Patent

Revoking patents without ‘evidence’


In a decision dated the 24th of November, 2011 the Intellectual Property Appellate Board (IPAB) revoked patent number 193899 bearing title “Process for Preparation of Low Glycemic Sweets”. (This order can be accessed over here) As the title suggests the patent in question was for a process to prepare ‘low-sugar’ sweets for diabetic patients. The revocation petition was a part of a long-standing dispute between the famous Chennai based Adyar Bhavan and the inventors of the impugned patent. The first limb of this litigation was a suit for patent infringement filed before the Madras High Court by the inventors of the patent. At the interim stage the Madras High Court avoided examining questions of patent validity and proceeded to grant the plaintiffs an interim injunction. That order can be accessed over here. (Image from here
The patent in question was revoked by the IPAB due to the lack of ‘an inventive step’. The problem with the judgment of the IPAB is the fact that it has not based its decision on any evidence. The fault partially appears to lie with the petitioner. The normal practice in patent revocation petitions is to file the affidavits of expert witness as ‘evidence’ which would establish either obviousness or one of the other grounds for patent revocation. The expert witness in his or her affidavit usually leads the Court through documentary or other evidence and the veracity of the same may be tested by the opposite side through cross-examination. Surprisingly, in this case the petitioner does not seem to have filed any such expert witness affidavits or at least the judgment does not appear to refer to any such affidavits. In fact the judgment clearly mentions that the petitioner has failed to file any evidence. In pertinent part the IPAB’s order states that “ The respondents would like to state that the petitioner have never produced any documentary proof for substantiating his grounds of revocation, but only been repeatedly making bald statements, but failed to produce any convincing evidence or other documentary proofs. Similarly the petitioner has only relied on the arguments given in the pleadings, taking all the available grounds of revocation, but has not adduced any further documents or evidences to substantiate those grounds of revocation.” 
Despite the fact that there was no ‘evidence’ on record, as understood under the Evidence Act, 1872, the IPAB proceeded to knock-down the patent on the basis of alleged prior-art documents stated by the petitioner during the course of the arguments. In doing so the IPAB has failed to distinguish between ‘questions of law’ and ‘questions of fact’. ‘Questions of law’ can be argued by the petitioner’s counsel using judicial precedents and other statutory aids. ‘Questions of fact’ however need to be proved through evidence that is accepted under the Evidence Act, 1872. This would mean that the petitioner should have filed expert witness affidavits before the IPAB and those witnesses should have been put up for cross-examination by the opposing counsel. Issues such as ‘inventive-step’ are usually mixed questions of law and fact i.e. the prior art is a factual issue but the standard of obviousness is a legal issue. The prior art therefore has to be established through an expert witness and the subsequent standard of obviousness can be establish by counsel for the petitioner through judicial precedents which do not have to be proved. 
In the present case, the IPAB should have thrown out the revocation petition due to the lack of evidence, especially when the patentee made out an extremely strong case for such an action. Unfortunately, that did not happen. Instead the IPAB ignored the respondent’s argument on the lack of ‘evidence’ and proceeded to revoke the patent on the basis of prior art documents which do not qualify as evidence under the Evidence Act, 1872. 
A part of this problem can be traced to the lack of strong procedural rules before the IPAB. For example in civil litigation before the High Court, the Court under the Code of Civil Procedure, 1908 would have framed issues outlining the factual disputes and would have also placed the onus of proof on one particular party. Similarly documentary evidence would have been ‘admitted/denied’ by both parties before cross-examination. Although such procedure may appear tedious, it is absolutely essential to streamline litigation. Unfortunately, the trend in India is to view any kind of litigation before a tribunal as a summary proceeding where speed is favoured over substantive justice. Patent litigation is not ‘service law’ litigation before the administrative tribunals. The IP Bar needs to make a move to petition the IPAB to adopt substantial procedural rules. If necessary the IPAB can just lift the relevant provisions of the CPC and notify the same into rules of the IPAB.
Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

14 comments.

  1. AvatarAnonymous

    Dear Prashant,

    The order given by member technical ignoring the the facts and as well as of law is due to lack of exposure of technical member in litigation law as he has never done any litigation work means did not pass any orders in his whole service career as controller of patents, as far as I remember, he was appointed initially as Asstt. information officer and later directly got in to the post of Asstt. Controller without having exposure or experience as examiner or Sr. examiner in patents department so when a person has never worked as technical expert and now as a member naturally he will give a judgement as what he has learnt in his service career bravo. so many more orders to come in future with glitches wait and see. There is a English quote which every body knows that (We reap what we sow) Thanks to DIPP for making selection.

