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Petitioner: EARTHFACTOR (PRIVATE) LIMITED through Director VS Respondent: PATENT OFFICE, IPO- JUDGMENT
Court Name: Sindh High Court Judge(s): Hassan Feroze Title:EARTHFACTOR (PRIVATE) LIMITED through Director vs PATENT OFFICE, IPO-
JUDGMENT
Reported As: 2014 CLD 897 Result: Appeal allowed Judgment JUDGMENT ' HASAN FEROZ, J.---This is an appeal under section 69(3) and (4) Patents Ordinance, 2000 (Ordinance No, LXI of 2000) filed by the appellant wherein prayed to accept this appeal and set aside the impugned order dated 10th September, 2012. ' Brief facts leading to this appeal are that the appellant is a private limited company incorporated and exists under the Companies Ordinance, 1984 and engaged in value added services business. In June 2011, respondent No, 3 filed Patent Application No, 458 of 2011 before the respondent No,1 for grant of patent to "Rockville Double Number SIM" to which the respondent No,1 has allocated Patent No,141483 ("The Patent Application") and required publication of the same in the Gazette of Pakistan. On 30th August, 2012, respondent No, 3 filed complete specifications in connection with its above said application to the respondent No, 1 who was pleased to accept the patent application of the respondent No, 3 through its order dated 7th September, 2012 and allocated the said Patent No, 1414838. ' I heard Mr. Aftab Ahmed Butt counsel for the appellant and Barrister Shoaib Razzak for respondent No,3 at length, the examiner of the Patent and Design was also in attendance. ' In support of the contentions, learned counsel for the appellant has contended that the respondent No, 1 in making the impugned order acted beyond his jurisdiction as to the Patent Application neither qualifies as an "invention", with the meaning and scope of section 2(i) of the Patents Ordinance, nor does it qualify as a 'process' and/or 'product' within the meaning and scope of sections 2(s) and 2(t), respectively. He further argued that the respondent No, 1 in making the impugned order failed to recognize that the subject matter of Patent Applications is not patentable
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in terms of section 7 as among other reasons it is neither 'novel' or 'new' nor it involves an 'inventive step' within the meaning and scope of section 9 of the Patents Ordinance, as the patentability of the subject matter of the patent application is in fact expressly barred under section 7(4)(d) as it is a subsequent use of a known service in the telecom sector within or outside Pakistan. ' Learned counsel for the appellant has further submitted that the subject matter of the Patent Applications accepted by the impugned order squarely falls outside the scope of section 82(c) of the Patents Ordinance as it is not a state of the art and such service existing and available within the local community of value added service providers to mobile phone operators or the mobile phone operators themselves. He has contended that the impugned order is arbitrary, illegal, without justification and of no legal effect and the same has been passed without due application of mind and in sheer violation of express statutory obligations of the respondent No, 1. He further contended that a cursory examination of the contents of the Patent Application relating to which the impugned order has been issued reveals that it is neither a work of art, nor it is a process or manufacture of a product and also it is neither any substance, article, apparatus nor is it a machine. He further argued that the respondent No,1 has failed to appreciate that the alleged invention pertains to use of a mobile phone SIM Card which is neither the property of the applicant nor is it entitled to claim exclusive rights to use the same to the detriment of consumers, mobile operators or value added service providers. Learned counsel argued that the respondent No, 1 failed to recognize that the applicant is in fact not the true and first inventor of the alleged invention and hence could not discharge the statutory requirement under section 11 of the Patents Ordinance. ' Learned counsel for the appellant has further argued that respondent No, 1 issued letter dated 8th August, 2012 to the petitioner confirming that the subject patent application was in examination phase under section 16 of the Patents Ordinance as on the same date and has not filed with complete specifications by respondent No, 1, the petitioner keeping in view the provisions of the Patents Ordinance, particularly sections 14, 16 and 17 did not pursue the matter trusting that due exercise of authority by respondent No, 1 will reject the patent application under section 14(2), however, the petitioner came to know to his utter surprise that the respondent No, 1 has instead issued the impugned order. He further contended that the alleged inventor is a corporate entity and thus the patent application accepted by the impugned order is manifestly in violation of sections 12 and 13 of the Patents Ordinance. No