Request for wavier of IP rights relating to COVID-19
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India and South Africa in a historical move, on October 2, 2020 have asked the World Trade Organization (WTO) to waive any IP rights (patents, industrial designs, copyrights and trade secrets) relating to COVID-19 drugs, vaccines, diagnostics and other technologies for a limited period. The limited period could extend for a duration of the pandemic or until a fair proportion of the world population develop herd immunity. WTO is an intergovernmental organization with 164 members. The waiver, if granted, would allow the member countries of the WTO to neither grant nor enforce patents or other IP rights relating to COVID-19 for that specified duration. The wavier is not permanent and is valid only for a specific duration. The wavier, if allowed, would be applicable to all the WTO members which include developed, developing and least-developed countries.
The World Health Organization (WHO) has supported India and South Africa’s step. WHO chief Tedros Ghebreyesus in one of his tweets said, “WHO welcomes South Africa’s and India’s recent proposal to WTO to ease international and intellectual property agreements on COVID-19 vaccines, treatments & tests in order to make the tools available to all who need them at an affordable cost”. The Indian domestic pharma industry has backed its government’s move.
The proposal is first submitted to the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Council and then decided at the Ministerial Conference or the General Council. The TRIPS Council is expected to consider the proposal within 90 days and submit a report to the Ministerial Conference for the decision making. The grant of the proposal is based on the general agreement of the WTO members.
India and South Africa’s move gains significance after Gilead, the patent holder of Remdesivir, the only approved drug for the treatment of COVID-19, has its patent licensed in a way that excludes most of the countries and thereby excluding more than half of the world population from benefiting from the lower price generic competition of the drug. The company continues to hold the license after having received over $70 million of public funding to develop the drug. With the exclusive rights, Gilead has priced the Remdesivir drug at a higher price, depriving access to the drug for majority of the population. Therefore, depending on private companies for a solution to the COVID-19 crises is not a solution. The concern extends as vaccines and treatments needed to fight the pandemic could be limited by patents and other IP barriers.
Furthermore, a quantum of patents for COVID-19 vaccines that are in development stages and patents relating to instruments required for treating COVID-19 are being filed. Companies that have received public funding for the development of the vaccine may get exclusive rights for their patents and therefore end up having monopoly over the drug or vaccine which would create barriers to timely access to affordable medical products.
The wavier may allow governments to stand up for public health in solidarity at international level. The wavier may be important for the developing and the least developed countries as these countries may now have an opportunity to procure the basic treatment required for their public health. The wavier would also provide an opportunity for the countries to collaborate in the R&D of COVID-19 vaccine and in scaling up the manufacture and supply of COVID-19 supplies.
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Mountain Dew Trademark – A conflict of Prior use and Trans-border reputation
Syed Ghaziuddin had set up a packaged drinking water plant (Magfast Beverages) in the late 90s and named his products "Mountain Dew” to indicate something pure, emanating from natural sources. The business soon gained popularity and received various quality and standard certifications.
In 2003, PepsiCo approached the Delhi High Court, accusing Magfast of infringement. Magfast filed a suit[1] against PepsiCo, for passing off, before the Hyderabad City Civil Court.
Magfast’s main grounds for contention were that PepsiCo had not used its mark in India before 2003 and that PepsiCo sold its bottled water as not as ‘Mountain Dew’ but rather, as ‘AQUAFINA’.
PepsiCo claimed that it had been selling flavoured soda under “Mountain Dew” since 1940 and had become popular throughout the world, and had registered the trademarks in 100 countries, including India dating back to 1985.
The Hyderabad Civil Court had poured over various documents highlighting the plaintiff’s use of the mark since 2000 and therefore, referring to the Supreme Court’s decision in Syed Monideen v. Sulochana Bai[2] which recognised the common law principle of priority in adoption prevailing over registration, ruled in favour of Magfast.
We anticipate that PepsiCo will challenge this decision in the High Court. However, in the meanwhile, there are a few questions of law that are left to be answered.
It becomes imperative to note that the Court did not, in its ruling, make any reference any Section 34 of the Trade Marks Act 1999, which embodies the rule about Prior use and provides that the registered user of a trade mark cannot prevent any other user from the using an identical or similar mark, where the said other user has been continuously using the mark prior to either the use of the first-mentioned trade mark or the date of registration of the first-mentioned trade mark, whichever is earlier. Magfast’s claim of prior use should therefore have been backed by its continuous use of the mark before the registration of PepsiCo’s trademark in 1985, however, as per Magfast’s own submissions to the Court regarding the use of their mark, it is proven that their use of the mark could be traced only as far back as 2000, by which time, Mountain Dew was a popular drink worldwide. This hints at the possibility that Magfast’s adoption of a mark, which had an international repute, was not entirely bona fide.
