SPICY IP

Union Minister moots preventive detention as the answer to video piracy: Meet of Ministers at New Delhi on the 5th of December, 2009

2009-11-26T23:54:00.009+05:30

Over the last few weeks, news has been trickling in that the Union Minister for Information and Broadcasting, Ambika Soni, has proposed a meeting in New Delhi, on December 5th to discuss the possibility of bringing in a nation-wide preventive detention law to tackle film piracy. Apparently the Tamil Nadu legislation, which was the first legislation to introduce preventive detention as a solution to combat film piracy, has been a success and according to the Minister it should be replicated all over the country. The only upside of such a proposal is that it will finally put an end to the ridiculous USTR 301 reports on the status of IP enforcement in India. There is no other advantage of such legislation being implemented throughout India.

We have already commented, over here, on the suspect constitutionality of the state passing such a legislation. The Union Government however may have the powers to pass such a legislation. However copyright law falls within the domain of the Human Resources Development Ministry and not the Ministry for Information and Broadcasting. Ambika Soni must therefore be careful about peeving off Kapil Sibal with just draconian suggestions.

The more pertinent question, in my view, is whether or not such legislations are justified from the view-point of a sane person. As already described in this earlier post, preventive detention is one of those sad relics from the days of the British Raj. As described by the Supreme Court preventive detention is not a punitive but a preventive measure i.e. preventive detention can occur even before it is determined by a Court of Law as to whether or not a crime has occured. For a person to be detained under a preventive detention statute he does not even have to be charged with a crime and found guilty under the law. All that is required to make such an Order is a reasonable suspicion in the mind of the Executive. Once a person is detained under a statute his detention period is reviewed not by a Court of Law but by an Advisory Board and the period of extension can be extended for upto a maximum period of 12 months i.e. one year of your life lost on the basis of a suspicion. The worst part is that this entire draconian process has been given Constitutional sanction in the form of Article 22(3) of the Indian Constitution. So much for your Article 21 fundamental right to life and liberty!

The obvious question that poses itself at this juncture is why do we have such a ridiculous law and whether such a provision is justified in the fight against video piracy?

In answer to the first question I will have to confess that my understanding in regards the history of preventive detention is hazy. For those of you interest you must read this article on preventive detention in India. I do know that they had their origins in times of war i.e. a period when fundamenal rights are suspended in more countries. Post independence preventive detention statutes have been used mostly in the context of either National Security legislations where it is absolutely crucial to detain the accused despite there not being enough evidence to prosecute a trial sucessfully. The other kind of statutes are the Goonda Acts that are present in each and every state in this country. These kinds of statutes are basically aimed at throwing into jail suspect elements, such as your unfriendly neighbourhood rowdy, against whom your equally unfriendly neighbourhood policeman and prosecutor cannot possibly get enough evidence to successfully carry out a criminal trial. Basically such legislations provide an easy way out for a resource strapped state that does not have enough policemen or prosecutors or judges to carry out trials of tough cases.

Piracy and copyright infringement however is a completely different ball game. When a pirate is arrested he usually has atleast a couple of hundred pirated CDS with him – that's enough evidence to prosecute a successful trial and throw the pirate into jail for atleast a couple of years under the Copyright Act, along with a fine etc. etc.

A better alternative would be to use the newly introduced plea bargaining provision in the Cr.P.C. Plea bargaining basically allows the prosecutor to make a deal with the accused and spare the system the resources that are consumed by a full trial. Such bargaining allows the prosecutor to offers lesser prison sentences in exchange for a guilty plea. Usually when evidence is strong the accused will be more inclined to enter into a plea. Most interesting is the fact that the IMI an Indian body dedicated to fighting piracy has recently announced that it has sucessfully managed to use the plea bargaining provision to secure 12 lakhs as fines in a criminal case for copyright infringement. Excusing for a moment the morality of money deals under a plea bargaining provision, I believe that plea bargaining can prove to be an effective strategy in combating piracy.

To conclude preventive detentions statutes are a disproportional response to video piracy and it would be prudent for our political masters to stop for a minute and think before being swayed by the over-zealous Bollywood, Kollywood, Tollywood producers who are more inclined to blame the video pirate for their losses, instead of realizing that it is their incompetence which is responsbile for an equal share of not only their financial losses but also the loss of productive time of their patrons.
p.s. I would love to know from our readers in Chennai, the status of the booming piracy market at Burma Bazaar in Chennai – is it still doing booming business or has it been 'prevented' from doing the same?

SpicyIP Tidbit: Madras HC Records Issues in Bajaj-TVS Patent Dispute

2009-11-26T12:42:00.002+05:30

It was reported in the Business Standard yesterday that the Madras High Court has recorded 17 issues, 8 by Bajaj and 9 by TVS, to be argued before it in the twin spark plug ignition patent dispute. Foreign experts too are expected to be brought in for the case by both sides. Among the issues that TVS has raised, one is if a lean air fuel mixture constitutes an essential element of the patent as claimed by Bajaj.

Among the issues which Bajaj has raised, one is the territorial jurisdiction of the Madras HC. Readers may recollect that the Supreme Court had allowed sale of TVS’ bike Flame subject to maintenance of account of sales and had asked for early disposal of the suit by the HC.

Indo-US TKDL bilateral, and TK 'possibilities'

2009-11-25T22:45:00.004+05:30

Some months after India's access-sharing with the European Patent Office (EPO) on the Traditional Knowledge Digital Library (TKDL), the impact of which we had reported recently, the United States Patent and Trademark Office (USPTO) too now has been granted access to the database. (Image from here)

USPTO and TK from India

A brief look around the USPTO TK tools section shows this will not be the first Indian database that the examiners will have access to - if the links are anything to go by, the USPTO has already been using the open databases made available by the Central Council for Research in Ayurveda and Siddha (in five volumes of Ayurvedic Pharmacopia) and - interestingly enough - the Himalaya Healthcare herbs database. Nevertheless, the TKDL should widen the scope of search significantly.

Along with the TKDL access-sharing agreement, there was also a renewal of vows on the IP front, where the two governments have bilaterally agreed to focus on human resource development, capacity building and public awareness programs in intellectual property protection and enforcement.

Francis Gurry on the TKDL

Appropriately enough, as I write this, Mint has posted an interview with Dr Francis Gurry of the World Intellectual Property Organisation, who was on an India-visit recently, which, inter alia, refers to the TKDL and the work that CSIR has done in the field --

Dr Gurry, praising the TKDL, says -

"It is a very important and fine product that is being produced by the Council of Scientific and Industrial Research. It is a product that can make available to patent offices around the world on a confidential basis...detail of traditional knowledge to assist in preventing the granting of patents over that traditional knowledge by unauthorized parties. It is also a basis on which to establish potential collaborative arrangements with private sector or industry to actually use the traditional knowledge in practice. I hope to also collaborate with India to lead a process of establishing similar TKDLs using its approach in other developing countries that wish to use this methodology."

Tips from WIPO?

Note some key phrases in Dr Gurry's comments -- TKDL can make information available "on a confidential basis", and is "a basis ... [for] potential collaborative arrangements". There were concerns raised on this blog earlier of the vulnerability of such a database on opening up access - Dr Gurry is inclined to balance between keeping information confidential and strategically leveraging TK in collaboration with perhaps industry or the private sector. Is Dr Gurry hinting at how India and Indian industry to strategise in the times to come?

I would think there are already many players in the traditional pharmacopeia business in India, although there may be room for plenty more - perhaps game changers like Dabur or Himalaya or Hamdard could share a lesson or two in their experience with TK? I say this without knowing anything about their business models or resource bases, but there should be some case studies available at hand to explore the WIPO chief's proposition further?

International agreement by 2011-12?

On a related note, and in reference to the same interview, Dr Gurry has indicated there may be some form of "international architecture" on TK in about two years from now, once the negotiations on TK resume next month at WIPO. You will recall this is something we have briefly discussed on the blog, but this has mostly been at third remove courtesy folks in Geneva (e.g., KEI and IP Watch), who have been keeping a much closer eye on things.

Indian Company bears the brunt of Section 3(d)

2009-11-25T15:51:00.003+05:30

After a series of overseas pharmaceutical companies, it is now the turn of an Indian pharmaceutical company to bear the brunt of Section 3(d). The relevant patent relates to Clopidogrel Bisulfate claimed by Cadila Healthcare, a pharmaceutical company based in Ahmedabad. A pre-grant opposition was filed by Glochem Industries, a Hyderabad based pharmaceutical company. The instant writ petition has been filed by Glochem Industries alleging misconstruction and misapplication of the law. The judgment followed the interpretation of Section 3(d) in the Novartis judgment and laid down some procedural guidelines in relation to the opposition procedure. The series of posts on Section 3(d) can be found here.

Facts:
Clopidogrel (the image is the molecular structure of clopidogrel and it is from here) is an antiplatelet agent used in the prevention of blood clotting and in the treatment of cardiac ailments. Clopidogrel Bisulfate, a salt of Clopidogrel is marketed by Sanofi as Plavix. The instant patent application is with respect to Clopidogrel Besylate. The application was filed by Cadila Healthcare (respondent in the writ petition) in April 2003.

Glochem Industries (petitioner in the writ petition) filed a pre-grant opposition to the patent under Section 25 (1) of the Patents Act (henceforth the Act). The Assistant Controller ruled in favour of granting the patent. The writ petition was filed by the Petitioner, Glochem Industries alleging misconstruction and misapplication of the law in the context of Section 3(d) read with Section 25 (1) (f) of the Act by the Assistant Controller of Patents and Designs.

The Petitioner, Glochem Industries claimed that,
i) The respondent (Cadila Healthcare) failed to produce legal and admissible evidence.
ii) The respondent has failed to show enhancement of the known therapeutic efficacy.
iii) The Assistant Controller of Patents and Designs (Respondent No. 4) has misconstrued and misapplied Section 3(d).

The Respondents however argued that,
i) The Court cannot sit in appeal over the opinion of the Assistant Controller on technical issues.
ii) The Petitioners had a fair opportunity to pursue their objections before the Assistant Controller.
iii) The Petitioner had alternative and efficacious remedies in the form of post-grant opposition under section 25 (2), suo motu revocation under Section 64 and remedy under section 104.

Judgment:
The Court allowed the petition as the matter related to alleged misapplication and misreading of provisions of law.

The court held that even if the enquiry at the stage of pre-grant opposition is a summary enquiry as prescribed by Rule 55, adherence to principles of natural justice cannot be dispensed with. It was held that section 79 is applicable to all proceedings under the Act before the Controller and not limited to post – grant opposition proceedings. Section 79 provides that the Controller has powers to admit oral evidence in addition to or in lieu of evidence by affidavit. However the court said that since section 77 confers upon the Patent Controller the powers of the Civil Court, the Controller needs to first ascertain as to which evidence produced by the applicant can be looked into in order to answer the issue in question.

