Recently the Lok Sabha (Lower House of Indian Parliament) passed the Trademark (Amendment) Bill-2009. Same shall be now presented before the Rajya Sabha (the Upper House of Indian Parliament) and once it would be passed there and receives assent of President of India same shall be become an Act. The statement of objects and reasons as this bill sought to achieve are:

1. "At present, a person desirous of obtaining registration of his trade mark in other countries has to make separate applications in different languages and pay different fees in the respective countries. There is no provision under the Trade Marks Act, 1999 (hereinafter referred to as the Trade Marks Act) to facilitate Indian nationals as well as foreign nationals to secure simultaneous protection of trade marks in other countries.

2. The Madrid Protocol, administered by the International Bureau of the World Intellectual Property Organisation, a specialised agency of the United Nations, was adopted in 1989. The Madrid Protocol is a simple, facilitative and cost-effective system for international registration of trade marks. It enables the nationals of the Member countries of the Protocol to obtain protection of trade marks within the prescribed period of 18 months by filing a single application with one fee and in one language in their country of origin, which in turn is transmitted to the other designated countries through the International Bureau.

3. Accession to the Madrid Protocol entails amendments to the Trade Marks Act. For this purpose, it is proposed to suitably amend the Trade Marks Act and to incorporate therein a new Chapter IVA containing special provisions relating to protection of international registration of trade marks under the Madrid Protocol. It is sought to empower the Registrar of Trade Marks to deal with international applications originating from India as well as those received from the International Bureau and maintain record of international registrations. Definitions of new terms are being given. It is further proposed to provide for the effect of international registration, duration and its renewal.

4. It is also proposed to remove the discretion of the Registrar to extend the time for filing notice of opposition of published applications and provide for a uniform time limit of four months in all cases. Further, with a view to simplify the law relating to transfer of ownership of trade marks by assignment or transmission and to bring the law generally in tune with international practice and modern business needs, section 45 is proposed to be modified. It is also proposed to omit Chapter X of the Trade Marks Act dealing with special provisions for textile goods, as it has now become redundant."

But it would be some months before the bill become an Act and few more months till Indian Trademark Rules are amended to prescribe procedure in respect of International application filed though India or designating India.

Apple will now have to abandon use of MIGHTY MOUSE for its products as United States Patents and Trademarks Office has awarded "MIGHTY MOUSE" trademark to Man & Machine (Small computer-peripheral manufacturer) for its rugged waterproof computer mouse, after the company filed a suit against Apple in 2008. Man & Machine was first to introduce the mark in 2004 and Apple introduced its Mighty Mouse computer mouse several months thereafter. Apple argued that it had licensed the name from television network CBS, which owns the rights to the popular Mighty Mouse cartoon character but USPTO ruled that CBS' trademark rights in MIGHTY MOUSE cartoon character did not cover computer peripherals and is limited to trademarks associated with the character itself.

Those interested in protecting their inventions in Thailand, would be delighted to know that December 24, 2009 onwards it shall be possible to designate Thailand in International PCT Applications. But for PCT applications filed before 24 December 2009, they would not be able to enter PCT national phase in Thailand and are required to file convention patent applications in Thailand under the Paris Convention route.

Section 101 reads as under:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Facts leading of the appeal before Federal Court are as follows:

The Applicants had filed their patent application on April 10, 1997 and application contained eleven claims. The Claim 1 reads as under:

1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:
(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions

The examiner rejected all claims under 35 U.S.C. § 101, on the reasoning that "the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts." Further the Applicants had admitted their claims are not limited to operation on a computer and the examiner therefore concluded that they were not limited by any specific apparatus.

The Applicant preferred an appeal against the Examiner's decision before the Board of Patent Appeals and Interferences. The Board while holding that the examiner erred to the extent he relied on a "technological arts" test because the case law does not support such a test. Further, the Board held that the requirement of a specific apparatus was also erroneous because a claim that does not recite a specific apparatus may still be directed to patent-eligible subject matter "if there is a transformation of physical subject matter from one state to another." Elaborating further, the Board stated that "mixing' two elements or compounds to produce a chemical substance or mixture is clearly a statutory transformation although no apparatus is claimed to perform the step and although the step could be performed manually."

