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Expedited Patent Examination in India

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Introduction

The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

  • The patent applicant is a start-up
  • The patent applicant was a start-up at the time of filing the patent application
  • The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant is a start-up

The patent applicant has to be a start-up as defined by the patent rules to opt for expedited examination.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

  • The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.
  • The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66). 

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination. 

Fees for expedited examinationThe fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

fee structure

Converting ordinary examination request to expedited examination request

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below. 

Conversion to expedited exam fee

Expedited examination procedure

The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.

Flowchart for expedited examNote that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.

You may also download the article for your reference. 

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

Qualifying as a start-up as per the Indian Patent Rules

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Introduction

The Indian Government has announced various initiatives to promote start-ups. One such initiative brings various benefits to start-ups in their patenting initiatives. The benefits primarily correspond to discounts in government fees and expediting of patent examination. The government fees charged for start-ups will be the same as that charged for natural persons (individuals). In this article, we discuss the criteria to be met by an entity, regardless of whether the entity is Indian or not, to qualify as a start-up.  

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Criteria to qualify as start-up

Most of the criteria are objective, with one criterion being subjective in nature. To begin with the objective criteria are listed as questions, and if the answer to each of the below listed questions is in the affirmative (yes), then the entity qualifies as a start-up.

  1. Is the applicant for a patent a Private Limited company as defined in the Companies Act, 2013 or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002?

Explanation: At present, it appears that Non-Indian partnership and limited liability partnership firms may not qualify as start-ups, since registration in India of such firms appear to be mandatory to claim benefits. However, a Non-Indian entity as long as it meets the definition of a “Private Limited Company” as defined in the Companies Act, 2013, can qualify as start-up. The definition is provided below.

“private company” means a company having a minimum paid-up share capital of one lakh rupees (USD 1515 at conversion rate of USD 1 = INR 66) or such higher paid-up share capital as may be prescribed, and which by its articles,—

  • restricts the right to transfer its shares;
  • except in case of One Person Company, limits the number of its members to two hundred:
  • Provided that where two or more persons hold one or more shares in a company jointly, they shall, for the purposes of this clause, be treated as a single member:
  • Provided further that—

(A) persons who are in the employment of the company; and

(B) persons who, having been formerly in the employment of the company, were members of the company while in that employment and have continued to be members after the employment ceased, shall not be included in the number of members; and

  • prohibits any invitation to the public to subscribe for any securities of

 the company;

  1. Has the entity been registered or incorporated within the last five years?
  2. Has the turnover of the entity in each of the financial year in the last five years been less than INR Twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66)?
  3. Has the entity been formed without splitting up or reconstructing a business, which was already in existence?

The entity has to provide evidence in support of the above listed criteria to be recognized as start-up. The evidence for an Indian entity can include registration or incorporation certificate, and Balance sheet/Income tax acknowledgment for the corresponding years. Whether a declaration by a Chartered accountant regarding the income of the company be accepted is yet be determined. A foreign entity may provide equivalent documents as evidence.

Further, with regards to the subjective criterion, an entity to qualify as start-up should  be working towards innovation, development, deployment or commercialisation of new products, processes or services driven by technology or intellectual property. The criterion is considered to be met if the entity aims to develop and commercialise a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow. The entity may provide evidence supporting its claim to have met this criterion by providing a declaration mentioning that based on the patent application that is being currently filed they are working towards developing and commercializing a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

We hope this article helps patent applicants decide which type of entity they fall under. You may also read our article to know about how to claim small entity status

You may also download the article for your reference. 

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License 

 

Tactical approach to deal with Final Rejection from the USPTO

Introduction

The USPTO while examining a patent application may issue an office action rejecting one or more claims. The rejection of the claims may be non-final or final. A final rejection is typically issued during second or subsequent examination of the pending patent application. A patent applicant will generally have three months or six months time (with extension fee) from the mailing date of the final rejection to send in an appropriate reply. If the applicant fails to respond within the stipulated period, the application will be abandoned.

The final rejection is intended to close prosecution of the pending patent application. However, several options exist to pursue the patent application even after receiving the final rejection.

Options

The options that are available to the applicant after receiving final rejection are listed below:

1.      Amendment

2.      Appeal to the Patent Trial and Appeal Board

3.      Interview

4.      After Final Consideration Pilot 2.0 (AFCP 2.0)

5.      Request for Continued Examination (RCE)

6.      File a continuation application

7.      Abandon the application

Amendment

The applicant may respond to the office action by making amendments. An amendment may be made by canceling claims or complying with any requirement of form expressly set forth in the office action. An amendment touching the merits of the application may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

Advisory action will be issued by the USPTO if the response to the final office action fails to overcome the rejections of the final office action. On the other hand, if the response to the office action overcomes the rejections in the final office action, a notice of allowance will be issued by the USPTO.

Appeal to the Patent Trial and Appeal Board

An applicant whose patent application claims have been rejected twice may appeal from the examiner’s decision to the Patent Trial and Appeal Board by filing a notice of appeal. The notice of appeal should be filed within a maximum period of six months from the final rejection, unless a shortened period is expressly specified in the office action. Further, the appellant should file an appeal brief within two months from the date of filing the notice of appeal. Failure to file the appeal brief will result in the appeal being dismissed.

Interview

The examiner after issuing the final rejection may grant one interview to the applicant in order to place the application in condition for allowance or to resolve issues prior to appeal. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing by the applicant. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search will be denied.

Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time. A second or further interview after a final rejection may be held if the examiner is convinced that it will expedite the issues for appeal or disposal of the application.

After Final Consideration Pilot 2.0 (AFCP 2.0)

AFCP is one of the ongoing efforts by the USPTO towards enhancing communication between the Office and the applicant, thereby resulting in compact prosecution.

The applicant should submit a request for consideration of the application under AFCP. The applicant should also submit a response which includes an amendment to at least one independent claim, and the amendment should not broaden the scope of the independent claim in any aspect. The applicant can submit the request even after receiving an advisory action and filing a notice of appeal. Only one AFCP 2.0 request may be filed in response to an outstanding final rejection.

If the amendment necessitates the examiner to conduct additional search and/or consideration is required but cannot be completed within the allotted time, the examiner may issue an advisory action. If the amendment does not necessitate the examiner to conduct additional search and/or consideration or if additional search and/or consideration could be completed within allotted time, then the examiner determines whether the amendment places the application in condition for allowance. If the examiner determines that the amendment does not place the application in condition for allowance, then the examiner will contact the applicant and request an interview.

From a survey, it has been found that AFCP 2.0 program was effective in advancing prosecution and reduced the likelihood of filing an RCE.

Request for Continued Examination (RCE)

An RCE is a request filed by the applicant for continued prosecution of the application after receiving a final rejection from the USPTO. Request for an RCE should be filed before abandonment of the application. The last office action (final rejection) is withdrawn upon filing of a RCE. The RCE may be accompanied by new arguments or amendments.

File a continuation application

A continuation application is an application which has the same content as in the pending patent application, but with claims of varying scope or rejected claims of the pending patent application. Continuation application does not get abandoned when the pending patent application is abandoned. Therefore, claims of varying scope may be filed through a continuation application which will undergo new examination. However, if claims that are rejected in the pending patent application are presented as it is in the continuation application, then the first office action will be a final rejection.

Abandon the application

Not responding within the time as set forth in the final office action (final rejection) or within such extended period will result in abandonment of the application.

Conclusion

As illustrated above, several options exist after a final rejection is issued. Some options are more expensive than the other. Further, each option allows the applicant to practically do different things to pursue a patent grant.  Hence, an applicant has to carefully evaluate his position during patent prosecution and choose one or more options that best serves his interest.

InvnTree expertise in preparing response to office actions is used by US law firms and in-house counsel. Patent prosecution support is one of the core services offered by InvnTree.

I hope you found this article helpful. You may subscribe to our articles to receive notification of such interesting articles in your inbox.

You may also download a copy of our article. 

Feel free to check our patent services page to find out, if we can cater to your requirements.

Best regards – Team InvnTree

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Strategic use of US Continuation Applications in building Patent Portfolio

One inventive concept, be it a product or process, may sometimes have the potential to support multiple patents. There are several ways to accomplish a portfolio of patents when you find that having multiple patents gives the best scope of protection for your invention.

