AI Structured Summary
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Judgment
,,,
D.P.S. Parmar, Technical Member",,,
1 . Two applications ORA/17/2009/PT/CH by Spice Mobiles Limited [Herein after referred as first Applicant] ORA/31/2009/PT/CH by M/s.,,,
Samsung India Electronics Pvt. Ltd [Herein after referred as second Applicant] are filed for revocation of patent No. 214388 granted to Shri,,,
Somasundaram Ramkumar. The patent relates to Mobile Telephone with a plurality of Simcards allocated to different communication networks.,,,
ORA/17/2009/PT/CH was heard on 16.08.2011. Shri S. Majumdar appeared for the applicant and Shri Gopalakishna Raju and Sh Ebinezer Inbaraj,,,
appeared for the respondent 1.,,,
Ora/31/2009/PT/CH was heard on 26.12.2011. Shri Praveen Anand & Ms. Archana Shankar appeared for the applicant and Ms. N. Devi,,,
appeared for the respondent 1. In this application applicant has not made Controller of Patents as respondent which should have been done. Controller,,,
of Patents is always a proforma party in all revocation proceedings.,,,
3 . Since the revocation relates to the same invention it was agreed that a common order may be passed.,,,
4 . The Counsel for both of the applicants submitted that the affidavit and counter statement submitted by the respondent are defective in this case and,,,
therefore should not be taken on record. Further, the respondent 1 has not paid the costs to the petitioners as directed by the Hon'ble Board in the",,,
order dated 14th June 2011 and therefore the respondent 1 shall not be heard.,,,
In our order dated 14.06.2011 we have stated that,,,
If the cost is not paid the mere filing of counter will not entitle the respondent to be heard on 16.08.2011.,,,
6 . The counsel for respondent 1 filed his counter in open court on 16.08.2011 but costs has not been paid so far to any of the applicants. Since the,,,
respondent has not complied with the direction of this Board, we allowed to the counsel of applicants to proceed with their case and the matter was",,,
heard ex-parte on 16.08.2011, 28.09.2011 and 26.12.20011.",,,
Brief facts of the case:,,,
7 . Patent application No. 161-MAS-2002 bearing patent No. 214388 was filed on 4.03.2002. First Examination Report was sent to respondent 1 on,,,
30.11.2005. The response to first examination report by the respondent 1 was filed on 27.05.2006. Further, examination report dated 19.10.2006 was",,,
replied by the respondent on 27.11.2006. Patent was granted on 11.02.2008.,,,
8 . The patent specification as originally filed on 04.03.2002 was for the mobile phone that has the capacity of incorporating two or more SIM cards.,,,
The 4 claims in the originally filed specification are as under:,,,
1 . A mobile phone having provision for incorporation of two or more than one SIM cards wherein two (or) more than one SIM card to receive and/or,,,
send two signals or more than one signal at a time.,,,
2 . A mobile phone having provision for incorporation of two or more than one SIM cards as claimed in claim 1 wherein the circuitry of the mobile,,,
phone is modified so as to accommodate any number of a mobile phone having provision for incorporation of two or more than one SIM cards.,,,
3 . A mobile phone having provision for incorporation of two or more than one SIM cards as claimed in claim 1 wherein signals can be received from,,,
different mobile company towers at a time without any delay.,,,
4 . A mobile phone having provision for incorporation of two or more than one SIM cards as described in the pages of complete specification.,,,
Series of amendments and alteration of specification have been effected during the prosecution of the application before the respondent No. 2. The,,,
claims of the impugned patent have been increased from 4 as originally filed to 20 as granted. They are reproduced below:,,,
1 . A mobile phone is to be incorporated with a provision for a plurality of current simcards and/ or modified simcards, a plurality of current t",,,
simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/ earphone",,,
jacks for accepting a plurality of headphone/ earphone plugs and / or a plurality of Bluetooth devices in order to operate simultaneously the said mobile,,,
phone in said different communication networks is presented, and a plurality f of incoming and/or outgoing calls can be communicated simultaneously",,,
with the said respective simcards.,,,
2 . A mobile phone as claimed in claim (1), a mobile phone is modified for utilizing a plurality of current simcards and / or modified simcards allocated",,,
to different communication networks in order to simultaneously operate said mobile phone in said different communication networks; a plurality of,,,
current simcards and/or modified simcards can trans receive a plurality of different communication networks in order to operate simultaneously;,,,
signals can be trans received among different communication networks in order to operate simultaneously without any delay; service method towards,,,
a plurality of different communication networks in order to operate simultaneously; a mobile phone can transreceive the entire features of a plurality of,,,
different communication networks simultaneously.,,,
3 . A mobile phone as claimed in claim (1), when two or five simcards are provided in a mobile phone, a particular simcard can operate by pressing a",,,
key which is provided in the keypad for outgoing calls, each simcard is given connection to respective keys viz. 1,2, 3, 4 and 5 and these numbers for",,,
the keys can be changed; the mobile phone has a plurality of connections for a plurality of simcards.,,,
A mobile phone as claimed in claim (1), when the mobile phone is 'ON', the first incoming and / or outgoing call for any mobile service provider with",,,
respect to any simcard, the first incoming and / or outgoing call can be communicated by the speaker and/or microphone provided in the mobile phone,",,,
another incoming and/or outgoing call for any other mobile service provider with respect to any other simcards, another incoming and / or outgoing call",,,
can be communicated simultaneously by diverting the another incoming and / or outgoing call to the respective jacks and/ or bluetooth devices provided,,,
in the mobile phone; during the communication, a provision is provided to change the communication of first incoming and / or outgoing call to the",,,
respective jacks and/or bluetooth devices and also the communication of another incoming and for outgoing call can be changed to the speaker and,,,
microphone provided in the mobile phone.,,,
5 . A mobile phone as claimed in claim (4), when the mobile phone is 'ON' and when an incoming call comes, it is indicated by the buzzer, also when",,,
an another incoming call comes, it can be indicated by the buzzer and by 'Beep' sound also, but an another incoming call arrives at that time, it is",,,
indicated by a buzzer and it gives room for disturbance as it is noisy; therefore the mobile phone which has the provision to indicate the incoming call,,,
by buzzer or by beep which is provided in the settings like call register, phone setting and so on in the mobile phone, the neither buzzer or beep can",,,
select in the settings for indicating the incoming call with respect to plurality of simcards provided in the mobile phone.,,,
A mobile phone as claimed in claim (1), all the simcards with respective mobile service providers can be displayed on the display t screen of the",,,
mobile phone, selected simcard displays the selected mobile service provider on the display screen; the mobile phone on the line with the outgoing or",,,
incoming calls in simcard (first) in operation, another incoming call from any other mobile service ) provider with respect to other four simcards can be",,,
indicated by 'Beep' sound as all the simcards are alert; the mobile phone, now, on the line with the simcard (first) in operation can simultaneously",,,
receive the incoming call from any other mobile service providers with respect to other four simcards and also can simultaneously contact any other,,,
service providers with respect to other four simcards, the respective simcard number and or mobile service provider is displayed on the screen now,",,,
the mobile phone on the line, with simcard (first) can communicate by providing the voice in the speaker and by sending the voice through the",,,
microphone provided in the mobile phone and can simultaneously receive the incoming call from any other mobile service providers with respect to,,,
other four simcards, by diverting the incoming call through the respective jack and / or bluetooth device provided in the mobile phone, the",,,
headphone/earphone plug is connected to the respective jacks for communicating the respective incoming call.,,,
A mobile phone as claimed in claim (6), the call for the first simcard can be communicated by the speaker and the microphone provided in the",,,
mobile phone and the incoming and / or outgoing call through J any other mobile service provider with respect to other for simcards can be,,,
communicated simultaneously by diverting the incoming and/ or outgoing call to the respective jacks and/ or bluetooth devices provided in the mobile,,,
phone, another incoming and / or outgoing call with respect to simcard (second), simcard (third), simcard (four) and simcard (five) can be connected",,,
to jack (first), jack (second), jack (third) and jack (four) and/or bluetooth device (first), bluetooth device (second), bluetooth device (third) and",,,
bluetooth device (four) provided in the mobile phone; the mobile phone which has the provision for changing the communication of incoming and / or,,,
outgoing calls with respective simcard (first), simcard (second), simcard (third), simcard (four) and simcard (five) to any of the jack (first), jack",,,
(second), jack (third), jack (four) and/ or bluetooth device (first), bluetooth device (second), bluetooth device (third), bluetooth device (four) and the",,,
speaker / ) microphone provided in the mobile phone, the communication of call j can change from the simcard (first) to any of the jack (first), jack,",,,
(second ), jack (third ), jack (four) and/or bluetooth device (first), bluetooth device (second), bluetooth device (third), bluetooth device (four) and the",,,
communication of call can change from the simcard (second) or simcard (third) or simcard (four) or simcard (five) to speaker and microphone,,,
provided in the mobile phone.,,,
8 . A mobile phone as claimed in claim (6), the simcard preferred at first remains on the display screen till changes to another simcard, another",,,
provision of facility can be arranged to display all the mobile service providers with respective simcards on the display screen at a time; while,,,
operating the mobile phone, a particular key is press to select the mobile service provider with respective simcard and the phone number can be",,,
displayed on the particular space provided for that particular mobile service provider am dot can also be displayed that phone number with particular,,,
service provider on the entire display screen and it can reach its place where facility is arranged to display all the mobile service providers.,,,
A mobile phone as claimed in claim (8), when an incoming call from any mobile service provider with respect to any simcard, then the name of the",,,
mobile service provider of an incoming call with respective simcard and phone number can be displayed on the entire display screen of the mobile,,,
phone, when another incoming and or outgoing call is simultaneously attended from any mobile service provider with respective simcard, the name of",,,
the mobile service provider of another incoming and / or outgoing call with respective simcard and phone number can also be displayed with the name,,,
of the mobile service provider of an incoming call and phone number on the display screen of the mobile phone, after completing the incoming and for",,,
outgoing call with the mobile service providers, then all the mobile service providers with respective simcards can be-displayed on the display screen at",,,
a time in a mobile phone.,,,
A mobile phone as claimed in claim (1), when plurality of earphone/ headphone jacks are provided in a mobile phone, the call for the plurality of",,,
