Patents Act

Sections 2(j), (ja), (l) and (m)

Section 3

Section 9

Section 10(4) sub-clause (a) to (d)

Section 11 Sub-clause (7)

First proviso to Section 11

Section 12

Section 13

Section 25

Section 43

Section 45. Sub-clause (3)

Section 47 of the Act.

Section 48

Section 64 Sub-section (1)(e),(f),(j) (m )

Section 104-A(1)

Section 107
Blog of Mr.J.Sai Deepak titled "SPARKS FLY AS TITANS CROSS PLUGS",
(http://spicyipindia.blogspot.com). Quoted with approval.
Doctrine of pith and marrow of the claim – Explained and applied. (Para 82.)
HELD
We have noted that the Appellant's product is a four stroke internal combustion
engine with two inlet valves and one exhaust valve which application had its own
special effects in the operation of the internal combustion of the engine or in its improvement, such an operation when supported by another valid Indian Patent No.196636 dated 25.05.2000, it will have to be necessarily held that the allegation of infringement based on the Respondent's patent No.195904 dated 16.07.2002 by itself cannot form the basis for the alleged infringement. In other words, we are convinced with the teachings of the Respondent's invention of its Patent No.195904 dated 16.07.2002 has been distinctively distinguished by the teaching of the patent No.196636 dated 25.05.2000, which supports the alleged infringed product of the Appellant and therefore the grant of injunction by the learned Single Judge cannot be sustained. (Para 80.)

When we apply the law laid down in the various decisions cited before us, as far as the validity of the patent is concerned, it is by now well settled that the validity of the patent can always be challenged in the High Court on various grounds for revocation as provided under Section 64 or the ground on which the allegation of infringement is to be established as provided under Section 104 and or could be defended under Section 107 of the Patents Act. (Para 76)
Further applying the well laid down principle that when application for revocation of a patent of the Respondent is pending before the Appellate Tribunal and when such an application has been preferred on the ground of existence of a prior art, obviousness and other formidable grounds as provided under Section 64 of the Patent's Act, the Court should not grant injunction in such cases. We hold that in the special facts and circumstances of the case, grant of interim injunction cannot be sustained. (Para 79)
As far as the application of the concept of pith and marrow of the claim, what is stated is that novel feature which is claimed to be essential would constitute the pith and marrow. If the pith and marrow of the Respondent and the Appellant are distinctively identifiable there is absolutely no scope for grant of injunction as has been done by the learned Single Judge. (Para 82.)
To be more precise, while the twin plug operation in the Respondent's internal combustion engine may have resulted in improved internal combustion, the three valve technology of the Appellant also with twin plug provision produce a distinctive product of its own, different from the claimed invention of the Respondent. (Para 84.)
We hold that the Respondent is not entitled for an injunction as applied for and the injunction granted by the learned Single Judge cannot therefore be continued. Both the appeals stand allowed.

Patents Act, 1970

Sections 2(l)(j), 14, 15, 80 & 117A
Patent Rules, 2003
The Patents (Amendment) Rules, 2006 — Rule 24 (4)
HELD that no doubt appellant should comply with all the technical objections within first six months or any other reasonable period and resubmit the documents with all necessary amendments
Rule of
(i) audi alteram partem

"Earlier it has been held that the Controller is not a court or tribunal as per the case "Martin and Botling developments Ltd's DPD 356" and so the provisions of CPC are not applicable to him. If that be the case, the respondent could have very well relaxed the conditions of the section 80 of the Act and could have offered an opportunity of hearing to the appellant at his convenience before issuing this impugned order. Otherwise too it is very well cast on the learned Controller as an administering authority of the Patent Law, to have offered an opportunity of hearing to the applicant before taking any adverse decision on this application. In the present case, admittedly no notice was given to the appellant providing it a reasonable opportunity to defend its case. Not only that an opportunity of hearing notice was not given to the appellant, but even fresh objections were brought in the impugned order by the respondent, that have not been first communicated to the appellant so as to enable it to defend its case by presenting its views and observations. Moreover in the impugned order the respondent has categorically refused to grant the opportunity of hearing to the appellant under section 80 of the Act by taking the plea that there was inordinate delay in resubmission. The impugned order under consideration has been undisputedly made without affording an opportunity of being heard to the appellant, and that order does affect the appellant adversely."
Therefore the impugned order made without affording an opportunity of being heard Impugned order, set aside.

