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Curtains for the Intellectual Property Appellate Board (IPAB) – End of a possible game changer?
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The Intellectual Property Appellate Board (IPAB) was established by the Indian Government as an Appellate body on 15th of September 2003 for hearing and resolving appeals against registrar under the Indian Trademarks Act, 1999 and the Indian Geographical Indications of Goods Act, 1999. Later on, from the 2nd of April 2007, IPAB was further authorized to hear and resolve appeals for the orders and decisions made by the Patent Controller under the Patents Act, thereby transferring the powers of High court under the Patents Act and the Copyright Board. With this, the cases relating to patents pending before the High Court were transferred to IPAB.
The idea of having an Appellate Board appeared to lessen the burden of the High Courts. However, the orders passed by the IPAB could be challenged before the High Courts, and then the Supreme Court in cases where High Court orders had to be challenged leading to a very exhaustive prosecution process. To alleviate this, on December 06, 2019, the Ministry of Commerce and Industry in its press release stated that “The applicants of all Intellectual Property Rights (IPRs) can directly file Special Leave Petition (SLP) before the Hon’ble Supreme Court against any order of Intellectual Property Appellate Board (IPAB)” implying that the appeals against the IPAB orders could be directly filed before the Supreme Court. This meant that the appeals could now be directly filed in the Supreme Court against orders from the IPAB, without first approaching the High Court. The Ministry of Commerce and Industry was in favor of the IPAB and affirmed the importance of IPAB with the press release.
IPAB, since its inception has been greatly criticized because of its underworking. Several reasons that have plagued the working of the IPAB have been constant, the reasons being delay in appointment of members and Chairpersons to the IPAB, questions as to their technical qualifications and pending of appointments with regard to technical members, which led to delay in disposing cases. This lack of basic infrastructure and lack of technical appointments to the IPAB added to the concerns of IPAB, which in recent years were resolved to an extent.
The inefficiency of the IPAB led to majority of stakeholders, including a former chairperson of the IPAB, Justice Prabha Sridevan favoring its shutting down. Recently, the Union Finance Minister introduced a draft bill in the Lok Sabha with the proposal of shutting down IPAB and transferring the powers of IPAB back to the High Courts, following which on the 4th of April 2021, The President of India promulgated the Tribunal Reforms Ordinance thereby putting an end to the IPAB.
With the promulgation of the Tribunal Reforms Ordinance, certain appellate bodies were shut down and their functions were transferred to existing judicial bodies. With the shutting down of the IPAB, the cases would now be transferred back to the High Courts, which are already overburdened with the pending civil cases. It is to be noted that the High Courts have more than 55 lakh pending cases as of April 2021. In addition, even the High Courts are operating underpowered with more than 400 vacancies for the Judges to be filled. Bringing patents under the regular court system may result in prolonged litigation which would hamper the patent rights, given the limited period of monopoly for patents, further it would also over-burden the High Courts. This problem is not faced by the likes of trademarks and copyrights, where in the former registration may be prolonged continuously, while in the latter the scope of protection is sufficiently longer to accommodate litigation. One of the other reasons that was given for shutting down of the IPAB was the economics, as a lot of funding was spent on the IPAB over its lifetime as opposed to its generation of limited revenue, considering which shutting down of the IPAB seemed more appropriate.
It shall be noted that each bench of IPAB included a Technical member along with a Judicial member as per section 116 of the Patents Act, who would be a vital player in patent hearings, which is currently missing in the case of High Courts. The Judges appointed in the High Courts mainly hold a degree in Law and have little exposure in the field of science, thereby demanding an additional technical member during hearing of the patent appeals. An additional requirement implies hiring of new technical members fulfilling the requirements of the High Courts for hearing patent appeals, which would basically contradict the very reason provided for disposing the IPAB in the first place. With the shutting down of the IPAB, we need to see how the transfer of cases and their proceedings are carried out and also on how things pan out in the future.
