Preparation Of Patent Documents – Intellectual Property Rights Laws and Practices Important Questions
Read the following case on patent law and answer the questions that follow:
On 7th July 2005, Viraj Ltd. (Viraj) was granted a patent under the Indian Patent No. 195904, with a priority date of 16th July 2002. The title of the patent application was “an improved internal combustion engine working on four-stroke principle.” The invention was called DTS-i Technology and it related to the use of twin spark plugs located diametrically opposite to each other in a small displacement engine with the cylinder bore diameter ranging between 45 mm to 70 mm. According to Viraj, this placement of the spark plugs enabled better control over the ignition timing and lesser time was taken for the flame to travel during the process of combustion. The novelty also lay in the use of a sleeve to protect the spark plug which prevented exposure of the plug to the lubricating oil.
In 2003, Viraj launched ‘Inventa’, a motorcycle that employed the DTS-i Technology in respect of which the patent was then pending. In the first eight months of that financial year itself, Viraj manufactured and marketed 8,14,393 two-wheelers with the DTS-i Technology out of a total of 15,01,241 two-wheelers which were sold by it amounting to 54.25% of its total sales. In 2007, CVS Ltd. (CVS) announced the launch of a 125-cc motorcycle under the trademark ‘Sport’ which was to be powered by a lean-burn internal combustion engine of bore size 54.5 mm with a twin spark plug configuration just like that of Viraj. CVS also stated that on the 1st and 3rd of September, 2007, Viraj had issued certain groundless threats to dissuade CVS from launching ‘Sport’.
Hence, in October 2007, CVS filed a suit under sections 105 and 106 of the Patents Act, 1970 in the High Court, alleging that the statements made by Viraj on 1st and 3rd of September, 2007 constituted groundless threats, and sought the intervention of the Court to restrain Viraj from interfering with the launch of ‘Sport’. Further, CVS also filed an application for the revocation of Viraj’s patent before the Indian Patents Appellate Board under section 64 of the Patents Act, 1970.
Upon the announcement by CVS, Viraj filed a suit for permanent injunction under section 108 of the Patents Act, 1970 in the High Court to restrain CVS from using the internal combustion technology patented by Viraj and from employing the same in marketing 2-3 wheelers, including CVS’s proposed 125-cc ‘Sport’ motorcycle.
Vide its order dated 16th February 2008, the Single Judge of the High Court restrained CVS from launching the proposed 125-cc ‘Sport’ motorcycle with the twin spark plug engine technology, as Virajprima facie enjoyed the right of exclusive usage of the patent, granted to it by the Patent Office. The High Court held that Viraj had succeeded in establishing a prima facie case for the grant of an injunction, and while granting the injunction was pleased to observe:
“……Suffice it to say now at this stage, prima facie there is the novelty which means an invention and the same has been registered under the Patents Act…. novelty has been on the face of it proved by the applicant by marketing the product to such a large extent and also without objection fairly for long …” Aggrieved by the order of the Single Judge, CVS preferred an appeal before the Division Bench of the High Court. The Appellate Bench of the High Court held that Viraj had not succeeded in establishing a prima face case of infringement in respect of its patented twin spark technology.
The Division Bench observed that having regard to the nature of operation of the DTS-i Technology engine by virtue of twin spark plugs and that of CVS by virtue of receipt of air-fuel mixture through two different intake valves, their points of emphasis differed considerably, notwithstanding the use of twin spark plug in both the technologies. The Division Bench further observed that the operation of the invention as claimed by Viraj appears to be plug centric and that of CVS was valve centric, and on scrutiny of the claim as set out in the final complete specification, it held that it found it difficult to countenance Viraj’s claim that the CVS’s product specification infringed Viraj’s patented right. Accordingly, the Division Bench set aside the order of the Single Judge.
