The Hessian waste cover that was claimed under
Geo-Hess patent
Usually waste or dumpsites are well known to be covered by sheet material
such as plastics to avoid flying of dirt and germs. GEOHESS an UK
based company in view of present day global concerns on non-biodegradability
of plastics and anticipating the huge market demands of bio-degradable
covers sometime in 1994 filed an application for European Patent claiming
the use of Hessian (a jute variety) sheet as a bio-degradable cover
for waste.
How JMDC came to know about the patent
It was when a European company was threatened with
legal action by Geo-Hess for the use of hessian as cover for waste
that their UK based Patent Attorneys, Dummett Copp. sometime in 1999
realising that Hessian/Jute is a principal produce of India approached
Jute Manufacturers Development Council (JMDC) on possible assistance
to track some documentary evidences in India on prior use/knowledge
of use of Hessian for such/analogous purposes as waste cover to contest
the Geo-Hess patent. The matter was then referred by JMDC to their
Patent Attorneys S. Majumdar & Co. India for legal advise.
Under
advice of JMDC the available relevant documented prior art identified
in consultation with the Patent Attorney
S. Majumdar & Co. opposed the Geohess Patent before the
EPO, Opposition Division. The patent was challenged basically on grounds
of lack of novelty and lack of inventive merit.
On Novelty
A prior dated US Patent 4,909,667 which revealed the possible use of canvas as sheet cover for waste was cited. It was also evidenced that canvas was a well known variety of jute. Thus it was argued that jute based waste covers were known and hessian being nothing but a jute variety its use for same purpose was anticipated and the Geo-Hess patent lacked in NOVELTY.
On Inventive Step
It was argued that if 'canvas' was
known as waste cover, why should not the use of 'hessian' another
variety of jute for same purpose be obvious to a person in the art?
Under the advice of S. Majumdar & Co.,
the prosecution history of the Geo-Hess Patent was called which revealed
that initially GEOHESS at the time of filing their application had
broadly claimed for use/application of jute sheet (not only the hessian
sheet) as waste cover. It was due to the prior art on use of canvas,
a jute product, as waste cover that to qualify novelty claims were
restricted to hessian cover for waste. However, there could be no
inventive step substituting a known variety of jute (canvas) by another
known variety of jute (hessian). Insufficiently in disclosure to support
a selection patent was also taken up. It was demonstrated that the
claimed advantages of use of hessian cover in terms of adaptability,
economy and biodegradability were equally applicable to known canvas
covers. Thus the Geohess suggestion to change for canvas cover to
hessian cover was necessarily obvious to a person in the art.
Findings of EPO
The EPO opposition division based on the documented and substantiated case of the opponents that when canvas, a jute variety, was well known as waste cover there can be no invention in suggesting use of Hessian, another jute variety, for same purpose initially on 18th April,2001 issued a preliminary order, without requiring any oral proceedings, stating that the patent should be revoked as it prima facie lacked in inventive merit. However, Geohess continued to justify the grant stating that the documented use of Canvas covers did not render the claims on use of Hessian cover lacking in inventive merit since Canvas and Hessian were different varieties of jute fabric. Geohess even exhibited a sample of Hessian fabric to the Opposition Division to justify their case and pressed for an oral hearing. The EPO then decided to give Geohess the opportunity to be heard.The opponents in consultation with their Patent Attorneys S. Majumdar &Co. and their European Associates Roberts &Co.,UK contested the grant at the oral hearing .After hearing both the parties the EPO ,Opposition Division, finally confirmed its preliminary orders by way of the final order passed on 12th August,2002 revoking the patent on the ground of lack of inventive merit.It was held that hessian is no different from canvas in terms of its application and use as waste cover and hence the patent fails to qualify any inventive merit vis-à-vis the documented prior use of jute cloth (canvas) as cover for waste/dumping grounds. The Opposition Division further observed that it does not involve an inventive step to substitute finer and higher quality fabric by a stronger coarse cloth made of the same material, jute. The patent was thus revoked for lack of inventive step. The revocation of the European Patent has the effect of nullifying the Patent Rights of Geo-Hess in all its designated countries.
Business opportunities and opening
of trade barriers by the revocation order
While it is true that the GEOHESS
failed to justify patentibility in the present case, nevertheless,
the huge commercial success of such simple application of hessian
go to demonstrate how simple findings/application can have great business/commercial
implication. The trade and industry should thus gear up for such application
oriented R&D in India to foster business opportunities in the changing
knowledge based global market. The refusal of patent should also act
as a deterrent to the recent trend of patenting of traditional knowledge/uses
of known natural produces based on their well known characteristics.
Finally and most importantly, the EPO decision would go a long way
in setting guidelines for maintaining the required balance between
the need for Intellectual Property protection in keeping with the
present day TRIPS obligations, safeguarding traditional knowledge
from any monopolistic claims and ensuring fair and equitable global
business opportunities for all.
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