[2022] KEIPT 862 (KLR)

Metro-Poly Kenya Limited v Ratilal (IPT Case 97 of 2021) [2022] KEIPT 862 (KLR) (31 August 2022) (Judgment)

Neutral citation: [2022] KEIPT 862 (KLR)

Republic of Kenya

In the Industrial Property Tribunal

IPT Case 97 of 2021

Brown Kairaria, Chair, Pauline Muhanda & Frasia Wangari, Members

August 31, 2022

Between

Metro-Poly Kenya Limited

Applicant

and

Shah Suhash Ratilal

Respondent

Judgment

1. By a request dated 10th May 2021, in form IPT 14 brought [under section 103[1] of the Industrial Property Act 2001 and Rule 16[1] of the Industrial Property Tribunal Rules [S 2002], Metro–Poly Kenya Ltd [Requester/Applicant] seeks the revocation/invalidation of Patent grant number KE 861 titled ‘Wheel Assembly’ issued to Shah Suhash Ratilal [Respondent] by Kenya Industrial Property Institute [KIPI] on 18th October 2018 following an application for grant of patent NO. KE/P/2018/3024.

2. The grounds upon which the revocation is sought is set out in the body of the Request as follows;the invention disclosed in the patent [the alleged invention], at the time of its filing under application number KE/P/2018/3024, Not Newin terms of Section 23 of the Industrial Property Act. This is because the alleged invention was already part of the state of the-art in wheels at the time of the Patent Holder’s filing for a patent grant’’.

Requester’s Case 3. The Request for revocation is accompanied by a Statement of Facts signed by Karan Sagar a Mechanical Engineer by training and the Requester’s/applicant’s Managing Director setting out the facts relied upon in support of the application for revocation.

4. The applicant is a manufacturer of wheels, particularly wheelbarrow wheels with its headquarters in Eldoret Town in Uasin Gishu County, within the Republic of Kenya and is an interested person entitled to bring a revocation action within the contemplation of section 103[1] of the Act. The applicant has been manufacturing wheelbarrow wheels since 1994 when its predecessor started the business of wheel manufacturing. The applicant became aware of the existence of the subject patent around February 2021 when the Respondent contacted Karan [Applicant’s Managing Director] and claimed that he held a patent whose claims covered the features of the wheelbarrow wheels that Metro poly had started manufacturing in January 2021. This was then followed by a cease-and-desist letter dated 2nd March 2021 from the Respondent’s counsel. A certificate of grant of patent was attached to the letter. The Requester conducted a search at KIPI which confirmed the Registration. The patented invention was not new as at the filing date on account of the widely publicized and widely known state of the art in the wheel industry

5. For a patent application to be granted in Kenya it must satisfy the requirements of Section 23 of the Act i.e. the application must disclose an invention which is new, involving an inventive step and be industrially applicable. Novelty is the first criteria for the patentability of inventions. An invention is novel if it is not anticipated or disclosed by or in the prior art as at the filing date. The standard of Novelty in the Act is a worldwide Novelty meaning that everything made available to the public anywhere in the world by means of written disclosure, use, exhibition, or other non–written means will be considered as prior art, provided such disclosure occurred before the filing date of the application [s23[2] of the Act, the claims are what define the matter of protection.

6. The extent of patent protection for the subject patent lies in the claims set out in the subject patent application and an assessment of an invention’s novelty should primarily revolve around examining novelty in the patent claims. Patent examiners cannot be aware of all facts and circumstances that constitute a ground for invalidity after grant such as prior user. Different examiners may come up with different pieces of the prior art. For that reason, Patent legislation world over provides procedures for revocation.

