Venue: Industrial Property Tribunal Nairobi
Case ID: Case No. 45 of 2005
Tribunal Panelists: Lillian Wanjira, Raymond Chelulei and Kassim Sawa
Date of Decision: 27th March, 2008
Applicants: Duplex Engineers (1997) Limited
Respondents: Jaswinder Singh Sehmi
The Respondents applied for and were granted a patent on 13th October, 2004, for the invention “Single point adjusting arm for static roller”. The invention was part of a tea sorting machine. The Respondent then filed infringement proceedings against Duplex Engineers on 13th May, 2005 on the grounds that the applicant infringed on their patent. The Respondent sough injunctive relief as provided in the Industrial property Act. Chamber summons was filed under Certificate of Urgency, which the Applicant raised a Preliminary Objection on the ground that the procedure was not provided for in the Industrial Property Act. The objection was dismissed and Chamber Summons application allowed to proceed.
The Applicant then filed revocation proceedings under section 103 of the IPA. The grounds relied on the Respondent in the revocation;
1. The Respondent was not the inventor
2. The invention was not new as it was in the public domain and involved no inventive step
3. The application did not comply with the formality requirements
4. The invention was not patentable
5. There were procedural irregularities in the grant of patent
6. The Respondent was in breach of the rights of persons whi had invented the said machine.
The Respondent counter-claimed opposed on the following grounds;
The Tribunal then summarized the issues and considered the validity of each of them.
Whether, the Respondent was the inventor of the invention protected by Patent No. KE 00184
Whether, the Respondent was the inventor, the invention was registrable
Whether, the right procedure and statutory requirements were followed in the registration of the patent. If not what is the effect.
Whether, the grounds for revoking the patent are justified.
The Tribunal, taking a detailed account of the issues in the matter held that the patent was unduly registered due to procedural flaws and lack of meeting the patentability tests as required by the IPA.
Jaswinder Singh Sehmi is the holder of Patent Number KE 00184 registered by the Kenya Industrial Property Institute vide a certificate dated 13th October 2004. That patent is effective from 10th September 2003 being the filing date of the application for the grant of patent. The patent is for an invention known as "Single point adjusting arm for static roller", which is part of a tea sorting machine.
Jaswinder filed infringement proceedings against Duplex Engineers on 13th May 2005 on the ground that Duplex was infringing on his patent. He sought injunctive relief and damages as provided by Section 106 of the Industrial Property Act. A Chamber Summons was filed under a certificate of urgency but before it was heard, Duplex raised a preliminary objection on the ground that the
procedure was not provided for by the Act. That objection was heard and dismissed and the application was allowed to proceed to hearing. Before the Chamber Summons was heard, Duplex filed proceedings under Section 1 03 of the Act, seeking to revoke the patent in question. Directions were subsequently given that the revocation proceedings be heard first as their determination would dictate the direction that the matter would take. This judgment is therefore as a result of those revocation proceedings.
The grounds upon which Duplex Engineers (hereinafter referred to as the "applicant") based its application for revocation were stated in its application and can be condensed into 6 grounds for the sake of clarity:
1. Jaswinder (hereinafter referred to as the "respon dent") was not the inventor of the patent
2. the invention was not new as it was in the public domain and involved no inventive step
3. the application did not comply with the requirements of the Act as to form
4. the invention was not patentable
5. there were procedural irregularities in the grant of the patent
6. the respondent was in breach of the rights of persons who had invented the said machine.
The application was supported by the affidavits of Jagjeet Singh Virdee, a Director of the applicant, and Dr. Norman Campbell Kelly, an employee of Unilever Tea Kenya Ltd.
The respondent opposed those proceedings by filing a Counter Statement, his own affidavit and that of J. A. Odongo. His lengthy grounds of opposition can be summarized as follows:
1. The respondent was the inventor of the patent
2. the respondent complied with the statutory requirements as to form
3. the respondent complied with all statutory requirements of the Act as to patentability
4. the respondent's invention was an inventive step
5. the patent was new and therefore not in the public domain
6. Any procedural flaws are the obligation of the Managing director and should not affect the patent
7. Any procedural flaws are not a ground for revocation
Before these proceedings commenced, an application was made by Mr. Hime on behalf of Unilever Tea Kenya Ltd., to be enjoined in the suit on the basis of its interest as contained in the affidavit of Dr. Kelly. That application was declined. Directions were then given for viva - voce evidence to be adduced and parties were allowed to call witnesses who had not sworn any affidavits. The proceedings herein
are very lengthy and span over a period of two and a half years so we will do our best to summarize the evidence.
