Certificate Under Section 65B(4) Evidence Act Is A Condition Precedent To The Admissibility of Electronic Evidence-The Supreme Court.

Judgment Dated: July 14, 2020

ARJUN PANDITRAO KHOTKAR …Appellant Vs. KAILASH KUSHANRAO GORANTYAL AND ORS. …Respondents 
CIVIL APPEAL NOS. 20825-20826 OF 2017 CIVIL APPEAL NO.2407 OF 2018 CIVIL APPEAL NO.3696 OF 2018 

Supreme Court held that:

The certificate required under Section 65B(4) is a condition precedent to the admissibility of evidence by way of electronic record. Oral evidence in the place of such certificate cannot possibly suffice as Section 65B(4) is a mandatory requirement of the law. Section 65B(4) of the Evidence Act clearly states that secondary evidence is admissible only if lead in the manner stated and not otherwise. (Para 59).

Where the requisite certificate has been applied for from the person or the authority concerned, and the person or authority either refuses to give such certificate, or does not reply to such demand, the party asking for such certificate can apply to the Court for its production under the provisions aforementioned of the Evidence Act, CPC or CrPC. (Para 45)

A certificate under 65B(4) is unnecessary if if the original document itself is produced. This can be done by the owner of a laptop computer, computer tablet or even a mobile phone, by stepping into the witness box and proving that the concerned device, on which the original information is first stored, is owned and/or operated by him. In cases where the “computer” happens to be a part of a “computer system” or “computer network” and it becomes impossible to physically bring such system or network to the Court, then the only means of providing information contained in such electronic record can be in accordance with Section 65B(1), together with the requisite certificate under Section 65B(4). (Para 72) 

Judgment 

Legality of Reliance’s Jio advertisement featuring Hon’ble Prime Minister Modi

On September 2^nd 2016 (Friday), Reliance launched it’s one of the ambitious projects-Jio. Many of the leading newspapers i.e.The Times of India and the Hindustan Times provided a full (front page) jacket advertisement with Prime Minister Narendra Modi, dressed in a blue jacket, staring at them from under the words “Jio: Digital Life”-Dedicated to India and 1.2 billion Indians. 

For the purpose my analysis, I tried searching images of Hon’ble Prime minister of India Mr. Narendra Modi in Google. What I found is the current image which is used by Reliance for its ad Jio is an image of September 05, 2015, almost a year back. Prime Minister Narendra Modi, dressed in a blue jacket exactly that of the advertisement on September 2^nd 2016. The article titles as “Technology with creative thinking can change lives: Prime Minister Narendra Modi”. 

Previously photo uploaded on Sep 05 2015

For the convenience, please find the following link. 

Link: http://www.bgr.in/news/technology-with-creative-thinking-can-change-lives-prime-minister-narendra-modi/

Tough the ad states that: “Our Prime Minister’s vision is inspiring vision of digital India is one such movement, “Jio is a dedication to that Digital India dream of the Prime Minister, his vision for the 1.2 billion people of India.” Though being a lawyer, I completely understand that Prime Minister of India does not directly relate nor promotes the company in any way. However, two questions arise in my mind. First, whether a private company or public company for the purpose can use images of Hon’ble prime minister of India in its advertisement. Secondly, if there is a violation of copyright. 

Though this act of Reliance is criticized in the social media, let me analyze it from a legal perspective. 

Section 3 of The Emblems and Names (Prevention of Improper Use) Act, 1950(“EN Act”), no person shall, except in such cases and under such conditions as may be prescribed by the Central Government, use, or continue to use, for the purpose of any trade, business, calling or profession or in the title of any patent, or in any trade mark or design, any name or emblem specified in the Schedule or any colorable imitation thereof without the previous permission of the Central Government or of such officer of Government as may be authorized in this behalf by the Central Government. (Emphasis provided) 

For the purpose, 9A of the Schedule states that: The name of the name or pictorial representation of 10 [Chaatrapati Shivaji Maharaj or] Mahatma Gandhi 11[or Pandit Jawahar Lal Nehru], 12[Shrimati Indira Gandhi] or the Prime Minister of India 1[except the pictorial use thereof on calendars where only the name of the manufacturers and printers of the calendars are given and the calendars are not used for advertising goods].] (Emphasis provided)

Reading Section 3 of the EN Act states that no person shall use or continued to use any name or emblem specified in the schedule for the purpose of any trade, business or in any intellectual property like patent, trade mark or design without prior permission from the Central Government. Schedule 9A of the EN Act clearly includes the name of Prime Minister of India.  Reading Section 3 along with the Schedule suggests that No one should use the name of Prime Minister of India without prior permission from Central Government for the purpose of any trade, business or in any intellectual property like patent, trade mark or design. However, there is a clarification which provides that the Image of Prime Minister of India can be used on the calendars where only name of manufacturers and printers of the calendars are provided and the calendar is not used for any advertising goods. 

