1. Get the file-wrapper and the extract from the patent register: The first step is to ensure that as the lawyer handling the case you have a complete and up-to-date copy of the file wrapper of the patent. A file-wrapper is basically a fancy name for the entire patent file starting with the application for a patent to the final patent itself. A file-wrapper will also contain all necessary correspondence. Ideally your client or in-house counsel should already have the file-wrappers. Applying to the patent office and expecting to receive the same can take frightfully long and you probably don’t want to waste your time on this when you have a litigation on your hands. However if you are on the defendant’s side you probably have not other choice. Also from what I’ve seen the patent office very often does not even hand over the entire file wrappers and it is difficult to judge whether they’ve missed out on anything since the papers in the patent office file do not always seem to be consecutively numbered like they would have been in the case of a suit filed in a court of law. The ‘extract from the patent register’ basically refers to the relevant entry in the patents register that is maintained by the patent office. This register contains details of the patent such as ownership, licencing, renewal of the patent term on a yearly basis. If a patent is not renewed on a yearly basis it is not enforcable and in order to prove that a patent is in force a patentee is required to file an extract of the patent register. The patent office is supposed to list these details on its website under the new IPAIRs system. However this feature of IPAIRs has never functioned when I tried to use it. The most important component of a file-wrapper is the correspondence between the patent office and the applicant since this correspondence often narrates its very own tale in regards the level of scrutiny that a patent application undergoes.
2. Assignment deeds: The golden rule of any litigation involving property rights is to first establish the title to the property. In the case of a patent there could be upto three different assignment deeds involved at three different stages. Each category of assignment deeds has been elaborated on below:
(i) Proof title (Section 7): As per Section 7 of the Act and the corresponding Rule 10 of the Rules all applicants are required to establish proof of right to file the patent application. This basically means that the applicant has to prove that the inventor has assigned him the right to file a patent application for his invention. Ideally the ‘best’ proof of title that one can file is the assignment deed between the inventor and the patent applicant. In the existence of any contractual dispute between the inventor and the patent applicant make sure to go through the fine-print and if possible interview the witnesses to the ‘assignment deed’.
(ii)Substitution of Applicants (Section 20): As per Section 20 an existing patent applicant may either transfer his patent application to another party or alternatively to share his existing title with another party who can be a co-applicant. However any such attempt to substitute applicants requires permission from the Controller. Therefore in case there has been a substitution of applicants at the pre-grant stage it is necessary to ensure that all assignment deeds and orders of substitution under Section 20 are ready to be filed so as to ensure that the defendant does not make this an issue. Any irregularity at this stage could jeopardize the entire case since ownership is pretty much the jugular vein of any property dispute.
(iii)Assignment of a granted patent (Section 68): As per Section 68 and 69 of the Patents Act all assignment deeds, assigning a patent, must be in writing, duly executed and registered in the Patent Register. For a more detailed understanding of the terms ‘duly executed’ in Section 68 I would like to refer you to Sai’s post over here. Ensuring that the assignment deed is indeed entered into the Register is of paramount importance since the failure to do so would render the assignment deed null and void since Section 69(5) is clear on the point that a non-registered agreement will be inadmissible in a Court of Law. As a result the exclusive licencee or the assignee will not have the standing to sue for patent infringement. The scary consequences of not getting a patent assignment deed registered are best-captured in the case of NRDC v. ABS Plastics Ltd.
(iv) Stamp Duty: While I cannot claim to be an expert on the Stamp Act I think it would safe to say that the Government does expect its pound of flesh from any patent assignment deed that creates an interest in India. Failure to pay the appropriate stamp duty on a patent assignment deed will lead to the deed being impounded by the court, which will also not enforce the assignee’s statutory rights until such time that the stamp duty has been paid. Once the document is impounded it will be sent to the Stamp Commissioner to determine the stamp duty payable to the revenue Therefore it is unlikely that the assignee will be able to get an injunction in his favour without having paid the necessary stamp duty. Given the complexity of patent assignment deeds, especially global assignment/licensing deeds, it would bode well to take competent professional legal advice on the computation of such stamp duty.
3. Section 8: The lethal Section 8 promises to be one of the most potent threats against the enforcement of patents in India. Section 8 requires all patentees to have filed, at the pre-grant stage, details of all corresponding patent applications filed by the patentee in all other countries. In the Chemtura judgment last year the Delhi High Court refused the grant of an interim injunction on the grounds that the patentee had not revealed to the Indian Patent Office adverse office action reports from the USPTO. The fact of the matter is that Chemtura is not an isolated case and it is possible that there are several thousand patents granted without the corresponding information of foreign filings even being filed. It is upto individual lawyers to evaluate the nature of these non-disclosures while evaluating the strength of their patents. If particularly damaging information from foreign filings has indeed been suppressed you may want to formulate a Plan B in order to save your client the expenses of a full-blown litigation.