Moreover, the court observed that the evidence produced by the applicant should serve to show that the alleged invention enhances the “known efficacy” of the substance. In the opposition proceedings, the Petitioners objected to the consideration of the certain document as evidence. The Petitioners claimed that the comparative data produced by the Petitioners compared the pharmaceutical characteristics of Clopidogrel Besylate vis-a vis toluene solvate and dioxane solvate and not vis-à-vis solvated forms of Clopidogrel Bisulphate salt. The Court noted that these objections have not been considered by the Assistant Controller. The Controller had also refused to consider the averments of the Petitioner that there was no evidence to establish enhancement of therapeutic efficacy as required by Section 3(d).

The judgment then noted that the Assistant Controller had refused to apply the interpretation of Section 3(d) laid down by the Madras High Court in the Novartis case. Keeping aside the fact that the Assistant Controller had not considered comparative data with respect to Clopidogrel Bisulphate salt; the Assistant Controller had ruled that Clopidogrel Besylate constitutes patentable subject matter owing to increased stability, increased shelf life (over the bisulphate salt) and lesser toxicity in comparison to solvated toluene and diozane. The Court ruled that these factors however as per the Novartis judgment do not lead to enhancement of known efficacy in the context of “better therapeutic effect”.

The Court set aside the impugned order and directed the Assistant Controller to consider the arguments afresh.

Guest Post: The Power to Suspend the Operation of a Patent

2009-11-25T15:30:00.003+05:30

We bring yet another guest post by Mathews P. George, a fourth year student of NUJS.

As posted by Prof. Shamnad Basheer, IPAB has again stayed the operation of Ramkumar's patent covering dual SIM phones. I have argued in my earlier post that IPAB does not have the power to stay the operation of patent. In this post, I shall argue that the Order favouring the existence of such a power lacks logic and coherence. (Image from here).

Background:
The petitioner applied for revocation of patent under section 64 of the Patents Act, 1970. In the said revocation application, two miscellaneous petitions were being filed - a stay application and an application for urgent and early hearing. The Appellate Board passed a stay order suspending the operation of the patent till the hearing of the stay petition on July 13, 2009. The Madras High Court set aside this Order and directed IPAB to hear the stay application expeditiously.

Order:
The Tribunal considered the fact that the order passed by the Customs authority pertaining to the prototypes was wholly adverse to the respondent. The Tribunal held that an extremely strong prima facie case of breach of section 64(1) (j) existed and the patent was liable to be suspended in the interest of justice. Balance of convenience was also held to be against the patentee as the patent had not been put to use. It was also observed that the respondent neither filed a counter nor evidence against the appeal. Further, the respondent did not appear when he was given an opportunity of being heard. On the other hand, written submissions were submitted which were not enough to prove the non-existence of prima facie case. Considering these factors, the Tribunal stayed the operation of patent.

Can the operation of a patent be suspended?
In the instant case, the Appellate Board rejected the contention that it did not have the powers to suspend the patent. The provisions of section 95 of the Trade marks Act, 1999 have been made applicable in discharge of functions by the Appellate Board by virtue of section 117B of the Patents Act, 1970. The Appellate Board held that the conditions (a) and (b) enumerated therein [i.e serving copies of the appeal on the party against whom such appeal has been made and giving an opportunity of being heard] had been satisfied in this case. There is no condition in the statute pertaining to the filing of counter and evidence by the party against whom such an appeal is made. The Tribunal accepted the argument of the petitioner that in a strong prima facie case of invalidity of a trademark, the Tribunal had earlier interfered and suspended the rights in the registered mark [ Smt. Raj Rani Agrawal Proprietor of Bios Laboratory v. M/s. Parul Homeo Laboratory (P) Ltd. ORA/4/2008/TM/DEL]. Following this stream of reasoning, the Board dismissed the contention of the respondent that the interim order for stay of patent could not be issued till the filing of counter by the respondent.

The stream of reasoning employed in this Order lacks coherence and logic. A provision has to be interpreted in consonance with its text and context. If text is the texture, context is what gives it the colour. Neither can be ignored. The best interpretation is that which modulates the textual interpretation to its context. A statute has to be interpreted by exploring the intention of the legislature through the most natural and probable signs which are the words, the context, the subject matter, the effects and consequences and the spirit and reason of the law [District Mining Officer and Ors. v. Tata Iron and Steel Co. and Anr. (2001)7SCC358 & The Reserve Bank of India vs. Pearless General Finance and Investment Co. (1987)2SCR1]. In the instant case, the tribunal interpreted the provision without paying heed to its context. The Order has the effect of suspending the rights of patent holder in toto during the stated period. A bare perusal of the Order gives an impression that the Tribunal can exercise any power under Section 95 of Trade marks Act provided the conditions therein are met. This is an interpretation which does not consider the context for the following reasons:

• Firstly, section 53 which lays down the term of patent to be twenty years from the date of filing of application for patent, does not offer any other method for calculating the term of a patent. Consider a situation where a patent is suspended for a year. Will this loss of one year be considered while calculating the term of a patent? Further, does suspension of a patent mean that the patent can be infringed with absolute impunity during the tenure of suspension? Since the Patents Act is silent on these germane issues, it is difficult to impute IPAB with the power to stay the operation of patent.

• Secondly, the tribunal referred to some of its earlier Orders suspending the rights in the registered mark. Assuming the legal validity of the referred Orders, the drawn parallel is far-fetched. While the term of a trademark is indefinite (subject to renewal of registration of the mark), the term of a patent is finite (twenty years). In other words, the suspension of operation has an altogether different effect in case of patents.

• Thirdly, the interim stay of operation of a registered patent amounts to temporary revocation of patent. It has the effect of granting the prayer for final relief of revocation of patent under Section 64 of Patents Act. Interestingly, the Andhra Pradesh High Court in Hyderabad Chemical Supplies Limited v. United Phosphorus Limited and Anr (2006(6)ALT 515), on a similar prayer, declined to grant the prayer for interim suspension of patent. The Court observed that such an interim order has the effect of granting the final relief. The Court based its reasoning on the principle that such interim orders can be made only in “exceptional circumstances”. The Court, in the instant case, declined to bring in the prayer for interim suspension of patent under “exceptional circumstances”. The Court, however, did not define exceptional circumstances. The Tribunal did not at all refer to this jurisprudence in the instant dispute.

To conclude,
The Order sets a dangerous precedent. It is a different matter altogether that the patent in dispute is highly controversial and dubious. While some jurisdictions calculate the term of patent from the date of granting of patent, the Patents Act calculates the term of patent from the date of filing of patent application which takes on an average at least a year before the grant of patent. Considering this, allowing suspension of patents will result in harming the interests of the patent holders.

SpicyIP Scholar: IJLT-CIS essay competition on the interface between law and technology

2009-11-25T02:49:00.004+05:30

We have recently been informed that the Indian Journal of Law and Technology (IJLT), the flagship law and tech journal from the National Law School of India University, has announced an essay competition that is being jointly organized along with the Centre for Internet and Society (CIS).

The four themes on which essays may be submitted are as follows:

1. Criminality and Second Life: Dr. Jekyll and Mr.
2. Trademark and the Internet: Cybersquatting to the Goggle Adwords-Consim controversy - Reasonable Limits to Trademarks
3. 3G Services and Spectrum Allocation: Fair Competition, Welfare and Freedom of SPeech and Commerce on the
4. Easier to be criminals: Judicial and Legislative responses to cyber crime in India

As you can see there is atleast one interesting IP topic amongst the four.

The total, cumulative prize money is Rs. 16,500 (i.e. inclusive of all three positions) and an internship for the winner at CIS. Additionally the winning essay will also be afforded a chance to get published in the next volume of IJLT. Details of the essay competition can be accessed at: http://www.ijlt.in/

Definitely a competition that is worth taking part in and winning. May the best essay win!

SpicyIP Tidbit: Patent Agent Examination

2009-11-24T23:23:00.003+05:30

According to the patent office website, the patent agent examination is scheduled to be held on the 23rd of January, 2010 (which incidentally coincides with Netaji’s birthday) followed by viva-voce on the 24th. For more details on the pattern of the exam, please visit the hyperlink above.

Breaking News -- Delhi HC on jurisdiction and the Banyan Tree case

2009-11-23T22:00:00.002+05:30

A Division Bench of the Delhi High Court today made some key observations on jurisdictional issues in matters where the cause of action lies in that nebulous space called the World Wide Web. The judgement comes on a referral made by a Single Judge of the court last year in the Banyan Tree Case, which Kruttika had covered and analysed in a superb piece that you can read here.

In summary, the court held that merely accessing a website in Delhi would not satisfy the exercise of jurisdiction by the Delhi court. Rather, it has to be shown that the defendant "purposefully availed" itself of such jurisdiction, by demonstrating that the use of the website was with intent to conclude a commercial transaction with the site user, and such use resulted in injury or harm to the plaintiff. (Image from here)

The matter has now been placed again before the Single Judge to decide if in view of the law laid down in this judgement, and on the facts of the suit at hand, the plaintiff has been able to show prima facie that this court has the jurisdiction to entertain the suit. For a brief discussion of teh facts of the case, I invite you to read Kruttika's original post on this issue.

This post is more in the nature of an update, and will be followed by a lengthier analysis shortly.

However, for those of you who are curious to know more, I quote some key observations made by the Court in CS (OS) No.894/2008, which you can access in full from the Delhi High Court website here (choose Nov 23 2009 under the date-wise section) --

1. Mere accessibility of the Defendants' website in Delhi would not enable a court to exercise jurisdiction. A passive website, with no intention to specifically target audiences outside the State where the host of the website is located, cannot vest the forum court with jurisdiction. To such extent, the court has overruled the proposition in Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited 2003 (27) PTC 265 (Del).

2. ...[M]ere hosting of a website which can be accessible from anyone from within the jurisdiction of the court is not sufficient... Also a mere posting of an advertisement by the Defendant depicting its mark on a passive website which does not enable the Defendant to enter into any commercial transaction with the viewer in the forum state cannot satisfy the requirement of giving rise to a cause of action in the forum state.

3. The Plaintiff would have to show that the Defendant “purposefully availed” itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.

This is what caught my eye at first read. Be assured you have not heard the end of the Banyan Tree!

Bumpy Road Ahead

2009-11-23T05:25:00.004+05:30

The Financial Express recently reported that the Indian government has eased the norms on technology transfer from overseas firms to Indian companies, hoping that the move will encourage collaboration and effective exchange if know how. (“Tech transfer, royalty payment norms eased”)

Commenting on this move, Anand Sharma from the Commerce Ministry stated that, “Technical collaborations are commercial transactions. India needs to access the best of technologies available abroad. The caps were coming in this way. Hence we have liberalised the policy.”