The penalty as mentioned in the Section 5 of the EN Act states that, any person who contravenes the provisions of section 3 shall be punishable with fine which may extend to five hundred rupees.

Well, analyzing the advertisement from the EN Act perspective, though it seems that Reliance violated Section 3 of the EN Act. However, the clarification provided in the Schedule stated that Image of Prime Minister of India can be used on the calendars where only name of manufacturers and printers of the calendars are provided and the calendar is not used for any advertising “goods”. It states that the name of the Prime Minister of India cannot be used for any purpose of advertisement for any “goods”. The advertisement of Reliance was for the purpose of “Services”, which may take reliance out of the purview of the EN Act. 

It is to be seen if the Company have taken prior permission from the Central Government or have relied upon the loophole provided in the EN Act or have considered and ready to pay the penalty which is negligible.  

Secondly, copyright holder of the image may consider options under Indian Copyright Act, 1957.

Comments are Welcome.

Patent search and its importance

Patentability and other relevant searches are important for Patents. The quality and enforceability of a patent depends upon the initial search. If a search is conducted diligently, then it becomes convenient at the time of prosecution and enforcement. Hence a through search is a must before filing a patent. Also, multiple searches at different stages in the life of a patent are necessary.

1.       Patentability/ Inventbility search
2.       Freedom to Operate (FTO) search
3.       Invalidity search
4.            Infringement search

Patentability/Inventability search: This search is conducted to ensure of the subject matter of the patent is patentable or not. This is a global search. Patents, literatures, articles, journals, books and relevant documents are considered while making a patentability search. In India, Section 3 provides a list of inventions which are not patentable. This search is required at initial stages of research. Even if the inventions fulfill all the criteria of a patent, however, if the invention does not pass the patentability search then the invention cannot be patented. The main purpose of conducting this search is to ensure that the inventions are patentable or not.

Freedom to Operate (FTO) search: This search is conducted to ensure if the invention is infringing or encroaching upon someone’s patent and if there are prior arts to make the invention obvious. FTO search may also refer as right to use search. The purpose of this search is to ensure that companies avoid IP infringements prior to commercialization of any product or process. The FTO search includes a comprehensive patent search to identify and analyse un-expired patents and published patent applications that are present in the jurisdiction of interest.

Invalidity search: This search is conducted to invalidate patents of any third party.

Infringement search: This search is conducted to see if any third party is infringing one’s patent.

The constitutionality of section 126 continue. ..

In the last post I discussed some of the issues particularly in reference to Art. 14 of the Indian Constitution. On continuation to that there are few other issues which are, and aren't directly related to violation of fundamental rights per se, but definitely add to the unconstitutionality of the section 126 of the Patent Act.  These issues are as follows:

1. The body selecting the patent agents: The patent office itself selects patent agents. It is well understood in law that the Controller (or proceedings before Patent Office) is a quasi judicial body. The Controller must just act judicially.  Various proceedings in front of Controller are judicial proceedings. All the natural laws are well applicable to any person appearing before the Controller and a writ may be filed if such rights are violated.

If Controller prohibits a person appearing on behalf of an applicant for not being a Patent Agent and sticks to the requirement of representation only by a Patent Agent, the Controller in effect, selects legal representation of opponents in matters before quasi-judicial authority, in which the Patent Office is itself a party. What does it sound? Violation of administrative principles of bias and violation of natural right by snatching best possible legal representation? What more? Article 14 is gone.

2. Article 19 violation;  I don't have much to say on this.  Reasonable restrictions of Article 19 must meet the test of Article 14. If there is violation of Article 14 and the subject matter also environs article 19 on common grounds, essentially it must violate article 19 as well.

The drafted section 126 and 127 suffers from lots of constitutional issues. This might be due to hurriedly drafted Patent Amendment Act 2005. I suspect that some of these issues might arise in Appeal (if Patent Office decides to appeal). Whatsoever,  I don't think apex Court should allow the petition declaring Section 126 of the Patent Act enforceable in law.
  

Meanwhile, I know of a RTI application filed asking clear guidelines in light of change in law and details related to the case. We will see more of this sooner.

Constitutionality of Section 126 of The Patent Act

Recently, Madras High Court decided on a matter concerning Section 67 (a) of the Patent Amendment Act, 2005. It held the 2005 amendment unconstitutional and unenforceable in law. The decision restores the deleted clause of section 126 back to the place and section 126 may now be read as:

Qualifications for registration as patent agents.—(1) A person shall be qualified to have his
name entered in the register of patent agents if he fulfills the following conditions, namely:— (a) he is a citizen of India; (b) he has completed the age of 21 years; (c) he has obtained a degree in science, engineering or technology from any university established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition,— (i) is an advocate within the meaning of The Advocate Act 1961 (25 of 1961; or (ii) has passed the qualifying examination prescribed for the purpose; or (iii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration; (d) he has paid such fee as may be prescribed.

