In a recent order, dated 12 June, 2012 (available over here), the Intellectual Property Appellate Board (IPAB), acting on a petition filed by Tata Chemicals, has revoked Indian Patent No. 195937 granted to Hindustan Unilever Ltd. (HUL) on the 26th of August, 2005 for the invention of a ‘filter cartridge’ that is used in HUL’s Pureit brand of water-filtration devices.
While Tata Chemicals was represented Senior Advocate P.S. Raman who was briefed by Essenese Obhan, Managing Partner of the promising young patent law firm – Obhan & Associates; HUL was represented by veteran patent litigator – S. Majumdar of Majumdar & Co.
The judgment, penned by Justice Prabha Sridevan, is very interesting and covers some new ground with respect to disclosure requirements under Section 8 of the Patents Act, 1970 and also the role of expert witnesses in Indian patent litigation.
For those of you curious about the face behind Mint’s excellent reporting on IP, please do click here to view a video of C. H. Unnikrishnan explaining the significance of the IPAB’s decision.
A. The invention – Patent No. 195937: The claimed invention is constructed in such a manner that it forces the water introduced in it to climb in an upward direction through the filter media before exiting the invention as a purified water. The claimed advantage of such a mechanism was an increased rate of flow of water through the filter cartridge when compared to traditional water filters which forced water through the filter cartridge in a downward mechanism. The reason for this increased rate of flow of water was because water moving in an upward direction does not face the problems of ‘airlocks’ and ‘channelling of water’ which are common problems faced by water moving in a downward direction through a filter media. Of course, this is an over-simplified version of the actual patent specification and although the claimed invention may seem simple, the IPAB makes it very clear that simplicity was not its main ground for revoking the patent.
B. The ‘anticipation’ & ‘obviousness’ challenge: Tata Chemicals challenged the patent as being anticipated and lacking an inventive step when compared to prior art. The IPAB examines the prior art in considerable detail and appears to have found several prior art documents anticipating and rendering obvious the present invention.
In one such instance the IPAB states “It is not the simplicity of the invention that makes us hold it is not patentable It is not patentable because it is not new as seen from US ‘260, and it is obvious as seen from US ‘402 which provides for “the vertical upward flow through the absorbent cartridge” which was also addressed to remove the tendency of water to flow in channels leaving portion of absorbent untouched because air remains in the cartridge. The problems of air bubbles, channelling and non-uniform flow are all mentioned here. We are unable to see either novelty or inventive step in the invention.”
C. Section 8 challenge: Section 8 of the Patents Act, 1970 requires Indian patent applicants to disclose all details of corresponding foreign patent applications. While the Section 8 argument has been used previously in context of patent prosecution in foreign countries, the issue that cropped up in this present case was whether Section 8 could be extended to patent prosecutions before international non-governmental organizations under international treaties – the context in the present case being the International Preliminary Examination Report (IPER) issued by WIPO under the PCT.
The HUL patent application had been issued an extremely adverse IPER by WIPO and the same had not been disclosed before the Indian Patent Office. The most significant piece of prior art cited in the IPER, was reportedly an EP-1106578. Coincidentally this same EP patent was also cited by the Indian Patent Office during its examination and HUL managed to overcome the objections. HUL therefore argued that the non-disclosure of the IPER was inconsequential, since the prior art cited in the report, was duly considered by the Indian Patent Office. The IPAB however considered the suppression vital enough to constitute a separate ground for revocation of the patent. In pertinent part the IPAB states, after a detailed discussion into Section 8,
“106. The respondent cannot be heard to say that since European Patent No.1106578, the prior art was anyway considered by the Controller and no prejudice was caused by not disclosing the ISR or IPER. It is not enough that the Examiner knew that this prior art was there, the respondent ought to have disclosed the results of the IPER. The IPER rejected the claims 1 to 3 on both the grounds of novelty and inventive step. It is not for us to conjecture what effect this might have had on the examiner here if he had the benefit of the IPER. This is the object and purpose of enacting Section 8. The Report says that this information would be of great use for a proper examination of the application. It is no answer to say anyway the office looked at EP’578. The Patent Office did not see the IPER. The learned counsel for the respondent submitted that this lapse is of a de-minimis nature, we do not think that honestly furnishing the information or particulars allows a de-minimis qualification.”
Moral of the story: Start filing your IPERs and ISRs with the Indian Patent Office.
D. The role of expert witnesses: This judgment is probably one of the first to discuss the roles of expert witnesses in a patent revocation petition. Some of the important observations are as follows:
(i) “An expert is a witness of fact and his evidence is in the nature of an advice. It is not his opinion but the reasoning with which he supports his opinion, that is the principal contribution of the expert”;
(ii) “We find as a rule the experts called upon by the parties before us file affidavits. These affidavits are naturally drafted by the respective advocates. So they read almost like the statement of case or counter statement depending on who has called the witness. Instead it may be better to just get their opinion in the form of an affidavit. This opinion will deal with the prior art, the common general knowledge, this invention and why the expert is of the opinion that it is anticipated or not, it is obvious or not. Even when the affidavit has to counter the opinion of the other side expert, it is better merely to say that the expert disagrees with the opinion and for what reason.”
