For those who came in late, here’s the story thus far. Before we continue with the story, I would strongly recommend reading Prashant’s brilliant post on the fundamentals of Indian patent litigation.
….And so Brin Panna, after having earned his patent on “Spin-ster” technology (which still cannot be presumed valid under Indian law) now finds himself knocking the doors of the High Court of Bhagyanagar in the year 2012, to seek remedy against infringement of his patent by Peeve Jobs. (Here the assumption is that a civil suit may be filed directly in the HC of Bhagyanagar, if it is valued at Rs.19,99,999/- only, which works out to approximately USD 45,000).
Under Section 64 of the Patents Act, Panna’s nemesis, Peeve Jobs, has two options- (1) he could either choose to file a suit for revocation of Panna’s patent “120420” as a counterclaim to Panna’s suit for infringement before the HC, or (2) he may file a revocation petition before the IPAB.
From a cost point of view, Jobs is in two minds because filing a counterclaim for revocation of the patent before the HC could be a much more expensive exercise than filing a revocation petition before the IPAB.
But then, Jobs realizes that his primary objective is to make as much noise as possible; the bigger the forum the better it is for his benefactors, so there’s no way he can let go of the HC option.
The IPAB option too is important for Jobs because it serves his larger objective in a different way i.e. once an expert tribunal like the IPAB is seised of the issue of validity of the patent, it usually (and invariably) deters a Court from granting to a patentee what he needs most in an Indian context- an interim injunction.
Jobs knows that if an interim injunction can be thwarted, his job is more or less done-why? Because Jobs is aware that, conservatively speaking, the trial wouldn’t begin for a good 4-5 months from the date of filing of the suit. Disposal of the suit is anyways light years away, so all Jobs has to do is to prevent the grant of an interim injunction.
Now that his goal is crystal clear and he is flush with funds, Jobs decides to use both the HC and IPAB options (although the Act requires him to choose between the two). So, Jobs files a counterclaim of revocation of Panna’s patent before the HC and creates a competitor of Panna (let’s call him “Orchard Pauseman”) or pays one to file a revocation petition before the IPAB.
Jobs understands that the filing of the revocation petition by an “independent” competitor lends a veneer of objectivity to the petition, and to that extent puts a question mark on the validity of Panna’s patent.
It is in the Court on the first day of hearing that Panna acutely feels the pinch of the lack of presumptive validity. If Panna’s patent had been presumed valid under the Patents Act by virtue of grant, or atleast by virtue of the fact that it had survived oppositions, Panna could have directly proceeded to the issue of infringement and subsequently, irreparable harm and balance of convenience, all of which are essential ingredients to prove need for an interim injunction.
But, since Indian law does not provide for presumptive validity, the onus of proving validity would first lie on Panna. In other words, Panna again goes through the rigmarole of proving why and how his patent has been validly granted.
In addition to submitting why his invention is novel and non-obvious, Panna draws the attention of the Court to the fact that his patent has been granted pursuant to a pre-grant opposition, and has survived post-grant opposition.
Panna desperately points out to the Court that in the absence of an interim injunction, the suit would be rendered infructuous considering the fact that a patent is granted for a limited term. Further, since the technology has a short shelf life, one cannot equate term of the patent to the life of the technology.
Panna also submits that an interim injunction ought to be granted because the actual benefits of the grant of the patent, such as offering licenses to a statutorily-protected proprietary technology to third parties, can be meaningfully derived only after grant. He submits that infringement of the patent by Jobs and the counterclaim of revocation have created a cloud over Panna’s title to the invention, and have adversely affected his prospects of commercially exploiting the technology.
Jobs smugly rebuts Panna’s arguments and points out to the Court that unless the validity of a patent is tested in “judicial proceedings”, a patent cannot be presumed valid. According to Jobs, “judicial proceedings” cannot include post-grant opposition, and must necessarily mean “proceedings in a Court of law”. Therefore, Jobs submits with utmost humility, that Panna’s patent cannot be presumed valid merely because it has survived unlimited oppositions.
Jobs draws the attention of the Court to his own counterclaim of revocation and a pending “independent” revocation petition before the IPAB, to assail the validity of the patent. Jobs submits that both the counterclaim of revocation and the revocation petition before the IPAB cite prior art, which were not considered in either of the opposition proceedings; consequently, unless the validity of the patent is tested against these “untested” prior art, grant of an interim injunction would be improper.
Jobs, finally introduces a fire-and-forget missile by the name “public interest”. He proclaims that if Panna had his way, the elected representatives of this country would never be able to afford the sacred Indian fabric, Khadi. Jobs, a foreign national, passionately argues that Khadi, whose cause was espoused by the Father of the Indian Nation, Mahatma Gandhi, would also be out of the common man’s reach if Panna was granted an interim injunction. Therefore, grant of an interim injunction is against the interests of the whole country!
Jobs goes a step further and thunders that if it were in his power, he would include any and all technologies related directly or indirectly to Khadi as unpatentable subject matter under Section 3 of the Patents Act, since a “monopoly” over anything related to Khadi goes against the Gandhian spirit!!
Does the Court grant an interim injunction? I leave this to the readers’ imagination.
I am sure the posts could reek of hyperbole to a few, but the sentiment behind the posts is to merely convey that although the system of oppositions is intended to act as a check against frivolous patents, opposition proceedings by themselves don’t constitute the entire Act, or the very purpose of the legislation.
If the mechanism of patents has been introduced to provide a framework to incentivise innovation, it would help, if at times, we try to understand the innovator’s (and this includes the one who commercialises the technology) point of view of as well.
Patenting is just one aspect of a larger business canvas, and if the innovator or the one who commercialises the patented technology is expected to engage in fire-fighting round the clock, then the spirit behind the very system of incentives is relegated to the side lines. Imputing presumptive validity to the grant of the patent at some stage, either before or after opposition, could go a long way in setting the balance right in an otherwise skewed system.
Also, why is it that the Patents Act does not contain a special jurisdiction clause such as the ones found in Section 62 of the Copyright Act and Section 134 of the Trademarks Act? Shouldn’t the patentee too legitimately expect a provision to institute a suit for infringement at a place where he conducts his business, just as a copyright holder or a trademark owner can? After all, a patent is for a shorter term, with attendant limitations on the right which are provided for in the Act…such being the case, why shouldn’t the patentee have the same privilege, which copyright and trademark owners enjoy?
SpicyIP Wishes All its Readers a Safe and Happy Diwali! Fiat Lux (Let There Be Light) !
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