With the increase in IPR awareness and proposed policy changes to promote IPR, one can expect a substantial increase in filings, examinations, appeals and so on. Given this, a fully functional IPAB would have helped in expediting matters related to not just Patents, but also Copyrights, Trademarks and Geographical Indications. Overlooking the shortcomings of the IPAB till date, if the IPAB was to be endowed with most of its requirements for its full functionality, could the IPAB play a major role in the field of Intellectual Property, especially patents? The abolishment of the IPAB at a time when there is an increased interest in Intellectual Property Rights may not be a wise decision. It is a view of majority of stakeholders that the IPAB be reinstated which would in turn aid in uplifting India’s IP landscape, in an era where Intellectual Property rights is given utmost importance.
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A Blown Fuse for Edison’s bulb? Lights out at the IPAB (Intellectual Property appellate board in India)
In what is a cause for concern for inventors, proprietors and IP agents alike, a series of events from two branches of government has muddied the future for Intellectual Property registration in India. The first impact came via a decision passed by J. Ravindra Bhat of the Supreme Court, in a three-judge bench case in The International Association for Protection of Intellectual Property (India Group) v. Union of India and Ors., wherein the Court refused to extend the term of the incumbent Chairperson of the IPAB, J. (retd.) Manmohan Singh of the Delhi High Court.
The case ultimately involved interpretation of two prior cases alongside the Finance Act of 2017. The first issue before the court was whether the term of the incumbent Chairperson had been extended to 5 years by virtue of the decision of the Supreme Court in Madras Bar Association v. Union of India. This issue arose due to the fact that an Order by the Central Government had stated the end date of the term of J. (retd.) Manmohan Singh as 21.09.2019, i.e. the end of his tenure in a prior post held by him.
The Court therefore resorted to the fact that the incumbent Chairperson’s appointment had been made under the erstwhile 2017 Rules pertaining to the appointment of members to tribunals and relied on the decision passed in Rojer Mathew v. South Indian Bank Ltd., wherein all appointments were to be determined according to their parent act. Therefore, the term of the Chairperson of the IPAB was determined as per Section 86, i.e. upon reaching the age of 65 years. J. (retd.) Manmohan Singh turned 65 on September 22, 2019. Additionally, the Court held that the Finance Act 2017 only specified the outer limit for tenure of the Chairperson and noted that since the Central Government order had already specified that September 21, 2019 was to be the end of the term of the Chairperson of the IPAB, the outer limit would not be applicable.
An additional point of contention was with respect to the requirements under Section 84, and the effect of Section 87 on the same. The Applicant had contended that under Section 84 of the Trademark Act, the Board could not function without a judicial member, and since J. (retd.) Manmohan Singh was the only judicial member, his appointment had to be extended. The Court however noted that as per Section 84(3), the Chairperson can perform the duties of a Judicial member or a Technical member, as the case may be. The Court also pointed out that as per Section 87 of the Act, the Vice-Chairperson or any other senior-most member can carry out the functions of the Chairperson in his/her absence. In support of this point, the Court made note of the fact that the other technical members all possessed legal qualifications, and had significant experience in their field, such that they could perform the functions of the Chairperson with ease. Thus, the Court ruled out the final contention of the Applicant.
The next chapter in this story comes with the introduction of a draft bill in the Lok Sabha titled “The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021”. Of specific note is Chapters III, V, VII, VIII and IX, which pertain to the gambit of Intellectual Property Laws in force. In all these Chapters, amendments have been brought to substitute the use of the term ‘Appellate Board’ with that of the term ‘High Court’, wherever power has not been granted to the courts to hear the matter. In places where the courts are a permissible forum to approach, mention of the term ‘Appellate Board’ has been omitted. The needle in the haystack is that in the Copyright Act, mention is made of ‘Commercial Courts’, which has been defined to mean the Commercial Courts established under Section 3 of the Commercial Courts Act, 2015, or the commercial division of the High Court under Section 4 of the same Act.
