Evidentiary Issues in Patent Law
The Basics In the words of Rajagopala Iyengar, “a patent is a statutory grant of monopoly for working an invention and vending the resulting product”. 1 Legal disputes in patent law are essentially of three types, opposition (which is an effort on the part of a person to prevent the grant of a patent to the applicant for the patent), revocation (which is an effort on the part of a person to render a patent invalid by proving unpatentability) and infringement proceedings (where the holder of a patent sues another for the wrongful working of a patented product or process). Patent disputes are on the rise because of the increasing strategic importance of patents. A patent means control over a portion of the market for a long period and today the scope of patentability has been extended to living matter such as plants and other organisms.2 To allow a competitor a patent in a particular field is to sound a death knell for ones future prospects in one market. Thus patent disputes are becoming increasingly long drawn and costly. This module of the paper deals with evidentiary aspects of patent disputes. It is confined only to the same and does not venture forth into other questions of law that substantive patent law addresses.
1 2
Ayyangar, Rajagopala, Report on the Revision of the Patents law (Govt. of India, 1959), p.9. Diamond v. Chakraborty, 447 US 303.
The Evidence Adducing Procedure This paper concerns itself with essentially two types of proceedings involving patents, namely, a) opposition proceedings before a controller and b) suit for infringement with or without counterclaim for revocation. This is usually before a trial court (which in the case of patent infringement proceedings is always the district court).
Proceedings before the Patent Office The patent office is a quasi-judicial forum, a tribunal. In the patent office evidence is introduced by affidavit unless the Controller of the Patent Office directs to the contrary. S.79 of the Indian Patent Act, 1970 states that “Subject to any rules made in this behalf, in any proceedings under this Act before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the contrary, in any case in which the Controller thinks it right to do so, he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any party to be cross-examined on the contents of his affidavit.” All affidavits should comply with the requirements of Rule 111 of the Patent Rules. Affidavits are not governed by the provisions of the Indian Evidence Act, 1872.3
Proceedings before a Trial Court The proceedings in the Trial Court are governed by the provisions of the Indian Evidence Act, 1872. It is to be noted that in suit for infringement if the defendant has counter-claimed for revocation then the case will be transferred to the High Court for decision. Since nearly all suits for infringement give rise to a counterclaim for revocation matters such as these are usually tried by the High Court. 4 3
Affidavits are not included in the definition of evidence in s.3 if the IEA and are expressly excluded by s.1 of the same; Parkash v. J.N.Dhar, AIR 1977Delhi 73. 4 Proviso to s.104 of the Indian Patent Act, 1970.
Where the plaintiff relies on any documents (whether in his possession or power or not) as evidence in support of his claim, he should enter such documents in a list to be annexed to the plaint.
5
In the plaint the plaintiff lays down the
particulars of his assertions.6 The particulars consist of the acts complained of, the details of the patent sought to be infringed and any other grounds of discontent. The purpose of the particulars of infringement suits is to define the issues, limit the area of inquiry and prevent surprise to the opposite party. 7 The extent of particularity will depend upon the subject matter and the facts of the case. The particulars are very important because it is rule of admissibility especially applicable in patent cases. The rule is that evidence of matters coming within the scope of particulars alone will be admitted. 8
5
Order 7, Rule 9 of the Civil Procedure Code, 1909. Lallubhai Chakhubai v. Chimanlal, AIR 1936 Bom 99. 7 Glaverbel v. British Coal Corporation, (1993) FSR 478. 8 Skyes v. Howarth, 12 Ch.D. 826 at p.830 c.f. Falconer, Douglas, Aldous, William and Young, David, Terell on the Law of Patents, 12th Edn., Sweet and Maxwell: London, 1971, p.327. 6
