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Patent Judgements

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.

Black's Law Dictionary rel.


(c) Patents Ordinance (LXI of 2000)------S. 8---"Novelty"---In order that there may be novelty, to sustain a patent,
the thing must not have been known to any one before, and mere novelty of
form was insufficient.
Black's Law Dictionary rel.
Altaf Ahmed Butt for Appellants.
Muhammad Shoaib Razzak for Respondent.
Examiner of Patents present in person.
Date of hearing: 27th January, 2014.
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 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 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,

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 119-2012 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
NUMBER 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
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 11-32010 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 plaintiff's 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 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 22-2012 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 co-exist 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 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 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)

a discovery, scientific theory or mathematical method;

(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)

the presentation of information; and

(e)

Substances that exist in nature or if isolated therefrom.

(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 patent shall not be granted.--

(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)

for a new or subsequent use of a known product or process; and

(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)

The state of the art shall comprise--

(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

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