In this regard, there are two tools for continuing prosecution before a patent examiner. These two tools are a Request for Continued Examination (RCE) and a continuing application. There are three types of continuing applications, namely, continuation application (CON), divisional application (DIV), and continuation-in-part application (CIP).

Continuation applications are wonderful tools to increase the size and scope of your patent portfolio. With some careful planning, you can use continuation applications to turn your invention into multiple patent applications and patents which will provide a broader, inter-locking patent protection and thoroughly cover a particular market or technology.     

If you have filed a patent application in the United States Patent and Trademark Office (USPTO) or you have filed an international application designating the United States, and the application is currently pending, the filing of a continuation application could be the next step in your patent strategy.

What is a continuation application?

A “continuation application” is a new, complete patent application derived from an earlier-filed application (useful reference: MPEP 201.07).  A continuation application is filed by an applicant who wants to pursue additional claims to an invention which was already disclosed in one of their earlier applications. The prior-filed patent application is referred to as the parent or base application and the continuation application is referred to as the child application. The child continuation application will "claim priority" from the parent application and subsequently retains the priority date and the specifications of the disclosed invention of the parent application.

Why is priority important?

Earlier the filing date of a patent application, the less prior art it faces. Filing a patent application on a certain date excludes all references from the prior art that are effective after that certain date. Generally, this is why you would want to claim the priority of an earlier application, when available. If the continuation application successfully claims priority to an earlier-filed parent application, you get the benefit of the filing i.e. priority date of the parent application in the continuation application. This means that the child application is treated as though it was filed on the filing date of the parent application. 

Moreover, chains of priority claims are possible. For example, assume a first or grandparent patent application “Pat.A” is filed, and before it issues, a parent application “Pat.B” is filed properly claiming the priority of the grandparent application under 35 U.S.C. §120.  Further, a third child application “Pat.C” is filed properly under 35 U.S.C. §120 claiming the priority of the parent, Pat.A, and grandparent application, Pat.B, In this case, the child application Pat.C is entitled to the priority of the grandparent application Pat.A.

Long chains of priority applications extending over as much as 20 years can be developed under the current law, and in this case the priority claims can antedate a large body of references and prior art.

Basic requirements to file a continuation application:

A continuing application has three basic requirements (useful reference § 35 U.S.C. 120):

1) A pending parent application;

2) At least one common inventor with the parent application; and

3) A proper claim of priority to the parent application.

Apart from these requirements, the continuation application also needs to contain or must be amended to contain a specific reference to the parent application from which a benefit is claimed under § 35 U.S.C. 120, 121, 365(c), or 386(c).

Pendency of applications:

A U.S. patent application is considered “pending” during the time between its date of filing, and the date that it is either abandoned or issued as a U.S. patent.

As stated in § 35 U.S.C. 120, a child application is considered to be copending with an earlier application if it is filed before the earliest among these events:

(a) The granting of the earlier patent;

(b) The abandonment of the earlier application; or

(c) The termination of proceedings of the earlier application.

Granting of the earlier application:

The filing of the continuation application must be done before the parent application has been granted. When a patent application has been approved and is about to be issued, there is a three-month time limit to pay the issue fees of the patent grant. It is also possible to file a continuation application in this time period.

Abandonment of the earlier application:

A patent application may be abandoned before a patent is issued. If a parent application is going to be abandoned, then any continuing application claiming its priority needs to be filed before the parent application is abandoned.

The parent application is considered to be abandoned according to the regulations described in 37 CFR 1.135. A patent application can be abandoned in two ways. First, it can be abandoned if the owner doesn't respond to the latest USPTO notice or office action letter. This can occur, for example, if the USPTO requests an amendment to the patent application by a certain date and the amendment is never turned in. An application can also be abandoned if the owner makes a formal request for abandonment. If abandonment happens before the patent application is published, which occurs 18 months after the application is filed, the application will remain private and can't be viewed on the USPTO database.

Termination of the earlier application:

The filing of the continuation application must be done before the parent application has been terminated.

A patent application can be terminated during the proceedings in the following situations:

  • The application becomes abandoned if the issue fee is not paid by the original three-month deadline, and any continuing application filed after the three month deadline is not considered co-pending with the abandoned parent.

·         The Patent Trial and Appeal Board decides to terminate the proceedings in an application as explained in MPEP § 1214.06, for example, a patent application for which no claims stand allowed.

·         A decision of the court orders the termination of the parent application as explained in MPEP § 1216.01.

One common inventor with the parent application

There must be at least one inventor in common between each continuing application and all of its antecedent applications. Every application in a chain of application having their priority claims filed under 35 USC 120, must have filed at least one common inventor. This rule also applies to any provisional patent application(s) present in the priority claim chain.

If there is no common inventor between the parent and the child applications, the child application will be considered as an invention on its own. In this case, the parent application turns up in the prior art search, and the child application may be rejected due to double-patenting of an invention.

Proper claim of priority to the parent application

The continuation application must have a proper chain of priority claims. If there are intermediate patent applications between the parent and the child application, the priority claims between each of the intermediate applications must be properly stated.

The continuation application cannot introduce new matter [35 USC §132(a)] and the disclosure in the application must correspond to that of the parent application(s) which the application claims benefit from. Minor changes to the title, summary or claims are allowed. However, these changes may not include any new matter, but they may take out any references to inventions that do not fall under the scope of the continuation application.

When a continuation application is typically filed?

This type of application is often filed when a patent examiner has allowed some claims but rejected others in a patent application, or when an applicant feels that they have not exhausted all the useful ways of claiming different embodiments of the invention during patent prosecution; or to establish a right for further examination by the U.S. Patent and Trademark Office.

What are the pros of filing a continuation application?

1) Acquainting the Examiner

Patent Examiners operate under time constraints that do not always allow them to learn the details of a patent application before issuing a rejection. If the claims are worded broadly, the Examiner will only search deep enough into the prior art in order to find the claimed elements. Therefore, early claim rejections of broadly worded claims may often be based upon art that is unrelated to the patentable subject matter. However, through the course of prosecution the applicant may be able to educate the Examiner as to the problem that is addressed by the claimed invention and why prior art solutions are distinguished.

If the continuation application is examined by the same examiner, they may begin the examination with the knowledge of the previous prosecution. This enables the examiner to more efficiently examine the patent application and can result in a higher quality first action and shorter overall prosecution of subsequent continuation applications.

2) Earlier Patent Issuance

Patent applications are typically written as broadly as possible and for this reason are met with resistance in the Patent Office. The Patent Office will often allow the narrow claims of an application while rejecting the broader claims. When an applicant has a particular product with immediate commercial potential, it may be wise to let go of the broad claims during prosecution to obtain a patent on the narrow claims covering the specific product. The broader claims can be filed in a separate continuation application, with the commercial product being protected in the meantime. An early patent issuance advances and maximizes the enforceable term of the granted patent and enables earlier enforcement of patent claims against infringers and leads to the marking of commercial embodiments with a patent number to deter potential infringers.

Separating the claims between the parent and the child application will also prevent the payment of extra claim fees for claims in the parent application that may be dropped during patent prosecution.

3) Preserving Protection of Equivalents

When claims are rejected during patent prosecution, amendments are often made to the claims in order to add additional patentable features. These added claim features may not be granted any equivalence under the Doctrine of Equivalents.

The Doctrine of Equivalents is used by a patentee to argue that a product is infringing on the invention of the patentee, when the accused product does not perfectly read on to any claims of the infringing patent, and there is insubstantial difference between the accused product and the infringed invention.

On the other hand, by using continuation applications, narrowly crafted claims may be presented in the parent application since they have a higher likelihood of quick issuance with minimal or no amendments. The broader claims that cover the invention may require extensive amendments or arguments, and hence may be saved for prosecution in a separate continuing application. This helps in preserving the doctrine of equivalents to protect the invention from competitors who adopt an identical essence of the invention.

4) Protecting Against Competitor Design-Arounds

A competitor will often attempt to change minor designs in a product based on the patentee's invention in order to fall outside of the claims of the patent. This is usually done to reduce a threat of potential patent infringement. 

When a continuation application is kept pending through the life of a family of patents, new claims may be drafted in the continuation application that seek to cover the newly designed competitor features. However, this can only be done if the material covered by new or altered claims in the continuation application was already disclosed in the original patent application.