It is very nice of you to have covered this case. My personal opinion is that IPAB is wrong with respect to its judgment on Sec. 8 more particularly when the said prior art was in any case considered by the Indian Patent Office. In this connection it may be pointed out that recently we had meting with CG who was informed about the unnecessary requirement of filing of certain documents which are in any was available on the website of WIPO with respect to the PCT applications, then why are we required to file the copies in Indian Patent office and that too in duplicate. The CG has now issued PUBLIC NOTICE on filing of PCT National Phase Applications in India being CGI Public Notice1P0/2012/15 Dated:02.07 .20 12. The relevant portion is as follows:
Indian Patent Office (lPO) continuously endeavors to improve its efficiency so
as to render better services to the public. In an effort to simplify the process of filing
of a PCT National Phase Application, the IPO has, in coordination with the
International Bureau (lB) of the World Intellectual Property Organization (WIPO),
acquired online access to the PCT International Applications and related documents
available with the lB. The benefits of this coordination will be passed on to the
stakeholders as redundant processes will be eliminated. An Applicant will no more be
required to file multiple copies of documents already available with lB, as IPO will be
able to utilize such documents accessed electronically from lB. This would also result
in more efficient usage of the valuable resources of IPO and reduce errors in data
entry, thereby obviating the need for corrections in many cases.
I se no reason for the applicant to file a document which is available in the website of WIPO. Had the Indian Patent Office not considered the prior art citation, it was understandable, but not in the given circumstances as in the present case.
In the present case, the Indian patent was granted before the WIPO could publish the IPER. Also the EP document is in German language and only the IPER which held all claims to be lacking in novelty an inventive step was in English.
In my experience I have never seen Indian examiner citing any prior art which is not cited by WIPO or EPO or USPTO. Indian Examiner only cut and copy the exact content of ISR, IPRP, IPER or Office action of EPO or USPTO.Yes clear Copyright violation. In fact Indian Examiner know better than applicant about the search and exaination of other countries. In such situation I do not understand the requirement of Section 8 which would have made sense in 1970 but certainly not in 2011. I hope IPAB and COURT consider the relavence of Section 8 in today context.
Section 8 is double edged sword. In Cemtura it worked in favour of Majumdar now back fired!!!!!
While I do not want to get into specifics of which action favoured which attorneys, I have a positive aspect to report.
For the last few years, we too were used to seeing copy pasted Indian FERs, recently our team was issued with a FER that an excellent rationale connecting the various prior arts cited. While some of them were connected with the earlier WO ISR, we were pleasantly surprised with the analysis of the Examiner. On the negative side, this will mean that we will have a much higher burden to cross over for getting that patent to grant.
Freq. Anon.
This reminds of a recent incident in one of the Patent Office branch.
My client (applicant) had been asked to attend hearing in a case after the last date, though the applicant has replied to FER, 10 months before the last date for sorting out the objection raised in the FER and in spite of reminding the concerned Controller about the last date. The prior art cited in the FER was irrelevant and any men in the art can understand the same. Hence it was suitably replied and made some minor amendments where ever it is feasible to meet the other objections.
Is it not illegal to send a fax message asking the applicant to attend hearing that too after last date, instead of sending the second examination after studying the reply to FER before the last date giving sufficient time to respond?
When I raised this legal validity of calling for hearing after the last date, at the time of hearing, I am curtly told to lodge complaint in this regard to higher authorities, if so desire.
I am given to understand that one internal administrative order issued by the former CG asking the controllers not to reject any case without giving opportunity to hear the applicants viewpoints, even after the last date for sorting out the objection to the satisfaction of the controller is over. Now this is being taken as an alibi by the Examiners and controllers for sitting over the files without any rhyme or reason.
During hearing I could realize that neither the Examiner nor the Controller has gone through the complete specification properly. They have not at all understood the invention and lack the basic knowledge to understand the Engineering drawing. It was really surprising that how dare they are to call an applicant that too after the last date for hearing without even doing proper home work.
Who will rein them? Only solutions is to allow the Controller to reject the application on novelty, so that an appeal can be filed with IPAB against the adverse decision, if made, and get strictures issued to such of those controllers and examiners. But is not placing an applicant in a disadvantageous position, for no fault his, but only due to the arrogance and lack of basic knowledge and lethargy on the part of Examiner and the controller.
You can wake up a person who is sleeping, but not a person who is pretending to sleep.
I second Anon’s opinion on redundancy in submitting documents already available with the IB, specially after the public notice dated 2nd July (here http://ipindia.nic.in/iponew/PublicNotice_PCT_02July2012.pdf) where it is specifically mentioned that the IPO has obtained online access to the PCT International Applications and related documents
available with the lB. Considering this notification and the fact that Examination reports repeat the ISR and IPER verbatim, it is unnecessary and burdensome on the Applicant or their Agent to the submit these documents (unless these reports are not available in English).
Quite unfortunately there are considerable numbers of officers in the IPO who not only lack common-sense and technical insight but are also mindless in their approach and their presence in the IPO has become more or less liability and burden over the Indian Patent System.
Globally there had been a concern and appeal to avoid unnecessary printing wherever possible but unfortunately India continue to maintain ill-reputation for being insensitive towards environmental concerns. Despite these documents such as ISR and IPER are easily available online but the IPO still want hard copies submission neglecting unnecessary duplication and environmental concerns.
Quite unfortunately there are considerable numbers of officers in the IPO who not only lack common-sense and technical insight but are also mindless in their approach and their presence in the IPO has become more or less liability and burden over the Indian Patent System.
Globally there had been a concern and appeal to avoid unnecessary printing wherever possible but unfortunately India continue to maintain ill-reputation for being insensitive towards environmental concerns. Despite these documents such as ISR and IPER are easily available online but the IPO still want hard copies submission neglecting unnecessary duplication and environmental concerns.
There is no merit for revoking a patent merely hard copy of IPER was not submitted to the IPO despite been available publicly.