Technology & Law

The law follows the technology...

Topics

Patents

DELHI HIGH COURT INVITES COMMENTS ON PATENT RULES 2020

The Delhi High Court on October 9, 2020 issued its proposed  “The High
Court of Delhi Rules Governing Patent Suits, 2020”.   The notification may be accessed here on the Delhi High Court website or from this site: 
PublicNotice_G3SK9Q0PX99.PDF 223 KB
The notification asks members of the Bar to send their comments / suggestions if any, within four weeks, to the office of the Registrar General of this Court by e-mail at jrrules.dhc@gov.in.

My comments on the proposed rules may be accessed from here
Response to Proposed Rules- RajivChoudhary.pdf 253 KB


THE FERID ALLANI JUDGEMENT AND THE CHANGED INDIAN PATENT LANDSCAPE FOR SOFTWARE PATENTS

Shortly before the term of a patent (if granted) would expire, in an ex-parte order issued by the IPAB authored by Justice Manmohan Singh, the IPAB finally granted a patent to Ferid Allani for an application filed almost two-decades ago for an invention relating to ‘A method and device for accessing information sources and services of the web.’

Brief prosecution history of the application – from filing to grant

Ferid Allani had an idea and filed a provisional patent application for it on 30.12.1999 in France and it was given the number 99/16704.  Thereafter, a PCT application was filed on 29.12.2000 (PCT/FR2000/003759) and it entered India as IN/PCT/2002/00705/DEL on 17.07.2002.  As such, the term of the patent expires on 29.12.2020 (twenty years is the life of a patent).  The IPAB granted the patent on 20.07.2020 (i.e. about 5 months before expiry).

Critique: Even though the judgement takes pain to explain what the technical effect of the invention is, and the differences in the prior art cited, what is missed is whether the claims incorporate the features having the technical effect.  Hence the claims run afoul of section 10(1)(c) of the Act – invention is limited in scope to the claims.  

In my view, the patent claims are directed towards a structed search syntax generation and displaying corresponding results to user. A structured search syntax is user generated / based on user input logically created.  For example, sports à teams à merchandise if the search is for a merchandise only.  

The judgement (Para 23.e) provides,

e. Through the preliminary selection steps of the present invention, the query of the user is refined and narrowed down at each step so that the user is interactively made to target a particular and well-defined information and a website address is particularly generated locally (without using the internet bandwidth). Thereby, the user is taken directly to the said website, limiting the use of the bandwidth resource only once per search.

FeridAllani.1.png 60.7 KB

About the claim:  The way I read the claim (the key feature is that it stores certain pages in a tree structure (like a directory and files within it), sends out a query based on user input and displays to the user results based on query and populates the display based on information so obtained.   

The claim here does not mention how the internal directory structure is created.  It just says…beforehand locally stored within said communication device…This means that the user provides the necessary feedback to structure the query. 

Compare this with the US and European claims:  both are narrower and include the invention.




 | US Claim (Granted)  |
| 1. A method for accessing information- or service-providing web sites, from a mobile communication device connected through a communication network and provided with a display, comprising: a preliminary search for information or service, locally performed within said communication device in different themes and sub-themes within a plurality of successively displayed selection pages, said selection pages being organized in a structure of tree menu and beforehand locally stored within said communication device, each said selection page comprising a set of icons including one or more direct access icons for directly accessing an information- or service-providing web site and one or more selection icons for locally accessing and displaying another selection page within said structure of tree menu, wherein at least one of said selection pages comprises two or more direct access icons, and a step for emitting on the communication network, in response to a selection of a direct access icon in a selection page being currently displayed, an address of an information- or service-providing web site corresponding to said selected icon, said address being locally generated during the display and selection steps and directly accessing said information- or service-providing web site.

EP Claim (Pending)

A method for accessing web-based information sources and services from mobile equipment connected via a communication network to the Internet, said mobile equipment comprising means for locally storing a set of organized selection pages at the within a menu tree structure and each containing a set of icons,
characterized in that it comprises:
a set of preliminary selection steps, including selection icon activations provided to access locally from a selection page to another selection page within said tree structure, until reaching in one of said selection pages a so-called direct access icon corresponding to a desired remote information source,
a step for finally transmitting on the communication network, in response to an activation of said direct access icon thus reached, a complete address of access to said remote information source sought.

What is the invention: From the specification

This part (about user choosing the tree) is simply stated as organized within the structure of a tree menu… and in my view should have been expanded to include this particular user input. 

