AI Structured Summary
Not yet generated for this judgment
Judgment
S. Chandrasekaran, Technical Member
This is an application for revocation of patent No. 214388 under Section 64 of the Patent Act, 1970 (hereinafter referred to the Act). In the said
revocation application the petitioner filed 2 Miscellaneous petitions, one being a stay application (M.P. No. 12 of 2009) and another application for
urgent and early hearing (M.P. No. 11 of 2009). M.P. No. 11 of 2009 was heard on or about July 13, 2009 and the Appellate Board passed a stay
order suspending the operation of the patent till the hearing of the stay petition. By an order dated July 15, 2009 the Hon'ble Madras High Court had
set aside the order dated 13/07/2009 of the Appellate Board and directed the IPAB to hear the stay application expeditiously within three weeks. As
per the High Court orders, the M.P. No. 26/2009 was filed for urgent hearing and listed today. Thus the matter was placed before us on September 7,
2009.
The reply to the stay petition was due on August 5, 2009 but the respondent No. 1 has not filed his reply. It was noticed that the respondent No. 1
was neither prepared to file a reply to the revocation application as well as to the stay petition nor to argue the matter before us on the hearing day,
but only sought permission to file the written submissions within a week's time which was allowed and the written submissions were filed only on 14-9-
2009.
The counsel for the petitioner/applicant argued for the grant of interim stay relying on three specific grounds of revocation, namely, under Section
64(1)(j) [Patent obtained by false suggestion and representation], 64(1) (m) [Breach of Section 8] and 64(1)(o) [Amendment made fraudulently], of
the Act. The petitioner's counsel also addressed the grounds of prima facie case, the balance of convenience and irreparable injury for the purpose of
making out a case for the stay of operation of the impugned patent.
The counsel for the petitioner submitted that the complete specification alongwith the application for patent was filed on 4.3.2002 and numbered as
161/MAS/2002 bearing the title 'Mobile phone having a plurality of simcards allocated to different communication network' and the claim 1 of the
specification filed was worded as below: Claim 1: A mobile phone having provision for incorporation of two or more than one simcards to receive
and/or send two signals or more than one signal at a time.
To this, the respondent No. 2 sent the first examination report raising the technical objections that (1) the invention and its operation or use and the
method by which it is to be performed are not fully and particularly described in the complete specification; (2) the claims do not sufficiently define the
invention and (3) they fall within the scope of clause (f) of the Section 3 of the Act and finally (4) if any, application has been filed outside India then
requiring the applicant to file the examination reports of such other patent offices. The counsel for the petitioner submitted that the respondent No. 1
refiled the papers on 29.5.2006, with just two lines reply without making any amendments in the specification. The counsel further submitted that the
respondent No. 2 having examined the whole specification again, issued the second examination report on 19.10.2006, maintaining the earlier technical
objections and further citing three prior published patent documents as citations against the novelty of the invention. The counsel for the petitioner
submitted that the respondent No. 1 amended the claims radically altering the invention by incorporating the new matter and new constructional
features of the claimed device of which there was no whisper in the specification originally filed on 4.3.2002 without addressing or making any
response to the three citations made by the respondent No. 2 in the second examination report. The counsel for the petitioner further submitted that
such an amendment is in total contravention of Section 57 read with Section 59 of the Act and obtained the grant of patent with such amended
specification. The counsel for the petitioner argued on Section 59 which specifically provides that 'No amendment of an application for a patent or a
complete specification or any document related thereto shall be made except by way of disclaimer, correction of explanation and no amendment
thereof shall be allowed, except for the purpose of incorporation of actual fact, and no amendment of a complete specification shall be allowed, the
effect of which would be that the specification as amended would claim or describe matter not in substance disclosed or shown in the specification
before the amendment, or that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before
the amendment' and submitted that the respondent No. 1 has fraudulently made the amendments both in the body of the specification and in the claims
which were not allowable by law. In this regard, counsel for the petitioner relied on the decision of the High Court of the Justice - Chancery Division
U.K. in the description on application for the revocation of the Section 26 of patent No. 308932 granted to Georges Eveno. The counsel for the
petitioner relying on the ground regarding the breach of the provisions under Section 8 of the Act, that the respondent No. 1 filed International PCT