But the Board also concluded that Applicants' claims do not involve any patent-eligible transformation, holding that transformation of "non-physical financial risks and legal liabilities of the commodity provider, the consumer, and the market participants" is not patent-eligible subject matter. The Board also held that Applicants' claims "preempt any and every possible way of performing the steps of the [claimed process], by human or by any kind of machine or by any combination thereof," and thus concluded that they only claim an abstract idea ineligible for patent protection. Finally, the Board held that Applicants' process as claimed did not produce a "useful, concrete and tangible result," and for this reason as well was not drawn to patent-eligible subject matter.

Against which the Applicant (appellant herein) appealed before the Federal Court. The true issue before the Court was whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process and to determine "test or set of criteria" that shall govern determination as to whether a claim to a process is patentable under § 101 by the Patent and Trademark Office or courts.

The Federal Court relied on a definitive test enunciated by Supreme Court to determine whether a claimed process is surely patent-eligible under § 101 or not. The test suggests that an invention is patentable if,
(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.

The Court also observed that they certainly do not rule out the possibility that they may in the future refine or augment the test or how it is applied. The court also observed that they recognise that Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies But certainly for the present case, they see no need for such a departure and reaffirm that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101.

Supreme Court of India adjudicates the dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and "appeals against order passed by Controller of Patents under pre Grant or post grant opposition".

Supreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors..

The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and "appeals against order passed by Controller of Patents under pre Grant or post grant opposition".

It would be wise to state the brief facts of the matter in tabular form for better understating of the matter.

26.03.1999 Section 116 of the Indian Patents Act, 1970 amended by the Patents (Amendment) Act, 1999 w.e.f. March 26, 1999 that provides for appeal to High Court against orders passed by the Controller of Patents. At that time only provision/remedy to oppose the grant of patent was pre grant opposition.

14.6.2000 J.Mitra & Company Pvt. Ltd. the appellant herein filed an application for grant of Patent

25.06.2002 Patents (Amendment) Act, 2002 was promulgated by Legislature and to hear appeals against orders passed by the Controller Appellate Board established under Section 83 of the Trade Marks Act, 1999 was made the Appellate Board for the purposes of Patent Act (under Section 116) and under Section 117A provision was made that appeal against order of Controller under Section 25 (pre Grant Opposition) and other provisions shall lie only in the Appellant Board. But Section 116 and 117A were not notified and brought into force. Still at that time only provision to oppose the grant of patent was pre grant opposition under Section 25 and same brought into force vide Notification dated 20.5.2003.

20.11.2004 The application was notified by the Patent Office after scrutiny

Span Diagnostics Limited opposed the application under the provisions of Section 25 as stood then

04.04.2005 The Legislature enacted the Patents (Amendment) Act, 2005 w.e.f. 01.101.2005 but not all provisions were simultaneously brought into force. Only certain sections of the Patents (Amendment) Act, 2005 were brought into force. Provisions for Pre Grant as well as Post Grant Opposition were made. But Section 117A was amended and expression Section "25" was replaced with Section 25(4),effectively meaning that appeal shall lie against order passed under Section 25(4) i.e. order passed by Opposition Board in Post Grant Patent. The Legislature allowed appeals only against decision passed by the Controller in a Post Grant Opposition not pre Grant Opposition. Though the provisions of Section 25 were brought into effect, but the provisions of Section 116 and 117A were not brought into effect.

21.03.2005 Pre-grant opposition was filed under Section 25(1) of the Patent Act. It is to be noted that Patent (Amendment) Act, 2005 was enacted only after filing of this opposition on 04.04.2005 but was brought into effect from 01.01.2005. Therefore only provision available for opposition on such date was under the Patent (Amendment) Act, 2002.

23.08.2006 Pre Grant Opposition was rejected by the Controller of Patents. And as the Section 116 and 117A was not enacted on such date only remedy was to file Appeal under the provisions of Section 116 of Patent (Amendment) Act, 2002 that provides for filing the appeal before the High Court.

22.09.2006 The patent was granted. From here contention of Appellant arises, that after grant of Patent

19.10.2006 Appeal filed before the High Court against the order passed by the Controller of Patents in the patent opposition being FAO no. 292/2006 & 293/2006.

02.04.2007 Provisions of Section 116 and 117A, brought into effect by notification by the Legislature

03.04.2007 Provisions of Section 117G, that called for transfer of all pending proceeding against any order or decision of Controller and all cases pertaining to revocation other than on a counter claim in a suit for infringement and rectification of register pending before any High Court to the Appellate Board was brought into effect by notification by the Legislature. The Appellate Board may proceed with the matter either de novo or from the stage it was so transferred.

