Customs Seizures in India: Patently Unconstitutional?


CH Unnikrishnan of the Mint breaks the news on a writ petition filed by Samsung challenging the constitutionality of India’s customs regulations governing the import of IP goods. The matter came up today before Justice Vikramjit Sen of the Delhi High Court, but was adjourned for hearing to Tuesday (17th March). We’ll bring you an update of this case on Tuesday.

It ought not to be lost on our readers that this is one of those rare cases where a multinational company is challenging the IPR regime in India as being too IP maximalist and overprotectionist and not vice versa. I’ve reproduced the news item in full and our comments on this story follow at the end:

“The Indian arm of Samsung Electronics is involved in a first-of-its-kind legal battle in the country, related to linking patents and import laws. The bone of contention: dual-SIM phones that the company has been barred from importing into India because a Madurai-based inventor has a patent on such technology.

Interestingly, India has objected to similar attempts to link intellectual property (IP) and import regulations by the Netherlands that had seized drugs shipments from the country.

Samsung India Electronics Pvt. Ltd, the Indian arm of Korean electronics giant Samsung Electronics Co. Ltd, has moved a writ petition in the Delhi high court challenging action by the Indian customs department to prevent its imports of dual-SIM-card mobile phones because this allegedly infringes a local patent.

The case challenges India’s Customs Act 1962 and the Intellectual Property Rights (imported goods) Enforcement Rules.

Dual-SIM phones are those that can hold more than one SIM (subscriber identification module) or phone card. This means the same phone can have two numbers—much like multiple lines being connected to one instrument in the case of landline phones.

The company’s petition says its imports have been detained at several ports in the country by the customs department on the basis of a patent granted to S. Ram Kumar, a Madurai-based scientist.

Ram Kumar was granted a patent in 2008 by the Chennai patent office for a technology “apparently similar to that is being imported by Samsung and several other mobile phone importers in the country, and Samsung has been now informed by the customs department that its products have been detained as it infringes this patent”, said the petition, which has been reviewed by Mint.

A person involved with Samsung’s import activities confirmed that the company’s imports have been detained by the customs authority in Mumbai and Chennai. This person, who is not authorized to talk to the media on behalf of the company, declined comment on the value of these shipments.

“The company cannot comment on this now as the matter is sub judice,” said Samsung’s spokesperson Ruchika Batra.

Ram Kumar could not be reached for comment because he wasn’t available at the address and number mentioned in his patent application filed at the Chennai patent office.

A senior official at Mumbai customs said, “If the patentholder has registered the patent rights under the Intellectual Property (imported goods) Enforcement Rules, the officials at the ports will be forced to detain the product imported by anyone else, unless they produce a valid licence from the registered owner of the patent.”

Experts, however, say that since the Trade Related Intellectual Property Rights (TRIPS) rule doesn’t cover patents, the customs department cannot decide such actions on its own.

“TRIPS does not mandate any border protection measures in so far as patents are concerned. The Indian customs rules are, therefore, clearly TRIPS-plus. Since they empower customs authorities to seize goods upon the mere complaint of a patent owner and treat them as ‘prohibited goods’ without even hearing the importer, they are likely to be struck down as unconstitutional,” said Shamnad Basheer, a patent expert and an IP law professor—appointed by the ministry of human resource development—at the National University of Juridical Sciences, Kolkata.

“Much like the DCGI (Drug Controller General of India), customs authorities do not have the expertise to decide complex patent disputes, where issues on invalidity and non-infringement are often raised. Under the Indian Patents Act, only courts have the exclusive jurisdiction to decide issues of infringement. Given that India is considering challenging EU (European Union) customs regulations in the wake of seizures of Indian drug consignments, it will have to set its own house in order by taking immediate steps to roll back customs regulations that vest undue powers in the hands of its customs authorities,” Basheer added.

Samsung’s petition in the Delhi high court said: “Ram Kumar was demanding payment of royalties due to him through various representatives at each port, and was issuing no-objection certificates to those parties who paid him the royalty.”