Second, I see this as a GUI (graphical user interface) to conduct a search which is itself optimized.  Of course, search optimization is not new, nor was new, in 1999 (before the priority date).  We had super computers which used time sharing concepts and had highly structured query systems for users to be able to make use (because time was a constraint, the problem had to be entered efficiently / optimized). 

Consider an article of 1991, by I.V.Pottosin discussing ‘Analysis of Program optimization and further development’.  In the article the author notes that, ‘[F]or contemporary supercomputers, the requirement of the proper use of hardware peculiarities is added’ ...in addition to… ‘saving computer resources such as time and memory’.   As such query optimization is well known in the art given that the cost of creating a software to run the supercomputer was almost equal to the hardware cost in the mid 1980s.

For more information, one may also see the interesting book by Russell C. McGee titled “My Adventures with Dwarfs: A personal history in mainframe computers”, available here, and on time-sharing of mainframes – The Origin of the VM/370 Time Sharing System by R.J. Creasy – available here.

If one sees the history of Graphical User Interface (GUI) (see Arstechnica article here), a search system like that of the operating system can be built using the GUI.  How does one search in the Windows / Linux / X-Windows / Apple GUI environments ? This was available in the 1990s to a person skilled in the art and whether it is obvious, is debatable. 

But what is not debatable is that the key part of structing the query is missing from the claim language.  This is where the invention resides and its absence in the claim is glaring.  In 1999 when the invention was made, the basic ingredients to reach the invention were there – search optimization to a query and GUI were both available – search optimization from decades of mainframe time sharing and GUI from the Windows system. 

I have no doubt that the combination of search (for something on the web) with GUI was not there in 1999 but this aspect is missing in the claims.

Second, the patent office should have been clearer in its rejections – a two-page rejection for a matter that has travelled to both the IPAB and the High Court shows that it is somewhat different from other ordinary matters.  Repeating a citation with the same rejection is a recipe for inviting trouble (for the patent office) – the least the patent office could have done at any point in the history of this application – is to at least have its cited references properly with specificity.  This should have not been left ambiguous.

Third, the patent office was not represented in during the hearing at the IPAB.  Given that an expert body had already provided its views to the applicant multiple times – both before and after it went to the High Court and IPAB – the IPAB should have asked for written submissions from the patent office.  This is even more important because the IPAB itself had rejected the patent application once before.  

Further, given the IPAB had a different view – it should have heard the patent office – otherwise what stops any applicant going to the same forum and re-agitating the issue just because the bench composition is different.

There is no reasoning given by the IPAB on this aspect – what changed in the intervening period – that the application became patentable.

Other issues are highlighted as they appear in the post.      

Journey of the application

Patent Office  ‹----› High Court ‹----› IPAB ‹----› High Court ‹----› Patent Office

The arrows above are only indicative of the process followed by the application.  A request for examination for the patent application was filed on 19.11.2004 and the application was rejected by the patent office on 21.02.2005 on the grounds that the subject matter lacked an inventive step (Section 2(1)(j)) under EP0847019 (hereafter D1).  

The Applicant then on 17.09.2005 replied to the First Examination Report (FER) arguing that the application was patentable.  Four days later, on 21.09.2005, the patent office again rejected the claims as being unpatentable under Section 3(k) of the Act.  No response was filed to the same and the application was deemed to be abandoned under Section 21(1) of the Act.

The Applicant then filed Writ Petition 6836 of 2006 challenging the order of abandonment on 2.05.2006.

The High Court of Delhi on 25.02.2008 directed the patent office to review the application by providing necessary opportunity of oral / written hearing.  

The Applicant then filed a further response to the objection / rejection on 20.03.2008.  The agents appeared for the hearing and submitted written submissions on 12.08.2008.

A couple of months later on 18.11.2008, the patent office again refused the application.  An appeal against this refusal was filed before the IPAB on 20.02.2009 and the IPAB too dismissed this appeal.

Then an appeal against this IPAB rejection was filed before the Delhi High Court on 19.12.2013 and the DHC on 12.12.2019 disposed off the petition and directed the patent office to re-examine the patent application.  

Then a hearing was held before the patent office on 27.01.2020 and on 07.02.2020 it once again refused the application under the same grounds that it lacks novelty, etc. under Section 3(k).

As already mentioned, the patent office should have been more clearer in its 2020 rejection and should have properly made out a case for rejection rather than repeat the content of the previous rejections.

That said, if one sees the delay – most of it is in courts – rather than before the patent office – so one really cannot point out the cause of delay as our patent office. 

 

Analysis of the patent by the IPAB (Para 20 onwards)

The IPAB first discusses the state of art and the problem that was intended to be solved.  In para 23, it provides:

Then in para 24, FIG. 1 of the application is reproduced with annotations (presumably provided by Applicant / agents).