simcards is achieved by connecting the plurality of the ea1phone/ headphone plugs to the plurality of earphone/headphone jacks provided in the mobile,,,
phone.,,,
A mobile phone as claimed in claim (1 0 ), when plurality of provisions for number of separate headphone/ earphone sections are provided in the",,,
jacks with respective simcards (with respective mobile service providers) is arranged, the call for the respective. simcards can use separately by",,,
connecting a plurality of headphone/earphone plugs to the plurality of headphone/earphone jacks provided in the mobile phone and a plurality of,,,
incoming and / or outgoing call can simultaneously communicate by connecting a plurality of headphone/earphone plugs to the plurality of,,,
headphone/earphone jacks with the respective simcards provided in the mobile phone and conference is possible by pressing a key and their all mobile,,,
headphone/earphone jacks connections are interconnected by switches and thereby conference is achieved.,,,
A mobile phone as claimed in claim (1), when plurality of bluetooth, device are provided in a mobile phone, the call for the plurality of simcards is",,,
achieved by activating the plurality of bluetooth devices provided in the mobile phone.,,,
A mobile phone as claimed in claim (12), when plurality of provisions for number of separate voice call sections are provided in the bluetooth",,,
devices with respective simcards (with respective mobile service providers) is arranged, the call for the respective simcards can use separately by",,,
activating a plurality of Bluetooth devices provided in the mobile phone and a plurality of incoming and / or outgoing calls can Simultaneously,,,
communicate by activating a plurality of bluetooth devices with the respective simcards provided in the mobile phone and conference is possible by,,,
pressing a key and their all mobile bluetooth devices connections are interconnected by switches and thereby conferences achieved.,,,
A mobile phone as claimed in claim (1), the mobile phone incorporates a plurality of miniaturized modified simsockets such that modified simcards",,,
having a reduced format can be used, thus ~ less space is used when the plurality of said modified simcards are inserted into the simsockets.",,,
A mobile phone as claimed in claim (14), the dimension or format of. simsocket are modified and the dimension or format of simcard also modified",,,
with respective dimension or format of modified simsocket, the different models of modified simsocket are manufactured but the dimensions of",,,
modified simsocket is constant for any models of modified simsocket; the modified simcard (reduced format) can easily fit in different models of,,,
standardized simsocket in know mobile phone and also fit in modified simsocket.,,,
A mobile phone as claimed in claim (15), the dimensions of the simcard is reduced by cutting the plastic material which is combined with the",,,
chipset (chipcard); the electrically conductive contact zone which is provided on the surface of the chipcard or gold plate of chipcard (simcard) is,,,
coated with non-conductive material except the portion or contact point in the gold plate of chipset (simcard) which are fit to the gold contacts of the,,,
simsocket; the non-conductive material can he any suitable material, the small portion or contact point of the gold plate of the chipset (simcard) is the",,,
conductive layer which are fit to the gold contacts of the simsocket; the modified simcard cannot scratched or written on the goldplate as it is coated,,,
with non-conductive material; the plastic material which are used for the simcard should be hardened, the modified simcard is designed to be non-bent",,,
and unfolded type: the modified simcard cannot be affected at the time of fitting the simcard into the simsocket; therefore the modified simcard can be,,,
used to reduce the space in a mobile phone; the space of the simsocket is also reduced in the mobile ) phone; therefore the modified simcard is,,,
designed to be non-bent, unfolded type, hardened, cannot be scratched or written on the gold plate as it is coated with non-conductive material.",,,
1 7 . A mobile phone as claimed in claim (1), a facility of conference is differently arranged to provide a conference of voice signals when using said",,,
mobile phone, said conference can be included in the mobile phone which has inbuilt of a plurality of headphone/earphone jacks can accept a plurality",,,
of headphones/earphones plugs, said conference can be included in the mobile phone which has inbuilt of a plurality of Bluetooth devices, said",,,
conference can be included in the mobile phone which has inbuilt of a single headphone/earphone jack can accept a single plug is incorporated with,,,
the plurality of headphones/earphones or said conference can alternatively be incorporated in an external adapter connected to a single jack of said,,,
mobile phone, wherein a plurality of headsets can be connected to said adapter and",,,
/ or said conference can be the plurality of bluetooth headsets can trans receive the signals with the plurality of bluetooth devices of the said mobile,,,
phone.,,,
A mobile phone as claimed in claim (17) in a mobile phone, having a facility of plurality of headphone/earphone jacks, the plurality of",,,
headphone/earphone plugs can connect in the provided jacks of the mobile phone; in a mobile phone having a facility of plurality of bluetooth devices,",,,
the plurality of bluetooth devices can activate in the provided mobile phone; a single speaker and microphone section and a plurality of jacks and / or,,,
bluetooth devices are provided in the mobile phone the plurality of jacks and / or bluetooth devices are connected to the plurality of switches which are,,,
connected in series among the plurality of jacks and / or bluetooth devices provided in the mobile phone, plurality of switches which are activated",,,
(ON) means plurality of jacks and / or bluetooth devices are interconnected or deactivated (OFF) at a time by pressing a key; therefore the plurality of,,,
headphones/earphones and / or bluetooth headsets can communicate to particular mobile service provider through the plurality of jacks and / or,,,
bluetooth devices provided in a mobile phone; the plurality of headphones/earphones and / or bluetooth headsets can communicate to a plurality or,,,
selected mobile service provider with respective simcard through the plurality of jacks and / or bluetooth devices provided in a mobile phone; the,,,
plurality of headphones/earphones and / or bluetooth headsets can communicate to a plurality of mobile service providers with respect to plurality of,,,
simcards through the plurality of jacks and/or bluetooth devises provided in a mobile phone; therefore the conference is achieved by a single mobile,,,
phone having plurality of headphone/earphone jacks and/ or bluetooth devices; the headphones/earphones with wire (cord) or wireless (cordless),,,
headphone/earphones which can be used for said conference.,,,
A mobile phone as claimed in claim (17), a mobile phone has only one earphone jack; the conference is achieved by incorporating a plurality of",,,
headphone/earphone in a single plug, conference can achieved by modified socket, plurality of headphones/earphones plugs which are connected to",,,
the jacks of the modified sockets for communication; the plurality of headphones/earphones are incorporated in a single socket (plug); the number of,,,
headphones/earphones (more than one) can fit to the modified socket, the modified sockets are connect to a plurality of headphone/earphone plugs; in",,,
the modified socket, the jack of the modified socket is used to connect the plug of the headphone/earphone and the plug of the modified socket is",,,
connected to the jack of the mobile phone, the circuit connections are parallel between the jacks which are connected in series to the plugs of the",,,
modified socket; amplifying circuits can be chip called IC (Integrated Circuit) can also be used in a plurality of headphones/earphone s to,,,
communicate clearly; the interface (socket and pins) varies from one mobile phone to another, but every mobile phone has interface (socket and pins)",,,
facility for headphone/earphone, the pin numbers of speaker and microphone in a headphone/earphone vary from one interface to another interface of",,,
different mobile phone, the same method of modified sockets (interfaces) and the circuit diagrams can be applied to all the different models of mobile",,,
phones having different types of interfaces (sockets and pins), the circuit connections are same as mentioned earlier which is suitable for implementing",,,
for all the different types of interfaces of different models of mobile phones.,,,
A mobile phone is to be incorporated with a provision for a plurality of current simcards and / or modified simcards, a plurality of current",,,
simsockets and / or modified simsockets for accepting a plurality of current simcards and / or modified simcards, a plurality of headphone/earphone",,,
jacks for accepting a plurality of headphone/earphone plugs and / or plurality of bluetooth devices in order to operate simultaneously the said mobile,,,
phone in said different communication networks is presented, and a plurality of incoming and / or outgoing calls can be communicated simultaneously",,,
with the said respective simcards as described in the pages of complete specification.,,,
Spice Mobile,,,
Locus standi,,,
10 . The First applicant Spice Mobiles Limited is a Company incorporated in India under the Indian Companies Act, 1956, and having its Registered",,,
Office at D-1, Sector-3, Noida - 201 301, Uttar Pradesh. The company is engaged, inter alia in the Mobile Handsets business since June 2005. The",,,
company is listed at Bombay Stock Exchange and National Stock Exchange and is the only Indian mobile phone company listed in India. The applicant,,,
has wide range of mobile handset products including GSM/CDMA handsets - with or without Dual Mode phones. The present mobile handsets,,,
portfolio of Spice consists of approx. 24 models ranging from black & white phones to 2.0 mega pixel camera phones, with features such as FM",,,
stereos, cameras, pre-embedded local language content, local language capability, polyphonic ring tones, GPRS connectivity. After obtaining the",,,
impugned patent No. 214388, the respondent No. 1 filed a civil suit being No. 1 of 2009 in the Hon'ble High Court at Madras against several parties",,,
including the First applicant. The First applicant is the defendant No. 3 in the said suit. The said suit is pending and the respondent No. 1 has not been,,,
able to obtain any order of injunction against the petitioner in the said suit. The First applicant has sold Dual SIM phones worth over Rs.150 crores,,,
since its launch. In December 2008, First applicant sold Dual SIM Phones worth Rs.5.90 crores. The sales increased to Rs.9.76 crores in January",,,
2009, registering a month on month growth of 165%, based on this growing demand of Dual SIM Phones. The Customs Authority (Delhi) post the",,,
issuance of notice dated 27/1/2009 from the Office of the Commissioner of Customs, Intellectual Property Rights Cell, had detained consignments of",,,
Dual SIM Phones of the applicant. As a result, the First applicant has already lost business worth about Rs.35 crores in the month of February and",,,
March 2009, its operations are likely to be substantially and adversely affected in future.",,,
The action instituted by the Customs authorities is on the basis of the registration of the impugned patent with the Customs authorities under the,,,
Customs Act. As a result of such action on the part of the Customs authorities the First applicant had to stop shipment from the overseas vendors.,,,
Furthermore, the launch of D-1111 - India's First Dual Mode (GSM+CDMA) PDA has been put on hold, which wa committed to the Distributors.",,,
This default in commitment has resulted in irreversible loss of business revenue, reputation of First applicant and other stakeholders like employees,",,,
distributors, dealers, suppliers and public shareholders.",,,
12 . The First applicant is aggrieved by the baseless and malafide actions of the respondent No. 1 as aforesaid and thus has locus standi to file the,,,
present revocation application under Section 64(1) of the Indian Patents Act.,,,
Samsung India Electronics Pvt.,,,