Patents Act, 1970 Section 64

Application for revocation of patent . Invention titled "IMPROVED THRESHING AND SEPARATING MACHINE" It is a fact that such a knowledge is available in country for a long time, which every skilled worker in that field is, expected to know would be sufficient to invalidate a patent Concept of novelty with care has to be examined — It is not a mere mechanical application of mind or an "inevitable result" rule—Respondent specifically characterized the inventive features in his principal claim defining the scope of the invention which he sought to protect — Applicant's document does not anticipate the respondent's claim — Application for revocation, dismissed.

Patents Act, 1970

Sections 58 & 59
Revocation of Patent. Amendment in specifications by patentee.
HELD The law which emanates from reading of section 58 & 59 Patents Act is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court. The claims can be amended and such amendment may be allowed provided that is it clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.Therefore Amendment seeking to clarify the scope of the sensitising process by mentioning some sensitising material, namely tin does not lead to an altogether new invention Amendment merely clarificatory or elaborative.
Amendment allowed.

Patents Act, 1970 Section 25

Opposition at a pre-grant stage to the Patent Application

Expression 'may' give the opponent an opportunity to be heard has been replaced by the word 'shall hear'
HELD Denial of personal hearing to the petitioner before deciding the petitioner's objection, is without jurisdiction — Grant of patent is non est in law.
Therefore, advisedly right to object at a pre-grant stage has been given to 'any person' by the said amendment. This is an illustration of statutorily broadening the concept of locus standi and widening the scope of objection procedure by giving access to 'any person', who has a concern for public interest in the area of public health and nutrition, to raise an objection. The grant of patent is virtually a grant of monopoly right against the whole world and that is why such wide ranging right of objection has been designedly given at a pre-grant stage. [Para 32]
The petitioners in this writ petition are asserting their rights and voicing their concern on a broad public interest angle. So, it cannot be said if their right is denied they will not suffer any prejudice by denial of an opportunity of hearing to them to establish their rights. A right is a legally protected interest. Therefore when law consciously confers right on a person to object at a pre-grant stage that right must be protected in the way it has been granted, namely the right to object with a right of hearing. For a Court to dilute the said right on the basis of an interpretative process and by looking at it from a rather narrow angle, would, in our judgment, be a travesty of justice. [Para 33]
The argument advanced on behalf of the fourth respondent that the expression 'the Collector shall hear' in Section25(l)(k) of the said Act should mean 'the Collector may hear' is not sound in law. Here we may refer to the provision for hearing which existed prior to the said amendment. Under the pre-amended Section 25(2) the provision relating to hearing is couched in the following words:

"25(2) Where any such notice of opposition is duly given, the Controller shall notify the applicant and may, if so desired, give to the applicant and the opponent an opportunity to be heard before deciding the case."

Therefore, it is clear that the expression 'may' give the opponent an opportunity to be heard has been replaced by the word 'shall hear'. Where legislature itself makes such alteration, making its intention clear in specific term, no option is left except to follow the strict letter of law. [Para 35]
As explained above, the concept of prejudice in a disciplinary enquiry is different from the concept of prejudice in the present case. Grant of patent virtually confers the right of monopoly, which is a right in rem granted in favour of the fourth respondent. Before such a right is granted, law has provided that right of objection to any person. As the patent right is a right in rem, law by the 2005 Amendment confers right of objection also on very wide terms on any person. Law futher mandates when objection is raised, the objector must be allowed to place his objection in a proceeding in which he should be personally heard. That is the language of Rule 55(5) and 55(6) of the Rules, which are quoted herein before. [Para 49]
There is another age old principle which enjoins when statutes provides for doing something in a certain manner, it has to be done in that manner alone, all other modes of performance are necessarily forbidden. Following the said principle in the instant case it is clear that the grant of patent to the fourth respondent has been made in blatant violation of statutory procedure by the statutory authority, which is acting in a quasi-judicial capacity. Such a grant is not legally sustainable. [Para 51]
The remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage. The insufficiency of the opportunity of hearing at the pre-grant stage cannot be made good by grant of opportunity at the post-grant stage. Since, statute has given remedy at both the stages, it must be made available at both the stages. One cannot be a substitute for the other. An unfair trial cannot be cured by a fair appeal. See Institute of Chartered Accountants of India v. L.K. Ratna, AIR 1987 SC 71. [Para 55]
In view of those principles the third respondent is required to act with a greater application in view of the specific stipulations for consideration contained in Rule 55(6), read along with Section 25(l)(k) of the Act. So by denying a personal hearing to the petitioner before deciding the petitioner's objection, the third respondent acted wholly without jurisdiction in its order of grant of patent in favour of the fourth respondent. The grant of patent is thus as non est in law and consequently is liable to be set aside. [Para 60]

