The Calcutta High Court, in November had the opportunity to deal with a rather interesting patent dispute where one person tried invalidating a patent which was identical to his; when both of their patents seemed to be copied from a US Patent!

As it turns out one Mr. Tara Chand Banka, filed a patent application in 2001 for a sealing device, which was used to keep electric meters in place. He passed away in 2005 and the patent was granted [200041] in 2006 leaving his son to handle the disputes. Meanwhile the Patel Brothers according to the case filed an application for a similar invention in 2005 which was granted [224937] in 2008 (yes in three years! Shocking!), along with design registrations for the look of the product.

In 2007, Mr. Banka approached the District Court to stop the Patel brothers from using the sealing device which infringed his patent. In response, the Patel brothers filed an application with the Intellectual Property Appellate Board (IPAB) to revoke the patent granted to Mr. Banka on the ground that it was identical to US Patent 5782513 by Nic Products Inc. The IPAB reviewed Mr. Banka’s patent and the US Patent and on the basis of the evidence submitted by the Patel brothers concluded that the patent of Mr. Banka lacked novelty and that it had to be revoked.

The product in question and the working of the invention according to all three patent applications most easily defined by the US patent was a

security wire seal of superior ergonomic design of the type having a capsule and sealing member or anchor. The capsule and anchor are connected by an arm and the unit in its entirety is best manufactured of injection-molded plastic. The capsule has apertures through which the wire is threaded. The threaded wire, as it is pushed by the anchor, bends at numerous points, making it impossible to pull out, and the wire is pressed upon closure into the channel of the anchor

The IPAB decided to revoke the patent after dissecting each of the specifications and claims of Mr. Banka’s patent in comparison with Nic Products’ patent and found them to be similar, in fact the IPAB went on to state that the working of the invention was clearer and better defined in the US application. Since the US Patent was granted four years before Mr. Banka’s patent application, the IPAB was surprised to note that the Patent Office was not able to find the prior art at the time of examining Mr. Banka’s patent application. Mr. Banka submitted a letter from the Patent office as a part of his evidence which categorically stated that they did not have access to the US Patent application or its details at the time of examination or even until 2008. Another piece of evidence was the Affidavit of one Mr. Ankit Bhimani who graduated with a bachelor’s degree in Polymer Technology who stated that Mr. Banka’s invention was not novel in light of the US Patent.

Since the patent was revoked, Mr. Banka’s son approached the High Court. After discussing the entire facts, the Court looked into the IPAB order and found the IPAB’s order to be incorrect.

The High Court held that the fact that Mr. Banka’s device was transparent to view any tampering had not been taken into account, although the IPAB in its analysis held that they did not think that “the addition of the adjective transparent would make the invention either novel or containing inventive step;” [Given that the design of the product is such that, if the wire was cut or removed, there wouldn’t be any means of sealing it again, I think, renders the advantage of transparency in detecting tampering redundant]. In addition to the issue of transparency the Court felt that the IPAB failed to consider the advantage of using a ribbed wire as per Mr. Banka’s patent.

The next reason cited in overturning the order was that the expert’s testimony was not cross examined (even though Mr. Banka never requested or challenged the affidavit) and finally, that the Patel brothers themselves had applied for a similar patent so asking the IPAB to revoke Mr. Banka’s patent for lack of novelty when theirs’ was similar to Mr. Banka’s was not right in accordance the rules of equity, fair play and estoppel.

The High Court held that the IPAB order ought to be set aside and that the matter should be looked into once again in light of the observations of the High Court. The IPAB was directed to pass an order within six months.

This case shows that the Patent Office’s quality of examination leaves much to be desired, since they granted Mr. Banka’s patent when there was prior art (while Mr. Banka may have tried arguing novelty, the fact that Nic Products’ patent hadn’t even been raised as an objection is surprising), and later Mr. Patel’s patent when Mr. Banka’s was already filed. It appears that they failed to check the USPTO for prior art and their own database.

What’s most curious though is that the two parties were fighting over something in India when they both may not necessarily have a right to claim exclusivity to begin with! We’d have to wait and see what the IPAB decides on this matter in light the High Court’s order.

This article has been authored by Navarre Roy, an IP Law practitioner.