Domain Name Registration and Dispute Resolution

What is Domain Name?
A domain name is used to represent the owner of the address in order to locate computers on the Internet. The main purpose of a domain name is to provide recognizable names to mostly numerically addressed Internet resource. To simplify the differences among Domain name, URL and Registered domain name, the bellow mentioned example can be cited.
When a company’s domain name is same to its company’s name or one of their particular products, their domain name can be commercially exploited by other competitor companies and there is a chance of loosing the valuable IP assets of that company. Company whose domain name is registered will have the legal right to file a lawsuit against the unauthorized users.
There are two types of domain name one is “generic top-level domains (g-TLD)” and “Country Code Top Level Domain Name (cc-TLD)”. In the top-level of the hierarchy appears after the last dot ('.') in a domain name. In "iocl.com", the top level domain name is .COM. The .COM name is the most common top-level domain name, and is used to indicate that the domain name is owned by a commercial enterprise. Other common top-level domain names include .ORG (for non-profit organizations), .NET (for network and Internet related organizations), .EDU (for four-year colleges and universities), and .GOV (for government entities).
Apart from this each country has been given a unique top-level domain name. For an example, .IN indicates a domain in India and .UK indicates a domain in United Kingdom.

What are the benefits of domain name registration under trade marks law?
Domain name registration is considered as the most effective legal way to ensure legal protection under trade mark law through out the territory of a country where the trademark right was granted.
Under the statutory right to a registered trade mark, the registered owner of the domain name can protect his/her intellectual property rights against detrimental exploitation
What is the procedure for registration of a Domain name under Trade Marks (amended) Act 1999?
There is no specific section or rules in India to register the domain name under the Trade Marks (amended) Act, 1999 and Trade Marks (amended) Rules, 2002.
However it is a general practice before the Trade Mark Registry India that anyone interested can file a trade mark application for registration of its domain name.
The detail procedure to file and registration of a trademark for domain is same as the procedure envisaged in the Trade Mark Manual Portion.

Is there any International Domain name dispute Resolution system?
The Internet Corporation for Assigned Names and Numbers (ICANN) is a not-for-profit public benefit corporation to keep internet’s unique identifiers system secure, stable and interoperable. ICANN provides a globally accepted domain name dispute resolution system under the Uniform Domain Name Dispute Resolution Policy (UNDRP). The details rules and procedure to file a complaint and filing of defense argument, the formation panel to hear the disputes etc. discussed under this policy is available at: http://www.icann.org/en/dndr/udrp/uniform-rules.htm.
ICANN provides a number of providers who can deal with the domain name disputes.
In particular, ICANN involves in the following-
1. It coordinates the allocation and assignment of the three sets of unique identifiers for the Internet, which are
a. Domain names (forming a system referred to as "DNS");
b. Internet protocol ("IP") addresses and autonomous system ("AS") numbers; and
c. Protocol port and parameter numbers.
2. It coordinates the operation and evolution of the DNS root name server system.
3. It coordinates policy development reasonably and appropriately related to these technical functions

What are the key issues to be analyzed while a Domain name dispute arises?
Some of the key issues should be analyzed in a domain name disputes are-
 Whether the domain name holder has trademark rights over the domain name?
 Whether the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
 Whether the domain name holder used or using (prior to the dispute) of the domain name in connection with a bona fide sale of its goods or services?
 Whether the domain name holder using the mark in a bona fide non-commercial or fair use way at a web site accessible at the domain name?
 Whether the domain name holder made an attempt to divert consumers from the trademark owner's web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
 Whether the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
 Whether the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
 Whether the domain name holder provides false information when applying for the registration of the domain name (or does so in connection with other domain names)?
 Whether the domain name holder registered domain names of other parties trademarks?; and
 Whether the trademark of the owner’s trademark satisfies the criteria of distinctive and famous?

