Patent

Indian granted patents…diminishing focus on future enforceability?



Guest Post by Tarun Khurana
Tarun Khurana, Partner in Khurana & Khurana, Advocates and IP Attorneys and its IP Consulting Firm – Institute of Intellectual Property Research & Development (IIPRD), has over 10 years of experience in Intellectual Property matters. In this guest post, he examines whether the Indian Patent Office has lived upto the expectation of granting patents which are enforceable.
Objective
The Indian Patent Act, 2005, like municipal statutes of other TRIPS compliant countries, incorporates the patentability grounds mandated under TRIPS. Decisions on patentability of an application during prosecution in one country have often been relied upon partially, if not completely, for determining patentability of allied applications in other geographies. Further special provisions such as those provided under Section 8 of the Indian Patent Act enable the Indian Patent Office to retrieve additional and more relevant information about the prosecution that happens with the foreign Patent Applications corresponding to the Indian filed national phase application. Even more, additional prior art available by means of results cited by ISR, literature/patents cited by the Applicant and earlier Patent/Prosecution History of the Applicant  give way for searching more relevant and anticipating applications. Keeping all above pointers in context, is it not crucial for Indian Patent Office to try and grant patents which are enforceable and not susceptible to successful invalidity attacks. But is the Patent Office living upto the expectations?
Introduction of Target Patent
For the present discussion, let’s take an exemplary and recently Indian granted Patent X, having publication of grant in Feb 2011. In summary, the invention relates to address-based network communications and more specifically to determination of a prefix portion of an address. Abstract of the granted Patent states:
A network element (10) can retain a plurality of prefix identifiers as are used to formulate an address to be used by individual network users. Pursuant to a preferred approach, one or more of these prefix identifiers are pre-correlated to a given domain name while at least one other prefix identifier is pre-correlated to the absence of a domain name. So configured, a specific prefix identifier can be allocated for use by a given network user as a function, at least in part, of the domain name (or lack of a domain name) as may be presented by that network user when seeking to establish a network connection.
 
