Tag Archives: patent infringement

PepsiCo Withdraws Cases Against Potato Farmers – A Missed Opportunity

New potato isolated on white background close up

PepsiCo India Holdings Pvt. Ltd. (“PepsiCo”) had filed cases against several farmers and business entities alleging infringement of its IP in potato plant variety FL 2027. PepsiCo has now withdrawn cases filed against farmers, in view of what appears to be under political pressure. Although withdrawal of cases may have provided short-term relief to the farmers, a long-term solution in favour of farmers may have been achieved had the cases been pursued.

To provide a bit of background, PepsiCo has protected its potato plant variety FL 2027 under the Protection of Plant Varieties and Farmers Rights Authority (PPV&FR) Act, 2001. PepsiCo sought permanent injunction restraining the farmers from using FL 2027. The PPV&FR Act defines what constitutes infringement U/S 64 (reproduced below, with emphasis added). A breeder of a variety registered may allege infringement if any entity carries out acts that fall within the scope of Section 64.

64. Infringement.—Subject to the provisions of this Act, a right established under this Act is infringed by a person—

(a) who, not being the breeder of a variety registered under this Act or a registered agent or a registered licensee of that variety, sells, exports, imports or produces such variety without the permission of its breeder or within the scope of a registered licence or registered agency without permission of the registered licensee or registered agent, as the case may be;

(b) who uses, sells, exports, imports or produces any other variety giving such variety, the denomination identical with or deceptively similar to the denomination of a variety registered under this Act in such manner as to cause confusion in the mind of general people in identifying such variety so registered.

While Section 64 defines infringement, Section 39 protects various interests of farmers. Particularly, Section 39(1)(IV) (reproduced below, with emphasis added) entitles farmers to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under the Act in the same manner as he was entitled before the coming into force of the Act. Exception being, farmers are not entitled to sell branded seed of a variety protected under the Act.

39. Farmers’ right.—

(1) Notwithstanding anything contained in this Act,—

(iv) a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act: Provided that the farmer shall not be entitled to sell branded seed of a variety protected under this Act. Explanation.—For the purposes of clause (iv), “branded seed” means any seed put in a package or any other container and labelled in a manner indicating that such seed is of a variety protected under this Act. 

Notably, provisions of Sections 64 are “subject to the provisions of this Act”, whereas rights under Section 39 are “notwithstanding anything contained in this Act”. Therefore, the entitlement of farmers under Section 39 can be argued to triumph over the provisions of Sections 64. Consequently, it appears that an IP owner of a registered variety cannot stop farmers from saving, using, sowing, resowing, exchanging, sharing or selling (not as branded seed of a variety protected) his farm produce including seed of the protected variety. Given the forgoing observations, as mentioned earlier, a long-term solution in favour of farmers may have been achieved had PepsiCo continued to pursue cases against the farmers.

We hope this article was a useful read. 

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

Best regards – Team InvnTree   

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

Nuances of Copyright infringement by manufacture of products based on Engineering drawings

invntree-background-image

A recent judgement of the Delhi High Court in Holland L.P. and another. vs S.P. Industries calls for a debate on copyright infringement, and overlap and exclusivity between copyright and industrial design protection laws in the country.

We start by providing an overview of events that led to the dispute between the parties. Holland L.P. had designed and developed an Automatic Twist Lock (“ATL”) system, and has supplied the same to the Indian Railways over the years, with an Indian partner. Indian Railways had floated a tender in the year 2012 for replacement and repair of a list of parts of the ATL devices supplied by Holland L.P. and its partner. The Indian partner of Holland L.P. and S.P. Industries participated, with the latter emerging as the successful bidder.

In this backdrop, Holland L.P. (“Plaintiff 1”) and its partner (“Plaintiff 2”) had sought permanent injunction restraining S.P. Industries (“Defendant”) from manufacturing, selling, offering for sale, advertising, directly or indirectly ATL and parts thereto, alleging that such acts of the Defendant amounts to infringement of copyright of the Plaintiff. The Court however, ruled in favour of the Defendant.

Now referring to the particulars, engineering drawings (2D drawings) of the ATL prepared by Plaintiff 1 was made available as part of the tender by Indian Railways with permission from Plaintiff 2. The Plaintiffs contended that they are the owners of the copyright over the engineering drawings and they have the exclusive right over three-dimensional representation of the engineering drawings. In other words, the Plaintiffs contended that they have the right to prevent others from manufacturing, selling, offering for sale or advertising a product based on the engineering drawings. The Plaintiffs further contended that engineering drawings are not “Design” as per The Designs Act, 2000, since such drawings are “functional” and do not “appeal to the eye alone”. The instant contention is particularly relevant because, in case the subject matter over which the Plaintiffs are claiming copyright protection, is protectable under The Designs Act, then copyright would cease after the Plaintiffs reproduce the ATL 50 times by an industrial process, as per Section 15 of the Indian Copyright Act. The Plaintiffs had in fact reproduced the ATL systems 50 times by an industrial process. 