According to the old policy, automatic approval was only permitted if the transfer of technology involved fees payment of up to $2 million, 5% on domestic sales of royalty and 8% for exports. Above these limits, the proposals were scrutinised by an inter-ministerial body viz. Project Approval Board (PAB) which was chaired by DIPP secretary. Automatic route was restricted on royalty from trademarks and brands upto 2% of exports and 1% of exports respectively.

The Government’s step in relaxing the norms means that the PAB is not required any more and the abovementioned regulatory framework can be done away with. New rules reflecting these changes, including rules for payments for royalty, lump-sum fee for transfer of technology, payments for use of trademark/brand name on the automatic route without any restrictions will be framed in due course. Hence, presently, no permission is required to transfer technology from foreign firms involving use of trademark, brand name as well as payment of royalty by collaborating Indian companies.

As far as a regulatory body is concerned, under the revised setup, a mechanism replacing PAB would be setup to monitor technology transfer compliance in 3 months with consultations between Dept. of Industrial Policy and Promotion (DIPP), Dept. of Economic Affairs and Reserve Bank of India (RBI).

Commenting on this new policy, Vatsala Kamat and others at Livemint write that while liberal economic policies give entrepreneurs more freedom, they can have unintended consequences for others. They critique the move on the basis that given this change would result in (possible) sharp increases in royalty outflows of listed multinational companies (MNCs), lowering their profit growth and even affecting their market valuation. Moreover, this change could also adversely affect the interests of the minority shareholders.

The main concern centers around the question: Should foreign companies charge Indian companies royalty at all? The argument is that after all, the foreign parent is the ultimate owner—even if it does not own 100%. The parent also gets dividend income and it also accounts for its share of profits. And most foreign products are adapted for local markets by the Indian company, which also invests significant sums in product and market development. They need not charge royalty to benefit from the subsidiary’s performance.

Using the following example they illustrate their point, there is a 51% foreign-owned company, with a profit of Rs100, dividend of Rs20 and royalty of Rs10. The foreign company can account for Rs51 as its share of profit, and its income is Rs81, after adding dividend and royalty. If the royalty is doubled to Rs20, lowering its profit, its total income will still be higher at Rs86. Hence, the losers will be the residual shareholders.

Their Warning: Watch out for a bump in “other expenditure” in the coming quarters—higher royalties could be the reason.

Harmonizing the interpretation of 'efficacy' in Section 3(d) with Article 27 of TRIPs

2009-11-23T02:35:00.005+05:30

As most of our readers may know Novartis has filed an appeal against the decision of the IPAB in the Glivec case. The decision of the IPAB is troublesome for several reasons which have already been listed out by Shamnad in one of his previous posts.

One of the principle questions of law before the SC in this appeal is going to be the interpretation of the term 'Efficacy' in Section 3(d). The addition of this term in Section 3(d) sparked of a legal battle between the Union of India and Novartis wherein the latter challenged the constitutionality of the provision. Apart from challenging the constitutionality of the provision Novartis also sought a writ of declaration from the Madras High Court declaring that Section 3(d) was incompatible with TRIPs. The Madras High Court judgment which ducked the TRIPS question, has been adequately analyzed in this article that Shamnad and I had co-authored for NLSIR.

Harmonizing the conflict between national and international law: The question that I would like to explore in this post is whether it is possible to interpret the Constitution and the precedents of the Supreme Court of India to conclude that in case of an ambiguity in an Indian legislation it is necessary to resolve this ambiguity by interpeting the provision in a manner which is consistent with international treaties to which India is a signatory. The sum and substance of my submission aims at arguing that given the ambiguity in the term 'efficacy' in Section 3(d) it should be interpreted in a manner consistent with India TRIPs obligations i.e. the term 'efficacy' needs to be interpreted in a TRIPS compliant manner. 'Efficacy' therefore should be interpreted in a manner compliant with the definition of 'inventive step'. Such an interpretation would require the Court to judge 'efficacy' as any improvement from the perspective of a person skilled in the art. Such an interpretation would render void the selective interpretation of 'efficacy' by the IPAB and the Madras High Court, both of whom have interpreted 'efficacy' as only 'therapeutic efficacy'. This interpretation is one of the reasons that Glivec was denied a patent despite the IPAB acknowledging that the beta crystalline form of imatinib mesylate (i.e. Glivec) demonstrated increased bio-availability, lower hygroscopicity and greater thermodynamic stability. The only problem with these improvements was that none of them contributed to 'curing the disease' as required under the IPAB's definition of therapeutic efficacy.
The advantage of couching the arguments in the above terms is that it in case it fails the Supreme Court will pretty much be forced to declare that Section 3(d) prescribes criteria above and beyond Article 27 thereby paving the way for a succesfull challenge of Section 3(d) before the WTO Dispute Settlement Body (DSB).

Now comes the difficult part, explaining the proposition of law that requires the Supreme Court to interpret municipal law such as the Patents Act, 1970 in harmony with India's international obligation such the Agreement on Trade Related Intellectual Property (TRIPs).

Constitutional Provisions: The principle provisions of the Indian Constitution that are of relevance here are (i) Article 51(c), Article 253 and Article 73.

Article 51(c) states that “The State shall endeavour to foster respect for international law and treaty obligations in the dealing of organized people with one another”. It must be noted that Article 51 is a Directive Principle of State Policy and as such is not justiciable in a Court of Law. It is only meant to guide the State.

Article 253 states that “Notwithstanding anything in the foregoing provisions of this Chapter, Parliament has power to make any law for the whole or any part of the territory of Indian for implementing any treaty, agreement or convention with any other country or countries or any decision made at any international conference, association or other body.”

Article 73 states that “Subject to the provisions of this Constitution, the executive power of the Union shall extend – (a) to the matters with respect to which Parliament has power to make laws and (b) to the exercise of such rights, authority and jurisdiction as are exercisable by the Government of India by virtue of any treaty or agreement”.

As a result of Article 73 read along with Article 253 the Union Government is empowered to enter into any treaty on behalf of the Union of India. Once the treaty has been signed by the Union Government it creates an international obligation on India. Such international treaty is automatically incorporated into Indian jurisprudence unless it conflicts with municipal law. Article 51(c) of the Indian Constitution as pointed out above requires the State to make every “endeavour to foster respect for international law and treaty obligations”. The inevitable question therefore is which law will triumph in case of a conflict between international law and national law?

The answer to that is simple – in case of an apparent conflict national law will triump over international law.

Supreme Court Precedents: This proposition was laid down in the Supreme Court case of Gramophone Company v. Birendra Pandey (1984) 2 SCC 534 which in pertinent part held that “National Courts will endorse international law but not if it conflicts with national law. National courts being organs of the National State and not organs of international law must perforce apply national law if international law conflicts with it.”

The same judgment also states that “There can be no question that nations must march with the international community and the Municipal law must respect rules of International law even as nations respect international opinion. The comity of Nations requires that Rules of International law may be accommodated in the Municipal Law even without express legislative sanction provided they do not run into conflict with Acts of Parliament.”

In the case of Vishaka v. State of Rajsthan (1997) 6 SCC 241 the Supreme Court held that “Any International Convention not inconsistent with the fundamental rights and in harmony with its spirit must be read into these provisions to enlarge the meaning and content thereof, to promote the object of the constitutional guarantee. This is implicit from Article 51(c) and the enabling power of the Parliament to enact laws for implementing the International Conventions and norms by virtue of Article 253 read with Entry 14 of the Union List in Seventh Schedule of the Constitution.”

M.P.Jain a leading commentory on constitutional law points out two more pertinent judgments:

(i)In the landmark case of Kesavananda Bharti v. State of Kerala AIR 1973 SC 1461 the then Chief Justice observed the following in regards Article 51: “It seems to be that, in view of Article 51 of the Constitution, this Court must interpret language of the Constitution, if not intractable, which is after all a municipal law, in the light of the United Nations Charter and the solemn declaration subscribed to by India.”

(ii)The minority opinion in ADM Jabalpur v. Shukla, AIR 1976 SC 1207, which is worth its weight in gold, observed that “Equally well established is the rule of construction that if there be a conflict between the municipal law on one side and the international law or the provisions of any treaty obligations on the other, the courts would give effect to municipal law. a construction which would give rise to such inconsistency unless compelled to adopt it by plain and unambiguous language.If however, two constructions of the municipal law are possible, the courts should lean in favour of adopting such construction as would make the provisions of the municipal law to be in harmony with the international law on treaty obligations. Every statute, according to this rule is interpreted, so far as its language permits, so as not to be inconsistent with the comity of nations on the established rules of international law, and the court will avoid ”

Conclusion: All of the above provisions and precedents clearly point towards a tendency amongst Supreme Court judges to harmonize the conflict between national and international law. Therefore if in case it is argued that Section 3(d) is in conflict with Article 27 of TRIPs the Supreme Court will attempt to harmonize this conflict by defining 'efficacy' in terms of 'inventive step' in Article 27. If they do decide to interpret 'efficacy' in terms of the Article 27 criteria then in that case this artificial distinction between 'therapeutic efficacy' and 'clinical efficacy' will not not stand for any longer. However if the Supreme Court is of the opinion that the conflict cannot be harmonized it will have to necessarily declare that Section 3(d) is beyond the scope of Article 27. In doing so the Supreme Court may endorse the IPAB definition of 'efficacy' and deny Glivec a patent. In a way Novartis wins either way in the sense that even if they lose the case, they will atleast be able to call the Indian Government's bluff on TRIPs compatibility. This in turn would make it so much easier for Section 3(d) to be challenged at WTO DSB.

Contd...Delhi High Court rules on Section 47: Provides the Indian Railways a carte blanche to bust patents

2009-11-20T00:10:00.009+05:30

Continuing from the last post on Justice Murlidhar's Order, this post will attempt to understand the Delhi High Court's interpretation of Section 47 of the Patents Act. As already explained in the earlier post one of the primary arguments of the Defendants was that Defendants 2,3 & 4 were manufacturing the infringing product on behalf of Defendant No. 1 (The Ministry of Railways) who had supplied the drawings of the product.

Defendants Arguments: It was argued by the Defendants that Section 47(1) which states that the grant of a patent under the Patent Act shall be subject to the condition that any machine appartus etc. may be imported or made by or on behalf of the Government for the purpose merely of its own use exempts the Railways and its agents from being held liable for infringement under Section 48 of the Patent Act.

Plaintiffs Arguments: The Plaintiffs decided to counter this by repeatedly stating the contents of Section 156 of the Patent Act i.e. the patent shall bind the Government. They also seemed to have put up a feeble defence on the basis of the Bombay High Court decision in the Garware Wall Ropes Ltd. Case. This case is discussed below.

