REVOCATION SCENARIO IN INDIA By, Shailee Gupta Women Scientist TIFAC trainee K & K

REVOCATION Revocation of patents can be made under Section 64 of the Indian Patents Act 1970. Revocation means: Cancellation of the rights granted to a person by the grant of a patent. The patent can be revoked on petition of any person interested or of the Central Government or on a counter claim in a suit for infringement of the patent by the High Court or on the basis of the grounds mentioned in section 64.

PATENT REVOCATION PLATFORMS Intellectual Property Appellate Board (Chennai) IPAB Platforms For Patent Revocation High Court

REVOCATION PROCEEDING Grant Publication of Grant <12 months- life of patent Revocation Petition in IPAB Revocation Proceedings Writ petition to High Court Revocation Overruled Revocation hearing successful Patent revoked

REVOCATION PROCEEDING CONTD… Notice for revocation 2 months Patentee replies to the notice Patent deemed to be revoked No reply 2 + 1 months Evidence in support to Revocation 2 + 1 months Evidence in Support of Application 1+ 1 months Reply Evidence Further Evidence Hearing

GROUNDS FOR REVOCATION The Claims are invalid; The Patentee is not entitled for the patent; Wrongful obtainment of patent; The subject of any claim is not an invention; The subject of the invention is not new;

GROUNDS FOR REVOCATION CONT… The subject claimed is obvious; The subject claimed is not useful; The description of the invention as disclosed in the specification is not elaborate; The scope of invention disclosed in claims is insufficient;

GROUNDS FOR REVOCATION CONT… The patent was obtained on a false suggestion or representation; The subject in claim not patentable matter; The invention was secretly used in India before the priority date; The details under section 8 not been disclosed or wrongfully disclosed;

GROUNDS FOR REVOCATION CONT… Secrecy direction has been issued against the invention; The amendment of patent application stands outside the section 57 or section 58; The origin of biological material was wrongfully disclosed or not disclosed; The invention claimed is anticipated by prior knowledge in any local community;

INITIATION OF REVOCATION PROCEEDINGS Central Government : Central Government directs the Controller to revoke the patent, if the invention relates to defence purposes, if the patent is for an invention relating to atomic energy, and if the Central Government feels that the patent or the manner in which it is exercised is prejudicial to public Revocation of patents in the High Court as counter claim in an infringement suit

INITIATION OF REVOCATION PROCEEDINGS CONTD… Controller: If a compulsory license has been granted for a patent, and if a person applies to the Controller on the ground that the patented invention is not worked at the optimum to meet the requirements of the public. If an independent patent has been granted for any modification or improvement on the main invention, the Controller on the patentee’s request may revoke the independent patent on modification of that invention and grant him patent of addition. {S.54(2)} If the patentee surrenders the patent the Controller may revoke the patent.

INFRINGEMENT UNDER THE INDIAN LAW An invention is considered to be infringed when: Any immaterial variation in the invention Mechanical equivalents Colorable imitation of an invention Imitation of essential features of the invention An act is considered to be an infringement when: The patented product is made, used, distributed, sold or imported The patented process has been used, or used, offered for sale, sold or imported the product directly obtained by that process

PROCEDURE FOR FILLING SUIT FOR INFRINGEMENT A suit for infringement has to be filed in a District or High court within whose territorial jurisdiction the cause of action has arisen, However as soon as a counter claim for revocation of patent is filled against the suit for infringement of patent, only high court has the jurisdiction of entertain the matter and the matter has to be transferred to high court for decision.

BURDEN OF PROOF TRIPS Article 34- Burden of proof would lie on the infringer With accordance to TRIPS agreement, in 2002 Section 104-A was introduced.  In any suit for infringement of a patent, where the subject-matter of patent is a process for obtaining a product, the Court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process if, -  (a) the subject-matter of the patent is a process for obtaining a new product; (b) there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving In considering whether a party has discharged the burden imposed upon him by sub-section (1), the court shall not require him to disclose any manufacturing or commercial secrets, if it appears to the court that it would be unreasonable to do so.