What is WIPO Arbitration and Mediation Centre to adjudicate the disputes relating to Domain name?
It provides international dispute resolution system on the basis of the ICANN’s UNDRP. The WIPO Arbitration and Mediation Center is recognized as the international leading institution in the resolution of Internet domain name disputes. Since December 1999, the Center has administered over 32,000 proceedings, of which over 17,500 under the WIPO-initiated Uniform Domain Name Dispute Resolution Policy (UDRP) which is adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP applies to disputes in the generic Top-Level Domains (gTLDs) (e.g., .com, .net, .org), as well as an increasing number of Country Code Top-Level Domains (ccTLDs) (e.g., .in for India, .au for Australia).
A detail guidelines on the dispute resolution procedure before the WIPO Mediation and Arbitration Centre is available at: http://www.wipo.int/freepublications/en/arbitration/892/wipo_pub_892.pdf
In 30th April 1999, WIPO recommended and published a report on the issue and dispute resolution process on domain name. Based on the WIPO’s recommendation ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UNDRP) which came into effect from 1st December, 1999.
There are a number of ICANN accredited domain name dispute resolution providers under UNDRP from time to time. WIPO is the leading ICANN accredited domain name dispute resolution providers in the world. According to WIPO about 60% of all cases filed under WIPO domain name dispute resolution policy.

What are the types of Domain name disputes?

There are two types of controversies that can rises under Domain name dispute. In the first type of dispute, an individual reserves the domain name of a well-established company for the purpose of re-selling it to the company at a higher profit which is called “Cyber squatting.” The second type of dispute involves two established companies with similar domain names.

Cyber squatting can be defined as the practice of registering a domain name with an intention to earn profit by selling it to the trademark owner. Basically, there are two things which are responsible for this practice. First, Registrar of trade marks grant domain name registration on first come first served basis. Secondly, a trademark is not infringed by a domain name unless the trademark existed at the time of domain name registration.


Is there any case precedent on domain name disputes in Indian courts?
Indian Courts have seriously dealt with Cyber squatting and have confirmed that such activities shall be looked upon. In the case of Tata Sons Limited v, Bodacious Tats & Ors., the defendants were unable to establish any legitimate interest for the use of “TATA” as their domain name. Hence, the Delhi High Court restrained the use of the trademark “TATA” as a domain name. Similarly, in Dr. Reddy’s Laboratories Ltd v. Manu Kasouri, the Court found that the defendant had bad faith in registering “Drresddyslab.com” as their domain name. One of the significant cases in this regard is Yahoo case where the Internet website sued an Internet pirate who had not only registered the domain name “Yahooindia.com” and many other variations of it but had used “Yahooindia” as a trademark in a similar manner on its website. The Delhi High Court granted an injunction restraining the defendant from using “Yahoo” either as a part of his domain name or as a trademark or from copying any of the contents of the plaintiff’s web page and thereby infringing yahoo’s copyright.

Fujifilm won $16 Million Award for Lens-Fitted Film Packages

FUJIFILM CORPORATION V. JACK C. BENUN AND JAZZ PRODUCTS LLC, POLYTECH ENTERPRISE LTD. (PE)
AND POLYTECH (SHENZHEN) CAMERA CO. (PC)
Facts:
This case is concerns single-use cameras, or Lens-Fitted Film Packages (LFFPs). Fuji owns U.S Patents relates to LFFP. Once the LFFP is used by a consumer and it is taken the processor and the processor opens the LFFP and processes the film. The film processor does not return empty LFFP (shell) to the consumer. The defendant Jazz used to keep LFFPs and refurbished the LFFP and sold it as new LFFP in the market. It was the 6th Appeal from the Courts decision findings that the first defendant and the other companies controlled by him is liable for infringement of the Fuji's LFFP. In 2005 Fuji sued Benun, Jazz and others for patent infringement. After Bankruptcy Court for the District of New Jersey shut down Jazz, PE supplied Jazz with LFFPs that were refurbished by PE's Subsidiary company PC. PC involved in operating a factory in China where the LFFPs were refurbished. Later on Jazz purchased the Jazz Photo Corp's inventory about LFFPs made by PE and PC (collectively ploytech). The District Court made preliminary injunction against Jazz from selling in or to U.S. Later on Jazz again started re-importation of the LFFPs which was in question and the District Court found defendants liable for contempt of the preliminary injunction based on the clear and convincing evidence that the re-imported LFFPs were infringing as determined by the sampling process. In 2009 the defendants moved in limine to bar reference to prior litigations and administrative actions and to collaterally estop Fuji from Litigation.
Issues: Whether the Defendants are liable for patent infringement?