The Delhi High Court's ruling: In its Order the Delhi High Court sided with the Defendants by ruling that Section 47(1) would bar the Plaintiff from “seeking to prevent Defendants 2 to 4 from making the subject device since it is going to be manufactured and supplied only to the Railways for its own use”. The Court therefore concluded that the Ministry of Railways was the 'Government' as understood by Section 47 of the Act and that the infringing products in question were being manufactured on behalf of the Government and for the use of the Government itself. Going by this interpretation of the Delhi High Court one would have to conclude that the Government and its undertakings are completely exempt from infringement proceedings thereby implying that the Government and its agents are not required to pay a single penny in royalties to any patentee.
Clearly the above interpretation is a very suspicious, if not alarming interpretation, of the Patents Act. The Delhi High Court has basically given the Government and its undertakings a carte blanche to bust any patents that they so desire.

I'm still scratching my head trying to understand how and why, both, the Plaintiffs and the Delhi High Court failed to make the obvious distinction between Section 47 and Section 100 of the Patent Act. This distinction was made in an excellent order of the Bombay High Court in the case of Garware Wall Ropes Ltd. v. A.I.Chopra 2009 (111) Bom LR 479.

Sai had covered this Order in an equally excellent post that can be accessed here.
The Order itself can be accessed here.
The most crucial distinction between Section 47 and Section 100 is that while Section 47 does not requires the payment of any royalty, Section 100 requires the Government to pay a certain royalty for the use of a patent.

The Garware Decision: In its Order the Bombay High Court distinguished between these provisions on the grounds that while Section 47 allowed the Government to use a a patent 'merely of its own use', Section 100 of the Act uses the term 'for the purposes of Government'. As per the Bombay High Court the former implies the use of the invention directly by the Government or its Departments in performance of the duties assigned to them. The Bombay High Court reasoned that Section 47, was limited to sovereign functions and would not cover the Railways or its contractors. Although the Judge does not clearly support this aspect of its Order with enough reasoning I think he was trying to imply that the Railways was not part of the Government but was instead a Government undertaking which was carrying out a non-sovereign function. Moreover it is also important to note that while Section 99 extends the 'Government use' to even Government Undertakings, Section 47 uses only the word 'Government'. As per this interpretation of the Bombay High Court, Section 100 ensured that the Railways had to pay a royalty for exploiting a patent.

If this aspect of the Order is not overturned the Indian Railways is free to bust as many patents as it wants and the same will be highly detrimental to investment in innovation in the railway sector in the country.

Delhi High Court rules on Section 8 and 47 of the Patents Act: Lack of disclosure under S.8 = No interim injunction

2009-11-19T23:30:00.010+05:30

Thanks to Sumathi's wizadry over Google we have for your viewing pleasure yet another Order authored by Justice Murlidhar on two very crucial provisions of the Patents Act – Section 8 & Section 47 (In this post I'll cover only the Section 8 aspect, the Section 47 aspect will be covered in a subsequent post – for now let it suffice to say that the patentee lost the case on both sections).
The Judgment can be accessed here at the website of the Delhi High Court.

The Judgment can also be accessed here at India Kanoon website.

The Facts: The brief facts of the case are as follows: The Plaintiff in this case, an American corporation by the name - Chemtura Corporation - were granted Indian Patent No. 213608 for a 'Side bearing Pad' that is “specifically directed to devices that dampen lateral rolling motions that occur during the movement of railroad cars”. The equivalent US Patent is 7083165 and can be accessed here.

Defendant 1 was the Union of India through the Ministry of Railways and its Original Equipment Manufacturers. Defendant No. 2,3 & 4 used to be licensees of the Plaintiffs before they began to independently manufacture and sell to Defendant No. 1 the allegedly infringing product.

On the first day of hearing, in May 2009, the Plaintiffs were granted an ex-parte ad-inteim injunction restraining Defendants No. 2, 3 & 4 from infringing the Plaintiff's suit patent. Subsequently the Defendants sought vacation of the interim injunction on a host of grounds, the main being, supression of facts before the Patent Office. They also claimed the Section 47 – 'government use' defence.

Justice Murlidhar through his Order dated August 28th, 2009 vacated the injunction with some damning findings against the Plaintiffs.

Plaintiff's Averments: As already mentioned above, the invention claimed that the suit patent, is aimed at dampening the roll forces experienced by a two stage suspension system of a railroad carriage. The invention at suit does so by absorbing and cushioning compression forces. The suit patent was granted to the Plaintiffs after the Patent Office carried out a due examination under Section 12 and 13 of the Patents Act. In order to establish a prima facie case of patent infringement the Plaintiffs pointed out that the drawings of the product, submitted to the Railways Board as a part of the tender process, clearly established that the Defendants were infringing atleast Claim 1 of the suit patent. In order to bolster its argument the Plaintiffs produced an expert witness affidavit. The expert in his affidavit testified that the Defendants product had all of the features required by at least Claims 1,3,6 and 14 of the suit Patent.

Defendant's Averments: The Defendants for their part viciously attacked the validity of the suit patent claiming that the suit patent was bad in law especially since the Plaintiffs had witheld crucial information from the Patent Office. I wish I could explain this in greater detail but the relevant part of the judgment i.e. para 16 is incomplete. The sum of the submission was that the Plaintiffs were forced to narrow their claims, before the EPO and the USPTO because of the prior art cited against them and that the Plaintiffs witheld this information from the Indian Patent Office thereby creating a very strong possibility of their patent being invalidated on the grounds of Section 8, which requires the patentee to keep the patent office appraised of all foreign patent prosecutions.

The Defendants also pointed out that while the USPTO and EPO pointed out several prior art documents forcing the Plaintiffs to restrict the scope of their claims, the Indian Patent Office for its part, had failed to raise any objections of a similar nature thereby implying that the patent office had not carried out a thorough search. This automatically brings into doubt the validity of the patent.

The Scope of Section 8 of the Patents Act

Section 8 of the Patents Act which is titled 'Information and undertaking regarding foreign applications' is a provision which will prove to be the Achilles' heel for all Indian patentees. This provision requires all applicants to furnish the patent office with an undertaking that upto the date of grant of patent in India the Controller would be informed in writing, from time to time, detailed particulars in respect of every invention if any filed in any country outside India. The Section also gives the Patent Office the power to order the applicant to provide at any time before the grant of patent any information regarding the 'processing' of the application in a country other than India.

The Defendants for their part alleged that only did the Plaintiffs fail to make a Section 8 disclosure on their own but also blatantly mislead the Patent Office when the Patent Office sent them a Section 8 letter, dated 20th October 2004, requesting them to disclose “details regarding the search and/or examination report including claims of the application allowed.... in respect of same or substantially same invention filed in any one of the makor patent office such as USPTO, EPO and JPO etc.” The Plaintiffs had replied to this request stating that there had been no further development subsequent and thus no further information was required to be submitted.

The Plaintiffs attempted to argue that as of the date of their reply to the Patent Office no grant of patent had been made by either the USPTO or the EPO and that the requirement of furnishing the information as asked for by the Controller, was required to be submitted only when a patent had been granted by such Foreign Patent Offices. The counsel for the Plaintiffs – Mr. Shanti Bhushan – also pointed out that the word 'status' used in Form 3 (the procedural form corresponding to Section 8) only required the Plaintiff to indicate whether the applicantion for patent in a country outside India was pending, allowed or dismissed. He urged before the Court that if every stage of the application in a country outside India has to be disclosed to the Controller of Patent it would make his task impossible and cumbersome.

The ruling on Section 8: The Court however shot down the Plaintiff's arguments and stated that this was exactly the requirement of Section 8. It went on to state in no uncertain terms that the Patent Applicant was required to have furnished any and all foreign search reports in his possession at the time of his reply to the Patent Office's request on the 17th of October, 2005. In the facts of the present case the USPTO had issued multiple Office Actions since the Plaintiff's patent application was repeatedly rejected until the claims were finally narrowed down to an acceptable limit. The fact that all of these amendments took place before the 17th of October, 2005 fatally affected the Plaintiff's case.

Conclusion: Given the obvious suppression of vital information Justice Murlidhar held that there was a prima facie ground to revoke the grant of the patent under Section 64 and held that the IPAB was at liberty to decide the same in the revocation petition filed by the Defendants. The only option left before the Patentees is to amend and narrow the claims before the High Court. This order is of some significance since it is one of the few orders on Section 8 of the Patent Act, 1970. Future patentees will now have to be extremely careful about their Section 8 disclosures.

The Section 47 aspect of the judgment will be covered in a subsequent post.

Panel Discussion on Bilski

2009-11-19T00:03:00.001+05:30

The Program on Information Justice and Intellectual Property (PIJIP) Washington College of Law, American University and the Federal Circuit Bar Association (FCBA) will host a panel of experts to discuss the much debated Bilski v. Kappos on November 19, 2009,4.30 pm-6.30 pm, EST. This is being made possible due to outstanding efforts of Prof. Josh Sarnoff of Washington College of Law who has written extensively on the matter here and here .

The case essentially throws light on the limitations on patentable subject matter in matters of business method innovation. The panel discussion will therefore aim at scrutinizing the repercussions of the decision in Bilski on innovation, prosecution, licensing and litigation.

Panelists for the session include:

• Raymond T. Chen, Solicitor, U.S. Patent and Trademark Office

• J. Michael Jakes, Counsel for Respondent

• Finnegan Henderson, Counsel of Record for Petitioners,

• Nancy Linck, Rothwell, Figg, Counsel for Amicus Curiae BIO,

• Randolph Moss, WilmerHale, Counsel for Amici Curiae Bank of America

Moderators:

* Thomas C. Goldstein, Akin, Gump, Counsel for Amicus Curiae American Bar Association

* Professor Joshua Sarnoff, Washington College of Law, American University, Counsel for Amici Eleven Law Professors and the AARP

The discussion would be followed by a Q and A session and a reception with the panelists.

PIJIP and FCBA will also be broadcasting the program live via web on November 19, 2009 as a part of its Regular Horizon Series. They are priced as follows:

• Private Practitioner-$105 (non members); $65 (members)

• Government/Academic/Retired-$35 (non member); $15(members)

For registration and participation, please follow the instructions below:

• To register and participate via internet at a “discounted” price, please visit here

(registration password : FCBAbilski09)

• To participate On Site, please visit : here

• For FREE internet participation for university law schools and special group pricing , please contact Elisabeth Reed at reed@fedcirbar.org ( reed [at]fedcirbar dot org)

For more info on the event , do visit here

This promises to be a really interesting event!

Copyright Access for the Disabled and Collaborative IP Policy

2009-11-18T10:49:00.011+05:30

In previous p osts, we covered the Right to Read Campaign, a campaign aimed at increasing access to copyrighted works for the print impaired. As many of you know, most works of literature, science and the arts are practically out of bounds for the disabled, unless converted to readable formats such as Braille or digitized and accessed via expensive screen reader software such as JAWS.

Recently, this campaign, the brainchild of CIS and Inclusive Planet, came home to us at NUJS, Kolkata and I was amazed to see the bonding between these children of a lesser god and their struggle to transform society into a more inclusive one. NUJS was particularly fortunate to host this campaign that day, as we have a student (Moiz Tundawalla, who ranks in the top 5 of his class) as well as a faculty member, Dr TV Sudhakar, who are visually impaired.