Ltd Locus standi,,,
,Original Specification as filed on 4th March 2002,Amended/Granted Specification,
Claims,04,20,
Pages,10,24,
Figures,11,16,
Title,"Mobile Phone with Multiple Number of SIM Cards
to Receive and/or send Multiple Number of Signals
at a time","Mobile Phone with a Plurality of SIM Cards
Allocated to Different Communication Networks",
through the following materials:,,,
a) Manual of Patent Practice and Procedure, United Kingdom (at page 31, clause 18.63)",,,
b) Code of practice for Patent Applicants and Agents, IPO United Kingdom(at Point 6, at page 11)",,,
c) Guidelines for examination, European Patent Office (at Chapter II, clause 1)",,,
d) Manual of Patent Examining Procedure, 1.125 (b) and 608.01(q) on substitute specification",,,
e) Manual of Patent Office Practice, Canadian Patent Office (at 19.02.01) Respondent's reply to added matter",,,
2 5 . In the reply statement the respondent 1 stated that the contention of the applicants that the Patent Specification as originally filed on 04.03.2002,,,
was amended time to time up to grant is devoid of truth. The circumstances and the application form etc. will show that the Respondent who is not,,,
sponsored by any research institute and is a novice of Patent law, applied for the patent on 04.03.2002 but the Controller of Patent satisfied with his",,,
prima facie innovation, invoked S. 15 of the Act which empowers the Controller to ""require the application, specification or the other documents as the",,,
case may be, to be amended to his satisfaction before he proceeds with the application..."". Further, sub-section 6 of Section 57 of the Act reserves the",,,
right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions issued by the,,,
Controller before the grant of patent. Hence the Controller of Patents had asked for clarifications and amendments, which have been made by the",,,
Respondent as and when required, and in principle, there have been no additional claims as stated by the Applicant. The fact remains that the",,,
diagrams submitted by the Respondent along with the application were further clarified and for such clarification, amended diagrams and necessary",,,
explanations have been given by the Respondent in order to satisfy the Controller. The Controller, after application of mind and satisfaction about the",,,
documents furnished and explained by the Respondent, had granted the patent after due deliberations and demonstrations by the Respondent in",,,
person. Furthermore the communications between the Respondent and Controller of Patent will show there is no voluntary amendment to the original,,,
application dated 04.03.2002. There is nothing mala fide in the grant of patent.,,,
In the reply statement it is stated that Respondent 1 has clearly explained in his prior art references about three prior arts namely [1]DE 19919389,,,
A1 Siemens AG; [2] WO0I30097 (PCT Application) [3] WO 2001 00 3413 and highlighted the variation and thus there is no suppression of facts to,,,
the Controller of Patents. The other references are not relevant for the subject. As such there is no contravention of the Act,,,
In the reply statement it is stated that reading of the application and subsequent amendment would clearly show that the subsequent amendments,,,
are nothing but a detailed version of method used in the original specification. Furthermore as per the Act, ""inventive step"" means a ""feature of an",,,
invention"" and as such the feature has also been explained in the subsequent amendment by specifically earmarking Bluetooth, headphone and",,,
earphone, plurality of headphone/earphone. It is a fact that Claim 20 clearly shows that it is not a new claim but original circuit diagram properly",,,
explained. The Claim 20 is nothing but entire scope of the invention and it is fortified in the Claim 1 to 19 as per section 10 (4) (c) of the Act. In others,,,
words Claim 20 is amalgamated statement regarding the claim and seeking protection and it is an integral part of Claim 1 to 19 and overall reading,,,
would show that it is nothing but the original claim in the application is restated.,,,
In Bonzel (T.) and Anr. v. Intervention Limited and Anr. (No. 3) [1991] RPC 553 at page 574 the well known test for deciding if new matter has,,,
been added has been set out clearly. According to this,,,
The task of the court is threefold:,,,
(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.",,,
(2) To do the same in respect of the patent as granted.,,,
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.,,,
The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application,,,
either explicitly or implicitly.,,,
[Emphasis added],,,
Further the Court of Appeal in A. C. Edwards Ltd. V. Acme Signs & Displays Ltd [1992] RPC 131 quoted from the decision of the EPO Technical,,,
Board of Appeals in Thomson-CST (T151/84) [1998] E.P.O.R. 29 as follows,,,
(emphasis added ):,,,
3 . In order to determine whether or not the modification made to a claim extends the subject-matter of the patent application beyond the contents of,,,
the application as filed, it is necessary to find out whether the resulting overall modification to the contents of the application (whether by addition,",,,
modification or withdrawal) is such that the information presented to the skilled man is not derived directly and unambiguously from that which the,,,
application contained previously, even taking account of the elements which are implicit to the skilled man (Guidelines for Examination at the EPO, C-",,,
VI, 5.4).In other words, it is necessary to find out whether the new claim presented is supported by the original description.",,,
3.1 In the case in point, the important thing is therefore not that a logical be carried out in order to determine whether or not the initial intention of the",,,
applicants was to limit the protection claimed to the particular combination of characteristics described and represented, but rather that it be",,,
discovered whether the skilled man reading the patent application as filed would consider that the characteristic under discussion, namely the presence",,,
of permanent magnets, is or is not a characteristic which is indispensable to the operation of the device described in the application.",,,
As Whitford J observed in Polymer Corporation's patent [1972] RPC 39 at 45 :,,,
Explanation means making plain or making clear."" ""It can make the ambiguous clear, but not the insufficient sufficient. It is therefore a question of fact",,,
in each case as to the information contained in the original specification and it requires to be further explained. The essence of explanatory,,,
amendments are in that they often make explicit what is clearly implicit to a fair minded and properly instructed person reading the document carefully,,,
as a whole, but might not be so clear in the more casual or biased reader. They are made for the avoidance of doubt, even an unreasonable doubt. The",,,
amendments shall be in a sense of the kind which is otherwise unnecessary.,,,
If we see the purpose of amendments under section 57 (6) and the limitation imposed on the amendments under section 59 we find that it is,,,
necessary, in our view to take into consideration the following:",,,
1 . Does Section 57(6) permit an applicant to file an application which is defective in its description of the invention in order that he may subsequently,,,
make good that defect by providing additional further descriptive material?,,,
Are all the routes for amending defects, subject to Section 59?",,,
3 . Does even refining of description in the specification by way of explanation be held to be an amendment to cure the deficiencies that are not,,,
permissible under section 59?,,,
In considering the whole question of discretion in respect of amendments under section 57 (6) in the present case it is also necessary, in our view",,,
to take into consideration the nature and extent of amendment, when they are primarily for explanation and it is in public interest to allow them, in",,,
absence of very compelling reasons to the contrary. However these amendments in any case cannot be stretched beyond the limitations imposed by,,,
section 59. The purpose of Section 57(6) is not to permit an applicant to file an application which is defective in its description of the invention in order,,,
that he may subsequently make good that defect by providing additional further descriptive material.,,,
When we apply the above tests relating to the amendment to the present case we find all the matter which was added during the prosecution of,,,
application was not merely explanatory as additional elements such as plurality of headphones/earphones jacks; a plurality of Bluetooth devices;,,,
concept of simultaneous communication with respective SIM Cards and providing a conference facility of voice signals to simultaneously enable more,,,
than one person participate in a communication were added. These elements were not disclosed in the specification even implicitly. Additional,,,
drawings relating to additional matter were also filed to support the claims for these elements. We find that effect of the added matter in the,,,
specification and claims is such that it described the matter not in substance disclosed or shown in the specification before the amendment. Further,,,
amended claims 1-20 do not fall wholly within the scope of the claims 1-4 as originally filed. We are convinced that amendments carried out during the,,,
prosecution of the application in the specification, drawings and claims extend the scope of disclosed matter and claims, which is particularly prohibited",,,
by Section 59. The applicants therefore succeed in proving that new matter has been added by the Respondent 1 during the prosecution of the,,,
application which was allowed by Respondent 2. The Respondent 2 ought to have sought for explanation from the Respondent 1. Respondent 2 ought,,,
to have applied his discretion more cautiously and judiciously under section 57(6), especially when there are large scale amendments as in the present",,,
case. Therefore, we are constrained to set aside the amendments allowed during prosecution of the application.",,,
3 3 . We shall now deal with the merits of the case. The counsel of both of the applicants contended that claimed invention as filed is not novel and,,,
lack inventive step and invention is a mere arrangement and rearrangement of known elements, insufficiency of description. We shall now deal with",,,
each ground.,,,
Lack of novelty {Section 64(1)(e),,,
Spice mobile argument,,,
34 . The counsel for the applicant cited the following document in support of the anticipation.,,,
US 6178335 (23.01.2001) 'Wireless communication system',,,
According to the counsel US'335 is for a personal communication system having a plurality of removable Insertible Subscriber Identity Module (SIM),,,
accommodated in plurality of slots in the handset. The provision of plural SIM cards in the handsets enables the user to subscribe two or more,,,
different service providers and is thereby able to remove at least one of the modules for use in another handset.,,,
The learned counsel submitted that in US'335 in the background the author has discussed about the drawbacks of the prior art using single SIM which,,,
is associated with a unit service provider and has stored therein different subscriber information. This information is transmitted to a receiving radio,,,
base station cell to obtain network access. This one SIM may be associated with the subscriber's business telephone number and another with his or,,,
her personal telephone number. If a subscriber is on travel to a different geographical occasion he needs only to remove the SIM from the handset,,,
and have to take a new handset at the other location to match the radio frequency coverage of that location as the radio frequency coverage of his,,,
own handset is different.,,,
The learned counsel further submitted that the other problem with a single Subscriber Identity Module is that multiple subscriber number service is not,,,
possible with a single SIM in the handset. Since it can only be provided with one mobile subscriber integrated digital network number for voice service,,,
per GSM standards. The learned counsel submitted that the inventors of US'335 has been able to overcome the aforesaid problems by providing a,,,
