Amendment to S.2(m) - Copyright Standing Commitee Report

Continuing with my series on analysing the Parliamentary Standing Committee's report on the amendments to the Indian Copyright Act, in this post, I will focus on the proposed definition of 'infringing copy' under Section 2(m) of the Act (I apologise for the long gap between the two posts - been having trouble with my laptop the past few weeks)

CURRENT PROVISION:
Clause 2 (m) of the Act defines the expression 'infringing copy' as a (a) reproduction of a literary, dramatic, musical or artistic work ; (b) a copy of a cinematograph film made on any medium by any means or (c) any other recording embodying the same sound recording, made by any means or the sound recording or a cinematographic film or (d) broadcasting of a programme or performance if reproduction of sound recording is made or imported in contravention of the provisions of the Act.




PROPOSED AMENDMENT:
The proposed amendment to this definition involves an addition of a proviso to the Act, stating:

"provided that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy".

IMPLICATION OF THE AMENDMENT
To understand the basic implications of the amendment, it is wise to take a few steps back and understand the underlying concept of parallel imports. Essentially, parallel importation involves the act of of bringing in a copyrighted product of one country, into another country, without the permission of the copyright owner in the latter country. So, for example, if a book is available for purchase in Russia, and it is legally purchased there, and then imported into India, without the permission of the owner of copyright in India, it would amount to a parallel import.

In the context of this amendment, parallel imports must be understood in light of the territoriality principle, wherein rights to distribute books are commonly split up and assigned based on territory. So, an Indian publisher might have the right to publish and sell a book in India, to the exclusion of a Candaian, Nepali and Pakistani publisher.

The effect of the amendment is to eliminate this principle of national exhaustion and allow for free import of books published in another country, as long as the author of the work has given his consent, irrespective of whether the permission of the Indian publisher (for example) has been given for such importation.


IMPACT ON INDIAN PUBLISHERS/BROADCASTERS
The biggest opposition to the amendment appears to be coming from the Indian publishers and broadcasters. For example, the South India Music Companies Association (SIMCA) stated that the amendment would act as a significant disincentive for Indian sound recording labels, much like themselves, to obtain licenses from foreign producers. The Association of Publishers in India argued on the basis that Indian publishers would not be allowed to sell Indian editions in protected markets abroad, and that, the amendment failed to understand the fundamental system on which the publishing industry operated. The Federation of Indian Publishers even contended that the amendment would give rise to litigation between authors and publishers, because of the erosion of publishers' rights.


ILLEGAL IMPORTS
The Indian Motion Picture Producers' Association argued against the amendment by stating that it would result in illegal importation, without the consent of the owner of the copyright. The Business Software Alliance also argued that it would create imbalance of trade and illegal channels of distribution would develop. But the fact remains that if parallel importation is allowed, these copies would not be considered infringing. Of course, custom authorities would still have to distinguish between parallel imports that are legally purchased and counterfeit products, and a system will have to be developed to deal with this situation. The Indian Broadcasting Foundation expressed fears that consumers would be granted access to foreign works, before their formal release in India. But, in my opinion, if the foreign work is legally purchased, I don't really see a problem in it being made accessible to consumers in India before the 'scheduled release date'. It certainly isn't piracy.

SUPPORT FROM AUTHORS GUILD
The Authors Guild of India was alone in its support of the amendment, from amongst the participants. They presented the benefits authors and remarked that in the age of globalisation, this was a step in the right direction.

EDUCATIONAL BOOKS & BENEFIT TO STUDENTS
Those in favour of the amendment stress on the benefit that would accrue to students who currently purchase textbooks at exorbitant rates, but with the amendment, would be able to purchase them at much lower rates. However, the Federation of Indian Publishers and the Association of Publishers in India resisted this contention as well by arguing that 'with this amendment, the low priced editions meant for Indian sub-continent could be exported back to the country of their origin where they were priced at much higher rates.' They argue that foreign publishers would be thus unwilling to sell books at subsidized books in India for this reason, 'fearing low priced Indian editions flooding and diluting their own markets.'

However, this entire argument is premised on the assumption that export of low-priced editions is legally permissible. However, this is arguable, given the decision of the Delhi High Court in the case of John Wiley & Sons (discussed by Prashant in this post), where the Delhi High Court held such exports to be illegal. However, the proposed amendment, may in fact allow such export on the principle of international exhaustion.

Further, in my opinion, the amendment only pushes Indian publishers to innovate and adapt and price their books in such a way so that it would economically unfeasible for someone to import the same work to India from another country. Moreover, it was disheartening to notice that there were no civil society organisations, student groups or library associations at the Standing Committee meeting, to present the opposing view, in support of the amendment.