Obtaining the Evidence Where a prima facie case for infringement is made out, the plaintiff may get an order for inspection of the defendant’s process of manufacture. 9 Courts have however observed that it is not necessary in all cases for a prima facie case to be made out before order for inspection will be made: provided that the defendants interests are properly and adequately safeguarded, and that there really is a substantial and genuine issue to be tried. 10 Inspections of the defendants premises, machines or processes may be limited to scientific or expert witnesses, and legal advisors only.11 Inspection by the Court The Madras High Court in the case of Anasar Chinna Dastagiri Sagar v. Madduleti Buggappa12, stated that in a case of infringement for patents it is vital for the Court or for experts deputed by it to inspect the original machines and the alleged counterfeit machines in order to determine whether there is sufficient similarity to constitute infringement and sufficient novelty to uphold the patent. Secrecy Exception Even if the a secret process is set up by the defendant that will not deter the Court from making such orders or arrangements in the action as may be necessary in the interests of justice. But the court will take all reasonable and proper steps to prevent undue advantage being taken of inspection of the secret processes an to insure that wrong is not done to the defendants who are legitimately setting up the possession of a secret process.13 9
Osram Lamps Works Ltd. v. British Union lamp Works Ltd, (1914) 31 RPC 309; Germ Milling Co. Ltd. v. Joseph Robinson, (1884) 1 RPC 217; Cheetham v. Oldham and Fogg, (1888) 5 RPC 617. 10 British Xylonite Co. Ltd. v. Fibrinyle Ltd., (1959) RPC 252 (CA); Unilever v. Pearce, (1985) FSR 475. 11 Swain v. Edlin-Sinclair (1903) 20 RPC 435; British Syphon Co. v. George Sydney, (1956) RPC 225. 12 AIR 1955 NUC 5672 (Mad). 13 British Thomson-Houston Co. Ltd. v. Duram Ltd., (1920) 37 RPC 121 at 131; Roussel v. ICI, (1989) RPC 59 ; In the latter case court allowed only select members of the plaintiffs legal advisors to inspect the process.
Common law has recognized that the simple expedient of restricting disclosure to the judge or the Courts advisors will usually prevent whatever detriment might otherwise be incurred by forcing a public revelation of the trade secret. 14
14
Griffin Manufacturing Co v. Gold Dust Co., 252 NY Supp 931 (1935) c.f. Wigmore, Vol.8.
Types of Evidence Documentary Evidence Irrelevancy of “Mosaics” in proving anticipation In opposition proceedings or in counter-claims for revocation, the plaintiff may be pleading anticipating of the invention that is patented or sought to be patented. The question arises as to what sort of evidence can be said to be legitimate to prove anticipation. If the plaintiff collates excerpts from numerous treatises and states that the thing wrongfully patented or sought to be patented, is anticipated by the idea in that collection of excerpts, will the court accept such evidence? The answer to that question is in the negative. A collection of material which usually bears no substantial connection with each other and the publication of which may be spread out over a period of time is identified as a “mosaic”. Such a mosaic will not be considered by the court to be a relevant fact. In the case of Von Heyden v. Neustadt15 the defendants pleaded anticipation and put in evidence
a mass of paragraphs extracted from a large number of
publications. The court opined that “the contention of anticipation stands selfcondemned if the plaintiff has to take recourse to such a varied lot of material to prove anticipation.” In Lowndes Patent16 the learned judge Tomlin J. succinctly put across the point of law stating that “it is not open to you to take a packet of prior documents and …..by…… putting a puzzle together to produce what you say is a disclosure in the nature of a combination of the various elements which have been contained in the prior documents. I think it is necessary to point to a clear and specific disclosure of something which is said to be like the patentee’s invention.” Let’s consider the following example; “A” is the patent applicant or patent holder of the invention that is the light bulb. “B” in opposition or revocation proceedings puts forth numerous excerpts 15
50 L.J.Ch 126 at p.128 c.f. Falconer, Douglas, Aldous, William and Young, David, Terell on the Law of Patents, 12th Edn., Sweet and Maxwell: London, 1971, p.327. 16 45 RPC 48 at p.57.