As part of the campaign, a group of us including Rahul Cherian of Inclusive Planet (and the brain behind Bookbole, one of the most innovative solutions yet catering to the needs of the visually impaired), Sunil Abraham and Nirmita Narasimhan of CIS and Lawrence Liang of ALF began working on a copyright defence that would enable the conversion of copyrighted works to more accessible formats for the disabled..formats that would enable them to enjoy such works as comfortably as the others.

Such a provision is critical, given that hardly 0.5% of all published books are accessible by the print impaired. Further, given the constitutional mandate that each one of us shall have the right to life under Article 21 (which includes the right to education and the right to read) and the right not to be discriminated against (under Article 14), the State is under a positive obligation to provide accessible works to the disabled and thereby help them lead better lives.

The Government Copyright Proposal

This is not to suggest that the Indian government lacks sensitivity on this count. Indeed, it is commendable that as far as back as 2006, the government proposed the introduction of Section 52 (1) (za) to the Copyright Act, 1957 to resolve the issue.

The proposed Section 52 (1) (za) states that the following act shall not constitute an infringement of copyright: “reproduction, issue of copies or communication to the public of any work in a format, including sign language, specially designed (emphasis added) only for the use of persons suffering from a visual, aural or other disability that prevents their enjoyment of such works in their normal format.”

While this is a great start, this draft suffers from some serious limitations:

1. Firstly, it restricts permissible formats to those “specially designed” for persons with disabilities. In practical terms, this means that only Braille and sign language is permitted. As many of you may know, Braille is extremely expensive to print and distribute and is not portable. Moreover persons with low vision, dyslexics, people with paralysis, cerebral palsy etc. cannot use Braille and require alternate formats.

Given recent technological developments and the burgeoning of audio formats and electronic formats that are now used by a large number of visually impaired persons, the exception ought to cover such formats as well... formats that do not strictly constitute "formats specially designed for the disabled". Indeed, any creation of a digitized version of a copyrighted work would enable access by the visually impaired (provided they have tools such as screen reading software on their respective computers).

We understand that the Indian government wishes to ensure that the defence is availed of only by the disabled and not by others, who may free ride on such an exception. While limiting the exception to “formats specially designed for the disabled” may help achieve this objective, it seriously limits the scope of access by the disabled in this technological day and age, as explained above. Rather than limit the kinds of formats that could be created, we propose that the government restrict access of works created under the aegis of this exception to only people with disabilities. One way to do this is by insisting on reliable certificates that confirm one's status as "differently-abled".

2. Secondly, the proposed amendment fails to ensure that software and other intellectual property protected tools required to create accessible formats and enable persons with disabilities to access such formats are available at a reasonable cost. Illustratively, the most widely used screen reading software, JAWS, is licensed at a whooping Rs 50,000!

3. Thirdly, the proposed amendment must provide wording to the effect that if content owners apply any technology circumvention measures or DRM locks to digital content, they must make available such content to persons with disabilities. Without such provision, the production of talking books or the use of screen reading software for the benefit of the visually impaired will be restricted if the owner of a digital work has prohibited such use of his work.

Thankfully India does not have any specific protection for anti-circumvention measures and DRM as yet. However, we're not sure if the government plans to introduce such a protection via the recent copyright amendment bill that is likely to be introduced in Parliament in December. Unfortunately, the bill is still secret and will be made available for public viewing only after it is introduced in Parliament.

Our Copyright Proposal

We've therefore proposed a more liberal and meaningful exception as below:

Section 52 (1) (za) (i): The doing of any act, the primary objective of which is to enable persons with disabilities to access copyrighted works as comfortably and flexibly as a person without a disability.

Such acts shall include, without limitation, the making of any accessible format of a work, reproducing such work/format, adapting such work/format, making available such work/format, lending such works/formats etc. and the provision of any facility that is primarily designed to enable any of the acts contemplated above.

Provided that if any entity wishes to undertake any of the above activities on a for profit basis, it shall pay such remuneration to copyright owners as may be prescribed by the Copyright Board from time to time. For the purpose of determining remuneration, the Copyright Board shall take into consideration the need to ensure that works are accessible and available at prices that are affordable, taking into account disparities of incomes for persons who are disabled.

Provided that if any software or other tool that is covered by any intellectual property right is necessary to create accessible formats or to enable access to such formats, or to enable disabled persons to access any work in any manner as contemplated above, such intellectual property protected software or tool shall be licensed at an affordable price, to be determined by the Copyright Board.

Provided that if any works are protected by technology circumvention measures or subject to DRM limitations that restrict access to the work in any way, the owner of copyright shall grant access to any person who wishes to secure such access for the primary purpose of doing any act contemplated within any of the provisions above.

Provided that the exemption or other benefits envisaged under this section can be availed of only when reasonable measures have been taken to ensure that the end beneficiary is a person with a disability.

Provided that if any act done in good faith in pursuance of any of the above provisions falls outside the ambit of such provision, such act shall not be enjoined by an injunction, whether temporary or permanent, but shall be made compensable by payment of a reasonable royalty to be determined by the Copyright Board.

This provision shall override any conflicting provision in any other legislation, regulation or rule in force in India, only to the extent of such conflict.

Section 52 (1) (za) (ii): For the purpose of Section 52 (1) (za) (i) "accessible format" means any format or form which gives a disabled person access to the work as flexibly and comfortably as a person without a disability, and shall include, but not be limited to, large print, with different typefaces and sizes all being permitted according to need, Braille, audio recordings, digital copies compatible with screen readers or refreshable Braille and audiovisual works with audio and or text description.

The above section draws from a provision recommended by the World Blind Union and supported by countries such as Brazil and NGO's such as KEI.

Readers will note that the above exception not only caters to the visually impaired, but any differently-abled person who is unable to access copyrighted works as comfortably as others. Illustratively, without the subtitling of audio-visual material, a hearing-impaired persons is unable to enjoy movies, TV programs and other audio-visual material.

CLIPP and Collaborative IP Policy Making

Readers may recollect an initiative called CLIPP (Collaborative Innovation in IP Policy), that we touched upon sometime back, but never really got around to implementing. We are still in the process of designing an appropriate IT architecture to support this endeavour, which will greatly aid transparency and public participation around IP law making in this country.

Till such time as we unleash this specialised architecture, we're trying to see if we can make do with the blogger format. Indeed, if our experiment around the parallel imports provision is anything to go by, where our posts elicited around 50 odd comments that helped suggest ways in which to interpret (and perhaps reword section 107A), there is no reason why the blogger format itself should not suffice.

Leaving comments on posts is fairly easy. You scroll down to the bottom of the post, hit the "post a comment" button and either sign in with your gmail account or click on the "anonymous" tab to post a comment anonymously. You could also chose any other online identity. For those that are averse to using the comments section at the end of this blog post, please free to email me at shamnad[at]gmail.com.

I hope all of you can take some time out to help this worthy cause by inspecting the suggested provision with a fine tooth comb and recommending ways to improve it. I understand that we have many sophisticated copyright experts on our subscriber list ..and I do hope that you will lend your minds and hearts to this cause. Needless to state, a mere copyright provision by itself is not enough--but it will certainly go some way in ensuring that we provide a better and more "inclusive" tomorrow for these children of a lesser god.

ps: Venky Hariharan, a leading open source advocate has referred me to Orca, an open source screen reader software, freely downloadable.

SpicyIP Tidbits: Global Health Policy- when is the price right?

2009-11-18T02:26:00.006+05:30

Our readers will remember this pos t by Suchita which apart from a highly memorable picture from Shrek, also dealt with the important issue of profit margins in terms of pharmaceutical manufacture. And now, SpicyIP is thrilled to report to its readers that there is finally a down to earth, honest admission by an Indian entrepreneur on the state of Global health care, and India's contribution or lack thereof to it.

Ms. Kiran Mazumdar Shaw, known to most Indians as a formidable and admirable entrepreneur has, in this article, written about issues that concern us all- but few are willing to address.

The article revolves around the current health policy across the globe and India's particular susceptibility to be slotted into the category of a State with a particularly "ineffectual" health policy.

Given this background, Ms. Mazumdar Shaw in her short punchy piece has put in her two cents. Stressing on the need to be more of a leader, than an imitator, this article seems to take the initiative in finding the much desired "middle path" and balancing competing interests of innovation with the costs spent in drug discovery, experimentation and so forth.

The article does not provide a solution- that, of course, would have been a near impossibility given that most companies engaged in pharmaceutical manufature have vastly differing philosophies. However, the piece does stress the need to create the concept of "affordable innovation" to help aid the global health crises, and leaves the modalities of the same open ended. Which is much food for thought.

IP Job Opportunities in Pune and Gurgaon

2009-11-17T01:14:00.005+05:30

Two key IP positions are open at one of India's leading law firms, details of which are below.

If interested in applying, please write to spicyipjob[at]gmail.com with your CV.

Location: Pune (1 position) and Gurgaon (1 position)

Roles and Responsibilities:

Prosecution and advisory work related to trademarks, copyrights and designs. IPR litigation experience would be an advantage. Should be able to handle IPR work independently. Likely to also involve IP transactional and corporate work.

Required Qualification:

i) 3 - 5 years of relevant experience in IP prosecution.
ii) Degree in law

Salary: Commensurate with the best in the industry

Cybersquatting gets Sharp Rap from INDRP Arbitration: Bloomberg Finance Wins

2009-11-17T00:01:00.008+05:30

(picture source: http://news.bbc.co.uk/2/hi/technology/6449363.stm)

Among the recent cases that have been decided in relation to .IN Domain Name Dispute Resolution Policy (INDRP), the following one has seen Bloomberg Finance L.P., (BF) a United States-based company, winning the domain name Bloomberg.net.in (full judgment available here). BF had filed a complaint with the .In Registry, National Exchange of India (NIXI), against Mr. Kanhan Vijay, a resident of Nagpur, India and claimed to be the registered proprietor of the services mark BLOOMBERG in India and its variants in over 95 countries of the world. It also claimed that its substantial advertising and promotion of its Marks, its Family of Marks, Domain Names and Trade Name (i.e. Bloomberg) have created significant goodwill and widespread consumer recognition around the world, including in India, of BF being a leading source of financial information and analysis. Mention was also made of BF’s global reach through a variety of international media outlets, such as Bloomberg Television, Bloomberg Radio programming, Bloomberg News, Bloomberg Press and the website at . BF’s headquarters are situated in New York, with subsidiaries running offices at places like Mumbai, Bangalore and New Delhi.

Mr. Kanhan Vijay (Respondent), on the other hand, was in charge of a Nagpur-based registered partnership firm ‘Bloomberg Computers’, dealing in computer hardware and networking equipment. He submitted that his firm was not engaged in business on the internet and had never used its website (having the aforesaid domain name) for marketing purposes, but only the domain name had been used for mail as well as for helpdesk services. He also proclaimed that nowhere in the website did the firm claim to be a part of BF.