personal communication system handset having a plurality of slots wherein each one of the slots is adapted to store a corresponding one of plurality of,,,
SIMs storing different subscriber information.,,,
The learned counsel submitted that claim 1 of the impugned patent IN214388 recites a mobile phone having provision for a plurality of current and / or,,,
modified SIM cards, a plurality of current SIM Sockets and / or modified SIM Sockets accommodating a plurality of current and/or modified SIM",,,
cards. It further relates to plurality of headphone/earphone jacks for accepting plurality of headphone and earphone plugs and plurality of blue tooth,,,
devices in order to operate simultaneous in different communication networks and allowing plurality of incoming and or outgoing calls simultaneously,,,
with said respective SIM cards.,,,
The learned counsel submitted that features of US'335 as described in the paragraphs hereinabove also teaches a mobile phone with provision for,,,
plurality of slots adapted to hold plurality of SIM cards having capable to subscribe to one or more different service providers. Further the handset as,,,
described in US'335 comprises a microprocessor, a memory, a clock, a battery and transceiver couple to an antenna, an electronic switch is disposed",,,
in the handset for electrically coupling of the SIMs to the transceiver selectively in accordance with a signal received by the transceiver from one of,,,
plurality of base station cells. It is stated that the electronic switch with plurality of input ports as taught in US'335 are connected to different SIM,,,
cards. US'335 further discloses the ability of the handset to receive signals from different service providers even in different geographical locations.,,,
The learned counsel contended that the invention as claimed in the impugned Patent No. 214388 describes a mobile set which comprises plural,,,
SIM slots for accommodating SIM cards and has a processor, a clock, memory, a battery and transceiver and receivers similar to as described in",,,
US'335. The applicant states that reading US'335 it would be quite obvious for a person skilled in the field to extrapolate the idea of multiple SIM,,,
cards, multiple SIM sockets and communication through multiple network service providers in different geographical regions. Therefore, the subject",,,
matter of the claims of the impugned application was publicly known prior to the priority date of the impugned patent and the same is liable to be,,,
rejected on this ground.,,,
Prior Art
Document",Page No.,Feature,Ground
WO 99/14921,97,"Use of several
SIM cards
simultaneously in a
mobile phone","ovelty - Original
specification and claims
,103/105,"Simultaneous
communication","Novelty amended
specification and claims
US 5987325,183,Dual SIM card,"Novelty - Original
specifications and claims
,188,"Simultaneous
communication","Novelty - amended
specification and claims
,188,"Dual SIM cards
and simultaneous
communication","Novelty - Original and
amended specification and
claims
JP 2001/238284,111,"Provides an
earphone by which
plurality of talkers
can simultaneously
take part in
conversation with
one mobile phone","Obviousness - Claim 1 of
amended specification read
with other prior art
documents referred to
below
,112,Figure 2,
WO 01/03413,158,"Inter phone
apparatus that
comprises two
headphones each
associated with a
microphone","Obviousness - Claim 1 of
amended specification read
with other prior art
documents referred to
below
US 6178335,198,"Plurality of SIM
Cards in a socke","Novelty amended
specification and claims
DE 1991 9389,122,"A mobile radio
telephone including
two connections to
two or several
access
authorization
modules (SIM
cards)","Novelty amended
specification and claims
WO 2001/030097,120,"Use of several
SIM Cards
simultaneously in a
mobile phone
Simultaneous
Communication",Novelty and obviousness
Filed: 4, March 2002
Issued: 2, November, 2008","WO 99/41921 Filing date: 15,
February, 1999 Publication
Date: 19, August, 1999 JP
2001238284 Filing Date: 22,
February, 2000 Publication
Date: 31, August, 2001","WO 99/41921
published
before filing of
IN214388 JP
2001238284
Published
before filing of
IN214388",
Claim-1:
A mobile phone is to be
incorporated with a
provision for a plurality of
current simcards and/or
modified simcards, a
plurality of current
simsockets and/or modified
simsockets for accepting a
plurality of current
simcards and/or modified
simcards","[Page 3, line 22 - 24]!
On the contrary, the control
block BLK2 has a program
memory unit M containing an
additional software program M'
assigned for the multiple
management of the SIM cards
that are eventually inserted in
the housings I and II.","diagram clearly
shows a
plurality of
simcards",
Claim-1(contd.): a plurality
of headphone/earphon e
jacks for accepting a
plurality of Bluetooth
devices",JP 2001238284 (figure-2),"JP 2001238284
Teaches
plurality of
headphones as
shown in
diagram",
Claim-1(contd.): In order
to operate simultaneously
the sai d mobile phone in
said different
communication networks is
presented, and","WO 99/41921 (Page 5, line 9-
13) Advantageously, the GSM
cellular terminal according to
the present invention allows
independent management of
two or more SIM cards on one
GSM cellular terminal alone.
Such a management, in virtue
of the availability of several
transreceiver circuits, can be a
simultaneous one, i.e. calls can
be received or made using both
or more SIM cards
simultaneously. [Claim 1]
A GSM cellular terminal
comprising antenna means.
Signal processing means, where
SIM cards can be associated
with the signal processing
means for connection to
corresponding service
networks, said GSM cellular
terminal being apt to host
several SIM cards
simultaneously and switch
between them, characterized in
that corresponding respective
signal processing means
(BLK3, BLK3') can be
associated with each SIM Card","WO 99/41921
clearly
anticipates the
impugned
patent as
regards
simultaneous
communication.",
a plurality of incoming
and/or outgoing calls can
be communicated
simultaneously with the
said respective simcards.","WO 99/41921 [Page 5, line 9 ~
13] Advantageously the GSM
cellular terminal according to
the present invention allows
independent management of
two or more SIM cards on one
GSM cellular terminal alone.
Such a management, in virtue
of the availability of several
transreceiver circuits, can be a
simultaneous one, i.e. calls can
be received or made using both
ore more SIM cards
simultaneously. WO 99/41921
[Claim 1]
A GSM cellular terminal
comprising antenna means.
Signal processing means, where
SIM cards can be associated
with the signal processing
means for connection to
corresponding service
networks, said GSM cellular
terminal being apt to host
several SIM cards
simultaneously and switch
between them, characterized in
that corresponding respective
signal processing means
(BLK3, blk3') can be
associated with each SIM","WO 99/41921
anticipates the
impugned
patent as
regards plurality
of calls being
communicated
simultaneously",
US Patent No 6,557,753 (enclosed in Annexure I) titled ""Method, a smart card and terminals for effecting transactions through a",,,
telecommunication network ""filed on May 19, 2000. This prior art teaches a method for effecting transactions through a telecommunication network",,,
by means of a telecommunication terminal provided with at least 2 smart cards reading interfaces, one of which receives a SIM smart card associated",,,
with telephony by means of a first protocol. The other for receiving a smart card for receiving without telephony. Communication facilities are added,,,
to the SIM smartcard with a set of commands. The present patent is close to the prior art in having at least 2 cards, hence obvious to the person",,,
skilled in the art.,,,
European Patent No.EP0672328 (enclosed in Annexure II) titled ""Digital mobile telephone system in which each subscriber is assigned a",,,
telephone number and several subscriber identify module (SIM) card ""describes about a digital mobile communication system comprises a switching",,,
center (MSC), a subscriber register (HLR) connected thereto, mobile terminals, such as mobile telephones, and subscriber linked subscriber's cards,",,,
such as smart cards. Each subscription is allocated a subscriber's number and at least two subscriber's cards adapted to be activated so as to open a,,,
mobile terminal to incoming as well as outgoing traffic when inserted therein. When one the subscriber's cards is activated, the other card or cards are",,,
necessarily deactivated so as to open a mobile terminal only to outgoing traffic when inserted therein. The subscriber register (HLR) is adapted to,,,
control the activation and the deactivation of the cards by the order of the subscriber. Therefore, the present invention is obvious and hence known to",,,
the person skilled in the art.,,,
DE 19919389 (enclosed in Annexure D) titled ""Mobile radio telephone"" published on November 02, 2000 teaches about a mobile radio telephone",,,
that includes two connections for two or several access authorization modules especially chip cards and this several access authorization can be,,,
activated optionally/simultaneously. The several access authorizations are simultaneously activated with each call set up. One of the activated access,,,
authorizations is more selectable. The prior art is close to the present invention in having two or more access authorization modules and,,,
optional/simultaneous activation several access authorization. Therefore, the present invention is obvious to the person skilled in the art.",,,
16 . WO/2001/030097 (enclosed in Annexure C) relates to a radio station which is provided with several user identification modules that are allocated,,,
to different communications networks. Said radio station is simultaneously logged into different communication networks on the basis of said different,,,
user identification modules.,,,
WO 0073987 (enclosed in Annexure K) relates to a portable integrated circuit device which has a chip card that has a reduced format in,,,
comparison with standard format chip cards, comprising two parallel planar surfaces, whereby one surface has contact pads and the integrated circuit",,,
is connected to said contact pads. The invention is characterized in that the contact pads form the planar surface of the device on which the latter are,,,
placed. The invention cab be used for mobile telephones.,,,
4 0 . The Counsel for the second applicant submitted that Claims 2 to 9, being dependent on claim 1 are also liable to be revoked on the same grounds",,,
as mentioned above.,,,
The Counsel for the second applicant submitted that Claim 10 being dependent on claim 1 relates to providing plurality of jacks for,,,
headphone/earphone; for plurality of SIM card in a single phone. In view of the claim 17 where the applicant has admitted that multiple jacks,,,
constitute an optional feature as a single jack with an external adapter can fulfill the purpose of multiple jacks is nothing more than an added accessory,,,
that do not constitute any technical advancement and hence the provision of multiple jacks do not constitute an inventive step under section 2(1)(j),,,
(a) of the Patents Act 1970 and hence is liable to be revoked. The additional feature of provision of a key to switch between different calls is already,,,
well documented and in use and thus it does not amount any novel feature.,,,
The Counsel for the second applicant submitted that Claim 11 is dependent on claim 10 as mentioned above and hence is liable to be revoked on,,,
the same grounds as mentioned above in para 12 of the instant petition.,,,
The Counsel for the second applicant submitted that Claims 12 and 13 of the impugned patent relate to mere use of multiple Bluetooth devices,,,
instead of earphone/headphone jacks and such are mere replacement of headphone/earphones by known Bluetooth devices and do not constitute an,,,
inventive step under Section 2(1)(j) of the Patents Act, 1970 and hence the claims are liable to be revoked. The additional feature of provision of a key",,,
to switch between different calls is already well documented and in use and thus it does not amount to any novel feature.,,,
The Counsel for the second applicant submitted that Claims 14 and 15 relate to mere reduction in dimension by cutting the plastic material which,,,
