HONBLE SMT.JUSTICE PRABHA SRIDEVAN, CHAIRMAN : This petition is for revocation of patent No. 200041 relating to a sealing device for securing objects against tampering or violation. This devise is aimed at providing a tangible solution against pilferage, tampering and/or theft or water, gas and electric meters. The patent was granted with effect from 07.08.2001.
2. A preliminary objection is raised by the respondent regarding the maintainability of this Petition in view of the filing of the Civil Suit T.S.No.4/2007 before the Learned Judge at Barasat. The suit was filed before the Gujarat Court by the respondents against applicant herein. It was claimed that one late Tara Chand Banka, inventor as well as predecessor in business developed this security seal. It has been marketed since 2001. The inventor died in an accident on April 18, 2005. The respondents as successors became the owners. The uniqueness of the seal makes it tamper free. For the first time it introduced a new and novel development over conventional modes of securing objects against violation of electric meters by the use of metal bodies like locks or seals made of malleable metals like lead or alloys thereof and wires made by alloys/metals. Earlier system did not offer an effective protection, not to speak of the health hazard. The respondents claimed that they came to know of the petitioners registering the same devise under the Designs act. The applicants had also participated in a tender published by the West Bengal Electricity Board, for supply of identical electrical seal which is protected by Patent No. 200041. They prayed for permanent injunction. Pending suit they asked for temporary injunction.
3 The applicants in their reply stated the Patent No.200041 is devoid of novelty and inventive step. They referred to the prior art US patent 5782513 dated 21.07.1998. According to the applicants the proprietors of the US PATENT had not only patented their invention but also made available to public knowledge in their brochures the said invention. It was also claimed that their products constitute further advancements in the technology which were not limited to the basic features of 200041. They had obtained registration under the Designs Act. And the patent application was pending in respect of the advancements.
4. The ad-interim injunction that was granted was vacated . Against that the respondents had filed FMA No. 895/2008 before the Honble Kolkata High Court. The Division Bench restrained the applicant herein from infringing patent No. 20041. This order was passed on October, 30 2009. The present application for revocation has been filed after that on 27.01.2010.
5. The learned counsel for the respondent submitted that in view of the defence taken by the applicant in the Suit, it was not open to them to file this revocation application thereafter. The learned counsel for the applicant submitted that the person aggrieved by a grant of patent had the right to state his defence in a Suit for injunction without loosing his statutory right to claim revocation of Patent.
6. We requested the Learned Counsel for the respondents to file the written statement filed by the applicant herein in the above Civil Suit. After the orders were reserved, the respondents file paper book containing the copies of the written statement filed by the applicant as well as the Injunction order passed by the Division Bench. We have gone through the same. We do not think the fact that the applicant has defended his case in the injunction suit can ever prevent him or bar him from filing a revocation application. This issue is no longer res integra. The Delhi High Court in the following judgment has held so IA No. 12638/2010 IN CS(OS)NO, 1963/2009 Dr. Aloys Wobben .. Plaintiff Through : Ms Kruitikka Vijay, Advocate Versus Shri Yogesh Mehra & ORA Defendants Through Mr. Sudharshan Singh Shekhawat with Mr. Ajay Chandru, Advocates Thereby the defendants sought rectification of the patent and also for cancellation of the Patent in the Suit, in the written statement and counter claim. The plaintiff argued that the defendant cannot take both courses of action. That once the defendants availed its statutory right, he cannot urge the same in the suit. It was the argument that pursuit of parallel and concurrent remedies should not be allowed. Honble Justice S. Ravindra Bhat held ---- It is worthwhile noticing at this stage that a patent unlike other intellectual property rights, does not come with a presumption. Apparently there are public policy concerns which have been reflected by parliament, which allow patents to be challenged, at various stages: firstly at the stage of grant (Section 25(1)); later, after grant, by a person interested (Section 25(2)); orders of the Controller, including one on a post grant opposition, are appellable, to the board, under Section 117-A. There is an independent remedy for cancellation or revocation of patents, under Section 117-G, to the Board. In addition, in the event of a suit, the defendant can, besides contending non-infringement, also counter claim and seek revocation, under Section 107. Though seemingly overlapping, the remedies may not be necessarily availed simultaneously. For instance, a post grant opposition applicant may not choose to carry the matter in appeal. A third party may be sued for infringement; either at that stage, or before he may prefer an application before the Board for cancellation or revocation. In the event of his being sued for infringement, if his application before the Board is held to be not maintainable, or alternatively, he is asked not to raise the ground of cancellation in his written statement, his defence would be seriously prejudiced. In these circumstances, it would be contrary to statute to hold that he cannot pursue his independent statutory remedy, that would be plainly against public policy. Therefore, this objection relating to maintainability is rejected..