The Statement of Object and Reasons provided in the Bill points to that fact that in spite of the existence of these tribunals, there has been a lack of speedy delivery of justice, and the Tribunals that are proposed to be shut down are ones where the public at large is not a litigant. Furthermore, such cases do not end at the tribunal level, and are litigated up till the Supreme Court. Thus, given the burden on the exchequer and the administrative costs involved in maintaining the specified tribunals, the Bill proposes to shut them down and transfer their functions to existing establishments.
What this means for the IP community is that existing as well as future cases that were originally dealt with by the IPAB will now have to be litigated at the High Courts. The high technicality of this field would pose a burden on respective High Courts in having to deal with appeals from the Intellectual Property offices, for the present judges may not possess the requisite abilities to deal with such technicalities. This would only frustrate the process and prolong the period for prosecuting an appeal from the decision of the Controller, which would hamper the innovative temper of the country.
Another possible oversight that the Bill poses is with regards to Section 64 of the Patents Act 1970. Section 64 reads thus:
“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…”
The Bill aims to delete the phrase “by the Appellate Board or”, which leaves the Section reading thus –
“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 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…”
A straightforward and simple reading of the amended Section leads to the interpretation that petitions seeking to revoke a patent may only be filed in a case of infringement filed by the original patent holder. The only other mechanism to revoke a patent would be under the provisions of Section 25 of the Patent Act, specifically sub-section (2), pertaining to the Post-Grant Opposition proceedings instituted before the Controller. Thus, parties would not be able to seek the revocation of a patent after the statutory period of 1 year, until and unless the patent holder institutes a case of patent infringement.
Given the numerous timelines that exist in both the national patent system as well as the international patent system, and the fact that it is humanly impossible to account for all possible prior art at the time of examination, it is detrimental to the objective of building a strong patent system to remove a mechanism that allows for the invalidation of a patent at any given point in time.
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IPAB’s recent order provides clarity on divisional applications in India
What is a divisional application?
A divisional patent application is derived from a previously filed patent application which relates to more than one invention or inventive concept. Such applications fall under purview of section 16(1) of the Indian Patents Act, 1970.
Ambiguities before IPAB:
Over the years, IPO and patent lawyers maintained the ideology that divisional applications could be filed at any time before the grant of the patent, if desired by applicant. This provision was adopted to certain cases when applicants were not able to comply with statutory time period for placing the application for grant. In scenarios like these, in order to claim the priority date, applicants used to file a divisional application, with similar claims as those present in the parent application, just before the due date expired. The ambiguity lied in the matter that whether such applications were supposed to be allowed or rejected. These matters soon reached IPAB for clarification and laying out right approach when filing a division application.
The provision of divisional applications was also utilised in order to claim subject matter that were rejected for reasons corresponding to not being patentable subject matter under Section 3 of the Patents Act. As an example, applicants whose prior applications based on chemical compositions that were denied for being not patentable, started filing divisional application essentially claiming the same invention as the parent application. This interpretation led to allowing many divisional applications whose parent application was rejected. The IPAB was required to clarify the position of such application with legal perspective.
ESCO Corporation v. Controller of Patents and Designs, New Delhi
In a recent order (OA/66/2020/PT/DEL) by IPAB dated October 27, 2020, the IPAB allowed the appeal filed by ESCO Corporation (Appellant). The Appellant bears a patent application numbered 8094/ DELNP/ 2008 which got rejected by Controller of Patents and Designs, New Delhi (Respondent). The Respondent refused the grant of patent on the ground that the application failed to meet the requirements of Section 16(1) of the Patents Act, 1970. In this case of applicant, the parent and divisional applications were examined by different Controllers.
Brief facts of the case:
- The Applicant had filed the first application no. 4702/DELNP/2005 (hereinafter referred as parent application) with 56 claims, out of which claims 1-46 were related to “Wear assembly”. The claims 41-52 were related to “Wear member” and claims 52-56 were related to “a method of attaching a wear member to a support branch”.