evidence that the applicant corporate entity is an assignee of a natural person which is essential has been placed on record. He further submitted that section 16 of the Patents Ordinance places an express duty upon the respondent No, 1 to refer an application to an examiner only after complete specification has been filed since the patent application was deemed abandoned the respondent No, 1 did not have the power or authority to entertain the patent application. The respondent No,1 had become functus officio by virtue of section 14(2), hence, any ireport by an examiner is void ab initio. The respondent Slo. 1 failed to appreciate that an application for patent is deemed abandoned under section 14(2) of the Patents Ordinance where complete specification is not filed within 12 months from the date of filing of an application. In the present case the patent application was admittedly filed on 21st June, 2011, whereas complete specifications were provided on 30th August, 2012 well beyond the statutory period. ' He further contended that filing of above said vexatious and frivolous suits by the respondent No,1 unequivocally establishes that the respondent No, 3 has applied for grant of patent firstly knowingly that the so called invention does not fulfill the criteria for grant of patent, secondly with mala fide intention to assert undue pressure generally upon the companies engaged in the business of value added services and particularly upon the respondent, to establish its monopoly over double number mechanism. He has further argued that instead of initiating action against the
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respondent No,1 under the provisions of Patents Ordinance the respondent No,1 accepted and advertised the respondent No, 3's patent application along with complete specification, drawings and abstract in a clear violation of the provisions of Patents Ordinance in a short span of time of less than a week, therefore, acceptance and advertisement of respondent No, 3's Patent application by the respondent No,1 in such a hasty manners clearly established that this acceptance and advertisement is mala fide and only ordered to extend illegal, unwarranted and undue advantage to respondent No, 3 to deprive the appellant from his lawful rights. ' On the other hand learned counsel for respondent No,3 has contended that in fact the license of the appellant have been cancelled by the Pakistan Telecommunication Authority. The instant appeal is barred by virtue of the appellant having no locus standi under the Patent Ordinance 2000. He further argued that the appeal is not maintainable as the patent application is pending before the Controller of Patent, however, when the application is published in the official gazette it constitutes right to oppose before the Controller of patents. Further it is the statutory requirement to publish any of the application in gazette. It was the contention of the learned counsel that appeal against Controller of Patents must have been filed against the orders/powers of Controller of Patents which directly relates to Controller of Patents and aggrieved party without invoking the eligibility of invention. He has argued that the appeal is not maintainable as the other remedy has been available and the appropriate forum is Controller of Patents to oppose any of the pending application of patent. He has also contended that the appeal is not maintainable being time barred. He has submitted that Pakistan Telecommunication Authority has terminated the "VOICE CV AS LICENSE" of the appellant. ' Learned counsel for the respondent No, 3 has further contended that the respondent No, 3 filed a winding up petition against the appellant on 11-9-2012 which has been admitted in the Hon'ble High Court of Islamabad. The notice has been issued to the appellant by the said Court and published in the daily newspaper viz. DAWN dated 2-11-2012. The appellant filed different suits against the respondent No, 3 under section 66 of Patent Ordinance 2000, which has been out-rightly dismissed by the Additional District and Sessions Judge Islamabad, besides another appeal bearing No, F.A.O. 54 of 2012 had been dismissed by the High Court of Islamabad where the appellant challenged the patent application of the respondent No, 3. He has further contended that due to cancellation of the license the appellant is unable to provide any of the services to any of the mobile/cellular company which is specifically used in voice and short messaging service and the appellant is now no more in commercial market to provide service to any of the company/operator. Learned counsel, further contended that IVR DUAL NUM BER SUBSCRIPTION SERVICE ON SIM CARD is a system whereby a customer of cellular network is enabled to operate with two different numbers allocated to one mobile SIM having main features for communication to and from the double number subscriber. The invention by the respondent No, 3 spent a lot of time, finance and man power to make practicable the idea/concept of IVR double number