Patent

The Morality of Sexual Pleasure: Patent Office Training?


(This post has been co-authored with Prof. Shamnad Basheer)

Yesterday, we highlighted a problematic Patent Office decision, rejecting a claim to a sexual stimulation device (a unique vibrator) on the grounds of immorality under Section 3(b) of the Patents Act. More specifically, the Controller held:

1. That an apparently innocuous looking sex aid device to further intimacy between couples is “obscene”

2. That the said device is not useful or productive

3. That the law does not take kindly to sexual pleasure

4. That Section 377 applies, despite the said provision applying only between a person on one end and a person/animal at the other. Not a vibrator!

The last paragraph of the decision reads thus:

Applicant or applicant’s agent neither appeared for the hearing on the scheduled date nor filed any written submission in response to the hearing notice. Therefore, in view of the outstanding objections as above, this application no. 4668/DELNP/2007 is hereby refused under section 15 of the Patents Act.

Some (including a rather senior official at the Indian Patent Office) took this to mean that the applicant hadn’t bothered to respond to the objections raised by the Patent Office. If only they had bothered to dig a bit more. What was even funnier was that a number of IP attorneys were falling over themselves to “like” his social media comment (possibly to endear themselves to him). As we’ve noted in the past, the reason behind some of the worst Patent Office excesses is that quite often, IP attorneys (with some notable exceptions of course) lack the courage to take on the Patent Office, despite blatantly wrong orders/illegalities. They worry that any adverse remarks against powerful patent officials would prejudice their standing in other cases. Hopefully the younger generation of IP lawyers will reverse this ridiculous reverence.

Anyway, a review of the prosecution history of this particular patent application reveals that the Applicant had indeed filed a reply to the first examination report. As can be seen, the applicant (through its lawyers, Anand & Anand) clearly stated that it did not agree with the objection raised by the Controller, noting as below:

The Learned Controller appears to have objected to the claims on the basis that they are directed to a sexual device that can be used to stimulate sexual desire, and consequently could be contrary to public order or morality. We respectfully submit that the claims as amended are directed to a sexual stimulation device that is dimensioned to be worn by a female during intercourse. In fact, one embodiment of the presently claimed device has been successfully marketed as the We-vibe, which is a couples device designed to be worn while making love and can be used by couples to improve their sexual relationship.

The presently claimed device is specifically designed for use during penile-vaginal intercourse (as evidenced by the teaching throughout the present application where the term “intercourse” is clearly intended to refer to penile-vaginal intercourse). The flexible connecting portion of the device is narrow to permit sexual intercourse when the inner arm is inserted in the vagina. In this way the device can be used to encourage couples to participate in penile-vaginal intercourse, thereby enhancing an activity that will occur anyway and as such is not contrary to public order or morality. Frequency of penile-vaginal intercourse is associated with sexual satisfaction, relationship satisfaction and good health (see attached reference Costa & Brody, Arch. Sex. Behav.(2012) 41: 9 — 10).

Based on the foregoing, we respectfully submit that the presently claimed device is not contrary to public order or morality but would rather benefit the public, for example, by improving relationship satisfaction and health.

And yet despite this response, the Patent Office insisted on raising the very same objection. Culminating finally in a rejection decision that was unsound in both logic and the law.

Patent Office Training

The senior patent official mentioned earlier first tried to justify the Patent Office decision on the (wrongly assumed) ground that the applicants did not respond to the Patent Office objection. To which our response was: are we a banana republic? Just because a party does not respond, does this mean that the Patent Office can decide anyway it wishes. In blatant derogation of the law and logic?

After the said official finally realized (after one of us responded to him) that the applicant did in fact respond to the FER, he argued that one cannot blame the Patent Office for faulty decisions since they are not experts in the law. A point that we deeply sympathise with. For it’s clear from the decision that the said controller is deeply wanting, in both the law and logic. But unfortunately, this cannot serve as an exculpatory factor. For isn’t it incumbent on the government to train patent officials in the law? After all these are quasi-judicial authorities and are called on repeatedly to interpret the law. PH Kurian (a former Controller General and one of the best things to have happened to the Indian Patent Office had mooted this idea and one of us had referred him to NLU Delhi (which as I understand did start some training programmes in the law for them). As we quipped to the senior patent official on Twitter: “why don’t we spend more time on giving them more training in Indian law? And less time in indoctrinating them through USPTO/EPO style training?