This brings us to another issue that was not broached by the Hyderabad High Court – transborder reputation.
The doctrine puts forth that when a mark’s reputation has transcended geographical barriers to spill over into Indian market and becomes recognised by the consumers despite lack of actual use of the mark in that territory, such mark becomes entitled to protection from those who seek illicitly benefit from such reputation[3].
Since these issues are yet to be delved into, we can only wait and see how the Courts play out this conflict of prior use and cross-border reputation.
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SAGO Serve applies for GI tag for Salem Sago
The Application (Form 1) states that Salem Sago is made from wet starch powder crushed from Tapioca roots and was first produced in India in Salem around 1943-1944. Sago units in Salem District get tapioca tubers of the optimum age, giving them the favourable tapioca – sago ratio, during the months of September to January.
The application also highlighted that sago production has contributed extensively to the development of the economy of Salem from the year 1967.
Currently over 80% of sago in India is produced in the Salem region..
Sago is used in various industries, including food, paper, construction, textile, cosmetic, pharmaceutical, mining, and alcohol, among others.
If GI tag is granted for this product, it will boost business for the farmers in this region and the over-400 sago and starch units in Tamil Nadu districts that been in this business for several decades in the Salem region.
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Patents (2nd Amendment) Rules, 2020 – Indian patent office updates fee schedule
The Indian Patent Office in its notification dated November 04, 2020 presented Patents (2nd Amendment Rules), 2020. The Amendments have come into force on November 04, 2020.
The amendments bring forth significant changes to the fee schedule. The amended rules quashes the earlier categorization of applicants, for the purposes of fees, into three categories, viz., natural person or startup, small entity and others. According to the new rules, the applicants are now categorized into two categories, viz., natural person or startup or small entity and others.
Since small entity is now included in the same category as natural person and startup, the patent office fee for small entity is reduced and shall be same as the fee for natural person or startup. You may access the new fee schedule here.
Further, sub rule (3) of rule 7 is substituted with the following:
“(3) In case an application processed by a natural person or startup or small entity is fully or partly transferred to a person other than a natural person, startup or small entity, the difference, if any, in the scale of fees between the fees charged from the natural person, startup or small entity and the fees chargeable from the person other than a natural person, startup or small entity in the same matter, shall be paid by the new applicant with the request for transfer.
Explanation— Where a startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no such difference in the scale of fees shall be payable.”
The sub rule (3) of rule 7 is amended to include small entity into the same category as natural person and startup. The new rules set forth the following:
- In a scenario where an application is filed by a natural person, a startup or a small entity and is later transferred to a person other than a natural person, a startup or a small entity, the difference in fees due to the change in applicant status shall be paid by the new applicant with the request for transfer.
- In a scenario where an application is filed by a startup or small entity, and during the prosecution of the application, the applicant changes to others, either due to lapse of period which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, no difference in fee is payable.
Further, the proviso to sub rule (5) of rule 24C is substituted with the following:
“Provided that a request for expedited examination under this rule filed by a startup or small entity shall not be questioned merely on the ground that the startup or small entity, having filed an application for a patent, ceases to be a startup or small entity due to the lapse of the period during which it is recognised by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority.”
According to the above presented proviso, in a scenario where the applicant is a startup or small entity and a request for expedited examination was filed by the applicant and the applicant status changes to others, either due to lapse of period which it is recognized by the competent authority, or its turnover subsequently crosses the financial threshold limit as notified by the competent authority, the request made for the expedited examination is not questionable.
In conclusion, The Patents (2nd Amendment) Rules, primarily tries to reduce the burden of fees incurred by small entity. This move coupled with the expedited examination will encourage small entities to file patent applications for their inventions.
Useful links:
Qualifying as a start-up as per the Indian Patent Rules
How to claim small entity status while filing for patents in Indian Patent Office
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Comments on the Draft “The High Court of Delhi Rules Governing Patent Suits, 2020”
Being cognizant of the Notice issued by the Registrar General of the High Court of Delhi on October 9, 2020 calling for comments on “The High Court of Delhi Rules Governing Patent Suits, 2020”, we propose the following amendments:
Point-wise comments on the Draft Rules –
- With respect to Draft Rule 2 (9)
“(9) Technical primer:
A document either in text form or a powerpoint presentation which gives an introduction to the basic undisputed technology covering the patent(s) preferably in non-technical language.”