Following the lodging of the complaint, NIXI verified that the formal requirements of INDRP and the Rules of Procedure (Rules) had been satisfied and as per Paragraphs 2(a) and 4(a) of the Rules, the Respondent was formally notified and Mr. Amarjit Singh was appointed as a Sole Arbitrator for adjudicating upon the dispute in accordance with The Arbitration and Conciliation Act, 1996 and the rules framed there under. After both the parties had submitted to the arbitration proceedings prescribed in the Rules, the arbitrator decided that the matter was not one wherein the determination could not be made on the basis of material on record and without in-person hearing, as per Paragraph 12 of the Rules and Section 19(3) of the 1996 Act.

In order to get the remedies (prescribed in Paragraph 10 of INDRP) of cancellation or transfer of the domain name registration to itself, BF was required to prove the following, as per Paragraph 4 of INDRP:

(a) That the domain names were identical or confusingly similar to a name, trademark or service mark in which BF had rights; and

(b) That the Respondent had no rights or legitimate interests in respect of the domain names; and

With regard to the identical/confusingly similar aspect, BF was able to prove its claim. It was submitted that the domain name “Bloomberg.net.in” was identical to BF’s registered trade mark "BLOOMBERG" and was entirely comprised of the same. The decision given in ITC Limited Vs. Travel India, Case No.L-2/5/R4, April 15, 2008 was relied upon in this context. BF contended that there was strong likelihood of internet-users mistaking Respondent’s website being endorsed by BF. Furthermore, the Respondent's website welcomed visitors with the statement: "welcome to www.bloomberg.net.in" and also indicated that it was "powered by BLOOMBERG" but otherwise offered no goods or services. BF argued that the said reference to Bloomberg indicated Respondent’s wish to deceive visitors to the website into believing that the website was affiliated with or managed by BF or enjoyed the benefit of BF’s news and information resources. There also existed strong likelihood/possibility of internet users looking for BF’s website and getting diverted to the Respondent's website instead, which established the chances of confusion and deception.

The Respondent countered saying that the said complaint had been initiated with misunderstanding, with the Respondent having been unnecessarily dragged into the proceedings. He argued that BF’s contention regarding the similarity in the name and apprehension regarding the diversion of clients did not have any substance whatsoever and that not even a single incident had been quoted by BF to substantiate said contention. Hence the relief cannot be granted merely on the basis of vague accusations.

BF asserted of it holding registration for "Bloomberg.com" since 1993 and other GTLDS such as Bloomberg.net, Bloomberg.br , Bloomberg.org and Bloomberg.info. The Respondent, on the other hand, registered impugned domain name March 23, 2007, but had failed to provide any evidence of using the mark "Bloomberg" as a service mark in the past for providing the services for computers hardware and software since 2002 as had been claimed by him in his response.

Having compared the registered trademarks of BF and the disputed domain name, the Arbitration Panel held that the latter was indeed identical to the earlier registered trade mark and domain names of BF.

Next comes the turn of the requirement of proving that the Respondent did not have any right/legitimate interest regarding the domain name. To do the same, BF argued that it had neither licensed nor otherwise permitted the Respondent to use BF’s mark or any of the family of marks or any domain name incorporating those marks. In fact, the Respondent had failed to reply to the demand letter sent by BF. It was also contended that to the best of BF’s knowledge, the Respondent did not carry on any commercial or non-commercial venture/enterprises under the name and style of "Bloomberg" and hence could not have any legitimate reasons for adopting the "Bloomberg" as part of disputed domain name. Nor had the Respondent made any use of the domain name in connection with the bona fide offering of goods or services or for any legitimate non-commercial or fair use, but merely to support an essentially dormant website.

The Respondent, of course, denied most of these allegations. He argued that his highly reputed firm had been running the said business since 2002 and had business relationship with reputed names, INTEL, MAX, HPCL etc. as well as reputed clients like the Nagpur University, Western Coalfields Limited, Priyadarshini College of Engineering, Lokmanya Tilak College of Engineering and the like. He further submitted that he never intended to deceive the user to divert the traffic and had been using the domain in a bona fide manner and not in bad faith and nor had any instance of such diversion been cited by BF to prove to the contrary. It was also argued that the Respondent would suffer great loss and injury if BF is given the rights to the domain, since the help desk and mails were being administered by his firm from the domain. The long standing use without any interference of the domain name, according to him, resulted into accruing of rights in favour of himself and also legitimate exceptions. He went on to say that the mere fact of BF’s domain name being registered with various countries did not give BF a monopolistic right or the exclusive ownership for the name that the Respondent had been allowed to use so far at relevant time without any objection.

However, the Panel held that the Respondent's registration of the disputed domain name took place much later to the date of domain name registration by BF under .in CCTLD, thereby allowing BF priority in adoption, use and registration of domain name. BF was also the registered proprietor of the trademark BLOOMBERG from the dates prior to the registration of disputed domain name by the Respondent. The Respondent had failed to offer any valid explanation regarding how he came across the term Bloomberg and accepted it as part of his trade name, which emphasized that such adoption might have been in bad faith. Nor did the Respondent appear to have any legitimate interest in the disputed domain name (since Respondent’s firm did not perform any business on the internet) –hence aforesaid registration by him might have been in bad faith to squat on the Register.

Regarding the third and final requirement of proving bad faith in registration and use, BF submitted that "Bloomberg" having a strong reputation and high profile presence in the financial sector and being the subject of substantial consumer recognition and goodwill, public invariably associated the use and application of the word "Bloomberg" with BF’s corporate identity, business and various financial services. It further argued that the registration of a domain name with actual knowledge of trademark holder's right in a mark consisted of a strong evidence of such registration having taken place in bad faith. Non-use and passive holding of the website by the respondent were additional evidence of bad faith registration. In this context, the decision of HSBC Holding plc. Vs. Ooman Esmail Zadeh, Case No.L-2/5/RZ (March 24, 2007) was relied upon by BF. Also, in the light of the international fame and wide use of BF’s mark "BLOOMBERG", BF believed that the Respondent knew of and knowingly exploited said mark and its substantial accompanying goodwill. The Respondent, however, did express his readiness to add in his website the following words in bold manner as "Bloomberg Computers, Nagpur" and that it is not part of BF, but BF refused to recognize relevance of such action regarding the proceedings at hand, since the dispute was with regard to the domain and not with regard to Respondent’s website.

The Panel opined that while the Respondent had not registered the domain name primarily for the purposes of selling, recruiting or transferring the domain name registration to BF or its competitors for valuable consideration (especially since Respondent had incurred out of pocket costs related to the domain name), nonetheless, the owner of the trademark/service mark had been prevented as a result from reflecting the mark in a corresponding domain name. Also, by using the domain name the Respondent had intentionally created a likelihood of confusion with BF’s mark as to the source, sponsorship, affiliation or endorsement of the website. The bad faith element was also established from the fact that the Respondent had registered the disputed domain name much later to BF’s registration of the domain names even under .in CCTLD such as Bloomberg.co.in, Bloomberg.in, Bloomberg.gen.in, Bloombergnews.co.in etc., without doing the necessary due diligence beforehand.

Therefore, in the light of the aforementioned contentions and the Panel’s response thereto, the Panel finally directed transfer of the disputed domain name to BF, but did not award any cost.

The Panel, while reaching this decision, had no doubt kept in mind the special status accorded to well-known trade marks as per Section 2(1)(zg) of the Trade Marks Act, 1999, irrespective of whether the allegedly infringing mark is used in relation to different goods or services than the original mark. The said provision is as follows:

"well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

While this aforementioned decision in relation to the arbitration process prescribed by the INDRP appears to be at least prima facie reasonable, without attracting many a controversy, nonetheless all decisions resulting from said arbitration in the past cannot be allocated to the said uncontroversial category. Several of them have in fact involved certain features that are fascinating to say the least and worthy of further examination. These include granting trademark rights to terms such as “hotels”, “jobs”, “mines” etc., holding that merits and scope of .IN CCTLD's INDRP (.IN Dispute Resolution Policy) differ considerably from the UDRP (Uniform Dispute Resolution Policy) on which WIPO decisions are based and hence cases in relation to the former are of scant relevance while deciding a dispute pertaining to the latter (despite similarity of the disputes concerned) as well as confiscation of domain names by the registry. Such decisions will be soon highlighted in future posts by the Spicy IP team.

Legality of Grey Market Goods in India

2009-11-16T14:44:00.007+05:30

Sai Deepak did an excellent post capturing the essence of a recent judgment by Justice Muralidhar (of the Roche vs Cipla fame). While the judgment got it right in several places, and will come as music to the ears of patentees, who've so far been at the receiving end of the Indian judiciary, it loses out on a fabulous opportunity to clarify the scope of section 107A(b), the section dealing with parallel imports.

As many of you may recollect, this section triggered some heated discussion on this blog. And thanks to the fireworks, both Mrinalini (someone we miss dearly miss on this blog) and me were inspired to do a full length piece on this section. We ended being a bit prescriptive--some may say, too prescriptive, as we went on to suggest an amendment to section 107 that almost ran into two pages! The bard for whom brevity was the soul of wit would have surely turned in his grave.

Anyway, let me take you through our piece to highlight the various interpretative problems inherent in section 107A(b). Hopefully, this background would help one in appreciating how the Delhi High Court failed to used this occasion to clarify the scope of section 107A and to set right its interpretative potholes.

I quote from our article:

"Section 107A(b), in its current form, exempts from infringement an “importation of patented products by any person from a person who is duly authorized under the law to produce and sell or distribute the product”.

A literal reading of section 107A(b) suggests that even the “first sale” need not be authorized by the patentee.

Consider our earlier hypothetical involving Tarceva, an anticancer drug [patented by Roche], which is under litigation before the Delhi High Court. Let us ....assume that that Cipla is restrained (at the final stage) by the Delhi High court and cannot sell [Roche's patented drug] in India. Cipla now asks its Bangladeshi partner, Beximco Pharmaceuticals Ltd., to manufacture the drug in Bangladesh.

It then imports the drug into India. It bears noting that Bangladesh is a least developed country (LDC) and therefore has time till 2016 to implement product patents in pharmaceuticals. Consequently, any manufacture, use, distribution and sale of the drug within Bangladesh does not amount to a patent infringement in Bangladesh.

Under the old regime (prior to 2005), which required any import to be “duly authorized by the patentee”, Cipla could not legally import Tarceva into India if the seller (in Bangladesh) was not authorized by Roche to sell or distribute Tarceva in Bangladesh. Under the new provision however, one could argue that Cipla can import Tarceva even without the permission of Roche. It has to only comply with the condition that the exporter of such patented product (eg. Beximco) be “duly authorised" under the law [Bangladeshi law] to produce and sell or distribute the product”.