4. Statement of working (S.146): Given the fact that adequately working a patent has been an issue in the grant of interim injunctions it would bode well to ensure that the file wrapper contains statement of workings; that are required to be filed with the Patent Office under Section 146 of the Patents Act. While it maybe possible to file other information, it would always be easier to convince a Judge with information that has already been supplied to the patent office in consequence of the Controller’s demand for such information under Section 146. Further, if in case the product is being imported by the patentee, special care must be taken to devise strategies to counter any possible apprehensions of the product not being made available in adequate quantity in India and whether the requirement of local working will actually raise the costs of the product in India. Affidavits of expert witnesses in this regard may help the patentee.
5. Disclosure of Prior Art in the Patent Specification (S.10(4): Section 10(4) of the Patents Act states the requirements of a complete specification. In pertinent part the patent specification requires the patentee to fully disclose the invention and the best method to operate it. The IPAB in it Glivec judgment has however read in a lot more into its requirement. In pertinent part the IPAB stated “ We agree with the Appellant that the furnishing of prior art is not mandatorily required under the Act unlike in the EPO- Rule 26 requires “… indicate the background art which, as far as known to the applicant, can be regarded as useful for understanding the invention, for drawing up the European search report and for the examination, and, preferably, cite the documents reflecting such art”. But to establish novelty, anticipation, inventive step and to overcome objection under section 3 particularly 3(d) and even to avoid opposition and future litigations it becomes absolutely necessary for an applicant for patent to disclose the relevant prior art where applicable including the closest one, to his knowledge and distinguish its alleged invention over the same. However, still, Indian law requires (section 8 of the Act and rule 12 of the Rules ) information relating to objection, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require. To our view, unless the relevant prior art including the closest one is disclosed the patent applicant can not be said to have discharged its duty or obligation of disclosing the invention under section 10(4) of the Act. In the present age almost every invention is made by way of some improvements of existing technology as a further solution of some existing technical problem in a given field.” While patent applications filed by foreign companies usually have some minimal reference to prior art, especially prior patents, there are several patent applications filed by Indian companies, that I’ve reviewed, which have virtually no reference to any prior art whatsoever. Going by the IPAB’s purposive interpretation of Section 10(4) a patentee would be well advised to review his existing patents and formulate strategies to counter such an argument that may crop up at the time of litigation.
Conclusion: The above are only few of the points that should crop up during a due diligence. In case your company has patents of considerable strategic value I would urge you to conduct a due diligence and sort out any possible problems even before you send out your first legal notice to the opposite side. If need be employ a law firm to carry out such a due diligence. However in order to eliminate any possibility of a conflict of interest the due diligence task should be assigned to a law firm which is not the law firm that handled the successfull prosecution of the patent. A proper due diligence would save a company from venturing into high-risk unwinnable litigation.
To add to what Prashant said, look for changes that were made to the claims in view of the correspondence between the applicant and the patent office. The applicant may have had to disclaim some part of the disclosure to get the claim allowed and cannot rely on them later.
Additionally, the arguments made while responding to the office reports, are also important. So you are not only looking for communications from the patent office but communications to the patent office.
Finally, try and get a family report of the patent-if it has been filed under the PCT. Normally one would refer to US and EP equivalents to see how the claims match and the file history for those too. These documents provide arguable material in litigation to the patent office, applicant and/or opponent.
though we tend to believe that mnc’s are patent thirsty they tend to disclose related prior art .with an exception to american firms..japanese are the best disclosers of closest prior art which shows their confidence in the invention.90% of indian applicants dont disclose prior art ,but new firms which are into practice provide relevant prior art .life will be much easier if IPAB’s view are followed by one and all
Completely agree with you on that point Rajiv. I know of atleast one case before the Delhi High Court which was decided on the basis of the correspondence between the patentees and the patent office. It is a real pity though that the Patent Office doesn’t put up all the correspondence on the website. I think the EPO website usually hosts all such correspondence.
Great post Prashant. In addition to yours and Rajiv’s points i think it would also be useful to check if the renewal fee to keep the patent in force is paid in appropriate schedule, since as per section53 the patent ceases to have an effect if its renewal fee is due.
Excellent post,indepth analysis..yes, good due diligence and home work can nip in the bud may patent litigations. Kudos for posting a very useful and insightful article.
I happen to see this interesting post today. I thought I must share a case defended by me on behalf of Flex Industries Ltd (now known as UFLEX Ltd).in Delhi High Court. The patentee had filed provisional specification and alter since was not able to meet the office requirements in time, had post dated the patent. Apart from the above, it was anticipated by the patentee himself apart by others. There was mention of the prior publication/anticipation in the Committee report to suggest the kind of packing for dispensing 2T oil for two wheelers.
On account of anticipation the court held that the patent was wrongly granted. But more important is the finding about the post dating of the patent. When one files provisional specification, then that application cannot be post dated. See Standipack (P) Ltd versus Oswal Trading 1999 (19) PTC 479.
Hello Mr. Vidhani – Could you please pass on a copy of the judgment to me. My email address is [email protected]