We wish to state that at times, due to the nature of the invention or the manner of its operation, it may in fact be not only difficult to explain, but also tougher to process the details of an invention and how it works.
Therefore, we feel that the definition for Technical Primer so stipulated in the Draft Rules should also provide for the submission of videos detailing the working of the invention, which would be suitably more illustrative for the attention of the judges, and would greatly assist them in understanding the minute details of the case.
- With respect to Draft Rule 4
“Documents to be filed:
- Documents to be filed along with the Plaint:
The documents to be filed with the plaint shall include, inter alia…”
We wish to point out that due to voluminous nature of such proceedings, it becomes harder for parties and for advocates to scour through the numerous pages contained in either the plaint/written submission, or the supporting documents. At times, parties may even intend to bury specific facts that may have an adverse impression on their case within these voluminous pages.
In order to not only cure such inconvenience but to also pre-empt such nefarious practices, we propose that the High Court of Delhi maintain a digital repository whereby parties would upload their submissions as well as their supporting documents in a digital copy format, which could then be indexed and easily referred to prior to, during or after the proceedings.
A suitable repository fee would also be charged as part of court fees from the Plaintiff, and recoverable from the Defendant as per the usual determination by the Court regarding costs.
It would also be fortuitous for this system that parties ensure that all possible documents are uploaded in an Optical Character Recognition (OCR) format, which would make it easier for parties to search through these documents in preparing submissions and arguments.
If at all any document is composed solely of images, or is of such nature that it cannot be converted into an OCR format, notwithstanding the costs incurred, then the parties may be allowed to upload such documents in a scanned format.
- With respect to Draft Rule 9
“9. Second case management hearing:
iii. Hot-tubbing: Expert testimony may be directed by Court on its own motion or on the application by a party to be recorded by Hot-Tubbing technique, with appropriate safeguards and guidelines.”
We wish to state that the process of hot-tubbing witnesses, especially when it comes to expert witnesses, is significantly more fruitful than the traditional manner of examining witnesses, for not only does it reduce inconsistencies regarding technical aspects, but it also reduces the time involved in prosecuting the case.
Given the poor light that the judiciary has fallen into regarding excessive delays when it comes to determining cases, we assert that hot-tubbing should be the primary means of recording evidence before the Court, and the traditional manner of recording evidence should only be allowed when expert witnesses are submitting their testimony via video conferencing means.
- With respect to Draft Rule 11
“11. Confidentiality Club:
At any stage in the suit, the Court may constitute a confidentiality club, for preservation of confidential information exchanged between the parties, including documents.”
While it is concerning that the details of such infringement cases are sought to be hidden behind a veil of confidentiality, we submit that such power should be exercised sparingly, and only in dire circumstances, such as protection of information that would impinge on a future patent, or information that constitutes a trade secret, but not regular proprietary information.
In addition to this, given the nature and the requirement for transparency and public discourse, it would be suitable to include a proviso within the Draft Rule to ensure that submissions and conditions pertaining to FRAND terms, as well as actual rates submitted as FRAND terms are to be excluded from the sanctuary of Confidentiality Clubs.
We propose that ensuring such information is in the public domain only leads to a more competitive application of patent laws, and would avoid the need for adjudication before the Competition Commission of India and its appellate bodies with respect to Standard Essential Patents, and this would circumvent the existing roadblock in the application of Competition Law to Patent matters.
- With respect to Draft Rule 12
“12. Compulsory mediation:
At any stage in the suit, if the Court is of the opinion that the parties ought to explore mediation, the Court may appoint a qualified mediator or panel of mediators including, technical experts to explore amicable resolution of the dispute. Consent of the parties is not required, once the court is of the opinion that an amicable resolution needs to be explored. Further the mediator appointed by the court could be a scientific expert, economic expert or a legal expert, assisted by technical experts.”
It is noticed that in a number of foreign jurisdictions, courts mandate as a pre-requisite that parties are required to attend mediation before enacting judicial determination measures, as a means to cut down on the number of cases that are filed before trial courts.
We therefore propose that it would be appropriate and constructive for the High Court to impose a duty to attempt mediation of the dispute with all possible efforts to resolve the matter amicably. Parties should be required to submit a certificate by a certified mediator stating that the parties have attempted to resolve their differences through the process of mediation, and that due to irreconcilable differences, the mediation process fell through. Such a certificate must become a pre-requisite to the institution of a patent infringement case.
