Kerala’s “Mission IPR” nipped in the bud?

The Kerala IP Policy that has been subject to a fair share of controversy has now hit a road block from a wing of the Government itself.

The Supervisory Council on Intellectual Property (SCIP) which was the planned administrative mechanism in “Mission IPR” has been shot down by the Finance Department which has refused to appoint technical staff, on grounds that the staff from other wings of the Law Department could be relocated for this process instead.

What is Mission IPR?

The much talked about and the hotly debated IP Policy to be implemented by the State of Kerala is collectively referred to as Mission IPR. The IPR Policy hopes to serve as a mechanism for governing the entire spectrum of Intellectual Property Rights administration in the State. The IPR policy as envisaged recommends the constitution of the a separate autonomous body in the State for IP Administration under the wing of the Law Department, regulating “traditional knowledge”, and the establishment of the Kerala Traditional Knowledge Authority. Another major and innovative proposal is the setting up of an IPR academy.


Who are the various members of the SCIP and what were its proposed functions?

The directive of the Supervisory Council on Intellectual Property to check violation of knowledge users’ rights, provide a conduit for patent applications from state-supported research institutions, help inventors prepare patent applications, support patentable research work and disseminate knowledge about IPR. The Council to be chaired by the Chief Minister and have the Law Minister as second in command, was initially supposed to have experts, technical staff apart from the ministerial members of the Council (including Health, Industries, Water Resources and Agriculture).

Relevant mandates of the Policy (information received through RTI Application discussed below) include the encouragement of more inventions/innovations, establishing a "Kerala IP Academy" for generating a cadre of competent IPR professionals, coordinating with various agencies of Kerala Government to assist them in all agreements relating to intellectual property, creation of a database for traditional knowledge especially Ayurveda Manuscripts to prevent misappropriation of knowledge already in the public domain, and conferring reasonable assistance and information to Public in the filing of IP.

Envisaged as the first step or the base of the formulated IP Policy, this hurdle in the constitution of the SCIP has created already raised several eyebrows in the initial stage of the policy implementation.

What objections have been raised in the constitution of the SCIP?

Despite the constitution of the SCIP already being made public, the Finance Department through their Principal Secretary issued a note a September 23^rd of 2008, stating that the request for the setting up of a separate IPR administration (the SCIP) was rejected. This note was made available to the public after the filing of an RTI Application by a concerned citizen to gauge the following details:

“a) Reasons for excluding Scientists and other Experts from SCIP in contravention to its constitutional aspects mentioned in para 14 of Kerala IPR Policy
b) Reasons for deferring the setting up of "appropriate technical staff" of SCIP (which is vital for the functioning of SCIP)
c) Reasons for deferring the constitution of sub-committees, specialized groups and Kerala Traditional Knowledge Authority (KTKA)”

The Principal Secretary suggested that instead of the establishment such a council under the Law Department, the deployment of existing temporary staff from various wings and cells in the Law Department where the workload was not heavy would be a more prudent approach.

Interestingly, weekly Malayalam journal Mangalam reports that the Law Department had requested one Special Secretary, one Deputy Secretary, One Section Officer, Three legal assistants, one typist, one peon, one Scientist and Five Scientific Officer/Assistant- none of which were sanctioned by the Finance Department.

Reactions

After this refusal was made public, reactions have been strong from all quarters who old some interest in this undertaking.

Government: In response to this surprising move, The Hindu reports that several officials believe that “the number of staff manning the various sections in the Law Department was inadequate even to handle the present volume of work.” More importantly, it is necessary to examine the impact of this note on the setting up of the IP Policy itself.

Despite the policy being strongly debated on several fronts, as we have stated previously, the policy cannot be faulted for setting themselves very difficult goals, high standards and thinking out of the box. In setting themselves such targets, this note of the Finance Department would defeat the very objective that Mission IPR has set for itself- to ensure the protection of various IP rights through the functioning of an efficient administrative mechanism. This has been echoed by the Chief Minister of Kerala in a note to the Law Department.

Inventors: Inventors- with patents or those awaiting patents, have all spoken out strongly against this disappointing end / start to the administrative mechanism of the Kerala IP Policy.

SpicyIP Reacts

We have had several posts that revolve around the correctness, constitutionality as well as the viability of the Kerala IPR Policy. However, this blogger firmly believes that in case this ambitious project is to be carried out doing so without a proper administrative setup is impossible. The mandate of Mission IPR (discussed above) make it amply clear that a certain level of IP domain expertise is required. In nipping this project in the bud, the Kerala Government may have created more hurdles in the implementation of an already much debated policy.

(SpicyIP would like to thank Mr. Praveen Raj, for directing us to important information as regards the contents of this post).

India's "TRIPS" Case Against the EU: How Strong is It?

In two media interviews, I opined that India may not have much of a "TRIPS" case against the EU in relation to the seizure of "in transit" consignments.

After a careful study of the TRIPS provisions in this regard and some of the literature, I have to admit that I might have been wrong in my estimate: the case seems stronger that I had initially thought.

I'm still researching the issue and will articulate my final analysis in the days to come, but am jotting down some issues for consideration in this post. And I hope to hear back from our readers, some of whom have exchanged personal emails with me and persuaded me (with very sound reasoning) to rethink my own position on this. Prashant Reddy has already blogged on this issue here.

Firstly, it ought not to be lost on our readers that this is an extremely interesting issue, because it completely flips our notion of "TRIPS obligations" and "TRIPS flexibilities". Thus far, TRIPS has been seen as a "minimum standards" international instrument --i.e. all member states have to adhere to certain basic levels of IP protection. They are free to go above them, but they cannot go below.

To the extent that there are some inherent "flexibilites" in the language of TRIPS, member states can play around a bit with the words and still comply wtih the minimum base line protection mandated under TRIPS. Our dear departed Minister Murasoli Maran was often wont to state in this regard that TRIPS was "couched in the language of diplomatic compromise" and that it was "susceptible to being stretched all the way from India to Geneva".

Contrast this with the present position where the EC Regulation in question (EC Regn 1383/2003, under which the "in transit" seizures were made by the Dutch authorities) is not below the minimal baseline protection that TRIPS mandates but in fact goes much higher than this baseline. The question is whether the sky is the limit for countries that wish to implement such higher IP protection norms or whether there is an upper cap in this regard under TRIPS? Henning Gross Ruse Khan, a researcher at the Max Planck Institute, who guest blogged with us earlier, has an excellent paper on this theme that has just been published at SSRN. He has co-authored this with Professor (Dr) Annette Kur, a very well respected expert in international IP issues. Henning was one of the colleagues who was instrumental in persuading me to rethink my earliest assumptions.

Anyway, let me get down to the nitty gritties of the various TRIPS articles to help explain as to why India and Brazil might have a better case than I intially thought.

1. Article 51 of TRIPS states as below:

"Members shall, in conformity with the provisions set out below, adopt procedures (fn 13) to enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place, to lodge an application in writing with competent authorities, administrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods. Members may enable such an application to be made in respect of goods which involve other infringements of intellectual property rights, provided that the requirements of this Section are met. Members may also provide for corresponding procedures concerning the suspension by the customs authorities of the release of infringing goods destined for exportation from their territories."

fn 13: "It is understood that there shall be no obligation to apply such procedures to imports of goods put on the market in another country by or with the consent of the right holder, or to goods in transit."