7. The claims in the subject patent’s specifications do not disclose a new invention -claim 1: An improved solid wheel comprising a rim and a tyre molded into one single wheel that is intact

claim 2: As in claim 1 above with the rim made of rubber or plastic

-claim 3: As in claim 1 above with all the components of a tyre are included and molded into a single piece

claim 4: A method of manufacturing an improved wheel comprising use of rubber, plastic

Claim 5: As in claim 4 Above with the wheel resistant to corrosion

-claim 6: As in claim 6 above, where the footprint is of a plain grip

claim 8: As in claim 6 above, where the footprint is mud grip

8. The abstract accompanying the subject Patent’s specification document summarizes the subject matter of the patent;The invention relates to a wheel assembly comprising: a hub portion having a first end, second end a hollow cavity for receiving an axle therein, wherein the cavity extends from the first end to the second end of the hub portion;

A tyre portion comprising a solid non –inflatable tyre;

a disc member extending from the outer surface of the hub portion to the inner surface of the tyre portion so as to join the hub portion and the tyre portion

a road engaging tread portion so as to provide grip between the wheel and a road surface;

9. Wherein the wheel assembly is moulded of non-metallic Materials so as to form a unitary and solid non-inflatable wheel.

10. From the point of view of a person skilled in the art as far as wheels are concerned the invention disclosed in the subject patent in the patent specification documents is essentially a solid, composite, unitary and non-inflatable wheel that is made from rubber or plastic [non-metallic] materials. It is basically a wheel with all its constituent parts [ hub, disc member and tyre] made as if one part/singular part, all made from plastic or rubber. The drawings and pictures of the wheel said to be embodying the subject patent were produced as exhibit KS2.

11. The claims in the subject patent were not new as at the filing date; no novelty invention was disclosed in the subject patent; it was part of the art having long been disclosed, including in the following patents:United States of America [US] Patent Number US 1562674A titled solid tyre wheel filed on 23rd August 1923[the 1923 US Patent] [exhibit KS3]US Patent NumberUs4387070 titled Method of making the wheel with an integral tire filed on 22nd January 1981 and granted on 7th June 1983 [the 1981 US patent] KS4 stated to disclose an invention relating to a particularly an improved molded plastic wheel and a method of making the sameFrance Patent Number FR 2775933- one-piece solid wheel made of recycled rubber filed on 11th March 1998 [KS5]US Patentnumber US 2005126669 a –tire with deep tread grooved filed on 15th December 2003[KS 6On that basis, the Requester urges the Tribunal to find that the subject patent failed to meet the novelty requirement for a patent in Kenya under s23 of the Act and to revoke patent KE 861 as provided under Section 103[3] 1 of the Act.

12. The Request is backed by a statutory declaration sworn by Karan Sagar [27th August2021, Applicant’s Consolidated Statutory Declaration [Karan Sagar 5th November 2021], and Applicant’s Further consolidated statutory declaration by Dr. Isaac Rutenberg [26th November, 2021]. The Requester relies on these three statutory declarations together with the various documents attached thereto, the oral evidence tendered at the trial as well as the written submissions to support quest for revocation of the subject patent and in opposition to the Respondent’s request for a declaration of infringement of the subject patent. The Requester’s principal argument is that the subject patent was not validly granted.

13. Dr. Rutenberg states that the application ought not to have been granted because the results of the search report conducted by Stanley Atsali the examiner who conducted the substantive examination report based on the original 1-8 claims cited two references namely US005316377A[D1] and GB2229975[D2] both labelled as Y type references as applied to claims 1-8 which should have militated against the grant because they point to lack of novelty in the subject invention because as the search report explains Y-Type references are of particular relevance meaning that ‘’the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more other documents; such combination being obvious to a person skilled in the art’’. He further stated that from his experience as a patent agent that Y-type references cited in patent search reports are in practice used by an examiner to support a rejection of claims for lack of inventive step.

14. He concludes that the search report and the examination Report by the Examiner of the subject patent application are internally inconsistent to the extent that the examination report states that both D1 and D2 fail ‘to disclose an improved solid wheel that has all components of a tyre included and moulded into a single piece and finds that claims 1-8 meet the inventive step requirement for patent grant. In addition, he states that the claims in the amendment application were not subjected to further examination and he did not find any other search and examination. He states that he conducted a search of the literature and identified four references that he states disclose the claimed invention prior to the filing date of patent 861. These are captured at paragraph 9 [a] to [d] exhibit IR 4, in the statutory Declaration as follows, b US Design Patent D586071[Grantedon 3rd February 2009; a] U S Design Patent D586072 [granted on 3rd February, 2009, c US Design patent D570070[BGranted on 27TH May 2008 and US Design Patent D542003 [granted on 1ST May 2007]

