Tuesday, July 19, 2011
Guest Post by Tarun Khurana
Tarun Khurana, Partner in Khurana & Khurana, Advocates and IP Attorneys and its IP Consulting Firm - Institute of Intellectual Property Research & Development (IIPRD), has over 10 years of experience in Intellectual Property matters. In this guest post, he examines whether the Indian Patent Office has lived upto the expectation of granting patents which are enforceable.
The Indian Patent Act, 2005, like municipal statutes of other TRIPS compliant countries, incorporates the patentability grounds mandated under TRIPS. Decisions on patentability of an application during prosecution in one country have often been relied upon partially, if not completely, for determining patentability of allied applications in other geographies. Further special provisions such as those provided under Section 8 of the Indian Patent Act enable the Indian Patent Office to retrieve additional and more relevant information about the prosecution that happens with the foreign Patent Applications corresponding to the Indian filed national phase application. Even more, additional prior art available by means of results cited by ISR, literature/patents cited by the Applicant and earlier Patent/Prosecution History of the Applicant give way for searching more relevant and anticipating applications. Keeping all above pointers in context, is it not crucial for Indian Patent Office to try and grant patents which are enforceable and not susceptible to successful invalidity attacks. But is the Patent Office living upto the expectations?
Introduction of Target Patent
For the present discussion, let’s take an exemplary and recently Indian granted Patent X, having publication of grant in Feb 2011. In summary, the invention relates to address-based network communications and more specifically to determination of a prefix portion of an address. Abstract of the granted Patent states:
A network element (10) can retain a plurality of prefix identifiers as are used to formulate an address to be used by individual network users. Pursuant to a preferred approach, one or more of these prefix identifiers are pre-correlated to a given domain name while at least one other prefix identifier is pre-correlated to the absence of a domain name. So configured, a specific prefix identifier can be allocated for use by a given network user as a function, at least in part, of the domain name (or lack of a domain name) as may be presented by that network user when seeking to establish a network connection.
The first independent claim as granted as per the Indian Patent Office is:
A method comprising: receiving a communication from a network user seeking to establish a network connection; when the communication presents a domain name as corresponds to the network user: identifying a first prefix identifier as having been pre-correlated to the domain name; providing to the network user the first prefix identifier; when the communication does not present a domain name as corresponds to the network user providing to the network user a second prefix identifier, which second prefix identifier is reserved for use with network users that do not present a domain name.
As evident from the first claim itself, the invention relates to two scenarios of mapping between “Domain name” and “Prefix Identifier” or “IP Address” or “Network Address”:
i) In case the domain name is given by a network user, an IP Address corresponding to the same is returned back; and
ii) In case the domain name is not provided by the network user, a new/second prefix identifier is generated and provided to the user. This is typically a well known function of a DNS system, wherein the claimed novelty seems to relate to generating a second prefix identifier in case domain name is not presented by a user.
Due-Diligence Steps which could have been exercised:
As at the time of writing this article, the Application Status search of the Indian Patent was not working, I am assuming that as the patent was granted in Feb 2011, the First Examination Report was issued somewhere around Jan-Feb 2010. From a strategic perspective, would it not have made sense to see the prosecution status of the corresponding applications in geographies including EP or US, more so given the fact that Section 8 of the Indian Patent Act asks the Applicant’s to submit detailed updates on filing/publication/prosecution/abandonment/grant activities related to the corresponding foreign applications. It is to be noted that for the Corresponding application EP Y, the application was withdrawn by the Applicant on 28.08.2009, i.e. before the Indian Patent Office issued the FER. The same was the case in the corresponding US Application, wherein the Applicant itself failed to respond to the Final Office Action.
A close look at the cited portions of the Prior arts cited in the International Search Report, specially US 6324585, could also have given help in identifying anticipating documents, specially with the claimed subject matter being broad and relating to the overall functionality of a standard DNS system. Furthermore, prior arts discussed in US prosecution including ‘585 and US 2004/0258005 and US 2002/0172206 give clear pointers to claimed subject matter.
Furthermore, even if the above due-diligence was not considered worth, a very brief and quick search with the most basic keyword string (Dynamic AND "domain name" AND "network address") would have revealed many below like relevant patents, based on which the patentability of the subject matter involved could have been evaluated. Based on our quick due-diligence, we found following relevant patents that covers application X matter partly or wholly.
Exemplary and Illustrative Search Results
Search Result 1: US 6338082 - (Cited Portion for the first element of the independent claim which claims mapping between a domain name and a prefix identifier (IP Address)): A client of the DNS is called a resolver 114 . Resolvers 114 are typically located in the application layer of the networking software of each TCP/IP capable machine. Users typically do not interact directly with the resolver 114 . Resolvers 114 query the DNS by directing queries at name servers, which contain parts of the distributed database that is accessed by using the DNS protocols to translate domain names into IP addresses needed for transmission of information across the network. DNS is commonly employed by other application-layer protocols—including HTTP, SMTP and FTP—to translate user-supplied domain names to IP addresses….As part of a DNS query message, the DNS client 114 sends the domain name to a DNS server system 120 ′ connected to the Internet. The DNS client 114 eventually receives a reply, which includes the IP address for the domain name. The browser then opens a TCP connection 116 to the HTTP server process 120 located at the IP address.
Search Result 2: US 6425003 - (Relevant Cited Portion for the second element of the first independent claim which claims mapping between “no domain name” and a “second (new) prefix identifier”): If a match is found, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the matched service. If no domain match is found and the user is logged into an Internet Service, then the DNS request packet is modified to re-direct the DNS request to the DNS server configured for the first Internet Service found in the user's ASL. If no domain match is found and the user is not logged into an active Internet Service, then the DNS request is not re-directed, but rather forwarded unmodified.
Search Result 3: US 6,944,167 – Although relevant, to restrict length of the article, the cited portion is not presented here.
It would be appreciated that the above prior arts have only been given for exemplary purposes after a very brief search merely to draw relevancy to the concern and no comprehensive evaluation of patentability can be done based on these.
It further needs to be considered of how the first independent claim passes the bar for Section 3(k). The claimed method merely aims at providing a new IP address to a user request which does not have a domain name. The method clearly does not involve any change in structure of the mechanism of data/packet communication, or packet format, or increases the efficiency of transmission, or produces a tangible output in any manner whatever to qualify the concerned test and merely gives an IP address from a pool of prefix identifiers, a step that DNS is already is configured to do.
There are many more of such patents, which even though granted, might not live up to the expectations of the Applicant and be easy targets for invalidity. Also, there are many more allied issues that might crop up for discussion when more of such patents are evaluated for actual merit but the two I would last put across are:
Firstly, what worth would be such patents, both from enforceability and commercial perspective, if they would be invalidated the day they are litigated?
Secondly, what credibility would such Indian Granted Patents have if the Patentees themselves are not even confident that they would be able to enforce their rights when the need arises?