We then go on to highlight how such a reading may detract from the exclusive rights of a patentee under section 48 of the Indian Patents Act, as also risk contravening the TRIPS mandate to provide certain minimum rights to a patentee. Given these concerns, we suggest as below:

.... in order to harmoniously construe section 107A(b) with section 48, the term “patented product” could be interpreted to mean a product patented in both the exporting country (Bangladesh in our hypothetical) and the importing country (India).

Consequently, in the context of our hypothetical involving Roche and Cipla, the section would exclude any “generic” versions of Tarceva manufactured in Bangladesh, where there is no patent. In other words, Cipla cannot avail of section 107A(b) to import generic versions of Tarceva manufactured by Beximco.

This interpretation does not detract unduly from the patentee’s exclusive rights under section 48, complies with TRIPS and fits well within the overall framework of the section. Also, this interpretation furthers Parliamentary intent i.e. to permits international exhaustion and the buying of low priced patented goods, once the patentee has already sold them anywhere else in the world.

In the light of the above, we argue that a judge is likely to interpret the term “patented products” in section 107A(b) to mean products patented in the “exporting country”.

However, one point that we did not elaborate upon in our article (and one which Sai bought to my attention) is whether or not the patent could be held by separate entities in the two countries. In other words, assume that Tarceva is patented by Roche in India and by a domestic Chinese company (such as Wuxi Apptec) in China. Let us also assume that since China follows a "relative" novelty test, it was able to grant a patent in favour of Wux , despite Roche's patent in most other countries.

The facts of Strix Limited v. Maharaja Appliances comes close to such a scenario:

i) The plaintiff, Strix Limited has an Indian patent covering a kettle with two sensors to prevent overhearting.
ii) The defendant initially purchased kettles from the plaintiff. However, it later stopped its purchases from the plaintiff and began importing similar kettles from a supplier in China.
iii) The defendant argues that there is a separate Chinese patent covering such kettles in the name of the Chinese supplier.
v) The plaintiff counters by arguing that the defendant has no offered no proof of the suppliers name or its patent. On the contrary, the plaintiff alleges that it owns a valid patent in China and that it has already taken action and restrained certain Chinese infringers.

Justice Muralidhar held in favour of the plaintiff as below:

"The Plaintiff cannot be made to wait indefinitely for an injunction just because the Defendant is awaiting information from the Chinese supplier. As long as the Defendant is not able to produce any information about the patent held by the Chinese supplier, the court will proceed on the footing that there is no such valid patent held by the Chinese supplier.

Does the above statement mean that Justice Muralidhar would have absolved the defendants of infringement, had they adduced proof of a separate Chinese patent covering the kettle? Unfortunately, the judge is quite cryptic on this count and misses a great opportunity to tease out the interpretative problems inherent in section 107A(b).

Conclusion

Even assuming the judge implicitly endorsed the interpretation offered by our paper (that "patented product" in section 107A meant a product that was covered by patents in both the country of export and the country of import), he still fails to answer the following issue: If the patent in China is held by a person who does not derive title from the Indian patentee (Strix in our case), the patent right has not really been "exhausted" by a first sale in China and Strix has not benefited from such sale. Perhaps the best option then is to interpret "patented product" as a product patented by the same entity (or someone deriving title from such entity) in both the countries? Would such an interpretation best reflect what Parliament intended?

Unfortunately, there is no clarity for the moment...and the Delhi High Court judgment fails to illumine on this count.

SpicyIP Tidbits: The UPOV Uprooting Participation?

2009-11-16T00:26:00.004+05:30

An interesting article in IP Watch caught the attention of the SpicyIP team this week. In keeping with our endeavour to increase transparency and discussion on intellectual property related topics, this article in IP Watch has provided us with ample information.

The International Union for the Protection of New Varieties of Plants this month to grant two advocacy groups, the "observer status" as has been provided for under the Union for the Protection of New Varieties of Plants (UPOV) Convention. What has raised considerable concern is the two fold level at which this decision can be termed problematic:

a. This indicates an increasing and disturbing trend against the participation of Advocacy Groups and those affected by the decisions taken by the UPOV.

b. This also is problematic in terms of the framework within which the Union makes its decisions. "The purpose of the UPOV Convention, according to its website, is to protect new varieties of plants via intellectual property rights. Its rules on observer status say that organisational statutes or treaties are to be used to determine such competence, but does not provide a specific list of desired criteria."

Furthermore, it is interesting to note that not all the records of the consultative committee that has been granted the power to decide who can be conferred with the "observer status" are not publicly available.

At best, this position of the UPOV can be called questionable. The two groups denied observer status in this case, Association of Plant Breeding for the Benefit of Society (APREBES) and the European Farmers Coordination (now known as the European Coordination of Via Campesina, or ECVC), were deemed not "competent" in the areas of direct relevance as required by the UPOV. And other questionable decisions include the fact that not a single group from the developing world is an "observer".

In terms of the general scheme of decision and policy making, it is understandable that administratively there must be certain checks in place to ensure a level of competence and expertise. However, where the criteria for such competence is not clearly defined, and participation- diversified, representative or otherwise- is seemingly sidelined, this blogger wonders if the decisions taken by the UPOV on important topics such as breeders' rights, seed issues and plant protection will be practicable without any input from those certain to be affected.

Google Book Settlement- Indian Government Protests...Finally

2009-11-16T00:22:00.010+05:30

“Don’t Be Evil” apparently is the unofficial slogan of Google; though, it isn’t clear if this Hammurabic finger-wagging precept is Google’s pearl of wisdom to the rest of the world or if it is directed inwards to monitor itself... (by the way, those who may be interested in tracing the origins of the expression “wagging the finger”, check this out). Anyways, most IP aficionados would be aware of the raging controversy surrounding the Google Books Settlement; for others, here’s a site which gives a bird’s eye view of the details and updates pertaining to the Settlement.

The Settlement is an agreement reached between Google, Authors Guild (AG) and the Association of American Publishers (AAP) in the Southern District Court of New York in the US after a class action lawsuit was filed by AG and the AAP in 2005. The suit alleged copyright infringement by Google which sought to digitize copyrighted works for commercial use under its Library Project. Subsequently, another suit for injunctive relief was filed by the AAP in 2005.

Last October, Google signed the Settlement with the Author’s Guild for $125 million of which $34.4 million was earmarked for funding the setting up of Book Rights Registry (BRR), a copyright society which would administer the distribution of profits made by Google to right owners. The site hyperlinked in the first para of this post is maintained by Google to enable authors to submit their claims under the Settlement. Under this Settlement, right owners would receive a one-time payment of $60 per full book, $5-15 for partial works, in addition to 63% of revenues earned from e-commerce and advertising.

This was the earlier version of the Settlement which drew flak from across the board cutting boundaries, with prominent voices from China and Germany. An alliance, called the Open Book Alliance (OBA), was formed by interest groups to counter, what they call, “a scheme to monopolize access, distribution and pricing the largest digital database of books in the world”. Among the other things that the OBA demanded, it proposed a revision to the Settlement incorporating the following requirements ("baseline requirements"):

1. The settlement must not grant Google an exclusive set of rights (de facto or otherwise) or result in any one entity gaining control over access to and distribution of the world’s largest digital database of books.
2. Authors and other rights holders must retain meaningful rights and the ability to determine the use of their works that have been scanned by Google.
3. The settlement must result in the creation of a true digital library that grants all researchers and users, commercial and non-commercial, full access that guarantees the ability to innovate on the knowledge it contains.
4. All class members must be treated equitably.
5. The settlement cannot provide for competition by making others engage in future litigation.
6. Congress must retain the exclusive authority granted by the U.S. Constitution to set copyright policy.
7. All rights holders impacted by the settlement must have a meaningful ability to receive notice, understand its terms and opt-out.
8. The parties that negotiated the settlement must live under the terms to which they seek to bind others, rather than their own separately negotiated arrangements.

Following this, Google released the Revised Settlement Agreement on November 9th which was filed before the Court last Friday, the 13th.

The Indian Government, through the Ministry of Commerce and Industry, finally expressed its concerns on the Settlement to United States Trade Representative (USTR) team led by Ron Kirk. India’s concerns stem from the fact that the Settlement under the earlier version was applicable to any person who has a US copyright interest. Also, what this Settlement bodes for vernacular authors and publishers is something which must be of critical concern to the Indian government.

Though I haven’t read the Revised Settlement (which runs into a good 170 pages...which still is light reading compared to the famed Keshavananda Bharati judgment), if news reports are to be believed, the Settlement in its new avatar applies only to books published in English-speaking countries such as the US, UK and Australia (by English-speaking countries, does the Settlement refer only to those countries where English is the native tongue?)

Apparently, concerns of competitors over sale of the same books that are digitized by Google, and sale of books whose copyright holder couldn’t be determined (“orphan books”) too have been addressed in the new Settlement.

We look forward to receiving comments from our readers on this issue.

Coming soon: websites in Hindi, and the IPO too?

2009-11-12T22:42:00.006+05:30

Come Monday, 16 November, 2009, ICANN's internationalised domain names (IDNs) will go live. Touted as the "biggest technical change to the Internet ever", there is still some cloud over whether TM ownerswho have registered domain names in non-IDN, i.e., Latin/Roman characters, will be given the first right of refusal when it comes to registering in other scripts. (ICANN's been in the news for other things as well - read Prashant's post some days ago on domain tasting)

Readers who've been around long enough may recall a post we'd done over two years ago on the National Internet Exchange of India's (NIXI) announcement of the launch of IDNs in about half a dozen languages. (NIXI -- a government agency that operates the official .IN registry and also serves as a meeting point of Internet Service Providers (ISPs) in India.)

How is this announcement different from what happened two years ago?
Until now, the address endings for all internet addresses could only be in Latin characters. This change will introduce approximately 100,000 characters from multiple languages which can be used for web address endings. This will also make it the first time that entire internet addresses can contain non-Latin characters.

This is a Fast Track Process restricted to country code Top Level Domains (ccTLDs) which will be accessible only to nations and territories. These entities are eligible to apply for extensions based on their name, comprising of characters from national languages. Among the scripts included is Devanagari: so, we may soon see websites with endings like .इंडिया , .भारत, .हिंदुस्तान and so on, depending on what the authorities agree to zoom in on.

Time for India to get its act together

Business Standard has an interesting op-ed on this today, which I refer to tangentially. For long, the standard argument of non-native English users about the Internet has been its linguistic limitations. ICANN has flipped this around completely -- from what I understand, no knowledge of Latin characters is required to key in a website address. Website content has already long been available in non-Latin languages. Gmail is available in a bunch of Indian languages, which I use often, and enjoy thoroughly. You already get really cheap keyboard skins on the market which allow users to slip on an alternate keyboard on the standard Qwerty plate -- are we reaching beyond English, finally?

