M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel , Section(64) patent act, 1970

Takshasheel Bouddha, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel &The Controllers of Patents & Designs. This judgment is with respect to Section 64 of the Patent Act, 1970.

Introduction:

The dispute was regarding two patents i.e. Patent No.189027 and Patent No. 188787 granted to and held by the respondent which the petitioner wanted to be revoked. Initially, the petition for revocation was filed in the honorable High Court of Gujarat from where it was transferred to IPAB. M/SAditi Manufacturing Company was the petitioner while Mr. Bharat Bhogilalwas the respondent and both the parties were engaged in the same set of business.

Both the patents owned by respondent were on the same subject matter relating to the laser technology. Patent No.189027 was granted for a process of manufacturing engraved design articles on metals or non-metals using Lasers and Patent No. 188787 was granted for an improved laser marking and engraving machine.

Petitioner‘s Argument

The petitioner M/S Aditi Manufacturing Company claimed that inventions are related to laser technology and the engraving machine is not novel and it was already in the public domain. The inventions also lack inventive step as per the requirement of Section 2(j)(a). A lot of prior arts were present disclosing identical products and processes and therefore requirement of sections 3(k), 3(f), and 10(4) of ‘The Patent Act, 1970 were not met.

The revocation in both cases was sought on the ground that the invention has been used from 1996 by one Sarju Laser Marking Private Limited and sold in the market even before the date of the patent.

The specification was notably alike to US Patent No. ‘789 dated 26/03/1985 for “Reliable low-cost lightweight CS pumped Nd: Yag laser with an option at Q-switching”. The claims were analogous to US Patent No. 4467172 and Japanese Patent No. 141679.

The petitioner also relied on the publication by Excel Control Laser Inc. in 1992 which described both the machine and process

The counsel for the applicant argued that the word “improved” in the patent claimed is vague and is not clear. It is ambiguous in nature and therefore more clarity should be there.

The petitioner further argued that it is just a collection of known integers.

They further contended that patent has been obtained by suppression of information and there is no inventive step.

The petitioner counsel relied on the proposition of law laid down regarding revocation in Air Master Equipments India (P) Ltd. v/s. Mr. Ramesh Nana Mahtre; M/s Bishwanath Prasad RadheyShyam/sM/s Hindustan Metal Industries and Monsanto Company v/s CoromandalIndag Product (P) Ltd.

Expert Witnesses:

IPAB relied upon the expert opinion of Dr. D.D. Bhawalkar who had obtained the degree of Ph.D. in ‘Laser technology’ from the University of Southampton, U.K. He had an opinion 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.

IPAB also considers the opinion of Mr. Utpal Nandi, another expert and a qualified Engineer from the Raja Ramanna Center for Advanced Technology for about 30 years. In his opinion, the patentee has not disclosed the appropriate facts related to the prior art in the Patent Office. Furthermore, the laser marker was developed from components available in the market in 1995 at the Raja Ramanna Center. In his view, 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.

Respondent’s Arguments

The patentee rebutted relating to the cause of action. He also vehemently opposed the presence of technology in the public domain. He merely denied all the prior inventions stating that all are different from his invention and are not known components. He further argued that if the laser beam is not focused properly, the object cannot be marked and that is the most important and basic step of their basic process that is patented. They also contended that they are unaware of the Excel Control Laser publication.

According to the respondent, the applicants being non-technical did not understand the technical aspect of the invention and further that it is not a combination of known-integers or rearrangements.

The decision of IPAB:

Objections raised by the applicant were sustained by IPAB and the patents were revoked on the grounds that the invention was already known and there is neither any novelty nor any inventive step.

Leave a Reply

Your email address will not be published. Required fields are marked *

7 + twelve =

Archives

  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • October 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010