AMENDMENT IS AGAINST NATIONAL INTERESTS
The Motion Picture Association argued that eliminating India's rule of national exhaustion was against the country's interests since the current law 'keeps prices low, allows exclusive distribution systems to be maintained, and help bring a strong domestic copyright industry.' This statement itself is easily rebuttable, in my opinion. For one, parallel imports would certainly not detract from keeping prices low. Secondly, 'maintaining exlcusive distribution systems' appears to me to be a mere euphemism for 'maintaining monopolies', which is certainly not the objective of copyright law. Lastly, 'a strong domestic copyright industry' is one that allows for and encourages competition and innovation, instead of merely maintaining status quo, something that is being vehemently opposed by the publishers.

STANDING COMMITTEE'S RECOMMENDATION
The Standing Committee noted that the current practice based on territorial licenses resulted in very high rates and availability of low priced books was confined to old editions. It stressed on the benefit to students and while cautioning the Government to ensure that the objective of amendment is achieved, it supported the proposed amendment to Section 2(m).

WIDESPREAD DEBATE ON THE AMENDMENT
Because of the word-restrictions, I have only outlined the submissions made to the Standing Committee, while touching on the implications in brief. However, we would like to encourage readers to comment and discuss this particular amendment, which seems to have sparked off great debate online. For example, Pranesh Prakash of CIS has blogged in response to Thomas Abraham's article (MD, Hachette India) in the HT on the issue, and rebuttals have followed since. Although the amendments affecting the Bollywood industry have taken centre-stage, there are several issues that are worthy of discussion here as well and we welcome readers' comments.

(Image from here)

Patenting Delays ?

The abysmal delays in the granting of patents is not a new tale for India. A recent editorial in the Week puts forth the sorry state of the IPO and the sheer frustration of the inventors.

The report suggests that while about 79,000 patent applications were pending with the Indian Patent Office (IPO), only 16,061 were granted patents in 2008-09. The delay has been largely attributed to the acute shortage of man-power at IPO and not surprisingly, the shortage is literally at every level. Furthermore, concerns have been raised regarding the overburderned IPO as an examiner battles to handle about 140 applications every year as opposed to her/his US counterparts who merely handle 97 applications a year!

The delay in the grant of the patent also affects merit of the invention to a great extent since the technology becomes absolutely obsolete by the time the patent is finally granted. Further, the lobbying and pressure tactics make it easier for MNCs to process their patent applications as opposed to individual inventors. A classic example would be that of Gilead and its drug tenofovir which was rejected by IPO due to lack of inventiveness but right before President Obama was scheduled to visit India, US Commerce Secretary appealed for a fair consideration of the application.

The meteoric rise in the patent applications over the past few years due to the rat-race between the Indian cos and the MNCs has resulted in a tremendous pressure for the patent examiners. As the Week report suggests, "sometimes it also shows in the quality of work as the claims are not addressed properly."

The Department of Industrial Policy and Promotion has recently announced 200 new posts of examiners of patents and design under the 11th Plan. But given the backlog of the cases IPO is battling with, one wonders if recruitment of new examiners alone will offer to be a panacea.

India, South Africa gain from J&J-generic deal, Patent Pool loses out

Johnson & Johnson's subsidiary Tibotec has granted multiple non-exclusive licenses for a new HIV-AIDS treatment to generic manufacturers including Hetero Drugs Ltd, Matrix Laboratories Ltd from India and Aspen Pharmacare from South Africa. The drug in question, rilpivirine hydrochloride (TMC278)  is still pending approval however. Tibotec would recieve 2-5% of what is received for the pills. The press release by Tibotec is available here. 

The licensing allows the Indian generic companies to manufacture, market and distribute TMC278 in Least Developed Countries, Sub-Saharan Africa and India, and allows Aspen to regions of Sub-Saharan Africa including South Africa. (Image below taken from here. Darker shades reflect areas of higher populations of AIDS patients) 

However, is this a small benefit made at the cost of sacrificing a bigger benefit? As KEI points out this means that almost all of Latin America, all of North Africa and several countries in Asia including Thailand, Malaysia and Pakistan will not be covered by this deal. This multi-license deal by Tibotec also reflects a bypassing of the Medicines Patent Pool which aims to obtain open licenses for the development of HIV-AIDS medicines in all developing countries, despite requests from the Medicines Patent Pool, as well as from civil societies for Tibotec to join the MPP voluntarily, and to conduct negotiations about licensing transparently and inclusive of all developing countries. MPP had requested a reply from Tibotec by Jan 31st, and this move by Tibotec on Jan 27th makes it seem quite unlikely that Tibotec would join the patent pool. For more on this, see the post by KEI. 