7. Now we come to the merits of the case:- The objection is claimed for the following:-
1. A sealing device for securing objects against tampering or violation comprising:
i) a hollow trapezoidal body or capsule (1) open at one end and closed at the other, with two lips or protrusions (5) in the upper inside region at the open end of each of the narrow walls of said capsule ii) a through cross hold (6), drilled in line, located in the upper regions of each of the larger walls of the said capsule 91) iii) a varied length of sealing wire (4) hermetically sealed at end with the base part (2) of the said capsule; iv) a connecting strip or link (7) one end of which is moulded/sealed with the upper exterior region of one of the narrow walls of the said capsule and;
v) an anchor-shaped body (8) having a base and two collapsible protruding parts (10) resembling an inverted W or a truncated arrow attached to a vertical stand or column erected on the said base and connected thereto with the said link.
2. A sealing device as claimed in Claim 1, wherein the sealing wire is a non-corrosive, non-magnetic, stainless steel wire, non-corrosive Galvanished Steel Wire or non-conductive, non-corrosive P.V.C. Coated metal wire.
3. A sealing device as claimed in Claim 2, wherein the entire device is fabricated from inert , durable, transparent, high-strength, engineering plastic unaffected by heat, cold and /or variations over wide ranges of superincumbent conditions.
4. A sealing device as claimed in claims 1 to 3, wherein the entire device is fabricated from inert, durable, transparent, high-strength, engineering plastic unaffected by heat, cold and/or variations over wide ranges of superincumbent conditions.
5. A sealing device as claimed in Claim 4, wherein the plastic is selected from the group of polymers such as high density polyolefin, polypropylene, polyurethane, PVA, fiberglass or copolymers thereof, which may colourless or coloured, high-strength being the important criteria.
6. A sealing device as claimed in any of the preceding claims wherein the sealing wire is inserted through the holes and the anchor-shaped body is inserted into capsule followed by application of pressure, thereby locking the seal permanently.
7. A sealing device for securing objects against tampering or violation, substantially as hereinbefore described with particular reference to the accompanying drawings.
8. According to the applicant, the aforesaid patent is not a invention since it has neither novelty nor inventive step and it is fully taught by the prior art US 5782513. The learned counsel dealt with each and every feature of the patent and to show how it was not an invention; and that it was obvious; and that it was obtained on a false representation and also that there was insufficient disclosure. To prove his case, the applicant has filed exhibits to show that they have been manufacturing identical seals since 2003 for various State Governments or State Government Undertaking and the Learned counsel referred to exhibit B & Exhibit D. The applicant has also filed his Exhibit E. F, G, H, I, J, & K and the Exhibit L is the expert evidence. The applicant has also shown by Exhibit C that the products identical to the patent have been distributed in India since 1998. According to the Learned Counsel, therefore, the patent should be revoked.
9. On the other hand, the Learned counsel for respondent after raising the issues relating to maintainability submitted that there was no prior art and in fact, there was a communication of the Assistant Controller of Patent that the US prior art was not in their possession not only at the time of examination, but even till 05.02.2008. The Learned counsel submitted that it was only after fully satisfying himself regarding the inventive step that the patent was granted.
10. We have considered the submissions made by the counsel and the materials on record. The main ground of attack is that the US prior art completely anticipates and teaches the invention. Now, let us compare the Patent 200041 and the US Prior Art. Patent No. 200041 According to the complete specifications, the object of the invention is to provide a new ceiling device to overcome drawbacks. U.S. Prior Art The invention relates to a wire security seal of superior ergonomic design which is often used to secure closure of meter or postal boxes. Patent No. 200041 One of the materials used in the invention is high strength polymer non - corrosive, non magnetic stainless steel ceiling wire. Note 2/n at p-73/c says any other sealing wire may also be used. U.S. Prior Art We have already seen in the US prior art, the invention relates to a wire. Patent No. 200041 In the Patent No. 200041 the ceiling device gets destroyed when opened and it is designed for use by human finger with small pressure without any tool or device. U.S. Prior Art The US invention show that it can be closed with one hand and if the wire is cut, it cannot be used again. Patent No. 200041 has the following features:-
i) The hollow trapezoidal body or capsule opened at one end and closed at the other end with two lips in the upper inside region at the open end of each of the narrow walls of the capsule. In the US prior art, there is a capsule containing interior and exterior surface, open end and the close end atleast with two apertures. ii) In the invention there is a anchor shaped body having a base and two collapsible protruding parts resembling an inverted W attached to a vertical stand. US prior are also contains an anchor sized to be received within the capsule. iii) Next feature of the invention is a varied length of sealing wire hermetically sealed at end with the base part of the said capsule. In the US prior art there is a wire of suitable size integral with the seal to be received through the apertures and within the group. iv) The invention contains connecting strip of link which is moulded with the upper exterior region of the narrow walls of the capsule. The US prior art contains a connecting arm integrally formed with the capsule and the anchor. It must be mentioned here that the US prior art clearly explains how connecting arm links the capsule and anchor. This is not explained in the present invention.