does not contribute to any functional component of a SIM Card. This being an entirely cosmetic change in the dimension of the SIM card does not,,,
involve any technical advancement whatsoever and thus is devoid of any merits to constitute an inventive step under Section 2(1)(j)(a) of the Patents,,,
Act 1970 and hence is liable to be revoked.,,,
The Counsel for the second applicant submitted that Claim 16, being dependent on claims 14 and 15 as mentioned above is also liable to be",,,
revoked for the reason as mentioned hereinabove.,,,
4 6 . The Counsel for the second applicant submitted that Claim 17 relates to providing multiple SIM cards with multiple sockets; plurality of,,,
headphones/earphone jacks or plurality of blue tooth devices. However the claim insists that a single headphone/earphone jack that can accept a single,,,
plug with plurality of headphones/earphones connected through external adapter works equally effectively for simultaneous communication/facility of,,,
conference with different communication networks. It is pertinent to note here that in PCT/EPOO/06265 which was published on January 11, 2001",,,
drawing priority from July 2, 1999 to Telit Mobile Terminals S.P.A. and JP2001238284 (A) published on August 31, 2001 drawing priority from",,,
February 22, 2000 specifically disclose the technology related to multiple microphone/headphone that can freely be plugged into a single jack via",,,
external adapter. In the light of the said patents as mentioned above, the subject matter of claim 17 and all dependent claims i.e. Claims 18 and 19 in",,,
the instant impugned patent are obvious to any person skilled in the art and do not constitute an invention under Section 2(1)(j) of the Patents Act 1970,,,
being a mere workshop modification.,,,
The Counsel for the second applicant submitted that Claims 18 and 19, being dependent on claim 17 as mentioned above are also liable to be",,,
revoked for the reason as mentioned hereinabove in para 17 of the instant petition.,,,
In view of the aforementioned documents, the impugned patent lacks novelty and inventive step as any person skilled in the art can include multiple",,,
earphones, head phones, blue tooth devices in order to be able to send and receive signals and calls from multiple SIM cards and therefore liable to be",,,
revoked.,,,
The Counsel for the second applicant submitted that It is worthwhile to mention here that the impugned patent application as originally filed,,,
contained only 4 claims. However the application as granted has 20 claims which warrants post dating of the application subject to filing of Form 13,,,
with discretionary powers vested with the Controller of Patents. Moreover, the claims as granted go way beyond the original descriptions disclosed in",,,
the original patent application which is a further ground for the impugned patent to be revoked in toto.,,,
Respondent's Reply,,,
In the counter statement the respondent submitted that the applicant plead that the product is known and already in the public domain but the,,,
applicants have not produced any documentary evidence of such knowledge and existence particularly in India. Nobody has claimed to be,,,
manufacturer or inventor of similar product or objected to the patent as manufacturer or inventor in India at the relevant time.,,,
We shall now deal with citations WO 99/41921, US 5987325 and US 6,178,335 which we find are the closest prior art",,,
WO 99/41921 (16.02.1998) improved GSM cellular terminal,,,
WO 99/41921 is directed to invention relating to use of several SIM CARDS in a mobile phone.,,,
According to the specification -,,,
Advantageously, the GSM cellular terminal according to the present invention allows independent management of two or more SIM cards on one",,,
GSM cellular terminal alone. Such a management, in virtue of the availability of several transreceiver circuits, can be a simultaneous one, i.e. calls can",,,
be received or made using both or more SIM cards simultaneously.,,,
Advantageously, the various SIM cards usable with the GSM cellular terminal according to the present invention can be associated with different tariff",,,
types freely referred to a sole service provider or various service providers, anyway in compliance with the subscriber's agreement activations",,,
towards the service providers chosen by the subscriber. This will ensure several flexibility and saving levels in using the services supplied by the,,,
various providers or by a single provider as described above as well as allow for possible additional performances presently not available in automatic,,,
mode. For instance, the use of several SIM cards will lead to a larger territory coverage using SIM cards from two different providers. Similarly, the",,,
coverage will also be possible in other countries using different GSM transmission standards, such as the United States. The availability of the second",,,
transreceiver device will in fact advantageously allow to preset it for its operation with a different standard.,,,
It is obvious that many changes are possible for the man skilled in the art to the GSM cellular terminal described above by way of example, without",,,
departing from the novelty spirit of the innovative idea, and it is also clear that in practical actuation of the invention the components may often differ",,,
in form and size from the ones described and be replaced with technical equivalent elements.,,,
The describing block diagrams of the GSM cellular terminal may change through the future technologic developments in microelectronics, which will",,,
lead through a natural integration process to the manufacture of terminals with equivalent circuitry consisting of a sole electronic component with,,,
equivalent multiple functions. Similarly, future service provision and usage levels will also lead to a plurality of customized SIM cards, integrated on the",,,
same physical support, but the resulting diagram of the cellular terminal cannot be considered different for this reason from the one described above",,,
by way of example. Switching between integrated SIM cards on the same physical support will be performed through a special manual switch or,,,
software. The additional keyboard segment to select call transmission towards the SIM card can consist of a sole malfunction key.,,,
CLAIMS 1-6 are reproduced below,,,
1 . A GSM cellular terminal comprising antenna means, control means, signal processing means, where SIM cards can be associated with the signal",,,
processing means for connection to corresponding service networks, said GSM cellular terminal being apt to host several SIM cards simultaneously",,,
and switch between them, characterized in that corresponding respective signal processing means (BLK3, BLK3') can be associated with each SIM",,,
card.,,,
2.A GSM cellular terminal according to claim 1, characterized in that said signal processing means (BLK3, BLK3') comprise signal reception and",,,
transmission means (D, D1).",,,
A GSM cellular terminal according to claim 2, characterized in that said control means (BLK2) comprise program memory means (M) associated",,,
with a management program (M') of the plurality of SIM cards and of the corresponding signal reception and transmission means (D,D1).",,,
A GSM cellular terminal according to claim 3, characterized in that said SIM cards can be integrated in one sold physical support.",,,
A GSM cellular terminal according to claim 3, characterized in that said control means (BLK2) comprise a keyboard unit (K), which has an",,,
additional keyboard segment (K') for the transmission of signals being apt to switch between the plurality of SIM cards.,,,
A GSM cellular terminal according to claim 5, characterized in that said additional keyboard segment (K') is a specific malfunction ""send"" and/or",,,
selection key.,,,
US 5987325 (19.05.1997) Multiple SIM card phone and method,,,
US 5987325 relates to invention for a dual SIM card and simultaneous communication:,,,
Abstract ""A telephone, such as a radiotelephone, is provided having the capability to concurrently operate with two subscriber identification module",,,
(SIM) cards. The telephone advantageously permits a single phone to have two telephone numbers associated therewith.,,,
The specification further states that,,,
In accordance with the principles of invention a communications device 101 is provided with the capability to accept multiple SIM cards 105, each",,,
with their own user specific encryption algorithms, and therefore be able to provide service (in particular, to be able to accept incoming calls) for more",,,
than one user. As each different SIM card is inserted into the communications device 101 the device 101 can keep track of the encryption necessary,,,
for each user and, if necessary, register that person on the system currently providing service.",,,
US' 325 also relates to radiotelephone (mobile phone) having the capability to concurrently operate with two subscriber identification module (SIM),,,
cards. The telephone advantageously permits a single phone to have two telephone numbers associated therewith.,,,
US 6,178,335 dated January 23, 2001 Wireless communication system",,,
On perusal of US 6,178,335 we find it teaches a mobile phone with provision for plurality of slots adapted to accommodate plurality of SIM cards and",,,
having capability to subscribe to one or more different providers. It also teaches provision of an electronic switch with a plurality of input ports which,,,
can be connected to different SIM cards. It further discloses the ability to receive signals from different providers even in different geographical,,,
locations,,,
Further US'335 also teaches a mobile phone with provision for plurality of slots adapted to hold plurality of SIM cards having capable to subscribe,,,
to one or more different service providers. The handset as described in 214388 and in US'335 have a microprocessor, a memory, a clock, a battery",,,
and transceiver couple to an antenna, an electronic switch. The electronic switch with plurality of input ports as taught in US'335 are connected to",,,
different SIM cards. This switch is disposed in the handset for electrically coupling of the SIMs to the transceiver selectively in accordance with a,,,
signal received by the transceiver from one of plurality of base station. Impugned Patent No. 214388 describes a mobile set which comprises plural,,,
SIM slots for accommodating SIM cards and has a processor, a clock, memory, a battery and transceiver and receivers similar to as described in",,,
US'335. US'335 further discloses the ability of the handset to receive signals from different service providers even in different geographical locations,,,
which is also a feature of IN 214388. Therefore, we are inclined to agree that the subject matter of the claims of the impugned patent was anticipated",,,
by US 335 and the claimed invention was publicly known prior to the priority date of the impugned patent. The patent 214388 is liable to be rejected on,,,
this ground alone.,,,
As we have set aside the amendments we find the invention as originally claimed is for a mobile phone having provision for incorporation of two or,,,
more than one SIM cards wherein two (or) more than one SIM card to receive and/or send two signals or more than one signal at a time,,,
(simultaneously).,,,
On perusal of the WO 99/41921, US 6,178,335 and US 5987325 which we find is the closest prior art to the impugned patent we are inclined to",,,
agree that the invention as claimed in originally filed application is not novel. As we have already set aside the all amendments carried out during,,,
processing of the application see para ante we are not dealing with the other citations though relevant relating to anticipation and inventive step as we,,,
are considering the impugned patent application as originally filed with 4 claims only. In the view of the above analysis and findings the impugned,,,
patent is liable to be revoked on this ground alone.,,,
Lack of inventive step Section 64(1)(f):,,,
Spice Mobile argument,,,
The counsel for the first applicant argued that the alleged invention is nothing but combination of known components which discharge their own,,,
known functions of given results which are wholly expected and does not require any innovation. The principle object of the invention is to economise,,,
