S. Chandrasekaran, Member (T) - (1.) THIS is an application for revocation of patent No. 214388 under Section 64 of the Patent Act, 1970 (hereinafter referred to the Act). In the said revocation application the petitioner filed 2 Miscellaneous petitions, one being a stay application (M.P. No. 12 of 2009) and another application for urgent and early hearing (M.P. No. 11 of 2009). M.P. No. 11 of 2009 was heard on or about July 13, 2009 and the Appellate Board passed a stay order suspending the operation of the patent till the hearing of the stay petition. By an order dated July 15, 2009 the Hon 'ble Madras High Court had set aside the order dated 13/07/2009 of the Appellate Board and directed the IPAB to hear the stay application expeditiously within three weeks. As per the High Court orders, the M.P. No. 26/2009 was filed for urgent hearing and listed today. Thus the matter was placed before us on September 7, 2009.
(2.) THE reply to the stay petition was due on August 5, 2009 but the respondent No. 1 has not filed his reply. It was noticed that the respondent No. 1 was neither prepared to file a reply to the revocation application as well as to the stay petition nor to argue the matter before us on the hearing day, but only sought permission to file the written submissions within a week 's time which was allowed and the written submissions were filed only on 14 -9 -2009. The counsel for the petitioner/applicant argued for the grant of interim stay relying on three specific grounds of revocation, namely, under Section 64(1)(j) [Patent obtained by false suggestion and representation], 64(1) (m) [Breach of Section 8] and 64(1)(o) [Amendment made fraudulently], of the Act. The petitioner 's counsel also addressed the grounds of prima facie case, the balance of convenience and irreparable injury for the purpose of making out a case for the stay of operation of the impugned patent.
(3.) THE counsel for the petitioner submitted that the complete specification alongwith the application for patent was filed on 4.3.2002 and numbered as 161/MAS/2002 bearing the title 'Mobile phone having a plurality of simcards allocated to different communication network' and the claim 1 of the specification filed was worded as below: Claim 1: A mobile phone having provision for incorporation of two or more than one simcards to receive and/or send two signals or more than one signal at a time. To this, the respondent No. 2 sent the first examination report raising the technical objections that (1) the invention and its operation or use and the method by which it is to be performed are not fully and particularly described in the complete specification; (2) the claims do not sufficiently define the invention and (3) they fall within the scope of clause (f) of the Section 3 of the Act and finally (4) if any, application has been filed outside India then requiring the applicant to file the examination reports of such other patent offices. The counsel for the petitioner submitted that the respondent No. 1 refiled the papers on 29.5.2006, with just two lines reply without making any amendments in the specification. The counsel further submitted that the respondent No. 2 having examined the whole specification again, issued the second examination report on 19.10.2006, maintaining the earlier technical objections and further citing three prior published patent documents as citations against the novelty of the invention. The counsel for the petitioner submitted that the respondent No. 1 amended the claims radically altering the invention by incorporating the new matter and new constructional features of the claimed device of which there was no whisper in the specification originally filed on 4.3.2002 without addressing or making any response to the three citations made by the respondent No. 2 in the second examination report. The counsel for the petitioner further submitted that such an amendment is in total contravention of Section 57 read with Section 59 of the Act and obtained the grant of patent with such amended specification. The counsel for the petitioner argued on Section 59 which specifically provides that 'No amendment of an application for a patent or a complete specification or any document related thereto shall be made except by way of disclaimer, correction of explanation and no amendment thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment' and submitted that the respondent No. 1 has fraudulently made the amendments both in the body of the specification and in the claims which were not allowable by law. In this regard, counsel for the petitioner relied on the decision of the High Court of the Justice - Chancery Division U.K. in the description on application for the revocation of the Section 26 of patent No. 308932 granted to Georges Eveno. The counsel for the petitioner relying on the ground regarding the breach of the provisions under Section 8 of the Act, that the respondent No. 1 filed International PCT application bearing No. PCT/IN2003/00044 claiming the priority of the application No. 161/MAS/2002 and further continued that the respondent No. 1 also made an application dated 3.3.2003 in Australia which were published on 16.9.03 for which documentary evidence in support thereof has been given in the main petition. The counsel for the petitioner further submitted that the respondent No. 1 also further made an application for patent in Japan which was withdrawn on or about 21.6.06,.as was apparent from the WIPO final data and the documentary evidence in support thereof was available in the main petition. The counsel for the petitioner submitted that the international search report given by the Austrian patent office contained prior published documents has very pertinent citations against novelty, rated as X and Y category (2X and 2Y citations) because of which the claimed invention cannot be considered novel and