On the other hand, the Defendant contended that the subject matter over which the Plaintiffs are claiming copyright, is protectable under The Designs Act, and since the Plaintiffs have reproduced ATL systems at least 50 times, the copyright of the Plaintiffs has ceased.

While there were various other contentions, we are particularly interested in understanding whether engineering drawings is subject matter of copyright protection alone, or are they protectable as industrial design under The Designs Act.

The Court is of the opinion that engineering drawings made for the purposes of production of ATL systems is subject matter, which is protectable as industrial design under The Designs Act. The Court is of the opinion that, any design (such as engineering/machine drawings) which is used for the purpose of industrial production of an article, is protectable as industrial design. The Court draws the instant opinion by conjoint reading of Section 2(d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957.

We agree with the Court’s interpretation only in part for reasons that follows. One would agree that a set of engineering drawings would include drawings that define the way a product looks. In other words, such subset of drawings defines how the finished article/product appeal to and are judged solely by the eye. Hence, such drawings may be subject matter of industrial design protection. However, engineering drawings may also include a subset of drawings that define how certain parts, which are housed inside the product, are configured. Hence such drawings correspond to parts that are purely functional and are incapable of appealing to and being judged solely by the eye. Hence, it may be inappropriate to come to a conclusion, as the Court has, that any design which is used for the purpose of industrial production of an article, is protectable as industrial design. Our sense is that, design of product will include subject matter, such as engineering drawings of “housed/functional” parts (purely functional and not expressly contributing to aesthetics), over which only copyright protection applies, and will also include subject matter, which substantially defines how the product is perceived by the eye, which is protectable as industrial design.

Having made the above observation, it is now worthwhile to explore whether the owner of copyright over technical drawings corresponding to such functional parts (not the product as a whole, which is subject matter of industrial design protection) stop others from manufacturing such functional parts. Section 52(1) of the Copyright Act precisely deals with this matter.   

Section 52(1): The following acts shall not constitute an infringement of copyright, namely:-

(w) the making of a three-dimensional object from a two-dimensional artistic work, such as a technical drawing, for the purposes of industrial application of any purely functional part of a useful device.

The above section makes it clear that, even though one may hold copyright over engineering drawings over purely functional parts, they will not be able to stop third party from producing such parts. In other words, provisions of the Copyright Act cannot be used to stop third party from producing (including other acts of commerce) such functional parts, irrespective of whether they are visible or hidden from being gauged by the eye.

In conclusion, drawings that define the way an article/product appeals to and is judged solely by the eye, is protectable as industrial design, and copyright in the same ceases to exist once the article/product is reproduced 50 time by an industrial process by the owner. Drawings of purely functional parts of an article/product are not protectable as industrial design, and only copyright protection exists. However, such copyright is not infringed by third party who produces such functional parts.

I hope you found our article informative. The judgment can be downloaded below. 

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

Best regards – Team InvnTree   

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

The end of Roche vs. Cipla infringement lawsuit

invntree-background-image

The tussle between Roche and Cipla that started in the year 2008 has come to an end with a compromise announced on 30th May 2017 between the parties.

Roche has an Indian patent over a drug, “Erlotinib hydrochloride”, for treating lung cancer. In the year 2006, Roche launched the drug in India under the name “Tarceva”. It was reported in January 2008 that Cipla is planning to launch a generic version of “Erlotinib” under the name “Erlocip”. Roche followed by initiating infringement proceedings against Cipla in January 2008.

Roche’s plea for interim relief by way of injunction was rejected by single judge with an opinion that injunction against Cipla’s manufacture was against public interest. Notably, Tarceva costed around INR 140,000 (~USD 2300) for a month’s dosage, whereas Elrocip costed only INR 48,000 (~USD 800). Subsequent appeal by Roche was mostly unsuccessful.

The turnaround in the case happened in 2015, when the case was moved to the Divisional Bench of the Delhi High Court where the judgement was in favour of Roche. The Divisional Bench held that Cipla was infringing Roche’s patent.

Followed by the judgement, Cipla filed a Special Leave Petition (SLP) requesting for appointing a technical expert, which was accepted by the Apex Court in 2016 after which the matter was adjourned. After almost decade long legal proceedings, on 30th May 2017 both the pharmaceutical companies finally came to an agreement and reached a settlement. In June 2017, Cipla moved the apex court seeking to withdraw the Special Leave Petition (SLP) filed against the DHC divisional bench’s decision given in 2015.

The case which is considered to be significant in the Indian pharmaceutical industry has come to an end after shedding light on various aspects of laws pertaining to patent protection of pharmaceutical products.