v) In the invention there is a through cross hole drilled in line located in the upper region of each of the larger walls at the open end of the said capsule. US prior art the apertures for receiving the wire and for aligning the wire with the groove in the anchor at the open end of the capsule. Drawing shown in the US prior art reveals how the collapsible protruding part resembles the inverted W . vi) The invention speaks of the collapsible parts getting firmly held by the protrusion. Once the anchor is inserted, thereby producing locking after the wire is made to pass through the hole. In the US prior art, it says that the wire engaged by the groove of the anchor when the device is closed and forced into interior of the capsule. In its closed position, the male fitting is irreversibly engaged with the female fitting. vii) In the invention, it speaks of the groove which securely holds the threaded wire in place without any possibility of the wire being drawn out. In the US prior art it says that once the anchor and the capsule are engaged, the wire is received into groove and opened by numerous points and cannot be pulled out. We see from this that at least each aspect of the invention is taught by the prior art. We do not find any novelty in the patent under dispute. The invention does not make any inventive step over an above the cited prior art. In fact, the US prior art is a better and clearer disclosure of the invention than what is stated in the complete specifications of the invention. The object of both the invention and the prior art is to provide tamper proof seal which is achieved by wire passing through the groove and getting locked in place when the anchor is pressed into the capsule. Because of the grooves inside the capsule it is impossible to pull out the wire in order to tamper except by cutting or breaking. Therefore, all the five features which the invention claims that the sealing device is comprised of is completely taught by the US prior art. In fact, it is clear that the features are identically and substantially the same. The Invention states that it is made from transparent high strength plastic which is Claim 4. US prior art says that the entire unit is best manufactured with injection moulded plastic.
11. We do not think that the addition of the adjective transparent would make the invention either novel or containing inventive step. It is clear , therefore, that invention is wholly taught by the US prior art and is fully anticipated.
12. Exhibit C relates to NIC Products Inc. which were products of the Assignees of the US prior art according to the exhibit. It is seen from exhibit C that this was founded in 1984 with the mission to develop the wires best tamper resistant security seal. The features of this are self threading mechanism which is said to be patented.
13. Exhibit B relates to poly carbonate plastic seals which the applicants claim that they have manufactured since 2003 for which the Gujarat Electricity Board had placed its order. This document refers to total locking anchor type mechanism, steel moulded ceiling wire inserting the steel wire through the female part and connected to the male part fitting in the female part in such a way that no space is left for insertion. The Gujarat Electricity Board placing an order with the applicant for poly carbonate plastic steel is also part of exhibit D. The technical specification which is enclosed as part of the tender papers would show that this steel product is the same as the alleged invention. The applicant has also enclosed documents/brochures for the tender floated by Madhya Gujarat Vij Company Ltd for the same product. The applicants have shown that they regularly supply products including the poly carbonate plastic seal to GEB.
14. The applicant herein had filed a written objection to the injunction application and the Proforma Respondent in said proceedings had filed an application for vacating an interim order and the petitioners filed their reply thereto copies whereof are annexed hereto and marked EXHIBIT G.
15. There was a suit filed by the respondent herein against the applicant where the WBSEDL had filed a legal objections. The decisions in the Civil suits cannot restrain us from examining the correctness of the grant of patent No. 200041. These pleadings only show that long before the Patent, identical products were in the market. The search test of anticipation is met with reference to publication not just in India but elsewhere, as per Section 13(2) and here the US art clearly anticipates the complete specification.