General Comments
Instituting Timelines
While the Rules have been silent on such aspects, we believe that it is imperative that a timeline as well as permissible period for adjudication be established to ensure speedy disposal of cases. While we submit that the deadlines for the written submissions of the parties must be governed by the Civil Procedure Code, the specific stages of the suit must also be governed by a rigid timeline, and any delays caused by the parties must be viewed prejudicially against their interests.
We submit that the entire suit must conclude within 1 year / 12 months from the date of the First Case Management Hearing, and thereafter we propose that each individual stage of the suit must have its own duration.
We propose that the following stages have the following timelines –
- First Case Management Hearing: Must conclude within 2 months from the first date of the hearing, after the plaint, written statement and counterstatement with the replication has been filed.
- Second Case Management Hearing: Beginning from the conclusion of the First Case Management Hearing, the Second Case Management Hearing must conclude within 3 months.
- Third Case Management Hearing: Beginning from the conclusion of the Second Case Management Hearing, the Third Case Management Hearing must conclude within 2 months.
- Final Case Management Hearing: Beginning from the conclusion of the Third Case Management Hearing, the Final Case Management Hearing must conclude within 2 months.
- Judgment: The Final Judgment rendered by the Honourable Judges must be passed within 3 months from the conclusion of the Final Case Management Hearing.
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Amendments to Rules 21 and 131(2), and its implications
The Central Government in exercise of the powers conferred upon it u/s 159 of the Patents Act, 1970 (“The Act”) has passed the Patent Amendment Rules of 2020 (“The Rules”) on 19th of October, 2020. The rules aim to boost innovation while easing the burden on the patentee. The amendments to the Rules help in accelerating and easing the process of doing business in India for innovators. Particularly, the Rules include changes to Form 27, wherein the statements regarding the working of patented innovations on a commercial scale in India need to be filed by the Patentees or the Licensees.
The amendment has simplified the requirements related to submission of Form 27 by narrowing the compliance that need to be followed under Patent Rules by the patentee in the following manner:
- The amendment provides flexibility to the patentee for filing a single Form 27 in respect of single or multiple related patents.
- The approximate value corresponding to a single patent cannot be derived separately from approximate value corresponding to each of the related patents, and all such patents are granted to the same patentee or licensee. Accordingly, if there is a grant of patent to two or more persons, they may jointly file a Form 27.
The amended Rule 131(2) indicates that the time period for the patentee to furnish the information required in Form 27 shall now be once in every financial year i.e., within 31st of March of every year, unless specifically asked by the Controller. The information in Form 27 is required to contain details pertaining to the preceding calendar year, commencing soon after the financial year in which the patent was granted. Further, the details need to be furnished within 6 months instead of the current 3 months from the expiry of each financial year and hence the due date for filing will be 31st September of every financial year.
Further, The Rule 21 now includes compliance to additional requirements of paragraph (a), (b) or (b-bis) of rule 17.1 of the Regulations under Patent Cooperation Treaty (PCT). According to the amendment to Rule 21, the statement is regarding the verified English translation of priority document. The amendment indicates the following:
- A patentee filing an international application designating India, who has not complied with the requirements of filing priority documents under the regulations of the PCT, is required to file the priority documents with the Indian Patent Office.
- The applicant is not required to submit the priority document to the Indian Patent Office if the priority document is available in the World Intellectual Property Organization’s digital library.
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IPAB’s order granting a patent to University of Miami may refine the perplexed examination process
BACKGROUND OF THE CASE:
An Indian national phase application, titled “Topical Co-enzyme Q10 (CoQ 10) Formulations and Methods of use” (application number – 2090/KOLNP/2006) having a set of 1 -37 claims was filed on July 25, 2006. An examination report was issued on May 05, 2010 by the Controller of Patents (herein Respondent in this case).The major objection raised in the first examination report (FER) were as follows:
a) Claims lack novelty and inventive step in view of the cited prior art references; and
b) Claim 8 -32 falls within the purview of non – patentable subject matter under sec (3) (i).
The appellant filed a response to the first examination report with amended or revised set of claims on May 02, 2011, three days prior to the deadline (May 05, 2010) for filing the response. The Respondent, on 11 July, 2012, issued a hearing notice appointing a hearing to be held on 22 August, 2012. Major objections raised in the hearing notice were as follows:
- Title of the application was not precise.
- Amended claims lack novelty and inventive step in view of the prior references cited in the FER.
- Amended claims were not allowable under sec 3 (d) and 3 (e).
- Claims 47 to 49 not supported by the specification.
