Patent

Presumption of validity of a (an Indian) patent


Flies in the Face of LogicPrashant had some time back written about the Indian patent and trademark adjudication process. While reading this post, I revisited the section on patent and TM validity as provided in our patent/TM act and rules. Unsurprisingly, the Indian patent law does not provide for a presumption of validity of a patent, whereas under the TM act, registration of a mark is prima facie evidence of its validity.
Recently, the US Supreme Court issued its decision in Microsoft v. i4i  case and upheld the standard of proof (clear and convincing evidence) while bringing an invalidity action against a granted patent.  Microsoft was arguing that a lower standard (preponderance of evidence) should be used.  In this case, Microsoft essentially was arguing against its own position, an extremely difficult task.   
The US patent law provides very few mechanisms to invalidate a granted patent including re-examinations, and litigation. However, unlike India the US patent law gives deference to agency decisions-a patent is presumed valid because the agency (USPTO) is presumed to have done its job.  
India on the other hand has multiple forums where a patent can be challenged. See Prashant’s post. It is however, surprising to note that the decisions of the same agency (our patent office) that grants trademarks are given deference and the act provides for a presumption that a granted trademark is valid.   
Under administrative law, the government usually takes the expert advice of the authorities that are vested with the power to make decisions under its domain.  Examples of such agencies include municipal authorities, education boards, revenue authorities, defense etc.  With the exception of the patent office, there is no other authority whose decisions are inherently suspect or are presumed to be invalid despite it being the subject expert.  To be clear, our patent law/rules and the interpretation in the manual do not specifically state that a patent is presumed to be invalid but it does state that one consequence of a grant of a patent is that it can be challenged under a post grant opposition.  This (absence of a specific statement) is the same as stating that there is no presumption of validity or patents are presumed to be invalid.  
To quote:  “The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.” 
Additionally, in Standipack Pvt. Ltd. v Oswal Trading Co. Ltd., 1999 (19) PTC 479, it was held that registration of patent does not entitle any presumption of validity in favour of patent in spite of investigation before its registration.    
It flies in the face of reason and logic that complete deference and zero deference is given to the decision of the same agency in patent and trademark cases respectively.  If the logic is that our patent office is comparatively new and hence it needs time to build credibility, the same goes for the trademark office.  It is a different matter that most office actions issued by our patent office cite the same references that have been cited across US, EP, Japan or any other patent office that has already dealt with the application.  In other words, an agency that merely makes a tally of positive office actions (ones that allowed an application) or negative office actions, deserves as much deference as given to an original observer-like the person coming  for conducting census.        
If I were to take a guess, I would state that even though we have moved to the new patent law, the ideology remains rooted in a different era where patents were inherently suspect, and perhaps a hangover of the post colonial, newly independent decades.    
Perhaps it is time that our law makers take a re-look at the section regarding patent validity and one specific suggestion is to codify that “a patent is presumed to be valid unless proven otherwise by a preponderance of evidence.”   
While I cannot make an unqualified statement that courts will be happy to strike down such existing provisions or give judge made law, I can however state that they would at least give a decent hearing to a person/body raising such issues.  Image from here.

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

6 comments.

  1. Anonymous

    rajiv
    presumption of validity will be music to the ears of ramkumar/bharat bhogilal to name a few!does it indicate our strength or weakness,if most office actions issued by our patent office cite the same references that have been cited across US, EP, Japan ?many patent office’s do encourage sharing of search results.The rooted ideology was based on study by a man of foresight.In the light of IPR Import Rules, 2007being put to use ingeniously (bbpatel vs raymonds), i am not sure if your idea is pragmatic as opposed to the post colonial hangover

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  2. Rajiv Kr. Choudhry

    Anon @ 7:44AM :: It costs a great deal of money to keep the patent office and related machinery in function. This money is paid for by the tax-payer.
    As an FYI, it is mandatory to submit all foreign actions and references cited at our IPO while prosecuting a PCT application. Our patent office merely acts as a forwarding agent when examining such applications. I challenge anyone to find ~10% of PCT applications examined in a month at our patent office that cite for the first time a new reference that has not been cited in any of the other foreign actions. I leave the S/W analysis for you in light of this information.
    What you are referring to (encourage sharing between patent offices) are pilot programs called the Patent prosecution highways. These exist between US, Japan, South Korea and a few other countries. They are not mandatory and a patent office is free to accept the search conducted at another office or conduct its own search. The only benefit is that there is a formal acknowledgement that the first state’s examination is given deference.
    Ramkumar/Bharat Bogilal are only incidental beneficiaries of our current system. Contrary to popular belief, it is locals who are exploiting the loopholes in the system. Hence, we need to first put the system in order because we are spending so much money on functioning of these bodies including the patent office, opposition boards, IPAB, etc.

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  3. S

    Rajiv, I completely agree with you. The Indian patent law should give compliance to the IPO’s decision. Furthermore, I would say that the grounds on which a granted patent is revoked and grounds on which the pat application is opposed should be significantly different. The grounds on which a granted patent is revoked should be stricter and rigorous as the authority has already examined the application and granted it. And also there should be a logical difference between the grounds for pregrant representation and post grant opposition.

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  4. Anonymous

    “Patents Should Earn Their Presumption Of Validity” says Mark Lemely in his Paper – Rethinking Patent Law’s Presumption of Validity. What are your views on this.
    Thanks..

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  5. mnbvcxzaq1

    a quick comment on your concluding sentence “While I cannot make an unqualified statement that courts will be happy to strike down such existing provisions or give judge made law, I can however state that they would at least give a decent hearing to a person/body raising such issues.”: well, contrary to what u suggest here, its just the opposite in courts. v ve raised this issue quite a times (in hc as well as sc), but ve found the judges to be ill-at-ease. in fact, u yourself ve pointed out earlier in this very post of yours, “….the ideology remains rooted in a different era where patents were inherently suspect, and perhaps a hangover of the post colonial, newly independent decades”.
    as far as the the main issue of whether to accord presumption of validity to a granted patent is concerned, it is open to debate. can be argued from both sides of the fence. n none is inherently superior to the other. in my view, something akin to ‘zippo’s sliding scale’ (in the field of jurisdiction in cyberspace) may be a better suggestion.
    -aditya kant

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  6. Rajiv Kr. Choudhry

    From the abstract of Lichtman and Lemley’s paper: “Patents should be vulnerable to challenge until and unless they are significantly evaluated in an information-rich environment.”
    One can equate the information-rich environment of the article to the Indian patent office data about PCT applications. The average examination of an application in India starts when the major patent offices have already either issued or rejected an application.
    The significant evaluation has already been done by other patent offices.
    Additionally, note that the Professors Lichtman and Lemley still provide for a higher standard of presumption of validity. In the post, the standard is much lower-preponderance of evidence.

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