The first independent claim as granted as per the Indian Patent Office is:
A method comprising: receiving a communication from a network user seeking to establish a network connection; when the communication presents a domain name as corresponds to the network user: identifying a first prefix identifier as having been pre-correlated to the domain name; providing to the network user the first prefix identifier; when the communication does not present a domain name as corresponds to the network user providing to the network user a second prefix identifier, which second prefix identifier is reserved for use with network users that do not present a domain name.
As evident from the first claim itself, the invention relates to two scenarios of mapping between “Domain name” and “Prefix Identifier” or “IP Address” or “Network Address”:
i)         In case the domain name is given by a network user, an IP Address corresponding to the same is returned back; and
ii)         In case the domain name is not provided by the network user, a new/second prefix identifier is generated and provided to the user. This is typically a well known function of a DNS system, wherein the claimed novelty seems to relate to generating a second prefix identifier in case domain name is not presented by a user.
Due-Diligence Steps which could have been exercised:
Step 1
As at the time of writing this article, the Application Status search of the Indian Patent was not working, I am assuming that as the patent was granted in Feb 2011, the First Examination Report was issued somewhere around Jan-Feb 2010. From a strategic perspective, would it not have made sense to see the prosecution status of the corresponding applications in geographies including EP or US, more so given the fact that Section 8 of the Indian Patent Act asks the Applicant’s to submit detailed updates on filing/publication/prosecution/abandonment/grant activities related to the corresponding foreign applications. It is to be noted that for the Corresponding application EP Y, the application was withdrawn by the Applicant on 28.08.2009, i.e. before the Indian Patent Office issued the FER. The same was the case in the corresponding US Application, wherein the Applicant itself failed to respond to the Final Office Action.
Step 2
A close look at the cited portions of the Prior arts cited in the International Search Report, specially US 6324585, could also have given help in identifying anticipating documents, specially with the claimed subject matter being broad and relating to the overall functionality of a standard DNS system. Furthermore, prior arts discussed in US prosecution including ‘585 and US 2004/0258005 and US 2002/0172206 give clear pointers to claimed subject matter.
Step 3
Furthermore, even if the above due-diligence was not considered worth, a very brief and quick search with the most basic keyword string (Dynamic AND “domain name” AND “network address”) would have revealed many below like relevant patents, based on which the patentability of the subject matter involved could have been evaluated. Based on our quick due-diligence, we found following relevant patents that covers application X matter partly or wholly.
Exemplary and Illustrative Search Results
Search Result 1: US 6338082 – (Cited Portion for the first element of the independent claim which claims mapping between a domain name and a prefix identifier (IP Address)): A client of the DNS is called a resolver 114 . Resolvers 114 are typically located in the application layer of the networking software of each TCP/IP capable machine. Users typically do not interact directly with the resolver 114 . Resolvers 114 query the DNS by directing queries at name servers, which contain parts of the distributed database that is accessed by using the DNS protocols to translate domain names into IP addresses needed for transmission of information across the network. DNS is commonly employed by other application-layer protocols—including HTTP, SMTP and FTP—to translate user-supplied domain names to IP addresses….As part of a DNS query message, the DNS client 114 sends the domain name to a DNS server system 120 ′ connected to the Internet. The DNS client 114 eventually receives a reply, which includes the IP address for the domain name. The browser then opens a TCP connection 116 to the HTTP server process 120 located at the IP address.
Search Result 2: US 6425003 – (Relevant Cited Portion for the second element of the first independent claim which claims mapping between “no domain name” and a “second (new) prefix identifier”):  If a match is found, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the matched service. If no domain match is found and the user is logged into an Internet Service, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the first Internet Service found in the user’s ASL. If no domain match is found and the user is not logged into an active Internet Service, then the DNS request is not re-directed, but rather forwarded unmodified.
Search Result 3: US 6,944,167 – Although relevant, to restrict length of the article, the cited portion is not presented here.
Disclaimer:
It would be appreciated that the above prior arts have only been given for exemplary purposes after a very brief search merely to draw relevancy to the concern and no comprehensive evaluation of patentability  can be done based on these.
Step 4
It further needs to be considered of how the first independent claim passes the bar for Section 3(k). The claimed method merely aims at providing a new IP address to a user request which does not have a domain name. The method clearly does not involve any change in structure of the mechanism of data/packet communication, or packet format, or increases the efficiency of transmission, or produces a tangible output in any manner whatever to qualify the concerned test and merely gives an IP address from a pool of prefix identifiers, a step that DNS is already is configured to do.
Conclusion:
There are many more of such patents, which even though granted, might not live up to the expectations of the Applicant and be easy targets for invalidity. Also, there are many more allied issues that might crop up for discussion when more of such patents are evaluated for actual merit but the two I would last put across are:
Firstly, what worth would be such patents, both from enforceability and commercial perspective, if they would be invalidated the day they are litigated?
Secondly, what credibility would such Indian Granted Patents have if the Patentees themselves are not even confident that they would be able to enforce their rights when the need arises?

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

17 comments.

  1. D.Bheemeswar

    dear readers,

    I am more concerned about the standards of our patents first. As you as you all may be knowing that a single patent alone can not go into market straight, only there may be some exceptions here and there. For this even Our quality of research should go on par with that of international organizations. Most of the persons who practice and also those who handle the patents require a decent research practice with maximum data of the product or process or both. then only we can have some good Patent profile. Coming to compulsory licensing it is not just time for that without improving the the quality of the patenting. our scientists and technologists are yet to deliver a baby and our practices patenting are just in incubator. Last but not the least we need good interdisciplinary patent examiners.

    Reply
  2. Anonymous

    A sincere request to SpicyIp: pls verify claims of the guest blogger before publishing the same. Tarun passed BE in 2000-2004, MS in 2005-2007, LLB in 2006-2009. Is my maths that poor or am I such a dumb person that I cannot see his 10+ years of experience. Moreover, his final year of MS clashes with first year of LLB. Is that legal? I don’t think so!!
    Very poor on SpicyIP part to allow frivolous and misleading people to misuse this platform.
    Source: http://www.linkedin.com/in/tarunkhurana

    Reply
  3. Shamnad Basheer

    Dear Anon:

    People can deal with IP even whilst studying, being engineers or having other qualifications. An LLB alone is not the sole prerequisite for determining whether experience in IP exists or not. Besides, whether he has 10 years or 7 years: does it really matter to the quality of this post? which is what we’re really concerned with. And we would urge you to comment on the merits of the post. Thanks.

