Bilcare: Patent Office Gives the Delhi High Court the Bird?


Money control reports that the Controller of Patents recently upheld Bilcare’s Patent in a post grant oppn proceeding. Here is an excerpt:

“The Controller of Patents pronounced its decision of dismissing the two oppositions against Bilcare‘s (patent no 197823) on Metallized Packaging Films and uphold the validity of the said patent. The judgment was pronounced after multiple hearings from Mumbai Patent office and the Assistant Controller of Patents stated :”In view of my findings as above after careful consideration of statements, evidences and arguments at the hearing, the opposition is dismissed and the opponent shall pay to the applicant (the Patentee) the costs as annexed herein. The costs to be paid to the Patentee by the opponents (Rs. 30, 000 in one case and Rs. 29,500 in another) included costs for irrelevant citations and documents”.

Bilcare had filed its patent application for its invention of metallized packaging films on March 03, 2004. The Controller of Patents granted the Patent No 197823 by sealing the patent on 29 th December 2005. The invention related to a multi layer thermoformable, translucent PVC film with metallization to provide distinctive features for identity as well as effective anti-counterfeit solution. This novel film became an immensely valuable packaging material for the packaging of pharmaceutical products.”

I just found out that the patent office judgment runs into some 80 odd pages. Once I lay my hands on this, I will come back with a detailed review. Readers will recollect that this case also involves infringement proceedings before the Delhi High Court (and the District Court). Mrinalini Kochuopillai of SpicyIP has an excellent analysis of these infringement proceedings, where the defenedant counterclaimed invalidity.

The Patent office decision is a slap in the face for the High Court which leaned towards the view that the patent was invalid. As readers will recall from Mrinalini’s last post, there were two Delhi High Court judgments (owing to the peculiar facts in the case) and both suggested that the patent was invalid.

In particular, Justice Mallik held that the patent was invalid as it was not “new”. See extract below:

“Whether the Act [sic.] in question is really an invention. It is to be proved that the device in question is new, non-obvious and inventive.” From reading the case, it appears that this question may be paraphrased as “whether the invention was a meritorious one that truly deserved patent protection. In answering this question, the court considered the prior art on record and came to the conclusion that the plaintiff’s alleged invention cannot qualify as an invention under the Patents Act because it was already known in the trade.”

Clearly the patent office disagreed, holding that it was valid (one must remember that the post grant proceedings before the patent office were running in parallel with the court proceedings). Perhaps the difference can be explained away, since the patent office was having a more detailed look at the facts, in comparison with the High Court. The High Court was not ruling on the invalidity counterclaim. Rather, it was only deciding whether the interim injunction by the district court was maintainable. In other words, whether the plaintiff had made out a prima facie case for infringement. Since the defendant counterclaimed invalidity, the court held that the facts on record seemed to suggest that the patent was not valid. Therefore, the plaintiff failed in meeting the requisite “prima facie” standard. Such a prima facie analysis by the court is in stark contrast to a detailed analysis by the Patent Office–no wonder then that the patent office ruling on the post grant oppn ran into some 80 odd pages!! What was it again–brevity being the soul of wit or some such thing??

As an aside, this is not the first time that the patent office has given the court “the bird” (remember “Top Gun” and the giving of the bird by Tom Cruise in a bid to better foreign relations?). They literally committed contempt in the Thomas Brandt case, when they explicitly ignored a court direction to grant a patent. For those interested, I’ve commented on the case in a paper, where my general thesis is that for a great number of years, the Indian patent office took themselves to be “policy” guardians–and in some cases expressed contempt for the judiciary who they thought knew much less about patents than them!!

We had also blogged on an interesting paper that deals with the Bilcare case in some detail by Professor Josh Sarnoff. Watch this space for more on this interesting case.

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

3 comments.

  1. AvatarPrashant Reddy

    hehehehehe! Is it bird or birdie??? Neways you never know when the High Court will issue a Contempt notice on SpicyIP for scandalizing the glory and majesty of the courts of justice. After all they did condemn Namboodripad for merely expounding on Marx’s theory of the judiciary.

    Reply
  2. AvatarJ. Sai Deepak

    To a large extent i believe that the understanding of the Indian judiciary with regard to patents is yet to mature for such cases call for an understanding of the technology involved and not mere jugglery in legal semantics which our judiciary swears by (questions like is it “suspended animation” or animated suspension” where the subject and predicate have been distorted beyond recognition are proof to this). If the indian judiciary can accept tribunalisation of legal issues which require expertise in certain areas, how is the patent office wrong in feeling that its expertise in understanding technology and its obviousness and utlity of a technology is better than those in the Courts?

    J.Sai Deepak.

    Reply

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