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Reading through the decision was mazy and lead me to turn the pages multiple times to realize a probable miss-out. Anyway, I thought of writing down where Court might have missed pieces. Needless to say, it is also an opportunity to verify my understanding with all my readers. Your comments and suggestions are welcome.

First: the underlined and bold part of the section 126 quoted above:

The judgment reiterates, that the prior to the impugned amendment (that is amendment of 2005), any advocate could register themselves as the patent agent. This statement is factually wrong. ( and this statement actually create a doubt on the reasoning of the judgment and the obiter. I was actually lost thinking why would judge discuss law as social science? The amendment to the requirement of science degree was not even challenged in the writ petition!!) 

Even prior to 2005 amendment, the law as it stood was to make only those advocates eligible to be registered who held a degree in science/technology/engineering. Any Advocate was not eligible to be registered as Patent Agent. I am not sure if the whole judgement is based on this mistaken fact ! Well this anomaly typically is pretty much distraction while reading the judgment. (and while writing this blog as well !!). 

Coming to the constitutionality of section 126 of the Act. The judge struck down the 2005 amendment on the basis of Article 14, 19 and 21. I majorly agree on the conclusion of judgment, however, my reasoning may not be in congruence with the judgment and I independently have tried to see the constitutionality of the amendment and section 126.

Article 14 wrt 2005 Amendment:

 Article 14, being one of the Fundamental Rights, mandates equal treatment of persons before law. However, the state may choose unequal treatment if the state may justify the cause. Briefly speaking the Article 14 may legally be violated if it passes the two step test i.e.:

      a.   the enactment creates an intelligible diffrentia among the persons  

      b.      And that the intelligible differentia has a rational nexus with the object that the statue seeks to achieve through the legislation.[1]

The intelligible diffrentia must clearly indicate the group of people created and those who are clearly left out. The object of the enactment is gathered from the mischief the enactment has sought to remedy and is a two way step:

     1.      Determine the mischief that existed at the time of enactment.

      2.      How legislation has remedified that mischief with respect to the enactment.

Having said this, let us see the intelligible differentia in Section 126 and the object of the enactment.

Intelligible differentia: The Science graduates who have passed the Patent Agent Examination. Sounds Good!

Object of the Enactment: The object and reason section of the Patent Amendment Act, 2005 is silent in this particular context. The object of the statue can be gathered from section 127 which states rights (and hence duties) of the Patent Agent. Section 127 is enacted as:

127. Rights of patent agents. Subject to the provisions contained in this Act and in any rules made thereunder, every patent agent whose name is entered in the register shall be entitled-

(a) to practise before the Controller; and

(b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

Please note that section 127 doesn't mention any other object!! (No mention of understanding the invention, or clarifying the invention or technology or engineering or any other similar requirements).

Rational Nexus between the Differentia and Object: The intelligible differentia must have a rational nexus with the object of the enactment. This is where the 2005 amendment gets a blow. What is nexus between the drafting/pleading and transacting the documents in front of controller and being a science graduate? The answer is that a drafter or a prosecutor may be able to understand the subject matter more clearly and thoroughly. The next question is how an Advocate, (who by the way, is science graduate and trained to and certified by BCI to argue cases and represent the clients in District Court, High Court and Supreme Court in matters concerning the Patents and other laws!!) is not creating a better nexus with the object of the enactment? 

The unanswered question is more of question of fact. Are the science grads after passing a Patent Agent Examination are better versed to practice in front of Controllers than Advocates who are both lawyers and science graduates, and are certified by BCI after due diligence? What does Patent Agent Examination test? Knowledge in law or knowledge in technology or both? If the Patent Agent examination is designed so as to cover the aspects mentioned in section 127 of the Act, are aspects of section 127 alien to Advocates? Is the subject matter covered in Patent Agent Examination is not covered in Law Universities? What is more important, a specialized knowledge of the Patent Act or understanding of law in general, or both?

Well my opinion: The object gathered from Section 127 is not achieved by the Section 126, or at least there exist one class which is in equal or better position to create the intelligible differentia, and is left out. Eliminating a better qualified class to achieve the object of the statue is unreasonable classification. For example, P Rajendran v State of Madras, the Apex Court has denied the Constitutionality of the enactment when the intelligible differentia environed a lesser qualified person to achieve the object than more qualified person through the statue. Case is similar here. Again, legislature must reflect the nexus in the Act. Courts are not going to take the argument that it is Constitutional because some international treaty is in force. International treaties are not binding on any Indian Court

The point is simple and straight: Either the law is arbitrary, or the legislature hasn’t drafted the Act diligently to make the section 126, section 127, and object of the Act robust enough to withstand the test of Article 14.