A person familiar with the matter, who did not want to be identified, said Kumar was demanding Rs35 a phone as royalty. This couldn’t be independently verified by Mint.

Last year, customs authorities in the Netherlands had detained shipments of Indian drug companies such as Dr Reddy’s Laboratories Ltd, Cipla Ltd, Aurobindo Pharma Ltd and Indswift Laboratories Ltd. These were on the way to Latin America and were seized after the EU issued a note to its members asking them to detain goods under patent rights protection law.”

SpicyIP Comments

Anyone who has read the customs regulations (Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007) will appreciate that these regulations leave a lot to be desired. Firstly, it empowers a customs authority to determine the patent legality or otherwise of an import upon the mere representation of a patent owner, without even hearing the importer. It even goes to the extent of treating such goods as “prohibited” goods and consequently criminalising the import! It is very likely that a court will strike down these rules that violate principles of natural justice as unconstitutional.

Much like the DCGI issue, which we have blogged about in the context of the Bayer vs Cipla case, the issue is also one of institutional competence: Is the customs authority competent to decide a patent infringement case, which often involves complex issues of patent validity and claim scope?

In fact, in the case at hand, it would appear that the patent does not cover all “Dual SIM phones” (as Dual SIM technology itself has been around and is part of the prior art), but only those Dual SIM phones that also provide for more than one headphone/earphone jack, so that two people can be on two calls at the same time via the same handset. However, most of the goods seized by customs (consisting of both Samsung’s products and a number of other imports belonging to several Indian importers) appear to be generic Dual SIM phones with just one headphone/earphone jack. In other words, the patentee is attempting to claim rights over technology that is part of the prior art and clearly outside the scope of his patent.

It is pertinent to note that TRIPS expressly mandates member countries to only provide border control measures in the context of “counterfeit” and “pirated” goods, in relation to which issues of infringement are much easier to assess.

In other words, TRIPS (Art 51) makes it clear that there is no border control obligation with respect to patented goods: rather this is left to member countries, who may wish to institute measures in this regard.

Therefore, even if India wishes to institute border control measures for patented goods, it ought to do so in a manner that is likely to provide a fairer and more equitable result. Let the onus be on the party claiming patent infringement to secure an order in this regard from a court of law. After all, section 104 makes very clear that it is only a court of law that can make an assessment of patent infringement.

And if the court finds in favour of patent infringement, this order could be acted upon by the customs authorities i.e. they could seize any “imports” that violate patent rights. One will appreciate that as per the current regulations, goods that allegedly infringe IP rights can be seized by the customs authorities without even hearing the importer and the onus is then on the importer to move the court and have it released. The better and more equitable policy option would be to flip this the other way around. Let the onus be on the patent owner to agitate this issue before a court and if the court decides in her favour, the customs authorities could then seize infringing goods.

Lastly, on a strategic note, given that India is planning to take on EC customs regulations, it may help if the government seriously examines its own customs regulations and waters them down to reach a fairer and more equitable result. No doubt, the Samsung case where the imports were meant for India cannot be directly equated with the Netherlands “in transit” seizure of drugs meant for another country, and India’s chances of winning or losing the EU matter does not really depend on the fairness or otherwise of its own domestic regulations. However, in order to capture the moral high ground as well, the Indian government ought to re-examine what appears on the face of it to be an extremely overbroad and overbearing TRIPS plus customs regulation .

ps: Apparently, Ramkumar has also filed court cases (patent infringement actions) against parties that are locally manfuactuing Dual Sim phones in India. Once we confirm this news, we will bring you an update.

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.

21 comments.

  1. Sushant

    Just wanted some evidence for this statement:

    “Under the Indian Patents Act, only courts have the exclusive jurisdiction to decide issues of infringement. “

    I glanced through the patent act and a relevant section i could find was the section 105.
    http://indiankanoon.org/doc/90024/

    Or is there any other section that grants such power to the courts?