5) You want to claim minor variations

Maintaining the pendency of the subject matter disclosed in the patent application allows the patent owner to craft new claims for the same disclosure at a later date. This may be done for various reasons such as separating claims by market so that one set of claims may be licensed only into one market and another set of claims may be licensed only into another market; or separating claims into standards essential and not standard essential, or into functional claims and ornamental claims; and so on.

6) Broadening patent protection

Continuation applications allow the inventor greater flexibility in claiming the invention. In a continuing patent application, the focus of the claims can be altered or shifted regardless of whether the claims include the primary invention described in the patent application.  A continuation application does not need to disclose a new or an original invention. It can merely contain different claims for an invention which was already disclosed in the parent application.

What are the cons of filing a continuation application?

1) Increased cost

The cost of pursuing multiple continuing patent applications can be very high. Continuation applications also lead to increased USPTO fees as each application and patent in the family requires separate filing, issuance, and maintenance fees in addition to patent agent or attorney fees. Such costs may be restricting for new commercial ventures, small companies, and independent inventors.

2) Increased time

A utility patent application in the United States may take at least 2 years to be granted. When multiple continuation applications are filed, the time taken for the prosecution and granting of those applications may require several years.

3) Less remaining patent term

Utility patent terms are measured as twenty years from the earliest filing date. The result of filing a utility continuation application instead of a separate independent application is that the term of any utility patent maturing from the continuation application is calculated from the filing date of the parent application and not from the filing date of your child continuation application. Thus, when the parent application expires, any continuation applications claiming its priority date will also expire. If the time taken for the prosecution and granting of the continuation application is considered, the continuation application may have an even lesser active time.

4) No new matter can be added to the disclosure

A continuation application inherits the parent application’s priority date and its specification is limited to the parent application’s disclosure. Any new developments that occurred since the original patent filing cannot be described in a continuation application because new matter cannot be added to a continuation application.

Conclusion

Continuation-application filings are becoming increasingly common. The advantages of continuation application practice come with some disadvantages that must also be considered while developing a patent strategy. Filing continuation applications offers many advantages, particularly now that patents are frequently enforced. However, blindly filing continuation applications will lead to an explosion in costs.

I hope you found this article helpful. You may also download the article for your reference. 

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Feel free to check our patent services page to find out, if we can cater to your requirements.

Best regards – Team InvnTree   

This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

 

Why should patent specifications be drafted by patent professionals?

Patent Specification; the most important document

A patent specification is a techno-legal document based on which patent rights are decided. The specification is what appears in public domain once it is published. Competitors, person with ordinary skill in the art and general public may be among those who read the specification, apart from the patent Examiner. Hence, it is important to bestow extreme care while drafting patent specification, most importantly with respect to the language and structure.

Using/Picking the right language is important

A specification is a tool, which may be used in favour of the patentees or against the patentees. Since it is a tool of such importance, it should not be left to a layman to design it.

Often, inventors are seen drafting their own patent specifications, without taking help of professionals, due to various reasons. But, some inventors may not even be aware of the patenting process and its requirements and hence may not necessarily be able describe the invention to satisfy the requirements in legal terms. As such, inventors, who are novice to the process of patenting, may easily make mistakes in the specification and such applications may face rejections for failing to comply with the requirements set forth by the Patents law. As such, all the effort put into the patenting process may go in vain.

It is extremely important to use carefully selected language to describe an invention to satisfy requirements both in legal terms as well as in technical terms. Selection of the right words/language may prove tricky when the draft-person is a novice. Words have to be chosen extremely carefully because even the slightest mistake, which may not seem harmful, may be often used against the patentees during prosecution or opposition proceedings. Unclear and indefinite languages used in the specification are always likely to attract competitors, or any person interested to invalidate or oppose the patent/patent application.

A specification is valuable and it should be refined to perfection by choosing the language carefully and intelligently. To apply such intelligence in drafting, it is recommended that a skilled professional drafts the specification.

Probable mistakes in a specification

There are certain critical areas where mistakes might occur when one does not understand the importance of language and the structure of the specification and the nuance involved in using the appropriate language. Not only is the language important, satisfying the requirements of patentability is equally important.

Critical terms not defined:

MPEP § 2111.01 states, any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.”

In a patent application, the claims may use critical terminologies. Such terminologies may have to be defined well enough in the specification; as such terms may not always interpret a dictionary meaning. In a patent specification one can define the terms one wants to use in the claims to give them the meaning one intends. Unless certain critical terminologies are not well defined, the terminologies are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art (MPEP § 2111.01).

While discussion about the mistakes that may occur with respect to language used in a specification, reference can be made to the case of Chef America v. Lamb-Weston.

Chef America (the plaintiff) sued Lamb-Weston (the defendant) in the United States District Court for the District of Colorado on charges of infringement on their patent US Patent No. 4,761,290. The plaintiffs appealed from the United States District Court for the District of Colorado. The United States Court of Appeals for the Federal Circuit affirmed the judgment passed by the District Court.

Claim 1 of the above patent reads as follows,

“ A process for producing a dough product which is convertible upon finish cooking by baking or exposure to microwaves in the presence of a microwave susceptor into a cooked dough product having a light, flaky, crispy texture, which comprises the steps of: providing a dough; applying a layer of shortening flakes to at least one side of said dough; coating a light batter to a thickness in the range of about 0.001 inch to 0.125 inch over said at least one side of said dough to which said shortening flakes have been applied; heating the resulting batter-coated dough to a temperature in the range of about 400° F. to 850° F. for a period of time ranging from about 10 seconds to 5 minutes to first set said batter and then subsequently melt said shortening flakes, whereby air cells are formed in said batter and the surface of said dough; and cooling the resulting dough product.”

With respect to the step of “heating”, because the specification did not define the some of the critical terms in the claim, the district court looked at the ordinary meaning of the terms and concluded that the claims clearly refer to the “temperature of the dough” and not the “temperature at which the oven should be set”. It was noted that the defendant’s process did not involve heating its dough products to the temperature range specified in the plaintiff’s patent and, therefore, has not infringed on the plaintiff’s patent. According to the court, when the patentees (now plaintiffs) say, dough is to be heated to the specified temperature, nothing indicates that these words are to be interpreted differently from their literal meaning. The Court of Appeals for the Federal Circuit’s statement, “These are ordinary, simple English words whose meaning is clear and unquestionable” is worth mentioning. The plaintiff’s patent does not even remotely suggest that it is the air inside the oven that is to be heated and not the dough products.

The plaintiffs urged that the claim should be read as heating the . . . dough “at” a temperature in the range of,” to interpret that it is the air inside the “oven” that is being heated and not the “dough”. The Court of Appeals for the Federal Circuit discerned nothing in the claims, the specification, or the prosecution history that indicates that the patentees here defined “to” to mean “at.” The prosecution history, in contrary, suggested that the patentees intentionally used “to” rather than “at” in drafting the temperature requirements of the claim.

The plaintiffs criticized the district court for failing to construe the claims as one of ordinary skill in the art would do. The district court, however, rejected this contention and so did the United States Court of Appeals for the Federal Circuit.

Indefiniteness in claim language

Claims are considered indefinite when they are ambiguous and do not distinctly point out the subject matter. One who drafts the specification needs to understand the subject matter and accordingly strategize the claims. Claims should provide information to the public/person with ordinary skill in the art of the boundaries of infringement of the claimed subject matter. A person with ordinary skill in the art must be able to perceive the boundary from the construction of the claim. Claims that fail to satisfy this requirement may attract rejections for not complying with 35 U.S.C 112 (b).

In DATAMIZE, LLC v. PLUMTREE SOFTWARE, INC. concerning indefiniteness of a claim, the United States Court of Appeals for the Federal Circuit affirmed the district Court’s judgment that Datamize’s (plaintiff) claims were indefinite and invalid under 35 U.S.C. § 112.

Plaintiff sued PLUMTREE SOFTWARE, INC (the defendant) for infringement of its patent (US 6014137).  The defendant moved for summary judgment arguing the plaintiff’s patent claims were invalid for indefiniteness. The district court granted the defendant summary judgment concluding that the patent’s only independent claim is indefinite due to use of a phrase “aesthetically pleasing”.

