However, operation of these rules also hit by roadblock of series of petitions. Reacting to this grim situation a writ petition was filed in Mylan Laboratories v Union of India & Ors  before Delhi High Court to seek intervention of the court to invoke “doctrine of necessity” to allow disposal of urgent cases by Chairman and the only appointed Member(PVRT).

The non-functioning of IPAB also came under the scanner of the Delhi High Court in Merck Sharp And Dohme Corp. vs Union Of India  And Ors. on 27 February, 2020 where Justice Prathiba M. Singh observed that

5. The non-functioning of the IPAB is a serious cause for concern inasmuch as cases like the present which involve patent rights which have a fix term are being unduly delayed due to non-constitution of the Tribunal itself. This position has continued for the last several years and has repeatedly been the subject matter of various writ petitions filed before this Court.

……….

11. It is matter of record with that there are more than 4000 cases including 1600 patent cases, which are pending before the IPAB and hence non-assembling and non-availability of infrastructure to the IPAB has severely dented the disposals before the IPAB, and the delays have affected substantive rights of IP owners.

Resumption of hearing in IPAB

It took almost three months for the new Chairman IPAB to adjust to the Covid created crisis, which further dented the normal hearing in the Board. In order to resume hearings post Covid lockdown three office orders were passed by the Board in May 2020 to streamline future hearings and filings during the ongoing COVID-19 pandemic. These orders of the Board in fact led to normal resumption of work as the IPAB registry resumed receiving petitions on urgent matters through e-filing. Additionally, IPAB streamlined the process to be followed in cases of urgent mentioning and requests for adjournment, by sending email to the Deputy Registrar at ipab.tn@nic.in in advance.

Procedure for online hearing

Video conference platform established by IPAB would help to facilitate the disposal of urgent matters now. The petitioners/Litigants who are willing to joint video conference proceedings can now forward their requests to IPAB registry through email giving details such as their names, case title, case number, date of hearing along with their contact details well in advance of the hearing date. Registry would provide link and pin for joining the online hearing along with the time slot of the hearing to the petitioners /litigants by through email.

Recent decisions of IPAB

With appointment of all technical members, IPAB is now operational and moving full throttle in conducting hearing through video conference and disposing the urgent appeal matters. With IPAB resumption of functioning, we see now series landmark decisions on the appeal cases.

Looking beyond Computer program per se

In Ferid Allani v Union of India & Ors, IPAB looked beyond computer program per se and allowed patent on computer related invention based on the ground of having technical effect. This case would also be known for being rejected by Controller on multiple times even when High Court clearly interpreted computer program exceptions should be limited to mere programs alone. The IPAB ruling on patentability of computer-related inventions demonstrating “technical effect” or “technical contribution” would perhaps break the jinx of such rejections at IPO and would give much needed relief to inventors.

In an another interesting order (Novertis AG vs Natco Pharma Limited )[OA/20/2019/PT/DEL dated 29 September 2020] IPAB questioned the virus of the post grant opposition, where insufficient fee was paid and the Controller allowed the deficient fee to paid after the expiry of the prescribed period. IPAB Ruled that

23.2 The post-grant opposition was not maintainable ab initio for lack of filing proper prescribed fee. The Controller should not have acted upon the post -grant opposition as the proper fee …………... within the prescribed time period of filing the opposition. ……………………..How come an opponent having stature of legal entity, pay a fee applicable to natural person? The balance fee was remitted on 08/11/2017 after the statutory time period expired on 30/09/2017. Therefore, the post- grant opposition itself was not maintainable and the office of the Learned Controller is expected to exercise due diligence in future. On this ground, we hold that the order passed by Controller on 16/08/2019, being an order on non- existent post- grant opposition, does not have merit to stand.

This case would be also be known for restraining the Controller to resort to hindsight analysis in novelty rejections as IPAB held that

“But for the “hindsight analysis”, it was not possible to arrive near to the structure of the instant patent. The “hindsight analysis” is not allowable under “inventive step” determination let alone “novelty” consideration. “

The Board also questioned Controller refusal of the patent by ignoring the recommendations of the Opposition to the contrary, without giving any reasons. The Board ruled

23.6 The Learned Controller ought to have considered the view of the members of the opposition board who were of the opinion that “the present opposition may be dismissed and the current patent may be allowed to stand.”