Secondly and perhaps more importantly, this raises another important issue (one that we alluded to in the last post). When the Patent Office struggles with its regular job of determining the technical merits or otherwise of an invention, can we expect them to wade into issues of morality? Do they have the institutional competence to serve as an arbiter on this count? 

Utility of Sex Aids?

As we’d mentioned in the earlier post, the legality of this device (under India’s obscenity laws) will have to be balanced against other competing considerations, such as freedom of speech. And more importantly, against considerations of its overall utility in terms of better relationships between partners, enhancing sexual health, intimacy etc.

Speaking of utility, did you know that vibrators were apparently first used to further public health? Apparently, it was used by doctors in the 19th century to cure women of hysteria.

Moving to the present day, doctors now counsel couples to use such devices to further intimacy.

Further, the ITC complaint referenced in the earlier post  highlighted the diverse uses of this sex device meant to spark up a couple’s love life.

“Such devices are useful in a number of contexts, including improving relationships, increasing pleasure for a partner, sexual-disorder treatment, promoting monogamy and marital stability thereby reducing transmission of sexually-transmitted diseases, and increasing satisfaction of sex life of an individual and thereby contributing to an overall wellness/productivity gain for the individual.”

Comparative Patent Position

The Patent Office also referred to a Japanese decision which apparently rejected the application on similar grounds. The Controller noted as below:

The instant application’s corresponding Japanese national phase Application for patent no. 2007-545799 is refused on the ground of affecting public order and morality as follows “It means that a woman uses the invention concerning the Claims 1-18 of an application concerned for either the object for autoerotism assistance or sexual intercourse, sexuality is stimulated in vain, and being a thing with a possibility that it may be used as the ** implement which produces ** of abuse, or a self-** implement is admitted. Therefore, an invention concerning Claims 1-18 of an application concerned is an invention with a possibility of injuring health or public order, good customs, or the public. Regulation of Article 32 of Japanese Patent Law cannot receive a patent.”

By way of background, Article 32 of Japanese Patent Act is similar to section 3(b) of the Indian Patents Act and reads as below:

any invention that is liable to injure public order, morality or public health shall not be patented.

A tad bit surprising that Japan (known for its rather creative sex toys) refused this patent on grounds of morality. As this piece notes:

“..the [Japanese] sex industry is the second largest industry in the country. The combination of traditional attitudes with a post industrial technological complex has given rise to some strange phenomena in the country’s sexual culture.

 …In the Shibuya district of Tokyo is The Vibe Bar Wild One, which has quite a philosophy: “See, touch, and feel.” For 3,000 yen, women and couples can sample some of the over 300 domestic and imported vibrators displayed on the wall behind the bar for up to 90 minutes while they sip their drinks. With close access to the Shibuya metro station, the bar even features English-speaking staff to cater to curious tourists.”

Given this oddity (Japan refusing a claim for a sex toy on the grounds of morality), we probed a bit further and found that Form 3 submitted by the Applicant to the Indian Patent Office contradicts the stand of the Indian Patent Office. And so does the ITC complaint referred to in our previous post. Both these documents reflect the status of the patent as ‘abandoned’ and not ‘refused’! A commenter on our blog however insists that the patent was refused. Can someone help clarify?

Image from here

11 comments.

  1. Krishnaraj Pundareekam

    A quick check at the INPADOC legal status of the Japanese publication JP2008523850 reveals the following:

    I paste the latest activity here:

    “Event date : 2011/12/07
    Event code : A02
    Code Expl.: – DECISION OF REFUSAL
    EFFECTIVE DATE : 20111206
    FURTHER INFORMATION : JAPANESE INTERMEDIATE CODE: A02”

    The legal status can be seen here: https://worldwide.espacenet.com/publicationDetails/inpadoc?CC=JP&NR=2008523850A&KC=A&FT=D&ND=3&date=20080710&DB=&locale=en_EP

    definition of event codes can be seen here: http://help.acclaimip.com/m/acclaimip_help/l/378003-legal-event-code-lgl_code

    It indeed appears that the application has been refused.