In words of Hon'ble Supreme Court "This matter is a classic illustration of the confusion which has emerged on account of the postponement of in-part commencement of Patents (Amendment) Act, 2005."

The enactment of Patents (Amendment) Act, 2005, introduced for the first time a dichotomy in the Patent Law between "opposition to the pre-grant" and "opposition to the post-grant of patent" and also as to "appeal" that may be preferred against any orders that may be passed by the Controller of Patents in opposition proceedings. No doubt, the Amendment Act of 2005 brought major structural change in the Indian Patent Law as per India's Obligation under WTO/GATT. As per the amendment the appeals against orders passed under the post-grant opposition by the Controller shall lie before the Appellate Board and not to the High Court. But the enabling provision i.e. Section 117A was not brought into force till April 2, 2007. Therefore, appeal if any has to be preferred before the High Court under Section 116 of the Patent (Amendment) Act, 1999.

Though the provisions for an appellate forum to hear appeals against order passed by the Controller of Patents were enacted by legislature in 2002, the Govt was not able to start functioning of the Appellate Tribunal till April 2007 and hence Section 116 and 117A were not brought into force.

The Legislature intended to provide for only one statutory appeal against order passed by the Controller that too in a Post Grant Opposition to the Appellate Board but by not bringing Amending Section 61 into force till April 02, 2007, appeals filed during the interregnum i.e. between 01.01.2005 to 01.04.2007, as in this case, became vulnerable and liable to be dismissed as misconceived as contended by the appellant before Supreme Court.

Supreme Court observed "quite often the commencement of an Act is postponed to some specific future date or to such date as the Appropriate Government may, by notification in the Official Gazette, appoint. At times provision is made for appointment of different dates for coming into force of different parts of the same Act."

"An Act cannot be said to commence or to be in force unless it is brought into operation by legislative enactment or by the exercise of authority by a delegate empowered to bring it into operation."

The Court while applying the above tests to the present case found that for the first time a dichotomy was introduced in the Patent Law by providing vide Section 25(1) for "opposition to pre-grant" and vide Section 25 (2) for "opposition to post-grant" of paten under the Patents (Amendment) Act, 2005. Earlier, there was no "post-grant opposition" and the only provision of challenge was a "pre-grant" challenge under Section 25 (1). By Patents (Amendment) Act, 2005, under Section 25(2) right is granted to an "aggrieved person" to challenge the patent even after its grant and the grounds of challenge are identical to Section 25(1) of the Act. Therefore giving a right after grant but limiting the right to only an "aggrieved person" and fixing the limitation period to one year after grant.

Though the Legislature further intended to limit the right to appeal only to post grant oppositions and obliterate appeal from "pre-grant proceedings" but the Executive did not bring the enacted law (Chapter XIX having provisions for appeals to the appellate board i.e. Section 116 and 117 A to H) into force vide a notification simultaneously along with other provisions of the Act especially Section 25 (1) and (2). As a result the chapter XIX containing amended Sections 116 and 117A(2) were not brought into force only on 2.4.07 (and 117G on 03.04.2007) whereas the concept of "Pre grant" and "Post-grant" oppositions were already brought into force w.e.f.1.1.2005. In words of the Hon'ble Supreme Court:

"This is where the legislative intent got defeated during the interregnum."

During that period only the Respondent filed appeals against the orders rejecting the Pre Grant Oppositions by Controller of Patents being FAO No. 292/06 and 293/06 before the High Court under Section 116 of the Patents (Amendment) Act, 1999 , as it stood on date of filing of appeal i.e. October 19,2006". On the date of filing of appeal, the amended Section 117A, suggested by Patents (Amendment) Act, 2005, was not brought into force, therefore, the Patents (Amendment) Act, 1999 prevailed under which an appeal lay before the High Court.

The Supreme Court held "Taking into account the complexities involved in this case, on account of a hiatus created by reason of the law not being brought into force in time, we are of the view that the first appeals, filed by respondent no.3 in the High Court being FAO No.292/06 and FAO No.293/06, would remain in the High Court. The said appeals would be heard and disposed of by the High Court in accordance with law under Section 116 of the said 1970 Act as it stood on 19.10.06. The High Court will hear and decide the validity of the Order passed by the Controller dated 23.8.06 rejecting "pre-grant opposition" filed by respondent no.3. We are informed that there are hardly one or two matters of this nature which are pending.