We hope this article was a useful read. 

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

Best regards – Team InvnTree   

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

Delhi High Court makes a decision in Hybrid Cotton Seeds case

invntree-background-image

The Delhi High Court ruled in favour of Nuziveedu Seeds Limited in Monsanto Technology’s case against Nuziveedu on 28th March 2017.

India is the world’s largest producer of cotton, accounting for about 26% of the world’s total cotton production. Naturally, a case concerning the sale of cotton seeds involved in patent and trademark issues becomes important. This decision is related to a particular type of hybrid cotton seeds manufactured by Monsanto Technology called Bt cotton seeds, which are resistant to an insect called Bollworm that has the ability to destroy cotton crops and cause huge losses to farmers.

The Plaintiffs in this case are Monsanto Technology, Monsanto Holdings Private Limited and Mahyco Monsanto Biotech, all part of a multi-national agrochemical and agricultural biotechnology corporation and a leading producer of genetically engineered seeds. The Plaintiffs filed a case against Nuziveedu Seeds Limited, Prabhat Agri Biotech Limited and Pravardhan Seeds Private Ltd. (Defendants), which are Indian agribusiness companies that market seeds and supply hybrid seeds to Indian farmers.

The Plaintiffs alleged that the Defendants continued to market and sell Genetically Modified Hybrid Cotton Planting Seeds despite the termination of sub-license agreements between the Plaintiffs and the Defendants. The Plaintiffs also alleged violation of intellectual property rights of their registered patent (IA 214436) and their trademark sub-licenses for ‘Bollgard’ and ‘Bollgard II’. The Plaintiffs alleged trademark infringement and ‘passing off’ by the Defendants when they sold their products with labels of ‘Bollgard’. The Plaintiffs wanted to initiate a permanent injunction against the Defendants, along with disclosures, recalls of infringing products and award of damages.

RECAP OF PRIOR EVENTS

Monsanto developed and commercialised Bt cotton technology named BG I and BG II, and sub-licensed these technologies to Indian seed manufacturers including the Defendants in 2004, and renewed the license in 2015. A lifetime fee of Rs. 50 lakh was charged along with a recurring ‘trait value’ as compensation. Trait values are generally high, and contribute to a significant cost for the cotton seed producers. However, due to disputes related to the high trait value of the Bt cotton seeds, several states like Andhra Pradesh, Maharashtra, Gujarat and Telangana enacted price-control measures between 2007 and 2009, thus fixing the cotton seed prices and the trait values chargeable by the seed developer. The fixed trait values were significantly lower than the ones charged by Monsanto, making them more affordable for cotton-growing farmers.

In July 2015, Nuziveedu approached Monsanto to discuss charging the cotton seed packets at the trait value rates determined by the local government, and reconciling accounts for the excess trait value that was paid after comparison with the trait value set by the legislation. Monsanto however, refused and sent a notice to Nuziveedu in November 2015 regarding the termination of their sub-license with Nuziveedu for non-payment of duties. Consequently, Nuziveedu and some other seed producers approached the Competition Commission of India (CCI), alleging “abuse of dominant position” and “anti-competition agreements” by Monsanto. Subsequently, the Commission found that Monsanto violated Sections 3 and 4 of the Competition Act, 2002, which involve the allegations mentioned previously.

Meanwhile, during these proceedings, the central government fixed the minimum support price (MSP) and trait value of Bt cotton seed packets for the financial year 2016-2017 for the whole of India under the Cotton Seeds Price (Control) Order, 2015. The MSP for BG I was fixed at Rs. 635 per packet with zero payable trait value and Rs. 800 per packet for BG II, inclusive of seed value, trait value and taxes.

Further, the Government of India published the "Licensing and Formats for GM Technology Agreement Guidelines, 2016" through the Ministry of Agriculture and Farmers Welfare. The Guidelines obliges the licensor and licensees to ensure that all agreements executed by them "fulfil the criteria" provided therein, primarily ensuring non-discriminative licensing to encourage competition and availability of GM cotton seeds to cotton farmers at fair and reasonable prices. In particular, the fourth para of these Guidelines direct the Licensor and the Licensee to conform the sale of cotton seeds with the trait value, seed value and MSP values fixed by the Central Government, for the benefit of cotton farmers.

             Subsequently, the Plaintiffs initiated the present lawsuit in February 2016 before the Delhi High Court. The High Court allowed the Defendants to sell seeds that were manufactured and packed before 30th November 2015 and include the Plaintiff’s trademark on the packaging. The High Court ordered the Defendants not to sell seeds manufactured after that date until further orders of the Court. These directions were subsequently modified by various subsequent orders from the High Court. The next issue of contention involved subsequent seeds that may be reaped from the planted Bt cotton seeds.