Moving on, the hearing to be held on 22 August, 2012 was adjourned and a later date i.e. 02 August, 2013, was fixed for the hearing. A further discussion was also scheduled on 07, Feb 2014, by the Respondent. Data in the form of affidavits in support of the patent application was also filed along with the written submission. After a hearing held again on 27 February, 2014, the Respondent passed an order on 27 February, 2015 rejecting the grant of the appellant’s patent application.
Grounds for rejection from the order is produced below:
1) Use of liposome as carrier of active drug molecules is already known in the art. The proposed revision of claim, combining the carrier liposome with active drug molecule, Coenzyme Q 10 and evidence for enhancement of activity (as proposed by further documents) are beyond the scope of ‘invention’ as described in the complete specification as on record.
ii) Post filing data or technical results cannot be included in the descriptive part of the complete specification as it is not allowable as per section 59 of the ‘Act.
iii) Applicant did not incorporate the further experimental results in the specification by way of amendment within stipulated time period. At this stage, inclusion of major technical data and change of direction of the invention is not acceptable and merit of the invention has to be decided based on the disclosure as on record.
iv) As per present disclosure, specification lacks in technical data for enhancement of efficacy or synergism. Therefore, the ‘invention’ cannot be acknowledged to involve inventive step [as per section 2(1)(j)] and also not patentable under section 3(d) of the ’Act.
v) The revised claim as drafted fall u/s 3(i) [method of treatment] of the ‘Act and thus, not allowable.
The Appellant filed an appeal to the IPAB against the order dated 27 February, 2015 passed by the Respondent rejecting the grant of the Appellant’s Indian patent application numbered 2090/KOLNP/2006.
IPAB set aside the decision of the Controller and granted a patent in favour of the appellant. The judgement was passed considering the arguments provided by the appellant as there were no representative on behalf of the Respondent. Grounds considered to grant the patent application are as follows:
- Incorrect rejection under sec 3 (i)
IPAB stated that the Respondent had incorrectly rejected the patent application under section 3 (i), as such objection was not even raised in the hearing notice. Rejection based on the ground, which was even not communicated to the appellant is against the principal of natural justice. The order passed violates section 14 of the patent law, which mandates the Controller to give an opportunity to be heard before any decision is made against the appellant.
- Non speaking order – Grounds for rejection not clear
In the refusal order, the Respondent had vaguely mentioned that the patent application lacks inventive step, non- patentable under section 3 (d) & 3 (i) and claims not supported by the specification. Grounds for rejection were not elaborated, which is again violation of the principles of natural justice and also the principle of law established in the country. Relying on a legal principle under patent law and also held by IPAB in the decisions like ORDER No.08/2014, IPAB states that the refusal order has to be a speaking order and the details regarding the grounds for refusal, and how those grounds are established on the subject matter claimed has to be elaborated.
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Composition claims do not fall under sec 3 (d)
- The Respondent had wrongly objected that the claims of the patent application fall under the purview of sec 3 (d), as the revised claims of the patent application relates to composition. IPAB relies on the previous IPAB order no. 173 of 2013 and specifically referring to paragraph 84 of the above mentioned IPAB order, it concluded that composition claim do not fall under section 3 (d). Further, the board also stated that refusal order fails to disclose the known substance for which the efficacy data has to be shown and how section 3 (d) is applicable for the patent application at issue.
- The Respondent was wrong in rejecting the application as the same is a breakthrough invention for treatment of cancer, an embodiment of which is being studied at the clinical stage for treatment of cancer.
- The claims are novel and also inventive in view of the cited documents and completely supported by the specification as originally filed.
- Additional documents:
Affidavits from experts providing data supporting the invention were also submitted along with the post hearing written submission. The Respondent erred in disallowing said post filing data submitted by the appellant in support of the patentability of the claimed invention.
The IPAB implemented “Principle of natural justice” and set aside the order of the Respondent. Based on the present order, the Respondent has to abide by the principles of natural justice, while examining any patent application and also should rightly exercise his discretion power vested under section 15 of the Patent Act. The Respondent cannot reject the grant of a patent application by providing vague reasons and not providing details as how the cited references are applicable to the patent application. In other words, the order passed by the Respondent should be a speaking order, not a nonspeaking order. Any additional documents such as clinical trial data or any experimental data submitted to support the patentability of the invention has to be considered by the Respondent, on passing an order that may be against the right of the appellant.