on the device part by using a single handsets / earsets and alternatively Bluetooth devices which also deal with speed of communication. He further,,,
submitted that the benefits claimed has no evidence as to what is the data on economy vis-Ã -vis in low cost phone available in the market. The use,,,
of multiple SIM cards to communicate with different networks in a cellular phone is not new. The use of Bluetooth or headphone/earphone to use the,,,
phone from a given distance is also known. The only inventive feature is the provision for multiple headphone/earphone or bluetooth so that plurality of,,,
users may use the same phone. The applicant submitted that there cannot be any technical advancement when the patentee admittedly uses all known,,,
components and features but only provides multiple independent systems in a single handset and different users can use the same by the use of,,,
headphone/earphone or Bluetooth.,,,
According to the learned counsel WO99/41921 published on 19th August, 1999 teaches a GSM cellular terminal comprising antenna means,",,,
control means, signal processing means, where SIM cards can be combined with the signal processing means for connection to corresponding service",,,
networks, said GSM cellular terminal being apt to host several SIM cards simultaneously and switch between them. WO'921 further teaches",,,
It is the object of the present invention to solve the above drawbacks and provide a GSM cellular terminal having a more efficient and improved,,,
performance compared to the solutions already known in this frame, it is the main object of the present invention to provide a GSM cellular terminal,",,,
which is apt to allow a simultaneous use in transreceiving mode of at least two service types associated with respective SIM cards. In order to,,,
achieve such aims, it is the object of the present invention to provide a GSM cellular terminal incorporating the features of the annexed claims, which",,,
form an integral part of the description herein.,,,
Therefore the counsel for first applicant contented that WO' 921 teaches the basic foundation of the alleged invention that is the provision for,,,
multiple SIM cards to independently communicate with different communication networks. The counsel for first applicant further submitted that the,,,
other features of the claimed mobile phone are directed at using the phone as a telephone exchange so that several people may simultaneously use the,,,
phone through the different SIM cards with the help of the headphone/earphone or Bluetooth device.,,,
According to the learned counsel the US Patent No. 5878351 published on 2nd March, 1999 teaches the use of headphone/earphone in a mobile",,,
phone. The invention in this prior art relate to ""this invention relate generally to radiotelephones and, in particular, to radiotelephones or mobile stations",,,
capable of operation with a digital cellular network."" Further US'351 teaches the use of earphone with cell phone and therefore even the use of the",,,
headphone/earphone by the patentee for each individual user is not a new feature. The relevant passage in 351 reads,,,
A user interface includes c conventional earphone or speaker 17, a conventional microphone 19, a display 20, and a user input device, typically a",,,
keypad 22, all of which are coupled to the controller 18. The keypad 22 includes the conventional numeric (0-9) and related keys (#, *) 22a, and other",,,
keys 22b used for opening and mobile station 10. These other keys 22b may include, by example, a SEND key, various menu scrolling and soft keys,",,,
and a PWR key. The mobile station 10 also includes a battery 26 for powering the various circuits that are required to operate the mobile station.,,,
59 . According to the learned counsel the use of Bluetooth with mobile phone is known. US Patent No. 6339706 dated 15th January, 2002 this patent",,,
is directed towards use of Bluetooth technology. It teaches Bluetooth technology was introduced to provide pervasive connectivity especially between,,,
portable devices like mobile phones, laptops, personal digital assistants (PDAs), and other nomadic devices up to a range of approximately 10-100",,,
meters. This system applies frequency hopping to enable the construction of low-power; low cost radios with a small footprint. The system supports,,,
both data and voice. The latter is optimized by applying fast frequency hopping in combination with a robust voice coding. The fast frequency hopping,,,
has a nominal rate of 800 hops per second (hops/s) through the entire 2.4 GHz ISM band, which is 80 MHZ wide. The system also uses Forward",,,
Error Correction (FEC) to limit the impact of random noise on long distance links. Thus the last limb of the alleged invention being the use of a,,,
bluetooth device in mobile phones is also found in prior art. US'706 further teaches the limitation of the device in terms of distance which is about 10 to,,,
100 meters. In other words, the patentee claims an invention of a mobile device to be used by multiple users independently but such users cannot",,,
move away from the phone by a distance which is function according to its objectives all the plurality of people have to move in a group wherever,,,
Impugned Patent IN
214388","Prior Art documents WO
01/03413 + US 5987325",COMMENTS,
Filed: 4, March 2002 I s
s u e d : 2, November
2008","WO 01/03413 Filing date:
June 29, 2000 Publication
date: January 11, 2001 US
5987325 Filing date: May 19,
1997 Publi cation date:
November 16, 1999","WO 01/03413
published
before filing of
IN 214388 US
5987325
published
before filing of
IN 214388",
Claim-1: A mobile
phone is to be
incorporated with a
provision for a plurality
of current simcards
and/or modified
simcards, a plurality of
current simsockets
and/or modified
simsockets for
accepting a plurality of
current simcards and/or
modified simcards.","US 5987325 (Independent
Claim 12) A telephone
comprising: means for
accepting a first SIM card,
said first SIM card containing
a first universal dentification
number; means for accepting
a second SIM card, said
second SIM card containing a
second universal identification
number. SIM card reading
circuitry for reading said first
and second universal
identification numbers from
said first and second SIM
card; Circuitry for coupling
said telephone to a telephone
system; and a
controller,..........","Claim 1 of US
5987325
having a
plurality of
simcards.",
Claim1(contd.): In order
to operate
simultaneously the said
mobile phone in said
different
communication
networks is presented,
and a plurality of
incoming and/or
outgoing calls can be
communicated
simultaneously with the
said respective
simcards.","US 5987325 (Column 4, Line
47-56) It may be that the
phone could listen for rings on
more than one network,
limited to perhaps two at a
time or only certain
combinations. For example, a
dual receiver phone may be
able to listen to two separate
systems at the same time. In
another example, systems that
are time division multiplexed,
such as GSM, PCS, and
TDMA, may have ring alerts
arriving at different times such
that a single receiver could
time multiplex itself and
possibly keep track of rings
from several systems at the
same time.","47-56) It may
be that the
phone could
listen for rings
on more than
one network,
limited to
perhaps two at
a time or only
certain
combinations.
For example, a
dual receiver
phone may be
able to listen to
two separate
systems at the
same time. In
another
example,
systems that
are time
division
multiplexed,
such as GSM,
PCS, and
TDMA, may
have ring
alerts arriving
at different
times such that
a single WO
99/41921
clearly
anticipates the
impugned
patent as
regards
simultaneous
communication",
A telephone, such as a radiotelephone, is provided having the capability to concurrently operate with two subscriber identification module (SIM) cards.",,,
The telephone advantageously permits a single phone to have two telephone numbers associated therewith.,,,
In accordance with the principles of invention a communications device 101 is provided with the capability to accept multiple SIM cards 105, each",,,
with their own user specific encryption algorithms, and therefore be able to provide service (in particular, to be able to accept incoming calls) for more",,,
than one user. As each different SIM card is inserted into the communications device 101 the device 101 can keep track of the encryption necessary,,,
for each user and, if necessary, register that person on the system currently providing service.",,,
The Counsel for the applicant relied on the following authorities In support of mosaicing of publications:,,,
(i) Technograph Printed Circuits Ltd. v. Mills & Rockley (Electronics) Ltd. [1972] RPC 346,,,
(ii) Glaverbel S.A. v. Dave Rose and ors. MIPR 2010 (2) 0046,,,
(iii) Bilcare Limited v. Amartara Private Limited, MIPR 2007 (2) 42",,,
Respondent's reply,,,
According to the counter statement of the respondent, it is stated that at the outset in a mobile phone only one socket with one SIM was in use.",,,
But any SIM is to be connected with a tower (service provider) and different companies are processing and operating such towers. The SIM Cards,,,
are supplied by the individual companies and they are operated only in their trade names, eg. Airtel, Vodofone etc., which cards recognize only the",,,
respective mobile service providers. The Applicant is taking advantage of the general nomenclature namely 'plural SIM cards"", but the innovation of",,,
the respondent is entirely different. The contention of the applicant and references made by the applicant are not clearly earmarked and the applicant,,,
has produced only block diagrams, allegedly submitted in prior arts. As such the above claims of the respondent are innovations which have been",,,
conveniently omitted by the applicant and instead, the applicant has merely banked upon the nomenclature ""dual SIM cards"".",,,
6 5 . According to the counter statement of the respondent the invention indeed satisfied the requirement of invention as well as the inventive step.,,,
The respondent specifically denies the averments that the invention under the subject patent is a workshop improvement. Therefore the grounds under,,,
Section 64 (1) (d), (f), (h) and (i) do not hold good.",,,
We agree with the counsel for second applicant that JP 238284 when read with WO 99/14921 and WO 01/3413 when read with US 5987325,,,
teaches the use of multiple SIM cards and the simultaneous communication along with use of head phones and microphones in a single casing and,,,
therefore render the IN214388 as granted obvious. This ground of revocation also succeeds on merits.,,,
Other grounds:,,,
(a) Insufficiency of description Spice Mobile argument,,,
The counsel for the first applicant submitted that the complete specification does not sufficiently and fairly describe the invention and the method,,,
by which it is to be performed. The mobile phone described in the patent and claimed as the alleged invention, its features as well as the method of use",,,
of the same has not been sufficiently and fairly described. There is no enabling disclosure in respect of the interfacing circuit. From the description of,,,
the interfacing circuit it is not clear that how multiple 81M cards are connected to the interfacing unit and how radio frequency signals are transmitted,,,
'from the inter facing unit to the network service provider. Thus a manufacturer of cell phone will be unable to make the claimed cell phone. Claim 1,,,
of the impugned patent has granted plurality of current SIM Cards or modified SIM Cards, Plurality of current SIM Sockets or modified SIM Sockets,",,,
using plurality of headphone/earphone jacks for Simultaneous operations in different communication networks, plurality of bluetooth devices. The",,,
original patent specification nowhere discloses the use of Plurality of SIM cards for accepting of plurality of SIM cards, or other devices in order to",,,
operate simultaneously said mobile phone, a different communication network. The patent specification filed with the original set of claims only refers",,,
to a mobile phone with a provision for multiple SIM cards. The Respondent No. 1 has disclosed in the complete specification that a mobile phone,,,