IPAB quipped that the views of members of opposition board appears very crucial and

“If at all the Learned Controller was to differ from the opinion of the opposition Board, the point of disagreement should have been annotated in the order, which is not present in the order….”

In this case IPAB granted the patents after finding also that “the other grounds such as “lack of inventive step’, objection under section 3(d) and that related to “insufficiency of disclosures” were also decided without proper reasoning.”

This is a classic case of overall examination of evidence, application of hindsight and improper interpretation of the recommendation of crucial analysis of the opposition board. This decision would go a long way to guide the future oppositions proceeding before the Controller.

Violation of the procedural fairness

In another case (Hawar Technologies Limited Vs COP 9(OA/56/2020/PT/DEL dated   12^th September 2020 IPAB found clear violation of hearing principles as laid down in the patent act and rules .The board observed in relation to the violation of the hearing principle that

23. “it is clear that the Patent Acts and rules framed thereunder are code in itself and prescribes the contents of the natural justice and hearing principle. The natural justice in the context of the Patents Act is not merely confined to the hearing orally which according to us in the present case was mere formality and was not done a substantial hearing. But in fact the Patent Act and rules framed thereunder also provides for the provisions of the written submissions.

The Board heavy relied on ruling of landmark Dharampal Satyapal’s case relating procedural fairness, natural Justice and hearing principles to highlighted the importance of written submission and observed that

Rule 28(7) of the Patents Rules 2003 provides as follows: (7) In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.” Therefore, the contents of the natural justice or hearing principle in the context of the Patents Act is prescribed by the delegated legislation which are rules framed thereunder in the form of Rule 28 (7). In such kind of cases, as per Dharampal (supra), the instrument has to be followed and the same cannot be ignored. Therefore, no provisions of the Act or Rules should be rendered superfluous and the interpretation, which should make the provisions workable, should be followed.

This decision would go long way to earmark the guiding principle of hearing that must be followed by the Controllers while conducting hearing of contested cases. In this case Board ruled that

If the present case is tested on the touchstone of the principles culled out above from the Dharampal Satyapal’s case, it is clear that not merely there is a violation of the reasoned decision principle which is part of the procedural fairness, but in fact there is also violation of the hearing principle as well and thus there exists a complete violation of the procedural fairness in the present case.

This case would also be known for imputing the concept of expended version of natural justice in context of patent Act where Controller is dealing with technical matters, which involve application of scientific principles along with the legal principles.

According to the Board,

“ A brief hearing of hour or so may not suffice as the evaluation of the prior arts and understanding requires extensive readings, appreciations as well as the deduction so as to form an opinion on novelty and inventive step.”

Highlighting the value of the written submissions in patent cases Board observed that

“ the rules of procedural fairness including natural justice as per the Patents Act and Rules framed there under do not end with the hearing and in fact the natural justice continues until the filing of the written submissions  which is provided under the Rules dealing with the prior arts enabling the controller to have a reading, appreciation and apply the same.

Board’s finding on the violations of the procedural fairness in the present appeal lead to rule that

“the trigger for violation of the procedural fairness is both the unreasoned decision as well as the violation of the expanded hearing principle, the contents of which are prescribed under the Patent Rules in the form of Rule 28 (7) of the Patent Rules. Therefore, the said violations of the procedural fairness vitiate the impugned order warranting interference in an appeal applying the correction standard.

While remanding this case back to Controller the Board also accepted the request for change of controller, invoked 73(4) of the Patents Act, 1970, and directed that in the best interest of justice, the case may be referred to some other Controller.

Looking forward

The above proactive initiatives by IPAB for conducting hearing in urgent matters are welcome, as it would reduce the backlog of over 4000 cases that were pending for quite a long time. Appointment of new members, we can hope would hasten the disposal of revocation related matters as well. With finalisation of the Tribunal, Appellate Tribunal and other Authorities Rules (Qualifications, Experience and other Conditions of Service of Members), 2020 on 12.02.2020 by the Ministry of Finance, we can look forward for the IPAB to be functional uninterrupted now onwards. The timely intervention of Supreme Court brought the relief in terms of continuation of the appointed Chairman of IPAB first up to September 2020 and now up to December 2020. With operation of IPAB in full swing, we can expect more prudence in patent office decisions now.

