About patents_rewind

“Then why do you want to know?" "Because learning does not consist only of knowing what we must or we can do, but also of knowing what we could do and perhaps should not do.” ~ Umberto Eco. This space is about the changing landscape of patents and designs, evolution of the law, reinforcing of precedence and consolidation of the principles of established and re-established. The blog is an extension of our annual digest for 2014 called Patent and Designs Rewind 2014. In case you wish to obtain a copy of the same, please feel free to contact us. Have a happy reading.We are welcome to receive your suggestions and feedback.

Chemtura’s Patent restored

The Bombay High Court’s division bench has set aside the order of the IPAB revoking Chemtura’s patent IN213608 and has directed the Controller of Patents to restore the patent on the e-register ( Order dated 19-06-2017 ).

IPAB had earlier revoked Chemtura’s Patent for non compliance of section 8 and lack of inventive step. Chemtura filed a writ against the decision in the Bombay High Court.

The facts of the case are as follows: –

  1. Uniroyal Chemical Company Inc. (the predecessor of Chemtura) filed a National Phase Patent Application being IN/PCT/2001/00752/MUM before Patent Office with respect to the invention titled ‘A Bearing Pad Assembly’
  2. IPO on 9th January, 2008 granted patent to Chemtura after examining the same
  3. Revocation Petition being ORA/14/2009/PT/MUM was filed before the Intellectual Property Appellant Tribunal (IPAB). Chemtura filed its counter Statement along with the Affidavit to the petition on 21st August, 2009
  4. On 27th August, 2009, the petitioner counsel sent a letter to IPAB seeking withdrawal of the revocation petition being ORA/14/2009/PT/MUM. On 12th October, 2009 the Registry on behalf of IPAB sent a letter calling upon petitioner to file a Miscellaneous Petition seeking withdrawal of the said revocation petition
  5. Thereafter on 7th October, 2010 a hearing on the said revocation petition came to be posted under the caption ‘FOR WITHDRWAL’. However, due to some administrative reasons the matter was adjourned to 1st June, 2011. On 1st June, 2011 the matter was again adjourned to 28th November, 2011.
  6. On 28th November, 2011 when the matter was posted for hearing the counsel for Petitioner submitted that he had oral instructions to argue the Revocation Petition being ORA/14/2009/PT/MUM and in light of the said submission IPAB directed the parties to argue the matter on merits
  7. On 26th May, 2012, Petitioner filed a Miscellaneous Petition seeking withdrawal of the said revocation petition and subsequently, on 11th June, 2012 amended and again filed another Miscellaneous Petition seeking unconditional withdrawal of ORA/14/2009/PT/MUM.

It was argued by Chemtura that the order revoking the patent was passed despite a Miscellaneous Petition being M.P No. 107 of 2012 filed by Party seeking revocation and is therefore not maintainable. It was also contended by Chemtura that once a revocation petition has been withdrawn the Vakalatnama executed in favor of the Advocate ceases and the application cannot be heard. The counsels of Chemtura also relied upon the decision of the Supreme Court in Shiv Prasad v. Durga Prasad [1975] 1 SCC 405] which observed that every applicant has the right to unconditionally withdraw his application and his unilateral act in that behalf is sufficient and that no order of the Court is necessary permitting him to withdraw the application. The Court may make a formal order disposing of the application as withdrawn but the withdrawal is not dependent on the order of the Court. The act of withdrawal is complete as soon as the applicant intimates to the Court that he withdraws the application.

The Bombay High Court applied the ratio in Shiv Prasad (Supra) that the application should have been treated as withdrawn as of that date i.e on 25th July, 2009 and if not, at least as on date of filing Miscellaneous Petition namely 11th June, 2012. Bombay High Court further held that the IPAB erred in proceeding with the hearing in the face of the said application for withdrawal. In the circumstances, the Bombay High Court quashed the impugned order of the IPAB dated 24th August, 2012. Patent No. 213608 has also been restored on the Register of patent.

Chemtura’s Patent restored

The Bombay High Court’s division bench has set aside the order of the IPAB revoking Chemtura’s patent IN213608 and has directed the Controller of Patents to restore the patent on the e-register.

IPAB had earlier revoked Chemtura’s Patent for non compliance of section 8 and lack of inventive step. Chemtura filed a writ against the decision in the Bombay High Court.

Stay tuned for details!

SC allows Cipla to withdraw its petition

The Supreme Court (SC) of India has allowed domestic drug manufacturer Cipla, which to withdraw its petition in respect of the patent dispute with Roche over the drug erlotinib hydrochloride.