Judgment:
After finding from both party’s argument and evidence, at the close of Fuji’s case, defendants moved for judgment as a matter of law (JMOL) under Fed. R. Civ. P. 50(a) on Fuji’s infringement claim based on defendants refurbishing Achiever-brand LFFPs. Defendants’ JMOL motion, which contained no other issues, was denied. The jury found willful infringement of Fuji’s patents by the defandants’ and awarded $16 million in favor of Fujifilm.

Culling Frivolous Patents in India

Frivolous patents/applications related to pharmaceutical science are dealt by the Indian Patent Office by the provisions available in the Indian Patents (Amendment) Act, 1970.
As per the current provision, frivolous inventions disclosed at the Indian Patent Office can be opposed both before the grant of patent (u/s 25(1)) and after the grant (u/s 25(2)). Frivolous patent applications are scrutinized by the patent office examiners during examination. Section 3(d) of the Act plays an important role in this regard.
As reported by the “Live Mint”, the National University of Judicial Science (NUJS), Kolkata, had conducted a study on the provisions available in the Indian Patents Act to deal with frivolous patents.
It is revealed from their study that the said three provisions, sections 25(1) , 25(2), and 3(d), were the basis of rejecting 7 out of 10 patents rejected in the area of drugs, and 15 out of 20 rejected in other areas in recent years.
Section 3(d) of the Act strictly bars from patenting inventions related to salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance, unless they have significant synergistic effect over the prior art. This provision of the Act also restricts pharma giant from “ever greening” their already granted patents.
Pre-grant opposition and post-grant opposition are other two instruments by which frivolous patenting are prevented.
It seems that the number of opposition is very less in India against the frivolous patent, although there are very effective provisions available in Indian Patents Act to oppose the frivolous patent and subsequent rejection by the Indian Patent Office.
Pre-grant opposition is known as 'opposition by way of representation' under section-25(1) of the Indian Patent Act, 1970. Any individual or legal entity having interest can file an opposition on the ground mentioned in this section after the publication of application, but before the grant of the patent.
Even if a patent is granted, any individual or legal entity having interest over the subject matter as disclosed in the granted patent, can file post-grant opposition. Post-grant opposition is filed under section-25(2) of the act by filing Form-7. The patented matter is laid open for opposition by third party for a period of 1 (one) year from the date of publication of the patent.
As per the recent report of “livemint.com”, patent opposition in India is very less due to insufficient understanding of available provisions by local companies and patient groups.
It is also noted that the number of patents rejected by the Indian patent office during the examination procedure is more than the number of opposition in India. It indicates that the filing of frivolous patent in India is increasing day by day. This is so greatly because of the insufficient understanding and lack of awareness regarding prevailing Indian Patents Law among the people as well as corporate managers.