Breaking News: TATA loses infringement challenge against Greenpeace

The Indian-owned global conglomerate, the TATAs, have failed to convince the Delhi High Court that Greenpeace was guilty of defamation and trademark infringement in its use of the TATA logo in an online game.

Justice S Ravindra Bhat of the Delhi HC refused to grant an injunction against Greenpeace earlier today. We are awaiting a copy of the order, and shall post if there are any significant observations by the court.

The international environmental NGO, represented by Saikrishna and Associates, successfully argued that their use of TATA's logo (stylized T in a circle) was a case of nominative fair use of the mark; and that its representation was evidently exaggerated and could not have ilowered TATAs' reputation in the eyes of the public. The TATAs were represented by Anand & Anand, and led by senior counsel Rohinton Nariman.

Readers will recall our post some months ago on TATA having dragged Greenpeace to the Delhi HC in a suit over the use of its logo (stylized T in a circle), alleging it was "disparaging" and "libelious". At that time, reports suggested that the court had "advised" Greenpeace to remove the TATA trademark from its online game, which was a take on the '80s classic Pacman.

The Greenpeace game was launched to mark the long-standing conflict between attempts to protect the endangered Olive Ridley Turtles and TATA Steel's port located off the coast of the eastern Indian state of Orissa. (Image from here)

Breaking News: Madras High Court admits petitions challenging the constitutionality of the IPAB and the Copyright Board

Earlier this morning a Division Bench of the Madras High Court comprising of Chief Justice M.Y. Eqbal and Justice T. S. Sivagnanam, admitted two Public Interest Litigations (PILs) petitions challenging the constitutionality of the Intellectual Property Appellate Board (IPAB) constituted under the the Trade Marks Act, 1999 (& also the Patents Act, 1970) and the Copyright Board constituted under the Copyright Act, 1957. Both petitions are available over here and here. Image from here.

While the first petition, challenging the IPAB was filed by Prof. Shamnad Basheer in his capacity as the Ministry of HRD Chair Professor for IPR laws at NUJS, the second petition was filed by the South Indian Music Companies Association (SIMCA). As reported earlier on this blog SIMCA was adversely affected by the Copyright Board’s orders in the mega-compulsory licensing disputes.

Both petitions were argued by Senior Advocate Mr. Arvind P. Datar, briefed by Advocate Mr. Ananth Padmanabhan. At the time of admission the Division Bench was reluctant to entertain the petitions on the grounds that they could not interfere with appointments made by the Supreme Court. Mr. Datar replied by pointing out that none of the appointments were made in consultation with the Supreme Court and that this was precisely the problem! The Division Bench subsequently admitted the PILs and issued notice to the Central Government which was represented by the Additional Solicitor General Mr. Ravindran. The Central Government has been given three weeks in which to file their reply.

I would also like to mention that both Mr. Datar and Mr. Padmanabhan are both appearing pro bono in the IPAB petition since they are on principle opposed to the tribunalization of the Indian judiciary. The NUJS team which put together the case against IPAB consists of Prof. Basheer, three undergrad students – Shambo Nandy, Sai Vinod Nayani and Debanshu Khettry and me. The matter was initially slated for a hearing on last Friday and several newspapers such as the Mint, the Hindu Business Line and the ET carried stories on the same. However the matter could not be taken up on that day and came up for hearing only today. I would also like to thank Advocates Mamidipudi Swaroop and Suchin, juniors to Mr. Datar for all their efforts last week when we had to wait the entire day in the Madras High Court for the matter to come up.

Let me also take this opportunity to clarify that this litigation has been filed in ‘public interest’ and is self-funded only by Prof. Basheer.

A few details on both the IPAB and Copyright Board petitions are as follows:

A. The NCLT case as the basis of both the petitions: The basis of both the petitions is a judgment of a Constitutional Bench of the Supreme Court in the case Union of India v. R. Gandhi, which struck down key provisions pertaining to the creation of the National Company Law Tribunal (NCLT). The Supreme Court had struck down those provisions on the grounds that they violated the ‘Separation of Powers’ doctrine which requires the judiciary to be independent of the Executive and also the fundamental right of citizens to have their disputes adjudicated by person who possess the requisite judicial independence and qualifications to discharge judicial functions. It bears noting that Mr. Arvind Datar was the lawyer who successfully argued the NCLT case before the Supreme Court. Ananth was also a part of the team which briefed Mr. Datar for the Supreme Court hearings.