Respondent’s Case 15. The application for revocation of patent KE 861 is vehemently opposed by Suhash Shah the Respondent in a reply and counterstatement dated 21st July, 2021 on groundsi.The revocation application is fatally and incurably defective as it is not based on the correct claims under which the patent was granted.ii.The Respondent is the legitimate owner of the patent under section 53 of the Industrial Property Act No. 3 of 2001 the Act] The application to register the patent was filed on 18 October 2018 underwent substantive examination and was advertised in the Kenya Industrial Property Institute journal of 31 July 2020. The date of the patent is23 July 2020. iii.The patent is novel, involves an inventive step and is industrially applicable as provided under the Act.iv.The Respondent denies that there is existing prior art that conflicts with the patent as grantedv.The analysis conducted by the applicant in comparing the patent to alleged prior art is unreliable in that the comparisons made are based on a set of different claims and not the claims under which the patent was granted. Furthermore, even in the event that the applicant had based the revocation application on the Respondent’s actual correct claims the alleged prior art is not in any way similar to the patent.

16. In addition to the grounds of opposition the Respondent addresses the matters in the Requester/applicant’s statement of facts at paragraphs 6 to 15 in the reply/counter-statement as follows; The respondent is a stranger to the contents of paragraphs 1-4 in the statement of facts. These paragraphs are to the effect that Karan Sagar is the Managing Director of Metro poly applicant, an applicant is an interested person entitled to bring revocation action under section 103 of the Act is a person aggrieved by the subject patent; the applicant is a manufacturer of wheels based in Eldoret and has been manufacturing wheelbarrow wheels since 1994 initially through its predecessor in title, and that Karan is a Mechanical Engineer by training well versed with the state of the art relating to wheels generally –the subject field of the subject patent.

17. The Respondent admits the description of the patent and asserts that it is the legitimate proprietor of the patent having filed for patent on 18th October, 2018 and grant made on 23rd July 2020. The revocation action is founded on wrong claims in respect of the patent and is incurably defective. The was novel as at filing date, patent was subjected to thorough examination by KIPI, met all the formal requirements, following which a certificate was issued on 23rd July, 2020, Agrees That assessment of a patent’s novelty must be grounded on the claims patent’s registered claims. But asserts that the claims set out in the statement of facts are incorrect, not reflective of the registered claims but the contents of the abstract are correctly stated. The cited prior art exhibit k3-1923 US Patent is manifestly different from the Respondent’s patent in that It comprises of a body a rim, and a solid tread as opposed to an entire solid unitary wheel assembly. The patent is also made of multiple materials comprising; veneer, rubber, fabric, soft rubber, thread and cushion thread while the patent is made entirely out of the same material, a more distinct difference is that the US 1923 patent does not include a hub which is a key part of the disclosed claims that form the patent. The Respondent denies any similarity between the patent with the 1981 US patent [exhibit Ks 4, the tyre disclosed in KS4 Is Made of The Same Plastic Material But Mechanically Joined To The Disc And Hub And Is Made of A Different Material, Unlike The patent which is made of a solid solitary Material. On KS 5 and KS 6 the Respondent denies any similarity with the cited prior art,

Infringement Action 18. The respondent filed a request in form IPT 16 under section 106 of the Act alleging infringement of patent 861 by Metro PolyKenya ltd. It is dated 29th June, 2021 seeking a temporary injunction to restrain Metro poly Kenya ltd from infringing patent no.861 and from manufacturing and trading in all products that infringe on patent no.861 pending the hearing and determination of the request, a permanent injunction to restrain the Metro Poly from infringing patent no.861, a mandatory injunction be issued to recall from the market and destroy or deliver up to the Tribunal all products that infringe on patent 861 and confirm upon oath such recall, delivery and destruction, general damages for infringement and lastly costs of these proceedings.

