Responding to Sumathi’s post announcing the latest transparency drive by the IPTO, wherein registered trademarks are now freely searchable via an online database, a commentator rightly expressed concern at the accuracy of data entries.
This issue of accuracy, and the extent to which IP stakeholders can rely on this data could not have come at a more opportune moment. For in a recent patent infringement suit, an unsuspecting patentee got caught on the wrong foot owing to a negligent database entry made by the IPTO (Indian Patent and Trademark Office).
TenXc Wireless sued Andrew LLC and another party before the Delhi High Court for infringing its telecom patent relating to ““Asymmetrical Beams for Spectrum Efficiency”. The trial judge initially granted an ex-parte injunction restraining the defendants from manufacturing or selling the infringing devices. However, the defendants discovered that the patent specification (particularly one of the claims) as filed by the patentee was slightly different from the one that was actually granted by the IPTO
It turns out that the IPTO had actually uploaded a prior version of the patent specification and not the version that was finally granted. The trial judge therefore vacated the injunction, but without so much as hearing the patentee on this count. One ex parte deserves another… or tit for tat, as one might say…
The patentee appealed on the ground that it was not at fault, since it assumed that the IPTO website would be accurate. Owing to the urgency of the situation and the need to obtain a quick injunction, it did not wait for certified copies from the IPTO, but downloaded the granted patent specification from the IPTO website and submitted this in court.
The appellate court came down strongly on the trial court for refusing to even hear the patentee on this count. It therefore remanded the matter back to the trial court.
Most of us who’ve accessed the IPO database know only too well that it leaves much to be desired, suffering as it does from occasional inaccuracies. Why then did the patentee rely on this database when filing an important law suit? Sai Krishna, counsel for TenXc was quoted by the Delhi High Court (as explaining his reasons) thus:
“Mr. Saikrishna Rajagopal learned counsel for the Appellants has tried to explain that Indian Patent Office takes anywhere between 20-40 days to supply certified copy of the granted Patent Specification and therefore, it was not feasible for Appellant No.1 to await receipt of certified copy of granted specification because it was praying for an urgent ex-parte ad interim order.
…He explained that no information was withheld nor there was any question of any forgery or making false or misleading statement.
It has been submitted that the specification filed by the Appellants along with the Plaint was never represented as certified copy of the granted specification and the source from which it was obtained was prominently mentioned on the document itself.
It is also the case of the Appellants that comparison of the corresponding claims between the complete specification downloaded from the official website of Indian Patent Office and the complete specification as granted was also made in the Affidavit of Mr. Rajiv Pancholy filed on 28.09.2010 (not considered by the learned Single Judge) with a view to satisfy the learned Single Judge that the Appellants had not gained any undue benefit by filing the downloaded specification as against the certified copy of the granted specification.”
We applaud the IPTO for its transparency drive and for unlocking vast amounts of hitherto hidden IP information, a process that no doubt fosters greater accountability in the IP system. However, these reforms will come to naught, if care is not taken to verify the authenticity of data that has been uploaded. The IPTO needs to have a robust team and a mechanism for thorough assessment/review of data. It also needs to provide an easy and open channel, whereby users that spot wrong data can immediately intimate the IPTO and have it corrected.
On a related note, this case (involving the filing of a wrong patent specification) also highlights the perils associated with ex parte injunctions in patent cases…an aspect I’ve been wailing about for many years now…unfortunately, this song of distress has gone unheeded and continues to merely blow in wind…
ps: TexXc is represented by Sai Krishna Associates. One of the defendants is represented by Luthra and Luthra and the other by Amarchand Mangaldas.
pps: image from here
Another reason why our IPTO should publish the entire specification and patent in its entirety on the web rather than the mere abstract and application some time later. it should do a major re-haul of its databases and methods providing access to the users.
Opps…but it seems like plaintiffs are arguing that even if injunction was granted on wrong claim set (i seriously failed to understand what is slight difference in claims – there is a difference or there is no difference), Court should continue with the injunction. Whatever happened to Order 39 Rule 4????.
Also as someone who has been in court to see how the hearing goes in the matter (this case seems to be quite famous in Delhi HC and trust me lot of Ip lawyers are following it)to me it appears the above mentioned is only half of the story. I am sure it would not be possible to keep tabs on everything which happens in court and one has to rely on its sources.
On a slightly different take on the matter – are plaintiffs actually saying that IPO changed the claim set??? or are they saying that their patent agent did not tell them what claims he is prosecuting. If its the first case then we ought to see a writ by the plaintiffs against the IPO if that does not happen then i guess one can conclude Plaintiffs are bluffing as to not knowing what claims have been granted and if the second proposition is true then i guess agent is in trouble, however i dont not wish to name him as he is one of the prominent IP practitioner.
p.s i personally dont think any of the above situations are correct and i fear that allegations under o39 r 4 might be correct. keeping my figures crossed for the right judgment otherwise it would be habit to file wrong claim set and procure an ex parte injunction and thereafter amend the plaint (as in this case.
Dear bloggers
By now the matter must have been decided by the lower court since it is learnt that the matter happens to be pending in the High Court of Delhi. please enlighten us on whether the TenXC patent litigation with Andrew Comm Scope is same or different from this one and if they happen to be the same one then what is the present status of the matter in the High Court…..