Patent is evidence of an invention protecting it through legal documentation and published for all to know. The effect of the grant of a patent is quid pro quo. Quid is the knowledge disclosed to the public and quo is the monopoly granted for the term of the patent. This grant is permitted in exchange for sharing the knowledge of the invention with public. The right to exclude others from making, using, importing, or selling the patented invention for a limited time period is granted. The law mandates that the inventor shall disclose the invention sufficiently. Section 10 (4 ) of the patent act requires that :
“ Every complete specification shall—
(a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;………..”
Purpose of ‘Quid’ In complete specification
It is the duty of the inventor to sufficiently and fairly describe the method by which the invention claimed is to be performed and disclose the best method known to the plaintiff and for which the plaintiff is entitled to protection. If the applicant falter in this requirement the patent can be subjected to revocation under pre grant, post grant and even the in the counter claim of revocation in the dispute relating to infringement. This is what happened in Ten Xc Wireless Inc & Anr vs Mobi Antenna … [10 August, 2021] case where Delhi High court was convinced that the plaintiff invention is not described sufficiently and ground under section 64 (h) questioning the sufficiency of completed specification was clearly made out.
Insufficiency as ground for revocation
It normal for all the opponents of the patent grant to invoke the ground of insufficiency in revocation. But this ground normally is not taken seriously beyond pleadings. Perhaps, it requires extra efforts to convince the court that the claimed invention is not sufficiently disclosed and fairly described in the specification. When the opponent does not pursue it in the counter claim, the court do not deal with insufficiency ground any further.
Plea is a Plea ?
But in Ten Xc Wireless Inc & Anr vs Mobi Antenna When a questioned was raised by the plaintiff that the defendant No.1/counter-claimant has not taken it (insufficiency un section 64(h)) as a ground for revocation. It was contended that “the said plea is a plea of ‘complete specification not sufficiently and fairly describing the invention and the method by which it is to be performed’, within the meaning of Section 64 (h) of the Act which has not been invoked as a ground of revocation. It was thus contended that revocation cannot be ordered on a ground not pleaded. However, the court observed that
“32. There can be no doubt whatsoever that Section 64(h) of the Act does not find mention in the written statement or in the Counter Claim of the defendant No.1/counter-claimant, though Section 64(d), (e) & (f) are expressly pleaded. However, merely because a legal provision is not pleaded, is not a ground for treating a pleading as not invoking the same. Pleadings are to be read holistically and such a reading of the written statement and Counter Claim shows the defendant No.1/counter-claimant to have indeed pleaded,………..
The court went on to rule that
“The said pleas in the written statement of the defendant No.1/counter-claimant, in my view do contain the defence/Counter Claim of, the complete specification in the patent not sufficiently and fairly describing the method by which it is to be performed and/or of the description of the method or the instructions for the working of the invention as contained in the complete specifications not disclosing the best method of performing it which was known to the plaintiff and for which the plaintiff was entitled the claim protection, within the meaning of Section 64(1)(h) of the Act. Moreover, the defendant no.2 also in its written statement, as aforesaid, has pleaded that the plaintiff has nowhere disclosed any specific technique or novel inventive step being used by the plaintiff to generate asymmetry in the beam or to control or modulate the same. “
Additionally, court ruled that
“Though defendant no.2 has not filed a Counter Claim, but Section 107(1) permits the defendant no.2 to in his defence, take grounds on which the patent may be revoked under Section 64. Thus, it is not open to the plaintiff to contend that this Court cannot go into the question of the completed specification not sufficiently and fairly describing the method by which the invention claimed is to be performed and/or not disclosing the best method known to the plaintiff and for which the plaintiff is entitled to protection.”
Complete Specification under section 10(4)
Section 10(4) of the Patents Act, 1970 clearly mandate the applicant to fully and particularly describing the invention and its operation or use and the method by which it is to be performed and disclose the best method of performing the invention known to the applicant. This is ‘quid’ for the ‘quo’ in form patent grant which allows the patentee to enjoy the exclusivity of the patent right for 20 years. Patent rights, unlike rights in a trademark and copyright, are granted for a limited time, to balance the interest of the inventor on the one hand and of the consumers/public at large on the other hand. In Ten court ruled that
“The requirement, before grant of patent, of Section 10(4), of specification fully and particularly describing the invention and its operation or use and the method by which it is to be performed and disclosing the best method of performing the invention known to the applicant and for which he is entitled to claim protection, has to be construed in the said light. Grant of a patent should not have the effect of, during the term of the patent, preventing all others from researching/inventive other products/other methods by which the same result as achieved by the patented invention, can be reached. If the patent is granted merely with reference to the result i.e. technical advancement and economic significance achieved, the same would enable the patentee to prevent others from inventing other products/processes/methods to achieve the same result which the patented invention has achieved.”