One could quite persuasively argue that the above Article draws a clear distinction between "in transit" goods and "imported" goods. I have highlighted some parts in the above Article to help appreciate the contextual positioning of the terms "imports" and "transit".

The obligatory part of Article 51 is only to implement border measures in relation to the imports of counterfeit and pirated goods. Member states "may" also impose these measures in relation to patents and other kinds of IP.

Member states "may" also impose these measures in relation to "transit" goods (note that I am reading footnote 13 which is worded negatively ["there shall be no obligation...."] to suggest something positive ["members may"). However, in case of such transit goods, Article 52 requires that there must still be the prospect of an illegal "importation". In other words, transit goods may be seized only when such goods are destined for a member state (eg: Brazil), where the "importation" of such goods would be illegal i.e. Brazil would treat such goods as counterfeit trademark goods or pirated copyright goods. Article 52 states:

"Any right holder initiating the procedures under Article 51 shall be required to provide adequate evidence to satisfy the competent authorities that, under the laws of the country of importation, there is prima facie an infringement of the right holder’s intellectual property right and to supply a sufficiently detailed description of the goods to make them readily recognizable by the customs authorities."

It is to be noted that a charitable reading of Article 51 would suggest that even in respect of patents and other IP, the option to catch "transit" goods (as outlined above) vests with member states. In other words, even if the transit good violates only a patent right (as in the case of the DRL drug consignment that was destined for Brazil but "transitting" through the Netherlands), the Dutch may seize it.

However, owing to Article 52, one might argue that the Dutch can do so only when the goods so seized are likely to violate Brazilian patent laws as well. In the case of Losartan, there is no patent in either India (exporting country) or Brazil (importing country). Consequently the Netherlands (country of transit) cannot seize these goods without violating Article 52 of TRIPS.

Such seizures by the Dutch would arguably also violate Article 41 of TRIPS which states in pertinent part that IPR enforcement measures (including border measures) "shall be applied in such a manner as to avoid the creation of barriers to legitimate trade". The export of approved generic drugs that are not covered by patents in either the country of export or the country of import will easily qualify as "legitimate trade". The seizure of such goods by Dutch authorities, when they are not meant for the Dutch or any of the EU markets could arguably constitute a "barrier" to such legitimate trade.

If the above interpretation holds good, then at least on the above points, India and Brazil have a stronger case against the EU "in transit" seizures that I intially thought. Lastly, in the light of recent EU judgments (including the latest Montex/Diesel case), which appear to have held against "in transit" seizures, India and Brazil ought to also explore whether or not they might mount a challenge before the EU courts itself.

India's Own Take on "Crown Use"

Finally, here’s a judgement on patents which means business and is thankfully not circuitous because, it is indeed a skill to identify and respect that elusive juncture where articulation ends and rambling begins, which is all the more important if it is a judgment. I say this with a sense of relief coupled with cautious elation that the Indian judiciary is slowly but surely finding its own way of dealing with patents casting aside a coloured vision of socialism.

Facts
The judgment being referred to was delivered by the Bombay High Court last December in a case between Pune-based Garware Wall Ropes on one hand (Patentee-Plaintiff-Appellant) and A.I Chopra Engineers & Contractors (AICEC), Konkan Railway Corporation (Co-owner of a patent) on the other (defendant-respondents). (Regular readers of SpicyIP would recollect that Garware Wall Ropes was previously involved in a patent litigation which was decided by the Gujarat High Court last April).

The patents in question in this case are IN196204 (“Steel Wire Rope Net System”) and IN201177 (“Spiral Lock System”); the first one is jointly owned by Garware and the Konkan Railway Corp (KRC). Where ‘204 is a product primarily used in mountainous terrains for protection against boulder rockfall, mudslides and avalanche, ‘177 is used to bind two adjacent panels of boulder nets with each other, specifically to prevent rocks from falling through the junction of two nets. Garware alleged that the first respondent AICEC infringed the patents by vending/using identical/substantially similar products to obtain government contracts, particularly in a tender issued by KRC seeking bids from manufacturers of such products.

Needless to say, Garware sought an ad interim injunction during the pendency of the suit which was denied by the trial Court on the grounds that damages could be recovered later; the highlight of this case is the primary defence of the defendants- section 100 of the Patents Act. AICEC submitted that since the contract with the Railways had been inked in the name of the President of India, its use of the patented inventions fell under the provisions of government use defined in ss.99 and 100 of the Act which gave it a safe harbour from infringement. It further claimed that the subject-matter of the patents had allegedly been in use for more than two decades. It must be pointed out here that since the defendants did not prefer a revocation bid in their counterclaim, which is surprising (and not advisable), the case was not transferred to the High Court as is usually done under s.104.

Consequent to the rejection of the request for interim injunction, Garware preferred an appeal to the Nagpur Bench of the Bombay High Court where the following issues were considered:
1.Novelty and patentability of the subject-matter of the patents
2.Scope and validity of a defence under s.100 of the Act

Discussion
Since the factors relating to the grant of a temporary injunction have been discussed over a zillion times, I shall desist from chewing the cud again. For a change, this judgment gives an opportunity to discuss lesser-known sections such as ss.99 and 100 and the Court has rightly devoted a good part of the judgment to these sections which fall under Chapter XVII of the Patents Act.

Law is a definitional discourse, so before we proceed to make sense of the propositions, one has to be clear as to the meaning imputed to terms used in the propositions. S.99 defines what constitutes “use of an invention for the purposes of government” according to which an invention is said to be used for the purposes of government if it is:
1.Made
2.Used
3.Exercised or
4.Vended
for the purposes of the Central Government, State Government or a Government undertaking.

s.2(1)(h) of the Act defines a government undertaking and of the 4 categories listed under it, one is an industrial undertaking carried on by a Government company as defined in section 617 of the Companies Act, 1956; in this case, the KRC falls under this category. S.99(2) further states that no provision of chapter XVII would be applicable to any act which falls under the conditions stipulated in s.47 of the Act. This requires us to compare and contrast s.47 and s.99 to understand the phrase “for the purposes of”.

s.47 allows, both in the case of a product or a process patent:
1. importation by or on behalf of the government
2. making by or on behalf of the government
for the purpose merely of its own use.

Principles of interpretation of statutes and s.99(2) clearly require us to ascribe different meanings to ss.47 and 99; The former (s.47) refers to the use of the invention under the doctrine of eminent domain i.e. in the discharge of sovereign duties and performance of departmental functions which is evident from the absence of payment of royalty to the patentee. The Bombay High Court has further explained this to include employees and agents of the government but not a contractor of the Railways such as AICEC. More importantly, the right to vend is not available; on the contrary, s.99 does envisage in no uncertain terms the vending of the invention, either pre-grant or post-grant, subject to the satisfaction of certain requirements spelt out in s.100. What are those requirements and how important are they? S.100(1) says:

“Notwithstanding anything contained in this Act……….. the Central Government and any person authorised in writing by it, may use the invention for the purposes of government in accordance with the provisions of this chapter”

Though this sub-section speaks of authorisation, it is not clear whether the authorisation referred to here is with respect to the authority given to perform a certain task or an authorisation given in respect of use of the invention. But this is clarified as one proceeds to sub-section 4 where it clearly states “The authorisation by the Central government in respect of an invention may be given under this section….”. It is true that s.3(8)(b) of the General Clauses Act includes the President under the definition of the Central government but the very tone of s.100(4) of the Patents Act indicates that the authorisation has to be specifically in respect of the invention; stated simply, the mere fact of authorisation for a particular task does not translate into authorisation for use of the invention.