showing; that under intense heat some substances emit light; that the passing of electricity through some substances causes intense heating and that in a vacuum such light can be made to be emitted consistently. Even though all the features of light bulb are present in the cumulation of those excerpts, the bulb could still withstand the challenge because it is a device that combines those features in a workable manner. The “mosaic” that “B” introduced is likely to be disregarded and not considered as relevant in deciding the question before the court. In fact such a document could have an adverse effect because the adjudicator may draw an inference that the bulb is novel because of the incorporation of such features. Results of Experiments In patent infringement cases, it may be necessary to introduce results of experiments to prove infringement. As a general rule the results of any experiments conducted to show the truth of any assertion are admissible. 17 This admissibility is however subject to a mandatory requirement. If either party desires to rely in evidence at the trial upon the result of any experiment prepared for the purpose of the trial then notice thereof should be given to the other party and an opportunity, if desired, of inspecting the same or a repetition thereof. 18 The British Celanese case19 expanded this rule by holding that even if the matter arose in the course of the evidence adducing process, evidence of experiments relating to the same could be allowed. After all, all this is for the purpose of facilitating the judge to arrive at a conclusion. Such experiments serve a very practical purpose since a properly conducted experiment would indicate the effect of constructive reduction to practice. Let’s consider an illustrative example;
17
Art.G. Fur Autogene Aluminium Schweissung v. London Aluminium Co. Ltd., (1920) 37 RPC 13 at 164; British Thomson- Houston Co. v. British Insulated & Helsby Cables Ltd., (1924) 41 RPC 345 c.f. Narayanan, P., Patent Law, 3rd Edn., Eastern Law House: New Delhi, 1998, p.475. 18 Oak Manufacturing Co. v. Plessey Co. Ltd., (1950) 67 RPC 71. 19 (1933) 50 RPC 63 at 84.
“A” the plaintiff is a manufacturer who has a patent for a process “X” which involves the ingredients p,q and r.. “B” the defendant is a person who manufactures the same product by ingredients p,q,r and s. If by experiment “A” can show that ingredient s is of no functional value and that the process used by “B” is materially the same as the patented process then the weight of that evidence would be tremendous because then even if the defendant has an expert the onus would be on that expert to show that the experiment was faulty. Relevancy of Provisional Specification To get at what is the real object of the plaintiff’s patent one may look at the provisional specification. That is so because the object of the complete specification usually, is to carry out in detail that which is more generally expressed in the provisional specification.20
Oral Evidence The Testimony of the Inventor The testimony of the inventor satisfies the requirement of oral evidence under s.60 of the Indian Evidence Act, 1872 since it is the evidence of the witness who perceived it. The inventor is also referred to as fact witness.21 Even though he may be an expert he deposes only to the facts and circumstances 22 of the invention. In the case of Bishwanath Prasad v. Hindustan Metal Industries23, an adverse inference was drawn from the absence of the Inventor as witness. Rule of Corroboration: In the United States the rule of corroboration of the inventors testimony has doctrinal status by virtue of cases such as Weber v. Good
20
Parkinson v. Simon, (1894) 11 RPC 493. See under Expert Evidence. 22 Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd., 51 RPC 349 at p.367. 23 (1979) 2 SCC 511. 21
and Puzrath24 and Price v. Symsek25. In India it subsists as a matter of appreciation by the adjudicator.
Testimony of Patent Examiner Even though the patent examiner is estopped from deposing at the behest of either party the Court may require him to do so. Expert Evidence Expert evidence may be administered in oral or documentary form and has been dealt with in a separate chapter.26
24
129 USPQ 32, 42 (Patent Office Board of Patent Interferences). 26 USPQ2d 1031 (US Court of Appeals). 26 See separate chapter on Expert Evidence. 25
Real Evidence Material objects can be said to fall within the defines of real evidence. In matters involving patents sometimes the judge thinks it necessary to produce such objects. In process patent infringement suits the machine in question is among the facts in issue. In such circumstances the judge may draw an adverse inference if the machine is not produced.
The Inconvenience Exemption It may cause inconvenience to bring the desired object before the tribunal and on this ground its production may be forbidden at the courts discretion. 27 Thus an exception to Rule 111 of the Patent Rules can be made in such circumstances.
27
R v. Uxbridge Justices, (1986) 85 Cr App Rep 367; Line v. Taylor, 3 F & F 731 c.f Wigmore Vol.4.
Expert Evidence “Law is not logical” Disputes involving patents usually require expert assistance to be resolved successfully. Where patents involve scientific inventions, questions such as “What was the scope of the patent protection offered by the claims?” and “Whether the allegedly infringing product or process is in fact violating a preexisting patent?” can be best resolved with expert assistance. However the both the value of expert testimony and the kind of questions that can be addressed to the expert witnesses work under legal constraints that shall be examined in detail later.