- These claims underwent further amendments leading to retainment of only 34 claims. The claims 1-14 were related to “A wear assembly” and claims 15-19 were related to “a method” and claims 20-28 were related to “a lock” and claims 29-31 were related to “a wedge” and rest 32-34 were related to “a wear member”.
- An objection was raised in the first examination report of the parent application that claims 20-34 were inconsistent with claim 1 and plurality of independent claims existed. In response, the Applicant filed a divisional application (8094/DELNP/2008) corresponding to the current application with claims 20-34. In the first examination report issued for the current application -8094/DELNP/2008, an objection was raised under section 16(3) of the Patent Act by Controller for the claims 13-15 related to “A wear member” which corresponded with the claims 32-34 of the amended claim set of the claims 1-34 of the parent application. In response, the Applicant amended the claim set such that only claims 13-15 were retained as claims 1-3 in the current application.
- The Controller objected on grounds that the claims 1-3 did not relate to an invention distinct from claims in the parent application, since the wear member was already a feature of the wear assembly claimed in the parent application. Hence, the divisional application was illicit. The application no. 8094/DELNP/2008 was refused due to non-compliance with requirements of Section 16(1) of the Act.
Reasonings by the IPAB:
- A patent application is supposed to be divided if the claims pertaining to the parent application include “more than one invention”. The IPAB reached this conclusion by accounting legal provisions of Section 7, Section 10(5) and Section 16 of the Act, MPOPP for divisional application and recent orders- OA/6/2010/PT/KOL (L.G. Electronics); OA/47/2020/PT/DEL (Proctor & Gamble); and OA/21/2011/PT/DEL (National Institute of Immunology).
- The term “one invention” corresponds to the claims of the complete specification related to either “single invention” or could be “a group of inventions linked so as to form a single inventive concept”. This conclusion of the IPAB was based particularly on legal provisions of Section 7 and Section 10(5) of the Act. The order recites that “no two invention(s) can be allowed in a single patent application unless it conforms to a single inventive concept. Hence, either way, it is a single inventive concept which is allowable in one application, as per the statutory provisions”.
- In the case of 4702/DELNP/2005, the IPAB acknowledged that all the claims 1-34 of the parent application could have been allowed with the suitable amendments as they relate to a single inventive concept. However, the Applicant filed a divisional application based upon the objection by the Controller in the first examination report of the parent application. Further, the IPAB made an observation that the filing of the instant divisional application for the parent application does not lead to double patenting issues and hence allowed the divisional application.
Listings by IPAB:
The IPAB relied on legal provisions of Indian Patent law, the Manual of Patent Office Practice and Procedure, the PCT and the previous orders issued to list down the following key points to be looked into while addressing issues concerning divisional applications.
Points to be considered before filing divisional application:
- If applicants desire on their own accord (Suo-moto), they can file a divisional application.
- The applicant may file a divisional application in order to find solution to an objection raised on the ground of plurality of invention in the parent application. The existence of a plurality of invention in the parent application is the crucial and mandatory for filing a divisional application.
- The divisional application should not be filed with the same set of claims as the parent application.
- Division of the parent application should be exercised on the ground of ‘plurality of invention’ as contemplated under section 16 of the Act.
- The application shall exist and no divisions can be made from applications that are either “deemed to be abandoned”, ‘withdrawn” or “refused”. In addition, after the filing of the divisional application, the divisional application will continue and the legal status of the parent application will not affect the divisional application.
- The divisional application can be filed any time until the grant of patent.
- The complete specification of the divisional application should not include any subject matter not disclosed in the complete specification of the parent application. Any additional claims which never formed part of the originally filed claims and complete specification shall not be allowed in a divisional application.
Points to remember while examining the divisionals:
- The fact that there are different embodiments in the specification, claimed as an independent set of claims, does not mandate the application to fall under lacking “unity of invention”. The applicant must be given an opportunity to amend the claims to overcome such objections. As a matter of fact, an outright objection on the plurality of inventions should not be given, just because there are different embodiments in the specification.