The applicant called Reuben K. Lang'at who is an Examiner with KIPI in the field of Chemistry. The Examiner who examined the application herein, John Maina, was away and therefore this witness only relied on the documentation in the file. He took us through the registration process as per the documents in the file as best as he could, including anomalies that he noticed in the procedure. The applicant testified and produced a prototype of his own invention to show that the respondent was not the inventor of the invention protected by the patent herein. He stated that there were similar machines in existence in the tea industry well before the respondent' s machine was produced. Dr. Kelly testified that the invention was by the research and development department of Brooke Bond Kenya Limited now known as Unilever Tea Kenya Limited and was not the respondent's invention.
The respondent testified that he invented that part of the machine for which he sought a patent. He denied that it was the invention of Unilever or any other person. He stated that he adhered to the statutory requirements for the registration and grant of the patent, and that where such flaws were present, it was the Managing Director who was answerable. He did not call his two witnesses as J. A. Odongo had passed away in the course of the proceedings and Mr. Turnbull was out of the country and it was not possible to call him.
From the lengthy evidence, the issues that crystallized from the hearing were as follows:
a) Who was the inventor of the invention protected by Patent Number KE 00184?
II) If it was the respondent, was the invention registerable?
c) If it was, was the right procedure and statutory requirements followed in the registration of the patent? If not, what is the effect of this?
d) Are the grounds to revoke the patent justified or not? We have critically analysed all the pleadings on record together with the evidence of all the witnesses. Of particular value was the KIPI registration file which was produced as an exhibit. We have also considered the submissions made by learned Counsel for both parties and the authorities referred therein.
The applicant's case is that the respondent is not the inventor of the part of the machine protected by the patent herein. He stated that there were other machines in existence similar to the respondent's. However, he also stated that the respondent' s machine was an improvement of the old machines and he had not seen such a machine prior to seeing the respondent's machine at jamji factory. He said that he was told by Dr. Kelly that it was the invention of Brooke Bond. He contended that he also produced a machine which could do similar work. He admitted that after he saw the respondent' s machine, he started producing a similar machine but
did not supply it to anyone though he installed it at Kapkoros Tea Factory for testing with the intention of selling. After getting a lawyer's letter warning him that he was infringing the respondent' s patent, the applicant removed his machine. He apparently modified his machine which he admitted he tried to patent. It emerged that his application for a patent was later withdrawn.
Dr. Kelly was, at the material time that the machine in question was ordered, working in Tanzania. He really had no knowledge of what was going on in Kenya regarding the machine in question except from the records. He came to Kenya in 2004. Even though his contention was that the invention protected by the patent herein was a product of the research and development department of Brooke Bond, he was unable to produce any documentary proof. This project was said to involve other employees of the company in various countries. Two of the local engineers who were said to have been involved in the project and who are still employed by the company were not called to testify. It is also curious that having carried out dedicated research resulting in an invention which was very useful to the company they did not see it fit to patent it.
The respondent outlined how he was contracted by Brooke Bond Kenya Limited now known as Unilever Tea Kenya Limited to design and fabricate a machine for sorting tea. He annexed in his affidavit a Purchase Order from Brooke Bond dated 10th January 2001 requiring him to "carry out fabrication and design details for fibrex
mydellton machine". The Concise Oxford English Dictionary gives the meaning of the word design as: "n. 1 a plan or drawing produced to show the look and function or workings of something before it is built or made. > the art or action of conceiving of and producing such a plan or drawing. > purpose or planning that exists behind an action or object. 2. a decorative pattern. V. decide upon the look and functioning of (something), especially by making a detailed drawing of it. > do or plan (something) with a specific purpose in mind." That order is signed on behalf of the company and it was confirmed in evidence that the machine was duly delivered as ordered. If Brooke Bond had produced the invention, then they would not have asked the respondent to design the machine. It is therefore not in dispute that the respondent is the one who delivered the machine to Brooke Bond according to the purchase order, even though Dr. Kelly insisted that the respondent only fabricated the machine.