19. The Request under section 106 is accompanied by a statement of facts and supported by the Respondent’s consolidated statutory declaration sworn by Suhash Shah on 21st August 2021 and the Respondent’s statutory declaration in Reply sworn on 22nd December2021. The statement of facts elaborates the grounds upon which it is brought while the statutory declaration contains the evidence relied upon in support of the infringement and in opposition to the revocation action. Suhash Shah is registered proprietor of patent K861 A Wheel Assembly with a filing date of 18th October 2018. The patent application comprising of an abstract, specifications, and claims was reviewed by patent examiners at KIPI and a grant was Issued on 23RD July 2020 without opposition. The patent is novel and industrially applicable. It has been commercialized with a unique wheel that the Requestor trades in. Suhash has exclusive rights to sell or cause to sell for commercial purposes goods incorporating the patent, whose abstract states that the invention relates to a wheel assembly comprising a hub portion, having a first end, a second end and a hollow cavity for receiving an axle therein, wherein the cavity extends to join the hub portion and the tyre portion; a road engaging tred portion formed along the circumference of the outer surfaces of the tyre portion so as to provide grip between the wheel and a road surface: wherein the wheel assembly is moulded of non-metallic materials so as to form a unitary and the solid non-inflatable wheel’’

20. In January 2021 Suhash discovered that Metro poly had been manufacturing and offering for sale a wheel that resembles and incorporates the protected claims set out in the patent and is covered and anticipated by the patent without his license, consent or approval. It is further stated that Metro poly’s wheel is substantially similar to the patented wheel, it incorporates the proprietary features that are represented and disclosed in the protected claims set out in the patent, in particular, the Metro poly’s wheel is stated to be infringing the patented wheel in that;a.Is a unitary and solid non –inflatable wheel made of rubber, with rubber spokes built into the structure as protruding rectangular structures from the hub to the inner wheel with the only difference being that the spokes protrude slightly at an angle on the unitary wheel from the hub to the ends of the wheelb.Has a similar disc member extending from the outer surface of the Hub Portion To The Inner Surface Of The Tyre PortionSo as to join the hub portion and the tyre portionc.Similarly has a hub portion having a first end and a second end and a hollow cavity for receiving an axle therein, wherein the cavity extends from the first end to the second end of the hub portion andd.Incorporates a similar road-engaging tread portion marked by a groove along the circumference of the outer surfaces of the tyre portion performing the same function of providing grip –which is almost identical to the wheel only that it has additional grooves.

21. Good faith efforts to reach out to Metro poly to cease and desist were unsuccessful. A final demand was issued on 25th May 2021 which went unanswered. Suhash has not permitted Metro poly to exploit its patent and its continued actions of manufacturing and offering for sale the wheel comprising the features that are covered and anticipated by the patent violate his exclusive right to preclude others from, making, selling offering for sale, and using an infringing product or stocking such product for purposes of offering it for sale, selling or using the product which infringes the rights to the protected invention within the contemplation of section 54 of the Act.

22. The respondent filed a consolidated statutory declaration sworn on 21st October, 2021 containing his evidence to prove his infringement claim and in defense of the revocation action. Attached to the Respondent’s consolidated statutory declaration are 11 exhibits marked SS1 to 11. Also relied upon in evidence by the respondent is the Respondent’s consolidated statutory declaration in reply dated 22nd December 2021.

Response to the Infringement Action 23. The infringement action is opposed by Metro poly in a reply/counter-statement dated 10th August 2021 denying infringement on grounds that the patent no861 is invalid, and its acts do not infringe the patent as alleged or at all. It relies on further grounds set out in the grounds of opposition dated 10th August 2021, which essentially addresses the statement of facts relied on by Suhash in support of his infringement claim. It is denied that the wheel assembly subject matter of patent 861 is novel. The Requester is mistaken. The abstract does not provide the scope of protection and or exclusivity of the patent. Its wheelbarrow wheel does not resemble or incorporate the protected claims set out in the patent. patent infringement is based on patent claims which set out the perimeter of exclusivity granted, the features listed by the requester in the infringement action does not set out the patent claims, the two wheels are starkly different, and it does not require the authority or permission to make its wheel, the Respondent is not entitled to the reliefs sought and the infringement action should be dismissed.

24. The parties gave oral evidence at the trial which by and large is a restatement and elaboration on the matters set out in the statutory declarations. The parties also filed written submissions which we have taken into account in writing this judgement.