- In scenarios where there is plurality of inventions in the claim set, while examining such applications, the distinct inventions need to be identified in the First examination report (FER) in order to reduce the needless legal complications.
- If two or more divisional applications are filed based on a first mentioned application or parent application, then the examination of subsequent divisional application(s) shall be done vis-a-vis the first-mentioned application and other divisional application(s) examined earlier, in order to avoid double patenting.
- When an objection on the unity of invention is raised in the examination of the first-mentioned application, the divisional application should be allowed if it fulfils all statutory requirements. The applicant should be given an opportunity to make amendments accordingly.
Clarifications put forth by IPAB:
- The applicant can file a divisional application only if the claims of the invention pertaining to the parent application do not relate to a single invention. The IPAB also shed light on the fact that, even though an applicant possesses the right to file a divisional application on their accord, this right is debatable and subject to the Controller’s discretion whether to allow or discard such application.
- If claims in the parent application are overlapping with those in the divisional application, the Controller may ask the Applicant to amendment the claims to remove such overlap. In other words, the divisional application should not include any claim that has been present in the parent application.
- The subject matter disclosed in the divisional application should not include any matter that has not been disclosed in the complete specification of the parent application. In order to become eligible as a divisional application under section 16, it is crucial that the parent application, from which the divisional application is filed, should disclose more than one invention.
The instant order (OA/66/2020/PT/DEL) by the IPAB aims at providing clarity regarding filing and prosecution of divisional applications. The present order has taken into account the provisions in the statute, the legal bindings of PCT, the jurisprudence and provides a set of legal guiding principles that aim to provide consistency and uniformity in evaluation and examination of divisional applications.
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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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Functioning of Intellectual Property Appellate Board
The Intellectual Property Appellate Board (IPAB), which hears appeals against the decisions of the IPO, has been dysfunctional owing to lack of appointment of chairperson. In a related petition filed by Novartis AG, an ordered was passed seeking information regarding the total number of pending cases, and appointment of chairperson and technical members of IPAB. Further on, in a matter that has implications on the functioning of the IPAB, the Supreme Court struck down Tribunal, Appellate Tribunal and other Authorities Rules, 2017, and currently the Trademarks Act will govern the appointments to the IPAB till new rules are framed. With these developments, we hope the IPAB will be functional soon. Download Novartis Order and Supreme Court Judgement
Justice Manmohan Singh Appointed Chairperson Of The Intellectual Property Appellate Board
Intellectual Property Appellate Board (IPAB) is a tribunal that adjudicates appeals arising from decisions of the Controller General of Patents, Designs and Trade Marks (CGPDTM). The position of the Chairperson at the IPAB has been lying vacant since the retirement of the previous Chairperson Justice K M Basha in May 2016. Absence of a Chairperson, and the prevailing situation at the IPAB had resulted in substantial backlog, leading to the frustration among IP practitioners.
In this backdrop, the Department of Industrial Policy and Promotion (DIPP) had issued an advertisement on November 15, 2017, to fill vacant posts, particularly the posts of Vice-Chairman and Technical Members. The rules prescribed for such appointments have been embroiled in controversy, and we had expressed our views previously. Nonetheless, the Government of India has gone ahead and appointed Chairperson of the IPAB. However, we are not aware whether or not the rules mentioned earlier were applied for the appointment of the Chairperson.
The new Chairperson of the IPAB is retired judge of the Delhi High Court, Justice Manmohan Singh. Justice Manmohan Singh is currently Chairperson of the Appellate Tribunal for Forfeited Property (ATFP), and has been given additional charge of IPAB. Given the backlog at the IPAB, and the commitment required to dispose of pending matters, the dual responsibility given to the current Chairperson is a concern. Justice Singh is well known in the IP circuit, and has presided over several high-stake matters, including infringement litigation involving Ericsson and several India smartphone companies.