    Reply
  2. Anonymous

    Dear Shamnad
    This report is very much similar as you reported earlier in Jan regarding Dollor Store Vs Branded L oreal court case. It seems they used same type of argument as Parallel Import . But I belive there is no seize of consignment.
    Can you explain the difference bewteen theearlier case and this case
    regards
    Anon-1

    Reply
  3. Sudhir Kumar

    Dear Shamnad,

    I had been following this patent for few months and after perusing all documents (original and amended)it can be said the Mr. Ram Kumar’s patent rights are limited only in respect of a mobile instrument that has plurality i.e. two or more headphone or earphone jacks which in turn could be connected to plurality of headphone or earphone jacks and/ or plurality of Bluetooth devices and would not be entitled to any mobile instrument that does not have provision for plurality of headphone or earphone plugs and/ or bluetooth devices.

    But the real issue in this case is title of the invention which does not indicates the subject matter of invention.The Grant as well as registration of the patent with customs vide allotment no. UPRNo. A01671NMAA4PR reflects the title to be “Mobile telephone having a plurality of SIMcards allocated to different communication”. Now, nowhere it mentions essential feature of Mr. Ram Kumar’s invention that is provision for operate simualtenously in different communication network using multiple sim cards on a single mobile device.

    Strangely, the original patent application was filed for invention titled as “Mobile Phone with multiple number of SIM Cards to receive and/or to send multiple number of signals at a time” with 4 claims and 12 drawings in Chennai Patent Office on March 04, 2002 and was allotted Patent Application no. 161/MAS/2002. over a period of time disclosure was amended and included and enlarged the scope which was not originall disclosed but included only to answer the ISR.

    Reply
  4. Shamnad Basheer

    Dear Sudhir,

    Thanks very much for your well researched comment. You’re absolutely right–the essential element of the patent is the fact that you could have multiple jacks on a Dual Sim phone. And the patentee has been wrongly instigating customs to seize all dual SIM phones and not just ones with multiple jacks. Interestingly the first international search report in relation to Rammukars alleged invention states (http://www.wipo.int/pctdb/images4/PCT-PAGES/2004/022004/03075543/03075543.pdf):

    “the search has revealed that the concept of a mobile phone having provisions for utilizing at least two SIM cards allocated to different communication networks in order to simultaneously operate said mobile phone in said different communication networks according to the subject of independent claim 1 is NOT NOVEL since a mobile phone providing the same features as claims 1 to 6 of the present application are directed to is at least disclosed in German Offenlegungsschrift DE 199 19 389 A1 (SIEMENS AG) 2 November 2000.”

    Reply
  5. Shamnad Basheer

    Sushant,

    Please read the entire post. In the last but third para, I state: “After all, section 104 makes very clear that it is only a court of law that can make an assessment of patent infringement.”

    Reply
  6. Shamnad Basheer

    Dear Anon 1,

    The dollar store case was one of parallel imports and trademark rights (i.e. the goods being sold in India were first sold by the trademark owner (or with his/her consent) in another jurisdiction). And under section 30 (3) of the Trademarks Act (as interpreted in the Xerox vs Puneet Suri case), such imports would be legal so long as you don’t impair the trademark.

    The present Samsung case is one of direct imports of an allegedly infringing good. And not of parallel imports. And it relates to patents.

    Reply
  7. Sudhir Kumar

    Dear Shamnad,

    Indian Customs regulations provide reasonable opportunity to importers whose goods are not cleared and if any loss or damages are caused to them because of any such action, they could seek same from them as well as right holder. Further, the issue of technology has to be settled by one importer once in respect of a particular patented product and henceforth the decision could be relied by importer as well as custom authorities.

    As per Rule 7 of the custom notification no. 47/2007 Customs (N.T.) dated 08.05.2007 called Intellectual Property Right (Imported Goods) Enforcement Rules, 2007 if Deputy Commissioner of Customs or Assistant Commissioner of Customs (suo motto or on a notice by patentee) has reasons to believe that imported goods are suspected to be goods infringing IP rights, he has to suspend the clearance of goods. In case of suo motto action Deputy Commissioner of Customs or Assistant Commissioner of Customs must have some prima facie evidence or reasonable grounds. The reasons of suspension have to be immediately issued to importer, right holder (patentee or licensee) or their respective authorised representative by speed post or fax/email. There is provision that if the right holder or his authorised representative does not join the proceedings within 10 working days from date of suspension of clearance (or within further extended period of 10 days in appropriate cases), the case may be decided ex parte on merit and goods could be cleared.
    Further in case of suo motto action the right holder has to file an application/ notice and execute indemnity bond etc. within 5 working days from suspension of clearance otherwise the custom office has to release the goods subject to other requirements under custom act.