application bearing No. PCT/IN2003/00044 claiming the priority of the application No. 161/MAS/2002 and further continued that the respondent No. 1
also made an application dated 3.3.2003 in Australia which were published on 16.9.03 for which documentary evidence in support thereof has been
given in the main petition. The counsel for the petitioner further submitted that the respondent No. 1 also further made an application for patent in
Japan which was withdrawn on or about 21.6.06, as was apparent from the WIPO final data and the documentary evidence in support thereof was
available in the main petition. The counsel for the petitioner submitted that the international search report given by the Austrian patent office contained
prior published documents has very pertinent citations against novelty, rated as X and Y category (2X and 2Y citations) because of which the claimed
invention cannot be considered novel and the claim cannot be considered to be involving any inventive step, such combination of inventive features if
any, being obvious to a person skilled in the art. The counsel for the petitioner stated that the respondent No. 1 deliberately suppressed the details of
foreign filings and therefore made a clear violation of the provisions of Section 8(1) of the Act and he also pointed out that the respondent No. 2 has
specifically called for the examination reports from various patent offices, if any, under para 22 of the first examination report. Whereas, the
respondent No. 1 having made an application in Japan and also having withdrawn application after examination, no information was supplied to the
respondent No. 2. The counsel for the petitioner further submitted that the ground of failure to comply with the provisions of Section 8 of the Act and
as such the failure is a ground of revocation under Section 64(1)(m) which provide that the applicant for the patent has failed to disclose to the
Controller, the information required by Section 8.... In this connection, the counsel for the petitioner referred to the judgment of the Delhi High Court,
CS(OS) No. 930 of 2009 - Chemtura Corporation v. Union of India (UOI) and Ors. reported in MANU/DE/1880/2009. The counsel for the petitioner
also referred to the response and submissions of the respondent No. 1 wherein the respondent No. 1 has admitted that there was non-compliance of
the Controller's action and the respondent No. 1 has gone to the extent to say that such non-compliance was not overt or deliberate act and hence
such action cannot be viewed as fraud or mis-representation. The counsel for the petitioner submitted that the defense taken by the respondent No. 1
is wholly contrary to the provisions Section 64(1)(m) of the Act, because, saying that such act of non-disclosure is not fraud or mis-representation, but
mere failure to disclose to the controller and the information required by Section 8 itself is merely a ground for revocation of patent, but when the
respondent No. 1 has clearly admitted that there was non-compliance of requirements of Section 8 of the Act, then he has no ground to defend a case
of revocation by raising the plea that such act of non-disclosure does not become a clear case of revocation of the patent under Section 64(1)(m) of
the Act. But the counsel for the petitioner submitted that such fraud or mis-representation as referred to under Section 64(1)(m) is a strong prima-
facie case for revocation and the patent is liable to be stayed in the interest of justice and to avoid multiplicity of proceedings.
The counsel for the petitioner relying on the ground under Section 64(1)(j) 'that the patent obtained on a false suggestion or representation' submitted
that the invention sought to be claimed by the respondent No. 1 is only a paper technology and cannot be translated into practice. He also further
stated that the respondent No. 2 had called for a prototype model or the sample of the invention under para 14 of the first examination report, but the
respondent No. 1 did not comply with such requirement, whereas in the matter, when the custom department asked for the prototype design of the
product to be produced the respondent No. 1 produced two prototypes (Type I & II) and the adjudicating authorities, viz., customs observed that none
of the prototypes contained the essential features, namely, plurality of headphone/earphone jacks or a plurality of Bluetooth devices which goes to
show that simultaneous conversation parallely on different simcards was not possible. The counsel continued that the adjudicating authorities namely
customs, has stated in their order that one cannot talk with second caller until and unless the first call is discontinued or put on hold and plurality of
Bluetooth, headphone/earphone etc. are not available in the prototype submitted. The counsel for the petitioner continued that this action of respondent
No. 1 goes to show that the prototype produced before the customs authority after seven years of the date of patent did not have the features of the
invention claimed in the patent and invented devices did not work in the manner disclosed in the specification having simultaneous operation of the
individual simcards. The counsel further stated that the invention as originally disclosed to patent office is found in several prior arts and to overcome
the same, the respondent No. 1 has incorporated additional features which are imaginary in nature and therefore not present in the prototypes.