From the evidence on record, it is clear that the respondent was contracted to design and fabricate the machine. It is also clear that the innovation was an improvement of the old machines and enhanced the tea sorting mechanism. This was admitted by the applicant and by Dr. Kelly. No wonder then that the applicant herein actually copied this machine. We have no evidence of the apparent elaborate research claimed to have been done by Brooke Bond to show that the invention was their product and we are not persuaded
by the evidence of Dr. Kelly and the applicant. Dr. Kelly stated that Brooke Bond had confidentiality contracts with all their suppliers including the respondent, to protect its innovations. No such agreement was produced. We have no evidence that this was anybody else's innovation other than the respondent' s. We believe the respondent' s evidence and find that the inventor of the patent herein was the respondent.
We now turn to the procedural aspects of the respondent's application. The respondent filed two Forms 1P3 being the request for a grant of patent. Much was said about there being two forms and the validity of the said forms. Both forms were filed on 10th September 2003 and are identical in the way they are filled in every respect except that the applicant' s name is not shown in the form that bears a reference number KER./03/00396 given by KIP1. The inventor is shown as the respondent and his address for service is given as Bridge Motors Ltd. The title of invention is shown as "1) Single point adjusting arm for static roller and 2) Undercarriage for tea sorter including drive (for Kifaru sorter)." The applicant alleged that the second form ought not to have been filed.
The fact that there were two forms submitted which refer to the same application to us is not of great value as KIP! only acted on one form and disregarded the second form. In any case, Mr. Lang' at testified that the application forms are always filed in duplicate and this could well have been the reason in having two forms in the file.
However, if this was the case, then it ought to have made sense to also acknowledge the second form by giving it the same reference number or in any other way.
The form that was acted on did not contain the name of the applicant but showed who the inventor was. We are of the opinion that if the application was being done by some other party on behalf of the respondent, then perhaps it would have been important to show both the inventor and the applicant. The fact that the respondent is shown as the inventor is what to us is important, and we are not persuaded that that omission would render the form defective. What is not clear from the form is whether the respondent was applying for two distinct inventions in the same machine or not. The impression given is that these were two inventions, although the respondent in his evidence stated that the second title was a claim in the invention.
We do not agree with the applicant's contention that the respondent ought to have filed pictures of his invention. These are not provided for under the Act. We find that the documents filed by the respondent explaining his invention and its usage and applicability were as required by the Act and were adequate to enable admittance of his application.
KIP! acted on the form marked as "1 a" with a reference KE/P/03/00396, and on 30th November 2003, advertised the patent application in its journal. The title in that entry was for "Undercarriage for tea sorter including drive". A Formality
Examination Report was done on 14th January 2004 and sent to the respondent on the same day. The Examiner did not find any document missing. That examination was for the "U ndercarriage for tea sorters including drive". KIP1 then proceeded to carry out an international search through the World Intellectual Property Organization (WIPO) on 24th June 2004, The request for the search does not show the invention for which it is requested. There is nothing in the KIP! file to show whether WIPO responded to this request and if so, what the outcome was The Examiner then went ahead and did a Substantive Examination Report on 26th August 2004. The title of that report quoted the number KE/P/03/00396 relating to the application for the patent herein. However, the first sentence of that report quoted application number "KE/P/03/ 00382 Entitled lnline Process of Sorting Tea". It went on to state that the examination was for the invention relating to an undercarriage for a tea sorter. The report tabulated documents from various agencies relating to what we presume was a search on the invention for the undercarriage. The Examiner therefore passed the application as having the patentability test.
A Certificate of grant of a patent dated 30th September 2004 was issued for "Undercarriage for tea sorters including drive". There is no duplicate of the issued certificate in the file. It is shown as having been collected on 30th August 2004. It appears only logical that the collection date was an error. This Certificate was subsequently
cancelled on an unknown date as there is nothing to show when or why it was cancelled.