    It has been a settled principal of law where alternative remedy is available resort to writ petitions (extra ordinary jurisdiction) should not be taken. Apart from administrative relief from the custom authorities the importers could also take relief under Section 105 of the Indian Patent Act by filing a suit in the court for declaration that there product is not infringing a particular patent.

    Further mobile instruments under no circumstances can be said to be perishable goods that will get perish if not cleared within a time frame by custom authorities warranting exercise of extraordinary jurisdiction.

    Instead of filing writ petition and challenging custom circular Samsung should have exhausted the alternative remedies.

    Reply
  8. ads

    With reference to the patent Please find the following points for your consideration.

    AS PER THE DESCRIPTION IN HIS PATENT APPLICATION ( Page 2 )

    His invention is a mobile phone is to be incorporated with the provision for a plurality of current sim cards and / or modified sim cards , a plurality of current sim sockets and / or modified sim sockets for accepting a plurality of current sim cards and / or modified sim cards, a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    EXPLANATION

    His invention is not just provision for a plurality of sim cards and / or modified sim cards.

    But his invention is plurality of SIM CARDS INCORPORATED MOBILE PHONE in order to operate it simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    Our imported mobile phones are just having the dual sim cards but cannot be operated simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    AS PER THE PRIMARY OBJECT OF THE INVENTION IN HIS PATENT APPLICATION (PAGE 3)

    “ The primary object of invention is a mobile phone is to be incorporated with the provision for a plurality of current sim cards and / or modified sim cards , a plurality of current sim sockets and / or modified sim sockets for accepting a plurality of current sim cards and / or modified sim cards, a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    EXPLANATION

    Again his primary object of his invention is not just provision for a plurality of sim cards and / or modified sim cards.

    But his invention is plurality of SIM CARDS INCORPORATED MOBILE PHONE in order to operate it simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    Our imported mobile phones are just having the dual sim cards but cannot be operated simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    AS PER THE SPECALITY OF THE INVENTION HIS PATENT APPLICATION (PAGE 3)

    “ The specialty of the invention is a mobile phone is to be incorporated with the provision for a plurality of current sim cards and / or modified sim cards , a plurality of current sim sockets and / or modified sim sockets for accepting a plurality of current sim cards and / or modified sim cards, a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    EXPLANATION

    Again his specialty of the invention is not just provision for a plurality of sim cards and / or modified sim cards.

    But his invention is plurality of SIM CARDS INCORPORATED MOBILE PHONE in order to operate it simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    Our imported mobile phones are just having the dual sim cards but cannot be operated simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    AS PER THE CLAIMS IN HIS PATENT APPLICATION FORM (PAGE 21)

    CLAIM 1

    A mobile phone is to be incorporated with the provision for a plurality of current sim cards and / or modified sim cards , a plurality of current sim sockets and / or modified sim sockets for accepting a plurality of current sim cards and / or modified sim cards, a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    EXPLANATION

    Again his main claim of the invention is not just provision for a plurality of sim cards and / or modified sim cards.

    But his invention is plurality of SIM CARDS INCORPORATED MOBILE PHONE IN ORDER TO OPERATE IT SIMULTANEOUSLY TO COMMUNICATE A PLURALITY OF INCOMING AND / OR OUTGOING CALLS WITH THE SAID RESPECTIVE SIM CARDS.

    The imported mobile phones are just having the dual sim cards but cannot be operated simultaneously to communicate a plurality of incoming and / or outgoing calls with the said respective sim cards.

    CONCLUSION.

    His invention is a mobile phone incorporated with multiple sim cards which can be operated simultaneously for incoming and or outgoing calls.