Patents Act, 1970

Sections 13(4) & 45
Patent in Synthetic Rope Gabion used for the preservation of riverbanks, seashores, seacoasts etc., particularly to prevent erosion caused by natural processes . Examination and investigation leading to grant of patent shall not be deemed in any way to warrant the validity of any patent — plaintiffs have at different places in different pleadings stated that their invention is for an improvement over the prior art and not for a new product — Looking to the state of prior art, publicly known, in existence and use, the technological advance claimed was obvious to the persons skilled in the art — Refusal to grant injunction

Patents Act, 1970


Section 8 

A detailed chart has been produced by the Defendant, which the Plaintiff has been unable to counter, which shows the history of the processing of the application by the Plaintiff in the US Patent Office. It shows that after the filing of Form 3 in India i.e. on 21st June 2001 and prior to the date of filing of reply i.e. on 19th October 2005 there were a series of developments in the US patent application. The examination report in the US is called as an Office Action. The final Office Action was prepared on 26th July 2001 whereby claims 1 to 8 and 10 to 16 were rejected. In response thereafter on 25th September 2001, the Plaintiff carried out a preliminary amendment of the claims. On 15th January 2002 some of these claims were rejected. A response was filed thereto by the Plaintiff on 8th February 2002. There was another non-final Office Action on 2nd July 2002 where again Clauses 1, 3 to 8,10 to 15 and 17 to 22 were rejected. There was yet another final office action on 19th November 2002 after the Plaintiff had sought to respond to the rejection by the earlier Office Action. The Plaintiff also filed an appeal on 18th February 2003 while simultaneously responding to the final Office Action of 19th November 2002. There was a final Office Action on 21st December 2004. From the Examiner Report of 20th June 2005 it is apparent from the chart that there were several developments in the US Patent Office Action which obviously did have a bearing on the examination of the application by the Indian authorities. When, by the letter dated 13th September 2004 (delivered to the Plaintiff on 20th October 2004), the Controller of Patents was asking for "details regarding the search and I or examination report in respect of same or substantially same invention filed as referred to in Rule 12(3) of the Patents Rules 2003 in respect of same or substantially same inventions filed in any one of the major patent offices, such as USPTO, EPO and JPO etc." the Plaintiff obviously was required to furnish the above details. The Plaintiff itself does not deny that it did not do so. The filing of the international search report in June 2001 was not in compliance with the above requirement.   

It is not possible to accept the submission, made by referring to the Halsburyfs Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act. It cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff. The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims to the torus shape of the compression spring, which was a key feature of the subject device. Had the Controller been informed of the Plaintiff?s own patent No. 3932005 dated 13th January 1976, he would have been called upon to examine if that patent taught the use of a toroidal shape of a compression member and whether therefore the subject device was an inventive step within the meaning of the Act.  

Under the amended Section 48 (1) of the Act, the patent granted shall, where the subject matter of the patent is a product, give the patentee the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Likewise, where the subject matter of the patent is a process, the patentee would have the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, as well as from the act of using, offering for sale, selling or importing any product obtained directly by that process in India. The change is therefore, that under the amended Section 48 a right is given to the patent holder Plaintiff, to prevent third parties from making, selling or offering for sale, the product for which such patent has been granted without the prior consent of the patent holder. The amended Section 48, however, does not in any manner change the position as regards the validity of the patent itself. It would still be vulnerable to challenge in terms of Section 13 (4) read with Sections 64 and 107 of the Act. A similar conclusion has been arrived at in Bajaj Auto Ltd. v. TVS Motor Company Ltd. (supra).   