Perhaps the explanation for that is given by a letter dated 16th September 2004 and marked Exhibit "1s". That letter from KIPI informs the respondent that he gave two titles for his invention and invited him to choose which one he preferred. It also told him that his application had not been published and therefore it was not possible to issue the certificate. The respondent replied on the same day choosing the title "Single point adjusting arm for static roller". However, KIPI still went ahead to issue a certificate using the undercarriage title after this letter was written and after the respondent chose the second title. Until the letter was written to the respondent, all correspondence and documents referred to "Undercarriage for tea sorter including drive" except in the Substantive Examination Report which referred to the Inline process of sorting tea.
Curiously, in addition to the application and claims submitted by the respondent for the patent in question, there are other documents in the KIPI file which refer to "Te a Sorter machine — Kifaru" and "Combined inline fibre extracting and grading machine (Twiga sorter) — complete sorter". It is not clear whether these documents were intended for application number KE/P/03/00396 as they are different from the documents presented for that application. The documents for the combined inline or twiga sorter machine have a
different filing date and reference number. The confusion in documents in the file is to say the least, unacceptable.
KIPI advertised application number KE/P/03/00396 for "S ingle point adjusting arm for static roller" in its Journal of 30th September 2004. This was the first time that this title was being used. A certificate was then issued on 13th October 2004 for the "S ingle point adjusting arm for static roller". In the KIPI Register of granted rights, this grant is shown under number KE 184 with the application number as KE/P/03/00396. It is interesting to note that this invention is not reflected in the KIPI National applications register at all and what is reflected is the earlier title for the undercarriage. Similarly, nowhere in the Register does the cancellation of either the application or the earlier certificate for the undercarriage appear, giving the impression that that grant is still valid.
Section 42 (1) of the Industrial Property Act provides that an application for a patent shall be advertised either in the KIPI Journal or the Kenya Gazette as soon as possible after a lapse of eighteen months from the filing date. From the date of filing, the earliest that the application could have been published would have been 10th March 2005. It therefore follows that the application in relation to the two titles was on both occasions advertised prematurely.
From the facts outlined above, it is evident that there was no search done for the "Single point adjusting arm for static roller". The search done was for the undercarriage title and the results show that
the search results were for tea sorting machines generally. The formality examination report also related to the undercarriage title and none was done for the invention protected. The substantive examination report also referred to another invention altogether. The purpose of doing a search is to establish whether or not such an invention exists.
Similarly, the formality and substantive examination reports serve the purpose of verifying if all required documentation has been done and whether the invention passes the patentability test. The evidence on record shows that the undercarriage and the adjusting arm were two distinct items that performed different functions in the machine. The Examiner should therefore have subjected the second title to all the required verifications but chose not to.
Assuming that the documentation and statutory requirements for the desired title had been proper before publication, would there have been an irregularity regarding the publication? The publication of the application before the statutory period expired was improper as it contravened the Act. The Act does not provide for the expeditious grant of a patent, and the provisions of the Act setting out the steps to be taken before a patent is granted are mandatory. The certificate of grant of patent was therefore irregularly granted as the application had not been subjected to the required mandatory steps outlined above and was published before the expiry of the statutory period.
The Act is silent on the cancellation of a patent. Section 45 (2) however requires that once a patent is granted, the Managing Director must publish it as soon as is reasonably practicable. It only makes sense that if a grant of a patent was published, then its cancellation should also be published. This is to allow for the dissemination of the information of its cancellation so that the public is aware that no such invention exists, This administrative action is in our opinion necessary
Section 45 (2) requires that the Managing Director publish the grant of the patent as soon as is reasonably practicable. Up until the respondent filed his action on 13'h May 2005, the grant of the patent herein on 13th October 2004 had not been published. A delay of seven months cannot be said to be justifiable.
The flaws in the registration of the patent herein were so grave and cannot be ignored. The purpose of the procedure set in the Act and the Regulations is to ensure that a patent is subjected to all the rigorous scrutiny before it is registered. It is also to ensure that applications such as these are minimised by ensuring that the law is followed. It would make nonsense of the law if it was not followed as it should. We are aware that irregularity is not a ground for revocation of a patent. However, where due process is not followed and such grave errors, omissions and acts of commission are present, the process can only be null and void ab initio.
It was contended by the applicant that the invention was not new as there were other machines in use and that the respondent's machine had been disclosed to the public and was therefore in the public domain.