Fact Witnesses and Expert Witnesses There is a critical difference between experts who are witnesses and expert witnesses and this is best elucidated in the categorisation of experts introduced to the court as fact witnesses and expert witnesses. A fact witness is one who was privy to the occurrence of facts in the present matter i.e. an inventor of product ‘X’ could be fact witness in a matter involving the same. 28 He may be an expert but his status at the time of the deposition is unique since he is an interested party. An expert witness, quite simply is an expert, uninterested in the disputed matter but who has valuable knowledge on the subject matter of the dispute. He gives his informed and reasoned opinion on the matter and such evidence bears great weight in terms of appreciation by the adjudicator. After accepting the distinction the question that is bound to be asked is “what difference does the distinction make?”. There are essentially two differences;
28
Pearson, Hillary, Miller, C.G., Commercial Exploitation of Intellectual Property, Universal Book Traders: Delhi, 1994, p.310.
a) expert witnesses can give opinions on the matters within their area of expertise whereas a fact witness can only report the process of patenting etc, b) opposing counsel cannot interview a fact witness before deposition but a expert witness can be interviewed.
Scope of Expert Witness’s evidence In patent cases, experts may be called upon;
to explain the technical terms employed;
to instruct the court in any relevant scientific principles;
to show the state of scientific knowledge at the time of the grant;
to explain the nature, working characteristic features and probable mechanical results of an invention, together with what is old or new in the specification, and how far any scientific advance has been made thereby, as well as;
in the case of rival inventions, to point out the similarities and differences therein and how far these are material or unimportant.29
However in common law the principle of evidence behind expert evidence is clear. The function of an expert was clearly put forth in Brooks v. Steele and Currie30 . While accepting the importance of experts opinion Lindley L.J. concluded that “……But after all the nature of the invention has to be determined by the judge and not by a jury, nor by any expert or other witness. This is familiar law though often disregarded when witnesses are being examined.” 31 The practical implication of the exposition of this common law rule is that experts cannot be asked to give their opinions directly upon the facts in issue i.e. their evidence must be confined to the relevant facts upon such decision may be based. Thus, an expert cannot be asked whether or not there has been an patent 29
See Narayanan, P., Patent Law, previously cited. 14 RPC 46 at p.73. 31 See also the cases of Graphics Arts Co. v. Hunter Ltd., 27 RPC 677 at p.687; and Joseph Crosfield Ltd. v. Techno-Chemical Laboratories Ltd, 30 RPC 297. 30
infringement32 or whether or not the invention is obvious 33, but he may be asked as to matters such as the nature of the alleged infringing acts. To sum up precisely the common law rule of evidence; for an expert witness to pronounce on the fact-in-issue would be to foreclose what is rightly the prerogative of the adjudicator and that is not acceptable, in principle or in practice. The expert witness does not decide the case. The Rule that the Expert Witness does not decide the case and it’s futility in the Indian Scenario The question that now is posed before us is whether the above rule is logically sound and further is the rule applicable in the Indian context. Addressing the question of logical soundness, it is submitted that this rule does nothing more than state the obvious and create hurdles during examination proceedings. According to this rule the expert can only lay out the meanings of the various technical facts of the matter and leave the judge to decide thereupon. Academically this seems arguable but in practice this amounts to nothing but legal fiction! Let us consider an example: An expert is deposing in the court in the matter of a patent infringement. According to the rules of practice stemming from the rule mentioned above, the lawyer cannot put to the expert the question “has there been an infringement of a patent?”
He can instead ask him questions such as “Does the allegedly
infringing product possess structural and functional similarity to the patented product?” Yes, the questions may differ in semantics but what is the difference in effect? In both cases the judge is not bound by the expert evidence. In other words this rule is nothing but expression of the formalities of court proceedings.
32 33
In a Infringement action. In an Opposition or Revocation proceeding.
