Tata Chemicals vs. Hindustan Unilever Limited Revocation Proceeding for IN 195937: Would compliance of Section 8 become a nightmare for Patent Applicants?

This article relates to a recent judgment of IPAB on 12’th July 2012 on the revocation of an Indian Patent IN 195937, wherein certain interesting aspects relating to developing standards for revocation under Section 8 of the Indian Patent Act, 1970 have been discussed and put forth, quite strongly!!

Case Summary:

In summary, the case relates to IN 195937, which corresponds to Application No. 709/MUM/2002, of Hindustan Unilever Limited (HUL) issued on 26’th Aug 2005. The first independent claim of the present subject matter relates to a filter cartridge and claims:

1. A filter cartridge for the treatment of water which comprises an inlet for the water to be treated, the inlet communicating with a downwardly extending hollow passage adapted for gravity flow of water there through, the hollow passage being connected at its lower end to at least one filter media, and an outlet for exiting treated water from the filter media;

Fig. 1 of ‘937 Patent is illustrated below:

 

In operation, impure water first passes through a hollow central tubular passage (TP) and thereafter, near its bottom end, traverses through a “U” path into a first annular concentric chamber (FCC) constituting a resin bed. After passing through the resin bed the water is allowed to travel upward into a second annular activated carbon chamber (SCC), which is again a concentric chamber operatively connected to the annular resin chamber.

The proposed novelty of the respondent (HUL) lies in:

1. Upward flow of water (from bottom) through the resin (filter media) for its treatment; and

2. Presence of a hollow space immediately on the entrance of water into the cartridge so that there is a hollow passage between the inlet and the filter media, such that the water flows under gravity in the hollow passage and against gravity through the filter media to provide improved filtration and to avoid air entrapment.

Novelty and Obviousness Issues:

Two references US 6,387,260 (‘260 hereinafter) and European Patent 1106578 (‘578 hereinafter) were primarily relied on for arguments by the Applicant for novelty and obviousness of the claimed subject matter.

‘260 patent in the Summary Section states “the filter cartridge comprises a housing with a filtration chamber therein and a sealed cavity in the upper portion thereof. A liquid inlet is at the bottom of the housing to permit liquid to flow from the container into the filter cartridge, upwardly through the filtration chamber, into a sealed cavity, and downwardly out of the filter cartridge through a fluid conduit of the restricted cross-sectional area the exit end of which is elongated to extend below the liquid inlet in the bottom of the filter cartridge. A vacuum is created in the sealed cavity which causes a siphon effect that draws additional liquid through the filter cartridge.”

Col 4, Line 41 of ‘260 also states “which contains liquid to be purified, into the lower part of the filter cartridge 20 through apertures 21 the bottom thereof, and then upwardly through filtration media 7 within cartridge 20, through opening 22 and into sealed cavity 6 located at the upper part of the filter cartridge 20.”

Claim 1 of ‘260 states: 1. In combination, a) a filter cartridge for liquid purification comprising a housing having a top, a bottom, and a side wall, and having a filtration chamber therein characterized in that it has a sealed cavity in tile upper portion thereof; a liquid inlet in said housing to permit liquid to flow from an unpressurized source of liquid to be purified into the filter cartridge; means for providing a vacuum in the sealed cavity comprising a tubular element having an inlet in the sealed cavity and extending from the sealed cavity..

Fig. 1-4 are also relevant in structure and construction to ‘937 Patent.

EP ‘578, on the other hand, does not have an English translation, but does disclose a filter material 37 and central tube 31, wherein the central tube 31 distributes water and allows it to flow towards the filter material 37 to be filtered in the upwards direction, which clearly maps with the two inventive features of ‘937 as mentioned above. Following figure of ‘578 is of relevance,

Section 8 Deliberation:

Following gives a quick background of the family of the ‘937 Patent

1. GB Priority Application was first filed vide Application No. 0307146 on 28.03.2003.
2. PCT Application filed on 21.7.2003 taking priority of Indian and GB Application.
3. PCT Application designated GB as one of the countries
4. GB Application ‘146 terminated on 08.12.2003.
5. The respondent, in response to the first and second examination reports, only informed about PCT Filing along with UK Application being pending but did not submit IPER, which was available when the second examination report was replied to.

In view of the above, let’s first have a quick look at relevant portions of Sections 8(1) and (2), which state:

Information and undertaking regarding foreign applications

(1) Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application [or subsequently 5[within the prescribed period as the Controller may allow

(a) a statement setting out detailed particulars of such application; and…

(2) At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event, the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

Although, both the above clauses clearly state that relevant information/details pertaining only to a country outside India needs to be presented, the moot point held by IPAB was that IPER related to processing an application in a country outside India and that “the word ‘processing’ is an all-encompassing word, it would take within it the series of actions or steps to be taken in order to achieve a particular end.”

Furthermore, it was submitted that if under 8(1), the Respondent itself had mentioned the PCT details, then it inherently did assume the PCT to relate to a country and therefore was liable to fulfill the obligation of giving all the details of the PCT as well. This was in spite of the fact that the very patent that was discussed in IPER was also cited by the Indian examiner in the FER and therefore was already deliberated and considered for examination. However, this argument too, according to IPAB, does not waive off the duty of the respondent to submit all relevant information.

The above decision, particularly in light of the interpretation of Section 8, raises few concerns:

1. First, isn’t too much weightage being given to the manner in which compliance of Section 8 is being done by an Applicant. I really wonder, in case ‘578 and ‘260 references not been relevant enough to destroy the novelty and render the subject matter obvious, would the argument on Section 8 alone, helped revoke the patent. I really hope no!!
2. Is it actually practical for patentees to submit all relevant information in the manner desired, in time, without any time delays, and without lapses? Requests under section 8(2) ask for a translation of search and examination reports in all major countries and therefore such requests also include submission of office actions and responses thereto from countries such as Japan, China, and Korea. Is it actually practical for the Applicant to get all these documents translated at a significant cost merely for meeting the requirement of the Indian Patent Office?
3. Although I do agree with the rationale behind the submission of ISR and IPER for PCT cases (especially when they are not yet published during the responses to the examination reports) and also agree with the decision in the present case with regards to the interpretation of Section 8 (but would reserve my comments for brevity and rather focus on the concerns), I believe that putting forth such strong views in a decision, is giving nothing but a scare to International Applicants for the repercussion that their Applications could have in case there is a single lapse, moreover when such a lapse is not even related to the claimed subject matter of the invention. I am also highly doubtful if even one granted a patent in India would have actually, with complete accuracy, complied with the Section 8 requirement in time.

Personally, for the benefit of the entire fraternity, I believe it would be most beneficial if the Patent Office could, through an official notification, objectively point to the kind of references they expect, countries from which the references are to be disclosed, translation of which documents is absolutely critical, for compliance of Section 8, so that not only there is clarity at the Applicant’s end but also so that the process does not become a nightmare for them.

Finally, I am sure we are headed in a direction where we make things more comfortable for the patentee rather than for the infringer and hope not to come to a situation when the infringer raises “non-compliance of Section 8” as the sole ground for revocation under Section 64, and wins the case!!!

About the Author: Tarun Khurana, Patent Attorney, available at [email protected]