Patent

A Tale of Two Patents: Did the Indian Patent Office Collude?


Yet another interesting incident that adds to the long list of “malady of errors” by the Indian patent office: a recent case suggests that it may have granted the same patent to two entities!! If true, this will come as no surprise, given that the patent office does not have an electronic database of patent information, either for their internal use or for members of the public.

Recall the SpicyIP petition that pleaded with the Prime Minister to take immediate steps to mandate the creation of such a database. This request gains even more intensity in the light of this rather absurd double patenting episode. Incidentally, when I spoke with a government person about the status of the SpicyIP petition requesting an online database, he mentioned that the government was issuing a response to the petition. And that we’re likely to have a database in 3 months! Although one tends to be skeptical of this time-line, it seems doable, particularly since the government has already been working on a database for several years.

We anxiously await the letter and will bring this to your attention, once we have this. Now, back to the “spicy” double patenting case…

In June 2002, Hindustan Lever applied for a patent for a “gravity fed water purification system”, assuring a high degree of microbiological purity in the drinking water it delivers. Listed below are the details of this application:

1. Application No. 539/MUM/2002.
2. Patent (No: 198316) granted on January 9, 2006.
3. A PCT was also filed on 22 May 2003.

It is interesting to note that although the application was filed in 2002, it was published only on 13th May 2005—after around 3 years!! One wonders why it took this long and whether the fault lay with HLL or the patent office, which deliberately delayed the publication.

The key claim in the HLL patent reads as below:

“A gravity fed water purification system comprising a filtration unit adapted to filter particulate material, and a chemical purifying unit containing a chemical purifying agent, in which the chemical purifying unit is house in a sealed chamber and is in fluid communication with the filtration unit such that water treated by the filtration unit is then gravity fed into the chemical purifying unit and retained therein for a pre-determined period, after which the water exits the system via a scavenger means which is adapted to recover leached chemical purifying agent.”

Eureka Forbes (EF) introduces an allegedly infringing product “Forbes Acquaure” in the market. HLL sues EF before the Delhi High Court. So far, this seems a straightforward case. But lo and behold, the Indian patent office has issued an identical patent to EF as well!! Well, at least, this is what HLL claims in two actions before the courts. One is a suit before the Delhi High Court and the other is a writ petition against the patent office before the Madras High Court.

In it’s suit filed before the Delhi High Court, HLL claims as below (most of these claims are reproduced from the judgment of Sanghi J (see Hindustan Lever Limited
Vs. Lalit Wadhwa and Anr, 2007 (35) PTC 377 (Del)))

i) That the EF patent application was filed later than the HLL application. While the HLL application was filed in July 2002, the EF application was filed almost 2 years later, on 29th March, 2004. Although EF’s application (App no: 281/CHE/2004) was notified in the patent office journal dated 11th February, 2005, HLL came to know of this only in July, 2005, since the journal was published late. HLL immediately (on 18 August 2005) filed a pre-grant opposition under 25 (1) of the Patents Act.

ii) Without hearing HLL or showing in any way that they have taken the opposition into account, the patent office proceeded to grant a patent to the defendant in about September 2005. And it didn’t even advertise this grant in a proper manner in the journal. HLL then pointed out this omission to the patent office i.e. that it had filed a pre-grant opposition but that this was not taken on record. It did so in a letter, dated 18th October 2005, followed by reminders dated the 29th December 2005 and 3rd January 2006. The patent office not only refused to act on the said representations, but also refused to acknowledge the same.

SpicyIP readers will easily notice the similarities to the Valcyte case, reported in the Mint, where a patent was granted after completely ignoring the opposition request to be heard.

iii) HLL then files a post grant opposition in November 2006. EF fails to reply to this opposition within the statutory 2 month period designated by the patents act i.e. by January 2006. Under the patents act (Rule 58[2]), if no reply to an opposition is filed within 2 months, the patent is deemed to be revoked. However, it turns out that the patent office went out of its way to condone this delay by EF!!. In a letter dated 21st April, 2006, the patent office informs HLL that they have condoned the delay by EF and have granted them a further period of two months to file their reply statement and evidence.

It is against this condonation of delay (and the various other acts of alleged impropriety outlined above) that HLL has filed a writ petition before the Madras High Court. As one can appreciate, HLL’s allegations above, if proven true, will put the patent office in a spot, as the facts suggest a high level of collusion between the office and EF. To summarise some of the damning facts:

i) HLL is issued a patent much later than EF, although it files an application almost 2 years earlier. (of course, it is quite possible that the delay owed itself to HLL’s fault)
ii) HLL’s pre-grant opposition is completely ignored.
iii) The patent grant to EF is not properly advertised in the journal
iv) The patent office goes out of its way to condone the delay to EF to file a reply to HLL’s post grant opposition.