`The counsel for the petitioner further submitted that the facts of the present case are almost identical to the case above referred and argued before
the Hon'ble Delhi High Court where the patent holder during the prosecution of the application failed to comply with the requirements of Section 8(2).
In the present case the requirements of Section 8(1)(a) and 8(1)(b) as well as Section 8(2) have not been complied with. The counsel stated that in the
present case no Form 3 was filed at all, let alone disclosing the details of the applications made in PCT, Japan and Australia and therefore the non-
compliance is purely willful in nature when the respondent No. 1 is having clear intention to file abroad. The counsel referred and stated that as regard
to Section 8(2) there was a specific requirement to furnish details of the application before the JPO but for reasons best known to the respondent No.
1, the required details were not furnished which further amounts to suppression of material information. The counsel for the petitioner stated that in the
case before the Hon'ble Delhi High Court, the Hon'ble Justice S. Muralidhar was pleased to hold that 'in view of the prima facie non-compliance by
the Plaintiff with the requirement of Section 8(1)(b) and 8(2) of the Act, the ground for revocation as contained in Section 64(1)(m) is prima facie
attracted.' and the counsel referred to the present case and stated that Section 64(1)(m) of the Act is prima facie attracted and accordingly the
impugned patent is liable to be suspended till the disposal of the revocation petition on the present ground alone besides other grounds where the
petitioner has also made out equally strong prima facie case. The counsel for the petitioner stated that the defense of the respondent No. 1 is wholly
contrary to the specific provisions of Section 64(1)(m) of the Act which does not require that there should be any fraud or misrepresentation but mere
failure to disclose the Controller, information required by Section 8 is itself a ground for revocation and when the respondent No. 1 admits non-
compliance or requirement of Section 8, then he has no ground to defend a case of revocation under Section 64(1)(m). The counsel for the petitioner
argued that the order passed by the Customs authority and its findings with respect to the prototypes are wholly adverse to the respondent No. 1 and
an extremely strong prima facie case of breach of Section 64(1)(j) is made out and the patent is liable to be suspended in the interest of justice and to
avoid multiplicity of proceedings. The counsel for the petitioner stated that in the case of Delhi High Court case of Surendra Lal Mahedra v. Jain
Glazers (reported in MAN/DU/0030/1980) and in the case of Franz Zaver v. New Yesh Engineers reported in MANU/DE/1128/1995 (Delhi High
Court), and in the `case of Hindustan Lever v. Godrej reported in AIR 1996 CAL 367 (Calcutta High Court), the Courts have held that balance of
convenience is against the patentee in the event the patent has not been put to practice and has not been used for a long time. The Counsel said that in
the present case more than seven years have passed but the respondent No. 1 has not yet even prepared a proper prototype of the product let alone a
marketable version of the product and there is nothing on record to show that any steps have been taken for commercial manufacture and sale of the
product under the impugned patent. Accordingly the counsel said that the balance of convenience is wholly against the respondent No. 1 and is in
favour of the petitioner for the grant of an interim order for stay of the Patent.
