Page 32 - A&A Patents&Design Rewind-2016

BAR OF BURDEN OF PROOF ON DEFENDANTS
RAISED
ADivision Bench (DB) comprising Justice
BD Ahmed and Justice Sanjeev Sachdeva
passed an order granting an injunction in
a patent matter involving the personal protection
equipment companies 3M Innovative Properties
Ltd. (Appellant/Plaintiff) and Venus Safety & Health x.
Pvt. Ltd. (Defendant). The DB reversed an order
of Justice Manmohan Singh who had denied the
injunction.
The Court also hinted at presumption of validity of
the patents holding that the grant of the patent by
the Indian Patent Office and the U.S Patent Office
heightens the burden for establishing a credible
challenge.
The highlights of the order of the Division Bench
are as follows:
1. The principles governing patentability of an
invention laid down by the order have been
summarized as under:
i. it must be the inventor’s own discovery;
ii. it should not be a mere verification of 2.
what was already known before the
date of the patent;
iii. it should be a manner of new
manufacture or include an improvement
or an allied invention;
iv. it must also be useful;
v. not only the art, process or manner
of providing, preparing or making an
article but also the article prepared or
produced by the manufacture can be
patented;
vi. it should be more than a mere workshop
improvement;
vii. the improvement or the combination
must produce a new result, or a new
article or a better or cheaper article 3.
than before;
viii. a combination of old, known integers
may be so combined that by their
working inter-relation they produce a
32 | Patents & Design
new process or improved result;
ix. mere collection of more than one
integer or things, not involving the
exercise of any inventive faculty, would
not qualify for the grant of a patent;
there must be novelty in the mode of
application and the novelty must show
invention;
xi. the new subject-matter must involve an
“invention” over what is old;
xii. it must involve something which is
outside the probable capacity of a
craftsman;
xiii. it must not be the obvious to a skilled
worker in the field concerned,
xiv. it must not be a natural suggestion of
what was previously known;
xv. Prior public knowledge of the alleged
invention would disqualify the grant of
a patent and prior public knowledge can
be by word of mouth or by publication
through books or other media;
Merely because the prior art and the subject
patent use the same term for a feature does not
necessarily mean that the feature is the same.
The said term may have two different meanings
in the prior art reference and the subject
patent. For the invention to be anticipated, the
feature disclosed in the prior art must pertain
to the same concept as claimed in the patent.
The Indian Patent Office and the United States Patent
Office have granted the patent and have found that
the patent non-obvious. Since these expert bodies
have found the patent to be non – obvious, the
burden of proof on the Defendant to establish a
credible challenge is even greater.
The entire specification and teaching of the
prior art must be considered while determining
patentability. Mere reference to the abstracts
of the prior art documents without considering
the teaching of the prior art in the detailed