Revocation of Patents: Indian Patent Office Paperless Policy

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IPAB HELD THAT WHEN PRIOR ARTS HAVE THE FEATURES OF AN INVENTION AND WHEN THERE'S NOTHING NEW IN THE FEATURES THAT HAVE BEEN CLAIMED AS NEW, THE PATENT OUGHT TO BE REVOKED….

Two revocation petitions against a product patent and a process patent being a laser marking and engraving design articles on metals or non-metals being patent No. 189027 and 188787 for an improved laser marking and engraving machine filed before the Hon'ble High Court of Gujarat & transferred before the Hon'ble IPAB for revocation. Advocate Ms. Rushvi N. Shah and Mr. Zahid K. Shaikh represented M/s. Aditi Manufacturing Co. whereas, Advocate Mr. Ketan Parekh represented Mr. Bharat Bhogilal Patel and The Controller of Patents & Designs.

M. P. No. 41 of 2012, M. P. No. 42 of 2012 in

TRA 5/2008/PT/MUM & TRA/6/2008/PT/MUM & TRA 5/2008/PT/MUM & TRA/6/2008/PT/MUM

The prior art mentioned by the patentee was that of laser marking (his invention year 1998). Earlier the work was carried out by mechanical and chemical means which was different, tedious, lengthy and costly. As per the specification, laser marking and engraving machine consist of a laser head with a head, mirror mount, aperture mount beam bender rail through power supply, RF Driver, heat exchanger and chiller to generate a laser beam using a programmable computer system to generate the laser beam for marking and engraving the required design on the substance.

“Suppression of the prior art and publication of same before the Controller of Patents”

The court has considered the following grounds taken by the applicant to revoke both the product as well as the process patent in support of the documents/evidence relied by the applicant as follows:-

1. That invention has been used since 1996 by Sarju Laser Marking Pvt. Ltd. and sold in the market even before the date of application of patent.

2. The technology was known for a longtime and it is a collection of known integers. The patentee has not stated what the existing state of art was and how the invention is an improved one.

3. The invention claimed is not new. It is publicly known. There is no inventive step. There are prior arts disclosing identical product and process as per section 3(k), 3(f) and 10(4) of ‘The Patent Act, 1970’.

4. That patentee suppressed the prior art and publication before the Controller of Patents.

SIMILARITY WITH FOREIGN PATENTS

5. That specification is similar to US Patent No. 789 dated 26/03/1985 is for “Reliable low cost light weight CS pumped Nd:Yag laser with option at Q-switching”. There is a laser pot. The source of light is a lamp. There is a cooling system. The laser is adopted to perform at different thresholds and at “above evaporation threshold”, it dulls, engraves trims and inscribes. It is said to be highly versatile. Therefore, Nd:Yag laser was known, it is used in cooling system and it could engrave.

6. The invention comprises of some claims which are similar to some of the claims of Japanese Patent No. 141679. It is a solid-state laser oscillator, where a plurality of laser beams is extracted from plurality of mirrors.

7. The invention also carries some claims similar to that of US Patent No. 4467172, which is a method and apparatus for laser engraving diamonds (June 3, 1983). This encompasses a solid state laser and an acuosto - optical Q-switch. This uses a YAG rod.

“Everything that was declared as a basic feature in the invention was publicly known prior to the invention.”

8. The invention is also similar to IXCEL Quantronix Spare Parts Catalog (1992). It shows that Nd:Yag laser is the most frequently employed for beam stereo laser marking. The diagram of the Nd:Yag laser shows 2 mirrors one is the front mirror and a rear mirror and in between the two mirrors there are safety shutters, intra cavity aperture, laser head with Nd:Yag crystal and the krypton arc lamp, Q-switch and one more intra cavity aperture. Everything that was declared as a basic feature in the invention was publicly known prior to the invention.

9. That invention is also similar to an article presented at ‘The International-Diamond Technical Symposium’ held in October 1991 at Israel. This too shows that YAG LASER BEAM HAS BEEN USED IN Diamond industry for a long time and in India, right from 1987, there have been laser-cleaning machines.