Idea Patenting

The subject matter of an idea shall satisfy a numbers of parameter to get a patent protection. The conditions of patenting an idea are-
a. It shall be ‘novel’.
b. It shall involve an ‘inventive step’ (followed by India and Europe) or it shall be ‘non-obvious’ (followed by United States) to a person skilled in the art.
c. There must be some ‘industrial application’ (followed by India and Europe) or ‘usefulness’ (followed by U.S.)
Now, in India and in Europe ‘use claim’ in a patent drafting is not allowable while in US the use claim is allowed for Utility patent application. On the contrary the definition of ‘industrial application’ as defined under section-2(1) (ac) of Indian Patent Act, 1970 (amended) “capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry”. Similarly, according to Article-57 of the European Patent Convention, 1973 defines ‘industrial application as “an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture”. So as per applicable patent law in India and Europe the subject matter of a patent application shall be capable or susceptible of being ‘used’ in the industry.
Coming to the US patent law where there are 3 types of utility of an Idea that has to be satisfied at the time of filing ‘utility’ patent and these utilities are-
a. There must be a ‘specific’ utility of that patent application
b. There must be some ‘credibility’ and,
c. That patent application shall have some ‘substantial utility’
Carefully if you go through the matter you will observe that India and Europe directly is not allowing use claim in the specification, but in an other way round India and Europe allows product claim by process where there are two probability exists. First of all that process might be known to the prior art and secondly the process might be a new idea at all, but in both cases product is patentable. Product patent is basically granted because it shows some industrial use or application. Subsequently, a product patent by process may be granted for new use although there is another product which uses the same process. On the other hand a product by process may be granted although the same products exist which uses the same process, but later product shall show substantial modification or improvement of the former product. You can get a fresh product patent if you incorporate some new technologies into old product.
Now, in my opinion under section-2(1) (ac) and Article-57 of the Indian and European Patent Law there is a loophole which is capable of granting a product patent on the basis of different use. It is mentioned above that India and Europe dose not allow use claim in the specification, but in directly the product is basically made only for use. We don’t mention the term ‘use’ in the specification. What we claim in the specification is that the independent claim for product with the help of defendant process claim or independent process claim.

WRIT PETITION

Writ Petition:
The expression ‘Writ’ is not defined in our ‘Constitution. In a dictionary meaning writ is ‘a formal order in writing to be issued under the seal, in the name of a Sovereign, Government, Court or other authority, commanding an officer or other person to whom it is issued, to do or refrain from doing some act specified therein’. The writ petition does not confer any inherent right to the petitioner, rather it is a power vested upon the High Court (Article-226) and Supreme Court (Article-32) to exercise when there is a presence of an error regarding laws on fundamental rights and irreparable damages. For an example relating to tax issue High Court will not interfere under Article-226 of the Constitution of India, rather can question the tax related disputed matters and can reverse or quash the order of the tax authority. The National Tax Tribunal that has been established under Article-323B of the Constitution does not take away the supervisory powers of the High Court and the Supreme Court under Article 226/32. Recently, the Supreme Court in the case of L. Chandra Kumar v. Union of India, (228 ITR 725) had an occasion to test the Constitutional validity of such exclusion of power vested under Article-226/227 and Article-32 of the Constitution in favor of such Tribunals and held that to the extent these exclude the jurisdiction of the High Courts and the Supreme Court under Articles 226/227 and 32 of the Constitution, are unconstitutional on the ground that it affects the basic structure of the Constitution.
In an another case where the Madras High Court held in Aditanar Educational Institution v. Assistant Director of Income-tax (297 I.T.R. 376) that the relief under Article 226 of the Constitution of India can be granted in spite of the availability of alternate remedy under the statute, only based on undisputed facts. When the High Court finds that factual disputes are involved, it would not be desirable to deal with them in a writ petition.
Under Article-226 the High Court can not consider evidence as Court of appeal, but can make a conclusion arrived on irrelevant grounds can be set aside. On the other hand under Article-32 of the Constitution Supreme Court have the power and original jurisdiction to issue writ for the enforcement of fundamental rights guaranteed in Part-III of the Constitution.
Court is also empowered to refuse the writ petition if there is any efficient alternative to get the remedy by way of Appeal or Review. The objective of the writ is to prevent miscarriage of justice, equity and good conscience.