The petition was filed by Cipla challenging the High Court’s order holding that it had infringed Roche’s patent. The two companies, Roche and Cipla, on May 30 however arrived at a settlement to close the patent dispute between them over the drug erlotinib hydrochloride. After the May 30 settlement, Cipla withdrew the Special Leave Petition (SLP) filed against the said High Court’s order.

Reasons beyond control necessary for condoning delay in submitting response to Examination report

The Indian Patent office while considering a petition filed by Cisco Technologies under rule 137 for condonation of delay in filing response to examination beyond the statutory period, refused to allow such delay as according to the controller all possible reasons as mentioned by the applicant’s agent such as lack of knowledge about the issuance of examination report or lapse on the part of the previous agent in providing true facts/ First Examination Report, are not the reasons sufficient enough to qualify the status of “beyond the control of applicant” as mentioned in section 21(1) of the Act.

The application was therefore considered to be deemed abandoned under section 21(1) as applicant has not refilled the documents within stipulated time period i.e. within 12 months from the date of issuance of first examination report.

The facts of the case are as follows:-

  • The application 2440/DELNP/2006 was filed on May 01, 2006 claiming priority of USA 10/702,167 dated November 05, 2003 through its agent Evalueserve.com Pvt Ltd.
  • Request for examination was made on October 18, 2006.
  • The First examination report were communicated dated July 29, 2010 to the applicant’s address for service on record.
  • After the issuance of FER, Form-13 was filed on June 22, 2011 to incorporate the change in address for service as applicant has transferred the responsibility to prosecute the matter to Mr. Dinesh Jotwani of M/s Aggarwal Associates.
  • The last date to put the application for grant was over on July 30, 2011 and official requirements were not complied.
  • Petition u/r 137 was filed by the applicant dated September 14, 2011 through patent Agent, for delay in filing the response of examination report read with section 81 of the Patent Act, 1970 within stipulated time i.e. 12 months from the date of issuance of first examination report.
  • Response to first objection report was filed on September 26, 2011.
  • Further Form -13 was filed on February 04, 2015 to incorporate the change in address for service as applicant has once again transferred the responsibility to prosecute the matter to M/s K & S Partners.  

To analyze the decision of the Controller it would be essential to read the following to section:-

  • Section 21(1) says ” An application for a patent shall be deemed to have been abandoned unless, within such period as may be prescribed, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application from the date on which the first statement of objections to the application or complete specification or other documents related thereto is forwarded to the applicant by the Controller.” Explanation.-Where the application for a patent or any specification or, in the case of a convention application or an application filed under the Patent Cooperation Treaty designating India any document filed as part of the application has been returned to the applicant by the Controller in the course of the proceedings, the applicant shall not be deemed to have complied with such requirements unless and until he has re-filed it or the applicant proves to the satisfaction of the Controller that for the reasons beyond his control such document could not be re-filed.

The agents argued that the delay was unintentional as applicant was unaware of issuance of Examination report.

The argument that applicants were not informed about the issuance of first examination report was not considered sustainable as according to the controller:

  1. Status of every patent application is freely available on patent office website i.e. http://www.ipindia.nic.in.
  2. At the time of filing of Form-13 dated June 22, 2011, more than one month time was available to the applicants to meet the official requirements.
  3. Petition u/r 137 was filed on September 14, 2011 for condonation of delay in filing the response of examination report whereas response to first objection report was not filed along with the petition. The same was filed on September 26, 2011 delayed by further 12 days.

As per the controller the above clearly shows negligence in part of erstwhile patent agent. It is hard to believe that delay caused was unintentional. The term “unintentional “means where the agent of the applicant/ applicant itself was not aware about the issuance of first examination report and the deadline to comply with the requirements as raised in first examination report. The controller further held that it is negligence not only at the part of erstwhile patent agents but also at the part of applicant as well. If it is to be considered that it was the duty of previous agents to transfer all the previous proceedings to another authorised patent agent for processing instant patent application, then applicant is also duty bound to insure for smooth transfer of all related proceedings form one patent agent to other patent agent.

 

Rules for appointment of IPAB Chairman, Vice-Chairman, Technical Member

In exercise of the powers conferred by section 184 of the Finance Act, 2017 (7of 2017), the Central Government has notified the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 on 1st June 2017.

These rules apply to 19 Appellate Tribunal as provided in the schedule of the Rules. Included in this list is also the intellectual Property Appellate Board (IPAB).

The rules provide as follows:-

(1) A person shall not be qualified for appointment as Chairman, unless he, –

(a) is, or has been, or is qualified to be, a Judge of High Court; or

(b) has, for a period of not less than three years, held office as Vice- Chairperson of the Appellate Board.