In practice, the FER issued by the Indian patent office hardly provides detail as how the cited references are applicable to the patent application. In such scenarios, it may be difficult for the applicant to understand the underlying reasons for which the prior is cited and how the cited references are comparable to the patent application being examined. Therefore, the arguments and amendments provided by the applicant in the response filed for the FER issued may not be convincing to the Controller and lengthen the patent prosecution process. The present order binds the Controller to provide reasons as how the cited references are applicable to the patent application being examined. This makes an ease for the applicant to understand how the cited references are compared to the patent application and prepare arguments and amendments accordingly that may be convincing to the Controller and shorten the prosecution process.
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IPAB’s Ferid Allani order is a boost to software patents filed in India
IPAB’s Ferid Allani order is a boost to software patents filed in India
No wonder, computer programs are a major part of innovations around us than ever before. As the advancement in technology continues to progress, it is quite difficult to find technological innovations that do not have a software component in association with them. In this context, Ferid Allani, a Tunisian citizen had remarkable history regarding his application relating to software patent innovations in particular section 3(k) of the Indian IP landscape. In the present case, more than nineteen and half years are passed in deciding the present application by raising objections. The term of a patent in India is twenty years. The said patent is expiring in December 29th, 2020. The recent IPAB order dated July 20, 2020 in the case of Ferid Allani (applicant) v/s Assistant Controller of Patents, clarifies the ambit and complexity of section 3(k) pertaining to patentable subject matter related to computer related invention..
Background of the invention: The application is titled “Method and device for accessing information sources and services of the web”. The objective of the invention is to provide easy, quick and direct access to required sources and services on the internet (web) without wasting precious network resources, such as bandwidth.
Brief prosecution history of the application from filing to grant:
- Ferid Allani filed a provisional patent application on December 30, 1999 bearing number 99/16704. Thereafter, a PCT application was filed on December 29th, 2000 as PCT/FR2000/003759 which entered India as IN0705/DELNP/2002A on July 17th, 2002.
- A request for examination was filed for IN0705/DELNP/2002A and a first examination report (FER) was issued on 21st February, 2005 with objections corresponding to section 2(1) (j) in view of a prior art D1. The applicant’s agent submitted a response to the FER on 17th September 2005.
- A second examination report (SER) was issued on 21st September, 2005 with the objection of non-patentability of claims under section 3(k) of the Patent Act. Since no response to the SER was filed, the application was deemed to have been abandoned under section 21(1) of the Patent Act.
- Challenging said order of abandonment, the Petitioner filed a writ petition on May 2nd, 2006. The Petitioner submitted that the Act and the rules are silent on the time limit after which it is to be considered that the Applicant failed to put an application in order for grant of the patent after a “second examination or more statement of objections” are issued by the patent office.
- On February 25th, 2008 Hon’ble High Court directed the Indian Patent Office to review the application by providing the applicant an opportunity of hearing.
- The response to the SER dated September 21st, 2005 was filed on March 20, 2008. Thereafter, a hearing was scheduled for August 22, 2008, which was attended by the applicant’s agent. Thereafter, the applicant’s agent submitted written submissions on August 12th, 2008. However, the Controller, by an order dated November 18, 2008 refused the application.
- In response to this refusal, an appeal was filed under section 117A(2) of the act against said order dated November 18, 2008 before the IPAB on February 20, 2009. IPAB dismissed aforementioned appeal on the grounds that, the application does not disclose any technical effect or technical advancement.
- The applicant filed a writ petition before the Hon’ble Delhi High Court on December 19, 2013 in view of said dismissal of appeal, stating that “the invention is more than a mere software that is loaded onto the computer and the application does disclose a technical effect and technical advancement”. In response, Delhi High Court on December 12, 2019 directed the Indian Patent Office to re-examine the said patent application and stated that an invention would not become non-patentable simply for simply for that reason that it is rare to see a product which is not based on a computer program and that the effect of such programs in digital and electronic products is crucial in determining the test of patentability.
- On January 01st, 2020 the Patent Office heard the case and on February 7,2020 rejected the application on the same ground. This order had been challenged before the IPAB in the present matter.
- The IPAB in its order dated July 20, 2020 granted the patent.
Issues:
- Whether the patent application should be granted under Section 2(1) (j)of the Patents Act, 1970; and
- Whether the patent application must be exempted by the operation of Section 3(k) of the Patents Act, 1970.
Contentions provided by Applicant:
- During the course of prosecution, the Applicant stated that the aforementioned goal of the claimed invention is achieved in a way that is quicker and easier to use than the methods known at the time of invention.
