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India – SRI Rajesh Kumar Banka V. Union Of India: Calcutta High Court Quashes IPAB Revocation Order.

20 November, 2014

 

Legal News & Analysis – Asia Pacific  India – Intellectual Property

 

In an important judgement pronounced on 12th of this month, Calcutta High Court quashed the order of IPAB wherein it had allowed the application for revocation made under Section 64 of the Patents, Act, 1970. The patent related to a “sealing device” used amongst other purposes to prevent or detect pilferage of electricity and was granted in 2006. IPAB in the revocation application filed before it held that patent was not novel as an earlier US patent, granted in 1998, completely anticipated and taught the invention.

 
However, in the writ petition filed before it, Calcutta High Court held that the Board “had made errors of law and failed to decide reasonably on the materials disclosed before it”. Accordingly the order was set aside and the matter was remitted back to IPAB so as to be decided in consonance with the observation made by the High Court in the judgement.

 
While the IPAB in its order relying extensively on “expert opinion’’ to revoke the patent, High Court referring to section 45 of the Evidence Act,1872 observed that mere possession of the qualification does not make a person an expert and opinion to be regarded as an expert opinion must be of a person “specially skilled’’ in the area. Needless it is to mention that High Court did not consider the expert employed by the IPAB specially skilled and even stated that it was not proper for the Board to dislodge the patent of the petitioner relying only on two paragraphs of the opinion expressed by the expert. Further,the Court was of the view that the opinion of the expert is to be treated as a relevant fact only and the patentability of the product has to be assessed after taking into account all other materials. The Court also stipulated that the Board had the responsibility of extending the liberty of cross examination of the expert to the patentee even if the patentee had not specifically asked for cross examination.

 
As to the Board’s conclusion that the patent lacked novelty and did not disclose any inventive step as there was a prior US patent with regard to the same device, the Court held that there was no finding by the Board that a proper search for the worldwide patents with regard to the similar invention was not made by the Indian Patent Oce which clearly points out that the Board failed to consider whether at any material point of time the US Patent was known, making the conclusion erroneous.

 

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