In my opinion s.45 of the Indian Evidence Act, 1872, excludes the rule that the expert cannot opinionate on the fact-in-issue. S.45 states that “when the court has to form an opinion on an question of science or art then it can take the opinion of experts on those questions.” What happens when the fact-in-issue is essentially a question of science or art as in the case of matters concerning patent disputes? S.45 answers that the expert can opinionate on the fact-in-issue. In fact, in common law itself the confusion is exemplified by the decisions of the courts in cases such as R v. Mason 34 in which courts have held to be valid the proposition that where the issue is substantially one of science or skill then the expert may be asked the very question which the adjudicator has to decide. 35 The Duties of the Expert as per Ikarian Reefer In the Ikarian Reefer36 case Crosswell, J., summarised the duties and responsibilities of the expert witness as follows;
1. Expert evidence prevented to the court should be, and should be seen to be, the independent product of the expert uninfluenced as to form of content by the exigencies of litigation.37
2. An expert witness should provide independent assistance to the court by way of objective unbiased opinion in relation to matters within his expertise. 38 An expert witness cannot assume the role of an advocate. 3. An expert witness should state the facts or assumptions on which his opinion is based. He should not omit to consider material facts which could detract from his concluded opinion. 4. An expert witness should make it clear when a particular question falls outside his expertise. 34
7 Cr App R 67. See also cases of Ireland v. Taylor,[1949] 1 KB 300 c.f. Howard, M.N., Crane, Peter and Hochberg, Daniel Art., Phipson on Evidence, 14th Edn., Sweet and Maxwell: London, 1990,p.811. 36 (1993) FSR 563 at 565. 37 Per Lord Wilberforce in Whitehouse v. Jordan, (1981) 1 WLR 246 at 256. 38 Polivitte v. Commercial Union Assurance, (1987) 1 Lloyds’ Rep. 379 c.f. Narayanan, p.473. 35
5. If an expert’s opinion is not properly researched because he considers that insufficient data is available, then this must be states with an indication that the opinion is no more than a provisional one. 6. If, after exchange of reports, an expert witness changes his view on a material matter having read the other sides’ expert’s report or for any other reason then such a change of view must be communicated to the other side and the court without any delay.
Summarizing the present law of expert evidence on patents CANS According to the present law the expert can give evidence on;
The state of the art
Meaning of technical terms
Whether the product protected or sought to be protected corresponds to the scope of protection set forth in the claims
What is the working result of a product or process.
CANNOTS The expert cannot (neither can the counsel ask);
The meaning of the specification
Whether the given step or alteration is obvious.39
Court-Appointed Scientific Advisors Under Rule 88 of the Patent Rules, 1972, the Controller must maintain a roll of scientific advisors for the purposes of s.115 of the Patent Act, 1970. S.115 enables
39
Per Lord Tomlin in British Celanese Ld. v. Courtaulds Ld., 52 RPC 171 at p.196. See also Minnesota Mining Co.’s case, (1973) RPC 491 at 536 c.f. Narayanan, P., Narayanan on Patent Law, Eastern Law House Calcutta, 1975, p.318.
the Court to take the assistance of scientific advisors in determining any question of fact involving technicalities.
Exclusion of Evidence Rules of Estoppel Estoppel can be treated as a exclusionary rule of evidence40 since by virtue of it a party to litigation is prevented from disputing a certain fact or set of facts. 41 Estoppel can operate in three ways i.e. by conduct, by record and by deed. S.115 of the Indian Evidence Act incorporates all these three forms of estoppel. Estoppel by Conduct Assignor estopped from impeaching validity The rule of Estoppel here is that the assignor of a patent i.e. the person to whom the grant for working a patent (registered in the name of the assignor) is made, cannot dispute the validity of the patent in an action for infringement against him.42 For instance; “A” is the patentor who has assigned his patent (given the rights associated with owning a patent) to “B”. A suit is filed against him by “B” for manufacturing the patented product after he has assigned the right to that away i.e. a patent of infringement. “A” is estopped from claiming that the patent is invalid and consequently cannot file a counter claim for revocation. The principle is that the grantor cannot defeat his own grant.43
Licencee estopped from impeaching validity
40
It is important to note that estoppels only operate when they are pleaded and this is counter to the other rigid rules of exclusion of evidence. 41 Tapper, Colin, Cross on Evidence, 7th Edn., Butterworths: London, 1990, p.73. 42 Gonville v. Hay, 21 RPC 49 at p.51 c.f. Narayanan, p.199. 43 Under s.115 of the Indian Evidence Act this rule is expressly recognised; Franklin Hocking and Co. Ltd. v. Franklin Hocking, 4 RPC 255 at p.259.