            DECISION OF THE HIGH COURT

When the Plaintiffs alleged infringement by the Defendants, the Defendants responded by filing a counter-claim seeking revocation of the suit patent. However, the Court decided not to look into the issue of patent validity at the interim stage as it would have required evidence to be led through a trial.

The Defendants also tried to make use of Section 26 of the Plant Variety Protection Act, which may be used when a new plant variety is registered under the same Act. According to this Act, a party that developed a new plant variety, of which genetic material has been used in an invention, may seek to share potential benefits arising from the invention. The Court rejected the Defendant’s claims related to Section 26.

The Plaintiff on the other hand, argued that their contract allowed the termination of the contract if royalty payments were not received within a fixed period. The Defendant countered that the Plaintiff was required to renegotiate the rates following the revision of cotton seed rates by various State Governments.

The High Court was of the opinion that the termination of the contract by the Plaintiffs was incorrect. The Judge states: “the Plaintiffs were duty bound to consider the request of the defendants as made by the communications beginning July 2015, for modification of the terms as to the rate of trait fee payable under the 2015 sub-license agreements for which the mechanism had earlier been agreed upon in the form of Article 11.03. Since the plaintiffs did not adhere to their obligation under the contract, the demand of payment under the contract terms being not lawful, it apparently being higher than the trait fee permitted by the law in force, the defendants could not have been found to be in default or to have breached their obligations within the meaning of Article 9.02” (Emphasis added)

The High Court emphasized on two points: Article 11.03 of the sub-license agreement between the Plaintiffs and the Defendants, which obliges the parties to keep the contract in accordance with the local laws at all times; and Section 23 of the Indian Contract Act, 1872 which forbids unlawful consideration. Further, the High Court pointed out the illegality of Monsanto’s sudden termination of the contract and hence, upheld the contract between the Plaintiffs and Defendants. Additionally, the Court allowed the Defendants to continue using the technology by paying trait fees in accordance with the prevalent State laws.

This matter related to Bt cotton seeds saw multiple parties playing important roles, from the Plaintiffs and Defendants to the State and Central Governments, including a few other government bodies. However, what comes as a relief is that in the end, the order was favourable towards the real beneficiaries of this situation, namely, the numerous Indian farmers who wish to continue growing cotton crops at reasonable and affordable costs.

We hope this article was a useful read. 

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

Best regards – Team InvnTree   

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

Enforcement of Standard Essential Patents in India

Ericsson has been going all out to enforce its Standard Essentials Patents (SEP) against several mobile phone companies, such as Micromax, Intex and Lava, among others, who are primarily selling mobile phones in India. The outcome of these law suits will no doubt play a significant role in defining the future of licensing and enforcement of SEP in India.

The latest in these law suits is an interim judgement by The High Court of Delhi in the matter between TELEFONKTIEBOLAGET LM ERICSSON (Ericsson) and LAVA INTERNATIONAL LTD (Lava). The interim judgement is in favour of Ericsson. More importantly, the judgement deals with various aspects of licensing and enforcement of SEP.

The judgement held that, as is the well-established practice, demonstrating or establishing compliance of a device or a process with concerned standard is sufficient to confirm that the device/process is infringing an SEP.

As a step-wise approach, to allege infringement of an SEP, the following may be done:

  • Set out the relevant standards;
  • Map the standards with the claims;
  • Wherever implementation is optional, testing shall be done;
  • Wherever implementation is compulsory, an expert affidavit shall be furnished.

The judgement favours passing injunction order once an SEP patent prima facie is held to be infringed and no credible defence is established. In case any party is reluctant or unwilling and deliberately and intentionally avoids entering into license agreement on flimsy grounds, the injunction order is to be passed.

The judgement also appears to suggest that once the owner of SEP has entered into several FRAND agreements, the balance of convenience lies in favour of the owner, necessitating an interim order to be passed. The reasoning provided is that, in case the interim order is not passed or the defendant is not ready to enter into FRAND agreement, other licensees would also take the same stand which is being taken by the defendant. Hence, under such circumstances, the owner of the SEP would suffer irrecoverable loss and also injury.

The operative parts of the interim order (w.e.f. June 21, 2016) include the following:

  1. Lava shall not import mobiles under the patents and technology, which are subject of the suit patents, and not to sell the same in the market, directly or indirectly through agent, shopkeepers, dealers, distributors or any other person on its behalf. 
  2. Lava shall also not export the impugned goods.
  3. All Custom Authorities in India are directed not to release the impugned mobile phones if received from overseas countries under technology of suit patents of Ericsson to the Lava or any person on its behalf.

The operation of the interim order shall remain stayed till the final disposal, if the following conditions are met by Lava.

