Writ seeking directions for UOI to enforce norms relating to “working” of patents disposed

A Public Interest Litigation (PIL) was filed at the Delhi High Court under Article 226 of Indian Constitution as a writ of mandamus (Shamnad Basheer Vs. Union of India (UOI) & Others) seeking directions for the Union of India (UOI) to perform their statutory duty to enforce norms relating to “working” of patents under Section 146 read with Rule 131 of the Patents Act.

The Court had, vide an order dated 15th March, 2018, directed the union of India to place before the Court a reasonable timeline within which amendments as may be deemed necessary for strict implementation of the working statement requirement be effected with the consultation of stakeholders.

A Stakeholder consultation meeting in this regard has already taken place at Delhi, on 6th of April 2018. The UOI has proposed approximately 11 months to have any proposed amendment notified in the Form (Form 27) and the rules.

The proposed timelines by the Union were accepted by the court and the writ Petition has been disposed off vide an order dated 23rd April 2018. The ministry was also directed to make every effort to ensure that there is no deviation in the same and the matter is treated in right earnest and given the seriousness which it deserves to be accorded to it.

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Working of Patents being reviewed by the DHC

The Delhi High Court (DHC) is currently hearing a Writ petition related to working of patents in India and in an interim order has observed that there appears to be non-compliance issues with respect to this highly debated provision.

Section 146, Rule 131 of the Patent Act empowers the Controller General of Patents, Designs, Trademarks and Geographical Indications (CGPTM office) to call for information in a format set out in Form-27 prescribed under the Patents Rules, 2003 regarding the working of Patents in India. Failure to comply with the statutory requirement invites penalties and criminal action under Section 122 of the Patent Act which includes imposition of fine as well as initiation of criminal proceedings.

Some major Court observations are as follows:-

  • PATENTEE NON COMPLIANCE: The Annual Report 2012-13 of the CGPTM Office indicates failure of several patentees to conform to the requirements of even submission of statements of working and also that very few patents are actually worked.

“(i) Working of Patents (under Section 146): The Patent Office received 27946 Form 27 during the reporting year, of which 6201 were shown to be working.

 

  2009-10 2010-11 2011-12 2012-13
Patents in force 37334 39594 39989 43920
Form-27 received 24009 34112 27825 27946
Reported as working 4189 6777 7431 6201”
  • LICENSEE NON COMPLIANCE: The Patent Act makes it mandatory not just for patentees but also licensees to submit statements of working, however no such information with regard to the licensees are published in the Annual report of the CGPTM office. A glaring observation is that there is non-compliance of the requirement even is case of patents where a compulsory licence has been granted. The vital case of Bayer vs NATCO which led to the first CL being granted in India to M/s NATCO Pharma also does not have any submission by the Licensee which has further repercussions such as withdrawal of the CL.

  • CG OFFICE IN ACTION: The DH Court also observed that CGPTM office are not taking any action for notional or incomplete compliance with the provisions related to this Section 146 of the Act.

The court clearly stated that- “The license holders are also required to file the information in Form-27 as a patentee.” Further, the details of the licenses and sublicenses certainly cannot be termed “confidential” and  therefore, the Patents Office has to treat such suppression as failure to comply with the requirements under the Patent Act, 1970 and to take action against those who have thus failed. There can be no exemption from statutory compliance and that in case any query in the prescribed Form could not be complied with, the person submitting the Form need to state so.

The Court also directed the CGPTM office to submit the status of the amendment of the rules and the action which was earlier proposed with respect to the statement of working.

With the 31st March annual due date for submitting the working statement for the last financial year is approaching, the Patentees and License holders should be careful in preparing and submitting information regarding working amidst the above developments.

 

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).