    Reply
  4. Tarun Khurana

    Anonymous,

    Even though your comments do not relate to the content of the blog, which ideally they should, let me help you calculate your math:

    I did my BE from Pune University from 2000-2004, wherein I started Preparing Applications in 2000 itself for my Colleagues and Industry Contacts in India and US who filed Utility Patents, which I was completely eligible to do. Hope the 10+ years of experience now gets clarified or do you still need help.

    I then did my Masters from 2005-2007 from BITS Pilani, which is a well known distance learning course and allows anyone to work simultaneously , and further allowed me to pursue my LLB at the same from CCS University. The very fact that I was awarded these degrees was because they made legal sense.

    Now in case you still have problems with your Maths or from how I did my LLB, I would request you to recheck your basic computations before making defamatory comments.

    Also, before commenting on other people’s capabilities and profiles, check your success score first before commenting, which clearly does not look good here.

    In end, I would just state that there are two type of people, some who get motivated through experiences of other people and succeed in life, and other who remain envious and fail. Your comment clearly suggests the category you belong to and I feel sorry for the same.

    I still wish you the best in life.

    Tarun Khurana

    Reply
  5. Tarun Khurana

    Dear Mr. Bheemeswar,

    Thank you for comments, which I am sure most of us agree with.

    At the same time, with more transparency coming in during prosecution and opposition proceedings, I am confident that things are on the right track.

    Warm Regards
    Tarun Khurana

    Reply
  6. Anonymous

    astonished to see someone drafting patents during first year of engg right away after passing school…that too without any experience…

    Reply
  7. Sumeet

    This article really brings us closer to reality. We too have many a times encountered patents which even though denied in multiple other geographies are granted in India, not all the times on merit as well. This is more so the case with Software Patents, some of which, even though are simple mobile device based applications, are granted without any major substantive prosecution.

    On another note seeing the above comments, I fail to understand what people like Anonymous are up to here. This is a platform where IP fraternity likes to read and discuss the IP issues and not
    where people pass personal comments about the authors. Tarun is a well known Patent Attorney in India and represents some of the largest Indian Electronics, Electro-Mechanical, and Oil Companies. I personally know him for the last about 8 years and am proud to be his client and see his firm rapidly growing.

    Regards
    -Sumeet

    Reply
  8. Anonymous

    Sad to see the moot point being diverted by uncalled for personal comments.

    Very nice analysis on the part of the author. I have 2 points to make:

    First let me begin with my disagreement with the author. The author puts the onus of granting “enforceable claims” on the patent office. I beg to disagree.

    The job of the patent office is to grant claims that pass the 3 prong test of novelty, inventiveness, and utility, in addition to passing the statutory test provided by the act. There is no onus on the patent office to grant claims that are enforceable. There are many cases, where claims might pass the above mentioned tests, but, still might not be “enforceable”. Food product claims, Discreet system claims, and use claims (though not granted in India) instantaneously strike me as suited examples. Therefore, it will be better if we do not mix the issue of enforceability with the issue of novelty, inventiveness and utility.

    Secondly, even if we separate the issues of enforceability from the issues of patentability, this does not mandate granting of claims that can be easily proved as unpatentable (as shown by the author).

    The patent office has been coming down hard (sometimes cynically) on patentees for non-compliance with sec 8. Patents have been revoked, and applicants have been censured on non-compliance on this ground. Reporting of information in FORM 3 has been flagged as imperative. Attorneys and agents have been advised to inundate the office with timely FORM 3s. In many cases, they have been advised to report the foreign examination reports as well.

    But, all these formalities seem to be going in vain. Still insignificant claims are being granted? Question, is why is their such obvious errors? Are the examiners under tremendous work pressure? Or is it a result of their lack of training and non-competence? Are the examiners acting under some vested influences?