There are five writ petitions in the Constitution of India and those are Writ of Mandamus, Writ of Habeas Corpus, Writ of Prohibition, Writ of Certiorari, Writ of Quo Warranto.
1) The Writ of Mandamus (means ‘we command’) is generally filed by the petitioner where the Court gives direction to any government, sub-ordinate Court, corporation or others public authority to do something or refrain to do something. It demands some activity on the part of the body or person to whom it is addressed. It commands the person to whom it is addressed to perform some legal duty of public nature, which he has refused to perform, when such performance cannot be enforced by any other adequate legal remedy. Mandamus is available against judicial/quasi-judicial as well as administrative authorities. Prohibition and Certiorari are available only against judicial and quasi-judicial authorities. According to Article-361 of the Constitution a Wirt of Mandamus can not lie against the President or Governor of a state for the exercise of their duties and power.
Example: In Commissioner of Customs (Seaport Import) v. Unistar World Trade, 2009, the Madras High Court held that a Writ of mandamus can be granted in a circumstance where the petitioner has made a request and the denial of the request is performed by the Court.
2) The Writ of Habeas Corpus (means ‘has his body’) is in a nature of an order calling upon the person who has detained another to produce the latter before the Court for ensuring the legal justification for such confinement. Any interested person can file this writ on behalf of the detainee. The purpose of this writ petition is to ensure the release of a person from detention, but this does not conclude the acquittal of a person from his guilt.
Example: In Nilabati Behera v. State of Maharashtra (AIR 1993 SC 1960) case, where the Orissa police arrested son of the writ petitioner for the purpose of police interrogation and during the pendency of the petition the son of the petitioner found dead on railway track, wherein Court allowed the writ petition and the petitioner was awarded Rs. 1,50,000 as a compensation.
3) The Writ of Prohibition (means ‘to forbid’) is issued by the Court to an inferior judicial and quasi-judicial authority that forbid the latter to continue some proceedings therein in excess of its jurisdiction or usurp a jurisdiction with which it is not legally vested or act mala fide having personal interest in the cause. This writ is generally available before trial or during the course of trial where authorities are acting without jurisdiction. Prohibition is generally issued by the Court where the dispute is relates to issues having lack of jurisdiction. This writ is issued by the superior Court against the inferior Court from continuing with the proceedings.
Example: In Thirumala Tirupati v. Thallappaka (AIR 2003 SC 3290), the Supreme Court of India has categorically defined that when a Writ of Prohibition can be issued-
1. Proceeds to act without jurisdiction or in excess of jurisdiction.
2. Proceeds to act in violation of the rules of natural justice.
3. Proceeds to act under a law which is ultra vires or unconstitutional.
4. Proceeds to act in contravention of the fundamental rights.
4) The Writ of Certiorari (means ‘be certified’) is filed under Article-226 of the Constitution and it is issued for correcting gross error on jurisdictional matter, that is when a subordinate Court is found to have acted without jurisdiction/overstepping the limits of jurisdiction or acting in flagrant disregard of law or the rules of procedure or acting in violation of principles of natural justice where there is no procedure specified, and thereby occasioning failure of justice. Certiorari is available at later stage for cancellation of authority assumed without jurisdiction. This writ is issued to quash judicial/quasi-judicial order, judgment or decision of an inferior court delivered after the conclusion of proceedings and to pronounce Perverse and subjective orders.
Example: In the case of M/S Himalaya E-Com Marketing & Finance Ltd. & Ors. v. GNCT of Delhi & Ors (16th May 2008), where the petitioners were been prayed for a Writ of Certiorari quashing of two FIRs that has been filed against them. Petitioner argued on the basis of the violation of fundamental rights. The Delhi High Court held that “a Wirt Court is required to see is whether the assertions made in the complaint/FIR constitute an offence if the same are presumed to be correct”. Applying this test Court held that “we have no manner of doubt that the allegations made against the petitioners justified the registration of the FIRs against them for initiating investigation into the same”. In the result, this Writ petition fails and is hereby dismissed.
5) The Writ of Quo warranto (means ‘by what warrant or authority’) is a prerogative writ where Court directs a person to show on what authority he or she is for exercising some of the powers or rights or holding a public office . This can be issued to correct a wrongful assumption of a public office. This is issued when the office is a public office and substantive in nature/created by statute or by Constitution/the respondent has asserted his claim to that office. The objective of this writ is to see that a person holding a public office shall not usurp the public office.
Example: If a person who is an IPS officer who has to be leave his office within 30 years from the date of joining, but if he hold the office even after the expiry of 30 years and using power vested upon him then any interested person can file a Writ of Quo Warranto against him arguing that the IPS fellow is using his power without any authority.