The plaintiffs pointed out that the phrase “aesthetically pleasing” should be considered in the context of its claim. In the context of the claim, “aesthetically pleasing” relates to the look and feel of custom interface screens on kiosks, and the aggregate layout of elements on an interface screen. From this context, one may identify that the components of the claimed invention are “aesthetically pleasing,” but a clear and meaningful definition for the phrase “aesthetically pleasing” itself cannot be derived.

The written description also fails to set forth an objective way to determine whether an interface screen is “aesthetically pleasing.” Some statements indicate particular aspects of the screen that might affect whether the screen is “aesthetically pleasing”, such as button styles, sizes, placements, window borders, color combinations, and type fonts. There was, however, no indication as to how to determine what button styles, sizes, and placements, might be considered “aesthetically pleasing.” Thus, the written description does not provide any reasonable, definite construction of the term “aesthetically pleasing.”

Plaintiffs argued that one of ordinary skill in the art would understand the phrase “aesthetically pleasing” to distinguish aesthetic constraints from purely functional constraints. The Federal Circuit stated that one cannot rely on an understanding of the phrase “aesthetically pleasing” derived from design patent law. The Circuit also pointed out that the plaintiff’s patent does not indicate that “aesthetically pleasing” means “aesthetic rather than functional”.

The Circuit stated that, the claim in question would not have been indefinite if an “aesthetically pleasing” look and feel for an interface screen was objectively verifiable. The patent, however, fails to provide any objective way to determine whether the look and feel of an interface screen is “aesthetically pleasing” and hence was not sufficiently definite in determining infringement. Hence the Court of Appeals for the Federal Circuit affirmed the judgment passed by the district Court.

Limiting Preamble

A preamble of a claim defines the field of the invention and/or its intended use. Whether a preamble is limits the scope of the claim is not something that can be determined by a standard set of rules that are applicable in all cases. In some cases, the preamble may not appear limiting and may have negligible importance in analyzing infringement, however, in certain cases preambles may be considered as claim limitation.

If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction (MPEP § 2111.02).

Hence, the preamble should be crafted with care such that the body of the claim is sufficiently self contained to be comprehensible without the preamble, also keeping in mind that it does not make the claim more vulnerable to being anticipated by prior art. The preamble and the body of the claim, however, should be consistent one with the other, the two parts making up a whole.

Non enabling disclosure

Often, inventors feel that to get a broader protection one should describe their invention broadly and include fewer details in the disclosure. This, however, is not advisable. A patent claim is invalid if it is not supported by an enabling disclosure (MPEP § 2164). Describing the invention without any specificity does not comply with the enablement requirement of patentability. The enablement requirement requires a specification to enable one with ordinary skill in the art to perform the invention. It is on the drafter to apply his/her skills in describing the invention as explicitly and precisely as possible.

Non inclusion of multiple embodiments

The rest of the specification is as important as the claims in a patent. Claims define the scope of protection and description supports and enables the claims, with the help of embodiments/examples. One good way of preventing competitors from working around the patent is by providing multiple versions of the invention in the description. The full invention and the manner it has to be carried out including the best method, is what an ideal specification covers. With multiple embodiments one can describe all possible scopes and limitations that the invention may have because it is important that one describes not only the best mode that works, but also cover everything within scope that is supposed to work. Inclusion of multiple embodiments is one way of (a) describing the invention in varying versions and (b) ensuring that nothing has been left for the competitors to work around.

Other areas of importance

The above points point out areas where mistakes are more likely to occur while drafting a patent specification. There are other areas that are to be taken care of as part of intelligently drafting a patent specification. One who drafts a specification can avoid welcoming unnecessary rejections, by carefully-

Constructing claims of varying scope to protect the invention:

Claims of varying scope can be used to vary the scope of infringement coverage. Such claims may prove effective while proving infringement. This step should be practiced and employed whenever necessary.

Constructing claims of varying types to protect the invention:

Claims of varying types may include claiming the same invention, if possible, both as a method and as an apparatus. One should not restrict the invention by claiming it in only one form. It is advisable to claim an invention in multiple forms in order to ensure the broadest possible protection for the invention.

Maintaining consistency in usage of terminologies throughout the specification:

This is the most frequently violated step, which has to be avoided in a patent specification. Components, once referred to by a certain term, should ideally be referred to by the same term throughout the description. Interchangeably using synonyms for the same word, such as, referring to the same component as “device” and also as “member” etc, may be instances of inconsistent usage of terminology in a specification. One may not have to pay for this violation but it is, however, not encouraged in a refined specification.

Reviewing the specification from the points of views of the prosecutor, infringer and litigator:

One who drafts a specification may consider reviewing the final drafted specification from a prosecutor’s point of view, infringer’s point of view and as well as a litigator’s point of view so that mistakes are not overlooked and the final draft is perfectly toned.

Conclusion

It is the disclosure in the specification based on which patent rights are decided. Drafting the specification in layman’s language can lead to, no or very limited protection for the invention. Effective protection may be ensured if all requirements of patentability are satisfied in the specification and the mistakes listed above are taken care of. Writing a specification is one thing but to be able to refine a specification to perfection is a job that requires extensive expertise and experience.

I hope you found the article interesting. You may also find interest in our related articles:

Should an inventor take professional help to draft and file patent applications?     

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This work is licensed under a Creative Commons Attribution-NonCommercial 3.0 Unported License

Territorial Jurisdiction of Software Patents

Introduction:

Most often software in computer systems is located within a user device (client) and a remote computing resource (server). The client can be at one location, connected over a network (e.g., the internet) to the server. A user accesses the internet with a device to request or upload data to the server over the network. The server processes the request, or stores the data and delivers the result over the network.

Software related inventions as a whole can be operated across territorial borders. Thus, the question arises whether the software patent can be enforced, since it is known that patents rights are territorial in nature.

Consider a patented software invention in the United States covering a “product recommendation” method and system. A competitor enables users in the United States to download an application onto a mobile device. The user accesses the application to browse through products. The activity of the user is sent to a server located in India. The server processes the information in India and provides product recommendations. The product recommendations would then be available to the user on his device in the United States.

Patent Infringement Liability:

Continuing from the above example, an owner of such a software patent would be in a dilemma as to whether the competitor is liable for infringement of his patent, given the fact that, his patent only covers United States, and the competitor is carrying out part of the invention outside United States.

Such scenarios have come before courts in US and UK, and the decisions are encouraging for software patent owners. We will be discussing a case between NTP Inc. and Research In Motion Ltd, in US, and another case between Menashe Business Mercantile Ltd. & Anor and William Hill Organization Ltd, in UK. In both the cases, even though the competitors argued that part of their systems was outside the jurisdiction of the patents, the competitors were held liable for infringement.    

Case 1: NTP Inc. v Research In Motion Ltd

In November 2001, Research in Motion(RIM) was sued by NTP Inc. RIM is the manufacturer of the BlackBerry device, NTP sued RIM for infringement of five US patents, which NTP alleged covered the BlackBerry system.

The five patents of the NTP were covering the components and process necessary for integrating an email service and wireless network.

BlackBerry enabled its users, through its devices, to not only make conventional telephone calls, but also to have email access through the BlackBerry "push technology”. The BlackBerry email system intercepts a message to an email user and then routes the message to a relay component that in turn routes the message to a network. The BlackBerry "Relay" component, which was equivalent to one of the claim limitations in NTP patents, was located in Canada.

In the District court, the jury found RIM infringing on all the claimed elements, except for RIM's relay component, which was located in Canada, all the other elements of NTP's claims was present within the United States. However, the jury found that the operation of the BlackBerry was accomplished according to method claim described in NTP's patent and awarded monetary damages and entered a permanent injunction enjoining RIM from further manufacture, use, importation and sale of accused BlackBerry devices.

RIM appealed to the Federal Circuit, challenging the District Court’s claim interpretation, as well as disputing the applicability of § 271(a) to its extraterritorial operations, based on the point that the relay component of the BlackBerry system was located in Canada. The Federal circuit considered this argument, but reasoned that

"even though one of the accused components in RIM’s BlackBerry system may not be physically located in the United States, it is beyond dispute that the location of the beneficial use and function of the whole operable system assembly is the United States".

