Due Diligence Search Strategies for Determining Patentability of Exemplary Indian Patent Applications

When Patent experts advise to Large and Small Corporations and Institutes to focus on Due-Diligence before filing patent application, it’s not without any substantive motive. What is the point of having a patent, even though it gets a grant, if the same is not enforceable? It’s almost like having a piece of paper with no economic and commercial viability. Its known that almost 40% of the total number of patents granted in US are challenged on validity at some point or the other of their legal life. With the increasing load of the respective country’s patent offices, an increasing percentage of such patents being challenged are actually held invalid. This leaves the patent owner with the complete risk and responsibility to ensure that a thorough search is conducted prior to any processing of preparation and filing of a Patent Application.

In the Indian context, even though pre-grant oppositions are not a very common phenomenon right now and are typically restricted to the pharmaceutical sector, mostly because of legacy and “react when you get hit mentality”, the time is not far when Corporates realize the importance that a granted patent could have on the business execution. Such patent might not stop the complete business functioning of a Corporate but sure can make a small dent by a legal suit followed by certain damages or injunctions. Why not take an easier route and be diligent in filing a pre-grant opposition as a proactive step and negate th patent itself in the first place. Any Person, according to section 25 of Indian Patents act, 1970, can apply for a Pre-grant opposition for a published patent application in India.  In the recent past, Potential people (including Potential Infringers!) can file an Pre-grant Opposition under Section 25(1) in the Indian Patent Office against this concerned Patent Application by presenting relevant prior arts/documents based on which this patent can be rendered non-novel/obvious and hence non-patentable. This pre-grant opposition needs to be filed before the grant of this Indian Patent Application.

This article is merely an effort and initiative from IIPRD to randomly pick up recently published Indian patent application and try and understand the chances of getting a valid patent. IIPRD made note of an Indian Patent Application, which has been recently been published in the Indian Patent Journal, relating to a web guide and particularly to a method and system for dynamically presenting a website.

In summary, the patent disclosure relates to a user specifying his initial interests which are collected to generate a preference profile for the website. Given the preference profile, a web guide automatically restructures the website presentation in such a way that the website looks as if it has been ‘made for me’. That is, the presentation of the website is personalized for the user. Unlike conventional personalization which only allows the user to select a background, font color, and other limited choices, the web guide leads navigation of the website. That is, the web guide synchronizes the displayed web content (data, information, etc.) with the specified interests of the user. The web guide further provides the user with queries and prompts based on the user’s preferences, and the returned content is subsequently used to further guide the user in his navigation. These queries and prompts are designed to follow the logic of a human tour guide. That is, the queries and prompts of the web guide focus further searching by providing guidance that is related to the preferences already expressed by the user and thus more likely to be relevant to the user.

The Applicant is intended to claim the following:

1. A server comprising:
computer executable instructions configured to:
present an initial home page, the initial home page including initial preference options;
receive initial preference option data corresponding to the initial preference options;
retrieve select first data based on the initial preference option data; and
structure a first presentation of a website based on the select first data, the first presentation including a closed set of subsequent preference options based on the select first data.

Based on quick due diligence, IIPRD identified few prior arts that can be considered material for invalidation on the present patent application. The prior arts include US Patent publication no. 2008/0209336, US Patent No. 7,353,460 and US Patent No. 7,743,334.

Discussing further, part of claim mapping is cited below for the first prior art.

Claim 1 of Patent Application
Cited Portions of Prior art(US7,743,334)
A server comprising computer executable instructions configured to: A method for dynamically adding and removing elements from a web-application list module in a web server, comprising: (Independent Claim 5)
present an initial home page, the initial home page including initial preference options; providing a web page with a set of configurable elements to be viewed by a user; using an iFrame element to display content of the web page;
retrieve select first data based on the initial preference option data; and receiving at least one of a user preference into an edit box with a button within an initial display of the web page to add a configurable element and the user preference at the initial display of the web page to remove the configurable element;
structure a first presentation of a website based on the select first data, the first presentation including a closed set of subsequent preference options based on the select first data. communicating with another computing device using XMLHTTP to obtain one or more data in response to the user preference to add or remove the configurable element; (Independent Claim 5).

It is further to be noted that there are many valid grounds to reject a patent under section 25 of Indian Patents act, 1970.  Few Important grounds are stated here:

Important Grounds under Opposition to grant of patent:

Section 25 (1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground –

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim

(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or

(ii) in India or elsewhere, in any other document; provided that the  ground specified  in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue if sub-section (2) or sub-Section(3) of Section 29;

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Pre-grant Opposition under Section 25(1) (b) (i) and under Section 25 (1) (e) under the grounds that the patent publication in light of the above cited prior art(s) can be rendered non-novel/obvious and hence non-patentable.

We believe that it is the right time to conduct a comprehensive due-diligence to understand the type of patents being filed currently by Indian and International Corporates, analyze the scope of protection that might be accorded from a functional and structure/construction perspective, and also assess the manner in which they might later impact the products/services being launched by Corporates and specially start-ups in the same domain.

Please note that the above analysis and the opinion presented are solely performed by IIPRD professionals and the views are solely their own and not be relied and intended to be legal advice about particular problems and. Corporates who are interested in filing a pre-grant oppositions are advised to carry out further due diligence for the same. For any comments or queries, please mail us to iiprd@iiprd.com.

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

The Author of the Blog can be reached: Raghavan@iiprd.com.

One thought on “Due Diligence Search Strategies for Determining Patentability of Exemplary Indian Patent Applications”

  1. It is worth noting too that due diligence needs to include a proper search of non-patent prior art – at least those sources of non-patent prior art which patent examiners are required to search under the PCT (that have PCT Minimum Documentation status). We find that when an inventor goes to the trouble of ‘disclosing’ in Research Disclosure or some other Minimum Documentation journal, it is a sign that they are serious about protecting their freedom to operate and are likely to to take steps over a ‘bad’ patent or patent application that infringes their prior art. Searching only patent office documents has often proved to be a false economy.

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