    Where as general imported mobile with dual sim cards which cannot be operated simultaneously for incoming and or outgoing calls. And also many hardware attachments required for simultaneous operation of incoming and or outgoing calls like multiple ear phones / ear phone jacks / Multiple Bluetooth devices / Multiple Speaker Jacks are not available in imported mobile phone.

    So imported mobile phones are not infringing the patented mobile phone as per his claims.

    Reply
  9. ADS MURUGESAN

    Details:

    The refered patent has in total 20 claims 1-20 and out of this 20 claims claim 1 and claim20 are one and the same and also these two claims are independent claims and all other claims are dependent claims mainly on claim 1.

    The claim 1 contains the following elements:
    1.A mobile phone is to be incorporated with the provision for a plurality of current sim cards and / or modified sim cards ,

    2.a plurality of current sim sockets and / or modified sim sockets for accepting a plurality of current sim cards and / or modified sim cards,

    3.a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices

    4. IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED ,

    5.AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    1.Out of these 5 elements of claim 1 if only one or two elements are existing in the imported products does it infringe the patent?.

    2.And if the first claim is the independent claim and all other claims are dependent claims on claim 1, is it must that, it should first fulfill all the elements of the dependent claim1 fully before considering the other dependent claims.?.

    3.And if the imported products meets one or two dependent claims partially/fully can it be considered as infringement?

    4And can we consider only part of a claim statment for infringement purpose?.
    (Say only first statment meets the part of the patent information and the rest of the claim statment are not relevant to the product).

    5.And finally in the claim 1 it is stated that :

    a) 3.a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices

    This provision is not available in the imported mobile phone.Does this means it is not infringing the patent?.

    b) 4. IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED

    5.AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    The imported mobile phones do not have this facility. Do the imported mobile phones infringe this patent or not?

    Reply
  10. Sushant

    Thanks Shamnad! I clearly did not read the article very well.

    Anyways I think the article was very interesting and very informative. I did not know that the legal issues and the actionable events behind patent infringement are so complicated.

    Reply
  11. Shamnad Basheer

    An IP practitioner whom I have great respect for and who wishes to remain anonymous writes:

    “Dear Shamnad,

    Refer your view-

    “…as per the current regulations, goods that allegedly infringe IP rights can be seized by the customs authorities without even hearing the importer and the onus is then on the importer to move the court and have it released. The better and more equitable policy option would be to flip this the other way around. Let the onus be on the patent owner to agitate this issue before a court and if the court decides in her favour, the customs authorities could then seize infringing goods.”

    A complete flip-around may also be undesirable.

    Domestic infringing manufacturers can be injuncted against not only first-sales by them but also against manufacture itself. This can act as a deterrent against manufacture itself as also against the setting up for factories for such manufacture. Such manufacturers are usually fewer than their resellers and such manufacturers are, unsurprisngly, sued more frequently than their resellers. Suing such manufacturers instead of the possibly numerous and usually less-easily-traceable downstream resellers, is a more effective and sometimes the only real option for the patentee.

    A complete flip around could result in depriving the patentee of the only equivalent of such an option. There may be numerous importers, many importing only occasionally and in small quantities. Many importers may not be be making any investment as in factories for any down stream value addition. Many importers can be untraceable, especially when attempted to be sued. With certain articles it is possible for a (foreign) manufacturer to ascertain the making of a (re)sale of a serially numbered identifiable article by a reseller in India by the consumer’s act of registration of the article (possibly online). For such articles, the (foreign) manufacturer may permit the importer to pay only then. Such an importer would have even less exposure to confiscation as acts like a detterence. Anticipatory suits before an imported consignment is cleared from customs may be difficult for patentee for want of advance knowledge. With some types of articles, if the first sale (by importer) is not stopped, the article may subsequently be sold downstream in the gray market in which it can be very difficult to stop (re)sales.