The Federal circuit concluded that:

“the location of RIM’s customers and their purchase of the BlackBerry devices establishing control and beneficial use of the BlackBerry devices within the United States satisfactorily establish territoriality under section 271(a).”

 

Case 2: Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd.

In October 2001, William Hill was sued by Menashe in UK. The patent granted to Menashe is "Interactive, computerized gaming system with remote control".

William hill enabled users in UK to install software program on their computers. This allowed the users to access a server which was part of William Hill’s on-line gaming system. However, the servers were located in Antigua. Menashe sued William hill for a contributory infringement.

William accepted that the CD containing the software program was an essential element of the invention, but disputed that the patent was not put into effect in UK, since the server was located in Antigua. William took the above line of argument as defense.

However, the decision was in favor of Menashe. The judge affirmed that:

“The claimed invention requires there to be a host computer. In the age that we live in, it does not matter where the host computer is situated. It could be in the United Kingdom, on a satellite, or even on the border between two countries. Its location is not important to the user of the invention nor to the claimed gaming system. In that respect, there is a real difference between the claimed gaming system and an ordinary machine. For my part I believe that it would be wrong to apply the old ideas of location to inventions of the type under consideration in this case. A person who is situated in the United Kingdom who obtains in the United Kingdom a CD and then uses his terminal to address a host computer is not bothered where the host computer is located. It is of no relevance to him, the user, nor the patentee as to whether or not it is situated in the United Kingdom.”

The Judge’s view was:

“it would be wrong to apply the old ideas of location to inventions of the type under consideration in this case.” Instead, it is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he use it? There can be no doubt that he uses his terminal in the United Kingdom and it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua. In those circumstances it is not straining the word "use" to conclude that the United Kingdom punter will use the claimed gaming system in the United Kingdom, even if the host computer is situated in, say, Antigua. Thus the supply of the CD in the United Kingdom to the United Kingdom punter will be intended to put the invention into effect in the United Kingdom”.

Conclusion:

From both the cases, we can conclude that, patent rights may be enforced even though one of the elements in the claimed system or method is located outside the territory of the patent, provided that the beneficial use of the system occurs within the territory of the patent granted.

In this new age of complex patent enforcement scenarios, to strengthen the patent rights of an invention relating to cloud computing, a careful strategy should be adopted for drafting and filling patent applications.

We hope you found this article useful. You may be interested in reading our article "Are software inventions patentable in India?"

Our team has in-depth knowledge with respect to patenting strategy for cloud computing related technologies.

Best regards – Team InvnTree
 

Two angles to compulsory licensing of patents and a disaster waiting to happen

One of the core objectives of a patent system is to make the patented technology available to the public at reasonably affordable price, meet the reasonable requirements of the public and should be worked in the territory of India. A compulsory license will be granted on a patent only if the patent holder uses his patent in a manner that contravenes the aforesaid objective.

Relevant Governing statute:

Section 84(1) of the Indian Patent Act corresponding to the grounds for granting a compulsory license on a patent is reproduced below;

 (1) At any time after the expiration of three years from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—

  1. that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or
  2.  that the patented invention is not available to the public at a reasonably affordable price, or
  3.    that the patented invention is not worked in the territory of India.

PROCEDURE TO APPLY FOR COMPULSORY LICENSE:

To obtain a compulsory license, an application has to be made to the Controller at any time after the expiry of three years from the date of grant of patent. It shall be noted that, a compulsory license can be acquired by any interested person. As per the Indian Patent Act, interested person includes a person engaged in, or in promoting, research in the same field to which the invention relates.

Relevant Governing statute:

(1) At any time after the expiration of three years from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—

LANDMARK DECISION:

Natco Vs Bayer was the first case in which compulsory license was granted in India. Natco obtained a compulsory license to produce and market Nexavar, an anticancer drug on which Bayer’s holds a patent.

On the other hand, a compulsory license was rejected when a Mumbai-based company, BDR Pharmaceuticals filed an application for a compulsory licence to make a generic version of anti-cancer drug Dasatinib, on which US drug maker Bristol-Myers Squibb holds a patent.

Interestingly, in both the cases, Section 84(1) of the Indian Patent Act, i.e. grounds for granting a compulsory license were satisfied. Evidence provided by both Natco and BDR pharmaceuticals for fulfilment of the aforementioned section is listed below.

Natco Pharma vs. Bayer(Nexavar)

BDR pharmaceuticals vs. Bristol-Myers Squibb's(Dasatinib)

Bayer's anticancer drug priced INR 2,80,000 a month.

Bristol-Myers Squibb's anticancer drug priced INR 1,65,680 for 60 tablets per month

Not manufactured within the territory of India.

Not manufactured within the territory of India.

Did not meet public requirement.

Did not meet public requirement.

COMPARISON:

A comparative study is provided below analyzing the scenario that lead to the grant of Compulsory license to NATCO, while rejecting compulsory license to BDR pharmaceuticals.

Section 84(6)(iv)of Indian Patent Act states that, in order to apply for a compulsory license, the applicant (compulsory licence seeker) has to make efforts to obtain a voluntary license for the patented drug from the patentee within a reasonable time.

Reasonable time period shall be construed as a period not ordinarily exceeding a period of six months. It shall be noted that, such restrictions however are not applicable in case of national emergency or other circumstances of extreme urgency in case of public non-commercial use or on establishment of a ground of anti-competitive practice adopted by the patentee.

Relevant Governing statute:

(6) In considering the application field under this section, the Controller shall take into account,—

  (iv)   as to whether the applicant has made efforts to obtain a licence from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit:

Natco Pharma VS Bayer:

Hyderabad based Natco Pharma Limited was granted a compulsory license for Sorafenib Tosylate (Brand Name: Nexavar) on   4th March 2013. Nexavar is an anti cancer drug used for first-line treatment for liver and kidney cancer.

IPAB decision:

57. In view of the significance of the order of the compulsory licence made in India for the first time, we have dealt with each of the issues in detail, though we have broadly confirmed the impunged order. In the result, for the reasons stated above , the grant of compulsory license is confirmed and the impunged order is modified only to the extent of rate of royalty to be paid to the patentee as indicated above and in other respects, the appeal is dismissed. No costs.

Natco Pharma had requested Bayer (patentee) for voluntary license for manufacturing and selling the drug Nexavar. It proposed to sell the drug at a price of INR 8800 for one month therapy as compared to the price of about INR 2,80,428 being charged by patentee at the time of making the application.

COMMUNICATION BETWEEN NATCO AND BAYER FOR VOLUNTARY LICENCE

In order to obtain a voluntary license from Bayer, Natco had communicated their intension to acquire the license. IPAB in its decision has summarized the communication from Natco to Bayer, and is reproduced below:

‘we understand that the cost of therapy per month for the said drug as sold by you works out to about Rs.2,80,000/- and ……… most of the patients are from the low and middle income groups that can seldom afford such expensive drug’. The letter stated that the access to the treatment of cancer is denied ‘particularly due to the high pricing of the product’. The 3rd respondent wrote that they would be in a position to make the product available to the public in India at a cost of less than Rs.10,000/- for one month and that at such price, even the Government Agencies would come forward to offer financial assistance to the patients and in this context, they applied for licence for the manufacture and marketing of Nexavar so that protection of public health is not impeded due to the present high price. They finally requested for the “grant of a voluntary licence to us to manufacture and market the product on such reasonable terms and conditions which would not prevent us from making the drug available to the public at the affordable price as projected above”.

Bayer’s reply to the aforementioned letter:

Your company is not able to make out a case for the grant of voluntary licence to manufacture and market the product Nexavar. Therefore, our client does not consider it appropriate to grant voluntary licence to manufacture and market the product Nexavar to NATCO’

It can be construed from the aforementioned statement that, Bayer had rejected the request of Natco for voluntary license. Further, it can also be interpreted that Natco had made reasonable efforts to get voluntary license from the patentee and hence, the prima facie case has been made out according to sec 84(6)(iv).

BDR VS Bristol-Myers Squibb's (BMS):

BDR Pharmaceuticals had filed for a compulsory license on 4th March 2013 for BMS patent on Dasatinib, used by patients with Chronic Myleoid leukemia(CML).

Prior to filing a compulsory license, BDR had applied for voluntary license to BMS for Dasatinib on Feb 2nd 2012.

