India’s Own Take on "Crown Use"

Finally, here’s a judgement on patents which means business and is thankfully not circuitous because, it is indeed a skill to identify and respect that elusive juncture where articulation ends and rambling begins, which is all the more important if it is a judgment. I say this with a sense of relief coupled with cautious elation that the Indian judiciary is slowly but surely finding its own way of dealing with patents casting aside a coloured vision of socialism.

Facts
The judgment being referred to was delivered by the Bombay High Court last December in a case between Pune-based Garware Wall Ropes on one hand (Patentee-Plaintiff-Appellant) and A.I Chopra Engineers & Contractors (AICEC), Konkan Railway Corporation (Co-owner of a patent) on the other (defendant-respondents). (Regular readers of SpicyIP would recollect that Garware Wall Ropes was previously involved in a patent litigation which was decided by the Gujarat High Court last April).

The patents in question in this case are IN196204 (“Steel Wire Rope Net System”) and IN201177 (“Spiral Lock System”); the first one is jointly owned by Garware and the Konkan Railway Corp (KRC). Where ‘204 is a product primarily used in mountainous terrains for protection against boulder rockfall, mudslides and avalanche, ‘177 is used to bind two adjacent panels of boulder nets with each other, specifically to prevent rocks from falling through the junction of two nets. Garware alleged that the first respondent AICEC infringed the patents by vending/using identical/substantially similar products to obtain government contracts, particularly in a tender issued by KRC seeking bids from manufacturers of such products.

Needless to say, Garware sought an ad interim injunction during the pendency of the suit which was denied by the trial Court on the grounds that damages could be recovered later; the highlight of this case is the primary defence of the defendants- section 100 of the Patents Act. AICEC submitted that since the contract with the Railways had been inked in the name of the President of India, its use of the patented inventions fell under the provisions of government use defined in ss.99 and 100 of the Act which gave it a safe harbour from infringement. It further claimed that the subject-matter of the patents had allegedly been in use for more than two decades. It must be pointed out here that since the defendants did not prefer a revocation bid in their counterclaim, which is surprising (and not advisable), the case was not transferred to the High Court as is usually done under section 104.

Consequent to the rejection of the request for interim injunction, Garware preferred an appeal to the Nagpur Bench of the Bombay High Court where the following issues were considered:
1.Novelty and patentability of the subject-matter of the patents
2.Scope and validity of a defence under s.100 of the Act

Discussion
Since the factors relating to the grant of a temporary injunction have been discussed over a zillion times, I shall desist from chewing the cud again. For a change, this judgment gives an opportunity to discuss lesser-known sections such as ss.99 and 100 and the Court has rightly devoted a good part of the judgment to these sections which fall under Chapter XVII of the Patents Act.

Law is a definitional discourse, so before we proceed to make sense of the propositions, one has to be clear as to the meaning imputed to terms used in the propositions. S.99 defines what constitutes “use of an invention for the purposes of government” according to which an invention is said to be used for the purposes of government if it is:
1.Made
2.Used
3.Exercised or
4.Vended
for the purposes of the Central Government, State Government or a Government undertaking.

Section 2(1)(h) of the Act defines a government undertaking and of the 4 categories listed under it, one is an industrial undertaking carried on by a Government company as defined in section 617 of the Companies Act, 1956; in this case, the KRC falls under this category. S.99(2) further states that no provision of chapter XVII would be applicable to any act which falls under the conditions stipulated in section 47 of the Act. This requires us to compare and contrast section 47 and section 99 to understand the phrase “for the purposes of”.

s.47 allows, both in the case of a product or a process patent:
1. importation by or on behalf of the government
2. making by or on behalf of the government
for the purpose merely of its own use.

