Introduction A patent application is a formal form of request pending approval from the authorized…
In a major decision, the Intellectual Property Appellate Board (IPAB) on 1st June 2012 has revoked a patent IN214388 under section 57, 59 and 64(1)(e)(f) of Indian Patent Act, 1970. In this article, we would discuss certain aspects related to the outcome of the decision, and some arguments put forth by the respondent during the trail.
The country’s top patent tribunal, IPAB, has ruled in favor of revoking a patent issued to SHRI. SOMASUNDARAM RAMKUMAR which relates to a Mobile Telephone with a plurality of Simcards allocated to different communication networks marking a victory for the Spice Mobiles Ltd and M/s. Samsung India Electronics Pvt. Ltd. is a long intellectual property battle.
A brief summary of the decision:
Patent application No.161/MAS/2002 bearing patent No.214388 was filed on 4.03.2002 at the Chennai (then Madras) Patent Office. During the Prosecution of the patent application, the claims were modified and have been increased from initial 4 to finally 20. The patent was granted on 11.02.2008.
Both the applicants, Spice Mobiles Ltd, and M/s. Samsung India Electronics Pvt. Ltd. filed for revocation of the said patent in 2009.
The Chairman gave her reasoning and conclusion separately and found that all grounds are satisfied in the revocation of the patent. Her brief reasoning is as below:
Addition of New Subject Matter
Both the applicants argued that during the patent prosecution period, several amendments were done to the application. The following amendments took place in the allowed claim set resulting in an increase in the number of claims from 4 to finally 20 at the time of grant.
The original claim stated “A mobile phone having provision for the incorporation of two or more than one SIM cards wherein two (or) more than one SIM card to receive and/or send two signals or more than one signal at a time”
and the finally allowed claim stated
“A mobile phone is to be incorporated with a provision for a plurality of current sim cards and/ or modified sim cards, a plurality of current t sim sockets and/or modified sim sockets for accepting a plurality of current sim cards and/or modified sim cards, a plurality of headphone/ earphone jacks for accepting a plurality of headphone/ earphone plugs and/or a plurality of Bluetooth devices in order to operate simultaneously the said mobile phone in said different communication networks is presented, and a plurality of incoming and/or outgoing calls can be communicated simultaneously with the said respective sim cards” during the time of grant.”
Furthermore, the specification pages also increased from the initial 10 to 24 at the time of the grant. Moreover, even the title changed during the time of prosecution of the patent.
Applicants for the present revocation appeal argued that in accordance with Sections 57 & 59 of the Indian Patents Act, 1970, a patent specification cannot be amended except through an explanation, correction, or disclaimer. Furthermore, the applicants argued that the claims were amended by wholly incorporating, new features, and new matters wholly outside the scope of the original disclosure and claims. It was also contended that the respondent has completely changed the scope of patent specification by adding an additional subject matter into the specification. The applicants further argued before the IPAB that the amendments were secured through fraud and also that the amendments were invalid since they were much broader than the original claims as filed by Respondent.
IPAB accepted the arguments that the addition of new subject matter was not supported in the specification before the amendment. IPAB further concluded that the amendments were too broad and that the amended claims 1-20 do not fall wholly within the scope of the invention. As a result, IPAB set aside the amendments to Ramkumar’s patent.
Lack of Novelty under Section 64(1)(e)
Applicants also challenged the validity of patent on the ground of lack of novelty under section 64(1)(e). Both the applicants gave a list of prior art which they believe completely anticipated the invention. Furthermore, the applicants cited US references 6,178,335 (‘335 hereinafter) along with US 5,987,325 (‘325 hereinafter) which was believed to anticipate IN ‘388.
‘335 patent in the specification states that a personal communication system having a plurality of removable Insertable Subscriber Identity Module (SIM) accommodated in a plurality of slots in the handset. The provision of plural SIM cards in the handsets enables the user to to subscribe two or more different service providers and is thereby able to remove at least one of the modules for use in another handset.
