Professional Documents
Culture Documents
2014 C L D 897
[Sindh]
Before Hasan Feroz, J
EARTHFACTOR (PRIVATE) LIMITED through Director---Appellant
Versus
PATENT OFFICE, IPO-PAKISTAN through Controller and 2 others--Respondents
Miscellaneous Appeal No.74 of 2012, decided on 13th March, 2014.
(a) Patents Ordinance (LXI of 2000)------Ss.7(4)(d), 2(s), 2(t), 8, 21 & 23---Patentable inventions---"Doublenumber SIM"--- "Novelty" and "invention"---Scope---Subsequent use of a
known product or process---Appellant impugned order of Patent Office,
Intellectual Property Organization ("IPO"), Pakistan whereby patent
application of respondent, for a "double-number SIM" was allowed and
patent was granted for the same---Contention of appellant was inter alia that
patent application of the respondent neither qualified as an "invention" nor
did it qualify as a "process" and/or "produced" within the meanings and
scope given in the Patents Ordinance, 2000---Held, that acceptance of patent
application of respondent seemed to be a violation of rules, procedure and
law applicable thereto---Any invention was patentable if it was new, involved
an inventive step, and was capable of industrial application and under S.7(4)
(d), for a new or subsequent use of a known product and process, a patent
was not to be granted---"Dual" or "Double-number" SIM card was not new to
the world and would not fall within the legal as well as the literary definition
of the words "invention" and "novelty" and its acceptance as patent would
not be in consonance with the principles of law under the Patents Ordinance,
2000---Such technology was already in use in many countries around the
world including Pakistan and therefore adhering to the essence of S.7(4)(d)
of the Patents Ordinance, 2000, no patent could be granted---If the process of
manufacture was already known, such manufacturing could not be called an
"invention" and nor any patent could be granted for it and if such patent was
already granted, the same could not be allowed to continue---Impugned order
whereby patent was granted to the respondent, was set aside---Appeal was
allowed, accordingly.
Black's Law Dictionary and 1980 CLC 396 rel.
AIR 1936 Bombay 99 distinguished.
(b) Patents Ordinance, (LXI of 2000)------S. 2(i)---"Invention"---Meaning of---"Invention" was the act of or
operation of finding out something new, the process of contriving and
producing something not previously known or existing, by the exercise of
independent investigation and experiment and also the article or contrivance
or composition so invented.
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 report by an examiner is void ab
initio. The respondent No. 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 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,
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 Ali 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 vires 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 P1 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 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 10-92012 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 process a patent shall not be granted. For the sake of convenience
sections 7 and 8 of Patent Ordinance 2002 are reproduced as follows:--
CHAPTER III
PATENTABILITY
(7)
Patentable inventions. (1) Any invention is patentable, if it is new,
involves an inventive step and is capable of industrial application.
(2)
Subject to subsection (3), the following shall not be regarded as
invention with the meaning of subsection (1), namely:(a)
(b)
a literary, dramatic, musical or artistic work or any other creation of
purely aesthetic character whatsoever;
(c)
a scheme, rule or method for performing a mental act, playing a game
or doing business;
(d)
(e)
(3)
The provisions of subsection (2) shall prevent anything from being
treated as an invention for the purposes of this Ordinance only to the extent
that a patent or an application for a patent relates to that thing as such.
(4)
(a)
for invention the prevention of commercial exploitation of which
would be necessary to protect the order public' or morality, including to
protect human, animal or plant life or health or to avoid serious prejudice to
the environment, provided that such exclusion is not made merely because
the exploitation is prohibited by any law for the time being in force;
(b)
for plants and animals other than micro-organisms, and essentially
biological processes for the production of plants or animals other than nonbiological and microbiological processes;
(c)
for diagnostic, therapeutic and surgical methods for the treatment of
humans or animals;
(d)
(e)
for a mere change in physical appearance of a chemical product
where the chemical formula or process of manufacture remains the same
provided that this clause shall not apply to an invention fulfilling the criteria
of patentability.
8.
Novelty (1) An invention shall be considered to be new if it does not
form part of the state of the art.
(2)
(a)
everything disclosed to the public anywhere in the world, by
publication in tangible form or by oral disclosure, by use or in any other way,
prior to the filing or where appropriate the priority date, of the application
claiming the invention; or
(b)
contents of the complete specification and priority documents
published under section 21 of an application filed in Pakistan;
(c)
traditionally developed or existing knowledge available or in
possession of a local or indigenous community.