(2) A person shall not be qualified for appointment as Vice-Chairman, unless he,—

(a) is, or has been, or is qualified to be, a Judge of High Court; or

(b) has, for at least two years, held the office of Judicial Member or a Technical Member, and has a degree in law with at least 12 years of practice at bar or 12 years’ experience in a State Judicial Service.

(3) A person shall not be qualified for appointment as Technical Member (Patent), unless he, –

(a) has, for at least five years, held the post or exercised the functions of the Controller under the Patents Act, 1970 (39 of 1970); or

(b) has, for at least ten years, functioned as a registered patent agent and possesses a degree in engineering or technology or a master’s degree in science from any University established under law for the time being in force.

The Rules also provide that the search and selection committee for the post of the Chairman, Vice-Chairman of the Appellate Board, include –

(i) Chief Justice of India or his nominee- chairperson;

(ii) Secretary to the Government of India, (Department of Industrial Policy and Promotion) -member;

(iii) Secretary to the Government of India to be nominated by the Central Government-member;

(iv) two experts, to be nominated by the Central Government- members.

 

Also, the search-cum-Selection Committee for the post of Technical Member (Patent) of the Appellate Board, include—

(i) a person to be nominated by the Central Government –chairperson;

(ii) Secretary to the Government of India, (Department of Industrial Promotion and Policy) -member;

(iii) Secretary to the Government of India to be nominated by the Central Government – member;

 (iv) two experts, to be nominated by the Central Government – members.

Patent Office Issues Notice to Streamline Disposal of Cases Relating to Biological Resources

A recent circular by the Patent Office on issues relating to biological resources and patenting may come as a reprieve for patent applicants using biological materials from India in their inventions.

Section 6(1) of The Biological Diversity Act, 2002 prohibits any person from applying for any intellectual property right in or outside India based on any research conducted on biological material obtained from India without obtaining permission from the National Biodiversity Authority (NBA) before making said application. The proviso to section 6 permits a person to apply for permission from the NBA after filing an application for a patent but before grant.

In view of said provision of The Biological Diversity Act, Controllers at the Patent Office have been raising multiple, many-a-times unwarranted, objections relating to obtaining permission from the NBA w.r.t biological material from India. Delays on the part of the NBA in granting permission stall the grant of a patent. Permissions from the NBA and pending patent grants in view of the same have therefore, long been debated between the Patent Office and the stakeholders representing the patent applicants.

The Controller General of Patents, Designs & Trade Marks, Mr. O.P Gupta has actively taken up this issue and through an official notification, has provided instructions/guidelines to streamline the process relating to patent applications that deal with biological material from India. A synopsis of the notice is as follows:

  1. Controllers and Examiners have been directed to refrain from raising objections on obtaining approval from the NBA with respect to inventions which reside in:
  • value added products and not the biological material
  • bio-wastes which are generated after the economic use of the biological material is exhausted.
  • biological material prepared synthetically
  1. The notice has clarified that approval from the NBA is not needed when the Applicant makes an unequivocal declaration that the biological material used in the invention is neither obtained nor sourced from India.
  1. The notice requires Examiners to mark applications involving the use of biological material as ‘NBA approval application’ in the examination module before sending the examination report to the Controller. If the Controller is not satisfied with the requirement regarding NBA permission he can unmark the application from said category by giving reasons thereto.
  1. Where all objections have been complied except submission of NBA approval, the Controller shall mark the application in the examination module as ‘NBA approval pending, but in order for grant’ and the system administrator will tag such cases so that the applications can be treated as disposed of by the Controller.

 

Non-compliant defendants face permanent injunction

DSM Sinochem Pharmaceuticals has been granted permanent injunction against Sinopharma Weiqida pharmaceuticals as the defendants failed to timely submit the defense (written statement) and pay the costs imposed by the Court.

The Plaintiffs DSM Sinochem Pharmaceuticals sued Sinopharma Weiqida pharmaceuticals for permanent injunction to restrain them from using , manufacturing , distributing, selling, offering for sale or dealing directly or indirectly in API Amoxixillin Trihydrate produced by a process that amounts to infringement of Indian Patent number 247301, or a formulation thereof.

The defendants did not file the written statement inspite of three opportunities and did not pay the costs imposed by the court. During a hearing on 16th May 2017, the counsel of the Defendants said that the written statement is ready, an advanced copy of which would be handed over to the counsel of the Plaintiffs and the cost imposed would be remitted in the course of the day.  The matter was listed for the next day, provided an additional cost of 50,000 is paid.

During the hearing on the next day, the Court observed that no written statement has been filed nor the cost imposed on the Defendants has been paid. Considering the same, the Court closed the rights of the Defendants to file a written statement. The Plaintiff’s in the absence of any challenge to its patent was considered to be entitled to a decree of permanent injunction in its favour.