A plain reading of the above provision is that the patent in respect of the subject device "may be used by or on behalf of the Government for the purpose merely of its own use." This is an implied condition of the grant of patent. In the circumstances, if the government through the Ministry of Railways has itself supplied the drawings to the prospective suppliers and asked them to supply side bearing pads in conformity with those drawings, it cannot possibly be said that there is an infringement by either the Railways or its contractor of the patent. In the present case, the Plaintiff has also participated successfully in the very tender in which the Consortium of the defendants has been awarded a small percentage of the contract for supply of side bearing pads. It knew of the above stipulation and has not chosen to question it till the tender was finalised and the contract awarded. The Plaintiff, by participating in such tender, must be taken to have consented to the use of its patent by both the Railways as well as any supplier of the Railways to whom the contract for supply was to be awarded. It is also not in dispute that the Defendants have formed their Consortium only for supplying the subject device to the Railways. Although Section 156 of the Act states that patent will bind the Government, that provision has also been made "subject to the other provisions contained in this Act." A harmonious reading of Sections 47 and 156 of the Act would indicate that the object is not to involve the Government or its department or a contractor acting on its behalf in any litigation involving infringement of patent when the product or process in question is for the "own use" of the government. This is a price that the patent holder pays for getting a sizeable chunk of the contract, in this case 95%, which is virtually a monopoly. Where it is not for the governments own use, or where the Government supplies the drawings of c. patented product without the knowledge or consent of the patent holder, then Section 156 would permit enforcement and protection of the patent even against the govern ment.  

For the above reasons, this Court is not satisfied that the Plaintiff has been able to make out a prima facie case for the continuation of the interim injunction in its favour. As will be seen hereafter, the balance of convenience at this stage also appears to be in favour of the Defendants 2, 3 and 4 for not granting an interim injunction in favour of the Plaintiff. Balance of convenience 55. The finalised tender document has been placed on record. What has been awarded to the Plaintiff is 95% of the the, quantity of the device to be supplied to the Railways. In fact Clause 7 of the "instructions" appended to the tender itself made it clear that "Item is reserved for bulk procurement for RDSO approved sources. Others can be considered for developmental order." What the Consortium has been awarded is the "developmental order" which is barely 5% of the total quantity. If the object of the Act is to ensure that the patent holder has the exclusive right to commercially exploit the patent, then that object is more or less achieved in the present tender as well, notwithstanding Section 47 of the Act. By refusing an injunction, while still imposing conditions on the Defendants 2, 3 and 4 to maintain accounts, the Court would be ensuring that in the event of the Plaintiff succeeding, it will be compensated even as regards the 5% quantity. In the above circumstances, the balance of convenience is not in favor of grant of an interim injunction as prayed for by the Plaintiff. 

*****

Patents Act, 1970


Sections 58 & 59

Revocation of Patent. Amendment in specifications by patentee.

HELD The law which emanates from reading of section 58 & 59 Paatents Act is quite akin to the law of amendment. The jurisdiction necessary to allow the amendment of a claim in the specification vests with the High Court. The claims can be amended and such amendment may be allowed provided that is it clarificatory or elaborative in nature and also, that it does not alter the scope of the claim or introduce any new claim in the invention which was not present in the original invention. Thus, the scope of enquiry in relation to amendments in the patent claim is limited to the extent as to whether it introduces any new claim which extends the scope of the monopoly rights of the patentee.Therefore Amendment seeking to clarify the scope of the sensitising process by mentioning some sensitising material, namely tin does not lead to an altogether new invention Amendment merely clarificatory or elaborative.

Amendment allowed.

******

Patents Act, 1970 Sections 2(l)(j), 14, 15, 80 & 117A


Patent Rules, 2003

The Patents (Amendment) Rules, 2006 — Rule 24 (4)

HELD that no doubt appellant should comply with all the technical objections within first six months or any other reasonable period and resubmit the documents with all necessary amendments

Rule of

(i) audi alteram partem

"Earlier it has been held that the Controller is not a court or tribunal as per the case "Martin and Botling developments Ltd's DPD 356" and so the provisions of CPC are not applicable to him. If that be the case, the respondent could have very well relaxed the conditions of the section 80 of the Act and could have offered an opportunity of hearing to the appellant at his convenience before issuing this impugned order. Otherwise too it is very well cast on the learned Controller as an administering authority of the Patent Law, to have offered an opportunity of hearing to the applicant before taking any adverse decision on this application. In the present case, admittedly no notice was given to the appellant providing it a reasonable opportunity to defend its case. Not only that an opportunity of hearing notice was not given to the appellant, but even fresh objections were brought in the impugned order by the respondent, that have not been first communicated to the appellant so as to enable it to defend its case by presenting its views and observations. Moreover in the impugned order the respondent has categorically refused to grant the opportunity of hearing to the appellant under section 80 of the Act by taking the plea that there was inordinate delay in resubmission. The impugned order under consideration has been undisputedly made without affording an opportunity of being heard to the appellant, and that order does affect the appellant adversely."

Therefore the impugned order made without affording an opportunity of being heard Impugned order, set aside