Whether a pre-grant patent caution notice is appropriate?

A regular reader of our blog recently forwarded to us a copy of a “Patent Caution Notice” related to Indian patent application number 1254/MUM/2007 that appeared in the TOI, Chennai edition on September 29, 2010 at page 7.

The notification recites the abstract of the application and goes on to state that “[I]n view of the said patent application, ‘the patent applicant’ alone is entitled to manufacture and sell devices in accordance with the methods disclosed.

This notice is an interesting read.  Whether or not the claims are granted, the attorneys prosecuting the application appear to believe that the abstract is good enough to enforce the described methods/embodiments of the application.  The notice goes on to warn of a patent infringement action and damages.

Consider for a moment the provisions of section 11(7) that provides the effects of publication of a patent: The applicant shall have like privileges and rights, as if a patent for the invention had been granted from the date of publication of the application until the date of grant.  But he shall not be entitled to institute any proceedings for infringement until the patent has been granted.

A patent publication works as a notice to the general public.  However, the rights of the applicant are crystallized and demarcated by granted claims and not by the abstract or summary of a patent application.
Hence an applicant may have a right to an equitable action such as accounting.
In order to convince a judge as to the merits of bringing a pre-grant infringement suit, the applicant must show that in all probability the patent will be granted.  This suit might be brought for accounting/royalty determinations.  However, when there are multiple citations against a patent application during prosecution (as in this case), it is questionable that the claims as existing would be allowed.  The applicant may have to significantly narrow the claims for allowance.
A simple search of the prosecution history of this application shows that  multiple citations have been provided by the search authority (at multiple stages) to reject the claims. The applicant has amended the claims at least once to respond to the written opinion.
Note that it is not the application that has been rejected, it is the claims (as existing) that have been rejected.
The question that arises therefore, is when the claims are not crystallized and there is a rare chance that claims as existing might not be allowed, how (and on what basis) can an applicant issue a patent caution notice to the general public solely by citing the abstract of the application?
The notice also uses the term methods to warn the public.  My personal opinion upon this issue is that the public can very well ignore this caution notice because a patent is not granted for all that is disclosed-a patent is granted for the claimed embodiment.



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12 thoughts on “Whether a pre-grant patent caution notice is appropriate?”

  1. In yesterday’s Hindustan Times, New Delhi edition there was a caution notice on pg 15, warning the public not to use the trademark or design (bottle). They use the term ‘appropriate proceedings’.

  2. Dear Rajiv,
    This is a very interesting case where general public is threatened by patent applicant. I don’t think that there is any obstacle in Indian patent act against such pre-grant patent caution notice. But, I am more interested in exploring the chances of success in claiming the right to an equitable action before the grant of patent by the applicant. On other side, although, the relief against groundless threats can be obtained u/s 106 of Indian patent act by aggrieved person (if the claims can be proved to be invalid), the possibility of availing benefit of such provision by general public is remote.
    [The simple reason behind it is: “general public will never understand the actual invention as mentioned in the notice.” Thus, there will not be any question of suit for relief u/s 106 by general public. Other people like the competitor of the patent applicant can better understand the invention and can bring a suit u/s 106, if they find it worth to file a suit.
    But, restricting our discussion to general public, and thinking one step ahead, most of the people will not even bother to understand the invention by getting the complete specification. In fact many even don’t know how it can be obtained from patent office. Thus, the claim interpretation by general public is beyond imagination.] ***
    The question in my mind is “whether the applicant is really going to pursue the end user in future? (think about the possible complications in such a matter)”
    Expecting more observations on this matter.
    *** These are my personal views based on my personal experiences and I do not intend to hurt anybody’s feelings. Also, I completely understand that the ignorance of law is not the defense in any suit.

  3. An anonymous commentator makes some valid points in relation to Rajiv’s post but in the process also personally attacks Rajiv. I will not release the comment unless you remove the personal jibe. Please remember that bloggers such as Rajiv put in a lot of time to bring you this analysis. The least you can do is be polite when you air your disagreements with a post or a view on this blog.

  4. I disagree with your comment on the patent caution notice published in the leading daily. I think the notice simply means to aware the public or the competitors about the patent which is pending in the patent office since it is rare that the companies goes to the patent office website and search for the published patent applications. Now by doing this the applicant has performed his part of duty that he has filed such application and anybody who is affected by his application may file an opposition at the same time he has warned those who is working on his invention without his prior approval.
    Now the question is what if the patent is not granted to him or the claims which he got is not the same as of originally filed then in that case also he simply will not able to enforce his patent.
    I think it is the new trend which is setting up and a novel idea to warn people against the unauthorized use of somebody else’s invention.

  5. The link to prosecution history seems to be broken.
    Few basics need consideration before analyzing whether such notices are appropriate or not:

    1. As per IPO database, this application (1254/MUM/2007) is not yet published. Hence, publishing abstract in the notice for general public seems sensible and appropriate.

    2. After opening prosecution history link, I observe that it links to WIPO publication of a PCT application claiming priority from 1254/MUM/2007. Hence, terming ISR and corresponding opinion as prosecution history of 1254/MUM/2007 is incorrect.