Claim 2 of ‘335 patent states that “ A method of operating a personal communication handset that has: a plurality of subscriber identity modules disposed of in the handset; a transceiver for receiving and transmitting signals from and to a base station cell; an electronic switch having a plurality of input ports, each one of the ports being electrically connected to a corresponding one of the plurality of subscriber identity modules, … and; wherein one of the modules selected by the control signal provides the base station with the subscriber identification information stored therein; and, ….”
Fig 1 also believed to have anticipated ’388 patent
‘325 on the other hand also discloses about the Dual SIM and simultaneous communication in a wireless telephone.
‘325 patent, in the claim 1. states “A method of control access of a telephone in telephone systems comprising the steps of: accepting in said telephone a first subscriber identification module (SIM) card, said first SIM card containing a first universal identification number; accepting in said telephone a second SIM card, said second SIM card containing a second universal identification number; attempting to register said telephone in a first telephone system using said first universal identification number; attempting to register said telephone in said first telephone system using said second universal identification number concurrent with said first number being registered; determining from said first SIM card if it contains first data for more than one providing telephone system and selecting said first providing telephone system for registration of said first universal identification number; determining whether said registration attempt with said first universal identification number in said first providing telephone system is unsuccessful; and attempting to register said first universal number with an alternate providing telephone system if said attempt is unsuccessful.”
Lack of inventive step Section 64(1)(f)
The third ground of challenge by the Applicants was the “lack of inventive step” in ’388 Patent. The applicants submitted that the invention doesn’t involve an inventive step and rather a combination of known components. Further, the applicants primarily cited JP 2001/238284 (‘284 hereinafter) and WO99/41921 (‘921 hereinafter) for arguments for the inventiveness of the claimed subject matter, details of which won’t be touched upon for brevity of this piece.
Violation of Section 8
One last argument by the Applicants was for the breach of Section 8 of the Patent Act, 1970. The applicants argued that the respondent didn’t provide details of corresponding patent applications as required under Section 8 (1) undertaking on Form-3. Further, the respondent suppressed the information relating to the withdrawal of the application filed in Japan. The applicant further argued that the ISR and IPER information was not submitted in the patent office which is a violation of Section 8(2). Implications of non-compliance and IPAB’s perspective of such non-compliance has already been discussed in detail in the Tata Chemicals discussed separately, and hence the discussion of this article would not touch upon that aspect.
Furthermore, the ground of violation of section 8 was not taken up by the IPAB as the patent was already revoked on the ground of anticipation and lack of inventiveness.
The IPAB finally revoked the patent on the above-said grounds and also advised Patent Office to apply its discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in the present case.
Finally, this decision put an unclear mark on what extent an explanation or clarification can be made for a specification during the prosecution period.
We would now discuss the response of the respondent during the trial in accordance with section 57.
- The respondent claimed that the added subject matter and amendments were made only due to explanation of the specification asked by the patent office during the prosecution of patent.
- The respondent further cited Section 57(6) of Patent Act which explains right of an applicant for a patent to amend his specification to comply with the directions of the Controller issued before the acceptance of the complete specification or in the course of proceedings in opposition to the grant of a patent.
- Further, the respondent cited that the explanation and amendments were done only to satisfy the patent office, but not voluntarily.
- The respondent explained in front of the board that during the time of filing the respondent was new in the field of patent, thus the specification was not in order.
IPAB stated that Section 57(6) of the patent act never permits an applicant to file an application that is defective in its description of the invention so that it can subsequently rectify the defects by providing additional further descriptive material. Also, the apex board stated that the explanation and clarification cannot be stretched beyond the limitations under section 59 of the patent act.
Further IPAB also directed the patent office to apply discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in this case.
About the Author: Mr. Sitanshu Shekhar Singh, Patent Associate at Khurana & Khurana and can be reached at [email protected]