`The Counsel for the petitioner said that in total contrast to the Patent Law, Section 31 of the Trade Marks Act, 1999 provides that registration of a
trademark is prima facie evidence of validity and therefore, the two contrasting positions between the Patents Act and the Trade Marks Act, 1999 are
apparent on the face of the Law. The counsel for the petitioner submitted that in an appropriate case where the petitioner in an original motion
(Trademark Rectification) has succeeded in making out a strong prima facie case of invalidity of a trademark and this Ld. Tribunal has interfered and
suspended the rights of the registered proprietor in the registered trademark and he referred to a few such cases which were cited at the hearing are
set out below-
`I) Relying on the order of this Appellate Board in a Trade Mark case in M.P. No. 251/08 in ORA/275/08/TM/CH and M.P. No. 252/08 in
ORA/276/08/TM/CH, the counsel said that in the present case the respondent No. 1 has not used the product of the impugned patent at all since 2002
and 7 years have passed and the grant of stay of the effect of the patent will not and cannot affect the respondent No. 1 and even the prototypes
which have been prepared and shown before the Customs authorities are not in accordance with the impugned patent.
`II) Relying on the order of this Appellate Board in a Trade Mark case in M.P. No. 53/2008 in ORA/38/2008/TM/DEL and M.P. No. 52/2008 in
ORA/41/2008/TM/DEL, the counsel further argued that the facts of the present case are similarly placed inasmuch as the respondent No. 1 has failed
to file its counter till the time of the hearing. Furthermore, on merits a strong prima facie case of invalidity of the impugned patent has been made out
on more than one ground and therefore the impugned patent ought to be stayed till the disposal of the main petition. The counsel prayed that such
relief is required in the interest of justice because the respondent No. 1 is taking action against several parties and the present case has caused serious
loss and damages to the business of the petitioner both in monetary terms and in terms of goodwill and if not prevented now, the respondent No. 1 will
continue on its wrongful efforts and harass and cause loss and prejudice to the petitioner and to other persons as well.
III) Relying on the order of this Appellate Board in a Trade Mark case in M.P. No. 6/2008 in ORA/4/2008/TM/DEL (Smt. Raj Rani Agrawal
Proprietor of Bios Laboratory v. M/s. Parul Homeo Laboratory (P) Ltd.) - wherein it was held that 'the applicant has established a prima facie case
for interim injunction and the balance of convenience is in favour of the appellant. We, therefore, grant stay of effect/operation of the impugned
registration till next date of hearing' and the counsel continued that having regard to the position taken by this Appellate Board on the question of
interim stay of statutory rights, the present case is no exception from the trademark cases reported above and the counsel further added that there
exists a fair chance for the petitioner to succeed in the above appeal mainly on three specific grounds of revocation as the respondent No. 1 has
violated the provisions contained in Section 64(1) (j), (m) & (o) of the Act and it is a fit case for the stay of the operation of the patent in the interest
of justice and fair play. Accordingly, the counsel for the petitioner requested that he is entitled to an interim order against the respondent No. 1 for the
stay of the operation of the impugned patent till the disposal of the main petition and also to fix an early date for hearing the appeal.
`5. On the 7th September, 2009 when the matter came up for hearing the counsel of both the parties were present. The counsel for the respondent
No. 1 was not inclined to make submissions in the hearing for reasons not clearly stated. An opportunity was given to the counsel for the respondent
No. 1 to argue in the second session but the counsel of respondent No. 1 was not prepared to argue the matter. The Bench also offered to hear the
counsel for the respondent No. 1 on the following day i.e. on September 8, 2009 but the counsel was unable to accommodate but requested the Bench
to allow the filing of written submissions which was allowed. The respondent No. 1 filed his written submission only on September 14, 2009.
`6. The counsel for the respondent No. 1 in his written submission explained that the patented product was pristine, having latest technology
incorporating modified simcards to operate simultaneously in different communication network. The counsel in his written submission has also
explained the working of the product and he is registered with the customs authorities in India in accordance with the IPR (Imported goods)
Enforcement Rules 2007, so that the customs authorities can cease the infringing goods at the port of entry itself. The counsel for the respondent No.