    3. Further, WIPO is not a granting authority. Hence, it can neither accept not reject the claims. It can only give an opinion based on search results, which has no legal validity in a particular jurisdiction. It may act as a source of reference for a patent examiner.

    4. The author, in his opinion, asks public to ignore this notice. On a serious note, there have been various litigations, across multiple jurisdictions, wherein the plaintiff was unable to enforce its rights due to delays by the patent office. For example, defendants (including both manufacturers and end users) can claim during infringement proceedings that since the application was not published in a timely manner by the PTO, they were not aware of any such patent. Hence, such caution notices may come in handy for the plaintiffs during such proceedings.

  6. I like the approach of the anony. at 12.40 pm. this would realy help the applicant in order to aviod further litigation upto some extent and save his valuable time and money.

  7. Anonymous @12:52

    I agree that WIPO is not a granting authority but it gave an initial report on patentability to the applicant by rejecting the claims.

    The Written opinion is necessarily looked at by the Indian Patent Office and it is a duty of the applicant to disclose the entire prosecution history in each country of the application to the patent office. It is a different matter that when this file is picked up at the IPO, it is up to the Examiner to use or not use these citations.

    Also when an application is published, it acts as a general notice to the public including competitors about the invention of an applicant. The public already has notice of the application: hence there is no particular need of providing special caution notices.

    Note that I do not have a problem with caution notices as such. Because a positive written opinion would indicate the adequate basis for an applicant to approach a court for an equitable remedy, I would have supported the notice had there been a positive Written Opinion. At the very least it gives a good faith belief that the claims as existing would be granted.

    In other jurisdictions, there are special procedures when there is infringement of a patent application. As an example, in the US there is something called as petition to make special.

    I fully agree with your point that the delays by the patent office in publication give grounds to both Plaintiffs and defendants.


  8. One of our readers sent me the following note:

    “This indeed is a very valid justification. However, if some one ignores the notice and practices the invention of the said patent application for the business and if later the claims are granted then don’t you think the practicing the claims of the application would have have been practicing at risk as later it would have been willful infringement with high damages/penalty.”

    I agree that later on if claims are granted then it entails a significant risk. However, this presumes that the claims as granted would be either the same or very similar to the claims originally filed.

    However, given the nature of patent prosecution, once an Examiner has cited multiple documents against the claims, the Applicant generally has to narrow the claims significantly and the narrowed claims are different from the originally filed claims.

    Therefore the risk of willful default is certainly mitigated if not eliminated.


  9. Dear Parag,

    Thank you for your insightful comment.

    I also agree that there is no
    obstacle in the Indian patent act against such a pre-grant patent caution notice.

    When talking of an equitable action, one needs a good faith belief that one would be successful in getting the patent granted with the original claims or with very minor changes.
    But if there is a negative report on patentablity from any competent body, don’t you think it puts a dent into the good faith belief for brining the action.

    As regards the general public, the Courts necessarily look at the legal sophistication of the parties when entertaining such a suit.

    Finally, after reading the claims, I was wondering about the end user (infringer or licensee) of the methods described in this application. Is it a single entity, or does it entail multiple entities?

  10. Kshitij Malhotra

    The problem is not with the notice, but, with the misleading language of the notice. I have uploaded the notice for your reference on the following link: http://tinyurl.com/386ngdc

    The problem comes when the applicant uses the language “Notice is given to whom it may concern that in view of the said patent application (emphasis added), our client is entitled to manufacture and sell devices in accordance with the methods disclosed.”

    The patent rights (enforcement rights) only commence after an “order of grant” has been issued by the patent office, albeit retrospective of the date of publication. Therefore, in my opinion this is a case of “unauthorized claim of patent rights”, which may be covered and remedied u/s 120 of the act based on the language of the notice.

    However, I may be proved wrong, if an order of grant has already been issued by the Mumbai patent office. Since, the widely publicized IPAIRS has yet again ditched us, the case will remain in the dark until a samaritan can retrieve the file physical file history from the Mumbai patent office.

    Moreover, I agree with the comment above, pre-grant notices can act as a good way to warn people, but, using misleading language in the notice serves no purpose.

    Needless to say, the above comments are my personal opinion.

  11. Kshitij Malhotra

    Moreover, I have couple of reservations regarding points raised by the author.

    1. A plain reading of proviso 1 of section 11 (7) ‘absolutely restricts’ an applicant to bring ‘any proceedings for infringement’ until the patent has been granted. Therefore, terming any such suit brought before court of law as a “pre-grant infringement suit” might be incorrect.

    Moreover, in my opinion, a right to equitable action such as accounting may only be based on any preemptive threat of infringement. Since, section 11 (7) proviso 1 restricts institution of “any suit of infringement”, therefore, initiating any preemptive proceeding might again be untenable.

    2. I don not find anything wrong in citing only the abstract of the patent application in such patent caution notices. The abstract of a patent is ought to disclose “technical information” on the invention. Therefore, providing the abstract sufficiently cautions any probable infringer, who is producing products in the same technical field, of the existing patent rights. The onus of finding the exact scope of the granted claims etc is on the probable infringer.

    Moreover, providing entire granted claims (or independent claims granted) in a patent caution notice, which is to be published in leading newspapers, does not make economical sense.


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