PATENT INFRINGEMENT SUIT-SECTION-104 INDIAN PATENT ACT

Patent Infringement Suit:
Section-104 of the Patents (amended) Act, 1970 envisages that no suit for infringement of a patent shall be instituted before any Court inferior to a District Court having jurisdiction to try the infringement suit. This section deals with the jurisdictional issues regarding infringement of the patent under the Act as well as jurisdiction of the High Court to deal with the Counter claim filed by the defendant. In case of the Counter-claim the Court shall transfer the patent infringement case to the High Court together with the Counter-claim for revocation of the patent.
If in a suit for infringement of a patent, a Counter-claim for revocation of the patent is made by the defendant, the suit, along with the Counter-claim is to be transferred to the High Court for decision. Under Section-64 of the Act, any ‘interested person’ can file a petition for revocation of a patent before the High Court having Original Jurisdiction to deal with the matter. In Ajay Industrial Corporation v. Shiro Kanao of Ibaraki (AIR 1983 Del 496) the Delhi High Court defined ‘interested person’ as ‘a person who has a direct, present and tangible commercial interest which is injured or affected by the continuance of the patent on the register’….. The Court went on and said that ‘there is no statutory requirement that in a case where a suit for infringements is pending, revocation of the patent can be sought for only by way of a counter-claim and not by way of a separate and independent application’.
Recently in 2009, there is an infringement case where the parties involved in the case were Individual v. Samsung, Ltd., L.G. electronics and ors.
The issue was involved in regards to the jurisdiction of the Court to deal with the patent infringement issues. Here the plaintiff (Somasundaram Ramkumar) got a patent over the dual SIM phones in 2008. The defendants’ were importing the phones. Under Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 a patentee can file an application before the Customs authorities to block the importation of the patented product that violates the rights of the patentee. Upon application filed by the plaintiff the customs authority seize the imported dual SIM phones. The defendants’ moved to the Delhi High Court by filing a WRIT petition arguing that the patent is not novel and also challenged the provisions of the Indian Customs Act, 1962. Later on the Mumbai and Chennai Customs Commissioners held that the seizure of the defendants’ imported products was wrongful, because it did not violate the rights of the patentee. The plaintiff filed a WRIT petition before the Madras High Court by arguing that the Custom Commissioner does not have the Jurisdiction to deal with the patent infringement case. Subsequently, the Madras High Court ruled in favor of the petitioner saying that the custom authorities does not have any jurisdiction under section-104 of the Indian Patent Act (amended), 1970 do deal with the matter of patent infringement.