The IPO's e-Patrika
As an endnote, and to tie the IP angle in -- a recent visit to the IPO website showed up this: the fifth edition (but first electronic version?) of the IPO's in-house magazine, the Boudhhik Sampada Sagar, an ePatrika (download link).

The 28-page long ePatrika - the first I have seen online, but do tell if earlier versions have been made available online previously - is entirely in Hindi, and comes, ironically enough, from the Mumbai office of the IPO. (The politics of Hindi is an entirely different story, even if you're not a Mumbaikar, and I shan't get into it. But do read Rajeev Dhawan's excellent op-ed in the Express today).

In re ICANN's Fast Track Process for IDNs for ccTLDs, India's enthusiasm to introduce dual languages everywhere, and the ePatrika, will we see this next?: बौद्धिकसम्पदाविभाग.भारत/

Meanwhile, if you want to know more about the creative aspect of the folks at the IPO, do give this a read. Nuggets include 'the vanishing languages of this world'; the history of cricket in India; tips for succeeding in an interview; is Mumbai safe?; profiles of Baba Amte and Dr Kalam. I haven't had time to read it through since chancing upon it earlier today. You must tell me what else you discover!

India will be working as ISA by June 2010: IPO

2009-11-12T17:52:00.007+05:30

India will be functioning as an International Searching Authority (ISA) by June 2010, according to the Intellectual Property Office (IPO). Several may heave a sigh of relief, but it may also be time for the IPO to do some basic operations research and analysis to see if things are going as planned.

The news, reported by the IPO in a post on the recent visit of Dr Francis Gurry, the Director General of the World Intellectual Property Organisation (WIPO) to the New Delhi branch of the IPO, may come as manna to patent practitioners. Readers who have been tracking IPO developments will know that India has been sitting on the ISA status for nearly two years now (see this Jan 08 post), and practitioners are getting increasingly restless at the delay in executing this plan.

However, and without attempting a full-blown analysis of the ground-situation at the IPO, I throw open some basic questions surrounding the "operationalising" of India's ISA status:

1. Fundamentally, are there enough officials to keep the ISA functioning, in addition to tackling the normal administrative duties of the IPO? I strongly suspect this may not be the case -- and if the self-imposed deadline of June 2010 is to be met, this may mean a mass recruitment of officials in the months to come. At present, the vacancy announcements section lists only posts in the Trademarks Registry.

2. Next, but less importantly, does the IPO have the physical and electronic infrastructure in place to tackle the demands of an ISA? I recall news of damage to files and records of the Mumbai IPO due to fire -- a repeat of an incident like this at any of the offices would be unpardonable, particularly if there is no digitised backup available. From what I understand, this project is still incomplete.

3. Similarly, are the online services, as they stand today, sufficient to pull this ISA project through? If any quality work is to be done in its capacity as an ISA, the IPO absolutely needs to beef up its online services, instead of allowing a generation of technology to come and go before it wakes up to the possibilities of the internet.

I may sound harsh in commenting thus, but as one uses and works with Indian and international governmental-end IP service delivery systems, the qualitative differences are stark. This is regardless of the service offered - eFiling, Application Status, Public Search, or Interactive Guidance. I am quite sure that the IPO is aware of the problems with all of these systems (e.g., jurisdictional limitations in eFiling patent applications; discordant data in application status; temperamental interactive guidance; and so on). It is perhaps even attempting to address these issues. Nevertheless, a quick Quality of Service and Quality of Experience would be incredibly enlightening to give the IPO some pointers in how things may potentially improve.

If India wants to be a competitive, and competent ISA, it will need to introspect and carefully examine these issues before taking the plunge.

Notwithstanding this, it would 'feel good' to see India's ISA project take off by June 2010. There is no ISA Commonwealth Games to look out for, but the IPO will have beaten the Delhi Government in its race against time.

Amending the Copyright Act to provide Justice for All....

2009-11-12T01:40:00.006+05:30

Outlook in its last week edition carried a heart-rendering article on how so many Indian music composers and lyricists are living in near penury despite having several hits to their credit. The ultimate irony, as pointed out by the article, is the fact that these composers and lyricists have to take permission from the music companies to perform their own music.

The reason for this sorry state of affairs is simple, most music companies insist that the artists 'assign' all rights to the music companies for a single, one time renumeration with no say in future earnings. Since all assignments deeds are required by statute to be in writing it is not like these artists do not know what they are getting into. The real problem over here is most likely the weak bargaining capacity of the artist vis-a-vis the music company. As an artist becomes more popular his bargaining power vis-a-vis the music company increases and the terms of the assignment deed will ultimately balance out. For example A.R. Rahman in 2009 definitely has much more bargaining power than he would have 15 years ago. Unfortunately not every artist reaches the stature of A.R Rahman.

Should music composers and lyricists be left to the mercy of the market forces OR is it time for the law to ensure some modicum of justice to those not capable of bargaining from a position of strength? Countries like France and Germany offer several interesting lessons on how to address this imbalance in bargaining positions.

The first solution is rather simple and involves collective bargaining by a society of artists of performers. Such societies will provide artists and performers with standard form contracts that protect their rights in the face of any unreasonable demands from the producers or music companies. Given the collective bargaining power of such societies such contracts will in all probability be more equitable than any contract that an artist may try to enter into on his own. There however may be freelance artists or performers who may not be a part of a collective bargaining society. These freelance artists or performers are protected by some truly revolutionary clauses in German copyright law.
(Click here for an interesting article on the German law)

The second solution provided by the aforementioned revolutionary clauses in German copyright law can be found in the relatively recent 2002 legislation titled German Copyright Contract law. German law provides for atleast two provisions: (i) an equitable renumeration provision & (ii) a 'best -seller provision'.

(i)The equitable renumeration provision starts of with stating the obvious i.e. the artist is entitled to an equitable renumeration contractually agreed upon. However if in case the renumeration agreed upon is not equitable the German statute requires the negotiations to be handled through mediation. For its part equitable renumeration is determined according to the prevalent fair business practices depending on the length, timing as well as all other circumstances.
(ii)The second revolutionary provision is the 'best-seller' provision. This provision provides the author/artist with the right to demand an equitable share of the profits if in case these profits are grossly disproportionate to the initial renumeration made to the author. Such a provision is not all that alien to the Indian Copyright Act. Section 53A of the Copyright Act provides for a statutory renumeration right to the artist or his heirs in cases of resale of certain works.

The above discussed provisions of German Law are revolutionary for the simple reason that is in a way these clauses run contrary to the fundamental principle of a free market economy - the freedom to contract. However the same requirements of social justice that drive minimum wages legislation also justify the presence of similar clauses in copyright law.

Working of Patents and S.107A(b)

2009-11-10T00:10:00.005+05:30

The judgment of the Delhi High Court in Strix Limited v. Maharaja Appliances, is not only written lucidly but also clarifies elegantly, certain contentious provisions of the Patents Act, 1970. The facts of the case are thus:

1. Strix Ltd., the Plaintiff, filed a suit for infringement of its Indian patent (granted in 2005) by Maharaja Appliances, the Defendant. The patent is over a liquid heating vessel which has a container for a liquid, an electrical heating element to heat the base of the container and 2 thermal sensors placed at proximity to each other, either at the base of the container or on the heating element. The sensors are so placed to sense and hence prevent overheating of the heating element irrespective of the presence of liquid in the container.

2. According to the Plaintiff, Defendant imported products from China which allegedly infringed the Plaintiff’s patent. Also, the Defendant earlier sourced the products from the Plaintiff, but later switched over to its Chinese suppliers. The Defendant did not contest infringement but- (i) challenged the validity of the Patent citing a European Patent granted in 1998; (ii) claimed exemption from infringement under S.107A(b) of the Act since the Chinese supplier had a Chinese patent over the product and (iii) questioned the working of the Plaintiff’s patent.

The Court dismissed the first ground on the basis that the European patent had 2 sensors sensing the temperature of the liquid, both working in tandem; whereas the Plaintiff’s sensors worked independent of each other and were not dependant on the presence of liquid in the vessel to prevent overheating of the heating element. This, it felt, was a substantial difference and certainly did not amount to mere workshop modification.

For a judgment which deals with grant of an ad interim injunction, the Court has done a great job of understanding the differences in the technology and rightly distinguished the two patents. The Court further held that mere citing of prior art by the Defendant did not amount to a credible or serious challenge to the validity of the patent and that the Defendant had to point to the presence of a serious triable question as to the validity of a patent. This was even more the case considering the fact that the Plaintiff’s patent had been in force for 6 years and had never been challenged.

On s.107A(b), upon being asked by the Court to produce evidence of the Chinese patent, the Defendant said that it had requested its Chinese supplier to provide the same, but was yet to hear from the supplier. The Court observed that in the absence of proper credentials about a validly subsisting Chinese patent on the Chinese manufacturer’s product, the Court would have to go with a prima facie conclusion that the Defendant was not entitled to the defences under S.107A(b).

This means that in the absence of a patent in a foreign country over the product in the importer’s favour, importation of the product from the foreign country into India would amount to infringement of a patent granted in India to another entity. Stated otherwise, importation of a product from a country where there is no patent by a third party is not an act which is duly authorised by the law and therefore violates the right of importation of the patentee.

(On a different note, since the Defendant has admitted that his product is similar to that of the Plaintiff’s, the European patent cited by the Defendant to challenge the Plaintiff’s patent could serve to challenge the patent of the Defendant’s Chinese supplier as well, if at all it exists....)

On the issue of working, the Defendant’s arguments actually make for an interesting read. The Defendant contended that the Plaintiff’s patent had never been worked in India since no evidence to support its working had been submitted before the Court. The Court pointed out to the Defendant that the Defendant themselves had been purchasing the products from the Plaintiff in 2005-2006 which was proof enough to establish working of the Plaintiff’s patent.

On the basis of these reasons, the Court held that since there was no serious challenge to the Plaintiff’s patent, interim injunctive relief could and ought to be granted.

SpicyIP Tidbit: Court Gives the Go-ahead for “Jail”

2009-11-08T18:27:00.000+05:30

Madhur Bhandarkar’s movie “Jail”was given the go-ahead by the Bombay High Court in a copyright infringement action instituted by Sushila Sharma, the proprietor of a little known entity called Harsh Raj The Economic Timess. She alleged that the movie infringed the copyright in her film, also titled Jail, which never saw the light of the day.

The Court dismissed the allegations saying this was reflective of the increasing tendency to file suits on the eve of release of films and was nothing short of blackmail. Bhandarkar’s lawyers contended that Sharma’s claims were frivolous since, Rajesh Maria, also the proprietor of Harsh Raj, had signed an agreement purportedly assigning the rights to the movie to Bhandarkar’s company Percept Ltd. It was further pointed out that though the publicity campaign for the film was launched in September, the allegation was made on the eve of release of the film casting serious doubts on the intention of the plaintiff.

On a different note, the movie is not bad and certainly worth a watch.