The Court too expressed an opinion on similar lines and rejected the contention of the respondents that the contract with the Railways in itself was an authorisation as required by s.100. Another important aspect of s.100 is that it does not require the consent of the patentee for such authorisation. So far so good, but what would happen in a situation where the government is a co-owner? Would the government need to take the consent of the co-owner of the patent or can it choose to invoke the executive prerogative envisaged by s.100? s.156 of the Act states that subject to other provisions of the Act, a patent shall have the same effect against the Government as it has against any other person which could mean that the government too would need the consent of the co-owner, but such an interpretation is overriden by s.100(1) which begins with a non-obstante clause- “Notwithstanding anything contained in this Act…”

At this juncture, I was reminded of a particular case in the UK Court of Appeals where “Crown Use” was elaborated upon- Henry brothers v. Ministry of Defence and Northern Ireland Office (1998). Ss.55-59 of the UK Patents Act 1977 deal with crown use which is similar to Chapter XVII of the Indian Patents Act (in fact, not surprisingly, certain sections are identical). In this case, both the parties were co-owners of a patent on prefabricated blast-resistant building structures.

The Ministry of defence permitted a contractor to use the patented invention for building a police station in Northern Ireland without the permission of its co-owner, Henry Bros. The Court held that the use in this case fell under crown use and so the government was not required to seek the permission of the co-owner. The task of the UK Court was easier because s.55 and 56 of the UK enumerate the grounds of use which are absent in the Indian Act making it difficult to distinguish between grounds of use under s.47 and s.100.

Next, the Court dealt with the evidence adduced by the defendants to establish lack of novelty in subject-matter of the patent. The Court here was withering in its observation that not only was this evidence being introduced afresh at the appellate stage, the defendants had merely downloaded documents from the internet without considering the specification of the patent and the improvement it sought to protect. Further when the defendants argued that the “invention” was a mere improvement which did not qualify to be an invention under the amended Act, the Court was quick to point out that the patent application was filed prior to the amendment.

Even on the question of presumptive validity, the Court appropriately pointed out that the grant of a patent was not a mere registration procedure and the very scheme of grant required one to ascribe a certain amount of credibility to a patent on the basis of presumptive validity atleast in an interlocutory proceeding. All these go on to show that the Court was alert to the possibility of being misled or intimidated and that it was certainly not naïve when it came to patent law. The refreshing aspect of this judgment however is the following observation of the Court:

"For the above reasons, therefore, if any other interpretation is put as contended by Advocate Shri Manohar (Counsel for the defendants), the net result would be that a patentee inventing a patent by utilization of huge money and manpower involving scientists, technocrats and technicians would be left high and dry and this would definitely be detrimental to the encouragement of scientific and technical advances in the country."

Conclusion
Of all the “young patent nations”, very few would probably have the kind of trouble (Dharmsankat, if I may) India has with reconciling patent law with its conscience having donned for long the mantle of torchbearers of socialism which apart from putting us at a “high” moral pedestal has seldom given positive results. Having said this, I feel that the judgment of the Bombay High Court is another step forward in evolving our own jurisprudence, particularly in the non-pharma context. What is even more heartening about this judgment is its pleasant lack of sanctimony which one is accustomed to in cases concerning the pharmaceutical industry; as one of my seniors rightly pointed out, it is time that we gave patents a fresh look devoid of prejudices which pharma debates tend to bring in.

Kolkata IP Event: The Psychology of IP Protection and Anti Counterfeiting

A reminder that NUJS (National University of Juridical Sciences), Kolkata is hosting Professor Avi Choudhury, a reputed Canadian academic and Shwetasree Majumder, a leading IP litigator for a round-table on issues relating to anti counterfeiting tomorrow (29th of Jan) between 3 and 5.30 pm (in Room 006, Ambedkar Bhavan, NUJS)

All are welcome to attend. But if you wish to attend, please send me an email (shamnad[at]gmail.com) so that I have some idea of the numbers.

The campus of NUJS is located in Salt Lake, Sector III, very close to the Beleghata bypass. Key landmarks are the National Institute of Fashion Technology [NIFT] and the College of Engineering and Leather Technology.

Unfortunately, the current NUJS website leaves much to be desired. But this wikipedia entry should give you some idea of this institution.

As noted in an earlier post that first announced this talk:

Professor Avi Chaudhuri, a very distinguished Canadian academic will deliver a talk at NUJS on the 29th of January (Room 006: from 3 to 5.30 pm).

His talk is titled "The Psychology of IP Protection and the Role of Technology". During his talk, he will focus on anti-counterfeiting measures and approaches, why they fail to be implemented by brand owners, and also why certain companies succeed in taking a proactive measure. The talk is based on insights that he has gathered from close to two years of research in India. He will also discuss new technological solutions that are available to combat counterfeiting and piracy, and how they help in IP and brand protection.

He recently did a report for CII on anti-counterfeiting technologies and a short review of this report was carried by Sai Deepak on our blog.

I hope you can make it to his talk, which promises to be very interesting and "multidisciplinary" in tone, given that he is a psychologist speaking on legal issues. If you plan to attend, could you please RSVP me at shamnad[at]gmail.com

The added bonus (and a terrific bonus at that) is that you also get to hear an ace IP litigator, Shwetashree Majumdar speak on the legal aspects around counterfeiting. Shwetashree is the founding partner of an IP boutique based out of New Delhi called Fidus Law Chambers. Prior to this, she had been one of the youngest partners at India's leading IP law firm, Anand and Anand. And one of our most versatile bloggers here at SpicyIP.

Her talk will complement and follow that of Professor Chaudhuri's. In particular, her talk titled “The Counterfeiting Spectrum – Facts, Laws and Enforcement” will deal with the following aspects:

A. Facts:

1. An overview of the counterfeiting industry in India – the different forms of counterfeiting, the revenue models, the changing profile of counterfeiters, different mechanisms used by counterfeiters.

2. A specific case study of music and film piracy through recent statistical data.

B. Laws

1. The basic IP laws to tackle counterfeiting along with the recently enacted Intellectual Property Rights (Enforcement Rules) 2007

C. Enforcement

1. Which laws work; which don’t.

2. The modus operandi of the enforcers.

3. Civil v. Criminal actions

NUJS Event: Anti Counterfeiting Talk by Prof Avi Chaudhuri

As many of you may know, I joined NUJS (National University of Juridical Sciences), a law school in Kolkata a couple of months back. We're doing a series of IP events and I wanted to take this opportunity to invite our readers that are based out of Kolkata (or are in Kolkata on any of those days) for these events.

To begin with, Professor Avi Chaudhuri, a very distinguished Canadian academic will deliver a talk at NUJS on the 29th of January (Room 006: from 3 to 5.30 pm).

His talk is titled "The Psychology of IP Protection and the Role of Technology". During his talk, he will focus on anti-counterfeiting measures and approaches, why they fail to be implemented by brand owners, and also why certain companies succeed in taking a proactive measure. The talk is based on insights that he has gathered from close to two years of research in India. He will also discuss new technological solutions that are available to combat counterfeiting and piracy, and how they help in IP and brand protection.

He recently did a report for CII on anti-counterfeiting technologies and a short review of this report was carried by Sai Deepak on our blog.