1)   Articles 71 & 74 The law introduces the punitive damages regime in the context of willful infringement, which allows the court to grant up to quintuple the actual losses suffered by the patentee as a result of the infringement, or the proceeds gained by the infringer from the infringement or the multiples of the patent royalties, in case of serious circumstances. The statutory damages is also increased to range from RMB 30,000 to 5,000,000. As for the burden of proof for the damages, it may be shifted from the patentee to the infringer provided that certain conditions are met. The limitation for instituting legal proceedings against patent infringement is amended from 2 to 3 years in line with the civil procedure law.

2)   Articles 2 & 42 The protection term for design patent is extended from 10 years to 15 years, and partial designs become eligible subject matter for patent protection.

3)   Article 76 The law allows the applicant for the regulatory approval, the patentee or the interested party to solve patent disputes during the drug marketing approval process. Viable options include a patent litigation before the court or a petition for a CNIPA administrative ruling. The state drug administration authority may make a decision within the prescribed time limit as to whether the drug approval process should be suspended based on an effective court judgment.

Regarding the patent linkage regime at the operational level, the state drug administration authority and the CNIPA have jointly published a Draft for the Implementation Measures for Early Resolution Mechanism of Pharmaceutical Patent Disputes (for Trial Implementation) to solicit public opinions.

4)  Article 42 The adjustment of the patent term becomes available for the invention patents if unreasonable examination delay occurs during patent granting procedure. For the patents of new pharmaceuticals, it further makes available the adjustment of the protection term to compensate for the curtailment of the effective patent term as a result of the regulatory approval process. The adjustments shall be limited to no more than 5 years and thus limiting the resulting effective patent term to no more than 14 years from the date of regulatory approval in China.

5)   Article 70 The CNIPA and the local patent administrative authorities are vested more powers in administrative enforcement involving patent infringement disputes. Upon the request of the patentee or the interested party, a) the CNIPA may handle patent infringement disputes of significant impact nationwide; and b) local patent administrative authorities may handle patent infringement disputes by combining cases involving the same patent right. In case of patent counterfeiting, the upper limit of imposed fines against illegal acts are also increased.

6)  Article 20 The good faith principle is introduced in the Patent Law to rein in abuse of patent right. Patent applications and exercise of patent rights shall not harm public interests, prejudice others’ legitimate rights and interests, or exclude or restrict competition.

7) Articles 48-52 The law encourages patent exploitations and utilizations. An open license system is also established to serve such a purpose.

8)  Article 24 In response to national emergency or extraordinary circumstances, a 6-month grace period is granted to the inventions first disclosed for the public interests, without losing their novelty for the patents. This clause is believed to be prompted by the COVID-19 pandemic.

In the lawsuit filed before the Ankara 4^th Civil IP Court in 2016, plaintiff requested the invalidation of the 5 “mezzo mix” trademarks, the earliest of which was filed back in 2011, deletion of the “Mezzo Mix” expression from the trade name of the defendant and the blocking of access to www.mezzomix.com.tr. The invalidation action was based on the genuine rights of the plaintiff, the well-known status of the plaintiff’s “mezzo mix” trademarks abroad and in Turkey, likelihood of confusion between the respective trademarks and bad-faith of the registrant.

As regards the ground of bad-faith, the plaintiff asserted that during its filings, the registrant must have been aware of the plaintiff’s “mezzo mix” registrations in various countries and before the EUIPO, with the earliest trademark registration in Germany dating back to 1979. Plaintiff submitted further evidence proving that the defendant was living in Frankfurt during the time he filed the trademark applications. Considering the fact that the logo, color scheme and stylizations of some of the trademark registrations were identical to the plaintiff’s registrations abroad, the plaintiff asserted that the evidence produced should be sufficient to deduce the registrant’s bad-faith.

In response, the defendant pleaded that it duly registered its trademarks by fulfilling its obligations as a prudent business person, and that it wrote a letter to the German branch of the company to offer the transfer of the subject matter trademarks.

These letters of the registrant were found to include statements explaining that although the registrant was negotiating about a possible trademark transfer with interested third parties, it was providing an advantage to the plaintiff by offering trademarks for sale with priority. The letters contained more coercive language, stating that companies from Arabic countries were interested with the transfer of the rights as they wished to enter the Turkish fizzy-alcoholic beverage market under these trademarks.