Following are the terms and conditions submitted by the applicant while requesting for voluntary license:

  • Would make the drug available at a price of Rs.135 per tablet i.e. Rs.8100 per month.
  • Product under license shall be manufactured with indication for CML
  • Royalty to be paid as fixed by the controller
  • Availability of the patented product to the economically weaker sections of people…
  • Offering free drug to certain percentage of patients suffering from CML as determined by the cancer specialists.

Upon the request set forth by BDR for voluntary license, BMS (patentee), in a letter dated 13th March 2012, had raised certain queries which are as follows:

"facts which demonstrate an ability to consistently supply high volume of the API, DASATINIB, to the market",facts showing your litigation history or any other factors which may jeopardize Bristol-Meyers Squibb's market position", "quality related facts and in particular compliance with local regulatory standards and basic GMP requirements", "quality assurance systems due diligence", "commercial supply teams", "safety and environmental profile", "risk of local corruption".

Seeking voluntary license from the patentee is a sine qua non to be exercised by the applicant before filing an application for compulsory license.

In the current case, BDR pharmaceutical considered the reply of BMS as rejection to their request for voluntary license. In addition to that, it didn’t make further efforts for settlement with the patentee within the reasonable time (6 months generally).

Moreover, it filed a compulsory license application on 4th March 2013, almost a year after the reply from the patentee.

Controller’s decision:

The applicant did not follow the scheme of the law as well as the procedure mandated by the law. I am therefore of the considered opinion that the applicant has failed to make out a prima facie for the making of an order under sec 87 of the Act. The application for compulsory licence, along with all the petitions for condonation of delay/irregularity, is hereby rejected.

The Controller has the right to reject the application for compulsory license, if the applicant for compulsory license has not made efforts to obtain a voluntary license from the patentee. It shall be noted that, efforts made by the applicant to seek a voluntary license from the patentee is a mandatory requirement. It is one of the grounds for consideration of the application filed for compulsory license.

In light of the above decision, it can be construed that, BDR pharmaceutical didn’t make reasonable efforts to convince the patentee (BMS) for grant of voluntary license on the drug DASATINIB. Hence, the prima facie case has not been met and the application for compulsory license had been rejected.

To obtain a compulsory license, the applicant should follow the patent law accordingly. Fulfilment of the Sec 84(1) solely does not mean that an applicant will obtain a compulsory license. There are other requirements as well, in addition to Sec 84(1), which have to be fulfilled.

So far we have been discussing the grounds for granting or rejecting compulsory licence. Now we shall analyze the law corresponding to how patents are treated once a compulsory licence is granted.

On grant of a compulsory license to an applicant, the applicant has a two years time period to work the patented invention in the territory of India. However, if the applicant doesn’t manufacture the patented invention in the territory of India, and hence the public requirement is not met at reasonable price, any person interested can apply to the controller for revocation of the patent. The relevant section sec 85(1) from the patent act is reproduced below:                                                                                                                    

  1. Where, in respect of a patent, a compulsory licence has been granted, the Central Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence, apply to the Controller for an order revoking the patent on the ground that the patented invention has not been worked in the territory of India or that reasonable requirements of the public with respect to the patented invention has not been satisfied or that the patented invention is not available to the public at a reasonably affordable price.

 

Further, if the controller is satisfied by the application filed by any interested person to revoke the patent, on the aforementioned ground, the Controller may revoke the patent according to section 85(3).

(3)The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that patented invention has not been worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price, may make an order revoking the patent.

Should a patent be revoked under Section 85

According to Section 85 of Indian Patent Act, a patent can be revoked, if the applicant to whom the compulsory license is granted does not work the patented invention in the territory of India within two years from the grant of the compulsory license and further, the public requirements has not been met at affordable price.

The licensee is solely responsible for non working of the patented invention in the territory of India after obtaining the license but not the patentee. It would be injustice to the patentee, if a patent is revoked on the basis that, the licensee has not worked the patented invention in the territory of India even after expiration of two years on grant of the compulsory license. It shall be noted that, India is now witnessing grant of compulsory license, and hence, no one has invoked the provisions under Section 85. However, there is a high probability that provisions under Section 85 will be invoked in future. Now would be a good time to look at Section 85 in more detail, and amend it accordingly, before such scenario arises. It would be more justified to revoke the compulsory license, rather than revoking the patent!

Conclusion:

There are certain types of patented invention that play an important role in health and well being of the community, in such scenarios, compulsory licensing can play a pivotal role. Compulsory license is granted on fulfilment of certain terms and conditions as mentioned in the Indian Patent Act. The applicant filing for compulsory license therefore has to accordingly proceed to obtain the license. Further, the Indian Patent Act also provides provision for revocation of patent, if not being worked in the territory of India by the compulsory license holder, after a reasonable time period. In our opinion, consequences of non working of the patented invention by the licensee should not result in revocation of a patent.

We hope you found this article useful. You may be interested in reading our article "An Indian perspective on licensing or sale of patents"    

 

Feel free to write to us at contact@invntree.com

Best regards – Team InvnTree

Patenting mathematical methods

According to the section 3 (k) of the Indian Patent Act, mathematical and business methods, computer programmes per se or algorithms are categorized as non patentable subject matter.

Why are mathematical methods not patentable?

The Manual of Patent Office Practice and Procedure provides reason as to why mathematical or business methods are not considered patentable.

With reference to section 3 (k), the manual says, and I quote:

“Mathematical methods’ are considered to be acts of mental skill. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are therefore not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged as one relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, are considered to be not patentable.”

The interpretation of this section has generated several debates and arguments over the years. This section can be analyzed in support of a case, which may provide a better interpretation of section 3 (k) and especially inventions dealing with mathematical methods.

Electronic Navigation Research Institute vs. Controller General of Patents

On July 5th, 2013, the Intellectual Property Appellate Board (IPAB) passed a decision denying a patent to Electronic Navigation Research Institute for their invention that relates to a method for calculating Chaos Theoretical Exponent value (CTEV).  The Deputy Controller in his decision had denied a patent to the applicant on the grounds of non patentable subject matter under Section 3 (k) of The Patent Act.

In light of this case, the controller and IPAB’s considerations, while deciding denial of patents for inventions that fall under section 3 (k), especially mathematical methods, are analyzed.

 The Deputy Controller held that the above invention was based on a mathematical method for solving mathematical equations and declined to accept the technical effect theory, as he was of the opinion that Indian Patent Act does not allow patents for mathematical methods, which have technical advancements. Hence the invention was rejected as non patentable under Section 3(k) of the Indian Patent Act.

The Appellant’s invention relates to a system for analyzing a time series signal by a method based on Chaos Theory and calculating a chaos theoretical exponent value (CTEV). The conventional chaos theoretical exponent value calculation systems presumed that it analyses a system of stable dynamic. Thus the temporarily changing dynamics cannot be calculated as a significant value. The inventors claim to have invented a system which makes it possible to calculate a CTEV that could not have been so far processed in a system of temporarily changing dynamics and to perform the process thereof at a high speed and on a real time basis, and to calculate a CTEV even from a time series signal which includes noises. The complete specifications also describes that the invention calculates the average CTEV in a shorter time of two decimal orders or more.

Controller’s Decision

The Patent Office issued the First Examination Report (FER) on 11th June 2007 with the objections that the claims fall within the scope of the clause (k) of Section 3 and Section 2(1) (j) of the Indian Patent Act, 1970 as it lacks novelty and inventive step. A response to the first examination report (FER) was filed by the applicant on 9th April 2008. A hearing was also requested by the applicants along with the submissions. After considering the submissions made by the Applicant, as well as descriptions and claims as on the records, the Deputy Controller was of the opinion that the alleged invention still falls under Section 3(k) of the Patents Act. Hence a grant of patent to the above application was rejected.

Appellant’s allegations against the controller’s decisions

The Appellant (who are the applicants) then filed an appeal against the Controller’s decision before the IPAB, and one of the grounds was that the Controller had wrongly negated the ‘technical effect” holding incorrectly that the Indian Patent Law does not follow the EPC.