    One solution to these various concerns could be for the patentee to be able to take out a John Doe type injunction viz. in rem and especially directed to Customs for compliance. Such a court order identifying a particular product by its pictures, features, description, labeling etc. (even manufacturer) could direct confiscations at all customs against importers at large viz. unidentified in the court order.

    Always happy to your response. “

    My response to him:

    “Youre absolutely right,

    One could get an order from the court that is sufficiently broad to permit seizures so long as goods match upto certain description. It need not be restricted to specific importer only. But this still conforms with “flip around” theory. In other words, let the onus be on patent owner to agitate this first in court. The breadth or otherwise of the order does not impact that analysis.”

    Reply
  12. ADS MURUGESAN

    Dear Mr.Shamnad sir,
    Your view is perfectly correct.

    But the court order should be based on not just title but on the abstract and the independant claims so that the customs will not have much to decide about the infringement.With reference to the present case the title is very broad in nature where as his claim or abstract is very narrow with many elements .The infringement will be true if it meets all the elements of his claim or meets his abstract.

    Till the patent holder gets a court order to suspend the imports with maximum details about the patented product the customs just based on some registration information should not suspend the imports.

    Reply
  13. Yogi

    Dear Shamnad and others,
    In my opinion, the legal reasoning and logic of extending border measure (enforcement rules) to cover patents is possible only if there is a statutory provision or a juridical doctrine in favour of presumption of patent validity. If not, the enforcement rules -even with all safeguards against abuse- can not/should not cover patents.
    Much of the argument against presumption of patent validity stems from the fact that claims are primarily ambiguous unless interpreted by the courts using theories of claim construction. The use of claims construction doctrines arise only upon infringement and not when patent offices grant patents. But why are claims ambiguous? It’s precisely because neither the patent applicant nor the patent office have adequate incentives to create clarity in the scope of the claims during the grant.
    If this proposition is true, how is a patent primafacie valid? If so, what legal argument can be advanced to include patents within the scope of border measures enforcement rules?
    This is a very interesting topic indeed! Thanks for the brilliant post. In our enthusiasm to enforce patents, we at times tend to move beyond any sane legal justification!

    Reply
  14. ADS MURUGESAN

    This is the link to WIPO site where Ramkumar’s International application details,his original application form and original claims and International search report which rejects his application stating that it is a prior art etc are available.Interested person can go thro it.

    And also by going thro the changes in the claims one can understand how his claim “mobile phone with two or more sim card to be used to receive more than one signal at a time”-which is very broad enough to cover all multisim phones have been narrowed to the present claim with many elements so that only with these elements his invention is patented.”1.A mobile phone is to be incorporated with the provision for a plurality of current sim cards and / or modified sim cards ,

    2.a plurality of current sim sockets and / or modified sim sockets for accepting a plurality of current sim cards and / or modified sim cards,

    3.a plurality of head phone /ear phone jacks for accepting a plurality of head phone / ear phone plugs and / or a plurality of Bluetooth devices

    4. IN ORDER TO OPERATE SIMULTANEOUSLY THE SAID MOBILE PHONE IN SAID DIFFERENT COMMUNICATION NETWORKS IS PRESENTED ,

    5.AND A PLURALITY OF INCOMING AND / OR OUTGOING CALLS CAN BE COMMUNICATED SIMULTANEOUSLY WITH THE SAID RESPECTIVE SIM CARDS.

    If the inventor says only his first element is his invention then why he has to add all the other elements.So his claim over all the dual sim phones is not valid.
    http://www.wipo.int/pctdb/en/wo.jsp?wo=2003075543

    Reply
  15. Anonymous

    The patent disclose a clear technical solution for the manufacture of Dual simcard mobile phone in a tangible manner when compared to prior art references. The prior art references does not disclose a clear technical solution.

    Reply
  16. Anonymous

    The patent application disclose a clear technical solution for the manufacture of Dual simcard mobile phone ( not only Dual Simcard Mobile Phone but also Multiple Simcard Mobile Phone ) in a tangible manner when compared to prior art references. The prior art references does not disclose a clear technical solution.