  1. Deposit a sum of INR 50 crores (approx. USD 7.7 million) with the Registrar General of the Court by way of FDR as security amount on or before 20th June, 2016;
  2. File statement of accounts for the period of 2011 to 31st May, 2016 before the Court by 10th July, 2016; and
  3. Continue to file statement of accounts every quarterly till the final judgment is delivered in the main suit.

The judgement is clearly in favour of Ericsson at this juncture. We will continue to monitor and analyse the suits involving Ericsson concerning their SEP in India, since the judgements will have far reaching implications on the subject of licencing in general, and licensing of SEP in particular.

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

Best regards – Team InvnTree   

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

Infringement between Publication of Patent Application and Grant of Patent

We start by discussing what constitutes patent infringement, and subsequently discuss in detail provisions corresponding to patent infringement carried out between patent application publication and patent grant.

A patent owner has the right to exclude other from making, using, selling, offering for sale, and importing the patented product/process. A patent owner who has good reason to believe that an entity (e.g., company or individual, among others) is violating his/her rights, may seek relief by filing a case, typically referred to as “patent infringement suit”, against the entity. In case the entity is found guilty of violating the rights of the patent owner, the entity will be liable for “Patent infringement”.  

The rights of the patent owner start from the date of publication (generally 18 months after filing the patent application) of the patent application. However, a patent owner can file a patent infringement suit only after the patent is granted. In real world scenario, once a patent application is filed, granting a patent may take 3 to 5 years or even more in some cases. Hence, it is evident that there is a significant time lag between publication of a patent application and the eventual grant of patent.

A patent application, and in particular claims, which define the scope of protection sought, of the patent application may undergo several changes before a patent is granted. In majority of the cases, the claims in the published patent application are not the same as the claims in the granted patent. An alleged infringer who may be infringing on the claims of a granted patent may not necessarily infringe on the claims of the published patent application.

There can be a stark contrast between statutes of different jurisdictions corresponding to such matters. Statutes of U.S. and India may be considered to exemplify the contrast between the statutes governing infringement carried out between publication of patent application and grant of patent.

U.S. Patent Law:

35 U.S.C. § 154(d) provides “provisional rights” to a patent owner to claim reasonable royalty from an infringer for an infringement carried out after the publication of the patent application and before the patent is granted.  

35 U.S.C. § 154(d) is recited below:

“a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application … and ending on the date the patent is issued

(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or

(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

(B) had actual notice of the published patent application and, …

(2)Right based on substantially identical inventions.

The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.”(emphasis added)

In light of the above recitation of the code, it is evident that, to obtain reasonable royalties, an alleged infringer has to have an “actual notice” of the published patent application, and the invention as claimed in the patent has to be “substantially identical” to the invention as claimed in the published patent application. The above recitation does not clearly define what constitutes “actual notice” and “substantially identical” under the code. However, several courts have interpreted “actual notice” and “substantially identical” during patent infringement suits.

Actual notice

One of the district courts stated that, it is not required by a patent owner to take an affirmative action to provide such a notice to the alleged infringer. However, in such a scenario, the patent owner has to prove that the alleged infringer came to have actual notice through “other means”.

In view of the above, one may contemplate that the published patent application, which is in public domain and can be readily accessible by anybody, can be considered as “other means”. However, the district court further added that, the mere fact that the published application is included in a database where it might be found is insufficient to prove that the alleged infringer came to have “actual notice”.

Further, another district court stated that in case of direct notification by the patent owner, a notice of the published patent application by calling attention to the same in a letter is sufficient to satisfy the “actual notice” requirement under 35 U.S.C § 154(d).

Thus in summary, if one can prove that the alleged infringer is aware of the published patent application or by sending a direct notice to the alleged infringer stating that a patent application is published would satisfy the “actual notice” requirement concerning provisional right. However, one should reconsider sending such a direct notice since it’s highly possible that the alleged infringer may assist the examiner in laying a rough road for patent application prosecution. In general, it is a common practise followed by many companies to regularly monitor their competitor’s patents portfolio. Thus, one should also think of using such evidences to prove that the alleged infringer is aware of the published patent application through other means to satisfy the actual notice requirement.

Substantially identical

A district court in Pandora Jewelry, LLC v. Chamilia, LLC patent infringement case stated that, the claims in the published patent application and the claims in the granted patent application are not substantially identical since Pandora Jewelry had made a narrowing amended to substantially amend the scope to overcome the rejections in the Office Action. Thus, in view of the above ruling, the courts have to rely on the scope of the claims instead of going after the literal words.

Further, a district court in K-TEC, Inc. v. Vita-Mix Corp patent infringement case stated that, in light of the prosecution history, the published set of claims and the granted set of claims are substantially similar. The court added that although amendment have been made to the claims of the published patent to obtain the patent from the USPTO, which can preclude a finding that the claims are not substantially similar, there is no per se rule that an amendment to a claim in order to overcome a Office Action rejection based on prior art precludes finding provisional rights.  