IPAB’s decision to the above allegation

In response to the Appellant’s allegation, the IPAB referred to a previous case Yahoo vs. Rediff, which was raised on the same grounds. The IPAB cited that “inventive step must be a feature which lies with a patentable subject matter. Otherwise, the patentee by citing economic significance or technical advance in relation to any of the excluded subjects can insist upon grant of patent thereto. Therefore, this technical advance comparison should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects…….”

The IPAB here declined the allegation by the Appellants by stating that the Controller was of the opinion that the claimed invention, although it was a technical advancement, it still was nothing more than a mathematical method based on various algorithms for which the Indian patent law does not grant a patent. The identifiable technical contribution provided by the claimed invention itself came under the excluded subject matter and so the IPAB justified the controller’s decision that a patent cannot be granted for a mathematical method according to the patent law in India and the appeal was dismissed.

Conclusion

In light of the above discussion, one of the ways of analyzing patentability of inventions that involve mathematical methods is by adopting a “problem and solution” approach of analysis. One may try to define the technical problem the invention is trying to solve, and thereafter identify the technical solution that addresses that problem. Further, one can try to determine whether that technical solution itself is the “mathematical method” or is it beyond the “mathematical method”. Inventions that propose and claim a technical solution that is beyond a “mathematical method” have a higher probability of having a patent granted. 

We hope you found this article useful. You may be interested in reading our articles:

What can be patented and what cannot be patented    
Are software inventions patentable in India?     
Issues concerning patentability of discoveries in India    
Issues Concerning Patenting Inventions Relating to Plants, Animals and Microorganisms    

Feel free to write to us at contact@invntree.com

Best regards – Team InvnTree

Indian Patent’s Achilles Heel – Statement and Undertaking

Introduction

At the time of filing a patent application in India, the applicant must submit an undertaking stating that, he would keep the Controller updated from time to time about patent applications filed outside India relating to the same or substantially the same invention as filed in India. Such updates shall be provided till the patent is granted in India. The objective of seeking such information from the applicant is to assist the Indian Patent Office in examining the Indian patent application.

History: 

Section 8 of the Indian Patent Act, which relates to statement and undertaking was introduced subsequent to Justice N. RAJAGOPALA AYYANGAR report titled “REPORT ON THE REVISION OF PATENT LAW”. The suggestion provided in the report is provided below: 
 “It would be of advantage therefore if the applicant is required to state whether he has made any application for a patent for the same or substantially the same invention as in India in any foreign country or countries, the objections, if any, raised by the Patent offices of such countries on the ground of novelty or un patentability or otherwise and the amendments directed to be made or actually made to the specification or claims in the foreign country or countries.”

Governing statute 

Section 8(1) and 8(2) of the Indian Patent Act are particularly relevant, and are reproduced below: 
 8. Information and undertaking regarding foreign applications. – (1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow— 
(a) a statement setting out detailed particulars of such application; and 
(b) an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time. 
(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Interpretation of the governing statute

As per Sec 8(1), an applicant of an Indian patent application shall provided detailed particulars about patent applications filed outside India (foreign applications) for the same or substantially same invention. It shall be noted that such detailed particulars will have to be submitted as long as those foreign applications are filed by the instant applicant, or by any person deriving title from him or by any person through whom he derives title. The disclosure under Sec 8(1) is a mandatory voluntary disclosure. 
On the other hand,Sec 8 (2) of Indian patent Act empowers the Controller to seek detailed particulars corresponding to the foreign applications at any time during the prosecution of the Indian patent application. 
 
Time limit to file statement and undertaking: 
The applicant should file the statement and undertaking within 6 months of filing the Indian patent application.
Further, in a scenario wherein foreign applications are filed subsequent to filing of the statement and undertaking then detailed particulars of such applications shall be filed within 6 months of such filing.
Furthermore, detailed particulars sought under Sec 8(2) shall be furnished to the Controller within 6 months from the date of such communication from the Controller.
 
Detailed particulars to be furnished: 
The Act refers to furnishing of “detailed particulars”, however, falls short of mentioning what details fall within the purview of “detailed particulars”.
In our opinion, “detailed particulars” relate to details corresponding to filing of patent application, grant of patent, issuance of examination report, response to examination report, amendment of specification and objections to grant of patent, among others. Hence, when such events occur with respect to foreign applications, detailed particulars corresponding to such events should be furnished within 6 months from the date of occurrence of such an event.
 
Consequences of violating Section 8: 
Violation of Sec 8 has far reaching consequences. Violation of Sec 8 can be a ground for pre-grant and post-grant opposition under 25(1)(h) and 25(2)(h), respectively. Further, violation of Sec 8 can be a ground for revocation under Sec 64(1)(m). The relevant sections are reproduced below:
 25. Opposition to the patent 
(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground— 
(h) that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge; 
 (2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:— 
(h) that the patentee has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge; 
64. Revocation of patents 
(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

 (m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge; 

Case law corresponding to consequences of violating Section 8:  
Revocation of Hindustan Unilever limited’s patent by Intellectual Property Appellate Board (IPAB):

Hindustan Unilever limited (HUL) had filed for a patent in India for an invention relating to “filter cartridge for use in gravity flow filtration”. Subsequently,HUL was granted a patent (IN 195937) on August 26, 2005. On 2008, it had launched water purifier named "pureit" in the Indian market. Tata Chemicals Ltd. came up with a water purifier named SWACH in the following year, against which HUL had filed a suit for infringement. Tata Chemicals Ltd. objected the validity of the patent IN 195937 on various grounds, section 8 being one among others.

The IPAB revoked HUL’s patent on the basis that HUL violated Section 8 of the Indian Patent Act. Relevant excerpts from the IPAB’s order is reproduced below: 
73.       Next we take up the ground of revocation on the ground of non compliance of the provisions of Section 8.  The present application which is the Patent Application No.709/MUM/2002 was filed on 7.8.2002.  Form-3 was filed on the same day.  In this, there was no information regarding foreign filing.  The respondent had filed an application in Great Britain as a domestic application.  This was on 28.03.2003 then they filed the PCT Application on 21.07.2003.  On 25.07.2003, the details of the Great Britain filing were submitted but nothing else.  On 04.08.2003, the respondent was filed an application in Thailand.  The International Search Report dated 31.10.2003.  The First Examination Report issued by Respondent 2 was on 05.12.2003.  On 08.12.2003, the Great Britain application had been terminated.  On 29.01.2004, the respondent filed further particulars of corresponding foreign filings.  The details of Thailand and PCT application were submitted that the Great Britain Application No.0307146 was shows as pending.  Filing of application in Japan is on 21.07.2003. The International Search Report was not submitted.  On 01.04.2004, in the response to the first examination report, the respondent stated that no search report was available.  The second examination report was communicated on 07.07.2004.  The International Preliminary Examination Report (IPER) was available on 27.07.2004.  In response to the second examination report on 19.11.2004, the International Preliminary Examination Report was not submitted, though the Patent Office had requested for the same.  The respondent had assured the Patent Office that as soon as available, it would be submitted.  The International. Preliminary Examination Report was also not submitted.  The Great Britain application was still shown as pending.  No other filing details were provided. 
74.       05.12.2004 was the last date for placing the application in order.  The counsel for the respondent sent a letter on 05.04.2005 to Indian Patent Office.  Even then the ISR and IPER were not submitted, the status of the Great Britain application was not updated.  The patent was granted on 26.08.2005.  Withdrawal of Japan application was dated 07.07.2006. 
106.    The respondent cannot be heard to say that since European Patent No.1106578, the prior art was anyway considered by the Controller and no prejudice was caused by not disclosing the ISR or IPER.  It is not enough that the Examiner knew that this prior art was there, the respondent ought to have disclosed the results of the IPER. The IPER rejected the claims 1 to 3 on both the grounds of novelty and inventive step.  It is not for us to conjecture what effect this might have had on the examiner here if he had the benefit of the IPER.  This is the object and purpose of enacting Section 8.  The Report says that this information would be of great use for a proper examination of the application.  It is no answer to say anyway the office looked at EP’578.  The Patent Office did not see the IPER.  The learned counsel for the respondent submitted that this lapse is of a de-minimis nature, we do not think that honestly furnishing the information or particulars allows a de-minimis qualification. 
107.     The Act requires compliance with Section 8(1) and 8(2) and the patent applicant must comply with the same.  Otherwise the patent is liable to be revoked.

