In Re EMC: Another Blow to patent troll

Hardly one year after passing of the American Invents Act which addressed some of the irritating habits of patents trolls now it is the turn of US Court of appeal for Federal circuit to address the menace of patent owners who uses patent litigation as a tool to make money from companies rather than entering into actual business.

On May 4^th 2012, the Court of Appeal issued a blow to all Non-practicing entities who files multi- defendant cases as an effort to avoid the requirements of the America Invents Act. The Court in this case held that “Joinder” is not appropriate in multi-defendant patent infringement cases where only commanlity is alleged infringement of same patents. 

Oasis Research LLC, the plaintiff in the original suit is the owner of four US patents which deals with off-site computer data storage by allowing home computer users to remotely connect to an online service system for purposes of external data storage. Oasis Research LLC files a Multi – defendant patent infringement claim against the petitioners (defendants in original suit) as they offer online backup and storage though various websites.

The petitioners filed motions before the Eastern Texas District Court to sever the claims and transfer them to various jurisdictions. The District court denied petitioners motions reasoning that claims of Oasis LLC satisfy the transaction or occurrence test of Rule 20 of Federal Rules of Civil Procedure.

Denying the reasoning given by the Texas Court, the Court of appeal points out that under the correct test of transaction or occurrence an existence of a single common question of law or fact alone is insufficient to satisfy the transaction- or- occurrence requirement. Thus mere fact that the infringement of same claims of the same patent does not support joinder, even though the claims would raise common questions of claim construction.

Further the joinder of independent defendants is only appropriate where the accused products are same in respect to the same patent. But commonality of patent alone is not sufficient to allow joinder. Commonality shall be supplemented with overlapping facts which give rise to each cause of action. Thus, if there is no actual link between underlying facts of each claim of infringement the independently developed products using differently sources are not to be considered as the part of the same transaction.

The 18 page ruling of the Court of Appeal is a serious financial blow upon the patent owners who count on using cheap litigation to win favourable settlements.

 By Nithin V Kumar

For Biswajit Sarkar

Need for Patent Registration & Patent Attorneys in India

Patents are the limited exclusive rights granted by the state for the inventor for his invention. It is an acknowledgement of the inventor’s idea. It is the reward given for the truthful disclosure of the working of the invention. This right is guaranteed for a period of 20 years from the date of filing the patent application. The object of invention need to be novel or new, contain inventive step and have utility. These are the important criteria necessary to pass for anything to be patented as per the Indian Patent Act, 1970. To be novel it must not have been anticipated through any prior publication anywhere. To be inventive it need to provide some technical or economical benefit and also not obvious to a person who has expertise in that field. Moreover this invention need to be have some kind of industrial usefulness that it brings commercial success to the inventor and also useful to the people. Again it is necessary that this invention should be patentable which implies that it must belong to certain category of subjects which are eligible to be provided with patents. So we can see that the patent obtaining is a very complex process as it needs to follow all these tests perfectly. But unlike the Copyright or Trademark the invention is not conferred with a Patent once it’s been created or is in use. For getting a statutory protection like patent it is an absolute necessity to get it registered.

Why so?

In the context of patents there is a concept called public domain which can be said in simple terms as everything outside the patent protection. It consists of all those materials which are free for everyone to use or destroy. As per the Patent Act, 1970 patent is granted only as per the Act. So if a patent is not obtained it simply means the invention or whatever just goes into the public domain. In the present situations, the development of new idea is the mantra. Innovation has been added to the essentialities of human survival. If one needs to stay then one needs to bring something new. The recognition of one’s intellectual knowledge is been attributed great importance as intangible property. But for this one need the recognition of law, that too for right person and at right time. Here comes the role of patents.

A patent, by providing various legal rights upon the inventor for his inventions, safeguards him when a question of ownership or any other kinds of problem arises. The primary benefit of holding a patent is that one can control who uses the patented invention and can usually charge people to use it. Unpatented technology can be used by anyone in any way, and the inventor has no legal ground to charge for use or to prosecute users.

The benefits of having a patent include:

1.   Jurisdictional benefit: The patents are territorial in nature and hence, the applications of the patents are to be filed in the local patent offices within the territory specified by the Act, even if any one of the co-inventor is domiciled in India. Hence jurisdictional problem is avoided.

2.   Rights available:  A patent grant gives the patentee the exclusive right to make or use the patented article. He can prevent all others from making or using the patented process also. A patentee has also the right to assign the patent, grant licenses under it, or otherwise deal with it for any consideration.

3.   Exclusive : As a patent gives exclusivity, the patent holder has time to market the invention without competition making him/her able to charge higher prices

4.   Right to sue: It gives the right to initiate legal action against anyone that is making or selling, without permission, the patent holder invention.

5.   Priority in Claims: It gives one priority over third parties wanting to register their patents in countries that do not require registration.

Thus, we can see that only if an invention has been registered as patent that all these benefits accrue to the inventor. Only if these benefits are available, that a person can avail legal protection.

Brief on how patents are applied:

·         The normal procedure for the application for patent is submitting of patent application form which includes the details about the inventor, small briefing about the invention and its usefulness and also declaration that the applicant is first and true inventor or so authorized by the true inventor along with a fee.

·         Next, the patent office does a search as to whether such inventions exist anywhere else.

·         If the said search is negative, the patent office notifies applicant to submit a detailed description of the invention along with the patent claims and specifications with a fee prescribed.

·         Upon analyzing the patent claims and specifications only the patent office grants the patents.

Role of Patent Attorney:

Therefore, it is solely upon the patent claims and specifications that the patent is granted. The drafting of patent therefore, needs to be very accurate and crafty. It requires a special knowledge and experience to draft such claims. Patent attorneys are the best persons for this work as they are legal people with specified knowledge. Patent attorneys are able to appropriately place a balance between the legal requirement and the patent claim which is technical in character. The whole process of obtaining patent is very legal and complicated. Henceforth, it is crucial that the claims and so called specifications which together determines what-all- are and to –what- limit the patent is made, are drafted in very neatly. Patents Attorneys  research upon whether the invention would be patentable, draft their claims and specifications, keep track with the status of application, also make sure that there happens no procedural default, thus ensuring that the inventor is ensured with the benefit of his invention within reasonable period. 

By

S.Deepika

For Biswajit Sarkar