service. On 21-6-2011 for the protection of patent and copyrights the respondent No, 3 approached Intellectual Property Organization, patent office and filed an application for registration and protection of its patent rights. The said application claims priority to Pakistani Patent Application No,457 of 2011 which is incorporated by reference in its entirety. ' He has further argued that further processes and stages of registering patent, the Controller of Patent (IPO) issued a notice dated 7-9-2012 stating that notice was given for a patent made by Rockville Technologies (Pvt.) Ltd., which was accepted on 31-8-2012, the application, specification and drawings are open to public inspection. The certificate of acceptance in this regard has been issued in favour of the respondent No, 3 with certification that the specification consisting of 11 pages 5 claims and drawing 5 sheets are the true copies in respect of applicant's patent is accepted. After the acceptance the applicant have the same privileges and rights as if a patent for
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the invention had been sealed on the date of the acceptance of the application. The respondent No,3 firstly entered into an agreement with the appellant on 15-11-2007 whereby the petitioner undertook to provide such company with its services against the sole consideration of 50% of the gross revenue generated by such company through this business. After the invention and successful experiments the respondent No, 3 entered into an agreement with Pakistan Telecom Mobile Ltd., to commercially exploit the invention for the generation of revenue, hence the respondent No, 3 and PTML which is also known as U-fone entered into an agreement on 11-3-2010 whereby the respondent No, 3 offered IVR double number services to the customer of the PTML/U- fone. He further contended that the respondent No 1 issued the notification dated 10-9-2012 for publishing the application accepted in the gazette of Pakistan (Part-V), the respondent No, 1 in this notification also notified to all person interested in opposing the grant of patents to any of the applications at any time within four months from the date of this gazette may give notice at the patent office on the prescribed Form P-7 of the Patent Rules 18(1) of 2003. Another cellular network namely Warid Cellular Network has also accepted the respondent No, 3 as a sole and exclusive inventor of double number mechanism and IVR therefore such cellular network is legally using and exploiting and providing such facilities to its customers with respondent No, 3's approval. ' Learned counsel for the respondent No, 3 has further contended that after the implementation of the agreement between the respondent No, 3 and PTML, the respondent No,3 is providing IVR double number service to the public and it generates a handsome amount of revenue for the parties and the exchequer. The respondent No, 3 responded and pursued its application before respondent No,1 and after a hectic procedure of around two years the respondent No,1 accepted the application and specification. The application of respondent No, 3 is properly pursued and accepted by the respondent No, 1 and the appellant is absolutely failed to establish his locus standi for this appeal and utterly failed to proceed through proper channel and proper remedy. It has further been contended that the relevant authority' is Controller of Patents to file objection against any of the 'invention, hence this appeal may be dismissed at the first instance. ' I have in my view that on 5th August, 2011 respondent No, 3 filed a Suit No,102 of 2011 in the Court of District and Session Judge, Islamabad with the following prayers (a) "The plaintiff may most graciously be declared the sole, exclusive and independent inventor and owner of IVR and double number mechanism for the entire territory of Pakistan; (b) The defendants Nos. 1 to 4 may kindly be ordered to restrain perpetually from unauthorized and illegal use copy, distribution and exploitation for commercial purposes of IVR and double number mechanism invented by the plaintiff. (c) The defendant No, 7 be directed to restrain from entertaining any illegal, controversial and frivolous application for the registration of patent rights similar to that of plaintiffs patent rights. (d) Any other relief which this Hon'ble Court may deem fit and just may also be granted." Upon filing of the said suit, the learned Additional District and Sessions Judge on 6-3-2012, passed the following order whereby the Suit was rejected:-- "Perusal of record shows that admittedly the plaintiff is a company and a suit by the company cannot be filed without any authorization. The authority letter dated 22nd February, 2011 appended with the plaint as annexure-A relates to EXTRACTS OF BOARD RESOLUTION PASSED ON 22nd FEBRUARY 2011 FOR REGISTRATION OFF THE PRODUCTS OF THE COMPANY WITH THE INTELLECUTUAL PROPERTY ORGANIZATION (IPO) and confers powers to Chief Executive Mr. Ibrahim Ahmed Khan to sign all the documents. Applications, notices, pleadings, replies and also authorize to appear in all proceedings on behalf of the company and undertake all process in furtherance of registration of any patent copyright, trademark or design." The above mentioned authority letter categorically relates to resolution for registration of the products before the IPO in which the plaintiff has been authorized to pursue the case for registration of the products. The authority letter is restricted only
