JCB loses excavation machine patent on challenge made by Chinese firm

The Indian Patent Office has revoked a patent of earth-moving equipment manufacturer UK-based JC Bamford Excavators Ltd (JCB) for an excavating and loading machine on a challenge by Chinese manufacturer GuangXi Liugong Machinery. The Patent Office also imposed a cost of Rs 10,000 on both parties for not keeping it informed regarding a suit filed in the Delhi High Court for infringement of patent.

The Chinese firm filed a post-grant opposition in 2013 alleging that the patent lacked novelty under various sections of the Patents Act. JCB failed to disclose to the controller information required under Section 8 of the Act, which mandates the patent applicant to file information regarding national patent filings in other countries soon after such a filing takes place.

The patent was granted for an invention providing JCB machines an advantage during movement and loading.
However, neither company informed the Patent Office regarding an infringement litigation related to the invention in the Delhi High Court even though hearings were on. Both parties later filed the decision of the High Court regarding the infringement suit and according to an official, the court had acknowledged a settlement between the companies to withdraw the post-grant opposition.

The Deputy Controller of Patents and Designs, Delhi, while issuing the revocation of the patent, observed that under the Patents Act, there was no provision for withdrawing  post-grant opposition filed under Section 25(2) and the court order was regarding a settlement towards the infringement suit and not towards post-grant opposition per se. The official observed that JCB had failed to inform the controller about an Australian application till December 2011, which was is beyond the prescribed period. 

The stipulation in Section 8(1) of the Patents Act and rules was not complied with. The order said the invention was novel and involved an inventive step according to relevant sections of the Act. "The order of the Delhi High court is regarding settlement between the parties regarding infringement of the patent right. The controller was kept in the dark regarding this suit filed in the High Court of Delhi during the processing of the opposition and the hearing given thereof. In view of the above, the Patent Number 251037 so granted is therefore revoked," said an order issued earlier this month.

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