CASE STUDY-1 Application seeks revocation of the patent No: IN203552 for an invention titled “Method monitoring a sensor” The first independent granted claim of the specification states: A method of monitoring a sensor for detecting a flow speed of a medium, comprising the steps of detecting the flow speed of the medium by a sensor, comprising the flow speed of the medium detected by the sensor. With at least one operating parameter of a wind power installation or a hydroelectric power generator driven by the medium to determine whether the sensor operates correctly.

BRIEF OF REVOCATION The Bench also heard the Miscellaneous petition No.86 of 2012 , in respect of EP patent No. EP14544058, was filed for submitting a copy of the decision of the opposition Board. The respondent had amended the claims 1, 3, and 4 since the EP opposition Board had found the original claims were not novel in view of prior art.

The amended claim 1: A method of monitoring a sensor for detecting a flow speed of a medium, comprising the steps of detecting the flow speed of the medium by a sensor, Comparing the flow speed of the medium detect by the sensor, with at least one operating parameter of a wind power installation driven by the medium to determine whether the sensor operates correctly, wherein the flow speed is the wind speed and wherein a blade angle is used as the operational parameter if the wind speed is above the nominal wind speed.

The amended Claim 2: Wind power installation, comprising: A plurality of rotor blades driven by a medium, a sensor for detecting the flow speed of the medium and a comparison device for comparing the flow speed of the medium detected by the sensor to at least one operating parameter of the wind power installation to determine whether the sensor operates correctly, where the flow speed is the wind speed and wherein the power produced by the wind power installation is used as the operational parameter when the wind speed is below the nominal wind speed and wherein a blade angle is used as the operational parameter if the wind speed is above nominal speed.

HEARING The applicant raised a preliminary ground that having accepted the EP objections the patentee cannot be heard to say that the claims as granted will stand. The respondent submitted that they would be defending the claims as amended The amended claims were sent to the Controller who has given his opinion that the amendment doesn’t fall within S. 59. opinions were also furnished to both the parties for there oral and written submission

BASIS OF REVOCATION The applicant sought revocation on many grounds: Anticipation Obviousness Novelty Person skilled in the art Main ground of attack is that the invention is obvious in view of evidence of documents provided: Bonus –Info newsletter dated 1998 U.S. patent 5,289,041

REASONING FOR THE REVOCATION GROUNDS The council for the applicant submitted the following grounds: Obviousness: The applicant submitted that it is a matter of common knowledge that the wind speed variation and the blade pitch control are related. The power generated is relevant until the nominal power is reached and that the blade pitch angle is used to evaluate the accuracy of the sensor’s measurement. He submitted that the given proposed claims are not patentable since there is no inventive step and the amendment should not be allowed both on ground of delay and because it falls foul of S.59. On the ground of delay: The respondent had enjoyed the benefit of a covetous patent for too long. Even after the EP Opposition board proceedings the patentee had sustained the granted claims till jan. 2013

REASONING FOR THE REVOCATION GROUNDS CONTD… Anticipation: The applicant submitted that the granted claim 1 had 4 steps: Detect the wind speed by sensor, Measure power generated Derive wind speed from power so generated, and Compare actual wind speed The granted claim 1 had been given up and the expert was of the opinion that subject matter of claim 1 is not novel, and hence the above mentioned features must be accepted as prior art.

REASONING FOR THE REVOCATION GROUNDS CONTD… The Applicant reasoned further that the patent ‘041clearly shows the relationship between the blade pitch angle and the wind speed is well known. According to the applicant, the respondent’s expert has neither shown why the claims are patentable nor has he met the evidence of the applicants experts. The patent must be revoked

REASONING AGAINST THE GROUNDS Obviousness: According to the respondent the test of obviousness is a subjective one and as the applicant has not let in any evidence, he cannot be said to have proved the case of obviousness. The patent has been granted in 65 countries, and therefore the revocation must be dismissed. Respondent added that a piece of particular knowledge does not become common knowledge merely because it is widely read and accepted without question by the bulk of those who are engaged in the particular art.

