When Words Kill

The right to appeal of a patent applicant whose application is rejected persuant to a pre-grant opposition has been illusory at best. For a legal mind, it is unthinkable to envisage a situation where the first order becomes the final order. My article "How to destroy an invention - the patent office way" appeared in DNA Newspaper today. The same can be read in full at The Vanishing Point.

Opposition as a 'creditable challenge'

Strix Ltd v Maharaja Appliances Ltd (6.11.2009) (Delhi High Court order)

If you have an electric kettle at home, there’s probably Strix inside it. SpicyIP had a nice post on the above judgment. The Delhi High Court granted interim injunction restraining Maharaja Appliances from manufacturing and marketing Maharaja Whiteline electric kettle Model No EK 172 as it infringed Strix’s patent (IN 1,92,511, US 6,080,968). In granting injunction, the Court made two critical observations on why Maharaja failed to discharge its burden of raising a ‘creditable challenge’ to the validity of the Strix patent.

First, the court observed that the defendant failed to place on record some acceptable scientific material, supported or explained by the evidence of an expert, that the patent is prima facie vulnerable to revocation. Secondly, the court observed that the burden on the defendant to show that it has put forward a creditable challenge will be greater on account of the fact that there was no opposition filed to challenge Strix’s patent.

Prospective defendants in patent infringement suits may see a new meaning in using pre-grant opposition.

Other Strix cases:

Strix v Otter Controls [1991] F.S.R. 354 (Court of Appeal rebukes mini-trial)

Mumbai Workshop on Pre-grant Opposition and Strategy

AIPS (Academcy of Intellectual Property Studies) is conducting an one-day workshop on 26th February, 2009 titled "Challenging Patents: Developing an In-house Strategy on Pre-grant Opposition". I will be the main speaker for the day. Details of the program are available here. The workshop will be structured around my new book The Touchstone Effect.

New Book on Patents: "The Touchstone Effect"

My new book on patents - "The Touchstone Effect: The Impact of Pre-grant Opposition on Patents" is out! Among other things, the book explores the strategic use of pre-grant opposition as a touchstone to check the genuineness of inventions. As with my earlier book, "The Law of Patents - With a Special Focus on Pharmaceuticals in India" which is presently updated free of cost through a blog, this book too has on online companion (click here for the blog) where you can find more about the book - you can search and download more than 55 decisions of the Patent Controller on pre-grant opposition (click here).

The book is available at the LexisNexis Online Bookstore. My publishers will ship the book to any where in India for just Re 1. Keeping the touch with the difficult times that lie ahead of us, the book is priced at Rs.295 /-

Bibliographic details:

Title: The Touchstone Effect: The Impact of Pre-grant Opposition on Patents
Author: Feroz Ali Khader
Publisher: LexisNexis Butterworths Wadhwa Nagpur
ISBN: 9788180385544
Format: Soft Cover
Edition: 2009
Price: INR 295.00 / US$ 14.75
Pages: xx + 166 pages (Appendices starts from pg 137, followed by Chapter Notes and Subject Index).