Due to lack of evidence proving that the plaintiff promoted its products in Turkey to the point of gaining widespread reputation prior to the filings of the defendant, the Ankara 4^th Civil IP Court did not accept the plaintiff’s grounds of genuine rights in Turkey and well-known status. However, the Court accepted the blatant bad-faith of the defendant, taking into account the identicalness of the respective trademarks, the residency of the registrant in Germany (a country where the product is indeed well-known) during the time of the applications and finally considering the fact that the defendant first tried to sell the trademarks to the plaintiff and then also threatened to sell the trademarks to companies in Arabic countries if the plaintiff did not comply with its terms for a possible transfer. Under its decision numbered 2016/332 E.- 2017/454 K., the First Instance Court held for the invalidation of the trademarks and a block of access to www.mezzomix.com.tr. The defendant then appealed this decision before the Ankara District Court, and upon the dismissal of its appeal, further appealed the District Court’s decision before the CoA. In its decision no. 2018/5813 E. - 2019/7065 K., the CoA upheld the District Court’s decision dismissing the defendant’s appeal, whereby the First Instance decision became final and binding.

The decision of the Court is important since it shows that subjective facts such as the defendant’s conduct during negotiations as to sell the trademark to its genuine right owner or threaten to sell it to third parties and use it as a negotiation tool to increase the amount as well as his residency can be taken into consideration to prove bad-faith in filing.

According to the published draft, some of the major patent matters proposed for amendment are as follows:

1. Genetic Resources (GRs), Genetic Material, Derivative and Traditional Knowledge (TK): Inventions that have used such GRs or TK must disclose the source, access and benefit sharing plan in the patent application.
2. Grace Period: The disclosure of subject matter of an invention within twelve months before the date of a patent application will not be deemed a defeating disclosure if the disclosure was due to, or made in consequence of, the subject matter having been obtained unlawfully or the disclosure of the subject matter was made by the inventor, the patent applicant or persons authorized by the inventors or the applicants.
3. Introduction of Two-time Publication in the Patent System: Patent applications will be published twice. The first publication will be made within 18 months from the application’s filing date in Thailand. The second publication will be made after the substantive examination is completed and the patent is granted. The opposition period is 90 days from this second publication date.
4. Divisional Application: Division of a patent application can be requested by the applicant before the second publication of the patent. In the current Patent Act, divisionals are not allowed and dividing a patent application is at the discretion and on the instruction made by the patent examiner only.
5. Reduction of Time to Request Substantive Examination of a Patent: Permissible time for requests for substantive examination of a patent application will be reduced from the current five years from the publication date to three years from the filing date in Thailand.
6. Increase of Time to Request Substantive Examination of a Petty Patent: Permissible time for requests for substantive examination of a petty patent application will be increased from the current one year to six years.

The examiners carry out their work remotely in accordance with the provisions of the Sixth Final Complementary Provision of Legislative Decree 1511.[1]

In the Patent Office, after the review and approval of the technical examination, this is notified  electronically to the corresponding email address of the applicant. The Direction of Inventions and New Technologies forwards the document, with the notification remotely.

The Direction of Distinctive Signs, after reviewing and approving the trademark registrability examination, issues and sends the applicant electronically the Resolution granting or denying the registration of the trademark applied for.

It should be noted that in all procedures, the applicants must state their express consent to receive electronic notification of administrative acts.

The notification is received in the email address of the applicant, it is understood to have been validly made when INDECOPI sends the communication, but takes effect the day after the email is sent. The applicant is responsible for ensuring the availability and correct functioning of the electronic address.

It should be noted that there is an email address patenta@indecopi.gob.pe where you can make inquiries about any patent case. For the issue of trademarks, you can consult the email consultationsmnc@indecopi.gob.pe and for brands with actions in defense of industrial property rights, the email consultationsmco@indecopi.gob.pe

The infringement procedure is the only one that is mixed, since the inspection process is carried out with the presence of the parties to view the goods and count them, but the Administrative Authority is present remotely through the video call system.

[1] Sixth. Special provisions for notification

During the National Health Emergency declared by Supreme Decree No. 008-2020-SA, as well as the National Emergency State established by Supreme Decree No. 044-2020-PCM and their extensions, notifications of administrative acts and other actions issued by INDECOPI within the framework of the administrative procedures that are initiated and those that are in progress, are carried out via email or other digital means.

For the purposes of the provisions of the preceding paragraph, the companies send a communication to INDECOPI, in which they provide an electronic address and contact telephone numbers with the number of the file being processed or indicate them at the beginning of the administrative procedure. Failing that, INDECOPI may request these data directly by any other means.