REASONING AGAINST THE GROUNDS CONTD… The respondent submitted that the amended claim 1 was not only restricted to the operational parameter but to a method of monitoring a sensor for detecting the wind speed. He submitted that the amendment cannot be disallowed merely because of the delay and that the Controller has not seen if the amendment was within the frame of S. 59 but had instead examined the patentability.

Person Skilled in the Art: According to the respondent the applicant should prove that the person skilled in the art knew each and every prior art, read every text book and the prior art must be widely read, and even if it is in a patent text book it does not mean that it is known, and also that this person skilled in the art is working in India. Roche V. Cipla , says one need not add further qualities and that one must “presuppose that the said person would have the knowledge and the skill in the said field of art and will not be unknown to a particular field of art and it is from that angle one has to see that if the said document which is prior patent if placed in the hands of the said person killed in the art whether he will be able to work upon the same workshop and achieve the desired result leading to patent under challenge.” The words “in india” used in this context of enablement but not with reference to obviousness. S.25 (1) (d) Limits public knowledge and public use to such use and knowledge in India as a ground for opposition, as does S.25(2) (d) refers to complete specification published in India, as does s. 25 (2)(b). For revocationS64(1)(e) relating to prior use and knowledge the word “India”, in S. 64(1)(h) relating to enablement, the addressee of the complete specifications is a person in India, in S.64(1)(l) the sevret use must take place in India

ENABLEMENT MAN!! He made clear in the context of enablement, the person whom the complete specification are addressed is a person “who has average skill and average knowledge.” Neither of these attributes has been assigned by the act. We do not intend to visualize a person who has super skills, but we do not think we should make this person skilled in the art to be incapable of carrying out anything but basic instructions. The Act makes distinction between the person skilled in the art (the obvious person) and the person who has average skill (enablement man)

PATENT NO. IN203552 IS REVOKED The bench found the dismissed the amendment application but since there was a an inventive step we directed the respondent to file amendment claim confirming to our finding On the ground of delay the patent is revoked reason being patentee sought amendment in Sept 2012 without prejudice to his right to sustain his granted claims, But they had already filed in the EP Opposition proceedings in Jan 2010 their auxiliary petition. Yet they kept their unamended claims until the hearing. Here , the bench found the invention as obvious. Prior art submitted, stated the invention’s proposed claims to be obvious.

CASE STUDY-2 The revocation petition is for patent no concern is IN194620 (782/Del/1996) titled “ An improved metal fixture useful for holding electrical bulb” Grounds for revocation were: Not an invention S.64(d) Anticipation Novelty Obviousness Insufficiency

BRIEF FACTS The patent applicant firm was engaged in the business of production and manufacturing of Bakelite Bulb holder brass rings for several years and that they are the true owner. The impugned patent relates to an improved metal fixture useful for holding electrical bulb and provides a method and technology for manufacture of metal fixture. The patentee is not the inventor. The same was known in the prior art several years prior to the filling of the disputed patent. All claims are forged, Fictitious, incorrect and illegal

APPLICANT CAN’T BE CONSIDERED AS PERSON INTERESTED On the date of date of filing for the revocation, the plaintiff/applicant is the sole proprietor of the firm M/s Ganesh Enterprises was closed Hence the applicant is not engaged in any such business of production or marketing of Bakelite Bulb holder brass rings at the time of filling of this application for revocation and hence is not a person interested or aggrieved by the grant of the patent. In this view , the question of inventive step or inventiveness does not arise Hence can be revoked on the grounds 1. that the claims in the complete specification is not a invention. As in accordance to S2(1) 9j) all three pre-requisites of an invention i.e. novelty, inventive step and industrial application should be satisfied for an invention. The impugned patent is neither novel nor does it involve any inventive step. And there for liable to be revoked under S64(1) (d). 2. The impugned patent is not new since it was publically known and used in India before the priority date of claim. The patent is liable to be revoked under section (1) (e) 3. The present invention doesnot involve future technical advace over the existing state of art. Thus the invention is obvious to all persons skilled in the art. The patent is invalid and is liable to be revoked under section 64(1) (f) of the Act.