(3)
Notwithstanding the provisions of subsection (2), disclosure of a
patentable invention in respect of goods shall not constitute 'state of the art' if
an article is exhibited at an official or officially recognized international
exhibition within twelve months preceding the date of filing of an application
for grant of patent. If later on the right of priority is invoked, then the period
shall start from the date of introduction of the article into the exhibition. The
Controller may require proof with such documentary evidence as considered
necessary of the identity of the article exhibited and the date of its
introduction into the exhibition.
(4)
In this section references to the inventor include references to any
proprietor of the invention for the time being.
In this regard the literal meaning of 'invention' and 'novelty' as
enunciated in Black's Dictionary is as follows:-'Invention: In patent law, the act or operation of finding out something
new, the process of contriving and producing something not previously
known or existing by the exercise of independent investigation and
experiment. Also the article or contrivance or composition so invented.
Novelty: In order that there may be 'novelty' so as to sustain a patent
the thing must not have been known to any one before, mere novelty of form
being insufficient.'
The statutory obligation as enunciated in Patent Ordinance 2002 fully
subscribes to and matches with the above definition, whereby it becomes
crystal clear that the dual number SIM is not new to the world and would not
fall within the legal as well literary definition of invention and novelty and its
acceptance as patent would not be in consonance with established principle
of law under the patents Ordinance 2002.
The perusal of record and the citations relied upon by the appellant
are in my view. Learned counsel for appellant has relied upon AIR 1936
BOMBAY 99 wherein the two features necessary to the validity of a patent
are described as novelty and utility but the real test of novelty of the
invention is that there must be an absence of prior publication or of prior
public user. The patent must be a new manufacture or art; is the Ratio
decidendi of the supra decision. However, in the present appeal I have also in
my perusal annexures D/1 to D/15 filed with this appeal wherein such
technology was shown to be already in use in different countries viz. by
Comviva India, Bharat Sancher Nigam Ltd., (BSNL), Philippine Long
Distance Telecom Company (PLDT), China Mobile Beijing, Smart Tone
Hong Kong, Roamware (Hong Kong) Ltd., Hutchison Telephone Macau,
Sing Tel Singapore, Softbank Mobile Corporation Japan, Ooma Canada,
Vodafone UK, Orange Mauritius, Orange Cameroon, Truphone USA, SIM
Card Kombi Telephonica Czech Republic and Warid Telecom Pakistan
therefore adhering to the essence of sections 7(4)(d), 8 to 13 and 21 to 23 of
the Patent Ordinance 2002 and in the light of 1980 CLC 396 Lahore wherein
it has also been held that invention is a manner of new manufacture though it
also includes improvement but if the process of manufacture is already
known the manufacture cannot be called an invention and neither any patent
for such manufacture can be granted nor if granted can be allowed to be
continued. In this decision it has also been held that moreover the applicant
must be the true and the first inventor.
I have also in my consideration as to the point of limitation and the
maintainability of this appeal which has been filed under section 69 of the
Ordinance within a 90 days. The crux of the contention precipitate from this
appeal revolves around section 2(i) i.e. any new and useful product or
process and includes any new and useful improvement in any field of
technology which encompasses section 7 of the Patent Ordinance as to any
invention which is patentable ought to be new and involves an inventive
steps which is capable of industrial application whereas section 7(4)(d)
contemplates a patent shall not be granted for a new or subsequent use of a
known product or process. In the instant appeal respondent No. 3 claims
invention of a double number mechanism on the SIM card already in use of a
subscriber and offering another number allocated on the existed SIM in
addition to already existing number which is in use with other cellular
services. The contention of the appellant that double Number SIM is already
known product and thus would not fall within the category of invention or
novelty as neither the improvement of such invention is new to the world so
also would not fall under section 8 of Patent Ordinance, 2002. The contention
of the appellant is also in my view that this invention is known to the world
since 1990 as against this the contention of the respondent No.3 is that it is an
invention in all respect which has been accepted and published in the
Gazette.
On my perusal of material and hearing the learned counsel of both the
sides at length, I am clear in my mind that the acceptance of the patent of
respondent No.3 for dual number SIM seems to me neither an invention nor a
novelty; the process or improvement of an old process already known to the
world would not fall within the parameters prescribed by law for grant of
Patent under Patent's Ordinance, 2002 as such the dual number SIM is not
patentable and would not sustain under law.
In view of the above, the impugned order is set aside the listed
applications are accordingly disposed-of and the appeal is allowed with no
order as to costs.
KMZ/E-1/Sindh
allowed.
Appeal