Thus, although the rulings were different in the above mentioned cases, the take home message is that not all amendments to the claims result in a finding that the claims of the published application and issued patent are not substantially identical. Further, amendments made for clarification may not change claims substantially, and each claim amendment must be carefully evaluated for its impact on the scope of the claim. Furthermore, claims can still be substantially identical as long the amendments do not narrow down the scope of the claim, in response to rejections in Office Action.

So, now the question arises, what is considered as a narrowing amendment? Is rewriting a dependent claim in independent form a narrowing amendment?, and the answer is yes in view of the ruling of Honeywell Int’l Inc. v. Hamilton Sundstrand Corp. case.

The Honeywell court ruling states that “[a] presumption of surrender therefore arises if rewriting the dependent claims into independent form, along with cancelling the original independent claims, constitutes a narrowing amendment”. Thus rewriting the dependent claim into independent form and also cancelling an original independent claim is considered as a narrowing amendment.  Therefore in view of the above cited rulings, one should not assume that claims in the issued patent are substantially similar to those in the published application simply because they are the dependent claims with the exact same language rewritten in independent form.

In conclusion, one can obtain damages for an infringement during the period between publication of patent application and the patent grant under provisional right if proved that an infringer had actual notice, and the claims of the published patent application and the granted patent are substantially identical.

India

Section 11A(7) of the Indian Patent Act , 1970 enables a patent owner to claim damages for infringement that was carried out between publication of the application and patent grant. Section 11A(7) of the Indian Patent Act , 1970  is recited below.

“(7) On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application:

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:…”

It is interesting to note that as per the Act, a patent owner need not prove that an alleged infringer has “actual notice” of the published patent application. Further, the Act does not mention that the invention as claimed in the published patent application has to be substantially identical to the invention as claimed in the granted patent, to claim damages for infringement carried out between publication and grant.

Hence, compared to US, claiming damages in India for infringement carried out between publication and grant is far less burdensome on the patent owner since actual notice requirement is absent. Further, one may argue that the section with substantially similar requirement being absent gives rise to great amount of uncertainty to third party, and favours the patent owner.

The above section does not appear to have been scrutinized by a court in India so far. The literal interpretation of the section certainly does not require the claims to be substantially identical. However, literal interpretation may appear to be absurd, and in such cases a purposive interpretation may be called for. It would be interesting to see the interpretation of the above statute by a court as and when the statute is used in an infringement suit.

In conclusion, patent right starts from the date of publication of patent application but it is enforceable only after a patent is granted. However, the prerequisites to seek relief for infringement carried out between publication and grant may vary from one jurisdiction to the other. Such prerequisites may have to be taken into consideration while drafting a patent application and prosecuting the same.

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

You may also download a copy of our article.

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

Best regards – Team InvnTree 

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

Infringement of patent claims – Indian Context

Claims of a patent define the scope of protection conferred by the patent. Hence, patent claims are worded carefully with an objective to make it harder for those attempting to work around the claims. While patent holders dread a situation where competitors make minor changes to a patent protected product/process to evade patent infringement, competitors on the other hand dread a situation where changes made to a patented product/process are not sufficient to evade patent infringement. Insight into how patent infringement is determined can go a long way in addressing concerns of patent holders and those attempting to work around existing patents.

Patent infringement analysis is usually conducted in two stages, namely, literal infringement analysis and non literal infringement analysis (infringement under the doctrine of equivalents). In the first stage of analysis, a claim and the alleged infringing product or process are analyzed to determine whether all the elements of the claim are present in the alleged product/process when the scope of the claim is construed by the literal language of the claim. If the alleged product/process includes all the elements of the claim when the scope of the claim is construed by the literal language of the claim, the claim is said to be literally infringed by the alleged product/process.

Patent infringement analysis proceeds to the second stage if literal infringement is not established. In the second stage, the scope of protection conferred by the claim is extended beyond the literal language of the claim. Several countries including US, UK and India apply various principles which extend the scope of protection conferred by a patent claim beyond the literal language of the claim while analyzing non literal infringement. Courts in the US have dealt extensively with situations relating to non literal infringement. The courts in India on the other hand have had relatively fewer occasions to deal with situations relating to non literal infringement.

On occasions the Indian courts have had to deal with situations relating to non literal infringement, the courts have favored purposive construction of claims, thereby extending the scope of claims beyond the literal language of the claims. The Delhi High Court in Raj Parkash Vs. Mangat Ram Chowdhry held:

“It is the pith and marrow of the invention claimed that has to be looked into and not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentee or alleged violators.”

