A few days ago, as reported by the Financial Express, the Chennai patent office rejected a patent application filed by Eureka Forbes for its ‘iron removal water purifier’ after a pre grant opposition filed by Hindustan Unilever Ltd.
Hindustan Unilever argued that “the usage of ion exchange resin for the removal of iron as well as its usage in gravity water filters is well known in prior art.” Moreover, as reported, Hindustan Unilever contended that Eureka Forbes had failed to provide comparative tests with respect to the closest prior art and had also failed to provide information regarding the distinguishing features of the invention and the unexpected effects it achieved.
M Ajith, Assistant Controller of Patents and Designs, Chennai, rejected Eureka Forbes’ patent application as the claimed invention was held to be obvious and lacking inventive step.
These two companies have been battling out other patents too.
In 2008, SpicyIP reported on the absurd ‘double patenting’ case, were both Eureka Forbes and HUL were allegedly granted a patent for identical technologies. HUL had filed an application for this technology in 2002 but was granted a patent only in 2006, by the Mumbai patent office. In the meantime, Eureka Forbes was granted its patent in 2005, by the Chennai patent office. Eureka’s application was made after HUL’s application and HUL had filed a pre grant opposition. However, the opposition as not heard and the Chennai patent office went on to grant the patent without hearing the pre grant opposition.
HUL then filed a post grant opposition, to which Eureka Forbes replied after the statutorily prescribed time limit. Instead of automatic revocation, the patent office went out of its way to condone the delayed reply. Against this act and other acts of the Patent Office, HUL filed a writ petition before the Madras High Court.
HUL also filed a patent infringement lawsuit before the Delhi High Court alleging infringement by Eureka Forbes (CS (OS) 740/2006). This case was filed in 2006 and is still pending.
Through order dated 20 January 2010, the patent office dismissed HUL’s post grant opposition (here). It is not clear whether HUL has appealed this decision. Pertinently, Eureka Forbes had also filed a post grant opposition challenging HUL’s patent. On 17 Aug, 2012 and then on 20 March, 2013, HUL informed the Delhi High Court that its patent had been revoked and an appeal had been filed. This appeal appears to be pending.
The outcome before the IPAB, in both cases (HUL appealing the dismissal of post grant opposition (if at all) and HUL’s appeal challenging revocation by the patent office), will help clarify whose patent will stand. As Shamnad pointed out previously in 2008, either both patents stand (indicating that both covered different technologies. In which case, HUL may lose the infringement suit) or one is revoked (indicating identical technology. In which case, HUL may have a stronger chance since it filed its patent application first)