Aggrieved by the order of the Division Bench, Viraj preferred an appeal before the Supreme Court. The Supreme Court, while prima facie agreeing with the order of the Division Bench, ordered that although CVS shall be entitled to sell its motorcycle ‘Sport’, it shall maintain an accurate record of its entire domestic and international sale and directed the High Court to appoint a receiver in this connection.
In its interim order, the Supreme Court reiterated that in matters relating to trademarks, copyright, and patents, the provisions of the Code of Civil Procedure, 1908 which mandate that civil disputes should be heard on a day-to-day basis without any adjournments, except in circumstances beyond the control of the parties. It also directed that the final judgment should be given normally within four months from the date of the filing of the suit. The Supreme Court directed that the timeline stipulated above be adhered to ‘punctually and faithfully’ by all courts and tribunals in the country.
- What were the grounds under which the Division Bench of the High Court reversed the decision of the Single Judge of the High Court? Cite relevant case law.
- Elaborate on the order and the directions passed by the Supreme Court and how it may impact the IPR pending litigation.
- Explain the factors which constituted a prima facie case for the grant of an injunction.
- Write a note on the significance of laboratory notebooks/logbooks/record books in patent litigation.
- Discuss the typical parts of a patent application.
(1) The Division Bench of the High Court reversed the decision of the Single Judge of the High Court on the following grounds:
1. After considering the functioning and performance of products manufactured by both the parties, the Division Bench found that both the products were of distinctive features and different operations.
2. As to the nature of the operation of the engine, it was observed that the DTS-i Technology engine is operated by virtue of spark plugs, and the CVS engine is operated by virtue of receipt of air-fuel mixture through two different intake valves.
3. Technology used by the appellant was different from the technology used by the respondent.
4. The point of emphasis of both the engines is considerably different and does not bear identified resemblance even with the use of twin spark plugs in both the technologies.
5. It is further observed that Viraj’s engine is plug-centric and the CVS engine is value-centric.
6. On the scrutiny of the final complete specification, it was found that it is difficult to allow Viraj’s claim that CVS’s product specification has infringed Viraj’s patented rights.
7. Along with this, the distinction between patented claim and infringed product is well protected under provisions of the Patents Act, 1970.
Hence, infringement of the respondent’s patent by the appellant was not proved. Relevant Case Law is M/s TVS Motor Company Limited Vs. M/s Bajaj Auto Limited (MANU/TN/0976/2009, MANUSTN/0174/2008).
(2) Challenging the appeal allowed by the Division Bench of the Madras High Court, Viraj appealed to the Supreme Court by special leave. The most salutary effect of this case has been the guidelines passed by the Supreme Court directing expeditious disposal of IPR cases by the Trial Court. In this case, the Court was of the opinion that the matters relating to trademarks, copyrights, and patents should be decided expeditiously and finally by the Trial Court instead of merely granting or refusing to grant an injunction. Experience shows that in the matters of trademarks, copyrights, and patents, litigation is mainly fought between the parties about the temporary injunction which goes on for years and the result is that the suit is hardly decided finally. This is not proper.
The Court observed that once the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it, an adjournment of the hearing
beyond the following day is necessary. Only circumstances that are beyond the control of the parties would justify such an adjournment. It also opined that in suits relating to the matters of patents, trademarks, and copyrights, final judgment should be given normally within four months from the date of filing of the suit.
The direction of the Supreme Court seeks to enforce a provision under which, an adjournment on the ground that the leader of a party is engaged in another Court, shall not constitute a ground for an adjournment. This cause of adjournments is the biggest bane and obstacle in overcoming judicial delays, and if these guidelines are actually implemented by the Courts and Tribunal below, all IPR cases would be decided expeditiously. This augurs well for strengthening the rights of IPR holders in India.
Relevant Case Law is M/s TVS Motor Company Limited Vs. M/S Bajaj Auto Limited (MANU/SC/1632/2009).