1 submitted that this revocation petition of the petitioner is pre-mature, not maintainable, devoid of merits and liable to be dismissed in limini. The
counsel further submitted that the relief as prayed for by the petitioner for the grant of stay of the impugned patent can be granted only after the
evidence is filed by both the parties and after elaborate hearing. Whereas in the present case, the respondent No. 1 is yet to file the counter in the
main application for revocation and the respondent No. 1 has requested for extension of time which is still pending with the Registry of the Board and
at this stage passing an interim order for stay of patent would amount to granting of the main relief itself before even the evidence is submitted. The
counsel further stressed that such an order if and when passed would amount to violation of principles of natural justice as the respondent No. 1 has
not yet filed his evidence and hence petition for stay is premature and is liable to be dismissed. The counsel further said that this petition is
misconceived in as much as the powers of the Appellate Board to pass interim orders does not include the power to stay or suspend the operation of
the patent as the same runs contrary to the intents of the legislature as seen and found in the Act. Thus, the counsel submitted that there is no
`provision to grant a stay of the impugned patent or suspension of the same. Further the counsel for the respondent No. 1 stressed that the
interpretation of the patentee or the patent holder needs to be given weightage and primary importance and in that event revocation of petition even
before the counter and evidence being filed, passing an interim order especially, stay would be contrary to law and moreover such a prayer is also
untenable. The counsel for the respondent No. 1 submitted further that a stay can arise, only in a case of an appeal filed against the order of the
Controller of Patents, since such orders are passed after completion of all pleadings and arguments and such power now to grant stay is not vested
with this Appellate Board. The counsel for the respondent No. 1 submitted referring to the arguments of the petitioner's counsel regarding alleged
violation of Section 8 of the Act, it is respondent No. 2 in the present proceedings who should file a counter or any report about this non-filing of
information regarding filing of patents abroad. The counsel for the respondent No. 1 further submitted that if the requirements of the examination
report of the respondent No. 2 have been satisfactorily complied with and until the contrary to this is proved beyond doubt, it is premature to decide
whether the actions of the respondent No. 1 is a fact of violation of the provisions of Section 8 of the Act, more so when the respondent No. 2 has not
submitted any pleadings to substantiate, this information and hence the application of stay of patent is without merit and premature. Further the counsel
for the respondent No. 1 submitted that there is no overt or deliberate act involved in the non-compliance of the requirement of the Section 8 of the
Act. The counsel also submitted that the petitioner has not explained as to how there has been a non-compliance of the requirements of the Section 8
by the respondent No. 1. The counsel for the respondent No. 1 submitted that the petitioner is not a manufacturer but is only an importer of mobile
phones. The counsel stated that when the respondent No. 1 has registered with the appropriate authorities, such importers like petitioner have been
importing mobile phones having plurality of simcards only on obtaining express consent from the respondent No. 1. The counsel for the respondent No.
1 submitted that the customs officials have started clearing the import goods of the petitioner after having taken a different view without the consent
of the respondent No. 1 and consequently these facts prove that the respondent No. 1 has been using the patent and secondly the stand by the
petitioner that the respondent No. 1 has not been using the patent is therefore false to their knowledge, in fact, the respondent No. 1 referred to the
infringement suit filed before the Hon'ble High Court of Madras where the petitioner has also given an undertaking not to manufacture such phone in
India having dual simcards, are good to prove that the balance of conveyance is only in the favour of respondent No. 1 and in this connection, the
counsel referred to the decision reported in Hyderabad Chemical Suppliers Limited v. United India limited and Ors. 2006 (6) ALT 515. The counsel
for the respondent No. 1 stated that at the present position, the customs officials are not seizing any multiple simcard phones such as those imported
by the petitioner and that being the position there is no reason or basis for seeking a stay or suspension of the patent pending the revocation
proceedings. The counsel stressed that the mere fact the respondent No. 1 has initiated several steps under the law cannot be a reason for stay of the
patent as it could result in a situation where the first respondent would prevented and initiated in legal proceedings. Thus, the counsel for the
respondent No. 1 submitted that the petitioner has not established a prima facie case, the balance of convenience or any irreparable loss or hardship
but on the other hand the balance of convenience is only in favour of the first respondent and he is only likely to suffer irreparable loss and hardship if
the patent is temporarily stayed in the manner sought by the petitioner and hence the counsel requested that the petition may please be dismissed and
thereby render justice.