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to authorize the plaintiff regarding registration of the products and does not authorize him to file any suit under patents ordinance before the court, therefore, the instant suit has been filed without any authority and is not proceed able in the light of the judgment of Hon'ble High Court, reported in 2010 CLC 420 (Karachi). As the suit has been filed under section 60 of Patents Ordinance 2000, as per which a patentee may institute a suit in District Court having jurisdiction to try the suit against any person who, during the continuance of a patent acquired by him under this Ordinance in respect of any invention, makes sells or uses the invention without his license or counterfeits it or imitates it. From bare reading of above said provision of law, it transpires that the right of filing of suit only vests with a patentee and as per section 2(m) of Ordinance, "Patentee means, the person or persons for the time being entered on the register as the grantee or proprietor of the patent includes any subsequent assignee or successor-in-interest of a patent recorded of whose name on the register is pending with the controller." From the above said meaning of patentee, the name of the petitioner does not fall within the definition as admittedly he is not registered before the Intellectual Property Organization. It is further worthy to mention here that as per proviso of section 22 of the Ordinance, the applicant is not entitled to institute any proceedings for infringement until the patent has been sealed. As the above said proviso of section 22 clearly bars the plaintiff to file any suit because admittedly, his patent has not been sealed as yet thus from seeking guidance from the judgment of Hon'ble Islamabad High Court in F.R.A. No, 7 of 2012 dated 2-2-2012 wherein it is held that "The plaintiff/ appellant himself admit that his application for registration of the technical system has not yet been accepted by the Intellectual Property Organization which prima facie, reflects that yet the applicant is not a registered patentee and his name is not entered in the register of patents under section 54 of the Ordinance therefore, all the three pre-requisites i,e,, prima facie balance of convenience and irreparable loss do not coexist in his case." ' What has been discussed above it is held that the suit of plaintiff is not maintainable and is hit by the above mentioned provisions of law. Hence while accepting the applications of defendants under Order VII, Rule 11 of C.P.C. The instant plaint is rejected. No order as to costs. File be consigned to record room after due completion." ' The record further reveals that upon rejection of the suit, the respondent No, 3 filed an Appeal bearing R.F.A. No,27 of 2012 in Islamabad High court, Islamabad against the order dated 6-3-2012 wherein appellant and respondent No,2 were impleaded as respondents, whereby they prayed that its application for grant of patent has been accepted by respondent No, 1 under the head "Notice of Acceptance of Application", vide letter dated 7th September, 2012, therefore the appellant is eligible to file suit for infringement of patent rights. ' The learned Islamabad High Court rejected the R.F.A. No,27 of 2012 vide order dated 7th November, 2012, the relevant portion is reproduced as under:-- "(7) At the very outset, I would be inclined to go through the procedure provided by section 22 of the Patents Ordinance. Section 22 provides the acceptance of an application and until the date of sealing a patent in respect thereof or the expiration of the time for sealing the applicant shall have the like privileges and rights as if a patent for the invention had been sealed on the date of the acceptance of the applications. From such ' proposition no such conditions required were fulfilled by the appellant. Proviso 2 of section 22 provides that applicant shall not be entitled to institute any proceedings for infringement until the patent has been sealed. Again from such proviso it infers that the appellant was not entitled to even bring the suit before the court of law being premature. (8) Section 23-B provides the advertisement within four months of the acceptance of complete specification and any person may give notice to the Controller of opposition to the grant of patent