(3) For an invention to be patentable, it must satisfy the triple tests of novelty, non-obviousness, and capability of industrial application and exploitation. While considering the facts of the case, the Court found that the invention satisfied the triple tests and was patentable. The Single Judge order of the High Court emphasized that in cases of the interlocutory injunction, including any patent action the plaintiff must prove or show as follows:
- prima facie case that the patent is valid and infringed.
- the balance of convenience lies in favor of the plaintiff and
- irreparable loss would be caused to Plaintiff by not granting an order of injunction.
The factors which constitute a prima facie case for grant of an injunction are as follows:
(1) Firstly, whether the applicant holds a patent over the technology under consideration. The certificate for grant of a patent by the appropriate authority in such cases is prima facie proof of the grant of a patent.
(2) Secondly, whether there is a commercial use of the aforementioned patented technology by the respondent/non-applicant.
In cases where there is a dispute between the parties as to whether the invention or technology claimed to be patented is patentable or not the tests applied by the Courts are the test of novelty non-obviousness and capability of industrial application and exploitation of the technology. In the relevant case-law cited i.e. Bajaj Auto Limited Vs. TVS Motor Company Limited, while considering the facts of the case, the Court found that the invention satisfied the triple tests and was patentable.
The Court was of the view that, upon the amendment of the Act which came into force on 20th May 2003, when a patentee files a suit for infringement based on the patent granted to him, the patent should be prima facie presumed to be valid, until the same is revoked or set aside under any of the grounds set out in the Act or in any other manner. The Court was of the view that prior to the amendment, the patentee was conferred an exclusive right to use himself or through agents or licensees and also to exercise or sell or distribute the inventions in India. However, after the amendment, the patentee now enjoys an exclusive « right to prevent third parties from using or selling, or offering for sale, etc. his invention.
On the question of whether Bajaj’s invention involved an inventive step, the Court was satisfied that the invention involved a technical advance as compared to the existing knowledge and that it had economic significance. The Court was prima facie satisfied that the invention had found a special place in the Indian market and had established a significant market share.
The Court found that even though Bajaj’s product ‘Pulsar’ had been introduced in the market in 2003, TVS had for the first time raised an objection only on August 24, 2007, by which time Bajaj’s DTS technology-based product had been sold in large numbers across the country. The Single Judge of the Madras High Court found that the petition for revocation of the Patent granted to Bajaj had been filed a mere six days prior to the launch of Flame, and as such the conduct of TVS was not entirely bona fide. The Court was of the view that till such time, TVS succeeded in its petition for revocation, the patent granted to Bajaj could not be viewed with suspicion, considering that it had been in existence for more than five years and as such the patentee Bajaj must be treated as an actual user and the presumption of the validity of its patent was thus established.
On the above basis, the Court recorded its satisfaction the Bajaj had succeeded in establishing- a prima facie case for the grant of an injunction. The Court also recorded that having exploited the patent for five years, the patentee had a further period of fifteen years to exploit the patent, and hence, the balance of convenience was also in its favor. Accordingly, the Madras High Court granted an interlocutory injunction in favor of Bajaj.
(4) Laboratory notebooks are the birthplace of inventions. Laboratory notebooks (also called a journal, inventor’s notebook or logbook) are used by inventors, scientists, and engineers to record their invention process, experimental tests, ideas, and results and observations. It is not a legal document but is valuable if properly organized and maintained since it can help establish dates of conception and reduction to practice. The purpose of the inventor’s logbook is simply to be an irrefutable diary of your progress so that if it comes to a legal conflict, you can produce your logbook and some supporting evidence to substantiate your claim that you were the first to start working on your invention and the first to “make a working model” of your invention. The information can improve the outcome of a patent or a patent contestation.
Typically, governments award patents on either a first to file or first to invent basis. Therefore, it is important to keep and maintain records that help to establish who is first to invent a particular invention. A laboratory notebook is a systematic device for recording all information related to an invention in such a way that it can be used as a key component to developing a case during a patent contestation or patent-related lawsuit. When properly kept, the notebook is a valuable tool for the inventor since it provides a chronological record of an invention and its reduction to practice. Each entry must be signed and dated by a witness. The witness should not be someone with a conflict of interest (such as a research partner).