`7. We have heard the arguments of the counsel for the petitioner and considered the written submissions of the respondent No. 1. As regards the
objection by counsel for respondent No. 1 as to stay or suspension of the Patent till the final hearing of the appeal, on the ground that there being no
provision under the Act, vesting power with this Appellate Board to grant interim orders, we reject the said contention of the counsel for the
respondent No. 1. This is for the reason that as pointed out by Mr. Mazumdar, learned Counsel for the Petitioner, citing various cases wherein this
Appellate Board has given interim order for stay, we could see by virtue of Section 117B of the Act, the provisions of Section 95 of the Trade Marks
Act, 1999 have been made applicable in discharge of its function by this Appellate Board under the Act. Section 95 of the Trade Marks Act, 1999,
specifies the conditions as to making interim orders. Conditions (a) and (b) enumerated therein have to be satisfied in the case. As per condition (a),
copies of the main appeal and the present M.P have been furnished to the respondent No. 1 & 2. As per condition (b), opportunity of hearing their
views by the Bench, by way of personal hearing has been given to them by sending them prior notices, sufficiently in advance, by the Registry of the
Appellate Board. But the contention of the respondent No. 1 is till the counter and evidences are filed by the respondent No. 1, the interim orders for
stay of the patent cannot be issued. This is not correct. The wording of the statute and the intention of the Legislature is very simple and clear. The
wording of Section 95 of the Trade Marks Act 1999 talks about two points only and language is very plain that the 'copies of the appeal in support of
the plea for an interim order are furnished to the party against whom such appeal is made' and also 'opportunity is given to such party to be heard in
the matter'.
There is no mention in the statute, about the counter and evidence to be filed by the party against whom such appeal is made. It is only important that
the copies of the appeal should have been served on the party against whom such appeal is made and the party shall be given an opportunity of being
heard in the matter. These two conditions have been satisfied in the instant appeal. So it is very clear that Appellate Board has such powers to pass
interim orders in any proceedings of this appeal.
`Usually, as also seen in this case, the prayer for the grant of an interlocutory remedy is at a stage when the existence of the legal right asserted by
one party and its alleged violation are both contested and are uncertain. What is to be seen and checked legally at this stage, is there exist a prima
facie case, balance of convenience and irreparable injury or loss to the petitioner, that may be caused by not issuing an interim order of stay at this
stage. It is well established law that always the interlocutory remedy preserves the status quo rights of the petitioner which may appear on a prima
facie perusal. Keeping in view the said principles and principles of natural justice, let us consider whether the petitioner/appellant is entitled to such a
remedy as prayed for.
The petitioner had filed 2 Miscellaneous petitions, one being a stay application (MP No. 12 of 2009) and another application for urgent and early
hearing (MP No. 11 of 2009). M.P No. 11 of 2009 was heard on or about July 13, 2009 and the Appellate Board passed a stay order suspending the
operation of the patent till the hearing of the stay petition. By an order dated July 15, 2009 the Hon'ble Madras High Court had set aside the order
dated 13/07/2009 of the Appellate Board and directed the IPAB to hear the stay application expeditiously within three weeks.
The reply to the stay petition was due on August 5, 2009 but the respondent No. 1 has not filed his reply. It was noticed that the respondent No. 1 was
neither prepared to file a reply to the revocation application nor to the stay petition nor to argue the matter before us on the hearing day, but only
sought permission to file the written submissions within a week's time which was allowed and the respondent No. 1 filed the written submissions on
14-9-2009.