- The invention provides a technical effect and includes integration with hardware. On the internet, a web search engine allows a user to carry out a search for any particular information, so desired by the user. The search results are generally presented in a list of results, often referred to as search engine results pages (SERPs) and such results comprise a mix of links to web pages, images, videos, infographics, articles, research papers, and other types of files. Thus, a typical web search engine will access the internet and provide the user, on request, with results which were not previously available with user in near real time. It is submitted on behalf of Applicant that the present invention provides a forward-looking solution in the form of an ‘Efficient Search Strategy’ to overcome the problems encountered in the traditional search engines which existed in 1999.
Findings by the court:
- According to the findings of the Delhi High Court on December 12, 2019, the addition of the terms “per se” in section 3(k) was a conscious step. It was provided in the Report of the Joint Committee on Patents (Second Amendment) Bill, 1999 that:
- Hence, inclusion of the above phrase by the Patent (Second Amendment) Bill, 1999 to ensure that genuine inventions which are developed based on computer programs are not refused patents.
- The report of the Joint Parliamentary Committee suggests that legal position of the computer-based invention in India is similar to the Europe having similar provision (Article 52 of the European Patent Convention). The EPO and other Patent Office greatly emphasized “technical effect” and “technical contribution” for determination of the patentability.
- The present invention achieves “technical advantage” and exhibits “technical effect”. Bandwidth is utilized only once per request, thereby saving network resources and the mean time duration observed for accessing searched information is drastically reduced.
- The Hon’ble High Court relied on legislative history behind section 3(k). The Court also relied on the Computer Related Inventions, 2013 (CRI guidelines, 2013) issued by the Patent Office which clearly stipulate the following indicators to provide a “technical effect”: “higher speed, reduced hard-disk access time, more economical use of memory, more efficient data base search strategy, more effective data compression techniques, Improved user interface, Better control of robotic arm ,improved reception/transmission of a radio signal”. The present invention falls under at least the following indicators of “technical effect”: higher speed, more economical use of memory and more efficient data base search strategy. The present invention is aimed at overcoming the limitations of existing inventions which conduct generalised searches and provide unclear information while consuming substantial amount of time and bandwidth, thereby achieving technical advantages over prior art.
Findings by the IPAB:
- The IPAB relied on contemplating technical solution intended to be solved by the patent application. The IPAB identified a key feature of the invention that is forming a well-constructed query which is to be emitted to the internet, which solves a technical problem of prior art technologies producing a technical effect of “reduction of bandwidth by the structured query”.
- The present invention reduces the mean time duration for accessing the searched information by users. As a matter of fact, user need not spend time in selecting and reviewing multiple search results as disclosed by other technologies in 1999.
- The present invention is also economical, as the internet bandwidth is consumed only once per search resulting in increased quality of internet services to users.
- One has to first construe the claims, then identify technical contribution provided by the claims.
- The definition of “technical effect” or “technical contribution” is to be taken from the guidelines relating to Computer Related Inventions, 2013 (CRI guidelines, 2013).
- The IPAB appeal was allowed and the patent was granted to Ferrid Allani.
Summary:
- Most of the inventions are based on computer programs” and “it would be retrograde to argue that all such inventions would not be patentable”.
- In light of the Hon’ble Delhi High Court’s direction that the Guidelines for grant of patents relating to the Computer Related Inventions are to be considered, along with the settled judicial precedents for granting the patent, as well as the fact that the present invention provides at least the aforesaid technical effects defined by CRI guidelines, the Patent ought to be granted.
- Therefore, without appreciating the technical effect produced by the present invention, the mere fact that a computer program is used for effectuating a part of the present invention, does not provide a bar to patentability.
- Thus, the invention MUST be examined as whole and the following factors are to be considered while deciding upon the patentability of such inventions-
- technical effect achieved by it, and its
- (ii) technical contribution. If the invention demonstrates a “technical effect” or a “technical contribution”, it is patentable even though it may be based on a computer program.
Conundrums of the case:
It shall be noted that the Computer Related Inventions, 2013 (CRI guidelines, 2013) were released on June 28th, 2013. Since, the court relied greatly on these CRI guidelines, does it open a door for re-examination of the patents which were rejected prior to these guidelines which need to be re-examined as it happened in the present case? Likewise, if the new CRI guidelines are published in future, it may further open doors for old patents for re-examination? As a matter of fact, both High court and IPAB have declined to lucidly define the term “technical advancement”. The current conundrum can be eradicated if the term “technical advancement” is clearly defined rather than promoting “case by case analysis”. Such a stance can boost the number of software patents being filed in India and will encourage global players in the software industry to protect their software inventions in India.