FeridAllani.7.png 286 KB

Till here, the IPAB also structures the decision and identifies the key feature of the invention as essentially – forming a well-constructed query…emitted to the internet..

Given this background, the technical effect of reduction of bandwidth by a structured query is guaranteed.


Paragraph 27 of the decision discusses an example disclosed in the invention disclosure – but because it is not present in the claims it is kind of pointless in discussing it.  This is what should have been in the claim : i.e. this is the specific tree structure of icons as thought of by the inventor – and should have been claimed.  Because the current claims do not discuss this, they are overly broad.

 

Paragraph 29 of the decision provides more details as regards the invention:

Paras 30 – 41 discuss that the patent office had not applied Indian but EU law as regards computer related inventions.  Here, both Indian law (even if one considers the CRI guidelines issued by the patent office) or European Law, or for that matter even US or Japanese patent law –the basic principles are the same: one has to first construe the claims, then identify the contribution made, then determine whether it falls under any exclusion and finally to determine if there is any technical contribution.  
Here the patent office did exactly that – it found that claims as provided by the Applicant were not inventive – as they did not contain the key inventive step – of the creation of the tree structure and the query stopped.  The patent office cannot be blamed if the applicant despite several opportunities does not bring the claim in line with the requirements.
Para 43 identifies that 19 ½ years have passed – but as identified earlier - the delay is not at the patent office end – but at the court’s end either at the High Court or the IPAB.  In all about 12 years were passed just in courts – patent office took about 6 years including the time for filing of request for examination and about 1 ½ year in deciding multiple petitions filed by the Applicant.

In conclusion, this case will change the patent law landscape as it relates to software patents in India unless appealed.  This is because courts now favour grant of patent applications for software.  










SAMSUNG GETS A FAVOURABLE RULING V. APPLE FROM THE US SUPREME COURT


In a crisp 10 page unanimous opinion, the US Supreme Court overruled the (unanimous) Federal Circuit decision.   The US Supremes held that an “article of manufacture” need not be the end product as was claimed by Apple and agreed with Samsung that the article could be an intermediate product or a component !!!

“The Federal Circuit’s narrower reading of ‘article of manufacture’ cannot be squared with the text of §289. The Federal Circuit found that components of the infringing smartphones could not be the relevant article of manufacture because consumers could not purchase those components separately from the smartphones. […] But, for the reasons given above, the term ‘article of manufacture’ is broad enough to embrace both a product sold to a consumer and a component of that product, whether sold separately or not. Thus, reading ‘article of manufacture’ in §289 to cover only an end product sold to a consumer gives too narrow a meaning to the phrase.” (Emphasis added – see below for analysis).

The decision in many ways is instructive: writing style, size, discussion of the issues are all covered.  Take note that the 10 page length is when there are 2″ margins on both sides.  I am counting only the pages of the decision and not the 2 page summary.  How I wish our courts embrace such practices.  But that is matter for a different post.

Image: For illustration of components only and does not pertain to either Apple or Samsung.

Justice Sotomayor delivered the opinion of the nine and first analysed §289: “Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250 . . . .” 35 U. S. C. §289.

“Arriving at a damages award under §289 thus involves two steps. First, identify the “article of manufacture” to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture. This case requires us to address a threshold matter: the scope of the term “article of manufacture.” The only question we resolve today is whether, in the case of a multi-component product, the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product. Under the former interpretation, a patent holder will always be entitled to the infringer’s total profit from the end product.”

“The term “article of manufacture” is broad enough to encompass both a product sold to a consumer as well as a component of that product. A component of a product, no less than the product itself, is a thing made by hand or machine. That a component may be integrated into a larger product, in other words, does not put it outside the category of articles of manufacture.” ….”While the design must be embodied in some articles, the statute is not limited to designs for complete articles, or ‘discrete’ articles, and certainly not to articles separately sold . .”).