Therefore, we are of the view that respondent no.3 cannot be let without remedy. In the special circumstances of this case, particularly when after 2.4.07 appeals against orders rejecting "pre-grant opposition" are not maintainable and particularly when FAO No.292/06 and FAO No.293/06 were filed by respondent no.3 prior to 2.4.07 under the old law, we are of the view that these two appeals shall be heard and decided by the High Court in accordance with law. The Appellate Board after 2.4.07 is entitled to hear appeals only arising from orders passed by the Controller under Section 25(4), i.e., in cases of orders passed in "post-grant opposition". Therefore, there is no point in transferring the pending FAO No.292/06 and FAO No.293/06 to the Appellate Board which has no authority to decide matters concerning "pre-grant opposition". Moreover, it may be noted that even Section 117G, which refers to transfer of pending proceedings to the Appellate Board, is also brought into force vide Notification dated 3.4.07. Keeping in mind the peculiar nature of the problem in hand, we are of the view that ends of justice would be subserved if the High Court is directed to hear and decide the appeals bearing FAO No.292/06 and FAO No.293/06 in accordance with law as it then stood, i.e., under Section 116 under Patents (Amendment) Act, 1999 against Orders passed by the Controller in "pre-grant opposition" proceedings."

The Section 6 of the General Clauses Act 1897 clarified the position of law and intent:
6. Effect of repeal.- Where this Act , or any Act made after the commencement of this Act, repeals any enactment hitherto made or hereafter to be made, then, unless a different intention appears, the repeal shall not-
....
....
c). affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed; or
....
The provision along with ratio laid down by Hon'ble Supreme Court in GSK case concerning the Exclusive marketing rights made amply clear that where any enactment is repealed, it shall not affect any right, privilege, obligation or liability acquired, accrued or incurred under any enactment so repealed, unless, a different intention appears.

Applying the same ratio in the present matter, though the rights were accrued to respondent before the provisions of Section 116 as envisaged under Patents (Amendment) Act, 2005 was enacted, but the provisions of Section 117A made very clear that intention of legislature is different i.e. no appeal shall lie against any order passed by Controller of Patents in Pre Grant Oppositions.

The pendency of only very few such appeals against pre grant orders during the interregnum made the Hon'ble Supreme Court to keep the matter with the High Court. Otherwise, the interpretation of "appealable orders" under 117A read with 117G might have settled the position of law as to what about the provisions against which right to appeal is taken away subsequently.

Recently the Controller General of Patents issued a public notice requiring all Patentees/ licensees to file statement as to working of their Patents in India latest by March 31, 2010. As per Rule 131 of the Patents Rules, as amended up to date, voluntarily the statement should be filed in respect of each calendar year within 3 months from the end of each calendar year. For example for a granted patent in India, for year 2009 the statement should be filed by March 31, 2010.

Also as per provisions of Section 146 of the Indian Patents Act, if such information has been demanded by the Controller the statement has to be filed within 2 months (or such further time as may be allowed by Controller) but there shall be intervals of at least 6 months between the two statements (Controller cannot demand information within 6 months of submission of last information). But presently the notice issued by the Controller is a public notice therefore instead of 2 months time he has requested compliance to provisions of Rule 131 of the Patent Rules.

This information may turn out to be relevant if someone later files a request for compulsory license in India and there this information can be used by the applicant. Till date no such publication of statement as to working of Patent in India is published as it is the discretion of the Controller whether he desires to publish such information or not.

No official fee is payable while submitting the information and the information has to be supplied only after the Patent has been granted and till the patent is in force in India. It is preretirement to mention herein that in case the information supplied is not supplied within time or refused, a penalty of up to Rs. 10 Lakhs (One million Indina Rupees or approx US $ 25000) may be imposed and in case the information supplied is found to be false (intent necessary, especially malafide intent) there is also provision of imprisonment of up to 6 months or fine or both on the person deliberately providing the false/incorrect information.

In case, where the patented invention has not been used in India, a statement to that effect has to be filed and reasons for not working and steps taken for working of the invention has to be provided with. Where the patented invention has been worked in India, the quantum and value of the patented product manufactured/used, place of manufacture (whether in India or imported) has to be provided. Further, in respect of the year to which the statement pertains the details of licence and sub-licence granted have to be provided. Also a statement has to be provided as whether the requirement of the public has been met adequately/ partly/ to the fullest extent.

Please note that statement has to be preferably supplied by the Applicant or its officials, therefore it is in your interest to execute the Form 27 and arrange filing of same in the Indian Patent office before March 31, 2010. But where same could not be so provided you may provide same to your Attorney in India on a letter head and he may submit same on your behalf.