India: Are Patents Prima Facie Valid Or Is There A Six-Year Hitch?

Last Updated: 7 March 2017
Article by N. Mahabir

1 Way back in 1978, the Supreme Court of India in the case of Biswanath Prasad Radhey Shyam vs. Hindustan Metal Industries, AIR 1982 SC 1444, rejected the argument that there is a presumption of validity of patent. The Hon'ble Court held:

"It is noteworthy that the grant and sealing of the patent, or the decision rendered by the Controller in the case of opposition, does not guarantee the validity of the patent, which can be challenged before the High Court on various grounds in revocation or infringement proceedings. It is pertinent to note that this position, viz. the validity of a patent is not guaranteed by the grant, is now expressly provided in Section 13(4) of the Patents Act, 1970."

2 In view of the specific reference by the Court, it is but obvious to look at Section 13 (4) of the Patents Act, 1970, which states:

"The examination and investigations required under Section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon."

3 It is surprising that the Supreme Court in few paragraphs before the above statement observed:

The Court has then detailed the elaborate process of scrutiny which a patent application undergoes prior to its grant.

"The Act provides various checks to prevent an invalid patent being granted which does not involve any inventive step or a manner of new manufacture or improvement. The procedure for obtaining an exclusive privilege under this Act (before the Amending Act 39 of 1970), may be described as below:"

4 The reading of the Hon'ble Supreme Court in Section 13 (4) that validity of a patent even after examination is not guaranteed may not be fully in sync with the scheme of the Act. It is pertinent to notice that heading of Section 13 states Search for anticipation by previous publication and by prior claim. Section 12 and 13 merely deals with examination of an application. Further, the caveat on the validity of patent in Section 13 (4) is limited by the words "examination and investigations required under section 12 and this section". It would not be appropriate to read "grant" instead of the words "examination and investigations required under section 12 and this section".

5 goes without saying that examination of the application is merely the first, though an important stage of the prosecution of the application. The application is then placed before the Controller, who in terms of Section 14 to Section 20 is expected to apply his mind and experience to the application prior to the grant of the patent. The Controller, under Section 15 of the Patent Act, may raise objection dehors the examiner's report.

6 Some cases hold that recent patents may not be considered to be valid by relying on a six-year rule i.e. a patent could be treated as valid only on the expiry of six years from the date of grant:

  1. In the case of V. Manika Thevar vs. Star Plough Works, AIR 1965 Mad 327, it was held:

"(6) Secondly, the patent is very recent one, and I find that the decisions have uniformly taken the view that any patent which is less that six years old is regarded as a recent one. The statement of the law in Terrel on Patent, 9th Edn pages 318-320 shows that a patentee should show undistributed possession of the enjoyment of the patent at least for a period of six years before the controversy arose."

  1. In National Research and Development Corporation of India vs. Delhi Cloth &General Mills Co. Ltd., AIR 1980 Del. 132 it was again held that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for a refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than six years old and there has been actual user it would be safe for the court to proceed with this presumption.
  1. In Hindustan Lever vs. Godrej Soaps, 1997 PTC 756, while denying injunction, it was held that:

28. As regards condition (a) it is a rule of practice that if a patent is a new one, a mere challenge at the Bar would be quite sufficient for the refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would., for the purpose of a temporary injunction, presume the patent to be a valid one. If the patent is more than 6 years old and there has been actual user it would be safe for the court to proceed upon this presumption.

7 The six-year rule came for criticism in the case of F. Hoffmann La Roche Ltd. Vs. Cipla Limited, 148 (2008) DLT 598, when the Court expressed its bafflement on the six-year rule to determine prima facie validity of a patent. The Court held that:

"63. One must confess bafflement at the 'six-year' rule preventing courts in India from granting interim injunction. No provision of law or rule was brought to the notice of the court in support of this practice. The six-year rule appears to have crept in Manicka Thevar, and subsequently picked up in other judgments to be developed into a universal rule. The rule can be explained as one cautioning the courts that patent infringement actions stand on a slightly different footing, (from other cases) where the courts should not automatically grant injunction on prima facie satisfaction of infringement, since patents can be challenged, even in defense. It has to be seen as a rule of caution and prudence rather than a rigid, ritualistic formula of mathematical application...."

8 Under Section 114, illustration (e) of the Indian Evidence Act, 1872, there is a presumption that All judicial and official acts have been regularly performed. As per the latin maxim omnia praesumuntur rite at solenniter esse acta donec probetur in contrarium, everything is presumed to be rightly and duly performed until the contrary is shown. It follows that all actions of a public authority are presumed to be valid unless proved otherwise. It will be presumed that the examiner has conducted the examination properly and exercised due diligence.

  1. In the case of P.J. Ratnam vs. D. Kanikaram & Ors., AIR 1964 SC 244, the Supreme Court of India held that:

"6. ......There would be a presumption of regularity in respect of official and judicial acts and it will be for the party who challenges such regularity to plead and prove his case...."

  1. In Zeenat vs. The Principal of Prince of Wales Medical College, AIR 1971 Patna 43, it has been held that:

"6.......There is a presumption that every person whether in his private or official character does his duty and unless the contrary is proved, it is presumed that all things are rightly and regularly done. This presumption applies with greater force to official acts. Further it can hardly be controverted that the burden of proof is on the person who maintains that the apparent state of things is not the real state of things. In the cases under consideration, the petitioners, in my opinion, have failed to rebut the presumption or discharge the burden...."