I hope you can make it to his talk, which promises to be very interesting and "multidisciplinary" in tone, given that he is a psychologist speaking on legal issues. If you plan to attend, could you please RSVP me at shamnad[at]gmail.com

The added bonus (and a terrific bonus at that) is that you also get to hear an ace IP litigator, Shwetashree Majumdar speak on the legal aspects around counterfeiting. Shwetashree is the founding partner of an IP boutique based out of New Delhi called Fidus Law Chambers. Prior to this, she had been one of the youngest partners at India's leading IP law firm, Anand and Anand. And one of our most versatile bloggers here at SpicyIP.

Her talk will complement and follow that of Professor Chaudhuri's.

Indian Patent Office Breaks with Tradition and Gets a New Chief

SpicyIP just learnt that a career bureaucrat (IAS officer) has taken over as the new Controller General of the Indian Patent Office.

SpicyIP congratulates Mr PH Kurian, a 1986 IAS (Indian Administrative Service) Officer on his appointment as the Controller General of Patents, Designs and Trademarks (CGPDTM). Mr Kurian's appointment signals a fundamental break with tradition, as hitherto, the Indian IP office has always been headed by an insider (typically an examiner at the IP office who has risen through the ranks). And with the exception of Mr Ravi (the erstwhile Controller General and a trademark specialist), most such appointees have been patent specialists.

Mr Kurian has no IP background, but has worked as a career civil servant (IAS officer) in a wide variety of capacities, including most recently, as the Principal Secretary to the Department of Industry, Kerala.

Having an IAS officer head the Indian IP office is of monumental significance, and reflects the growing importance of this office. One of my colleagues even mentioned that a government rule (that stipulates that any government agency that is worth more than 100 crore rupees in turnover needs to be headed by an IAS officer) may have triggered this appointment. Any of our readers with more insights into this process and these alleged rules?

Interestingly, Joff Wild (of the reputed IAM (Intellectual Asset Magazine),) Duncan Bucknell (an internationally renowned IP strategist) and me discuss the qualification that the head of a patent office ought to possess. In other words, should such patent chiefs have a background in "patents"? The consensus amongst us appeared to be that it would be far more preferable to have such a post filled with someone blessed with common sense, rather than someone with a more of a "patent" sense and less of common sense.

Else, as Joff opines, someone as talented as President Obama would never even be considered for the post of the US Patent Commissioner. It ought not to be lost on our readers that America may be one of the very few countries which has had a former US Patent Commissioner elected as President (tis Thomas Jefferson that I speak of).... perhaps signalling the importance of patents to this country.

SpicyIP hopes that Mr Kurian's appointment will usher in some fresh thinking at the Indian patent office. As many familiar with the Indian patent office are aware, fresh and innovative thinking is an absolute must for this office, which has hitherto been beset with several problems, including understaffing, lack of "specialised" examiners/controllers, sub optimal access to specialised patent databases, sub optimal training and mentorship, high rates of attrition and issues of "transparency", something that has been the focus of this blog and mainstream media as well. Needless to state, the recent spike in the number of applications pertaining to complex areas of technology such as pharma, biotech etc has only added to the pressure.

To complicate matters further, we believe that recently, a great number of Examiners were suddently promoted as "Controllers," making the Examiner: Controller ratio almost 1:1!

We wonder how this skewed ratio is likely to impact decision making at the patent office, given that the primary responsibility with examining an application lies with "Examiners". In particular, we wonder if the patent office is hiring more Examiners to fill in the gaps? Secondly, what were the reasons underlying this sudden surge in promotions? Did the office really need so many new Controllers? Did existing Controllers resign or leave? Or are Controllers being vested with new responsibilities now? Can any reader familiar with these developments throw some light?

To those not familiar with the structure of the Indian Patent Office, here is an extract from a report that I'd prepared for the India-EU TIDP (trade and investment development) programme):

"The Office of the Controller General of Patents, Designs and Trade Marks (CGPDT) is a subordinate office under the Department of Industrial Policy and Promotion (DIPP) in the Ministry of Commerce and Industry (MoC&I). This Office has the statutory responsibility for administration of patents, trademarks and industrial designs and serves as a main source of policy advice to the Government of India on industrial property matters. The Controller General of Patents, Designs and Trademarks (the Controller) is the administrative and statutory head of the Patent Office and the Trade Marks Registry. The Controller as also the various examiners and other officers are appointed by the Central Government. It is in this sense that the patent office qualifies as a government agency. Although the Act vests most powers in the Controller, it stipulates that such powers can then be delegated by the Controller to his subordinate officers. It is important to appreciate that while certain acts of the patent office qualify as ‘purely administrative’, others would qualify as ‘quasi judicial’.

The Patent Office is headquartered in Kolkata and has branch offices in Mumbai, Chennai, and New Delhi. The Patent Office performs duties relating to the granting of patents as set out in the Patents Act, 1970, and the registration of industrial designs under the Designs Act, 1911.

The number of personnel at the Indian Patent Office (IPO) are as below (as of 31 March 2006)

• One Controller General
• Two Joint Controllers
• 5 Deputy Controllers
• 33 Assistant Controllers at the Patent Office.
• 141 examiners (although sanctioned strength is 157)
• 140 support staff"

Again, for the benefit of those not entirely familiar with the Indian patent office, the hierrarchy appears to be (in increasing order):

1. Examiners (number varies each year)
2. Senior Edaminers (number varies each year)
3. Assistant Controllers (number varies each year)
4. Deputy Controllers: (number varies each year)
5. Joint Controllers: (normally 2)
6. Controller General of Patents Designs and Trademarks: 1

The skewed Examiner: Controller ratio might be one of the first things that Mr Kurian may need to fix. As he goes about his job, many eyes will be tracking him, perhaps in the fond hope that with such a high profile appointment, at least some of the issues plaguing the Indian patent office will come to be fixed in the near future.

Nina Sings The Blues

The uncomfortable peace between the freedom of speech and expression, artistic liberties and copyright laws has again been disturbed. This time the challenge is mounted by Nina Paley, a US based cartoonist and filmmaker. The controversy centres on the music pieces used by Paley in her animated feature film titled Sita Sings the Blues.

The theme of the movie, as briefly defined on the movie’s website is:

Sita is a goddess separated from her beloved Lord and husband Rama. Nina is an animator whose husband moves to India, then dumps her by email. Three hilarious shadow puppets narrate both ancient tragedy and modern comedy in this beautifully animated interpretation of the Indian epic Ramayana. Set to the 1920's jazz vocals of Annette Hanshaw, Sita Sings the Blues earns its tagline as "The Greatest Break-Up Story Ever Told”.

The animated film has won awards and rave reviews in several film festivals around the globe. An article by film critic Roger Ebert is an example of the praise the film has garnered.

In spite of the praise and hype, Paley is unable to release the film commercially because it’s locked in the ‘copyright jail’. In fact Nina’s blog has quite an image of a blue eyed, curvaceous, made up Sita behind bars which seek to symbolise the copyright jail. The image is reproduced above.

The problem relates to the music used by Paley. The music consists of 11 Hanshaw recordings. The copyright over these sound recordings has run out and they are in the public domain. However, in lieu of the term extension granted to copyrighted works by the Sony Bono Copyright Term Extension Act, the underlying compositions, i.e., the lyrics and written music for the songs are still protected as musical works under copyright law. Thus, in order to release the movie, Paley needs to get licenses from the owners of these underlying works. The owners of the 11 tracks used in the movie are the ‘big boys’ in business, namely, EMI, Sony-ATV Music Publishing and Warner-Chappell Music amongst others.