    Reply
  2. AvatarAnonymous

    This will continue to happen in the given circumstances when people unknown in the procedure and inexperienced persons are appointed at such a coveted post. The question arises, was only D.P.S Parmar eligible for the post? Was no other person more competent available? Or was there any other consideration for appointing authorities to appointing him as a technical person?

    From the reading of the judgment it is revealed that as if the patent itself was apparently wrongly granted, keeping in view that there was no evidence whatsoever adduced as mentioned in para 42. If that be so I doubt the competence of the Controller who granted the patent.

    The greatest folly in our country is that people who do not have any practical knowledge in the field are made to make laws and the persons who are stakeholders are seldomnly consulted. I know the objections/suggestions are called from the general public by publication in the official gazette, but then how many suggestions have been taken care of. As if the suggestions are useless suggestions or may be that the lawmakers feel insulted if they have to implement suggestions. The negative attitude rather than positive attitude plays important role.

    Reply
  3. AvatarAnonymous

    Mr. Saurabh Nanda,
    I think under the Patents Act, 1970 there is no provision for filing of an appeal, though one can challenge the said order in a writ petition before the High Court.

    Reply
  4. AvatarIPR expert Advocate and Attorney

    Dear Prashant,

    DIPP is least bothered about IPAB and neither it is interested nor IPAB is interested in qualified candidates to become technical member. How Usha reached as chairman from clerk post in attorney office in Chennai? With the help of earlier past chairman became Technical member. Then chairman post with just 2 years of experience as technical member with help of retired chairman Negi who was ILS cadre, who never worked or even heard IPR laws in India in his career in law ministry. After retirement became Vice Chairman. With 2 years experience became chairman IPAB like Usha, first taking the post by himself, then leaving way for usha to be chairman. All appointments sphereheaded by earlier chairmans with connivance and support of DIPP. Nobody had IPR patent examination experience. Deciding trademark cases is common sense like any civil case, but patent matter is not like that. Such inexperienced persons with vast ZERO experience are appointed with connivance and support of DIPP. I have technical and law background with bar experience of more than 15 years in IPR. Filed patent cases and handled litigation in high court. I was not even called for interview, because I am 47 years, whereas in trademark technical member post persons of 35 to 45 were called for interview. What was the age of Usha when she joined IPAB? If she can join why I should not get even interview call. Because everything managed by earlier chairmans. Then what will be quality of these technical members? You may say that I don’t have patent examination experience; but a technical graduate with law degree, 15 years bar experience in litigation as well as filed and prosecuted patent cases; why I was not called for interview? Don’t I qualify with recruitment rules? Obvious reason is, “do I know any Joint Secretary in DIPP or Chairman IPAB?” I should meet this recruitment rule, then no matter of experience like Usha or parmar or ravi; will get selection directly surely; leave alone interview etc., Then how can you expect a judgment in best manner? There will be more “Revoking patents without ‘evidence’ by such interested Anandha Bhavans” by “parmars” hereafter for 5 more years! Tolerate “what cannot be cured has to be endured” this way console you; I am sorry; Truth is bitter, swallow it; no way!

    Reply
  5. AvatarIPR expert Advocate and Attorney

    DIPP is least bothered about IPAB and neither it is interested nor IPAB is interested in qualified candidates to become technical member. How Usha reached as chairman from clerk post in attorney office in Chennai? With the help of earlier past chairman became Technical member. Then chairman post with just 2 years of experience as technical member with help of retired chairman Negi who was ILS cadre, who never worked or even heard IPR laws in India in his career in law ministry. After retirement became Vice Chairman. With 2 years experience became chairman IPAB like Usha, first taking the post by himself, then leaving way for usha to be chairman. All appointments sphereheaded by earlier chairmans with connivance and support of DIPP. Nobody had IPR patent examination experience. Deciding trademark cases is common sense like any civil case, but patent matter is not like that. Such inexperienced persons with vast ZERO experience are appointed with connivance and support of DIPP. I have technical and law background with bar experience of more than 15 years in IPR. Filed patent cases and handled litigation in high court. I was not even called for interview, because I am 47 years, whereas in trademark technical member post persons of 35 to 45 were called for interview. What was the age of Usha when she joined IPAB? If she can join why I should not get even interview call. Because everything managed by earlier chairmans. Then what will be quality of these technical members? You may say that I don’t have patent examination experience; but a technical graduate with law degree, 15 years bar experience in litigation as well as filed and prosecuted patent cases; why I was not called for interview? Don’t I qualify with recruitment rules? Obvious reason is, “do I know any Joint Secretary in DIPP or Chairman IPAB?” I should meet this recruitment rule, then no matter of experience like Usha or parmar or ravi; will get selection directly surely; leave alone interview etc., Then how can you expect a judgment in best manner? There will be more “Revoking patents without ‘evidence’ by such interested Anandha Bhavans” by “parmars” hereafter for 5 more years! Tolerate “what cannot be cured has to be endured” this way console you; I am sorry; Truth is bitter, swallow it; no way!