“This reading is also consistent with 35 U. S. C. §101, which makes “any new and useful . . . manufacture . . . or any new and useful improvement thereof ” eligible for utility patent protection. Cf. 8 D. Chisum, Patents §23.03[2], pp. 23–12 to 23–13 (2014) (noting that “article  of manufacture” in §171 includes “what would be considered a ‘manufacture’ within the meaning of Section 101”).  “[T]his Court has read the term ‘manufacture’ in §101 . . . to mean ‘the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.’ ” Diamond v. Chakrabarty, 447 U. S. 303, 308 (1980) (quoting American Fruit Growers, Inc. v. Brogdex Co. , 283 U. S. 1, 11 (1931)). The broad term includes “the parts of a machine considered separately from the machine itself.” W. Robinson, The Law of Patents for Useful Inventions §183, p. 270 (1890).
Ramifications on SEPs and the SSPPU principle:  This decision goes a long way in supporting the smallest saleble patent practicing unit proposition put forth by several US district court judges (In Re: Innovatio; Microsoft v. Motorola, D-Link v Ericsson, etc.) and even the Federal Circuit (D-Link v. Ericsson, Virnet X, etc.)  Supporters of the Entire Market Value Rule may argue that the decision is limited to Designs and not general Patent law.  However, the answer here is the reference of the court to Diamond v. Chakrabarty and to 35 U. S. C. §101.  This reading refers to the term “manufacture” which includes components of an end product.

The term “article of manufacture” is broad enough to encompass both a product sold to a consumer as well as a component of that product. A component of a product, no less than the product itself, is a thing made by hand or machine. That a component may be integrated into a larger product, in other words, does not put it outside the category of articles of manufacture.”
This reading is also consistent with the scope of grant of a patent globally.  If one looks at the patent laws, without exception, they are for claims and claims themselves are based on the specification / disclosure made.  If the claim is to an encoder / decoder, then the royalty is limited to the encoder / decoder – and it does not matter if the encoder / decoder is used in a mobile phone / smart phone / feature phone / satellite phone or even a ship / satellite / aircraft.

One can only wish that our courts look to global decisions like these to interpret Indian patent law.  If they continue the way they do – granting ex-parte injunctions, damages as demanded by patent owner, etc. then they deal a body blow to the Make in India program.  The manner in which several cases are going on right now, I can foretell that the Delhi High Court will become a litigation hub and the preferred forum for resolving patent disputes in favour of patentees and against the detriment of consumers, and manufacturers.

TIDBIT: IPO REVISES PATENT APPLICATION / RFE NUMBERING SCHEME

First posted on spicyip.com on 25.07.2016
In an office order issued some time back, our patent office streamlined the numbering of patent applications and request for examinations.  This numbering system came into effect from 1st January 2016.  The new numbering system is in line with global best practices.

This new numbering system provides for patent applications having a 12 character numeric fixed length standard and applicable to all patent offices.  The 12 character numeric length also includes Year of Filing, jurisdiction, type of application, and application number.

The format for patent applications is explained as follows: YYYYJTNNNNNN
----------------------------------------------------
Y | Y | Y | Y |    J      |   T  | N | N | N | N | N | N
-----------------------------------------------------
2 | 0 | X | X | 1/4 | 1/9 | X | X | X | X | X | X
-----------------------------------------------------

Jurisdiction: Delhi — 1 | Mumbai — 2 | Kolkata — 3 | Chennai — 4 |

TYPE:

1 | 2 | 3 | 4 | 5 | 6 | 7 | 8 | 9
1. Ordinary | 2. Ordinary-Divisional | 3. Ordinary-Patent of Addition | 4. Convention | 5. Convention-Divisional | 6.  Convention-Patent of Addition | 6. PCT NP | 7.  PCT NP Divisional | 8.  PCT NP Patent of Addition
N: Signifies a six digit fixed length running serial number.

Each application will have a date of filing and will be in the format: YYYY/MM/DD where Y is Year, M is month and D is Day.

For example: A first ordinary application filed in Delhi would be 201611000001, etc.

Request for Examination: u/r 24B (1) (i) – Normal

Format: RYYYYJNNNNNN

             R | Y | Y | Y | Y | J      | N | N | N | N | N | N
            -------------------------------------------------
24(1)(i) | 2 | 0 | X | X | 1/4 | X | X | X | X | X | X
--------------------------------------------------------
R signifies a request under Section 24(1)(i) – i.e. a normal request

YYYY denotes year of filing

J: Jurisdiction of patent application filed.

NNNNNN denotes the application number.

Request for Examination: u/r 20 (4) (ii) – Express

Format: XYYYYJNNNNNN

              X | Y | Y | Y | Y | J      | N | N | N | N | N | N
             -----------------------------------------------------
20(4)(ii) | 2 | 0 | X | X | 1/4 | X | X | X | X | X | X
            -----------------------------------------------------
X signifies a request under Section 20(4)(ii) – i.e. an Express request

YYYY denotes year of filing

J: Jurisdiction of patent application filed.

NNNNNN denotes the application number.

As with applications, Request for Examinations will also have a date of filing and will be in the format: YYYY/MM/DD where Y is Year, M is month and D is Day.