Issues for Determination 25. The parties have framed separate issues in their respective written submissions that capture the two broad issues arising from the pleadings for determination by the Tribunal in these proceedings. These are; a] whether patent no. 861 should be revoked on the grounds set out in the Request under Section 103 and b] whether Metro poly’s wheel infringes on patent 861 as contended by the Respondent in the Request under Section 106 of the Act.

26. The Requester has identified one main issue framed as follows; Was patent 861 validly granted to the Respondent in view of the evidence by the Requestor? In determining this issue, the Requester submits that the Tribunal must first address itself to and ascertain the claims that are subject of the patent KE861. The Requester raises a corollary issue namely; Does the Requester’s wheel subject of the infringement application infringe patent KE 861?

27. On the other hand, the Respondent has framed three issues substantive issues and two preliminary issues; The substantive issues are stated at paragraph 9 in the Respondent’s submissions. They are; a] Whether the Requester’s Revocation application against the patent is merited ‘b] Whether the patent has been infringed by the Requester and c] whether the Respondent is entitled to costs. The preliminary issues the Respondent submits are critical for the Tribunal’s consideration and are captured at paragraph 10 in the Respondent’s written submissions. They are two issues namely; Irrelevance of additional grounds of invalidity and revocation of the patent and inadmissibility of certain aspects of the Requester’s evidence in these proceedings.

28. We will deal with the preliminary issues first. The first of these is the alleged irrelevance of additional grounds of invalidity and revocation of patent kE861 which the Respondent submits are not pleaded in the request for revocation and the statement of fact accompanying it, were improperly introduced by the Respondent in its submissions, and as such the Tribunal should disregard them and should not make any findings on unpleaded matters or grant any relief that is not sought by a party in the pleadings. Reliance is placed on Civil Appeal Nos 5 and 48 of 2004v- Antony Francis Wareham t/a A F Wareham & 2 others v Kenya Post Office Savings Bank [2004] eKLR for the proposition that a party is bound by its pleadings.

29. The Tribunal agrees with and is bound by that proposition and exposition of the law. It is a good policy that parties be bound by their pleadings by which they isolate the matters in dispute that they seek the court’s determination. To allow parties to introduce new issues at the submissions stage would be to throw the party’ dispute wide open and cause havoc in the orderly conduct of proceedings and delivery of justice in accordance with the agreed rules. But is it true that the Requester has attempted to introduce additional grounds of invalidity and revocation of patent 861 through its submissions? Or do those issues arise directly and or by necessary implication from the party’s pleadings?

30. The issues that the Respondent contends are additional to the sole issue of lack of novelty are captured at paragraph 17 in the Respondent’s submissions where he states‘’ No pleading was made by the Requester in respect of the following grounds which the requestor now attempts to introduce in its submissions: a] That the patent was not validly granted; b] There were no substantive examination of the patent; c] That the claims in the patent are uncertain d] That the Respondent could not amend his claims or that the claims should not have been admitted; e] That the original claims are invalid on account of the finding by the examiner.

31. We have considered the parties’ pleadings captured in the earlier part of this judgement and are satisfied the five issues identified by the Respondent arise both directly and by necessary implication from the parties’ pleadings. The lack of novelty on account of prior art that the Respondent says is the sole ground of revocation cited in the request coupled with the assertion that the patent grant did not meet the statutory requirements of inventive step for grant is directly an attack on the validity of the grant for no patent grant can be validly granted under the Act if it is disclosed or anticipated in prior art. The Respondent understood it as such at the time he filed the reply/counterstatement where he states in response to the request for invalidationPar.3 The patent is novel, involves an inventive step and is industrially applicable as provided under the Act. The patent meets the requirements of part iii of the Act and validly exists on the register’’. More importantly, the Respondent filed an infringement action by a way of a request under section 106 [1] of the Act in which he alleges that the patent was regularly granted by KIPI upon consideration of the claims in his patent application in accordance with the provisions of the Industrial Property Act. The Requester has disputed the infringement action precisely on the ground that the subject patent was not validly registered and should be expunged from the register. It is noteworthy that one of the ingredients of infringement and which the patent holder must prove is that the alleged infringer has done any of the acts excluded under section 54 in respect of a validly granted patent.