    Reply
  6. AvatarPrashant Reddy

    Dear IPR expert Advocate and Attorney,

    I’m sorry to hear about your experience. How many people were interviewed for the post of ‘technical member’ trademarks?

    Regards,
    Prashant

    Reply
  7. AvatarAnonymous

    Dear Prasant
    Many people are vehmently criticising the Technical member for lack of his experience in the patent office.However,the said order is not issued only by technical member alone.

    Reply
  8. AvatarIPvocal

    Dear Prashant,

    I totally agree with IPR expert Advocate statement attributed to the selection of Technical members in IPAB, though I am surprise to statement of the IPR expert advocate that he had applied and he was not called for the interview, as far I have collected copy of RTI papers from the one of the advocate who had collected it through various RTI’s responses received from DIPP, as far as DIPP record shows that they have received total 8 applications for Member Technical patents out of this 8 applications one application was of advocate and rests were of Patent officials and though that one advocate has sent his application through email and as per DIPP papers which are with me that bio data was received late still they had called him for that interview. Though they had selected Mr. Parmar as he in most of his service period he had worked only in the ministry as CGPDTM nominee so only selection criteria was that he was close to the power corridor.

    As, I have many times been raising the selection issue in my other posts, which died to its own silent deaths due to automatic removal of old posts from SPICYIP blog screen pages to new posts and due to natural re-ccourse my reply posts shunted back to old post section of IPAB related posts. That all appointments made by DIPP till date. The DIPP officers have carried out most of the appointments to their own convenience, selected their own persons on their own wish and whims or fancies without any proper guidelines, as in the case of recent cancellation of appointment of another IP Advocate of Delhi High Court as Member Technical Trademarks,the civil writ of the said IP advocate is still pending in the Delhi High Court, as in his case, his selection was cancelled on flimsy grounds, even after selecting him in the interview by interview panel on on the behest of former JS of DIPP, who was unauthorizedly present in the interview.

    One thing is clear from all these appointments made so far that DIPP officers are not interested to appoint advocates in this post except solely inducting the officials of law ministry and CGPDTM etc. as members in IPAB, as DIPP officers certainly sure and know that even though these officials join this post after their retirement or few years but still they will be loyal to their masters in the ministry.

    See how simply advocates are kept out of appointment ambit of as JUDICIAL MEMBERS in IPAB. The irony is that our law makers allow advocates having more than 10 years of practice in high courts are eligible for judgeship in the High Court’s but here in IPAB the same advocates are not eligible for judicial member posts in IPAB and only retired officials of ILS are eligible for post of judicial members after their retirement why ? because, the DIPP simply wants to keep out advocates from these posts as member judicial.

    Reply
  9. AvatarIPvocal

    I am sure many of ILS retirees may have not seen the Trademark books or know of practically trademark law or the doors or buildings of the High court’s leave apart practicing there, if they had good practice in the their respective courts than why would somebody will join the job in the government as second class BABU.

    I have spoken to one of advocate colleague, who had appeared in the interview for Member Technical in IPAB, the former joint secretary Mr. V Bhaskar JS had played a pivotal role in selecting candidates as Member Technical for trademark and patent in IPAB, though Ms. Usha had also attended the interview as IPAB nominee and has actually rather totally toed with the view of the former JS for selection of candidates ( recently selected nominee Mr. Ravi and Parmar, who were highly qualified in comparison to other candidates.

    The views expressed by IPR expert Advocate, who had already stated in his reply about Ms. Usha’s elevation as member technical and later as vice Chairman in IPAB, Present vice Chairman, had submitted few citations in her support as IP lawyer at the time of her appointment as member technical, most of the cases she had cited, she has never argued that cases and only she represented as counsel thereby marking her presence in the order and even the cases list she had submitted to DIPP in which she claimed to be her cases actually all the cases were of her senior counsel Mr. Veeraraghvan where she was working as mute junior, I do not think if she has ever argued in the high court leave high court she has never argued before the deputy registrar of trademark.

    I am saying it with all documentary evidence of many bunch of papers which are in my possession that Ms. Usha’s in her whole Career as IP advocate, she had argued only two cases, which were cited by her actually argued by her before her elevation as member of IPAB that too before former chairman of IPAB. As already said in this blog post that I am very much certain and agreed with reply of IP expert that she was selected due to former chairman influence in DIPP.