Reasons for insufficiency
The court discussed the complete specification in light of section 64 (h ) ground and found that
“The plaintiff in the present case has not described the method by which the invention is to be performed and in Figure 7 of the embodiments of the patent, expressly stated that the same is merely the exemplar and the invention claimed can be achieved by other modes also. The invention claimed, is in method of increase of subscriber base and upon grant of patent, vests the plaintiff with exclusivity over increase in subscriber base, by whichsoever method, thereby effectively blocking all others who also achieve the target of increasing the subscriber base. The words used to describe the method by which increase in subscriber base is achieved, are also vague, so as to take within their ambit all methods of increase in subscriber base. The method described in Claim No.1, is of replacing the associated one or more sector antenna for a given sector with a split-sector antenna having a plurality of sub-sector coverage areas extending therefrom, at least one of which is asymmetrical, each corresponding to a sub-sector and overlapping a neighbouring sub-sector coverage area in a sub-sector handover zone, whereby total critical coverage area provided by the plurality of sub-sector coverage areas is substantially equivalent to the critical coverage area of the replaced one or more associated sector antenna. The invention claimed, is not of a split- sector antenna having a plurality of sub-sector coverage areas extending therefrom. The invention claimed is not in the asymmetrical coverage area, which it has emerged, is a natural phenomena, with efforts in the past being to make a asymmetrical coverage areas symmetrical. The invention claimed is, to allow asymmetrical beams to be, and not make efforts to make them symmetrical. No dimensions of shape of the asymmetrical beam is prescribed. Figure 8 of the Embodiments is merely “an artwork layout of an exemplary beam forming network sector for the sector antenna system for Figure 7.” The only test prescribed is of achieving substantially equivalent coverage area. It thus follows that the invention claimed is in replacing a sector antenna with a/any split-sector antenna having plurality of sub-sector coverage areas extending therefrom and to allow at least one of the beams emanating from the split-sector antenna to remain asymmetrical and combining the two of them to create coverage area which will be substantially equivalent to the coverage area of the earlier combination of antennas. I am reminded of, use by us as children of magnifying glass, to burn a hole in paper, by focusing the sun rays through the magnifying glass. With the same magnifying glass, while some of us could immediately burn paper, others could not, or take much longer time therefor. Any method to achieve subscriber capacity is bound to use antennas/split-sector antennas and/or combination thereof. Antenna itself is a word of English language, being a metallic structure that captures and/or transmits electromagnetic waves. The antennas are admitted by the plaintiff, to emanate asymmetrical waves, with attempts till prior to the invention claimed being to make them symmetrical. The method in which invention is claimed, without specifying the particulars of the antennas to be used and/or of the beams to be generated therefrom, remain vague, permitting the plaintiff to claim infringement qua any method of increasing subscriber capacity and which is bound to use antennas/split-sector antennas emitting beams.”
This case rather set a tone for how the commercial courts in India would react to the preliminary issues raised by the plaintiffs that “plea is a plea of ‘complete specification not sufficiently and fairly describing the invention and the method by which it is to be performed’, within the meaning of Section 64(h) of the Act which has not been invoked as a ground of revocation.” In this case court also made pertinent obiter that
“…………..that while framing issues in the suit, an omnibus issue no.(i) was framed; ideally, on a plea of revocation, specific issues qua each ground of revocation ought to be framed, to make the parties aware and conscious at the time of framing of issues as well as at the time of adducing evidence of the grounds of revocation on which judgment shall be pronounced. This Court, on the administrative side is in the process of framing of Rules under the Patents Act and I commend to the Committee concerned to consider the said aspect.”
The requirement of sufficiency of disclosure under section 10 (4) should be seen in this light in the words of Justice RAJIV SAHAI ENDLAW in Ten Xc Wireless case :-
“to balance the interest of the inventor on the one hand and of the consumers/public at large on the other hand. Thus, while the inventor is granted exclusive right to practice his/her invention for the limited time, in India of 20 years, after the expiry of the said time, it is felt that the benefit of the invention should be available to all.”
Though the patent applicant is at liberty to describe the invention claimed in the way they like but the description supplied by the applicant must pass the test of sufficiency as stated in ground of revocation under section 64 (h). The drafter of the patent specification ought to be extra cautious to avoid the trap of insufficiency and loose a patent right. Let the ‘quid’ (knowledge) of the patent match with ‘quo’ (purpose) of the grant. The suit patent no 240893 for an invention entitled “Asymmetrical Beams for Spectrum Efficiency” was held invalid inter alia under Section 64(h) of the Patents Act, 1970.