On behalf of Team InvnTree, we wish the new Chairperson the very best, and hope the appointment of the Chairperson is made in such a way that the appointment is not struck down in future as a result of the controversy mentioned earlier.
Filling vacant posts in the IPAB – a double-edged sword
The Intellectual Property Appellate Board (IPAB) in Chennai made an announcement on November 15, 2017, regarding filling up vacant posts. The positions are for a Vice-Chairman and for Technical Members for Trademark, Patent and Copyright.
The IPAB was set up for a speedy disposal of Intellectual Property disputes by transferring the jurisdiction of High Courts on certain matters to the IPAB. It is under the administrative control of the Department of Industrial Policy and Promotion (DIPP), which falls under the ambit of the Ministry of Commerce and Industry. The IPAB is responsible for hearing appeals from the decisions of the Controller of patents and trademarks, among others. The Technical Member of patents aids in adjudication of appeals against the decision of the Controller, and resolves patent revocations along with a Judicial Member.
On one hand, the filling of these posts will result in increased appointments for hearings and faster disposal of disputes that reach the IPAB. However, the filling of the posts may also turn out to be a double-edged sword due to current issues related to the appointment and removal criteria of the IPAB and other tribunal boards.
The crux of the issue arose when the Department of Revenue of the Ministry of Finance notified in the Gazette of India, the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017. These Rules stated new processes for the appointment and removal criteria of persons in the IPAB and other Tribunal Boards.
As per the Rules, the selection committee for posts of Chairperson, Vice-Chairperson and Judicial Members of the IPAB consists of the Chief Justice of India or his nominee, Secretary (DIPP), a Secretary to be nominated by the Central Government, and two experts to be nominated by the Central Government. The selection committee for the posts of Technical Members (Trademark, Patents or Copyright) on the IPAB consists of a member who will be nominated by the Central Government to act as the Chairperson of the Selection Committee, Secretary (DIPP), a Secretary to be nominated by the Central Government, and two experts to be nominated by the Central Government.
As evident, the selection committee for the IPAB posts of Chairperson, Vice-Chairperson, Judicial Members and Technical Members comprises a majority of government-elected executives. Additionally, the removal criteria stated in the Rules places the power of removing the Judges of the IPAB into the hands of the Central Government.
The controversy lies in the fact that, despite the IPAB being a judicial body, the judiciary does not have a considerable role in appointments or removal of persons from the IPAB. The lack of judiciary independence in the running of the IPAB and other tribunals due to the Rules, has resulted in about six challenges before the Supreme Court and four challenges before the High Courts at Delhi, Madras, Bombay, and Gujarat regarding the same.
In past judgements, the High Court and the Supreme Court have repeatedly clarified that the selection committee for appointing persons to the IPAB must be balanced with members from the judiciary and executive, instead of a majority from the executive. Further, any Legislation that does not comply with this decision would be struck down as unconstitutional.
In Shamnad Basheer vs Union Of India, the High Court stated: “the selection process has been left entirely to the Executive, though the functions of the Tribunal are judicial. This act is a direct affront to the basic structure, which is fundamental to the Constitution of India. The 1st respondent has totally overstepped and acted in disregard to the law laid down by the Supreme Court in Union of India Vs R Gandhi, President, Madras Bar Association, [(2011) 10 SCC 1] by turning a blind eye. The directions issued therein are meant to be applicable to all the Tribunals…. It has been consistently held that the judiciary should have a substantial role in the selection. It was also held that the process of appointment should substantially be that of members of judiciary.”
Thus, any appointments to the IPAB by the current selection committee according to the Rules would seem unconstitutional and may result in the subsequent overturning of the appointments. Further, since such appointments may be unconstitutional, the cases adjudicated by the appointed persons may face litigation from the involved parties that may allege injustice. Hence, the DIPP would be well-advised to carefully consider whether the time is right for making the appointments for the above-mentioned vacant posts in order to prevent further troubles.
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