else, including in other legal proceedings, oral and written communications to the press, blog publications etc., so that the spirit of the confidentiality regime would be preserved;
  4. The parties i.e. the Plaintiff and the Defendant No.l and Defendant No. 2 will be allowed to inspect said patent license agreements only through the confidentiality club members and no copies will be made of such confidential documents/license agreements. After the inspection, the aforesaid confidential documents/patent license agreements be resealed and again deposited with the Registrar General of this Court;
  5. Direct that during recordal of evidence w.r.t aforesaid confidential documents/patent license agreements etc. only members of the confidentiality club shall be present;
  6. During proceedings of this Court, when the said documents are being looked at, would be in camera to the effect that only members of the confidentiality club be permitted to be present.
  7. The parties would give copies of the aforesaid confidential documents/patent license agreements to the members of the confidentiality club only after redacting the confidential information including the name of the parties. However, the rates/products will not be redacted.
  8. Any evidence by way of affidavit/witness statement which may contain aforesaid confidential information/terms of the agreement(s) shall be kept in a sealed cover and would only be accessible to the members of confidentiality club. However, a party filing such evidence by way of affidavit would give to the opposite party a copy of such affidavit after redacting the confidential information/ terms of the agreement(s);

 

Madras HC decision in a patent matter

The Madras High court recently dismissed a petition in Mannivanan v. IPAB & Ors. The petitioner in this case, K. Manivannan is a manufacturer of a machine that is used to thresh paddy. Respondent, M. Mani had filed an infringement suit against the petitioners. Countering this, the petitioners filed for revocation of the respondent’s patent, which was eventually dismissed by the IPAB. A writ was filed by the petitioner in the Madras High Court challenging the order of the IPAB maintaining the patent. The Madras High Court dismissed the writ petition challenging the dismissal of a revocation application by the IPAB.

The petitioner argued for revocation on grounds of lack of novelty and that apart, from lack on Novelty by prior publication, the invention claimed by the 3rd Respondent, was fully anticipated by prior public knowledge and also referred to many advertisements published in various Tamil Dailies from the year 2000 till the date of filing of the Application for Patent by the 3rd Respondent. The petitioner also argued that the respondent’s patent was a mere rearrangement of known devices, and therefore falls under section 3(f).

The primordial plea taken on behalf of the Petitioner is that the 3rd Respondent/Patentee had made some minor changes to the invented machine of the Petitioner in particular using the plates instead of studs and further that, the Patentee had fraudulently filed the Application for grant of Patent on 14.09.2004 keeping entire technology of the Petitioner, but making variation in respect of studs and filter.

On analysing the machine of the petitioner and the respondent, the Court said that the two machines were different. The “constructional features” of the respondent’s machine are sufficiently different from the petitioner’s and would constitute an invention. The respondent’s machine used thresher roller instead of rotor studs to beat raw material and thresher vanes instead of helix plates for the threshing operation. The Court further held that the difference between the two machines lies in the distinction between a ‘claim’ and a ‘disclosure’. ‘Claims’ of another patent would result in infringement, while a ‘disclosure’ would take away from the novelty of the other patent. An infringement would always imply a lack of novelty, but the opposite need not be true.

As per the court the claims as worded appear to be distinct. For fuller and better appreciation, the Appellate Board had pointed the difference in the constructional features and the distinct factors to the words employed by the respective parties. The Court also agreed with the Appellate Boards finding at paragraph 12 of its impugned order that the copies of the Tamil dailies relating to the advertisements, do not show any constructional aspects or the important features of the threshing cum separating machine. The Patentee on the other hand had specifically characterized the inventive features in his principal claim defining the scope of the invention and therefore not anticipated by prior knowledge as well.

The court did find that the respondent’s machine could not be a rearrangement of known devices under Section 3(f).

 

 

No Copyright Protection For Work Registrable Under The Designs Act

In Holland Company LP & Anr. vs. S.P. Industries, order dated July 27, 2017, the Delhi High Court, held that no copyright protection is available for work that is registerable under the Designs Act.