    -Krishna

    Reply
  2. Anonymous

    Please find below the Google translation of the Notice of Refusal for Japanese Patent Application No. 2007-545799

    Notice of reasons for refusal
    Patent application number Japanese Patent Application No. 2007-545799
    Drafting date June 17, 2011
    Patent office examiner Yoichi Iwata 9436 3E00
    Mr. Nobuyoshi Watanabe (1 person outside) like applicant for patent
    Applicable Article Article 32
    This application should be refused for the following reasons. An opinion on this
    If you do, please submit your opinion within 3 months from the date of shipment of this notice.
                   The reason

    The invention according to the following claims of this application is based on the provisions of Article 32 of the Patent Act as follows
    I can not obtain a patent.

                     Record
    Claims 1 to 18 of the present application of the present application can be applied to a case where a woman himself. It is intended to be used for either, irritatingly stimulating libido, disturbance
    We acknowledge that it is a thing that could be used as an impersonator or self-salutary tool that causes bad weeds.
    Therefore, the invention according to claims 1 to 18 of the present application is a public order, good manners and customs
    Or it is an invention that may harm public hygiene, and according to the provision of Article 32 of the Patent Law
    I can not get pardon.
    Inventions according to claims 1 to 18 can receive patents under the provision of Article 32 of the Patent Law
    Since it is obvious that it can not be done, examination of patent requirements such as novelty and inventive step not done.
    Inquiries about the contents of this reason for refusal or you would like to have an interview
    Please contact me at the following address.

    Patent examination Part 2 Welfare / service equipment Iwata    
    P.2
    TEL. 03 (3581) 1101 Ext. 3344 FAX. 03 (3501) 0672 

    Reply
  3. Anonymous

    The Google translation of the reason of refusal of Japanese Patent Application No. 2007-545799 (Japanese document available on Japanese Patent Website) is presented below.

    otice of reasons for refusal

     Patent application number Japanese Patent Application No. 2007-545799
     Drafting date June 17, 2011
     Patent office examiner Yoichi Iwata 9436 3E00
     Mr. Nobuyoshi Watanabe (1 person outside) like applicant for patent
     Applicable Article Article 32

     This application should be refused for the following reasons. An opinion on this
    If you do, please submit your opinion within 3 months from the date of shipment of this notice.
    .

                    the reason

     The invention according to the following claims of this application is based on the provisions of Article 32 of the Patent Act as follows
    I can not obtain a patent.

                     Record
     Claims 1 to 18 of the present application of the present application can be applied to a case where a woman himself /
    It is intended to be used for either, irritatingly stimulating libido, disturbance
    We acknowledge that it is a thing that could be used as an impersonator or self-salutary tool that causes bad weeds
    .

     Therefore, the invention according to claims 1 to 18 of the present application is a public order, good manners and customs
    Or it is an invention that may harm public hygiene, and according to the provision of Article 32 of the Patent Law
    I can not get pardon.

     Inventions according to claims 1 to 18 can receive patents under the provision of Article 32 of the Patent Law
    Since it is obvious that it can not be done, examination of patent requirements such as novelty and inventive step
    Not done.

     Inquiries about the contents of this reason for refusal or you would like to have an interview
    Please contact me at the following address.

        Patent examination Part 2 Welfare / service equipment Iwata    

    P.2
    TEL. 03 (3581) 1101 Ext. 3344 FAX. 03 (3501) 0672 

    Reply
  4. Amit

    As in case of Japanese prosecution, we need to have machine translation of the Japanese text to English from JPO (or the similar feed from the EPO as is the case in the earlier comment). So whenever there is an “office action” or “examination report” from JPO is machine translated to English, it translates in to “Notification of Reason for Refusal” (“NRR”). So when one checks any Japanese application prosecution wherein there is no allowance in the first office action there will always be a NRR to which the applicant replies (generally..!! to get a grant).
    Coming back to this specific case, it is true that the claims were rejected under article 32 vide office action dated 21/06/2011 (penned 17/06/2011) to which the applicant did not file any response (contrary to the India prosecution where they rebutted the similar objections in FER), and the application thereby stood ‘refused’, which is practically ‘abandoned by not filing response to outstanding office action.
    So I believe the status “abandoned” provided by the applicant in the Form-3 should be the appropriate interpretation for this case and not “refused”.

    Reply
    1. Krishnaraj Pundareekam Chinniah

      This is an interesting issue. I am quoting you on this: “the application thereby stood ‘refused’, which is practically ‘abandoned by not filing response to outstanding office action”.