10. That invention is also similar to the excerpts from R & I Industries Scrap book printout regarding the earlier laser engraving. This shows that laser engraving is not new and YAG laser is a common form of laser and it is suitable for engraving metals as well as non-metals.

11. That invention claimed is not new as per the Affidavit of Shri Arvindbhai Lavjibhai Patel, who is the Director of Sahajanand Laser Technology Limited. His affidavit has been produced to prove the invoices which shows that the respondent had to mark the invoices for laser marking machine of the year 24/02/1997. Among those, an invoice dated 14/08/1998 was for a laser etching machine with indensor, chiller. In the same year, there was another laser-marking machine, the bill for which was prepared as of the year 1995.

EXPERT 'S OPINION

12. It was also observed/considered by the court as evidence the affidavit of Dr. D.D. Bhawalkar who had obtained the degree of PhD in ‘Laser technology’ from the University of Southampton, U.K. After going through the aforesaid two patents, he stated in his letter dated 10/12/2005 that there is nothing new described in the patents. He has written to M/s Legasis Partners that the laser marker is identical to US Patent No. 178. He has also stated that Galvos is in the market for a long time. According to him the Raja Ramanna Center for Advanced Technology had developed a laser marking which was identical to the invention in question and that it became operational in 1995. According to the expert, this was identical to the invention. He has also enclosed a Newsletter which contains the schematic diagram of the laser marking systems and the salient features are Nd:Yag laser, x-y Galvanometric mirrors, driver cards for the mirror, video camera and interfacing software and hardware.

13. The court has also observed reliance in the opinion of an expert Mr. Utpal Nandi, a qualified Engineer from the Raja Ramanna Center for Advanced Technology for about 30 years. He was been asked for the opinion on the aforesaid two patents and according to him, the patentee has not presented the facts about the prior art to the Patent Office. He has stated that a laser marker was developed from components available in the market in 1995 at the Raja Ramanna Center. He has stated that there is no novelty or innovativeness in the said invention and if the patentee claims that the machine is improved one, he should show where the improvement lies. He has stated that patentee's claims in the complete specifications are identical to one another.

14. It was also observed/considered by the court that the evidence of Mr. Joel Cardoso who started a company called ‘Xcalibur Laser Systems Pvt. Ltd.’ and ‘Gitanjali Laser House Pvt. Ltd.’ and they manufacture and market laser machines used for marking and engraving on metals and non-metals.

15. The court has also observed that the invention is also similar to an advertisement, made in the year 1998, to show laser engraved gold objects highlighted on the occasion of Valentine’s Day.

16. The court has also observed that the sectional elevation of the said invention is also similar to sectional elevation of Insta Mark. Insta Mark is a laser engraver for Fast, Permanent marking. The physical arrangement of the INSTAMARK is explained in a Laser Application Notes, in which it is mentioned that this is of the year 1979. This is a Nd:Yag laser. The basic system consists of a Holobeam Model 512 CW Nd:Yag laser, a scanner head laser power supply, laser cooling unit, the Q-switch, the front mirror and rear mirror and an automatically insertable aperture, a high speed electrical shutter, a photodiode energy monitor. All these components are mounted on a lightweight, rugged, extruded aluminum rail, which assures accurate alignment of the optical train. This speaks of internal deionized water, to tap water, which is used to cool the laser head and all are known publicly.

17. The court has also observed that the invention is not new in light of an evidence produced, as a letter from Mr. Yogeshwar Gupta which is an order dated 29/12/1997, for implantation for laser marking system which is duly signed by the respondent Mr. Bharat Bhogilal Patel himself since he had a shop for ‘ job work’ for laser marking.

The following decisions were cited by the learned counsel for the applicant in support of the arguments and grounds taken for revocation:-

a. AIR 1986 SC 712 Monosanto Company V/s Coromandal Indag Product (P) Ltd.

b. PTC(SUPPL)(2)799(Cal) Unique

c. AIR 1982 SC 1444 M/s Bishwanath Prasad Radhey Shyam V/s M/s Hindustan Metal Industries.

d. TRA/01/2008 M/s Air Master Equipments India (P) Ltd. V/s Mr. Ramesh Nana Mahtre and others……..