32. The Tribunal does not find merits in the Respondent’s contention that the evidence of Dr. Rutenberg regarding the validity of the grant on procedural grounds as well as the citing of the additional prior art is irrelevant. The requester did not plead that the prior art cited in the statement of facts was the only prior art that disclosed or anticipated the subject patent at the time of filing. Furthermore, one of the grounds of opposition to the infringement action is that the subject patent is invalid. The Respondent has extensively responded to the contents of Dr Rutenberg’s Statutory Declaration in the Respondent’s consolidated statutory declaration. There is therefore no good legal or practical reason why that evidence should be disregarded especially when it concerns the validity of the subject patent. The policy of patent law is to protect only novel inventions. And the Respondent is duty bound to defend the novelty of its claimed invention to ward off the revocation action and to prove its own infringement claim. It is not enough to say that because the patent was granted then it must have been validly granted.

Analysis and Determination 33. From the pleadings, evidence and submissions both Parties appreciate that a consideration of the claims of patent KE 861 is key to the determination of the revocation and infringement requests. The claims to be considered are the claims of the granted patent for these are what define what the patentee sought to be protected in the application for grant and the scope of protection granted by the subject patent. It is the claims of the subject patent which are to be judged against the cited prior art as at the filing date to determine whether the claimed invention was new/novel and eligible for a patent grant or was anticipated by prior art and not patentable. In the same way it is against the claims of the subject patent that the features of the product or process alleged to be infringing are to be judged to establish whether they incorporate the essential integers/features protected by the patent.

34. The Requester has at paragraph 13 in the statement of facts stated the claims of the subject patent according to the patent specifications are as set out at paragraph 6 in this judgement. The Respondent disputes this in the Reply/counterstatement and assert the revocation action is not based on the correct claims under which the patent was granted but does not provide what he considers the correct claims in either the counterstatement or his statement of facts filed in support of the infringement action.

35. In our view the proper claims to be construed in the resolution of both the revocation and the infringement actions are the claims in the patent documents and not the claims as pleaded by either of the parties. For it is the claims in the patent application that the patent office is expected to consider for patentability before issuing the patent grant and once granted it is those same claims that define the scope of protection setting out the boundaries of the exclusive rights granted by the patent beyond which third parties are excluded from venturing without the permission or consent of the registered right holder. So, part of our task is to locate the claims of patent 861 in the patent application, once located we shall then test them for validity vis-à-vis the claimed prior art.

36. In evidence Karan Sagar [the Requester’s Managing Director] stated that the Requester conducted a search of patent number KE 861 at KIPI whose results are exhibited as KS 1. The search document contains inter alia the following details about the patent application;Application type: National Patent, Application NBR KE/P/2018/003024, filing date 18/10/2018, Status Granted [Due date 18/10/2038, Publication 31/03/2019 journal 03/2019, Registration Nbr 861, Registration date 24/07/2020, Entitlement date 18/10/2018, Expiration date 18/10/2038 Applicant 1. Shah Suhash Ratilal, Inventor Shah Suhash Ratilal, Title WheelAssembly Abstract; The invention relates to a wheel assembly [5] comprising a hub portion[10] having a first end[12], a second end [13] and a hollow cavity [14] for receiving an axle therein, wherein the cavity [14] extends from the first end [12] to the second end [13] of the hub portion [10]; a tyre portion [15] comprising a solid non-inflatable tyre; a disc member [16] extending from extending from that outer surface [18] of the hub portion [10] to the inner surface [19] of the tyre portion [15] so as to join the hub portion [10] and the tyre portion[15]; a road engaging tread portion[17] formed along the circumference of the outer surfaces of the tyre portion [15] so as to provide grip between the wheel and a road surface; wherein the wheel assembly is moulded of nonmetallic materials so as to form a unitary and the solid non-inflatable wheel. We observe that these are the same details of the abstract reproduced by the Respondent at paragraph 10 in the Respondent’s consolidated statutory Declaration sworn on 21st October 2021.