However, the Delhi court is not likely to go into all the above allegations. At this stage, it has to only decide the limited contention of EF that since it is a patentee as well, HLL does not have a cause of action. In other words, EF claims that the rights granted to a patentee under Section 48 of the Patents Act can be enforced against a third party, but not against another patentee. And the plaint ought therefore to be rejected.

As is obvious to any elementary student of patent law, the mere fact that someone owns a patent does not mean that they are not in violation of another patent!! And this is precisely what the Delhi High Court held as well. This finding of Justice Sanghi was recently confirmed by a Division Bench of the Delhi High Court.

HLL’s specific allegations against the patent office suggesting favouritism towards EF will be adjudicated upon by the writ petition pending before the Madras High court. SpicyIP anxiously awaits this decision to see if the court will take the patent office to task, if indeed it has transgressed the limits of propriety and actively colluded with EF.

On another note, this case is likely to pose some complex jurisprudential problems. If HLL can sue EF on its patent, then the reverse is also possible i.e EF can sue HLL on the strength of its own patent. We understand that it has not done so as yet, owing to a restraining order from the Madras High Court (that is currently deciding the writ petition). We also understand that EF has filed a post grant opposition against HLL’s patent and this is still to be decided.

So how does one resolve the above thorny issue of double patenting? The following possibilities emerge:

1. Both patents are valid, since EF does not claim that which is already claimed by HLL. In other words, either EF’s patent is for a different technology (very unlikely) or is an improvement over HLL’s (somewhat likely).

2. Both parties claim essentially the same invention (this seems the most probable case here). In this case, one of the patents will have to go! Since HLL’s application is earlier in time, it is the EF patent that should go.

Although EF was granted the patent earlier than HLL (while the grant date for HLL is 2006, EF was granted the patent in 2005), under section 45 of the Patents Act, “every patent shall be dated as of the date on which the application for patent was filed”.

Therefore, HLL’s grant date goes back to July 2002, while EF’s goes to March 2004. It is interesting to note in this connection that section 64 of the patents act spells out that a patent may be revoked, if it covers an invention which is the subject matter of an earlier valid patent. In other words, if EF’s patent is found to encompass subject matter from the HLL patent, then it is likely to be revoked.

It is to be noted that post grant oppositions filed by both parties against each other are still pending—and we may get more clues on the “patentability” issues relating to both these inventions once these decisions are out. In the meantime, we await the Madras High Court decision to see if the court will find against the patent office and take it to task for actively colluding with one of the parties.

Certainly a decision that will have important implications for transparency and accountability at the patent office.

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.

4 comments.

  1. AvatarManish Garg

    I would like to comments on the portion highlighted in red. As per the earlier Indian Patent Act of 1970, the application was published only upon the acceptance of the patent application and then was open for opposition. Under the Indian Patent Act 2005, applications are now to be published within 18 months of filing of the application in India. In fact, this 18 months’ publication clause was done at the time of 2nd amendment of the patent act in the year 2003. Hence, an application filed in 2002 was published in May 2005 and governed by the earlier act which is correct. If this application was filed under mailbox system, then the publication has been done correctly. Hence, there was no deliberate delay in publication by the patent office, which is right under the law.

    Reply
  2. AvatarShamnad Basheer

    Dear Manish,

    Thanks very much for your comments. I doubt very much if a water purifier would qualify as a chemical invention and therefore be a mailbox application. But you’re right abotu the fact that the pre-2005 situation prevailed in this situation. Without more facts, I’m not really sure as to why the delay ensued…but it’s perfectly possible that the patent office is not to blame–as you rightly point out.

    Reply
  3. AvatarSudhir Kumar Aswal

    Dear Shamnad,

    It will be more than appropriate to blame HLL for default, their attorneys must be aware that right accrues only from date of publication of application, they could have exercised such right of early publication. But as in instant case the application of EF was published first, case clearly falls under domain of prior claiming rather than anticipation. But the prior filing by HLL renders the subject matter of claims of EF unclaimable, provided they are covered under the HLL description.

    The major flaw with Indian Patent system is lack of transparency, even in case of pre grant opposition, the Patent office are without giving any finding are issuing the pre grant opposition to applicant and sometimes ignoring the pre grant application are proceeding towards grant. There has to be a time frame for filing of pre grant opposition,otherwise multiplle pre grant opposition that too one after another can use loop hole of Indian Patent Act.

    Reply
  4. AvatarB Prashant Kumar

    Hey,

    I just happened to chance upon this story after long time while researching something, and started wondering what happened with the case afterwards.

    Either I cannot find any news on this (on spicyip or elsewhere) or people have forgotten about it..

    Can someone be kind enough to update us (actually me) with the latest news on this !!


    Prashant!

    Reply

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