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IN THE HIGH COURT OF CALCUTTA
I.P. Mukerji, J.
Rajesh Kumar Banka - Appellant
Versus
The Union of India & Ors - Respondents
W.P. No. 19610 (W) of 2011
Decided On : 12-11-2014
For the Petitioners:P. Chatterjeee, S. Mitra, D. Ghosh, S. Chatterjee and S. Saha, Advocates
For the Respondent No. 1 and 2:L.K. Chatterjee and Raj Sekhar Basu, Advocates
For the Private Respondents:Jaydeep Kar, Anjan Sen, Saurabh Maitra and Gaurav Purkayastha, Advocates
The High Court has the jurisdiction to interfere with the order of the IPAB if it is found that the IPAB has erred in law or failed to decide reasonably on the materials disclosed before it.
Headnote:
PATENTS ACT - SECTION 64 - INTELLECTUAL PROPERTY APPELLATE BOARD - REVOCATION OF PATENT - NOVELTY - TRANSPARENCY AND RIBBED WIRE - INVENTIVE STEP - EXPERT OPINION - FAIR PLAY AND ESTOPPEL - WRIT PETITION - JURISDICTION OF HIGH COURT.
Fact of the Case:
The petitioner, Tara Chand Banka, filed an application for a patent in respect of a security seal allegedly invented by him. The patent was granted in 2006. The private respondents, Patel Brothers, filed an application for revocation of the grant under Section 64 of the Patents Act, 1970, on the ground that the petitioner's product lacked novelty as it was “taught” by the US prior art. The Intellectual Property Appellate Board (IPAB) allowed the application and revoked the petitioner's patent.
Finding of the Court:
The High Court set aside the order of the IPAB and held that the IPAB had erred in law and failed to decide reasonably on the materials disclosed before it. The Court found that the IPAB had failed to consider whether the US patent was known at any material point of time, whether a proper search for worldwide patents with regard to a similar invention was not made by the Indian Patent Office, and whether the transparency of the product and the ribbed wire amounted to an inventive step within the meaning of Section 2(Ja) of the Patents Act, 1970.
Issues: 1. Whether the petitioner's product lacked novelty as it was “taught” by the US prior art? 2. Whether the IPAB erred in law and failed to decide reasonably on the materials disclosed before it? 3. Whether the private respondents were estopped from maintaining the section 64 application as they had obtained a patent of a sealing device which was identical to that of the petitioner?
Ratio Decidendi: 1. The Court held that the IPAB had failed to consider whether the US patent was known at any material point of time, whether a proper search for worldwide patents with regard to a similar invention was not made by the Indian Patent Office, and whether the transparency of the product and the ribbed wire amounted to an inventive step within the meaning of Section 2(Ja) of the Patents Act, 1970. 2. The Court held that the IPAB had erred in law and failed to decide reasonably on the materials disclosed before it. 3. The Court held that the private respondents were estopped from maintaining the section 64 application as they had obtained a patent of a sealing device which was identical to that of the petitioner.
Final Decision: The Court set aside the order of the IPAB and quashed it. The Board was directed to hear out the application afresh, on the basis of the observations made in the judgment and order and pass a judgment and order within six months of communication of the order.
I.P. Mukerji, J.
The writ petitioner invokes the extraordinary jurisdiction of this Court under Article 226 of the Constitution of India by challenging an order dated 19th August, 2011 passed by the Intellectual Property Appellate Board ("the Board"). It was passed on an application under Section 64 of the Patents Act, 1970, by Patel Brothers, the sixth respondent. The writ petitioner says he has no other remedy. No such provision is provided in the said Act. This contention is not disputed by learned counsel for the private respondents. The subject matter of this writ application is a "Sealing Device" used amongst other purposes to prevent or detect pilferage of electricity. Both the petitioner and the private respondents manufacture this product. There is evidence to show that this kind of a "Sealing Device" is also known in the United States of America, the date of grant of patent in that country being 21st July, 1998, in respect of US patent 5782153.
2. I will now describe the "Sealing Device" along with some very vital facts. On 07th August, 2001 Tara Chand Banka, the father of the writ petitioner filed an application before the Controller of Patents for obtaining a patent in respect of a security seal allegedly invented by him. He died on 18th April, 2005. On 02nd June, 2006 the patent (patent no. 200041) applied for, was granted. The petitioner is his son and legal representative. The reason why the petitioner and the private respondents are at loggerheads is that, as I have understood from the submissions made by learned counsel, the electricity companies are monopoly buyers of this product. They are very strict. They will not buy a product which is not patented.
3. In the said order of the Board dated 19th August, 2011, it was said that the writ petitioner's product lacked novelty as it was "taught" by the US prior art. Hence, the application for revocation of grant made by Patel Brothers was allowed .
4. Now what is this "Sealing Device"? In the specification filed by the writ petitioner with the patent authorities, this "Sealing Device" was described as a hollow trapezoidal body or capsule open at one and closed at the other. It has two lips or protrusions in the upper inside region at the open end of each of the narrow walls of the capsule. It also contains a varied length of sealing wire hermetically sealed at the end of the base part. The body has two collapsible protruding parts resembling an inverted w. The wire is threaded through the apertures. Pressure is applied to the capsule by the thumb on the anchor at the top to close the capsule.
5. Suppose an electric meter is to be sealed. The open end of the wire is run through the aperture in the meter for inserting a lock and then inserted into the device and the device locked.
6. I was shown the working of the device in Court. It is not possible to remove or open the device without breaking the lock. Hence, if the device is tampered with, the lock will break. By use of this device, it becomes very easy to detect tampering of electrical instruments like meters, letter boxes etc.
7. Learned counsel for the petitioner Mr. Pratap Chatterjee, Senior Advocate argued that the petitioner's device had some novel features. It was of transparent plastic which made it easy to detect transparency. Added to this was the feature of the wire being ribbed.
8. As I have said before, on 7th August, 2001 Tara Chand Banka applied for patent of the said device. On 26th July, 2005 the sixth respondent, M/s, Patel Brothers applied for obtaining a patent in respect of a similar product, that is, tamper proof seal. On 02nd August, 2005 the fourth and fifth respondents registered a design of an identical security seal under registration No. 200628. On the same day Dinesh Patel applied for patent of a similar product, that is, a tamper proof seal. On 02nd June, 2006 patent No. 200041 was granted in favour of Tara Chand Banka and/or his successors. On 24th October, 2008 patent No. 224937
