Patents – Case Law

i. St. Regis Packaging (Pvt) Ltd v Ceylon Paper Stacks Ltd

1. Facts
a. The plaintiff filed action against the defendant for alleged infringement of his rights as the registered owner
of patent No. 10694. This patent was for a product called "SAFE T PACK" a container used for packing
tea as a cost effective alternative to plywood chest.
b. The inventor of the patent, one Caderamenpulle had a dispute with the defendant and upon an action filed
by him (the inventor) the High Court (Commercial) Colombo directed the Registrar of Patents to enter his
(the inventor's) name as the registered owner of the patent.
c. Caderamenpulle assigned his rights to the plaintiff on 13. 05. 1999 which assignment was recorded in the
Register of Patents.
d. The plaintiffs action was instituted on 13. 12. 1999 in terms of section 179 of the Code of Intellectual
Property Act, No. 52 of 1979 ("the Code") alleging that the defendant was infringing the plaintiffs rights by
manufacturing and selling products, exploiting the patent registered in the name of the plaintiff and seeking
an injunction from the High Court (Commercial) Colombo against the defendant restraining him from
continuing to infringe the rights of the plaintiff.
e. Whether the plaintiff as an assignee can seek relief in terms of section 179 of the Code of Intellectual
Property Act
i. Section 179 of the Code of Intellectual Property Act deals with infringement proceedings of
industrial design, patent or mark and refers to the `registered owner' as the person who could claim
that there is such an infringement. The question therefore is whether the words, 'registered owner', in
section 179 of the Code, include an assignee of a patent.
ii. Section 84(1) of the Code provides for a patent application or patent to be assigned or transmitted to
another person. Referring to the meaning of assignment, learned President's Counsel relied on P.
Narayanan, (Patent Law, 3rd edition, Pg. 219), who has stated that,
1. “In Patent Law the term means an act of patentee by which the patent rights are wholly
or partly transferred to the assignee who acquires the right to prevent others from
making, using, exercising or vending the invention.
2. A legal assignee is entitled to have his name entered in the register of patents as the
proprietor of the patent and can thereafter exercise all the rights of the proprietor of a
patent''
iii. Discussing the sale of intellectual property rights and the distinct features between an assignment and
licensing, Hilary Pearson and Clifford Miller have clearly explained the basic features of an
assignment:
1. “ assignment is the transfer of the ownership, so that after the transfer the original owner
is now himself excluded from using the property unless the new owner gives him a
license".
iv. According to W.R. Cornish, 'an assignment is in essence a transfer of ownership'.
v. An assignment in terms section 84(1) of the Code would thus pave the way for an assignee to get
into the position of the "registered owner" of a patent, industrial design or mark.
vi. Section 84(2) of the Code has made it necessary for a person, who had become entitled by
assignment to a patent, to apply to the Registrar in the prescribed manner in order to have such
assignment recorded in the Register. Section 84(4) of the Code states that,
1. "No such assignment or transmission shall have effect against third parties unless so
recorded in the register".
vii. The cumulative effect of these provisions is that when the assignment is so recorded in the Register,
the assignee would be entitled to enter his name in the Register as a proprietor of the patent. In terms
of section 179 of the Act, the registered owner has the right to seek an injunction to restrain any
person from committing or continuing an infringement of the patent. Hence an assignee who has
become entitled to the rights of a registered owner would be in a position to seek relief in terms of
section 179 of the Code of Intellectual Property Act.
f. The position taken up by learned President's Counsel for the plaintiff is that he became the registered
owner of the patent, upon assignment, only on 13. 05. 1999 and had instituted this action on 03. 12. 1999.
He further contended that an infringement of an intellectual property right is a continuing act and every act
of infringement, constituted a fresh cause of action. In his view .what is necessary is, to establish a prima
 facie case of infringement of an intellectual property right and that would enable a person to obtain an
interim injunction under section 179 of the Code of Intellectual Property Act. In support of his argument,
learned President's Counsel for the plaintiff relied on Holiday Inns Inc. v. Annamalai Mutthapa and
others(1) where it was held that,
i. "Furthermore, since the acts of the defendants were continuing acts, the question of delay did not
arise".
g. It is settled law that an infringement of an intellectual property right is a continuing act with every act of
infringement giving rise to a fresh cause of action. Injunctions are the only remedy available to prevent
such continuing action of violation.
h. In Bengal Waterproof Ltd., v. Bombay Waterproof Manufacturing Company and another(2), it was held
that,
i. "It is obvious that such infringement of a registered trade mark carried on from time to time would
give a recurring cause of action to the holder of the trade mark to make a grievance about the same
and similarly such impugned passing off actions also would give a recurring cause of action to the
plaintiff to make a grievance about the same and to seek appropriate relief from the Court. Therefore,
whether the earlier infringement has continued or a new infringement has taken place, cause of
action for filing a fresh suit would obviously arise infavour of the plaintiff who is aggrieved by such
fresh infringements"
2. Held
a. after the assignment of the patent was recorded in the register, the plaintiff had all the rights of the
proprietor of a patent and was entitled to file an action for an injunction under section 179 of the Code.
b. An infringement of an intellectual property is a continuous act giving a recurring cause of action, hence the
plaintiff's right to seek an injunction under section 179 was not precluded by delay.