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India and Denmark pen MOU on IPR
The Department for Promotion of Industry and Internal Trade (DPIIT) India and the Danish Patent and Trademark Office (DKPTO) Denmark have penned a Memorandum of Understanding (MOU) on Intellectual Property Rights (IPR) on 26 September 2020 to elevate the cooperation in the areas of IPR. The MOU focuses on increasing IP cooperation between the two countries. The MOU is valid for four years and would be renewed on a rolling basis. The two sides would be drawing up a biennial work plan to implement the MOU.
The major features that are covered under the MOU are as follows:
- Exchanging of best practices, experiences and knowledge on IP awareness among the public, authorities, businesses and research and educational institutions of both countries;
- Collaboration on training programs, exchange of experts, technical exchanges and outreach activities as specified in the Work Plan agreed upon between the Parties;
- Exchange and dissemination of best practices, experiences and knowledge on IP with the industry, universities, R & D organizations, authorities and Small and Medium sized Enterprises (SMEs) through participation in programs and events in the matter, organized singly or jointly by the Parties;
- Exchange of information and best practices on processes for disposal of applications for patents, trademarks, industrial designs and Geographical Indications, as also the protection, enforcement and use of IP rights;
- Cooperation on the development of automation and implementation of modernization projects, new documentation and information systems in IP and procedures for management of IP;
- Cooperation on the understanding of how Traditional Knowledge is protected; including the use of traditional knowledge related databases and awareness raising of existing IP systems; and
- Sharing experiences and best practices in respect of IP-related issues including inter alia financial services like IP valuation and appraisal, so as to facilitate the implementation, trade and commercialization of IP.
The features mentioned in the MOU would allow both the players to have a broader perspective of the IPR. This would be a defining step for India in putting itself towards being a major player in the global innovation with the knowledge and expertise exchange.
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Virtual hearings are here to stay?
As it is known, the COVID-19 pandemic has affected the lives of millions around the globe and is not showing any signs of diminishing. The World Health Organization (WHO) has even called the pandemic as an unprecedented global crisis. If history has taught mankind anything, it is that unprecedented challenges have always led to unprecedented initiatives. One such unprecedented initiative is the use of virtual hearings in the Indian legal system.
Notably, the Intellectual Property Appellate Board (IPAB) in its order dated May 11, 2020 stated that all judicial work including hearings shall be conducted only by video conferencing until further notice. This is a welcome move considering the state of affairs of the tribunal. IPAB is notorious for its dysfunctional state in the recent past and pendency of cases, the same was pointed out by Justice Prathiba Singh in the order dated October 23, 2019.
Surely, the virtual hearings can help in mitigating the inefficiency of IPAB. It shall be noted that the virtual hearings have injected fresh blood in the judicial processes across the country as can be witnessed in the number of cases disposed by the High courts, District courts and Tribunals during this period. Additionally, the virtual hearings minimizes the logistics involved as compared to physical hearing, thereby reducing the operating costs and time.
Recently, a parliamentary panel headed by MP Bhupender Yadav has advised various tribunals such as NCLAT, TDSAT and IPAB to do away with physical hearings.
The report by the parliamentary panel dated Sep 11, 2020 reads as follows,
“The Committee is also of the opinion that Virtual Courts can be extended permanently to various Appellate Tribunals like TDSAT, IPAB, NCLAT etc., located across the country which do not require personal appearances of the parties/advocates. Permanent Virtual Courts can also be established for hearing matters relating to Administrative and other Tribunals at the time of final hearing,”
The virtual hearings, which was considered a temporary solution, may soon become permanent even after the pandemic is over.
The report further added that such step will not only cut down the operating costs but also increase the efficiency of the tribunal in disposing the cases.
“The expenditure involved in the establishment of a large number of Tribunals/Courts can be cut down sizeably. This will also reduce the crowd in the court and cut down other litigation costs and overheads,” the report added.
Apart from cutting down costs and decreasing the pendency of cases, such virtual courts/hearings will increase transparency and may encourage more parties to pursue their cases even after an adverse decision is issued by the Intellectual Property Office.
Soon, virtual hearings may become a norm even after the pandemic provided the associated technological challenges such as data privacy, fast internet connection, etc. are addressed. IPAB’s decision in this matter of completely doing away with physical hearings may serve as a precedence to the Intellectual Property Office. It shall be noted that even though virtual hearings may offer numerous benefits over physical hearings, the idea of completely doing away with physical hearings remains moot.
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