I am not against the fact that the Patent Agents should have legal and technical skills in a well blend mixture; I am just cognizant of the fact that my law is not permitting this criteria as fundamental rights violation are not justified with the present shape of the enactment. Either law changes to bring a rational nexus or the enactment goes!! 

.

The 2005 amendment did violated Article 14 at least on rational nexus. There are some other parameters which might find force in unconstitutionality of Section 126 at its present form. I will give it a go right now for my next post.

[1] The test was clearly expressed by Das J in State of WB v  Anwar Ali Sarkar, AIR 1952 SC 75. The test has been repeated in different cases and is a strong established precedence in the Apex Court.

Form 27 of Indian Patent Rules, 2003: “Working” or “non-working”

Picture was taken from Here

As per notification no: CG/Public notice/2013/77*, dated 12th February 2013, which is available here. All patentees and licenses (whether exclusive or otherwise) are required to furnish information regarding the working of patented invention on commercial scale in India in form 27, within three months of end of each year. The Indian Patent Office has recently taken a serious note of the fact that compliance with this provision has been overlooked by a majority of patentees since long time.

Section 146 (1) of patent Act provides power to controller to ask for information from a patentee at anytime during the continuance of patent by notice in writing. This section casts a duty on patentee or a licensee (exclusive or otherwise) to provide information related to working of an invention on a commercial basis to controller in the form 27. As the wording of this section uses “and” Both patentee and license holders have to submit the form 27 duly filed. It is also required by the section that duly filled form should be submitted to patent office within two months of such notice by controller. Section 146 (2) of patent Act, mandates patentee & license holders to furnish information to controller, not less than six months from previous submission to controller. However, Section 146 (2) of patent Act provides controller an authority to publish the information regarding statements by patentees & license holder in the manner deemed fit. 

Section 122(1) (b) of patent Act states that if any person refuses or fails to furnish information under section 146 of patents Act shall be punishable with fine whish may extend up to ten lakh of rupees. Punishment here provided is compoundable.  Section 122(2) of patent Act states that if any person provides false information or statement which is false, shall be punishable with imprisonment which may extend to six months or with fine or with both. Punishment here provided is non-compoundable.  

Options available to Patentees & License holders: 

First option which is available to patentee & license holders is to provide the information as sought by controller within stipulated time(31^st March in this case). If the invention has not been worked upon, it’s high time that patentees & license holders should start working on the invention & state in the form 27 that invention is being worked upon and currently do not posses sales data, manufacturing data, import data & choose option of partly met public requirement. 

Consequences of providing false information to controller:

If Patentee & License holder chooses to submit the form by providing wrong information, then they shall be punishable with imprisonment which may extend to six months or with fine or with both. The very act of the Patentee & License holder will draw the attention of criminal procedure code. 

Consequence of providing information regarding “Non-working” of an invention:If 

Patentee & License holder chooses to submit the form by providing the option of patented invention ‘not worked”, then Patentee & License holder must state the reasons for not working and steps being taken for ‘working of the invention’.   

• The non-working of a patented invention on a commercial scale in India makes the patent vulnerable to compulsory licensing provisions under the Act, especially to the inventions which are recently granted. Applying & getting compulsory licenses are still at its nascent stage in India; however we also need to consider the growth & development of various aspects of technology as well as Intellectual property scenario. Practically speaking for compulsory licensing, it requires expiration of three years from date of grant, but non-working of invention will give an added advantage to the person applying for compulsory licensing. Any interested party who has been unsuccessful in procuring a voluntary license from the patentee can file an application with the Controller requesting for a compulsory license after expiry of three years from grant of the patent. Such person needs to establish the occurrence of any of the three conditions mentioned in Section 84 of the Act. One such condition is that the patent should have ‘not worked in the territory of India’. If the Controller is satisfied, he may grant the applicant a non-exclusive compulsory license for the balance term of the patent, unless a shorter term is consistent with public interest. The patent can subsequently be revoked after the expiration of two years from the grant of the compulsory license on application by any third party or the Government if it is established that the compulsorily licensed patent has not satisfied the purpose for which it was granted. 
• It is a well established fact that a patent is granted in order to encourage innovation and to ultimately serve the public interest, however, Controller cannot suo motu revoke the patent. Neither is ‘non-working’ a ground for revocation of a patent by a person interested under Section 64 of the Act. Therefore, non-working would not directly lead to revocation of patent. 
  
  "It is advised to Patenees & License holders to file form 27 duly filed for working of invention & in case, invention has not been worked upon, it is high time to look upon"