16. In addition, we have the evidence of the expert Exhibit L, one Mr Ankit P. Bhimani is a B.Tech in Polymer Technology. In his evidence, it is stated that all the principal components of the device of Indian patent No. 200041 is identical in construction and functioning as of the prior US patent 5,782,513, comprising an anchor portion, a capsule, a flexible connecting arm/link between the anchor and the capsule, mating portions for locking between the anchor and capsule, upon inserting the anchor inside the capsule and a wire for sealing the lock as tamper evident sealing. Indian patent No. 200041 fails to clearly deal with the manner of implementation of the wire sealing while engaging the anchor with capsule/seal body nor it indicates to have the wire crimped at many places or bent at numerous points along the groove/channel of anchor nor it provide illustrative drawing to specifically point out how the sealing is actually implemented and is thus incomplete in description and or insufficient to claim the exact nature of sealing. that I find the device as described in Indian patent is basically a replication of the components and their functions as that of the device of prior US patent 5,782,513. I also state that my appreciation is this that the device of the Indian patent no. 200041 while trying to imitate the structural and functional features of the prior US patent, failed to realize effectively by way of proper disclosure and illustrations the intended attainment of sealing of the locking device in a tamper evident manner used in a wire sealing and thus the use of such wire in the device is not meaningful and do not contribute to a tamper proof sealing of the lock. I, therefore state that there can be no technical advancement in the disclosure on the Indian patent in respect of the prior published US Patent to the person in the art and the Indian patent clearly and sufficiently suffers from any patentable substance in the light of the disclosure, illustrations and claims under the prior US Patent.
17. This evidence stands unrebutted. So the technical experts affidavit has to be accepted. In the counter statement there is a bald denial that the aforesaid expert is not a qualified engineer and that the affidavit is a concocted document. No other reason is given for us to reject this evidence.
18. The other ground raised in the counter evidence is that on the priority date, the US prior art was not known or disclosed to the Patent Office. We are of the opinion that the patent office is bound to make a comprehensive search of prior art to ascertain novelty of the claimed invention. However, on 01.10.2007, the petitioners had addressed the letter to the Patent office asking for the date of the US prior art and whether it is available for Industries. There was no answer. This was followed with another letter on 25.05.2008. To this a response was sent stating that this office is not in possession of the US prior art. With regard to this, the petitioner produced the Manual of Patent Office Practice & Procedure regarding the manner in which anticipation by previous publication and prior claim is made. Search for anticipation by previous publication and prior claiming. Section 13
1. The examiner conducts a search in the Indian Patent Database, starting from 01.01.1912, and all the patent databases of other countries such as: EPO database, WIPO database, USPTO database, JPO DATABASE, TKDL (Traditional Knowledge Digital library) and other paid databases. In addition to the above, PCT Minimum required patent and non-patent literature is searched. The search is conducted to find out any publication which may anticipate the claimed subject matter. Another objective of the search is to ascertain whether an invention as claimed in any claims of the complete specification has been claimed in any claim of any other complete specification, filed in India, which has been published on or after the date of filing of the applicants complete specification.
2. The search is conducted with respect to the date of filing of complete specification.
3. The examiner records in his noting, the following items: a. International classification. b. Search strategy adopted. c. Key word(s) used d. Databases consulted for both Patent and non Patent literature. e. List of search queries. f. prior art findings and analysis regarding the patentability. g. Limitation on search if any, such as non clarity of claims or multiplicity of inventions or any other reason due to which a reasonable search cannot be conducted.
19. The petitioner has also produced Annexure B which shows the regular practice of Publication of US Patents after grant and Annexure C which shows the publication date of PCT application filed in respect of US Patent No. 5782513 is 14.05.1999.
20. When this is the position and the manual shows how previous confusion and prior claims have to be searched for. We are unable to understand how the Patent Office could state that they are not in possession of the US prior art. Annexures B & C have been obtained only Google Search. However, Section 13(4) inter-alia states that the examination and investigation required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent. Therefore, inability of patent Office to find the US citation in present case would not help the respondent to claim the validity of patent.
21. It is evident that the US prior art long preceded the Patent. We have already shown how the US prior art completely teaches the alleged invention and each feature is anticipated. And in fact, the US prior art gives a better disclosure than the Patent on hand. For all these reasons, we are satisfied that Patent Number 200041 lacks novelty as it was completely taught by the US prior art. The application is, therefore allowed and the patent accordingly is revoked. (D.P.S Parmar) ( Justice Prabha Sridevan) Technical Member Chair (Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
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