 108.    The knowledge of the prior art  is not the same as the opinion of the EPO .  In this case, we sustain the objection raised by the applicant regarding Section 64(1)(m).  The patent is liable to be revoked on this ground also 

Revocation of two Allergan’s patent by Intellectual Property Appellate Board (IPAB):

Ajanta Pharma Ltd, a leading Indian drug maker had filed for revocation of two Allergan’s patents on Ganfort (Patent No. 212695) and Combigan (Patent No. 219504) on the grounds of "obviousness, insufficiency and non-disclosure of information under Section 8.

The IPAB passed a judgement in favour of Ajanta Pharma revoking the two patents, wherein violation of Section 8 was one of the reasons for revocation.
Relevant excerpts from the IPAB order corresponding to Patent No. 212695:
Section 8 violation 
16.       The learned counsel for the applicant submitted that the respondent has under a duty to disclose information as per the requirements of Section 8 of the Act and  Section 8(1) of the Patent Act makes it mandatory that information, pertaining to foreign filings in respect of the same or substantially the same invention be provided. The counsel submitted that Form 3 of 20.01.2004 furnished by the respondent in IPO indicated that Korea, New Zealand, Canada, China and Japan were pending applications. However, the application numbers of the same were not disclosed. Exhibit EA 1 of the Miscellaneous Petition clearly indicates that these application numbers had been generated. The Korean application was published barely 4 days after the last Form 3 of January 20, 2004 and the New Zealand application was granted the following year i.e. in 2005. Also, it was submitted that the EP application number was published on March 3, 2004 i.e. more than 2 months after the Form 3 was filed. However Applicant did was not press. 
17.       The learned counsel for the applicant submitted that Section 8(2) is a requirement that is borne out of the Controller's direction in paragraph 14 of the FER dated September 21, 2004 (Exhibit O of the revocation petition), required compliance with Section 8(2). 
18.       The learned counsel for the applicant submitted that the Respondent vide letter dated January 20, 2005 stated that 
"… we would refer to the discussion… had with the Learned Controller General of Patent and Design………….. Pursuant thereto, it has been settled that the applicant will be required to submit the "prosecution" details of any one of the major Patent Offices. Accordingly, we'll submit copies of documents pertaining to the processing of one of the corresponding applications filed in a country outside India, as and when those will be available to the applicant". 

 However, no such information was provided to the Patent Office. 

 19.       The learned counsel for the applicant submitted that no information on the prosecution of EPO and US counterpart applications was furnished .According to the counsel corresponding US application No. 10/153,043 which was being prosecuted by the respondent and response to the office actions in US were filed before the response to FER in India. Furthermore, as early as September 22, 2003, there was a "restriction and/or Election requirement". Therefore the statement of the applicant in its response to FER is clearly false.Similalarly barely a month after the response to FER in which the applicant stated that processing details outside India will be provided as and when available, the EPO issued its own Examination report February 11, 2005 in respect of the corresponding application (Page 388-385; Exhibit EA3 to the MP).This information was also not furnishedby the respondent. Therefore this amounted to gross violation of Section 8(2). 
We are not looking at this moment why it was not given.But the fact remained that there was non compliance of Section 8. We have indicated the principles behind the S.8 objection, how it should be raised, defended and decided. The Act says failure to disclose the information required by S.8 is a ground for revocation. It does not qualify it by saying that the failure must be deliberate nor are there any words to indicate that the failure must be in regard to material particulars. In the present case the gound of the violation of section 8 has been clearly made out and we have no hesitation say applicant succeed on this ground of revocation. 
Relevant excerpts from the IPAB order corresponding to Patent No. 219504: 
12.       According to the applicant, the respondent has failed to disclose to the controller the information required by Section 8 of the Act, in particular, the European counterpart of the subject Patent which was refused vide decision dated 11.12.2007. This is marked as Exhibit E.  According to the applicant, the respondent had not tendered the following details:- 
a) US7323463: non final rejection dated March  24, 2005; non final rejection dated July 15, 2005; final rejection dated February 28, 2006; non final rejection dated December 14, 2006, final rejection dated June 4, 2007. 
b) US7030149: non final rejection dated October 3, 2002; non final rejection dated May 7, 2003; final rejection dated August 26, 2003; non final rejection dated February 13, 2004; non final rejection dated March 29, 2004, final rejection dated December 16, 2004; .non final rejection dated July 14, 2005., and 
c) US7320976: non final rejection dated December 19, 2005; final rejection dated May 26, 2006; non final rejection dated May 26, 2006; non final rejection dated December 15, 2006, final rejection dated June 4, 2007. 
73.       We have held the importance of compliance of section 8, the fact that there are search engines from which information can be culled out is no answer.  The respondent had given a solemn undertaking to furnish the particulars from time to time in Form-3.  Without this Form-3 statement, his application will not be examined. Having given an undertaking which is a pre-requisite was consideration of the application, he cannot avoid the solemn obligation by stating that the information is available in the internet or the website.  In the counter statement, there is absolutely no explanation regarding the compliance or non compliance or difficult in compliance provisions.  And inexplicably the respondent has accosted the applicant for filing the particulars belatedly. It is the respondent’s duty and it has been breached.

105.     For the above reasons ORA/21/2011/PT/KOL is allowed and patent No.219504   is revoked. 

Conclusion:  
Despite the fact that the claimed subject matter has overcome the hurdles of novelty and inventive step, a patent could be revoked if Section 8 is violated. It is fairly easy to comply with Section 8, and non-compliance would result in competition gaining a very effective tool to weaken your patent portfolio. While violation of Section 8 remains a ground for revocation, one would still wonder why it should be a ground for revocation, since this section was introduced only to help the patent office to reduce the burden involved in examination. In our opinion, consequences of violating Section 8 should not be as harsh as revocation, and the Act should be amended to that effect. Further, the Indian Patent Office should enforce Section 8 strictly before granting a patent, so that worthy inventions are not revoked using Section 8.
 
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Can a lapsed patent be restored in India?

Once an Indian patent is granted for your invention, it has to be maintained subsequent to the grant. Maintaining a patent includes the task of paying patent renewal fee each year. Failure to pay the renewal fee will result in the patent ceasing to have effect.

The patent renewal fee in India is collected from the 3rd year onwards. Once the patent is granted, the pending renewal fee calculated from the 3rd year has to be paid. Further, the renewal fee for the subsequent years shall be paid before the expiration of the previous year of the patent. For example, renewal fee for the 8th year shall be paid before the expiration of the 7th year of the patent. The renewal fee details are provided below:

Renewal fee – Year

Patent Owner – Natural Person

Patent Owner – Other than natural person

Small Entity

Other than small entity

3 to 6

800

2000

4000

7 to 10

2400

6000

12000

11 to 15

4800

12000

24000

16 to 20

8000

20000

40000

 
As mentioned earlier, failure to pay the renewal fee will result in the patent ceasing to have effect. At a time when the patent ceases to have effect, the patent owner will not be able to enforce the patent. Further, even if the patent is restored, one cannot be held liable for infringement during the period in which the patent had ceased to have effect.
 
If a patent has ceased to have effect as a result of failure to pay the renewal fee within the prescribed time, i.e. before the expiration of the previous year, then the patent owner can request an extension of time to pay the renewal fee. The extended period is not more than 6 months from the date on which the patent ceased to have effect. The Indian Patent Office (IPO) fee for such an extension is INR 480/1200/2400 per month if the patent owner is a natural person or a small entity or other than small entity respectively.
 
In case a patent has ceased to have effect, it is advisable to reinstate it within the above stated 6 months. However, if the patent owner fails to reinstate the patent in this extended period of six months, then the patent owner can take an alternative approach to reinstate the patent. This alternative approach to reinstate is available till 18 months from the date the patent ceased to have effect. In the instant approach, the patent owner will have to mention, in detail, the circumstances which led to the failure to pay the fee, and the IPO may require further evidence. This approach however, is relatively difficult, time consuming and expensive.  
 
In short, we can summarize this article by stating that a patent that has ceased to have effect can be restored by either paying the renewal fee within 6 months from the date on which the patent ceased to have effect, using a first approach, or by paying the renewal fee within 18 months from the date on which the patent ceased to have effect, using a second, more difficult and expensive, approach.
 
We hope you found this article useful.
 
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