GROUNDS CONSIDERED BY THE BENCH FOR REVOCATION The claims in the complete specification is not an invention. As in accordance to S2(1) 9j) all three pre-requisites of an invention i.e. novelty, inventive step and industrial application should be satisfied for an invention. The impugned patent is neither novel nor does it involve any inventive step. And there for liable to be revoked under S64(1) (d). The impugned patent is not new since it was publically known and used in India before the priority date of claim. The patent is liable to be revoked under section (1) (e) The present invention does not involve future technical advance over the existing state of art. Thus the invention is obvious to all persons skilled in the art. The patent is invalid and is liable to be revoked under section 64(1) (f) of the Act.

RESPONDENTS REASONING AGAINST THE REVOCATION Invention patentable: As per s2(1)(j) of the Act, “Invention means a new product or process involving an inventive step and capable of industrial application”. Invention relates to new product which never existed in any of the prior art document. The inventive step in this patent is the use of brass rings without any joints and thickness of ‘J’ section which ensures that the bulb is held by a ring firmly and does not get twisted, distorted or loose by innumerable application of stress and pressure. Thus it provides lifetime durability to the ring.

RESPONDENTS REASONING AGAINST THE REVOCATION CONTD… The utility of the ring is that the ‘J’ section will never get twisted or distorted as the ring does not have joint which can be separated by stress and also because lower portion of the ring towards the ‘J’ section has been deliberately kept thickest in width and gauge as compared to the upper portion which gets fixed to the Bakelite holder. The patent is thus a valid invention.

RESPONDENTS REASONING AGAINST THE REVOCATION CONTD… Novelty: The respondent submitted that the invention is novel and is not in publically known and used in India before the priority date of the claim. The novelty lies in the use of an improved metal fixture comprising seamless molded metal sheet having variable thickness of the ‘J’ section which ensures that the bulk is held by the ring firmly and does not get twisted, distorted or loose by innumerable applications of stress and pressure. Thus the patent is not liable to be revoked under 64(1)(e) of the Act.

RESPONDENTS REASONING AGAINST THE REVOCATION CONTD… Obviousness: There were no teaching or prior art available which would enable a person skilled in the art to arrive at a improved metal fixture useful for holding the electrical bulb having all the inventive features required by claim 1 of the Indian Patent No. 194620. hence is not liable to be revoked under S64(1)(f) of the Act. Anticipation: No prior art is cited. No ground for revocation has been substantiated.

The respondents filed a suit against the parties mentioned by the applicants and obtained an interim injection. The interim injunction was vacated on the ground that the patent was not granted on the date of hearing of interim application. The matter was listed for hearing on 31/08/2012 and Shri Surya Senthil, learned counsel for the applicant and Shri Sachin Gupta, Learned counsel for the respondent argued the matter. Restraining order (also called Injunction), which are passed to stop either party from acting in a particular manner during the pendency of the civil action. These are essential passed by the court to prevent situations in which either party may suffer a harm because the other party did/continued an act which was the matter in issue and

ARGUMENTS OF BOTH THE PARTIES The counsel for the applicant submitted that the application for grant of patent was filed on 11/04/1996. The patent granted is in contravention of the provisions of section 64 of the act. The specifications are already in existence. There is slight variation and nothing more. The patent is obvious to the people who are in trade. The patent therefore ought to be revoked.

The counsel for the respondent submitted that there is no proof to say that it is in public domain. Though the applicants state that there is nothing new or novel and that it is already known, they have not cited any prior art in proof for the same. Therefore, the application has to be dismissed.

REVOCATION DISMISSED The bench heard both the sides pleadings and documents. The applicants main contention was that they are carrying on business of manufacturing and marketing of Bakelite Bulb holding brass rings and that the impugned patent affected them. The applicant argued the invention was not novel, but not filed any document on evidence in support of their contentions. No evidence was found by the bench in support of their connection that they are carrying on business in the same field.