Purposive construction of claims was also suggested by the Madras High Court in TVS Motor Company Limited Vs. Bajaj Auto Limited. The court in the instant case held:

“In construing an allegation of infringement, what is to be seen is whether the alleged infringement has taken the substance of the invention ignoring the fact as to omission of certain parts or addition of certain parts.”           

The above cited judgments suggest that the “pith and marrow” or the “substance” of the invention has to be looked into in defining the scope of a claimed invention. The Madras High Court also refers to House of Lords decision in Catnic Components Limited Vs. Hill and Smith Limited, which favors purposive construction of claims.

In light of the foregoing discussion, it is evident that the Indian courts do not limit the scope of protection conferred by a claim to the literal language of the claim. The instant position of the courts is in favor of patent holders who can be optimistic about enforcing their patent rights against those attempting to work around their patents by making modifications, which may be within the “substance” of the claim. Nonetheless, claims should be carefully crafted to capture the “substance” or “crux” of the invention, and should avoid including non-essential elements in the claim. On the other hand, those attempting to work around a patent claim should not rely on minor modification to a claimed product/process, which may be inferred to be not going beyond the “substance” of the target claim.

I hope you find this article helpful. You may also download our article for your reference. 

Feel free to check our patent services  page to find out if we cater to your needs.

Also, feel free to contact us or ask us  a question and have it answered within 24 hours. This work is licensed under a  Creative Commons Attribution-NonCommercial 3.0 Unported License

Significance of Statement of Working In The Indian Patent System

Introduction to statement of working 

Statement of working is a disclosure provided by the patentee or the licensee to the patent office stating if the patent is commercially exploited in the country to meet the reasonable requirements of the public. 

Governing statute 

Statement of working of the patent has to be submitted as per Section 146(2) of the Indian Patent Act and rule 131. This statement can be submitted in Form 27 each year within 3 months from the end of the calendar year.


Section 146(2) of The Indian Patent Act:
 (2) Without prejudice to the provisions of sub-section (1), every patentee and every licensee (whether exclusive or otherwise) shall furnish in such manner and form and at such intervals (not being less than six months) as may be prescribed statements as to the extent to which the patented invention has been worked on a commercial scale in India.  

Rule 131 of The Patent Rules: 
(1) The statements shall be furnished by every patentee and every licensee under sub-section (2) of section 146 in Form 27 which shall be duly verified by the patentee or the licencee or his authorised agent. 
 (2) The statements referred to in sub-rule (1) shall be furnished in respect of every calendar year within three months of the end of each year.
 
In addition to the above voluntary disclosure, the controller at any time, if required, may ask the patentee or the licensee to provide details in writing as to what extent the patent has been commercially exploited in India, as per Section 146(1).

Section 146(2) of The Indian Patent Act:  
1) The Controller may, at any time during the continuance of the patent, by notice in writing, require a patentee or a licensee, exclusive or otherwise, to furnish to him within two months from the date of such notice or within such further time as the Controller may allow, such information or such periodical statements as to the extent to which the patented invention has been commercially worked in India as may be specified in the notice. 
 
Details to be furnished in the statement
 

 (i)   The patented invention: {        } Worked {        } Not worked

(a)  If not worked: reasons for not working and steps being taken for working of the invention.

(b)  If worked: quantum and value (in Rupees), of the patented product:

i)   manufactured in India

ii)  imported from other countries (give country wise details)

(ii)   licenses and sub-licenses granted during the year;

(iii) State whether public requirement has been met partly/adequately/to the fullest extent at reasonable price.

 
Significance of the statement 
Penalty: 
If a patentee or licensee refuses or fails to furnish information required under Sec 146, the patentee or licensee will be punished with fine, which may extend up to Ten lakh rupees under Section 122(1)(b). Further, providing wrongful information or statement can impose the patentee /licensee to imprisonment up to six months or fine or both Section 122(2).

Section 122(1)(b) of The Indian Patent Act:

 122. Refusal or failure to supply information (1) If any person refuses or fails to furnish—

 

 (b) to the Controller any information or statement which he is required to furnish by or under section 146, he shall be punishable with fine which may extend to ten lakh rupees.

 
Compulsory licence: 
Information provided in the statement of working is used while deciding on applications for compulsory license on patents. The Intellectual Property Appellate Board (IPAB) of India, while granting the first compulsory licence in India heavily relied on the information provided in the statement of working submitted by the patent owner.  
 
In the above instance, Natco was granted a compulsory licensee to a patent, which was held by Bayer, covering the Nexavar drug. The IPAB relied substantially on the information submitted by Bayer corresponding to the patent, while granting the license. 
 
Patent litigation: 
In case of infringement, the patent owner, as relief, can seek injunction and damages or an account of profit under Section 108. The information submitted in statement of working can be used by the court to estimate the damages that may be awarded. On the other hand, in case statement of working is not filed, the alleged infringer may argue that the patent owner might not have encountered any damages in view of the missing statement of working.
 