A licensee of a patent cannot dispute the validity of the patent as against the licensor. In the landmark case of Clarke v. Adie44, Blackburn J. compared the position of a licensee who is working under a patent right, for which another has got a patent, as being analogous to that of a tenant under a lease. 45 He laid down the following propositions; 1. During license period the licensee cannot contest the patent though he can adduce evidence to prove that the patent has expired 46 2. The licensee might however adduce evidence to prove that any act of his under question was not under the protection of the patent 47 and could have been done by the general public and thus he does not have to pay royalties
Estoppel by Record Where judgement has been given in an actions, and the record shows that some question has been put in issue and decided, 48 whether such judgement be by consent or otherwise,49 either party to the litigation is thenceforth estopped in subsequent proceedings between the same parties from alleging and proving facts inconsistent with the correctness of such a decision. This rule is incorporated in matters concerning patent disputes. As far back as in Thomson v. Moore50, the court held that where judgement is given for a plaintiff in an action for infringement, the patent being held to be valid and to have been infringed, the defendant if sued again by the patentee will be estopped from the denying that the acts earlier complained of were infringing or that the patent is 44
(1877) 2 App Cas 423 (HL). He further stated “So long as the lease remains in force remains in force and the tenant has not been evicted from the land he is estopped from denying that his lessor had a title to the land. When the lease is at an end the man who was formerly the tenant, but who has now ceased to be so, may show that it was altogether a mistake to have taken that lease, and that land really belonged to him; but during the continuance of the lease he cannot show anything of that sort; it must be taken as against him, that a lessor had a title to that land. Now, a person who has taken a license from a patentee, is bound upon the same principle and in exactly in the same way. “c.f Sarkar, S., Sarkar on Evidence, 46 See Clarke v. Adie, previously cited. 47 Ibid. 48 See Murex Welding Processes Ltd. v. Weldrics, (1933) 50 RPC 178 at p.182. 49 Thomson v. Moore, (1889) 6 RPC 426. 50 Ibid. 45
valid,51 even though he may seek to attack its validity along totally different grounds.52
The American Doctrine of Equivalents and “File Wrapper” Estoppel The doctrine of equivalents
involves a reasonable construction of patent
specifications to protect patent holders against copyists who make unimportant changes to patented products and processes and then claim no-infringement. One limit to the use of this doctrine involves a review of the patent holders negotiations (patent file/ “wrapper”) with the patent office. If the patent holder relinquished a claim with respect to his device in response to the patent examiner’s objections and the claim he gave up is the same as the accused’s mode of operation then the court will not apply the doctrine of equivalents. This form of extoppel is called “file wrapper estoppel.” 53
51
Ibid. Shoe Machinery Co. v. Cutlan, [1896] 1 Ch. 667. 53 Lautsch, John C., American Standard Handbook of Software Business Law, Reston Pub: Virginia, 1985, p.74. 52
Privileged Communication The Rule Confidential communications between a person and his solicitor and counsel are privileged documents.54 The rule is established for the protection of the client, not of the lawyer and is founded on the impossibility of conducting professional assistance without privity of communication. 55 Since it is for the client’s assistance it may be waived by the client and not by the lawyer. 56 Just as in the use of estoppel it is party pleaded exclusionary rule and not a statutory incorporation.
