Mock Opposition Proceedings – A mock problem by Dr. Kalyan C. Kankanala at UPES School of Law
This mock Opposition proceeding is part of the Patent Law and Practice Program being taught by the BananaIP Team to the B.tech-LLB Students of UPES School of Law, Dehradun. Academicians may use the content herein with appropriate attribution to the author.
Mock Problem – Opposition Proceedings before the Controller of Patents
Cutlure Incorporated (Opponent) Vs. Spoof Private Limited (Applicant)
Spoof Private Limited (“Spoof”) is a company based out of Bangalore that manufactures and sells spoons, forks and other cutlery. The company’s market share in the Indian market is twenty five (25) percent. It is one among the few companies in India that has a Research and Development team working on development of new cutlery. In March 2008, Spoof hires Vinod Radhakrishnan as head of its R and D team. Vinod has experience of working with some of the leading cutlery companies in the world including CutLure Incorporated (“CutLure”) (the leader in cutlery market in the world), where he was working before joining Spoof. CutLure has business operations in USA, Europe, Australia and other regulated markets but does not sell products in India, China and other Asian countries.
While at CutLure, Vinod works with Vishnu Vardhan, a nobel prize winner and inventor in about hundred patents. Vinod and Vishnu are great friends and meet often for dinner and drinks while at CutLure. At one of their dinner meetings, Vishnu mentions to Vinod that it is very uncomfortable to use fork and spoon separately because of the injury to his left hand and that a single spoon with fork’s features would make his life easier. Thereafter, they do not have any further discussion about the idea. They however work together on many projects including the famous cutlery for usage in space, which gives great visibility to both of them.
After joining Spoof, Vinodworks on the idea for six (6) months with his team and after many experiments and trials, develops a Spoon-fork (“Spork”) and files for a patent on March 31st, 2015 at the Indian Patent Office. The application number is 2001/CHE/2015. It is published by the Indian Patent Office on January 1st, 2017. However, Spoof does not file the request for examination and therefore, patent office does not start examining the application. (The main independent claim and description of the invention form part of Annexure A.)
Spoof launches Sporks and promotes them aggressively in the Indian market. During the first six months, the company sells more than two lakh Sporks and makes a great profit. In December, 2016, CutLur decides to explore Asian markets and requests a leading IP firm in India, BIP, to carry out a market study. In its report to CutLure, BIP points out that Spoof holds a few patents/applications in India that could impede CutLure’s entry into the market.
After discussing with its patent attorneys, CutLure decides to file pre-grant representations against all Spoof’s patent applications. It files its first pre-grant representation against Spoof’s Spork patent application (2001/CHE/2015). CutLure first files a request for examination of the Spork application before filing its representation under Section 11B(1) of the Patents Act. It cites prior art references of spoons and forks (Provided in Appendix B) and claims that the inventions (sporks)are not novel, and are obvious in the light of prior art to a person skilled in the art. CutLure also claims that Vinod has obtained the patent wrongfully and that the patent application must be rejected based on wrongful obtainment. On receiving the representation, the Controller sends the representation to Spoof stating that the application cannot be granted in the current form.
In response, Spoof submits that the invention is patentable and that it may be granted in its existing form. It also states that the pre-grant representation cannot be considered as CutLure is not an interested party and therefore cannot file the request for examination.
On receiving Spoof’s response, the Controller of Patents calls for a hearing to decide on the pre-grant representation.
Whether Vinod’s development of a Spork after prior discussion with Vishnu on the subject amounts to wrongful obtainment under section 25(1))a) of the Patents Act?
Whether Spoof’s invention lacks novelty and inventive step and whether the patent application can be rejected under sections 25(1)(b)-25(1)(e)?
Whether CutLure is an interested party and whether it can file a request for examination?
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About Dr. Kalyan C. Kankanala
Dr. Kalyan C. Kankanala manages the largest new age Intellectual Property Firm, BananaIP Counsels, headquartered at Bangalore, India. In addition to helping clients maximize business value from intellectual assets, Dr. Kalyan also consults for United Nations Industrial Development Organization (UNIDO), and teaches at premier institutions such as National Law School of India University, Bangalore, and Indian Institute of Management, Bangalore (IIM-B).