Originally, these corporations are ready to give the license for the 11 songs at issue in the movie was $220,000. This sum was simply unaffordable for Nina. Subsequently, Nina was able to get this amount reduced to a step-deal that starts at $50,000 (which she’s taking out a loan to pay) and goes up from there depending on how successful the film is.

The problem for Nina is that this step deal is also quite expensive and burdens her considerably. The working of the step deal is as follows: If the film was to be shown in theaters and made a million dollars at the box office, Nina would have to pay another $38,500 for the licenses. That means that if the film makes a million dollars at the box office, the publishing companies that own the rights to the compositions sung by Annette and used by Nina make more collectively than Nina makes. However, Nina is hopeful on this front as she says that after theaters, distributors, agents, etc. take their cuts and deduct their costs, $1million in theatrical receipts would trickle down to about $30,000 to $80,000 for her. Thus, it’s very unlikely to ever generate that much box office revenue, so as to trigger the additional payment costs.

As regards the DVD sale, the deal stipulates that for every 5,000 home video units sold (DVD or download sales or on-demand sales) Nina must pay another $750 per song, meaning $8,250. To this she adds her own middleman fees (lawyer or negotiator – for which she has already been billed about $10,000 just trying to negotiate with these corporations). This is based on the calculation such that the fee of the corporations works out to be $1.65 per DVD, regardless of how much the DVDs sell for. This concerns Nina as it can turn out to be a costly proposition in a situation where she is already debt ridden.

Unable to pay the basic amounts, Nina’s movie isn’t finding any distributors. Hence, in order to find a way outside this maze, Nina has turned to her audience, vehemently arguing that copyright laws are being used by these corporations to own culture and independent film making is very difficult with these sharks in the water. Hence, the audience is asked to make donations to the cause to free the movie of this prison and help in its distribution. Just to note that normally such charges of licenses etc are paid by the distributors of the film. However, given the financial crises, the distributors are bleeding and aren’t giving any support to the independent indie film.

So it’s a big bad world and red riding hood needs to be rescued. Nina says that she will release her film under the Creative Commons Share-Alike, or some equivalent of the GNU/Linux license. Such a move will prevent it and any derivative works from ever being copyrighted by anyone. The free online copies of the movie will be marketed as promotional copies and such copies will fall outside the ambit of the step deal. As per the terms of the step deal, such copies can be distributed without the copyright owners laying a claim to the same. So Nina also plans to distribute promotional copies such that more people can get their hands on the movie.

Interestingly, in a scathing critique of the entire situation, Ben Sheffner states that Paley should have dealt with the problem of licenses prior to the making of the film. If the music was such an integral part of the film, then rights related to it should have been cleared at the earliest. Moreover, the bigger issue is whether you should be allowed to use someone else’s work in your creation even when you cannot afford it. Nina argues that she has worked on ideas already there and that charging such high prices suppresses art. Sheffner goes on to state that such a right to use another’s property at a price you afford simply doesn't exist in the law. He compares the situation to arguing that one has a right to the new BMW 6-Series at a price at which he can afford it, rather than the price BMW chooses to charge. In a response, Goldenrail argues that it is not fair to compare these licenses to a BMW, as once BMW sells the car, it cannot sell the same car again. However, for the publishing companies to come to a reasonable agreement with Nina (she offered them a %), it would increase the value of their property by getting it more attention, not remove the property from their possession all together, as with a physical good. So they keep earning from it. Further, he argues that promoting the movie under the GNU/Linux license does not take away from the illegality of the use of Hanshaw’s music. He concludes to state that, “But Paley, like everyone else, must obey the law, and pay for using what isn’t hers. That, she does not seem to have done.”

Which way this debate goes is for us to wait and watch….

The Drug Patent Linkage Fiasco Continues

Pursuant to our last post pointing to a highly egregious Delhi High Court order that came close to mandating patent linkage in contravention of existing law, a number of news reports have emerged on this theme. For those interested, please see Mint Report by Unni and Radhika; ET report by Khomba Singh, and most recently, see Peter Ollier's report in MIP.

Interestingly, there is a short analysis in DNA by someone going by the name of "Pillman"--does anyone know who this is?

Khomba Singh of the ET did another report highlighting the fact that the Bristol Myers case was not the first case involving "patent linkage". Rather an earlier case that had been filed by Bayer against the DCGI and Cipla was ever more troubling. Particularly since this was in the nature of a writ petition directed specifically against the DCGI (Drug Controller General of India).

Note that that Hetero case was a private law suit between BMS and Hetero and the DCGI was not even a party to this. Further the court order did not directly mandate "linkage"--rather it was couched in terms of an "expectation" that the DCGI would ensure that no patent rights were violated. As we stated in an earlier post:

"...since the DCGI is not a party to the law suit between BMS and Hetero, one might argue that he is not "technically" bound by the Delhi High Court order. However, going by a Mint news item, where the DCGI demonstrated a keenness in policing patents, one might expect the Delhi High court order to have some persuasive impact on him."

CH Unni and Radhieka Pandeya of the Mint also report on this second Bayer vs DCGI and Cipla case, noting that:

"Meanwhile, another controversial ex parte order of December by the Delhi high court, unlike in the Hetero case, had directly asked DCGI to reject a generic drug application filed a few months ago by Cipla. Cipla has sought the revocation of that decision, as reported in the Economic Times on Monday.

Cipla had sought approval for a generic version of German multinational Bayer AG’s cancer drug Nexavar. Bayer holds a 2007 patent for this drug in India. The court order was on a writ petition filed by Bayer claiming patent violation. DCGI, as the first accused in the writ petition where Cipla is also a party, will be replying to the court in due course, and the case will come up for hearing on 19 January."

And lastly, for those who have more of a "ear" for podcasts, I've discussed the above two cases at length with Jeremy Philips and Duncan Bucknell last week.

Upaid - the canary in the Satyam coalmine

Things have admittedly deteriorated over the past few weeks for the Indian IT company, and like a commentor on a previous post said, "one feels bad for those working at Satyam".

I caught up with Simon Joyce, the CEO of Upaid, a UK-based mobile payments technology company, for a reaction on recent developments. He said something very pithy, which I paraphrase: Upaid has been "the canary in the coalmine" in the Satyam story. It's still singing, though, and it maybe worthwhile if the powers that be actually listen to what's happening within. He had some very disturbing news to offer, which is of direct interest to this blog. The pre-trial discovery process that is ongoing in the IP-infringement related case in Texas has revealed that Satyam did not have even a single piece of documentary evidence indicating explicit transfer of IP title from Satyam employees to the company.

This impinges on certain fundamental issues of creating and transferring intellectual property. For a period of about 10 years which are under investigation in this case (from the early 1990s to the early 2000s), there was no evidence to suggest a clear chain of title for IP created by Satyam for third party clients. The discovery procedure has attempted to delve into IP titles beyond the ones immediately in question. It found that there are no documents that show that the thousands of employees that Satyam had in this period had transferred their rights to the company for any of the products they had created for any client. Indeed, there are suggestions that there was no mention whatsoever of "intellectual property", "patent", "copyright", or any such relevant term, in any agreement between employer and employee. Surely, this is "informality" pushed to an undesirable extreme?