37. Attached to the search are a copy of the Certificate of Grant of a Patent dated 23rd July, 2020, certifying that a patent with Patent number KE 861 has been granted to Shah Suhash Ratilal of P.o Box 45913-00100 Nairobi, Kenya in respect of an invention disclosed in an application number KE/P/2018/2034 having a date of filing of 18/10/2018 and being an invention titled Wheel Assembly. Also attached are copies of what on the face of it appear to be pages of the patent application running from page 1 to 9. Page 9 of that document bears the heading ‘What is Claimed and reads;1. An improved solid wheel comprising a rim and

a tyre moulded into one single wheel that is intact2. An improved wheel as in claim 1, is characterized in that the rim is made of rub or of plastic3. An improved wheel as in claim 1, is characterized in that all the components of tyre are included and molded into single piece4. A method of manufacturing an improved wheel comprising of Rubber

Plastic5. A method of manufacturing an improved wheel as in claim 4 characterized in that the 20 wheel is resistant to corrosion6. An improved wheel as per any claims 1-5, characterized in that all the components of a tyre included and molded into a single piece7. An improved wheel as per claim 6, where the footprint in of a plain grip8. An improved wheel as per claim 6, where the footprint is mud grip

38. We note that these claims are an exact replica of the claims reproduced by the Requester at paragraph 13 in the statement of facts and paragraph 7 in the statutory declaration of Karan Sagar sworn on 27th August, 2021. They are also the original 8 claims referred to in the patent application and substantive examination report as well as the patent examination report [exhibit [IR2] in Dr. Isaac Rutenberg’s statutory declaration sworn on 26th November, 2021. [see page 9 of the patent specifications document which is part of IR2at page33]. A request for amendment of the application to KIPI on 30th June 2020 [Exhibit IR3 [page 46] in the Rutenberg statutory declaration]. The document containing the amendments runs from page 47 to 54. That document is the same document produced by the Respondent as Exhibit SS4 and described as a copy of the abstract, specifications and claims in relation to the patent in the Respondent’s consolidated statutory declaration dated 21st October, 2021.

39. The respondent has not tendered a copy of the application for grant no. 861 and neither has he produced in evidence a copy of its patent application, the substantive examination report and the patent examination Report to back his assertion that the patent was granted on the basis of the specifications and claims in exhibit SS4. The only patent application, substantive examination Report, and patent examination Report have been produced by the Requester. According to the substantive examination Report the patent was granted based on the original claims 1-8 in the patent specification documents. It is on the basis of the assessment of those claims 1-8 that the examiner recommended the application for a grant on 14/2/2021. The examiner cited two documents D1 US005316377A Floyd F Marrltling et al; May 31, 1994, and D2 GB 2229975: John Stirley et al April 02/1990. The results of the search conducted by the examiner showed that the claimed features in the two documents were relevant to claims 1-8 in the subject patent application. The search report produced in evidence indicates both documents in category Y. The Key to the search report explains that category Y in a search Report indicates a document of particular relevance; the claimed invention cannot be considered to involve an inventive step when the document is combined with one or more such documents, such combination being obvious to a person skilled in the art’’. In light of the findings in the search report, it is was quite inexplicable how the examiner could reach the diametrically opposite position in his report that the claimed invention disclosed an inventive step. We agree with Dr. Rutenberg that the examiner’s report is internally inconsistent. The grant was therefore not validly granted as it did not disclose any inventive step in light of the cited prior art.

40. We have also independently reviewed the cited prior art and we are satisfied that there is nothing new or novel in the subject patent as claimed in the original claims 1-8 or the amended claims. In the upshot we find and hold that patent number 861 was not validly granted for lack of novelty and order that it be expunged from the register. As there can be no infringement of an invalidly granted patent the infringement request by the respondent fails.

41. In conclusion the request for revocation of patent number 861 under section 103 dated 10th May 2021 is allowed with costs and the Respondent’s request under section 106 dated 29th June 2021 is dismissed with costs.

READ AND DELIVERED VIRTUALLY ON THE 31ST DAY OF AUGUST, 2022. Signed:Brown Kairaria - ChairmanPauline Muhanda - MemberDr. Frasia Wangari - Member