ii. Michael Caderamanpulle v Mohamed Haniffa Ajmal and Another (Commercial High Court)
1. on the perusal of the intended interim orders prayed for by the plaintiff it is clear that the patent and the
design of the first defendant have been challenged by the plaintiff even though the patent and the design of
the defendant have already been registered with the director general of intellectual property. Therefore it is
necessary for this court to analyze the two sets of competing patents and the two designs that have already
been registered in terms of law, if the court is to grant the relief prayed for by the plaintiff.
2. Admittedly the two patents of the plaintiff have been registered prior to the registration of the defendants
patent.
3. There is no dispute as to the existence of the essential features such as novelty and inventive step in the
patents and in the design of the plaintiff.
4. The defendants have not disputed the registration of the patents and the design of the plaintiff.
5. The first defendant has also made an application to the director general of intellectual property to obtain
registration for his products to obtain patent and it also was registered by the director general.
6. The plaintiff’s contention is that the patent issued to the defendant has no novelty or inventive steps,
especially because the novelty and inventive steps claimed by the defendant to his patent has already been
invented by the plaintiff and it is shown in the patent belonging to the plaintiff. The plaintiff has further
stated that the so-called patent of the defendant is in violation of the rights that have been accrued to the
plaintiff on the patent he has already registered with the director general.
7. Therefore it is obvious that the court will have to investigate into the aspects of novelty and inventive steps
of the products of the defendants which have already obtained the registration as a patent.
8. The defendants in their objections have stated that the defendants patent has many novel features and also
consists of inventive steps. They have described that the defendant’s product is recyclable and that it is for
the first time that a recyclable product of this nature has come into the market. They further state that this
particular patented product is completely biodegradable in that once burned the whole of the product turns
into ash. they contend that this is relevant especially in the context of the environmental concerns that are
now very much in focus. they argue that the aforesaid is an important and significant step which had hitherto
not been available in respect of the product in question.
9. It is therefore clear that this court should carefully examine the features of the products in question, in order
to decide whether there are inventive steps or any novel features in it.
10. If the court is to make a determination on the aforesaid ingredients, this court should be able to analyze
matters concerning technical know-how and marketability of the products. No such evidence is available
before the court, at least by way of an affidavit of an expert on the subject. At this stage, I should state with
 humility that I do not possess such knowledge and expertise in this field of engineering to decide on novelty
and inventive step of the products and to come to a proper conclusion.
11. Therefore I am of the view that this court may come to an incorrect decision, if the court decides on novelty
and inventive step of the products in question, without considering expert opinion on the subject. Thus it is
not proper at this stage to decide this issue, either in favor of the plaintiff or in favor of the defendant merely
by considering the documents that are filed in this case. Thus I do not intend to decide on the issue of interim
injunction, without considering evidence of a competent person.
12. In view of the aforesaid decision it is the duty of the court to make an appropriate order that will enable the
parties to maintain the status quo.
13. In the circumstances no prejudice is caused to the plaintiff even if the interim relief’s are refused by this
court. But prejudice will be caused to the defendant if the relief is granted. This is because even though loss
may be incurred financially by the plaintiff if the injunction is not granted he may be able to recover this loss
at the end of this action. Whereas in the case the defendant the granting of an interim injunction to the
plaintiff would adversely affect with retrospective effect the position and the status of the defendant. This is
because the defendants have been using this patent to sell their goods for a considerable period of time before
the filing of this action.
14. Therefore it is obvious that the status quo of the defendants would be changed if the interim injunctions are
issued as prayed for by the plaintiff.
15. The aforesaid reasons the court refused to issue the interim injunctions as prayed for in the plaint.

iii. Michael Caderamanpulle v Quickpak (Pvt) Ltd (Commercial High Court)