If an inventor ever has to go to Court to prove that he or she was the first to invent, then the witness would be called to the stand to testify that it is their signature and they have signed that page on that date.
(5) A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention (the patent specification), together with official forms and correspondence relating to the application. The term patent application is also used to refer to the process of applying for a patent or to the patent specification itself.
The typical parts of a patent application are generally:
- Detailed description (or specification)
The title should broadly describe the invention. However, titles are not generally examined. Occasionally a patent examiner decides that a title is not descriptive of the invention. It is best to avoid being overly narrow in the invention’s title, although the title should sufficiently indicate the subject matter of the invention. A patent application should also include the names of the inventors. The inventors should be named after the title, e.g. on the cover page. The patent application itself should also include all priority information, such as the identification of related applications.
It is desirable to remember who the audience will be for the patent application. The key audiences include judges and patent examiners. Of course, the patent agent’s client and the inventor are also audiences; the patent agent must make sure the inventor understands his own patent application. Other potential audiences include competitors, infringers, and investors. Many investors will often scrutinize a technology company’s patent portfolio carefully before making an investment.
What is a Laboratory Notebook?
A laboratory notebook is also known as Logbooks, Record books, journals,s and inventor’s notebooks. It is the birthplace of inventions. A laboratory notebook is a systematic device for recording all information related to an invention in such a way that it can be used as a key component to developing a case during a patent contestation or patent-related lawsuit. When properly kept, the notebook is a valuable tool for the inventor since it provides a chronological record of an invention and its reduction to practice. Each entry must be signed and dated by a witness. If an inventor ever has to go to Court to prove that he or she was the first to invent, then the witness would be called to the stand to testify that the signature is theirs and they signed that page on that date.
The uses of laboratory notebooks are:-
1. It is used by inventors, scientists, and engineers to record their invention, process, experimental tests, ideas, and results, and observations.
2. It is not a legal document but is valuable if properly organized and maintained since it helps establish dates of conception and reduction to practice.
How a patent specification is prepared? Discuss the types of patent ‘ specifications.
A patent specification can be prepared by the applicant himself or his registered and authorized agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, drawbacks in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings, and details of the best method of its working.
There are two types of patent documents usually known as patent specifications:-
- Provisional specification and
- Complete specification.
While an inventor is in the process of finalizing his invention, he may file a specification known as ‘Provisional Specification’ which is not a full and specific description. It contains only a general description of the invention, its field of application, and anticipated results. The provisional specification heeds do not contain the claim(s).
A provisional specification is filed to fix the priority date of the patent. The priority date of the claim is the date on which a specification containing the claim is filed. Normally, the priority date is the date of filing the provisional specification provided the claims are based on the matter disclosed in the provisional specification.
During the period between the filing of the provisional specification and complete specification, the inventor may conduct further research on the subject matter of his invention. The provisional specification is a permanent and independent scientific cum legal document and no amendment is allowed in this. It is not necessary to file an application with provisional specifications before the complete specification.
The complete specification is the full description of the invention containing all the claims over which the applicant seeks monopoly right. The object of this specification is to define clearly and with precision, the monopoly claimed so that others may know the exact boundaries of the monopoly right of the applicant. Complete specification must be submitted within 12 months of filing the provisional specification. The period can be extended by 3 months. Submission of the complete specifications is necessary to obtain a patent.
The contents of a complete specification are :
- Title of the invention.
- Field to which the invention belongs.
- Background of the invention including prior art giving drawbacks of the known inventions and practices.
- A complete description of the invention along with experimental results.
- Drawings etc. essential for understanding invention.
- Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.
What is the patent application? Briefly discuss the parts of the patent application.