Conclusion:
Patents are granted to encourage the growth of technology and to ensure that the patented invention is commercialed for the welfare of the public. Filing of statement of working provides the patent office to seek periodic information relating to Commercialization of the patented invention in the territory of India thereby preventing the misuse or non use of patented inventions. Therefore, the filing of Form 27 after the grant of a patent is a statutory requirement and the patent office should enforce strict action against those violating the law.
 
Feel free to contact us or ask us  a question and have it answered within 24 hours. 

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

 

5 options available if your product is infringing on a patent

Companies and individuals alike take aggressive steps to protect their patent rights. Most often, if a patent holder finds out that a product or a process is violating his patent rights, he might seek damages from the infringing party. Such enforcement of patent rights is usual in developed economies, such as US and Europe. However, in the recent years, even India has seen its share of attempts to enforce patent rights (Ex: TVS vs Bajaj).

Generally, one may realize that his product may be infringing on a patent(s) by carrying out a freedom to operate study (our article on freedom to operate) and an infringement analysis (our article on infringement analysis). On the other hand, a patent holder might have informed you that your product is infringing his patent and asked you to stop all activities relating to the infringing product. Irrespective of how you found out, the question now is to find out a remedy in this scenario.
 
This article attempts to provide an overview of the options you may consider when you find out that your product is most certainly infringing on someone’s patent. In a nutshell, you may consider the 5 options listed below:
 
1 – Product reengineering
2 – Compulsory license
3 – Cross licensing
4 – Licensing
5 – Invalidation
 
1.                 Product reengineering
 
Product can be reengineered in such a way that the reengineered product does not infringe existing patents. It may be noted that a product is said to be infringing on a patent, if the product maps on to the claims of a patent. Hence, to reengineer a product, you will have to clearly understand the scope of the claims of relevant patents. Thereafter, the product should be modified in such a way that the modified product works around the scope of existing patents.
 
Product reengineering can be an effective strategy if you are at an early stage of product development or if reengineering the product is not an expensive procedure. In some cases product reengineering may require significant investment of time and money. Further, product reengineering may delay the product launch, which may in turn affect the success of the product. In case where product reengineering is not a suitable option, you may consider the viability of the remaining 4 options provided below. 
 
2.                 Compulsory license
 
The provision of compulsory license exists in India, and you can give this option a serious thought with respect to the Indian market.
 
According to the Indian Patent Act, a patent holder within 3 years from the date of grant, work the patented invention in India. Further, the patent holder has to make the patented invention available to public at reasonably affordable price and fulfill reasonable requirement of the public (Refer to section 54 of the Indian Patent Act). The Indian Patent Act also recites that patent holder has to file a statement every year regarding working of patent (there can be significant penalties for not filing this statement). This statement of working helps the patent office in determining which patents are worked in India and which ones are not.
 
As a strategy, you can check if the relevant patents are worked in India. If the patents are not worked, then you can use the appropriate grounds to seek a compulsory license from the patent holder.      
 
3.                 Cross licensing
 
Cross licensing as a strategy can be explored if you have a patent portfolio. In this approach, you would essentially check if the holders of those relevant patents are infringing on patents in your portfolio or if they would benefit from practicing your patented invention. If answer to one or more of the above conditions is in affirmative, then you can reach an arrangement, wherein you let the holders of the relevant patent practice your patented invention(s) and in return you are given a license to practice their patented invention(s).   
 
4.                 Licensing
 
In the previous approach, as the name suggested, you provide license to patent holders to practice your patented invention, and in return, you get a license to their patented technology. On the other hand, if you do not see a significant advantage in cross licensing, you can explore the option of getting licenses from the patent holders. There are different options, such as buying the patent, fixed royalty, running royalty and fixed plus running royalty, which you may want to explore when you are contemplating on adopting this strategy.     
 
5.                 Invalidation
 
Invalidation means proving that a patent was wrong granted and having the same revoked. This approach can be used when there is a good probability of invalidating the relevant patent(s). Invalidation, although an effective approach in some cases, it can be a time-consuming affair, as invalidation proceedings are generally carried out in courts.
 
In India, one can invalidate a granted patent by filing a “post-grant” opposition in the patent office within 1 year from the data of publication of grant of patent. Thereafter, you will have to take a different approach to have a patent invalidated. On the other hand, if you feel that a patent application, if granted, can be a threat to your business, then you can file a pre grant opposition anytime between the publication of patent application and grant of patent. 
 
Companies generally use services such as technology monitoring and competitor monitoring to keep a watch on granted patents and published application and take actions, such as, filing of pre-grant and post-grant oppositions. 
 
Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together.
 
I hope you found this article helpful.You can download a copy of this article here
 
Best regards, Team InvnTree