having provision for incorporation of ""A plurality of current simcards and/or modified simcards, a plurality of current simsockets and/or modified",,,
simsockets for accepting a plurality of current simcards and/or modified simcards wherein signals can be communicated among different mobile,,,
communication network simultaneously without any delay"". However, how, signals communicate without any delay is not disclosed with any circuit",,,
diagram or flow diagram. The arrangement of conference call in the mobile phone is disclosed under the heading ""The facility of conference is",,,
achieved by two ways in a mobile phone"". However, the patent specification does not fully describe how the conference call is arranged between",,,
multiple users i.e. it is not clear whether all the users are able to participate to attend a single call or not. Nowhere in the specification discloses,,,
whether all the users can simultaneously handle a single call or not.,,,
Samsung argument,,,
68 . The Counsel for the second applicant contended that the respondent has not disclosed the best method of working of the invention and the patent,,,
specification does not specifically and fairly describe the invention. According to the Counsel, respondent has failed to disclose as to how the circuitry",,,
of the mobile phone is modified so as to accommodate plurality of SIM cards (page 46). It is to be noted that simultaneous communication seems to be,,,
the crux of the invention and the patentee has not disclosed how the RF circuitry changes from one to another and how the transreceivers (RF) are,,,
designed for transreceiving the plurality of mobile service providers towers simultaneously. The Counsel further submitted that it is the unequivocal,,,
principle of law that onus of stating the specification clearly and distinctly, including the nature and limit of invention is on the patentee. If the language",,,
used by the Patentee is vague and obscure, no patent shall be granted and it is immaterial whether the obscurity in the language is due to design or",,,
carelessness or want of skill. He relied on the following authorities:,,,
(i) Generics (UK) Limited and others Vs. H Lundbeck A/S, [2009] UKHL 12",,,
(ii)The Alleppy Company Ltd. Vs. The Controller of Patents, Veliyil Velayudhan Pavithran, Lakshmi Sadanam and the Travancore Mats and Mattings",,,
Co., M.P. No. 9.2009 in TRA/7/2008/PT/CH.",,,
(iii)Press metal corporation Limited Vs. Nausheer Sorabjee Pockkhannawallh,,,
- AIR 1983 Bom 144 Respondent's Reply,,,
The respondent in the written statement submitted that it is crystal clear from the diagrams and work sheet that the workability is amply described,,,
and methods are sufficiently enumerated and viability of manufacturing is promptly highlighted. The applicant blows hot and cold in his application and,,,
interprets the provisions of law to suit its convenience by relying upon documents and circumstances which are not relevant to the facts of this case.,,,
In paragraph 40 it is stated that 'as contained in the complete specifications are not by themselves sufficient to enable a person in India possessing,,,
average skill in and average knowledge of, art to which the invention relates, to work the invention or that it does not disclose the best method of",,,
performing it.... In paragraph 40 [3] it has been stated that 'for such reason, a manufacturer of a cell phone will not able to make the cell phone",,,
described.' The applicant blows hot and cold, while at one place the applicant states that the subject patent cannot be manufactured by any company",,,
or marketed, whereas the applicant claims itself as interested person. It is the definite case of the applicant that it is dealing in mobile phones, but",,,
nowhere has it been stated that it is dealing in double SIM phones and there is only a general allegation that dual SIM phones are available in the,,,
market.,,,
(b) Subject matter not maintainable under Section 3(f) Spice Mobile argument,,,
7 0 . The counsel for first applicant argued that the subject of any claim of the complete specification is not an invention within the meaning of this,,,
Act. In the alleged invention each of the SIM cards is placed in independent SIM slot and each of the SIM cards communicates independently of the,,,
other SIM cards. The Respondent 1 has failed to highlight any technical benefit by the use of the plurality of SIM cards attached to plurality of,,,
processors and therefore it is merely a case of juxtaposition and thus not patentable. It is well settled law that combination of two old machines where,,,
the function of each of the individual components were known and in the combination of the said components also performed their own individual,,,
functions without depending on the other. Therefore, the components forming part of the alleged inventive step do not actually give any benefit in",,,
technical combination of the various components. In the case of Williams V. Nye reported in 7 RPC 62 it was held at the trial that the patent was a,,,
combination of old things in the simplest possible manner, that there was not sufficient invention and that the patent was invalid. Held affirming the",,,
judgment of the Court below, that there was not sufficient invention to constitute subject matter.",,,
Samsung argument,,,
The Counsel for the applicant submitted that,,,
3 . What are not inventions - The following are not inventions within the meaning of this Act,",,,
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;"" The",,,
learned counsel contented that the use of plurality of SIM Cards and headphones/ microphones, Bluetooth devices in a single casing is nothing but a",,,
mere arrangement and re-arrangement of known integers functioning independently over one another. On this ground alone, the patent ought to be",,,
revoked.,,,
Respondent's reply,,,
In the written submission respondent submitted that it is crystal clear from a reading of S. 2 [j] that invention means a ""new product or a process",,,
involving an inventive step and capable of industrial application"". Section 2 [ja] defines an inventive step as ""feature of an invention that involves",,,
technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to the,,,
person skilled in the art."" In this case, the patent granted as an invention squarely falls on the definition given above. Hence the contention of the",,,
applicant that it is only a re-arrangement of existing components or workshop improvement does not hold water.,,,
(c) Amendment made by False representation and suggestion' (Section 64(1)(j)) : Spice Mobile argument,,,
According to the learned counsel the alleged invention is wholly based on the alleged inventive step that multiple SIM cards are provided in one,,,
device which can communicate -independently under different networks without requiring independent handsets but only with the use of plurality of,,,
headphone/earphone plugs. Such a construction is absurd and such a device can not be made and used in respect of a mobile phone if there are,,,
multiple users using the same handset containing multiple sim cards. That clearly defeats the mobility of a mobile phone and does not fall within the,,,
known meaning of a mobile phone. The device sought to be claimed is a mini telephone exchange which again cannot function as a telephone,,,
exchange because more than one sim card cannot be used for 'the purpose of effective communication at the same point of time. While the patent,,,
examiner had required to produce proto type of the product, but there is nothing on record to show that such proto type was produced. Moreover in",,,
the proceedings between the petitioner and the respondent No. 1 before the Customs Authority, New Delhi where infringement of the impugned",,,
patent was alleged, the order passed by the Customs Authority indicated factual findings in para.35 which reads ""When asked from Mr. James g.",,,
Prakash, representative of the Patent holder during the course of personal hearing on 08.04.2009 to show that how the use of multiple headphones or",,,
multiple Bluetooth devices is possible for the purpose of simultaneous communication. Shri Prakash could not demonstrate but on the contrary said that,,,
by altering the construction of the models such simultaneous communication would be possible I find that above two models cannot be used for,,,
simultaneous communication with the use of multiple headphones of multiple Bluetooth device., If find that Shri Prakash could not produce prototype",,,
of the patented product.,,,
The learned counsel stated that the respondent No. 1 also did not produce a prototype before this Hon'ble Board. It is clear beyond doubt that the,,,
alleged invention being a fiction incapable of being translated into a viable technology is apparent from the specification itself and the respondent,,,
authorities ought to have appreciated the same before granting the impugned patent. Thus the patent has been obtained by false suggestion and,,,
representation without the respondent authorities verifying the veracity of the claims made therein. The impugned patent is liable to be dismissed on,,,
this ground alone.,,,
Samsung Argument,,,
Counsel for second applicant submitted that the patent as granted on 4th March 2002 has total 20 claims. Claims 1 to 9 relate to provision of (i),,,
plurality of current SIM Cards or modified SIM Cards, (ii) Plurality of current SIM Sockets or modified SIM Sockets, using plurality of",,,
headphone/earphone jacks for simultaneous operations in different communication networks. Claims 10 and 11 relate to the mobile phone where,,,
provision is made for plurality of earphone/headphone jacks. Thus according to one aspect one user of the SIM card uses one earphone/headphone to,,,
communicate on that SIM card and a second user of a second SIM card uses another earphone/headphone to communicate on the second SIM card.,,,
Thus two users are able to communicate independently on two different SIM cards. Likewise, the alleged invention contemplates plurality of such",,,
earphone/headphone corresponding to the total number of SIM cards. Claims 12 and 13 relate to the mobile phone where provision is made for,,,
plurality of Bluetooth devices instead of earphone/headphone. The mode of use of the Bluetooth device is same as the earphone/headphone but in the,,,
case of Bluetooth it is a wireless communication. Claims 14 to 16 relate to modified SIM cards and its application. Claims 17 to 19 relate to using,,,
single jack with external adaptor using (i) plurality of current SIM Cards or modified SIM Cards, (ii) Plurality of current SIM Sockets or modified SIM",,,
Sockets for simultaneous operations in different communication networks.,,,
According to the counsel, the Respondent 1 is under a duty to disclose that he was adding new matter and non-disclosure of such amounts to",,,
fraud. The counsel for Petitioner relied on following materials to elaborate this position of law:,,,
a) Manual of Patent Practice and Procedure, United Kingdom (at page 31, clause 18.63)",,,
b) Code of practice for Patent Applicants and Agents, IPO United Kingdom (at Point 6, at page 11)",,,
c) Guidelines for examination, European Patent Office (at Chapter II, clause",,,
1),,,
d) Manual of Patent Examining Procedure, 1.125 (b) and 608.01(q) on substitute specification",,,
e) Manual of Patent Office Practice, Canadian Patent Office (at 19.02.01)",,,
The counsel submitted that the provisions of Section 64(1)(j) when read with 64(1)(o) clearly establishes that the act of the Respondent 1 of,,,
intentionally making false statements in the original patent specification and subsequently modifying the nature of the invention completely without a,,,
single explanation in the responses made to the examination reports amounts to false suggestion and representation. The counsel further argued that so,,,
much so the amendments (addition of new matter) made by the Respondent 1 are clearly made by fraud and deceit on the patent office by making the,,,
Patent Office into believing that the concept of simultaneous communication was disclosed in the patent specification and therefore the amendments,,,
were justified. He submitted that in this regard it is not out of place to mention that according to ""Suppression Veri Suggestio Falsi"" the suppression of",,,
the truth is the suggestion of falsehood. On these grounds alone, the patent ought to be revoked.",,,