A patent application memorializes the agreement between the inventor and the government office that results in the issuance of a patent. The patent application is in many ways like a contract. Writing a high-quality patent application is important because it sets out in a clear fashion the terms by which the patent owner and others will be bound. Thus, a patent application should be drafted while keeping important audiences in mind.
The parts of the patent application are as follows:-
It is very important to prepare the claims for the invention. The patent agent may even want to sketch out the claims in the disclosure meeting with the inventor. This will often provide confirmation to the patent agent that he has understood the invention. The patent agent may wish to use some sort of “picture claim” in the initial meeting with the inventor since inventors are often unfamiliar with patent claim language.
The majority of patent agents prepare several draft patent claims as their first step in writing a patent application. The claims are the legally operative part of a patent application; everything revolves around the claims. Because of the critical importance of claims, the patent agent should carefully revisit them after drafting the specification. Once the claims are completed the patent agent needs to check the drawings and specifications to verify that the claim terms have been appropriately described and disclosed.
2. DETAILED DESCRIPTION OR SPECIFICATION:
The detailed description Section, sometimes known as the “preferred embodiment of invention” Section or the “disclosed embodiment of the “invention” Section breathes life into the claims and provides a sufficient explanation of the invention for an ordinary person skilled in the art to make and understand the invention. The patent agent cannot amend his application to include new technical disclosure during prosecution.
A patent agent should take care that the patent application must
- reflects the disclosure material provided by the inventors;
- provides sufficient information to enable an ordinary artisan to reproduce the invention; and
- provides sufficient depth so that the claims can be narrowed during patent prosecution to avoid close prior art.
The patent agent need not include in the patent application well-known material that would be needed in order to make a product associated with the invention. The patent agent must be very careful in his use of language in a patent application.
The patent agent must prepare good visual supporting materials that describe the invention. Many patent agents would argue that the drawings are the most important part of the patent application after the claims. Some patent laws require that every claimed element be shown in a drawing. Where possible, the drawings should explain the invention in sufficient detail that reading the detailed section merely confirms in words the information provided in the drawings. In preparing the drawings the patent agent should think of the story he wants to tell and how he wants to tell it. The elements shown in a patent’s drawings are typically accompanied by a short description in words and a reference number such as “Clock 102″. The drawing section should begin with a statement indicating that the drawings are illustrative of one or more embodiments of the invention.
The use of background sections varies among the world’s patent regimes. In some patent systems, the background section serves to disclose to the public the closest prior art applied against the patent application during the examination. The background Section is typically
considered prior art disclosed by the inventor. Consequently, if the applicant’s own inventive disclosure ends up in the background section, the patent examiner may cite this section in the rejection of the applicant’s claims.
A good background section should be fairly short and merely set the stage for the technical disclosure, to be provided in the detailed description section. The background section could describe the prior art at a very high level. The background section may conclude with a short, crisp statement about the shortcomings of the prior art but this must be written in a manner that does not disclose the solution to be described later in the application.
The patent abstract should describe the invention very clearly in the fewest possible words. The patent agent could use a version of the first paragraph of the summary of the invention section as the abstract.
As pointed earlier, not all jurisdictions require a summary of the invention section. The patent agent may find himself reviewing summary sections drafted by foreign patent agents working on his client’s foreign counterpart patent application. The patent agent should understand the „ precise requirements and customary practice regarding a summary of the invention sections in the jurisdictions of interest to his clients.
Some patent agents prepare the summary of the invention section by taking each of the independent claims in the patent application and turning them into paragraphs. The advantage of this approach is that the precise words used in the claims will be guaranteed to be in the , specification. Many patent agents simply draft the summary of the invention section in a manner that highlights the important aspects of the I invention using words drawn from the application’s claims. The summary of the invention section should be one of the last parts of the patent application that the patent agent writes. In preparing the summary of the invention sections, avoid providing some sort of “big ; picture” summary that goes beyond the claims in any manner.