It’s applicability to Communications between Clients and Patent Agents Communications between a man and a person who is merely his patent agent are not privileged.57 The question of his privilege arises in present times where the solicitors act as the patent agents as well. In situations where the patent agent acts in the capacity of a patent advisor, privilege can be availed of by the client under common law.58 This is the sole exception to the rule that agents cannot avail of the privilege. Section 15 of the British Civil Evidence Act, 1968 mandates that “communications between patent agents and their clients are privileged from disclosure in civil proceedings where made for the purpose of any pending or contemplated proceedings under the Patents Act 1949 before the Comptroller or the Appeal Tribunal.”59
54
S.126 of the Indian Evidence Act, 1872, Jones v. Great Central Railway, [1910] AC 4, 5; Waugh v. BRE, [1980] AC 521 c.f. Phipson on Evidence, p.500. 56 s.126 and s.127 of IEA. 57 Slade v. Tucker, 14 ChD 824 c.f Sarkar, S and Manohar, V.R., Sarkar on Evidence, 14th Edn., Wadhwa: Nagpur, 1993, p.1861. 58 s.15 of the Civil Evidence Act. 59 Extracted from Carter, P.B., Cases and Statutes on Evidence, 2nd Edn., Sweet and Maxwell: London, 1995, p.663. 55
The ambit of protection offered by the Indian Evidence Act, 1872 Section 280 of the Copyright, Designs and Patent Act, 1988 enlarged the privilege given by s.15 of the Civil Evidence Act, 1968 to include non-litigous communications. Now in Britain clients and patent agents (in non-litigous capacity) can avail of the privilege. The question that arises is whether the Indian Evidence Act or the Indian Patent Act provides for such protection. Section 126 of the Indian Evidence Act, 1872 mandates that the privilege applies to communications between a client and his “barrister/ attorney/ pleader / vakil”. By specifying the types of lawyers the section denies protection to patent agents acting in the capacity of legal advisors even if the communication is for the purpose of litigation. The lawyer must be a “barrister/ attorney/ pleader / vakil”.
However it can be argued that since s.129 uses the term “legal
professional advisor” the patent agent advising on litigation could be brought under that section, but this would only stop the opposition from compelling the client to disclose the information and would not stop the patent agent from telling all (for that protection is required under s.126). It is submitted that protection must be offered to patent agents otherwise the purpose of the law of privileged communication is not served.
The Burden of Proof As is the case in civil cases the burden of proving whether an invention is obvious or whether a product has infringed a patent lies squarely on the person who asserts the claim.
The Burden of Proof in Opposition or Revocation Proceedings As far back as in 1936 the Calcutta High Court in the case ruled out the argument that facts-in-issue in patent disputes came under the definition of facts “especially within knowledge” under s.106 of the Indian Evidence Act, 1872 and that therefore the burden of proof should be on the defendant. 60 There is a clear presumption of validity of the patent. The TRIPS “reverse onus” Conundrum and the Proving of Infringement The Indian Patent Act, 1970 does not address the question of burden of proof thus subjecting itself to the accepted rule of burden of proof in civil cases. Logically even in infringement cases the burden of proving infringement should lie on the person asserting the claim. The TRIPS agreement transfers this burden of proof to the defendant; it mandates through Art.34(1) that “For the purpose of civil proceedings in respect of the infringement of the rights of the owner …… , if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process.” The provision then proceeds to incorporate a “presumption of infringement”. Such a reversal of burden of proof is not unusual since s.100 of the British Patents Act 1977 has incorporated the same since 1977. Also in British Thomson Houston 60
Calico Printers Association Ltd. v. D.N. Mukherjee, AIR 1936 Cal 493; See also Monir, M., Principles and Digest of the Law of Evidence, Vol.2, 6th Edn., University Book Agency: Allahabad, 1986,p.1136.
Co. Ltd. v. Charlesworth Peebles and Co.61 the court held that if the defendants manufacture is carried on abroad and it is impossible for the plaintiff to ascertain the actions of the defendant then it is sufficient for the former to make out a prima facie case. However in the Indian context besides running counter to present practice and law this reversal is bound to cause considerable hardships to poor Indian manufacturers.62
61 62
(1923) 40 RPC 426. Banneejee, Shyamal, GATT 1994: The WTO and India, Meharia: Calcutta, 1994, p.245.
The Practice It is submitted that the do’s and the do not’s outlined by this paper will be best understood in the context of a proper proceeding. Let us consider a hypothetical proceeding; “A” is a patent holder who suspects that “B” is using his patented process to manufacture the same product. “B” confesses to his patent agent that in substance the patented process is being used. “A” files a suit of infringement and “B” files a counter-claim for revocation.
“B’s” communications with his patent agent are not protected under the Indian Evidence Act so “B” cannot claim privilege.
To prove that “B” infringed the patent “A” may seek inspection of the machine through his experts and the Court’s scientific advisors.
After the TRIPs agreement takes effect in Indian evidence law “A” may make lay out the base fact that the same product is being made and the Burden of Proof will be transferred to the defendant (reverse onus).
“B” to prove unpatentability can introduce specific material which has the effect of anticipating the allegedly wrongly patented product. “B” may not introduce “mosaics” to anticipate.