the claim cannot be considered to be involving any inventive step, such combination of inventive features if any, being obvious to a person skilled in the art. The counsel for the petitioner stated that the respondent No. 1 deliberately suppressed the details of foreign filings and therefore made a clear violation of the provisions of Section 8(1) of the Act and he also pointed out that the respondent No. 2 has specifically called for the examination reports from various patent offices, if any, under para 22 of the first examination report. Whereas, the respondent No. 1 having made an application in Japan and also having withdrawn application after examination, no information was supplied to the respondent No. 2. The counsel for the petitioner further submitted that the ground of failure to comply with the provisions of Section 8 of the Act and as such the failure is a ground of revocation under Section 64(1)(m) which provide that the applicant for the patent has failed to disclose to the Controller, the information required by Section 8.... In this connection, the counsel for the petitioner referred to the judgment of the Delhi High Court, CS(OS) No. 930 of 2009 - Chemtura Corporation v. Union of India (UOI) and Ors. reported in . The counsel for the petitioner also referred to the response and submissions of the respondent No. 1 wherein the respondent No. 1 has admitted that there was non -compliance of the Controller 's action and the respondent No. 1 has gone to the extent to say that such non -compliance was not overt or deliberate act and hence such action cannot be viewed as fraud or mis -representation. The counsel for the petitioner submitted that the defense taken by the respondent No. 1 is wholly contrary to the provisions Section 64(1)(m) of the Act, because, saying that such act of non -disclosure is not fraud or mis -representation, but mere failure to disclose to the controller and the information required by Section 8 itself is merely a ground for revocation of patent, but when the respondent No. 1 has clearly admitted that there was non -compliance of requirements of Section 8 of the Act, then he has no ground to defend a case of revocation by raising the plea that such act of non -disclosure does not become a clear case of revocation of the patent under Section 64(1)(m) of the Act. But the counsel for the petitioner submitted that such fraud or mis -representation as referred to under Section 64(1)(m) is a strong prima -facie case for revocation and the patent is liable to be stayed in the interest of justice and to avoid multiplicity of proceedings. The counsel for the petitioner relying on the ground under Section 64(1)(j) 'that the patent obtained on a false suggestion or representation' submitted that the invention sought to be claimed by the respondent No. 1 is only a paper technology and cannot be translated into practice. He also further stated that the respondent No. 2 had called for a prototype model or the sample of the invention under para 14 of the first examination report, but the respondent No. 1 did not comply with such requirement, whereas in the matter, when the custom department asked for the prototype design of the product to be produced the respondent No. 1 produced two prototypes (Type I & II) and the adjudicating authorities, viz., customs observed that none of the prototypes contained the essential features, namely, plurality of headphone/earphone jacks or a plurality of Bluetooth devices which goes to show that simultaneous conversation parallely on different simcards was not possible. The counsel continued that the adjudicating authorities namely customs, has stated in their order that one cannot talk with second caller until and unless the first call is discontinued or put on hold and plurality of Bluetooth, headphone/earphone etc. are not available in the prototype submitted. The counsel for the petitioner continued that this action of respondent No. 1 goes to show that the prototype produced before the customs authority after seven years of the date of patent did not have the features of the invention claimed in the patent and invented devices did not work in the manner disclosed in the specification having simultaneous operation of the individual simcards. The counsel further stated that the invention as originally disclosed to patent office is found in several prior arts and to overcome the same, the respondent No. 1 has incorporated additional features which are imaginary in nature and therefore not present in the prototypes. The counsel for the petitioner further submitted that the facts of the present case are almost identical to the case above referred and argued before the Hon 'ble Delhi High Court where the patent holder during the prosecution of the application failed to comply with the requirements of Section 8(2). In the present case the requirements of Section 8(1)(a) and 8(1)(b) as well as Section 8(2) have not been complied with. The counsel stated that in the present case no Form 3 was filed at all, let alone disclosing the details of the applications made in PCT, Japan and Australia and therefore the non -compliance is purely willful in nature when the respondent No. 1 is having clear intention to file abroad. The counsel referred and stated that as regard to Section 8(2) there was a specific requirement to furnish details of the application before the JPO but for reasons best known to the respondent No. 1, the required details were not furnished which further amounts to suppression of material information. The counsel for the petitioner stated that in the case before the Hon 'ble Delhi High Court, the Hon 'ble Justice S. Muralidhar was pleased to hold that 'in view of the prima facie non -compliance by the Plaintiff with the requirement of Section 8(1)(b) and 8(2) of the Act, the ground for revocation as contained in Section 64(1)(m) is prima