Our readers are most likely to remember the recent patent blooper with the issue of the same patent to different inventors. This was preceded by SpicyIP’s appeal to the Prime Minister to create a database of sorts to prevent exactly these sort of incidents. As a followup to the previous post by Mr. Basheer, CH Unnikrishnan from Livemint not only reports this patent issue, but acknowledging SpicyIP’s role in the same- has closely followed the recent developments in the story–
“Adding fresh ammunition to the fight against a lack of transparency and inadequate data searching systems at Indian patent offices, a recent case at the Delhi high court suggests that the Mumbai and Chennai patent offices have granted exclusive rights to identical technologies claimed by two leading consumer durable companies.
While Eureka Forbes was granted a patent for the product in September 2005 by the Chennai patent office without hearing an opposition filed by HUL, the Mumbai office granted a patent to HUL in 2006 after examining an application filed four years earlier.
HUL has now challenged the decision to grant the patent to Eureka Forbes despite its application for the technology pending with the Mumbai office since 2002, almost two years before Eureka Forbes made its approach.
Indian patent law follows the “first-to-file” criterion for considering grant of patent.
As reported by Mint in a series of articles related to malfunctions at the Indian patent offices, critics hold an incompetent data search facility and poor cross-verification systems responsible for this duplication. An intellectual property blog, SpicyIP, had in December 2007 petitioned Prime Minister Manmohan Singh to take steps to mandate the creation of a database that would eliminate such anomalies.
HUL, one of the top patent holders in India, had petitioned the court that Eureka Forbes had infringed its patent by introducing Forbes AcquaSure in the market. HUL markets a similar product under the brand name Pureit. The four-year delay in granting the patent to HUL was mainly due to the office’s much delayed publication and examination process. HUL’s patent application was published in the patent journal only in May 2005.
Meanwhile, in September 2005, the Chennai office granted Eureka Forbes the patent on its application dated 29 March 2004 and published it in February 2005 in the patent journal without giving HUL a hearing on its pre-grant opposition filed in August that year. HUL also filed a post-grant opposition in November 2005.
Patent applications are published in a journal to ensure there is no opposition or counter-claims.
The post-grant opposition too proved unsuccessful, despite the failure of Eureka Forbes to reply to it within two months. As per Indian patent law, a patent holder should reply to a post-grant opposition within two months or risks losing the patent. Instead, the Chennai patent office granted an extension of two months to Eureka Forbes to make its reply, contrary to provisions.
An HUL writ petition challenging this is pending with the Madras high court.
An official at the Mumbai patent office turned down Mint’s queries on why it took nearly three years to publish HUL’s application and whether the delay was caused by the applicant or by its own offices.
SpicyIP, run by a team of patent experts worldwide, in a recent blog had highlighted that “HUL’s allegations, if proven true, will put the patent office in a spot, as the facts suggest a high level of collusion between the office and Eureka Forbes.”
Spokespersons of both companies declined to comment, saying the issue was sub judice.
Shamnad Basheer, a patent lawyer and an associate at the Oxford Centre for Intellectual Properties, who led SpicyIP’s campaign to petition the Prime Minister, said: “This case is likely to pose some complex jurisprudential problems. If HUL can sue Eureka Forbes on its patent, then the reverse is also possible, i.e. Eureka Forbes can sue HUL 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 (which is currently deciding the petition).”
Meanwhile, Eureka Forbes has filed a post-grant opposition challenging HUL’s patent.
Earlier, Mint reported a similar case of Chennai patent office granting a patent to Swiss drug company F. Hoffman-La Roche Ltd for its anti-infection drug, Valcyte, ignoring a pre-grant opposition by two non-governmental organizations— the Indian Network for People Living with HIV/AIDS and the Tamil Nadu Networking People with HIV/AIDS. Ranbaxy Laboratories Ltd, has legally challenged the Chennai patent office’s decision to grant a patent for the drug.”
One can only hope that with such a long list of litigation caused solely due to the lack of communication between the patent offices, the PMO will sit up and take notice of the SpicyIP initiative for a database.