78 . The counsel further asserted that the same objective and features have been repeated in Paras 2 & 3 on Page 2 of the specification. According,,,
to the counsel although Respondent 1 has retained the same Figure 1 in the amended specification as originally filed but the description in relation to,,,
Figure 1, as evident on Page 48, has been completely changed to simultaneous communication. According to the counsel in view of the above",,,
mentioned reasons, the Respondent 1 has not only falsely represented to the Patent Office that his invention is novel but has also by making such",,,
statements amended the specification drastically such that the invention as disclosed in the original application has been completely modified.,,,
Respondent's reply,,,
7 9 . In the reply statement the respondent 1 stated that the contention of the applicants that the Patent Specification as originally filed on 04.03.2002,,,
was amended time to time up to grant is devoid of truth. The circumstances and the application form etc. will show that the Respondent who is not,,,
sponsored by any research institute and is a novice of Patent law, applied for the patent on 04.03.2002 but the Controller of Patent satisfied with his",,,
prima facie innovation, invoked S. 15 of the Act which empowers the Controller to ""require the application, specification or the other documents as the",,,
case may be, to be amended to his satisfaction before he proceeds with the application..."". Further, sub-section 6 of Section 57 of the Act reserves the",,,
right of an applicant for a patent to amend his specification or any other document related thereto to comply with the directions issued by the,,,
Controller before the grant of patent. Hence the Controller of Patents has asked for clarifications and amendments, which have been made by the",,,
Respondent as and when required, and in principle, there have been no additional claims as stated by the Applicant. The fact remains that the",,,
diagrams submitted by the Respondent along with the application was further clarified and for such clarification, amended diagrams and necessary",,,
explanations have been given by the Respondent in order to satisfy the Controller. The Controller, after application of mind and satisfaction about the",,,
documents furnished and explained by the Respondent, had granted the patent after due deliberations and demonstrations by the Respondent in",,,
person. Furthermore the communications between the Respondent and Controller of Patent will show there is no voluntary amendment to the original,,,
application dated 04.03.2002. There is nothing mala fide in the grant of patent.,,,
We have already dealt with this issue of added matter in the para ante. However we are not convinced that patent was obtained by false,,,
suggestion or fraud. Hence this ground of the petitioners fails.,,,
(d) Breach of Section 8,,,
The counsel for the both of the applicants submitted that the respondent 2 had specifically required the Respondent 1 to furnish details of,,,
corresponding foreign applications. The respondent 1 did not comply with the requirement and also did not even file the statement and undertaking,,,
under Section 8.,,,
Spice Mobile Argument,,,
Counsel for the first applicant submitted that filing of statement on Form 3 is mandatory and obligatory under Section 8 read with Rule 12. The,,,
counsel for the applicant argued that the respondent 1 did not provide details of corresponding patent applications as required under Section 8 (1),,,
undertaking on Form- 3. The respondent 1 has suppressed the information relating to withdrawal of an application filed in Japan and also the,,,
information relating to the application made in Australia which did not mature in the patent. The counsel for the applicant further submitted that,,,
Respondent 1 was under an obligation under Section 8 (2) of the Indian Patent Act to submit the search and examination report issued on the,,,
corresponding foreign applications. The counsel further submitted that Rule 12 relating to implementation of provisions of section 8(2) have not been,,,
complied with by the respondent as the ISR and IPER information available with applicant were not submitted under section 8(2). The International,,,
search report which was published on 12th September, 2003 in respect of PCT/IN2003/000044 with search report dated 8.1.2005 and 5.11.2006 was",,,
not submitted to the respondent 2 during the examination. The patent is thus liable to be rejected on this ground alone.,,,
Counsel for first applicant relied on Chemtura Corporation Vs. Union of India (UOI) and Ors., reported in MANU/DE/1880 where the Hon'ble",,,
Delhi High Court held,,,
as far as Section 8(1)(a) of the Act is concerned, there was a breach thereof committed by the plaintiff in not setting out the detailed particulars in the",,,
application and by suppressing the material facts. As regards the undertaking in terms of Section 8(1)(b) of the Act the Controller was required to be,,,
kept informed in writing from time to time of the development in the applications filed elsewhere. This was not done. Section of the Act was also not,,,
complied with since the plaintiff did not furnish to the Controller of Patents, when asked by him, the details relating to the developments in the",,,
application filed for grant of a patent elsewhere. The furnishing of the international search report at the time of filing the national phase application,,,
was not in compliance with the requirement of furnishing information on the search and examination reports as envisaged by Section of the Act.,,,
While Section 8(1)(a) of the Act required the applicant to furnish a statement on the applications made in other countries, Section 8(1)(b) required the",,,
applicant to give an undertaking that up to the date of grant of patent in India (or as earlier worded up to the date of the acceptance of his complete,,,
specification filed in India) the applicant would keep the Controller informed in writing from time to time of detailed particulars as required in Clause,,,
(a) in respect of every other application relating to the same or substantially the same invention if any filed in any country outside India subsequent to,,,
the filing of the application referred to in the above said clause within the prescribed time. Even under the Form 3 as was prevalent on the date of,,,
filing the application, an undertaking had to be given to the effect that up to date of acceptance of the complete specification filed in connection with",,,
our abovementioned application, we would keep the Controller informed in writing from time to time of the details regarding the applications for patent",,,
filed outside India from time to time for the same or substantially same invention within three months from the date of filing such application.,,,
Therefore this did not hinge on the Controller asking for particulars but the applicant keeping the Controller informed from time to time. The,,,
expression time to time meant a periodicity of furnishing information akin to updating the Controller on the current status of the applications filed in,,,
other countries. It is not, as suggested by the learned Senior counsel for the plaintiff, a mere furnishing of information whether the application is",,,
pending or dismissed.,,,
Samsung argument,,,
The Counsel for the second applicant submitted that the respondent 1 has not complied with the mandatory requirements of Section 8 at the time,,,
of filing of the patent application and thereafter.,,,
The Counsel for the second applicant submitted that the respondent 1 has filed a PCT application on 3rd March, 2003 and an international search",,,
was conducted by the Austrian Patent Office. This was not disclosed by the Respondent 1 to the Patent office. The said search report cited the,,,
following documents for the purpose of novelty and invention:,,,
- DE 1991 9389 A1 (SIEMENS AG) -WO 01/30097 A1 (SIEMENS AG),,,
- JP 2001 238284A (TK KIKAKU KK et al.),,,
- WO 01/30314 A2 (TELI T MOBILE TERMINALS SPA),,,
- WO00/73987 A (GEMPLUS),,,
The Respondent 1 miserably failed in complying with requirements of Section 8 and therefore the Patent ought to be revoked.,,,
To support this argument counsel relied on 2009 (41) PTC 260 (DEL) -Chemtura Corporation Vs. Union of India - where it was held that,,,
3 6 . Section 8 of the Act is titled Information and undertaking regarding foreign applications. Section 8(1)(a) requires an applicant for a patent to file,,,
along with his application a statement setting out the detailed particulars of the application filed by such applicant in any country outside India in,,,
respect of the same or substantially the same invention. Section 8(1)(b) requires such applicant to also furnish an undertaking that up to the date of the,,,
grant of patent in India he will keep the Controller of Patents informed in writing from time to time of detailed particulars as required under Clause,,,
(a) in respect of such application made in a country outside India. The corresponding rule is Rule 12(1) of the Rules which states that the statement,,,
and undertaking to be filed in terms of Section 8(1) of the Act will be in Form 3. Prior to the making of the present Rules in 2003, the earlier relevant",,,
Rule was Rule 13 which was to the same effect with slight changes in Form 3,,,
37.,,,
38.,,,
The matter does not end there. Section 8(2) reads as under:,,,
Information and undertaking regarding foreign applications. (1) (2) At any time after an application for patent is filed in India and till the grant of a,,,
patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to",,,
the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him",,,
within such period as may be prescribed.,,,
Respondent's reply,,,
In the reply statement the respondent stated that -,,,
the contention of the Applicants that S. 8 [1] and 8 [2] of the Act is not complied with is not based on any relevant documents. The Applicant has,,,
failed to prove its contention by suppressing the material facts. It is an admitted fact that the application for patent was made on 04.03.2002; it is the,,,
definite case of the Applicant also that on that date, no similar petition of the Respondent was pending prosecution in any other country. S. 8 [1] reads:",,,
Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person, an application for patent in any country",,,
outside India, in respect of the same or substantially the same invention or where to knowledge such an application is being prosecuted by some",,,
person through whom he claims or by some person deriving title from him, he shall file along with his application. As such there is nothing to be filed",,,
along with his application since the Respondent never filed any application in any country for patent of the same or similar invention. It is pertinent to,,,
note that an application was filed by the Respondent before PCT Cell at Chennai and that was forwarded by the same Patent Office to the WIPO for,,,
getting priority if necessary. Thus no application for patent was filed in any country and prosecuted at any point of time by the Respondent,,,
specifically. It is not correct to state that Japan gave a status as withdrawn on 21.06.2006 on the other hand it reported that ""PCT international",,,
application, It was not subject to publication in Japan because your PCT international application has not entered into the national phase in Japan within",,,
the prescribed period, i.e. 30 months from the priority date"". In Australia also it has been stated that the Respondent had not entered the national phase",,,
and hence the application has lapsed; thus it is crystal clear except for getting priority, PCT was approached and the Respondent never applied to any",,,
country for patent and hence there is no violation of provisions of Section 8 of the Act.,,,
8 9 . In the present case since we are revoking the patent on the ground of anticipation and lack of inventive step, it is not necessary to deal with the",,,
other grounds such as insufficiency, mere combination and violation of Section 8. In view of the analysis and finding as stated above the patent",,,
number 214388 is revoked and respondent 2 is directed to remove this patent from the register of patents. The ORA/17/2009/PT/CH and,,,
ORA/31/2009/PT/CH are allowed with costs of Rs. 5,000/ each.",,,