The plaintiff, Holland Company LP claimed to have a copyright over the industrial drawings of the ATL (a system for securing cargo containers to a support) and spare parts thereto.

The defendant, S.P. Industries outbid the Plaintiff in a tender floated by the Eastern Railway, Sealdah Division for carrying out repairs, replacement of spare parts and servicing of the defective parts of the ATL devices. Hence, the Plaintiffs instituted the suit for permanent injunction before the Delhi High Court for restraining them from reproducing the ATL spare parts in 3-D form, from the 2-D artistic work of Holland Company LP in the form of the industrial drawings.

The Plaintiffs claimed that a combined reading of Section 2(c), Section 13(1)(a) and Section 14(c)(i)(B) of the Copyright Act, 1957, shows that a copyright exists in engineering drawings/technical drawings under the category of Artistic Works, which includes the exclusive right to depict the drawings in three dimensions. Further, the Designs Act, 2000 is not applicable on the industrial/engineering drawings and technical drawings, as the present devices are functional in nature.

Whereas the defendant argued that industrial/technical drawings are not an artistic work and, therefore, no copyright exists and the same are capable of being registered under the Designs Act, 2000.  Further, according to Section 15 of Copyright Act, 1957, no copyright exists in any drawing or design once the production has been done more than 50 times by an industrial process using such drawing or design. Moreover, the Plaintiffs cannot have exclusive right over said drawings as said drawings have been published and readily available.

The Court held as follows:

  • A conjoint reading of Section 2(d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957, makes it amply clear that where a design of an article is prepared for the industrial production of an article, it is a design and registrable under Designs Act and under Section 14(c), the author of such design can claim copyright, however, since such a design is registrable under the Designs Act, and if such design has been used for production of articles by an industrial process for more than 50 times by the owner of the copyright, or, by any other person with his permission, then such person ceases to have copyright in such design.
  • ……Plaintiffs had prepared the engineering drawings for the purpose of production of ATL devices. The industrial drawings are, therefore, or a design of the ATL device which the Plaintiffs had supplied to the Railways under a contract given to them by the Railways. The drawings of the ATL devices of the Plaintiffs, therefore, are registrable under the Designs Act. The said drawings have not been registered under the Designs Act. The Plaintiffs have also not disputed the fact that while using these engineering drawings, it had used for more than 50 ATL devices by an industrial process and, therefore, it is clear that it has used these engineering drawings for more than 50 times in an industrial process. By virtue of Section 15(2) of Copyright Act, therefore, even if assuming the Plaintiffs had a copyright in these engineering drawings, it ceases to have the same.
  • “…The Plaintiffs have not made the Railways a party to the suit although in the facts and circumstances of the case it is a necessary party because prima facie it is the Railways who have used the engineering drawing of the ATL devices for inviting tenders…

Held:

For being entitled to interim injunction under Order 39 Rule 1 and 2, the Plaintiff is required to show a strong prima facie case which means the Plaintiff is required to show that it has a right which needs protection. The Plaintiffs have failed to show any prima facie case in their favour. In the light of the same, the application of the Plaintiffs under Order 39 Rules 1 and 2 CPC stands dismissed.

PATENT APPLICATIONS INVOLVING BIOLOGICAL RESOURCES FILED IN INDIA

The National Biodiversity Authority grants permissions to patent Applicants using Indian Biological resource in their inventions for obtaining Intellectual Property Rights. There are several patent applications filed in this category and are pending before the Indian Patent Office.

The National Biodiversity Authority has recently clarified that all such patent applications which are pending but were filed before 1st July 2004 i.e. when the Biological Diversity Act and Rules came into force, would be exempted from taking permission from the National Biodiversity Authority.

The Indian patent office can therefore now clear all the back log for those biological resource involving applications which were filed before aforementioned date and have been awaiting grant but have been withheld only for the sake of pending permission from the National Biodiversity Authority. More clarification with respect to the applications filed after 1st July 2004 is still awaited for speedy grants and permissions.