    Or, is it a question on the patent administration? Why does patent offices benchmark their practices based on what is deemed as right or wrong by the top law firms? Why do some law firms get special treatment from the office? I have seen telephone directory of members of top IP law firms on the desk of patent office examiners. How can members of some firms have direct access to the patent office examiners? Why do so many retired patent office officials find running patent consulting firms as an easy and profitable business?

    Granting of wrong patents is a matter of violation of public interest. The accountability needs to be fixed. And the patentees need to understand, that even though they get a patent grant, the attack on validity of their patent is plausible.

    Regards,
    Regular follower of SPICY IP

    Reply
  9. Anonymous

    Dear RF
    while i agree with you on enforceability i am afraid about your deduction as to who is to be held responsible, more so with your thorough knowledge regarding law as well as about the careers of retired employees.After all the “incompetent” are supervised isn’t it?

    @ tarun
    If the applicant wanted credible patent he need not have pursued the application in the first place.After all he was having ISR by his side

    Reply
  10. Tarun Khurana

    Dear Anon @12:26,

    Thanks a ton for your comments. Although I do buy your point on patent office not being liable for granting enforceable patents, my question still is: If there is no liability and in case there should’nt be any, then why have the examination procedure all together. Let the patents just get granted as they are filed and leave the enforceability to litigation. And in fact, Singapore also does not have substantive examination and its working fine I guess. Therefore, if examination is anyways not to be done properly or comprehensively, why claim to do it in the first place.

    Secondly, as suggested above, if the mandate is not to grant claims which are patentable; or at least grant patents that show significant level of analysis being done by the examiners, then why the examination procedure. I really fail to understand.

    Efforts of Form 3 going in vain is precisely my point. If examiners want this information so religiously, at least the impact of their analysis should get reflected. Trust me, none of my clients want this burden of giving information as demanded in Form 3 and that too as periodically as it is desired, and if, even after giving the information, its not being utilized, is it worth the effort and cost involved.

    As regards treatment from big law firms, I personally think gone are the days. At least the examiners we deal with have been very neutral to the procedures they follow and relate to the Act quite well.

    In conclusion, I strongly believe that unless the liability is put on the examiners, there’s going to be limited change in the examination procedures and most OA’s would still revolve around formality rejections.

    Dear Anon @2:19,
    Thanks for the commment. Thats true, but respectfully, ISR is no authority. It’s merely an opinion and we have seen numerous strong and enforceable patents being granted even though the ISR had multiple X references.

    Warm Regards
    Tarun Khurana

    Reply
  11. Anonymous

    I, too agree, that the enforceability is not to be linked with a patent grant.

    Since India does not say that a granted patent is a certification of its validity… even in the US where validity of a granted patent has statutory credence, we see a whole host of patents getting knocked down in the Court litigation proceedings.

    Freq. Anon.

    Reply
  12. Anonymous

    Dear Tarun
    you seem to have the solution for the problems being highlighted by RF .can you pl elaborate about” putting liability on the examiners”.would not it be more prudent if applicants are also made liable for they give a declaration in form 1 (in spite of having an ISR).
    you may like to know what EPO says on this : “Quality starts at the moment an application is drafted” (http://goo.gl/1EOHr)

    Reply
  13. Tarun Khurana

    Dear Anon,

    I agree with you on the Applicant’s liability in such cases and which is precisely why IDS in the US is taken so seriously while measuring ethical conduct on behalf of the Applicant.

    However, my only point is that actions which are more practical should be taken first on priority.

    -Tarun

    Reply
  14. Anonymous

    Tarun
    probably we should emulate the best practices of the best as no where liability is put into use .Also closer look into ground reality will do much good than having wild guesses.As told earlier,to have patents with high presumption of validity, it’s 2 street road till then we will continue to have more cousins for 40/DEL/2010 being blogged in this blog.

    Reply
  15. Anonymous

    Dilute the opposition mechanism and create a “presumption of validity”. Absence of these gives liberty to the patent office for granting bad patents rather than ensuring no bad patents are granted. Law is operating counter to what it was made for.

    Br,
    RF

    Reply

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