    Reply
  17. ADS MURUGESAN

    Dear Mr.Anonymus,
    The question here is whether all the mobile phone with Dual Sim provision ,which will not operate simultaneously is infringing Mr.Ramkumar’s patent or not.
    As per his patent ,at least his independant claim which contains five elements should be availble in the mobile phone to claim it as an infringment.Even if does not contain any one or two of elements in his indepedant claim then it will not be treated as infringement.

    His design is very much an advanced design which will have very very highspeed processor to handle simultaneously multiple calls without any interference between the calls.Where as at present the imported chinese mobile phones are very much behind his patented design and Mr.Ramkumar has to wait till some companies really making such high end mobile phones to file for infringement.

    To be frank now all the imported chinese mobile are coming with proper IMEI numbers and are having all the required features of camera,FM ,exteranl memory and at an affordable price.Even an ordinary person can have such a featured phones at a reasonable price.
    So by just trying to stop such imports or trying to misuse the provision of patent act implementation in the customs imports is not at all justifiable.

    Reply
  18. Aditya Gupta

    Dear Shamnad Sir,

    In the post you have stated “Firstly, it empowers a customs authority to determine the patent legality or otherwise of an import upon the mere representation of a patent owner, without even hearing the importer.”

    Rule 7 of the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 provides that the Commissioner shall suspend the clearance of the goods either suo motu or on the basis of the notice of the right holder. It is pertinent to note that the order made by the Customs authority in this case is the suspension of clearance of the goods rather than a final order of seizure or confiscation or disposal of the goods. In my view, such an order for the suspension of clearance of the goods cannot be made after giving the hearing to the importer due to the very nature of such an order. Once the goods are cleared and allowed to enter the Indian market, the right holder shall not be able to trace the goods, thereby defeating the very purpose of the Rules. Therefore, it is one of those exceptional circumstances where a post – decisional hearing is necessary. Now, subsequent to the order of suspension of clearance of the goods, the importer is required to be informed of this order immediately along with the reasons for such suspension. Further, on a conjoint reading of Rule 7(3) – (9) and Rule 11, it appears that proceedings are required to be conducted before the Commissioner for the determination of questions such as infringement (though I agree the Rules do not specifically mention the procedure of such proceedings before the Commissioner). If this is the case, can one claim that the principles of natural justice are violated?

    Further, by reference to S. 104 of the Act, you have stated that it is clear that only the Courts of law “can make an assessment of patent infringement”. Now Sir, S. 104 states is that the “suit for infringement of a patent” shall not be instituted in any Court inferior to the District Court. A suit for infringement relates to the violation of rights under Section 48. My question is whether any of the rights of the patentee can be said to be violated at a stage before the goods are imported into India. As far as I am aware, import into India is only complete once the goods are cleared by the Customs and enter the mass of goods in India. Therefore, prior to the goods being cleared by the Customs, any of the patentee’s rights under S. 48 have not been infringed and a suit for infringement shall not lie. In my view, the Rules essentially introduce provisions for protecting “potential infringement” of the patentee’s rights to save him the trouble of tracking the infringing goods into India.

    I shall eagerly await your opinion on these issues.

    Aditya Gupta

    Reply
  19. Abhi

    Hi Mr. Basheer,

    I understand that this post is primarily about IP right as it related to patents. However, I want some clarification on the IP rights as they relate to parallel imports.

    You make a slight reference to it in your reply on March 14, where you quoted sec 30 (3) . My question is the following:

    – I’m an importer of designer goods (brands) that may or may not be present in India either directly or through authorized licensee in India. We obtain these goods through the secondary market (resale, stock lots, etc.) from the US and Europe. The goods are 100% genuine and the source can be tracked back to the manufacturer or owner of the brands where goods were originally sold at their will.

    – We were recently harassed by a customs officer who insisted that we are infringing on IPR by importing these goods according to the customs regulations, 2007.

    – However, the parallel imports law and trademarks 30 (3) as per your reference above suggests that parallel import of these goods is allowed as long as we do not alter the trademarks, which we are not and importing as is.

    Can you please advise on what is the “letter of the law” in this case?

    Thanks,

    Abhi

    Reply

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