In counter statement the patentee took objection relating to the cause of action. The patentee also denied that the technology was known for a long time. He merely denied all the prior inventions stating that all are different from his invention and are not known components.

The court considered the above documents and experts' opinion that the technology was known, every feature in the invention is known before filing of patent and the product itself was a known product. The respondent himself had sold the product prior to the date of patent. All the details had not been disclosed. The scanned picture shows that the invention and prior art are identical.

In the present case, as prior arts have the features of invention and when there is nothing new in the features that have been claimed as new therefore both the TRAs for revocation of patents are allowed.

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As the world has taken up to the “Save Environment” forethought, the Indian Patent Office recently has joined the group by employing the environmentalistic policy for all the national phase patent application filed under the Patent Co-operation Treaty (PCT).

       The public notice has been issued on the July 2nd, 2012 by the Controller General of Patents, Designs and Trademarks; Mr. Chaitanya Prasad declaring that the Indian Patent Office has now joined forces with International Bureau of World intellectual Property Office (WIPO) to simplify the procedure of filing of the PCT national phase patent application in India. Indian Patent Office has acquired the online access to the PCT International applications and other relevant documents available with the International Bureau of the WIPO further simplifying the filing procedure for the PCT national phase patent applications exponentially. By taking on this step the Indian Patent Office improves its efficiency and provides better services to the public.

       Earlier, as per the Indian Patent Act 1970 (amended in 2005), the PCT national phase patent applications were required to be done by performing certain acts as explained in Article 39(1) of PCT. "Performance of certain acts" means meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (a) basic requirements and (b) additional special requirements to be complied with by the applicant in connection with the national phase.

       Thus any person can enter national phase with a request made in Form 1. The title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of filing in India (Section 10 (4A)). The applicant has to submit the forms and specification (Form 2) in duplicate upon entry into national phase. The Indian Patent Office may ask for any other documents, which are necessary in addition to what was submitted along with the application.

      All other document or information related to the filing of PCT national phase patent application includes:

a). Name, Nationality and address of the applicants and inventors,

b). Instrument of assignment or transfer where the applicant is not the inventor,

c). Declaration of inventor ship by the applicant,

d). Statement regarding corresponding applications in other countries,

e). Power of attorney if an agent is appointed,

f). Address for service in India,

g). Verification of translation when specification is not in English, and

h). Copy of International application or its translation when specification is not in English.

       The public notice issued by the Indian Patent Office shall be implemented from July 6th 2012 making the applicants of PCT national phase patent applications free of the obligation to file multiple copies of documents already available with International Bureau of WIPO, as Indian patent Office will be able to access and utilize the documents already available with International Bureau.

       This improvement brings along various changes in the PCT national phase patent application filing by increased efficiency in resources of Indian Patent Offices and reduction in errors occurring in the data entry which has been seen in the past. The applicant has to file the Form 2 with the details including the name, nationality and address of the applicants and only the last page of claims containing the date and signature. All the other information required for the PCT national phase patent application would be directly accessed from the International Bureau database. While, all the other documents applicable (stated above) are to be filed at Patent Office. The requirement of filing complete specification along with abstract and drawings has been cancelled by the issuance of this notice. But if the application has not been published in English in International Bureau then the applicant would have to submitted a verified copy of the translation in English.

       Further more the Indian Patent Office does not allow for any changes or amendment in the specification or any other document before entering the national phase in India, and if any change has been made then the information received from the International Bureau would be taken into account. Also, if the applicant has submitted any information which is not published by or is pending before the International Bureau then that information would not be considered valid. In any case, the information notified or published by the International Bureau would always prevail.

       The Indian Patent Office already provides e-filing facility for all the patent applications and this move would be the first step towards making all the procedures of Indian Patent Office through internet leading to decreased paper usage and thus eliminate redundant processes.

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