Prashant 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.