REVIEW PETITION UNDER INDIAN PATENT ACT

Review Petition u/s-77 (1) (f)) of Indian Patent (amended) Act, 1970

Section-77(1) (f) of the Indian Patent (amended) Act, 1970 envisages that the applicant of a patent can make an application to review the decision of the Controller. On application made in Form-24 under the Patent (amended) Rules, 2003 any applicant may seek to review the decision of the Controller. Under this section the Controller has certain powers like those of a Civil Court to deal with certain legal matters. This section says that the controller 'shall have the powers of a civil court while trying a suit under the Code of Civil Procedure, 1908' and one them is reviewing Controller's own decision u/s-77(1)(f) and the application shall be made ‘within the prescribed time and in the prescribed manner’.
Rule-130(1) of the Patent Rules, 2003 provides that a patent applicant can file a Review petition before the Controller to review his decisions u/s-77(1) (f) of the Act. The application is to be made within 1 month from the date of communication of such decision to the applicant or exceeding not more than another 1 month where it is made by Form-4. Here the applicant shall set forth proper ground on which he/she has sought the review.
This issue can be discussed thoroughly by some of the relevant case judgments given below-
In Magotteaux International S.A. and Another v. Assistant Controller of Patents and Designs and Others, 2007 (Delhi High Court) case, where the petitioners had applied for a patent named ‘composite wear component’. During the pre-grant opposition the applicant sought four (4) amendments under section-78 of the patent act, 1970. However no opposition had been received by the respondent no.3. Later on the patent was granted and was ready to publish under section-43(2) of the Patent Act, 1970.
The respondent no.3 filed a review petition u/s-77(1) (f) of the Act against the said grant of amendment u/s-78. The contention of the respondent no. 3 was that, since section-78 of the Act empowers the Controller to correct some clerical error, but that does not allow the Controller to make any amendment of the patent application. The application for review subsequently has been dismissed by the Controller (respondent no.1). The said respondent no.3 filed WRIT petition before this Court and Court set aside the previous order of the respondent no.1 and remanded the case to the respondent no.1 for further review, but this has also gone in vain on technical grounds. The respondent no.3 further moved before the High Court of Delhi saying that the Controller's decision was impugned and no reason has been set forth to justify the rejection of the review petition.
The High Court of Delhi opined that the decision of the respondent no.1 was impugned and directed that the Patent Office shall publish the granted patent with 4th amendment. For the disputes regarding other three (3) amendments it is open to the petitioner to move an appeal under section-117A in respect of the disallowance of the three amendments.
In another case Michigan State University, E.Lansing, USA v. The Assistant Controller of Patents, Patent Office, Delhi Branch and The Controller General of Patents, Trademarks, Designs and Geographical Indications, Patent Office, Mumbai Branch (2008, IPAB-Chennai), where the appellant filed a patent application titled 'Transgenic Plants Producing Polyhydroxyalkanoates' (for a ‘gene expression cassette’) and subsequently this was granted by the Patent Office, Delhi. During the examination process two divisional patents have been filed based on the first patent application. One of the divisional applications was the subject matter of this case. During the examination process the examiner objected the divisional application on the ground that it does not satisfy the definition of an invention envisages u/s-2(1)(j) of the Patent (amended) Act, 1970 and it falls under the non-patentable subject matter as defined u/s-3(b) and 3(j).Later on the applicant filed the amended version to the Patent Office and again the Assistant Controller after examination rejected the application on the ground that it is not satisfying section-2(1) (j) of the Patent Act, 1970.
Aggrieved by this impugned order of the Controller of Patents, the appellant filed the review petition u/s-77(1) (f) before the Assistant Controller over the same divisional application that is being rejected by the said Assistant Controller on the ground that the applicant has not been complied with the requirements of the patent office and it is deemed to have been abandoned u/s-21(1) of the Patent Act.
The appellant filed an appeal before the Delhi High Court by contending that the decision of the Assistant Controller was impugned that violates well settled proposition of law and no reason has been set forth why the patent is abandoned. The High Court transferred the case u/s-117G to the Intellectual Property Appellate Board (IPAB), Chennai.
The IPAB opined that “We are not satisfied that the order of abandonment is sustainable. Having stated in the impugned order that the subject matter and claims are not patentable under section-2 (1) (j) the reasons in support thereof ought to have been stated, instead of relying upon abandonment under section 21 (1). The impugned order for the said reasons is not sustainable. We are, therefore, of the view that this divisional application for patent be remanded back to the Patent Office with a direction that the learned Controller of Patents shall offer an opportunity of hearing to the party as per the provisions of law and then decide the matter in accordance with the law. The appeal is allowed in part, in terms as above”.