    Even at the time of her elevation as VC the other patent member was deliberately kept out of VC selection ambit and he was kept out of the VC interview and only two candidates were called for VC IPAB interview one candidate who is current VC and other candidate was called, who was Member Technical Trademarks the famous and known for citing judgments of RPC of the year 1935 in support of his candidature as Member Technical Trademarks in IPAB. Though in the year 2009, the present Vice chairman was initially reluctant to be a candidate for Vice Chairman post but later may be she had agreed for the said interview. The selection committee had selected initially Mr. Sharma a Judicial Member of CAT ( Central Administrative Tribunal) as Vice chairman but later the said member withdrew his candidature and consent for the said selection and after wait of nearly seven months DIPP belatedly did not called for new selection of VC even though Cabinate minister asked DIPP officers for calling fresh names for the said post but DIPP officer due to reasons best known to them did not called for fresh panel and rather one can say now that is by default with the tacit help of DIPP officers Ms. Usha’s became vice chairman. So now we the IP Lawyers be ready to see two elevations in the year 2014 after retirement of this Hon’ble Chairman in July 2014 one of present VC who is aspiring to be a next chairman and other Member Technical Patents, who is aspiring to be next vice chairman of IPAB.

    In my view, this IPAB should be disbanded altogether and we should revert back to old system and put back our all cases to respective High courts.

    Reply
  10. AvatarAnonymous

    Of late these appointments have been taking regionalism colour, which is really bad for Indian federal structure, the selection of the candidates for this Tribunal on the basis of a particular regional basis is biased and a bad trend and it should be shunned and condemned by us all together as one.

    I have heard the DIPP BABUS have been selecting candidates only person related to particular regions as if this Tribunal belongs to that region only. It is really a bad trend, which have started in recent past.

    DIPP is surely to be blamed for this muddle.

    Reply
  11. AvatarAnonymous

    I fully agree with IP Vocal. I know most of the details he/she has mentioned. In the last write up @9.16 PM he/she says that “this IPAB should be disbanded altogether and we should revert back to old system and put back our all cases to respective High courts”. I agree with disbandning of the IPAB and revert back to the old system. However, so long as this IPAB is there, we cannot do anything.
    Hence we must try to see make efforts of the winding up of the IPAB. I know it is not an easy job and is rather perhaps equal to impossible (though not impossible) on account of the vested interests in the hierarchy. The High Courts/Supreme Court are not going to help. NEVERTHELESS, we must try. After all the freedom is not earned/gained in a day. It requires continuous efforts.
    I have come to know that the writ of an advocate SANJEEV KUMAR CHASWAL which he had filed in Delhi High Court is to be listed on 7th March, 2012. Let us see what happens. The DIPP had tried to play tricks in the reply to the writ petition. DIPP, it has come to be known that deliberately had filed a had document by defacing/covering the upper half portion thereof which was very crucial for the point raised. Now that DIPP has filed the full document and has exposed the DIPP about the factual position.

    Anonymous 6.43 AM has raised a very valid point which should be taken very seriously. In fact as per the number of cases, the IPAB should be stationed in Delhi and not in Chennai. At the time when IPAB was constituted, our concerned minister was from particular region who wanted to please his regional people which has resulted in having the permanent office of the IPAB in Chennai, otherwise there is no reason why the seat of IPAB should be in Chennai.

    Reply
  12. AvatarIPR expert Advocate and Attorney

    Dear Prashant
    As you have asked, I am telling there were only 8 candidates for the post of Technical member patents and 8 or 9 candidates for the technical member (trade mark). Mr. Bhaskar J.S of DIPP along with this VC usha have already decided to select Ravi and Parmar. This interview is all a big eye wash. How even this Chairman was selected and her selection has not come thorugh the recommendation of CJI but with the recommendation of CJ of Chennai HC and with the connivance of DIPP because of the recent WP in Chennai HC by spicyIP blog leader Shamnaad Basheer through the the chennai advocate Arvind Dattar. This Chairman is due to retire in July 2013 and this VC will surely get that Chairman post whether she is fit or not! Even that chandrashekharan who was the earlier patent member why he has not been considered for this VC post, because Negi is interested in Usha to become VC and earlier chairman Jagadheeshan is also interested in Usha to become VC not this Chandarshekhar! what is the use for these two chairmans (Negi and Jagadheeshan) or DIPP when this chandarshekhar comes as VC? All vested interested guys!! Like this Chaswhal was kept out by Usha and Bhaskar though I am technical graduate with law degree and 15 years bar experience will not be considered by DIPP IAS Babus!! As IP Vocal said closing IPAB is the best instead of getting such bad decisions by Parmar without evidence in that revoking that patent and you will have series now on as there are lots of Patent hearing going on in Chennai. Again Ravi will join by giving bad decision like parmar. However this IPAB should not be shifted anywhere but fit to be closed rightnow as such useless inexperienced people like negi, usha, parmar and ravi will rule us. what a pathetic situation?

    Reply

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