The evidence on record shows, and there is no dispute, that the machine containing the respondent's invention was installed at Jamji Factory in 2001. This factory was owned by Brooke Bond who had contracted the respondent. The respondent contended that there was a valid confidentiality agreement between him and Brooke Bond not to disclose his inventions. There may well have been such an agreement between the parties as alleged in evidence. However, we have no proof of any such agreement reduced in writing and we are unable to assume its existence. A confidentiality agreement restricts the disclosure of the information on the invention to anybody other than the party to whom it has been disclosed. Where there is no implied restriction of confidentiality, that is to say that the person can use the item in a free and unrestricted way, then it is in the public domain once it is disclosed.
What is public domain? A thing is said to be in the public domain only if no intellectual property right protects it. If a thing is in public use, then it becomes part of prior art in applying the obviousness test. The use is the kind that is accessible to the public. An exception is if the thing is being used for experimental use only.
Would the use of the respondent' s machine at Jan* Factory pass as being in the public domain? As far back as 1881, it was found that "If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person." See EGBERT VS LIPPMANN 104 U.S. 333 336 1881 for the full judgment. That definition has not changed to our knowledge.
The respondent's machine had no restrictions on use and by whom it could be used. The machine was in usage by Brooke Bond and operated by its employees. It could be seen by anyone entering the factory. Anybody working at the factory had access to it and any person skilled in the art could copy it. Indeed, by his own admission, the applicant did copy that machine. Brooke Bond could copy it or pass it on to another person to copy it.
The respondent applied for a patent on his invention two years after the installation of the machine. Perhaps out of ignorance he did not disclose this fact to the registering authority.
One of the requirements of the Act is that an invention must be new to be patented. Sections 22 and 23 of the Act provide the ingredients for a patentable invention. The invention must be new if it is not anticipated by prior art. Section 23 (2) states: "For the purposes of this Act, everything made available to the public
anywhere in the world by means of written disclosure (including drawings and other illustrations) or, by oral disclosure, use, exhibition or other non-written means shall be considered prior art: Provided that such disclosure occurred before the date of filing of the application or, if priority is claimed, before the priority date validly claimed in respect thereof". Section 23 (4) provides the grace period for disclosure as not earlier than twelve months before the filing date.
It therefore follows that the respondent had twelve months from the time he installed the machine for him to apply for a patent. Beyond that, his machine was in the public domain as he had already disclosed it and it was in use and could be copied by anybody. His application was made well over the statutory twelve months, at least one year too late. We therefore find that the invention patented by the respondent was in the public domain and did not therefore qualify to be registered.
We have stated above that the registration process was so flawed so as to make this registration null ab initio. The Managing Director of KIPI takes the responsibility for this but that does not sanitize the situation. We would have critically addressed the issue of the effect of the procedural flaws more deeply but find it unnecessary to do so because we have found that the invention was in the public domain. This was two years before the patent application was made, and therefore more than twelve months had elapsed before the
application was made, which is contrary to the law, The patent should not therefore have been registered.
We must state the following regarding the grave procedural flaws in the registration of this patent: it is incumbent upon the Managing Director of KIPI to ensure that the law is followed to the letter in the registration of the rights conferred by the Act. We recommend that a thorough review of its procedures and documentation be carried out in tandem with a restatement of the requirements of the Act, with particular emphasis directed to the officers involved in the registration process of rights administered by KIPI.
It would also be beneficial to innovators and those in research and development for KIPI to place more emphasis on awareness of the requirements of the Act in relation to registration of rights. We say this so that KIPI can play its rightful role of promoting innovation and educating the public in order to encourage more innovators to protect their inventions, as it is mandated to do by the Act.
For the reasons stated above, and despite having found that the invention herein belonged to the respondent, we find that the invention claimed by the respondent was in the public domain by his own action. He left it open for the public to copy his invention which was not protected. We therefore revoke Patent Number KE 00184 in the name of the respondent and order that it be removed from the register of patents maintained by KIPI.
The final result is that by this finding, the infringement proceedings against the applicant by the respondent are disposed of. We have considered the circumstances surrounding this dispute and order that each party bears its own costs of the entire suit.
Venue: Industrial Property Tribunal Nairobi