1. Caderamanpulle, is the registered owner of Patent No. 11765 granted in November 1999 and Industrial
Design No. 5587 for a product called "RIGID T SACK".
2. The "RIGID T SACK" is far superior in design and construction to multi walled paper sacks in that the
rigidity of the Plaintiff’s pack enables it to retain the brick shape and prevents bulging after packing and
transport and was invented to eliminate problems that plantations, blenders of tea and shippers had with a
multi wall paper sacks. In addition thereto the shippers also found it difficult to load a container with multi
walled paper sacks due to bulging.
3. Caderamanpulle said that the Defendant Quickpak (Pvt.) Limited was marketing a container similar to the
"RIGID T SACK" without his consent, and he instituted action to protect his intellectual property rights
granted to him under the Code of Intellectual Property Act No. 52 of 1979.
4. The Defendant mainly confined its case to the issue that the Plaintiff had not disclosed the invention as
required by Section 68(3) of the Code of Intellectual Property Act in relation to the Plaintiff’s Patent.
a. 68 - Requirements of application
i. 68(3) - The description shall disclose the invention in a manner sufficiently clear and complete for
the invention to be evaluated, and to be carried out by a person having ordinary skill in the art, and
shall, in particular, indicate the best mode known to the applicant for carrying out the invention.
5. Counsel for the Plaintiff cited many cases where circumstances did not warrant the disclosure of details.
6. High Court Judge L. K. Wimalachandra having evaluated the evidence placed before him by the Plaintiff
said "I am of the view that the invention of the Plaintiff was in truth an invention in the sense of being the
result of independent work and research".
7. The evidence given by the Plaintiff by way of affidavit evidence has not been challenged by the defendant
either by filing affidavits or by leading oral evidence. The Defendant failed to contradict the Plaintiff in this
regard. Moreover the Defendant has failed to establish its counter claim by presenting evidence, documentary
or oral".
8. Accordingly Judgement was entered in favour of Caderamanpulle including the grant of a Permanent
Injunction restraining Quickpak (Pvt.) Limited and its agents from exploiting the Patent No. 11765 and
Industrial Design No. 5587 by making a product, importing, offering for sale, selling and using such product
etc. or in any manner infringing the said Patent and Industrial Design
Diamond v Chakrabarty
iv. The SC in Chakrabarty addressed only the issue of whether patent claims for a man-made microorganism
capable of degrading four kinds of hydrocarbons were valid.
v. In 1972 Chakrabarty filed a patent application asserting claims for the process for making the microorganism,
for the medium to spread it, and for the microorganism itself. The Patent Office granted patents for the
process and the medium' but rejected the claims for the microorganism.'
vi. The rejection was based on two grounds:
1. The Patent Office held the subject was a "product of nature" like a naturally occurring organism; and
2. It held that living matter was not patentable subject matter in general, whether or not man-made.
vii. On appeal, the Patent Office Board of Appeals upheld the denial of the patent by agreeing that living matter in
general was not patentable, reasoning that the 1930 plant patent statutes would have been unnecessary if living
matter were patentable.' The Court of Customs and Patent Appeals, however, reversed the Board's decision,
basing its reversal on an earlier holding that living matter was patentable. The government successfully
petitioned the SC for a writ of certiorari.
viii. Natural phenomena, such as natural minerals and gravity, were not patentable, according to the SC, because
they were "'manifestations of ... nature, free to all men and reserved exclusively to none."' The
microorganism, though, was distinguishable from natural phenomena: "[B]y contrast, the patentee [had]
produced a new bacterium with markedly different characteristics from any found in nature .... His discovery
was not nature's handiwork, but his own; accordingly it [was] patentable subject matter.
ix. […] the goal of the patent law has been to stimulate technological advancement, principally in the familiar
areas of mechanical, electrical and chemical technology. Although advances were also made in horticulture
and animal husbandry, the general perception was that plants and animals were ‘products of nature’ and
therefore not patentable. But over the past two decades, the advent of revolutionary techniques - permitting
the creation of micro-organisms that produce human hormones such as insulin, plants that are more resistant
to disease, and animals that produce human proteins used in the treatment of disease - have caused a
rethinking of this view.
x. In 1980, the SC's landmark decision in Diamond v Chakrabarty supplanted the conventional wisdom that
living organisms were not patentable. The case involved a Pseudomonas bacterium engineered to degrade four
of the components of crude oil. The Court held that the inventor, whose invention otherwise met the legal
requirements for obtaining a patent, could not be denied a patent solely because the invention was alive. The
Court ruled that the critical distinction was not between living and non-living entities, but between products of
nature, and human inventions. […] patentable subject-matter includes ‘anything under the sun that is made by
man’. With this broad statement, it seemed clear to the patent bar that any genetically engineered organism -
excluding humans, of course - would be patentable if it met the other requirements of the patent law.

Diamond v Diehr
xi. Until 1981, patent protection for software inventions in the US was relatively difficult to obtain. The Patent
and Trademark Office approached computer software as a written expression of a mathematical algorithm,
and hence adamantly opposed protection on the grounds that no one can have exclusive rights to mathematical
functions. But that year, the SC in Diamond v Diehr resolved the uncertainty by finding that, where a program
is novel, unobvious & involves more than a mathematical formula, patent protection is justifiable.
xii. Copyright protection has been accorded to the program code of computer software for several years. But
recently, courts have had to confront the issue of whether that protection should cover not only the exact,
literal expression of the program code, but the idea behind it as well - the so-called ‘look and feel’ of the
software as perceived by the operator. An analogous case would be extending a fiction writer's rights beyond
the written words to the plot and characters of the novel.
xiii. For ten years, courts have struggled to articulate a workable rule for drawing the fine line between expression
and idea. In two early decisions - Synercom Technology v University Computing (1978) and Apple Computer v
Franklin Computer (1983) - the courts held that, when the two did not merge because the idea could be
carried out by other forms of expression, then the expression itself was entitled to copyright protection. In two
more recent decisions - Whelan Associates v Jaslow Dental Laboratory (1985) and Broderbund Software v
Unison World (1986) - the courts have departed from that view and have held that the structure, sequence and
organisation (‘look and feel’) of the program were infringed even when the defendant had developed a similar
program in another language that operated on different hardware. Other courts, however, have refused to
follow such decisions.