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on any of the grounds mentioned therein particularly the invention is not a patentable invention within the meaning of the Ordinance. Therefore, yet such stage was to come. (9) Likewise section 27 again provides the grant and sealing of patent which provides that after grant of application shall be entitled into register then it is to be objected. The respondents guided that such a process is still pending with the Collector and thus indicates pre-maturity of the suit. Lastly, the undisputed document i.e, letter of authority dated 22-2-2011 positively leading towards a limited scope not includes power to file a suit (10)I have gone through the record and relevant provisions of law as well as the order passed by learned Additional District Judge Islamabad. The order passed by learned Additional District Judge Islamabad is with sound reasoning. Finding no any infirmity legal or factual to interfere the said order. For the foregoing reasons, I am of firm view that the appeal preferred by the appellant merits no consideration. Same is hereby dismissed with no order as to cost. ' The record further reveals that the respondent No,3 on 7-5-2012 filed another suit before the District Judge Islamabad which is pending adjudication. Thereafter the respondent No, 3 again on 9th August, 2012 filed a new suit bearing No,54 of 2012 in the Court of District Judge, Islamabad against the present appellant and others. On 20-9-2012, the learned Court issued restraining orders against the defendants from infringing the patent rights of the respondent No,3, however on 20th September, 2012, the learned District Judge Islamabad held that on the same cause of action and between the same parties fresh suit is not competent, therefore, the Suit No, 54 of 2012 was dismissed. Subsequently, the respondent No, 3 on 13-11-2012 filed another suit against the associated company in the court of Additional District and Sessions Judge-V Islamabad, but the same was also dismissed on 3rd December, 2012. ' I have in my view that on 21st June, 2011 respondent No, 3 filed patent application bearing No,458/2011, on 30-8-2012, respondent No,3 filed the complete specification of the above application and respondent No,1 accepted the application of the respondent No, 3 on 7-9-2012. The contention that the respondent No,1 before proceeding to accept the application of respondent No,3 has ignored to adhere to essence of section 16 that it was not a new or novel invention and advertised respondent No, 3's application in violation of provisions of patent Ordinance in less than a week's time, hence this appeal has been preferred against acceptance and advertisement of respondent's No, 3's application. On 19-12-2012 operation of impugned order was suspended, however, during the course of hearing of listed applications, the main appeal was also heard. ' Thus keeping in view the relevant section 2(h)(i)(j) and (u) and the essence of section 7 pertaining to the patentable inventions and section 8 pertaining to novelty and 9 pertaining to inventive step, section 10 of the industrial applications and sections 11, 12, 13, 14, 15, 21, 22 and 23 the patent applied firstly by Mr. Shoaib Razzak on behalf of respondent No, 3 which later on withdrawn by Mr. Shoaib Razzak on 7-12-2012 and replaced it within Form P-1 signed by the inventor Mr. Abrar All Khan CEO of Respondent No,3 and requested to make it part of Original Application No,458 of 2011 as perused from the record of Controller of Patent at pages 65 and 66 and thereafter filing of Form P-1 on behalf of respondent No, 3 by Mr. Adeel Shahzad advocate on 21-6-2011 available on record at pages 201 and 202 reflect colourable exercise of power in violation of law and Rules and the steps taken by Controller of Patent seems to me ultra wires to the law and Rules. ' I have in my consideration the essence of sections 21, 22 and 23 of the Patent Ordinance so also the Patent Rules and thereby perusal of Form P-1 and the application accepted bearing No, 1414838 of Rockville Technologies (Pvt.) Ltd, specifications made under Rule IX in Form P-3/A in the name of Mr. Shoaib Razzak seems to me in violation of rules, procedure and law applicable thereto. Since the act and performance on the part of the Controller is not in accordance with Patent Ordinance and Rules mixed up the initial application of respondent No, 3 with the later on
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filed application for withdrawal by Mr. Shoaib Razzaq on same subject of patent and thus the respondent No, 1 proceeded to accept complete specification of the subject patent application and also issued request to respondent No, 2(IP)) on 10-9-2012 for publication of the same in the Gazette = of Pakistan (Part-V) which was later on published on 10-10-2012 IS VIOLATIVE OF Patent Ordinance and Rules. ' I have in my consideration while dilating upon patentable inventions under section 7 of Patents Ordinance, 2002 that any invention is patentable if it is new, involves an inventive step and is capable of industrial application. The new clause added by amendment Ordinance XCV of 2002 under the subsection (4) clause (d) of section '7 for a new or subsequent use of a known product or…
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