`The order passed by the Customs authority and its findings with respect to the prototypes are wholly adverse to the respondent No. 1 and an
extremely strong prima facie case of breach of Section 64(1)(j) is made out and the patent is liable to be suspended in the interest of justice and to
avoid multiplicity of proceedings.
`While considering the two Delhi High Court cases and Kolkata High Court case, the Courts have held that balance of convenience is against the
patentee in the event the patent has not been put to practice and has not been used for a long time. The Counsel for the petitioner showed that in the
present case that more than seven years have passed but the respondent No. 1 has not yet even prepared a proper prototype of the product let alone a
marketable version of the product and there is nothing on record to show that any steps have been taken for commercial manufacture and sale of the
product under the impugned patent. Accordingly the balance of convenience is wholly against the respondent No. 1 because of non use or practice
and is in favour of the petitioner for the grant of an interim order for stay of the Patent.
`While perusing the order passed by the Customs authorities in this case between the same parties, the respondent No. 1 was required to produce a
prototype of its product. Accordingly the respondent No. 1 produced two prototypes (types I & II) and the observations of the adjudicating authority
clearly goes to show that none of the prototypes I and II of the respondent No. 1 contained the essential features, namely, plurality of
headphone/earphone jacks or plurality of bluetooth devices as claimed in the complete specification. Also the factual findings on the prototype I by the
Commissioner of Customs are that 'neither simultaneous operation are depicted nor possible'. The observations on the prototype II also goes to show
that simultaneous conversation parallely on different SIM cards is not possible. The Commissioner has specifically stated that 'one cannot talk with
second caller until and unless the first call is discontinued or put on hold. Plurality of Bluetooth, headphones/earphones jacks etc., are not available in
Prototype II'.
`We have considered the judgments of the various courts in India (listed below) about the use of the product after the grant of Patent reported by the
counsel for the petitioner.
`Surendra Lal Mahedra v. Jain Glazers, (Reported in MANU/DE/0330/1980)( Delhi High Court)
`Franz Zaver v. New Yesh Engineers reported in MANU/DE/1128/1995 (Delhi High Court)
`Bilcare v. Amartara (reported in MANU/DE/0889/2007); (Delhi High Court)
`Hindustan Lever v. Godrej reported in: AIR 1996 CAL 367 (Calcutta High Court).
`It is noticed that in each of these cases, the Courts have held that balance of convenience is against the patentee in the event the patent has not been
put to use or practice and has not been used for a long time. In the present case more than seven years have passed but the patentee has not yet even
prepared a proper prototype of the product let alone a marketable version of the product. There is nothing on record to show that any steps have been
taken for commercial manufacture and sale of the product under the impugned patent. The use of a patent within the meaning of the Act means
manufacture, sale, marketing of the product under the patent and the mere granting of consent for import without making any manufacture cannot
amount to use of the patent. Accordingly the balance of convenience is wholly against the respondent No. 1 and the balance tilts in favour of the
petitioner for the grant of an interim order because of the fact of not putting the patent in to practice.
`There has been seizure of the imported dual SIM card mobiles of the petitioner by the Customs authorities which resulted in huge demurrage charges
finally causing great loss to the petitioner as reported in their appeal.
`All other points taken by the petitioner have to be looked into during the hearing of the appeal. As of now only whether a prima facie case is made
out by the petitioner which is clear from the fact that the respondent has neither filed a counter and evidence against the appeal nor any reply has
been given against this stay petition and not even making arguments when opportunity of hearing is afforded but only trying to avoid by submitting
written submissions is not enough to prove his stand that a prima facie case has not been made out against him. The result is that the petitioner has
established a prima facie case for interim stay of the patent and the balance of convenience is in favour of the petitioner. We therefore grant the stay
of effect/operation of the impugned patent till the disposal of the main appeal. We also direct the Registry to list the matter before us once the
pleadings are completed and case is matured for final hearing. Parties are left to bear their own costs.