Principles of interpretation of statutes and section 99(2) clearly require us to ascribe different meanings to section 47 and section 99; The former (section 47) refers to the use of the invention under the doctrine of eminent domain i.e. in the discharge of sovereign duties and performance of departmental functions which is evident from the absence of payment of royalty to the patentee. The Bombay High Court has further explained this to include employees and agents of the government but not a contractor of the Railways such as AICEC. More importantly, the right to vend is not available; on the contrary, section 99 does envisage in no uncertain terms the vending of the invention, either pre-grant or post-grant, subject to the satisfaction of certain requirements spelt out in section 100. What are those requirements and how important are they? Section 100(1) says:

“Notwithstanding anything contained in this Act……….. the Central Government and any person authorised in writing by it, may use the invention for the purposes of government in accordance with the provisions of this chapter”

Though this sub-section speaks of authorisation, it is not clear whether the authorisation referred to here is with respect to the authority given to perform a certain task or an authorisation given in respect of use of the invention. But this is clarified as one proceeds to sub-section 4 where it clearly states “The authorisation by the Central government in respect of an invention may be given under this section….”. It is true that section 3(8)(b) of the General Clauses Act includes the President under the definition of the Central government but the very tone of section100(4) of the Patents Act indicates that the authorisation has to be specifically in respect of the invention; stated simply, the mere fact of authorisation for a particular task does not translate into authorisation for use of the invention.

The Court too expressed an opinion on similar lines and rejected the contention of the respondents that the contract with the Railways in itself was an authorisation as required by section 100. Another important aspect of section 100 is that it does not require the consent of the patentee for such authorisation. So far so good, but what would happen in a situation where the government is a co-owner? Would the government need to take the consent of the co-owner of the patent or can it choose to invoke the executive prerogative envisaged by section 100? section 156 of the Act states that subject to other provisions of the Act, a patent shall have the same effect against the Government as it has against any other person which could mean that the government too would need the consent of the co-owner, but such an interpretation is overriden by section 100(1) which begins with a non-obstante clause- “Notwithstanding anything contained in this Act…”

At this juncture, I was reminded of a particular case in the UK Court of Appeals where “Crown Use” was elaborated upon- Henry brothers v. Ministry of Defence and Northern Ireland Office (1998). Sections 55-59 of the UK Patents Act 1977 deal with crown use which is similar to Chapter XVII of the Indian Patents Act (in fact, not surprisingly, certain sections are identical). In this case, both the parties were co-owners of a patent on prefabricated blast-resistant building structures.

The Ministry of defence permitted a contractor to use the patented invention for building a police station in Northern Ireland without the permission of its co-owner, Henry Bros. The Court held that the use in this case fell under crown use and so the government was not required to seek the permission of the co-owner. The task of the UK Court was easier because s.55 and 56 of the UK enumerate the grounds of use which are absent in the Indian Act making it difficult to distinguish between grounds of use under s.47 and s.100.

Next, the Court dealt with the evidence adduced by the defendants to establish lack of novelty in subject-matter of the patent. The Court here was withering in its observation that not only was this evidence being introduced afresh at the appellate stage, the defendants had merely downloaded documents from the internet without considering the specification of the patent and the improvement it sought to protect. Further when the defendants argued that the “invention” was a mere improvement which did not qualify to be an invention under the amended Act, the Court was quick to point out that the patent application was filed prior to the amendment.

Even on the question of presumptive validity, the Court appropriately pointed out that the grant of a patent was not a mere registration procedure and the very scheme of grant required one to ascribe a certain amount of credibility to a patent on the basis of presumptive validity atleast in an interlocutory proceeding. All these go on to show that the Court was alert to the possibility of being misled or intimidated and that it was certainly not naïve when it came to patent law. The refreshing aspect of this judgment however is the following observation of the Court:

“For the above reasons, therefore, if any other interpretation is put as contended by Advocate Shri Manohar (Counsel for the defendants), the net result would be that a patentee inventing a patent by utilization of huge money and manpower involving scientists, technocrats and technicians would be left high and dry and this would definitely be detrimental to the encouragement of scientific and technical advances in the country.”

Conclusion
Of all the “young patent nations”, very few would probably have the kind of trouble (Dharmsankat, if I may) India has with reconciling patent law with its conscience having donned for long the mantle of torchbearers of socialism which apart from putting us at a “high” moral pedestal has seldom given positive results. Having said this, I feel that the judgment of the Bombay High Court is another step forward in evolving our own jurisprudence, particularly in the non-pharma context. What is even more heartening about this judgment is its pleasant lack of sanctimony which one is accustomed to in cases concerning the pharmaceutical industry; as one of my seniors rightly pointed out, it is time that we gave patents a fresh look devoid of prejudices which pharma debates tend to bring in.