facie attracted.' and the counsel referred to the present case and stated that Section 64(1)(m) of the Act is prima facie attracted and accordingly the impugned patent is liable to be suspended till the disposal of the revocation petition on the present ground alone besides other grounds where the petitioner has also made out equally strong prima facie case. The counsel for the petitioner stated that the defense of the respondent No. 1 is wholly contrary to the specific provisions of Section 64(1)(m) of the Act which does not require that there should be any fraud or misrepresentation but mere failure to disclose the Controller, information required by Section 8 is itself a ground for revocation and when the respondent No. 1 admits non -compliance or requirement of Section 8, then he has no ground to defend a case of revocation under Section 64(1)(m). The counsel for the petitioner argued that the order passed by the Customs authority and its findings with respect to the prototypes are wholly adverse to the respondent No. 1 and an extremely strong prima facie case of breach of Section 64(1)(j) is made out and the patent is liable to be suspended in the interest of justice and to avoid multiplicity of proceedings. The counsel for the petitioner stated that in the case of Delhi High Court case of Surendra Lal Mahedra v. Jain Glazers (reported in MAN/DU/0030/1980) and in the case of Franz Zaver v. New Yesh Engineers reported in (Delhi High Court), and in the case of Hindustan Lever v. Godrej reported in : AIR 1996 CAL 367 (Calcutta High Court), the Courts have held that balance of convenience is against the patentee in the event the patent has not been put to practice and has not been used for a long time. The Counsel said that in the present case more than seven years have passed but the respondent No. 1 has not yet even prepared a proper prototype of the product let alone a marketable version of the product and there is nothing on record to show that any steps have been taken for commercial manufacture and sale of the product under the impugned patent. Accordingly the counsel said that the balance of convenience is wholly against the respondent No. 1 and is in favour of the petitioner for the grant of an interim order for stay of the Patent. The Counsel for the petitioner said that in total contrast to the Patent Law, Section 31 of the Trade Marks Act, 1999 provides that registration of a trademark is prima facie evidence of validity and therefore, the two contrasting positions between the Patents Act and the Trade Marks Act, 1999 are apparent on the face of the Law. The counsel for the petitioner submitted that in an appropriate case where the petitioner in an original motion (Trademark Rectification) has succeeded in making out a strong prima facie case of invalidity of a trademark and this Ld. Tribunal has interfered and suspended the rights of the registered proprietor in the registered trademark and he referred to a few such cases which were cited at the hearing are set out below - I) Relying on the order of this Appellate Board in a Trade Mark case in M.P. No. 251/08 in ORA/275/08/TM/CH and M.P. No. 252/08 in ORA/276/08/TM/CH, the counsel said that in the present case the respondent No. 1 has not used the product of the impugned patent at all since 2002 and 7 years have passed and the grant of stay of the effect of the patent will not and cannot affect the respondent No. 1 and even the prototypes which have been prepared and shown before the Customs authorities are not in accordance with the impugned patent. II) Relying on the order of this Appellate Board in a Trade Mark case in M.P. No. 53/2008 in ORA/38/2008/TM/DEL and M.P. No. 52/2008 in ORA/41/2008/TM/DEL, the counsel further argued that the facts of the present case are similarly placed inasmuch as the respondent No. 1 has failed to file its counter till the time of the hearing. Furthermore, on merits a strong prima facie case of invalidity of the impugned patent has been made out on more than one ground and therefore the impugned patent ought to be stayed till the disposal of the main petition. The counsel prayed that such relief is required in the interest of justice because the respondent No. 1 is taking action against several parties and the present case has caused serious loss and damages to the business of the petitioner both in monetary terms and in terms of goodwill and if not prevented now, the respondent No. 1 will continue on its wrongful efforts and harass and cause loss and prejudice to the petitioner and to other persons as well. III) Relying on the order of this Appellate Board in a Trade Mark case in M.P. No. 6/2008 in ORA/4/2008/TM/DEL (Smt. Raj Rani Agrawal Proprietor of Bios Laboratory v. M/s. Parul Homeo Laboratory (P) Ltd.) - wherein it was held that 'the applicant has established a prima facie case for interim injunction and the balance of convenience is in favour of the appellant. We, therefore, grant stay of effect/operation of the impugned registration till next date of hearing' and the counsel continued that having regard to the position taken by this Appellate Board on the question of interim stay of statutory rights, the present case is no exception from the trademark cases reported above and the counsel further added that there exists a fair chance for the petitioner to succeed in the above appeal mainly on three specific grounds of revocation as the respondent No. 1 has violated the provisions contained in Section 64(1) (j), (m) & (o) of the Act and it is a fit case for the stay of the operation of the patent in the interest of justice and fair play. Accordingly, the counsel for the petitioner requested that he is entitled to an interim order against the respondent No. 1 for the stay of the operation of the impugned patent till the disposal of the main petition and also to fix an early date for hearing the appeal.;