Patent Litigation in the Himachal Pradesh High Court

Shamnad recently forwarded me a judgment of the Himachal Pradesh High Court passed in a case regarding the validity of a patent. I’m pleased to inform our readers that, although this is probably one of the first such patent cases in the HPHC, the Division Bench consisting of Justice Gupta & Justice Ahuja have done quite a good job with the judgment. Although the judgment is not extensively researched it has no major conceptual errors, it is quite lucid, it covers the important case law and most importantly it is wonderfully brief for a judgment on a temporary injunction (just 13 pages!). The judgment can be found here.

Facts of the case:

Description of Claimed Invention: The plaintiff Dhanpat Seth had been granted Patent No: 195917 for a device used for manually hauling agricultural produce. The device was ‘visualized’ by them in 1999 after which they developed it over a period of time and applied for a grant of patent in 2000. The patent was granted in their favour on 11.7.2005. Unlike Roche, the plaintiffs in this case actually set out their claims in the plaint. As already mentioned the patented device was one used for hauling agricultural produce. The patented device was designed in such a way so as to adapt it contours to the back of a person and it had a set of buckles and ropes to adjust the harness to fit people of different heights and sizes.

Plaintiff’s averments: The plaintiff had alleged that the defendant had infringed his patent by manufacturing the afore-described patent device and selling it to the Department of Horticulture, Himachal Pradesh Government amongst others. The plaintiffs filed a suit praying for a permanent injunction restraining the defendant from infringing the patented device and also for damages to the tune of Rs. 51 lakhs (a little above 120,000 American dollars). The plaintiff also filed for a temporary injunction restraining the defendant from manufacturing the patented invention during the course of the trial. The single judge however refused to grant this interim relief and thus the matter was appealed to the division bench.

Defendants defence: The defendant argued that the plaintiff should not have been granted the patent in the first place since the device in question was nothing but an imitation of an age-device called the ‘Kilta’ (in photograph above) which had been used in Himachal Pradesh for centuries. The defendants thus argued that the invention lacked novelty, more so since they had started manufacturing the same device through their agents back in 2001. The only difference in the patented invention was that it was made out of nylon instead of the traditional bamboo. The question thus arose whether this could actually be considered an ‘inventive step’.

The Court’s Judgment: The Division Bench discussed several concepts of patent law through the course of the judgment. These concepts were
Section 2(j) – definition of invention – means a new product or process involving an inventive step and capable o industrial application;
Section 2(j)(a) – inventive step – means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art; and
Section 3(p) – an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
The Court therefore had to determine whether the device was an invention, if not completely new whether it had an inventive step and lastly whether it was traditional knowledge, in which case the device could not be patented in India.
On the question of invention the Court held that going by the statutory definition it was not necessary that the device had to be a completely new invention as long as the patentee could prove that there was an inventive step involved. This brought the Court to the definition of ‘inventive step’. The Court first visually examined all three products i.e. the plaintiffs, the defendants & the traditional kilta which was used. The Court came to the conclusion that prima facie all three devices seemed to be the same. While examining the question of ‘inventive step’ the Court borrowed on the Supreme Court’s definition of ‘inventive step’ in the 1982 case of M/s Bishwanath Prasad Radhey Shyam v. M/s Hindustan Metal Industries, AIR 1982, SC1444. In this case the Supreme Court had held that in order fore the improvement to be patentable it had to be more than a mere ‘workshop improvement’. Further To fulfill the criteria of inventive step the combination or improvement should either result in a new process or improved result or should be cheaper. To conclude the Supreme Court held that Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.
Applying these concepts to the case at hand the Division Bench firstly held that the kilta was undoubtedly a traditional product. It did not dwell too much on the definition of traditional knowledge, neither did it cite any specific evidence to back up this assertion but rather made the assertion as if it were an axiom. In defense of the Division Bench there is no statutory definition of ‘traditional knowledge’.
Coming to the question of ‘inventive step’ the Court concluded that in today’s world almost all traditional devices whether it be furniture or kiltas were being made in plastic. Therefore merely replicating a traditional product in plastic could hardly qualify as an inventive step since such a process was obvious in today’s world. The Court further stated that even traditional kiltas used nylon ropes as straps apart from the fact that all the advantages claimed by the plaintiff in his invention already existed even in the traditional kilta and therefore none of the advantages claimed by the plaintiff were new. On this note the Court berated the Patent Office for not even considering the traditional built kilta as a citation while determining the novelty of the invention. It especially took up issue with this particular extract in the report of the Patent Office during the course of revocation proceedings which ended in favour of the plaintiff: “Exhibit A is a Bamboo made Kilta with a strap but there is no proof of date of its publication. Hence the said document cannot be taken into consideration as a citation.” (It is not clear as to how exactly a revocation proceeding was heard by the patent office since only the IPAB or the High Court have the jurisdiction to hear a revocation petition as per S. 64 of the Patent Act) While lack of proof of date of publication is a recurring problem with traditional knowledge, the patent office seems to have skipped the fact that the use of a product in public bars destroys the novelty of the product along with destroying any future possibility of patenting it since the invention is deemed to have been anticipated unless of course its use has been experimental in nature.
Once the Court concluded this analysis it fell back on the tests for temporary injunctions as laid down by the House of Lords in the case of American Cyanamid Co v. Ethicon Ltd., [1975] I All England Law Reports 504. The three factors are whether or not prima facie case has been established, whether there is irreparable injury being caused and whether or not the balance of convenience was in favour of the plaintiff. On looking at these three factors the Division Bench was convinced that the plaintiffs had failed to make an arguable case for temporary injunction and denied them the same although at the same time it stated that none of its holdings should affect the trial of the case while also ordering the defendant to maintain proper records in case damages were awarded to the plaintiff in conclusion of the trial.

Future policy issues regarding traditional knowledge: An alternative scenario which I would like to examine is: What if there is a particular community which has been making the traditional kilta for centuries and they have evolved this particular design through extensive testing and ensuring environmental friendly practices – how would the law protect the knowledge of this community? Clearly Section 3(p) precludes any patent protection but the fact remains that such knowledge should be protected. Why should their knowledge be deemed to be any less valuable than the knowledge that has been evolved under the current patent act? Is it time then to accelerate efforts to legislate on a specific legislation to protection only traditional knowledge? What all would constitute traditional knowledge in such a scenario? WIPO’s intergovernmental committee has submitted a report in February of this year on traditional knowledge and the process to frame an international treaty in this regard is moving forward. We keenly await further legislative measures in this regard.