  1. In the case of Narayan Govind Gavate & Ors. Vs. State of Maharashtra & Ors., (1977) 1 SCC 133, the Supreme Court held that:

"22. .......True presumptions, whether of law or of fact, are always rebuttable. In other words, the party against which a presumption may operate can and must lead evidence to show why the presumption should not be given effect to. If, for example, the. party which initiates a proceeding or comes with a case to Court offers no evidence to support it, the presumption is that such evidence does not exist. And, if some evidence is shown to exist on a question in issue, but the party which has it within its power to produce it, does not, despite notice to it to do so, produce it, the natural presumption is that it would, if produced, have gone against it. Similarly, a presumption arises from failure to discharge a special or particular onus.

28....The well known maxim of law on which the presumption, found is illustration (e) to section 114 of Evidence Act is: "Omain prae sumunt ur rite esse acta" (i.e. all acts are presumed to have been rightly and regularly done). This presumption, however, is one of fact. It is an optional presumption. It can be displaced by circumstances indicating that the power lodged in an authority or official has not been exercised in accordance with the law...."

9 It cannot be gainsaid that a patent application undergoes a detailed examination by the examiner, who generally has domain knowledge in which the application is concerned. The application is then placed before a Controller who is much experienced in the field with subject expertise. The application is published in patent journal, which enables any person interested to file a pre-grant opposition.

10 Under section 8 of the Patents Act, an onus is cast upon the applicant to disclose applications filed in foreign countries corresponding to the Indian application. The Controller can also seek the examination reports and documents in such foreign jurisdictions. The Controller is thus aware of the objections raised in other countries. Rejection of a patent application in another country thus creates an hurdle for the Applicant even though grant by itself may not result in automatic grant in India.

11 On the other hand, there is no equivalent provision to that of Section 8 of the Patents Act, 1970, in Trade Marks, Copyright, Design Acts. Therefore, it is possible that even though a trade mark / copyright / design in rejected by the IP offices outside India, it may be granted in India. The applicant does not incur any liability for non-disclosure of rejections outside India. Notwithstanding this, Section 31 of the Trade Marks Act, 1999 recognizes that registration of a trade mark is prima facie evidence of its validity. Section 31 of Trade Marks Act, 1999, has been subject matter of consideration by the Delhi High Court in the case of Marico Limited vs. Agro Tech Foods Limited, it was held that:

"13.......Registration is only prima facie evidence of its validity and the presumption of prima facie validity of registration is only a rebuttable presumption..."

"14.......This also flows from the fact that under Section 31(1) registration is only a prima facie evidence of validity and not conclusive evidence. Registration would only be a conclusive evidence of validity if the rectification/cancellation proceedings filed for cancellation of the registered trademark do not finally succeed...."

12 In the absence of a provision similar to that of Section 31 of Trade Marks Act, 1999, in the Patents Act,1970 it may not be fully correct to assume that even after all the rigorous examination and its publication, the patent cannot still be considered to be prima facie valid. The situation is exacerbated by the limited term of patent in contrast to Trade Marks. Going by the interpretation of Section 13 (4) of Patents Act, 1970 by the Supreme Court of India in Biswanath Prasad, it could be argued that Section 13 (4) is arbitrary and open to a Constitutional challenge.

13 Emphasising the need to grant interim injunction for a registered patent, the Division Bench in the case of Telemecanique & Controls vs. Schneider Electric Industries SA, 2002 (24) PTC 632 Del. 644, held that:

"30. It has to be appreciated that undoubtedly patent creates a statutory monopoly protecting the patentee against any unlicensed user of the patented device. Thus once a violation is established in case of a registered patent, subject of course, to the patent being used, it will not be permissible to contend that the said patentee is not entitled to an injunction. A monopoly of the patent is the reward of the inventor. It is also to be appreciated that law of the patent is slightly different from the law of copyright and trademark as the patent is granted only for a period of 14 years...."

14 In the leading case of American Cynamid Co. vs. Ethicon Ltd. (1975) RPC 513, Lord Diplock had corrected the historical reasoning of carving out a separate basis for consideration of interim injunction and the prima facie validity conundrum holding:

"Historically there was undoubtedly a time when in an action for infringement of a patent that was not already "well established," whatever that may have meant, an interlocutory injunction to restrain infringement 30 would not be granted if counsel for the defendant stated that it was intended to attack the validity of the patent.

Relics of this reluctance to enforce a monopoly that was challenged, even though the alleged grounds of invalidity were weak, are to be found in the judgment of Scrutton, L.J. as late as 1924 in Smith v. Grigg, Limited ([1924] 1 K.B. 655); but the 35 elaborate procedure for the examination of patent specifications by expert examiners before a patent is granted, the opportunity for opposition at that stage and the provisions for appeal to the Patent Appeal Tribunal in the person of a patent judge of the High Court, make the grant of a patent nowadays a good prima facie reason, in the true sense of that term, for supposing the patent to be valid, and have rendered obsolete the former rule of practice as respects interlocutory injunctions in infringement actions. In my view the grant of interlocutory injunctions in actions for infringement of patents is governed by the same principles as in other actions. I turn to consider what those principles are." (emphasis supplied)

15 Therefore, patents ought to be treated to be prima facie valid dehors its age. Strength of a patent may not be directly proportional to its age but on the underlying invention. Grant of a patent or trade mark implies that the person whose name is entered in the register is the owner of the patent or trade mark. The grant of a patent or trade mark raises a presumption that the same has been registered properly. The grantee therefore can assert his ownership and exclusive right at any time after grant. After the date of grant, the onus to show that the grant was not in accordance with law is upon the person who asserts such non-compliance. This onus entails a strong showing of invalidity and not merely for the asking. Until such infraction is shown, at a prima facie level, the grantee should be able to assert his rights unbridled. There does not appear to be any legal basis for the six-year hitch.

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