Those of you who have been tracking this case for the past one year may recall that we had flagged this issue right at the top. In the initial stages, these were mere allegations made by Upaid in context of their own case. These developments suggest that these allegations may be true, and that the situation may be more grave than originally thought.

The implications of these revelations may be more grave than originally thought.
1. The allegations made by Upaid right at the beginning of this case may be very likely true.

2. If no clear chain of IP title has been found, then it is very likely that there are clients other than Upaid affected in similar fashion. Note that the glamourous roster of Satyam's clients includes several Fortune 500 firms, and leading international agencies.

3. It is very likely that several engineers working with Satyam in the 1990s have since left and moved on to other firms. They may also attempt to claim IP rights for products they had created in their employment with Satyam, leaving other clients in a similar position, who may find their products "infringed" by competitors, only to discover that they never possessed good title in the first place.

4. The ultimate thing that India as an outsourcing destination needs to be concerned about is this: It is possible that this lack of transfer of IP title is unique to Satyam. On the other hand, this may not be the case. At a time when corporate India and customer confidence is the cynosure of international attention, there is immediate need to introspect and investigate whether or not this problem is systemic in the industry.

Upaid has already contacted Nasscom in this regard in the past, and attempted to find answers for its own case. I believe that it makes good business sense for Nasscom to request its own membership to clarify on this issue, and assure their global clientele that their IP's in the right place, and all's well with the industry. It also needs to encourage its membership to treat IP as a fundamentally important aspect of their work, and generate and manage its portfolio systematically. I suspect there may be a hidden business opportunity for entrepreneurs in IP management in the IT sector in India. From a regulatory point of view at least, there may be no better institution in India at the moment than Nasscom to serve such a purpose.

Upaid believes that the composition of Satyam's new Board is encouraging, and that the Directors will bring to the table their rich and varied expertise, which will serve the company well. For sure, the Board will do well to immediately begin a comprehensive examination of its own IP portfolio which it has transferred or sold to its clients, and listen to the canary's cries.

Why the big fuss over the Dutch seizing Dr. Reddy's patent infringing drugs during transit? India has done the same in the past

The Mint recently reported that a consignment of generic drugs, manufactured by Dr. Reddy and headed for Brazil, has been seized during transit at a Dutch port, on the grounds of patent infringement. The consignment in question was of losartan, a drug, used to lower blood pressure. The patent for this drug in Netherlands is owned by Dupont. This is not the first instance where a consignment of Indian generic drugs has been seized in Europe during transit to a South American country. Last year the Pharmaceuticals Export Promotion Council (Pharmexcil), a governmental body, reported that European authorities had started cracking the whip on Indian manufactured generic drugs in transit to South American companies, making it a point to target small and medium scale manufacturers. The Mint had carried a detailed story on this in December.

Predictably the ‘IP - pharmaceutical’ cocktail has led to the usual rhetoric from various quarters. While on one hand we have the Secretary to the Commerce Ministry threatening to move the WTO against what he terms as an act of ‘piracy’, on the other hand we have ‘civil society’ activists predicting doomsday for patients in need of losartan – a BP lowering drug. To be fair to the Secretary of Commerce some of the earlier actions of the E.U. do qualify as piracy because of the lack of international consensus as the definition of ‘counterfeit drugs’. We had blogged on this earlier. However the current case is a clear-cut case of patent infringement.

In the present case the drug in question losartan violates a valid patent held in Netherlands and the Dutch authorities were only enforcing the law of the land when they impounded the consignment. I fail to understand how this qualifies as an act of piracy? In fact the irony is that India itself has been impounding shipments destined for Nepal whenever those transit shipments infringe Indian intellectual property laws. In the 1984 Supreme Court case of Gramophone Company of India v. Birendra Bahadur Pandey Indian custom authorities had impounded a shipment of pirated cassettes that were being sent through India to Nepal by a Singapore based company. The case eventually reached the Supreme Court and in an excellent judgment by Justice Chinappa Reddy the Court held that the term ‘import’ used in the Copyright Act covered the activity of transit. In para 39 of the judgment the Supreme Court held that

39. We have, therefore, no hesitation in coming to the conclusion that the word 'import' in Sections 51 and 53 of the Copyright Act means 'bringing into India from outside India', that it is not limited to importation for commerce only but includes importation for transit across the country. Our interpretation, far from being inconsistent with any principle of International law, is entirely in accord with International Conventions and the Treaties between India and Nepal.

(Co-incidentally Shamnad and me have discussed this case for its constitutional/international law aspects in our second article on the Novartis dispute in the Madras High Court. This article, published in the National Law School of India Review deals exclusively with the constitutional law aspects of the judgment and can be downloaded from the SSRN network over here.)

Given the fact that India itself has defined ‘import’ as covering even those goods which are under ‘transit’ it is rather hypocritical of India to expect the E.U. to follow a different set of rules.
If Indian drug manufacturers want to play safe they just have to make sure that their goods do not transit E.U. territories. In the meantime the Government must tone down the talk of dragging this issue to the WTO.

AIDS (Acquired Integrity Deficiency Syndrome) in the Nobel Prize Committee?

Salman Rushdie was probably and unfortunately right when he said that nothing is sacred anymore; the monumental edifice that the Nobel Prize has been for so long a time has now come under fire for tendentious practices in electing candidates for the prize. True, this is not the first time this noble institution has been at the centre of a controversy, but the controversies earlier related to either omission of deserving personalities, most notably M.K.Gandhi, or for the religious adherence to the three-collaborators rule. But this time, the allegations have far-reaching implications putting the very integrity of the process, and hence the prize, at stake.

What is the controversy all about? And how is it even relevant to an IP blog? Let us look at the actors first, that should give us the IP nexus- Anglo-Swedish pharma giant AstraZeneca, the Swedish anti-corruption agency, two Nobel promotional companies- Nobel media and Nobel web, 2 professors of the Nobel Assembly from the Karolinska Institute and the scientist Haruld Zur Hausen, the 2008 Nobel awardee for Physiology or medicine.

If reports are to be believed, AstraZeneca is alleged to have influenced the Nobel committee into awarding Haruld Hausen the prize for medicine recognising his efforts in discovering the link between between human papilloma viruses and cervical cancer. This, it did, by partly funding the Nobel companies, which are involved in explaining to the masses the work of Nobel laureates in medicine; the company has justified this saying its interest was limited to improving public health. Further, two academics on the Nobel committee have/had strong links to the pharma giant- one of them, Bo Angelin, is on the company’s board of directors and the other, Bertil Fredholm, was a consultant to the company.

What does AstraZeneca (AZ) stand to gain from this? Apparently, the firm holds the patents to ingredients which are used in the manufacture of vaccines used to fight the papilloma viruses; the vaccines are manufactured by Merck and GSK and the benefits to AZ can be gauged from the fact that Canadian capital Ottawa has committed $300 million for vaccination using Merck’s Gardasil. Laura Woodin, manager of media relations for AstraZeneca in the U.S., responded to the reports thus:

“Because the Nobel Committee of Karolinska Institute, and not the Nobel companies, elects candidates for the prize, AstraZeneca will not be able to influence who will be awarded the Nobel Prize, nor do we ever seek to.”