      I am not sure where this is coming from i.e., considering the refusal and abandoning the application to be actually the same or that we are allowed to appropriately interpret the legal outcome of a different jurisdiction (Japan in this case). Could you quote any basis for this (i.e, “appropriate interpretation”)?

      I understand that, for instance, no response to the FERs in India under section 21(1) of the Patents Act would render the application for a patent be “deemed to have been abandoned”. However, this does not mean that it should be the same in Japan. I’d be curious to know also what the Indian patent office’s take on it.

      Just as a side note: furnishing information that is false to the knowledge of the applicant is a valid ground for opposition (pre and post grant) under sections 25 (1) and (2) of the Patents Act. Therefore, mentioning “abandoned” in Form 3 where the case (the foreign application) was actually being “refused” on whatever grounds seems to be falling in a grey area. I’m not sure of what the effect of this would be.

      Could someone throw some more light? Any prior decisions of revocation based on, inter alia, false information?

      Reply
      1. Amit

        Yes, I did actually meant “abandoned u/s 21(1)” by the expression “appropriate interpretation” because the applicant didn’t “retaliate” in Japan as they did in India.

        Reply
        1. Krishnaraj Pundareekam Chinniah

          IPAB order no. 166 of 2012 (from Justice Prabha Sridevan), paragraph 102 seems to say otherwise. The Applicant seemed to have mentioned “pending” instead of “terminated” as a legal status of a GB application and among other things, this incorrect information, has somewhat contributed to the revocation of the patent. Appropriate interpretation indeed seems a risky business.

          Reply
  5. Vinit Bapat

    A “final refusal” dated December 2, 2011 is uploaded on JPO after the examination report mentioned above by various people.
    The final refusal says: This application is refused based on the reasons mentioned in the examination report dated June 17, 2011.”
    Thus, the Japanese application is actually refused and not abandoned since the “final refusal” can be seen on the JPO website.

    Since “rejected” gives a negative image, I think people tend to mention “abandoned” in Form 3 for such applications.

    Reply
  6. Confused

    I would be interested to learn whether the Patent Office’s decision is compatible with India’s obligations under TRIPS Article 27.2:
    “Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, PROVIDED THAT such exclusion is not made MERELY BECAUSE the exploitation is prohibited by their law”.

    Reply
  7. Amit

    More from around the glob on obscenity and intellectual property protection. This time for copyright and from Israel.
    A recent ruling given by the Israeli Magistrate Court in Herzliya, in the case of Sex Style v. Abutbul, the plaintiff, a producer of pornographic movies, sued the defendant, an individual who operates an adult website, for copyright infringement. It was alleged that the defendant’s website provided links without authorization to 15 pornographic movies. While the court ruled that the movies are entitled to copyright protection, it declined awarding statutory damages for infringement on the ground of such content, being obscene, was therefore illegal.
    Read the full story at – http://ipkitten.blogspot.com/2018/08/can-copyright-be-trumped-by-penal-law.html

    Reply
  8. Sathya

    Its very simple. There is no provision in India to abandon the application after summons for Oral proceedings were issued. An application can either be abandoned u/s 9(1) of the Patents Act for failing to file a complete specification within one year of filing provisional specification, or u/s 21(1) of the Act for failing to respond to objections in First Examination Report (FER). If the applicant files a response to FER but later fails to appear when summoned for oral proceedings in view of outstanding objections, its the practice of patent office to refuse the case u/s 15 of the Act in view of outstanding objections that are not complied with, and is hence not treated as abandonment, unlike the similar situation in USPTO and EPO where failure to respond to office action results in Abandonment and not refusal.

    Whats more sad is the strategy of refusing the application with mere one-liners (trust me, some controllers won’t even write this much) stating that the application is refused since applicant’s agent didn’t attend the hearing, and not on merits. Same with Decisions related to ‘ Grants’ too. We can see either one-liners or None.

    While interpreting a particular HC or SC judgment, we can at least feel at times that the law doesn’t lie in the pages of books but in the minds of men, from the way it is interpreted but with regard to what happens in Patent Office, only God knows. 99% of the refusals are a result of failure to attend oral proceedings and the pertinent orders are only ‘one-liners’ after reproducing the content of summons for oral proceedings. Same with Grants – the orders are either one liners stating the objections are complied and hence patent is granted, or None – Its just granted.

    Reply

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