In one of my initial posts on Spicyip, I had suggested a similar numbering scheme for patent applications.  I am sure that this will standardize the process and make the retrieval etc. much easier.
officeOrder_31December2015.pdf 1010 KB

FORMULA ONE RACING AND IP PROTECTION

First posted on spicyip.com on 04.08.2014

Some time back, one of our readers had asked us to provide some information on Formula One (F1) racing and patents.  This post provides a background on the elements of a F1 car, and patenting in the F1 industry.  To better explain the concept, this post will cover two aspects in great detail in the F1 car where patenting would be a natural choice. Currently, there is little evidence of large scale patenting in F1 racing.  This may change going forward due to several cases of espionage being detected at the highest levels in F1 racing.

Background: It would be an understatement to state that modern F1 car’s are extremely complex machines.  From chassis, to engine block, to transmission systems, braking, displays, controls, everything must perform exactly as specified in the regulations to keep the driver safe.  One can think of a F1 car as a car, but with an engine strapped on to the car.  To handle these complex machines, it is but natural that the driver is uniquely conditioned and at the top of human physical performance parameters.  F1 drivers must have the stamina and endurance to last the race.  Each F1 car in race conditions are capable of creating gravitational forces of up to 3.5 g (parameter under which gravitational forces are measured).  Additionally, the extreme heat in the F1 car cockpit – results in drivers losing up to 3-4 kg per race!

Power Units and Energy Recovery System (“ERS”): A F1 car’s power unit consists of a 1.6-litre turbocharged V6 engine, which operates in conjunction with an Energy Recovery System (ERS). The engine must have six cylinders in a 90-degree formation, with two inlet and two exhaust valves per cylinder and a single turbocharger. They are rev-limited to 15,000rpm, have a fuel flow limit of 100 kilograms/hour and produce around 600bhp. They must also have a single tailpipe exhaust.

 

 Steering Wheel: The steering wheel of a F1 car is the definition of ergonomics.  A driver must have easy access to every bit of information, literally (physically too) at fingertips.   There are many multiple of parameters that can be adjusted on the go, but only by the driver. Additionally, there must be a data monitoring mechanism that provides data streaming from the F1 car to the engineers in the pit.  Because there are multiple parameters such as fuel intake, air ratio, torque curve etc. that can be varied on go by the driver, there are more than 30 knobs, buttons, switches on the wheel.

Patenting & F1: James Allen in his blog jamesallenonf1.com invited a F1 engineer to comment on the lack of patents in F1:

It is not exactly clear that when F1 teams large amounts of money on research and development (R&D) to get that extra milli-second advantage for the team / car, they fail to recoup their investment in R&D.  The issue is further confounded by the fact that there are hundreds, if not thousands, of patents in the average car that you and I drive.  More often than not, the technology developed for racing ends up in the average automobile.  These include engine optimizations, braking, fuel intake, safety, and other improvements.

Some of the few patents that I could access were: Shifting system for vehicle transmission (here), Fluid inerter (here);  Steering system for use with motor vehicles (here); Sensing air-fuel ratio (here) etc.

It may be true that FIA could vote out the patented technology by the end of the season, thereby bringing all teams in parity.  However, one should remember that patents are published 18 months after application, and the aspect of patenting may escape the technical committee altogether.

Current Process: In F1 racing, the lack of patenting has led to another form of protection of ideas – secrecy.  As any ardent fan of F1 would know, that it is easier to meet and say hello to the driver, than to get to see the car or get into the pit before the season.  Teams protect their ideas and inventions by controlling access.  This control includes trade secrets, copyright, design patenting / registrations, and further controlling people’s access and use of information by confidentiality agreements, employment contracts, manufacturing or supply contracts.  By using secrecy as a tool to develop cars for the upcoming season, teams ensure that their ideas protected, and they get the first mover advantage.  In season, other teams must catch up to the developments made.

However, there are many concerns of espionage in F1 teams, with one being as recent in 2007.  Ferrari alleged that former employee Nigel Stepney has passed on critical technical details to McLaren.  A hearing resulted in several penalties for McLaren for illicitly collecting and holding information from Ferrari to confer a dishonest and fraudulent sporting advantage. McLaren was excluded from the constructors' standings and a record fine of US100 million was imposed.

Additionally, because Federation Internationale de L’Automobile (FIA) stand that F1 teams develop technologies that are applicable in production cars, could bring many changes including the large scale patenting seen in on-road automobiles industry.  It is expected that these two factors–countering espionage, and bringing F1 technology to the masses, may result in an uptake of patenting activities in F1.