As for the Nobel Foundation director, Michael Sohlman, he said that “The foundation has 100 per cent confidence in the integrity of the Nobel Assembly at the Karolinska Institute, as we have in the other prize-awarding institutes”. Swedish anti-corruption prosecutors are actively investigating the issue

Only a few months earlier, Nobel Prize-winning British scientist Sir John Sulston had warned against the rise of what he called “moral corruption”, for which he held the medical industry responsible. One does not entirely support this opinion, yet I do feel this “Nobel-gate” should be an eye-opener and hopefully the issue gets resolved soon without unnecessarily muddling the reputation of a venerable institution.

Having said this, I couldn’t help being cynical; if an academic’s research is funded by an industry group, it is vehemently argued that the work is biased, that it represents industry views and that it is just a mouthpiece for vested interests. Though I strongly disagree with such a proposition, should one apply the same reasoning to the Nobel controversy as well? If yes, then let this issue be viewed and investigated objectively stripped of any sense of awe or sanctity. This, I say because for every individual, his/her reputation is as important as the next person’s (or in this case the institution’s).

That apart, I sometimes wonder how is it that everyone who is anyone, not even a someone, has a go at the pharma industry in full media glare and does so with absolutely no fear of any legal consequences; some have made their careers out of pharma-bashing with concerns over pharma patents becoming the latest weapon in their arsenal. To ably aid them in this these days, there's of course the ever-ready anti-IP brigade with the pitch becoming shriller with each passing day. Does this mean that the pharma industry tacitly accepts all that is being hurled at it in the name of safeguarding public interest? So does it admit that there is more than just an element of truth in the "anti-pharma diatribe"?

The reason I ask this question is that the literature is so vast with a Goebbels-like feel to it that it becomes next to impossible to separate truth from untruth, or should I say higher truth from lower ones. People do not stop falling sick, recession or no recession, and pharma industry, atleast in my opinion, can rarely fall short of consumers and given the kind of lifestyles we see around us, the numbers should only rise; yet how is it that an entire industry, an extremely critical one at that, is always seen through a tinted glass and accused of being greedy?

I am sure there are quite a few brickbats coming my way for either being naïve or for the inaccuracy of my statements. Nevertheless, I would be delighted to stand corrected, albeit in a polite manner.

Adding Innovation to Ayurveda!

Adding Innovation to Ayurveda! It is indeed interesting to know that the traditional Indian medicine system is undergoing a revamp. A news report very aptly titled How green is this medicine captures the views of Ayurvedic practitioners and the herbal drug industry in the wake of a recent amendment in the Drugs and Cosmetics Act, 1940.

A notification from Ministry of Health, Department of AYUSH dated 23rd October 2008 notifies about the amendment brought in the Drugs and Cosmetic Rules, 1945. The Drugs and Cosmetics (Second Amendment) Rules, 2008 substitutes Rule 169 of The Drug and Cosmetics Rules 1945 thereby permitting use of excipients along with their standard i.e. additives, preservatives, antioxidants, flavouring agents, chelating agents for use in Ayurveda, Siddha and Unani drugs (The use of exciepients is permitted on a condition that it is permissible under the Indian Pharmocopia as well as under the Prevention of Food Adulteration Act, 1954 and Bureau of Indian Standards, 1986).

The term ‘Ayurveda’ broadly, according to Sebastian Pole in his book “Ayurvedic Medicine: The Principals of Traditional Practice”, is understood as a generic term for traditional Indian medicine but also including aspects of philosophy, mythology, diet and yoga as well as mental and spiritual refinement as part of its teachings. The author further writes that Ayurveda focuses on preventing disease and optimizing vitality as much as on removing an illness therefore having a bearing on a holistic approach to health where mind body and spirit are considered to be an integrated whole.

In the light of this quite broad understanding of Ayurveda, let us see what the stakeholders say.

The news report tells that permitted use of additives and preservatives in Ayurveda, Siddha and Unani drugs has raised concern over preservation of the unique organic composition in such medicines. Some ayurvedic practitioners believe that, synthetic additives, apart from being detrimental to health, if used in large quantities may deprive the product from being an ayurvedic drug. While the other side believes that scientific innovation in Ayurveda is essential to improve upon the medicines as a product holistically leading to an effective marketability of the product.

So which way the balance should tilt? Does Ayurveda, in its holistic approach to health, incorporates the notions of scientific innovation based on effective marketability? Coco Chanel, the famous fashion designer, once said - In order to be irreplaceable, one must always be different. Taking cue from this quote one is tempted to ask a question – Is Ayurveda in its quest to be irreplaceable taking the ‘innovation route’ for market share. The issue of market share arises as figures from the news report reveal that in the estimated global market for Ayurveda which is worth $120 billion, India’s ayurveda exports are a mere $91 million. China and Sri Lanka lead the world in Ayurveda manufacture and export.

Ayurveda embraces the health (ârogya) of the body as its main aim and it is also true that innovating on a product to suit ever changing market demands is essential. Thus, in this perspective scientific innovation in Ayurveda seems appropriate but one has to tread a thin line. Ayurvedic drug improved upon without changing the basic composition, for which the drug is known for, may be the correct approach for mixing innovation with Ayurveda. This approach while capturing the philosophy of Ayurveda, has the added advantage of market suitability and also catching up with the competition.

The inherent facet of innovation on products to adapt to a changing marketplace is to capitalize on the traditional knowledge (TK). Capitalizing on innovating within traditional knowledge is also reflected in the patent application for a process for preparing an improved chyawanprash having higher nutrient value, rejuvenating and anti-aging properties (Patent Application No. 000004/KOL/2006A).
Chyawanprash is a popular ayurvedic formulation having Indian Gooseberry (Amla; biological name: Emblica Officianlis) as a major ingredient. Amla fruit is rich in many desirable properties. It was described in a 7th century Ayurvedic medical text.

A discussion on innovation and TK cannot be conclusive without looking at the protection of intellectual property (IP) created. The abstract of the patent application for a process for preparing an improved Chyawanprash reveals that the process, in effect, is a method involving cutting, roasting and mixing of dry fruits and then adding it to the Chyawanprash, which under Section 3(p) of Patents Act 1970 (as amended in 2005) is not an invention. The process involving cutting, roasting and mixing of dry fruits and then adding it to Chyawanprash is an aggregation of traditional knowledge
According to section 3(p), an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components is not a patentable invention. Here hence not an invention.

Instances like above amply reflect on the significance of traditional knowledge. The importance lies in the fact that the development of traditional knowledge’s practical component, often as an intellectual response to the necessities of life warrants protection from misappropriation. Protecting traditional knowledge as an intellectual property through existing major IP systems is a challenge as they are based on notions of individual property ownership whereas traditional knowledge is collective in nature and is often considered the property of the entire community. As a response a number of countries have adapted existing intellectual property systems to the needs of traditional knowledge holders through a sui generis measure of traditional knowledge protection. An IP system is made a sui generis one through modification of some of its features so as to properly accommodate the special characteristics of its subject matter, and the specific policy needs which leads to the establishment of a distinct system. When policymakers seek to develop a sui generis system for the protection of traditional knowledge, they generally need to consider the following issues:
v What is the (policy) objective of the protection?
v What subject matter should be protected?
v What criteria should this subject matter meet to be protected?
v Who are the beneficiaries of protection?
v What are the rights?
v How are the rights acquired?
v How are the rights administered and enforced?
v How are the rights lost or how do they expire? [i]

Application of intellectual property protection for an element of traditional knowledge with inbuilt adaptation to cultural characteristics and community goals is realistic but can the subject matter of scientific innovations based on market compatibilities become a part of traditional knowledge realm is an issue.

Traditional knowledge is dynamic in nature and continues to evolve. The experience and adaptation to a local culture and environment, developed over time, continues to develop due to experimentation and integration. Scientific innovation, if not adverse, may only add to the existing knowledge. The sui generis system, in addition to maintaining the specific policy objectives, may integrate innovation with the existing knowledge by including a process of an evaluation of the possible benefits or any consequence of such innovation through working with the members of the community. The evaluation, as a process, can possibly look for innovating on the product to suit market demands. This may also take the form of a kind of incentive for the market to take an interest in preserving and also improving upon the traditional knowledge.

Innovation on market demands without distortion of the original attributes will positively encourage the traditional knowledge holding communities towards effective commercialization of their traditional knowledge. Innovation is an integral feature of human existence and traditional knowledge innovated upon, albeit to suit market, cannot be negated.

[i] INTELLECTUAL PROPERTY AND TRADITIONAL KNOWLEDGE, Booklet n◦ 2 from WIPO

Extensions of Copyrights?

The starting of this year also marked the end of the designated period of copyright protection over Mahatma Gandhi’s works. The Copyright Act provides for a period of 60 calendar years of copyright protection after the life of the author. The holders of the copyright, Navajivan Trust have decided not to ask for an extension of the copyright.

“If you consider the spirit of Gandhian thought, one should not ask for such extension. And we have considered this issue and we are not going to ask for such extension,” said Jitendra Desai, Managing Trustee, Navajivan Trust, Ahmedabad.

"Gandhiji never supported the idea of copyright. But due to some instances, where his thoughts were misinterpreted, he was forced to give into the insistence of his well wishers urging him to get his works copyrighted. So he decided to entrust the copyright of his works with Navajivan Trust, which was started by him." recalled Amrut Modi, managing trustee of the Sabarmati Ashram Preservation and Memorial Trust.


According to Mint the Navajivan Trust has sold over 300 volumes of compilations of his articles, letters and speeches, apart from translations of his autobiography. Unfazed by the expiration of copyright, managing trustee Jitendra Desai reasons: “Even in profiteering, they would propagate Gandhian thought.” However, some Gandhians have expressed their concerns over the removal of the protection, stating that it would lead to the literature being misinterpreted and spread. This concern arises out of the worry that ‘text-torturing’ will take place, i.e., his text and message will get distorted when reproduced by independent sources. Some Gandhians are also worried that the end of the copyright period will lead to prices of the works shooting up.

The Navajivan Trust however, say that they will continue to publish his works at affordable prices so his words and thoughts would continue to be propagated despite the expiration of the copyright.

Are these worries misplaced? Or should authors such as Gandhi (‘famous authors’?) be entitled to longer protection? While both sides have their merits, only time will tell for sure. Incidentally, last week the IP Think Tank Blog had a discussion on whether famous authors should get longer or better moral rights. In the debate, the rights which authors received for their work were bifurcated into commercial rights and moral rights. In light of the issue of when the moral rights of the author actually ceases, one point of view was that it ceases on the death of the author. However, does this apply even when the works are those of ‘famous authors’? And how does one decide who is a ‘famous author’ and who isn’t? However, if one were to go by popular opinion, most people feel that famous personalities should be protected from destruction of their works, as their work is often of considerable cultural/social importance. Nonetheless, how long would one continue to seek extensions on the copyrights of these works?

We don’t have to look too far to find a similar example of great works of an Indian intellectual coming out of copyright protection and into the public domain. The end of Rabindranath Tagore’s copyright period saw a mad publication rush including of course, some low grade publications. According to the Vishwa-Bharathi University, which held the copyrights, one of the main reasons for seeking an extension was that otherwise there was no control over what the public reads and the quality of the work being produced. However, according to Badal Basu, from one of Kolkata’s largest publishing houses, it also saw the opening of new avenues for many publishers across the country, with many of the publications coming forward with innovative adaptations of Tagore’s works which not only added to revenue, but also created a wider clientele.

The primary concern in such matters is generally to ensure that these works, which have assumed a great deal of national and international importance, are delivered and made available to the public without any distortion in their message. In the case of Tagore’s works, it was entitled to an initial period of 50 years (pre-amendment) which expired in 1991. At that time however, the Center had given in to pressure and made an amendment to the Act, which enabled the Vishwa-Bharathi University to hold the rights for a further period of 10 years. However, when they applied for a further extension in 2001, the Center said that it had to keep readers’ interest in mind and decided not to extend it stating that the advantages of putting Tagore’s works in the public domain far outweighed those of keeping them under an institute’s wings. When faced with the argument of the ‘purity’ of the works being lost, officials pointed out the example of William Shakespeare’s works which have not been sullied by being the public domain for so long. Stressing on the readers’ benefit from the non-renewal, an official pointed out, “There is a simple market mechanism that works. If OUP can bring out better editions of Tagore’s works, why should the reader be deprived?”

Looking at some of the Lok Sabha debates (continued here and here) which took place when the first extension was under question, many of the examples which were brought up by those in favour of the extension were those of publishers ‘exploiting’ the authors’ works to make profits for themselves after the death of the author. And then they go on to say that ‘therefore there should be longer periods of copyright protection’. I may be wrong, but isn’t this contradictory? If the aim is to prevent such exploitation, wouldn’t it make sense to have, in fact, an unchanged or even a shorter period of copyright protection after the death of the author? Once the work is in the public domain, there is no question of monopoly rights and therefore the chances, or at the least the degree of exploitation are lessened.

There is however something of a middle path which is often overlooked and which may keep both sides happy in this debate – especially with regard to works such as Gandhi’s and Tagore’s. (The middle path is something that we’ve advocated on this blog earlier as well - 'If you make the string too tight, it will break. If you make the string too loose, it will not play'.) Further copyright protection under a creative commons license. Off the top of my head, I’d say an “Attribution Share-alike” license would be sufficient for this kind of a situation. Perhaps a shorter period of copyright protection, say 30 years after death of author, followed by a further period of copyleft protection? Though I’m not sure about the logistics of its practical implementation, I think this is an option which shouldn’t be ignored.

SpicyIP :Position for a Trademark Attorney

We are conducting a second round of selection to recruit candidates for the position of Trademark Attorney in an IPR boutique law firm based in Chennai.

Profile and Job Specification

There is an opening for a Trademark Lawyer in a Chennai based IP consultancy firm.
The firm is situated in an up market location in the heart of Chennai, with congenial working environment, providing great opportunity to play a vital role in this boutique firm. “Legal 500” the world's leading guide to the legal profession lists the Patent and Trademark practices as one of the top 6 in India ( the only firm
from South India in this list).The role will be very broad covering areas of Trademark Law(India &International) including prosecution, litigation and research;
working within a small cohesive team and therefore, mental agility and the ability to think laterally while maintaining an eye for detail is a must.

An ideal candidate would be a law graduate with a minimum of four (4) years experience with law firms/companies in areas of trademarks and possess good
academic credentials, excellent communication skills and
should be a computer literate.

Salary will not be a constraint for the right candidate.

Interested candidates may send their C.Vs to shamnad@gmail.com or ayshashaukat@gmail.com