B. The Case against the IPAB: The case against the IPAB is as follows:

(i) The History of the IPAB: The IPAB was initially setup under the Trade Marks Act, 1999. Under the old Act of 1958 rectifications petitions against trademarks and appeals against the Registrar of Trademarks were heard directly by the High Courts of Madras, Calcutta, New Delhi, Bombay and Gujarat. With the creation of the IPAB all these functions were transferred to a specialist tribunal called the IPAB. In 2002 and 2005 the Patents Act too was amended to transfer revocation petitions and appeals against the Patent Office, from the High Courts to the IPAB. It is doubtful whether the Central Government actually investigated the viability and suitability of the IPAB, especially since there has been a concerted move by the Central Government bureaucracy to whittle down the powers of the High Courts by transferring crucial powers to tribunals, which would then by staffed by these very same bureaucrats once they retired. Starting from 1999 the Central Government attempted to transfer three crucial functions of High Courts by creating new tribunals such as the National Company Law Tribunal, the National Tax Tribunal and the Intellectual Property Appellate Board. The distinguishing factor behind all these tribunals is the fact that unlike the existing tribunals these tribunals did not provide for statutory appeals to the High Court. The normal argument given by the Central Government to support this drive towards tribunalization is that there is heavy pendency at the level of the High Courts and that specialist adjudicators are required for certain disputes. None of these claims are ever backed by empirical data. What is most interesting however is the role of Indian Legal Service (ILS) cadre in the process of tribunalization. ILS officers are meant to serve as Legal Officers in the Ministry of Law and Justice and are usually lateral hires. These officers are usually involved only in policy matters and do not represent the Central Government in any litigation. Despite these officers not having any practical judicial experience both the IPAB and the NCLT were created in such a manner that these officers could be appointed as judicial members to both tribunals. The reason that this was possible is because ILS officers are in control of the Legislative Department of the Ministry of Law and Justice and it is these officers who prepare the final version of any legislation which is tabled before Parliament. To put it simply, the ILS officers have been drafting legislations in such a manner to provide themselves with post-retirement havens. In the case of the IPAB, the Secretary of the Legislative Department, Ministry of Law and Justice in the year 1999, when the Trade Marks Act was drafted was the first Vice-Chairperson of the IPAB when it was notified in the year 2003. The Constitution of India and the Supreme Court have however allowed for only lawyers with judicial experience to become judges of either the High Court or tribunals. The IPAB however is fashioned in such a manner that person which no judicial or litigation experience can become judicial members of the IPAB.

(ii) The IPAB violates the Separation of Powers Doctrine: The IPAB is under the executive control of the Department of Industrial Policy and Promotion (DIPP), Ministry of Industry and Commerce. The petition demonstrates this by pointing out to firstly how the DIPP in its Annual Report lists the IPAB as one of its subordinate or allied organizations and secondly how the DIPP is handling all RTI queries pertaining to the IPAB despite the IPAB being a statutory authority in itself. Additionally the appointment procedure is controlled completely by the DIPP and the Judiciary is not even consulted during the appointment process. This procedure is completely unlike the appointment of Supreme Court or High Court judges. The Supreme Court in the NCLT judgment has clearly stated that while Parliament is at liberty to transfer functions from the High Courts to tribunals it is under a compulsion to ensure that these tribunals have the same degree of independence as the High Courts especially in matters of appointment, removal and administration. Also the salaries and pensions of the IPAB members is controlled completely by the DIPP unlike for High Court judges whose salaries are controlled by Parliament.

(iii) The Qualifications of the Judicial members of the IPAB: As per the Trade Marks Act the IPAB benches are required to be staffed by atleast one judicial member and one technical member. While the qualification criteria for a judicial member allows for the appointment of Indian Legal Service officers, it does not create any provision for lawyers with litigation experience to be appointed as judicial members. Similarly the Act allows for ILS officers to be appointed as Vice-Chairpersons directly but does not allow for the appointment of lawyers who maybe qualified to be appointed as High Court judges. There has been no law in this country which has not allowed for lawyers to be allowed as judicial members or judges since they are the most qualified to hold these posts. The Supreme Court in the NCLT judgment has clearly stated that ILS officers cannot hold the position of judicial members since they have no judicial experience. The role of a judge requires certain qualities which can be learnt only through practical experience and persons without that experience cannot be allowed to adjudicate disputes.

(iv) The qualification and role of the Technical Members: Technical members are appointed to tribunals with the hope that their specialization in the subject allows for a more efficient adjudication of disputes. The Trademarks Act and the Patents Act allow for Registrars of Trademarks, Controllers of Patents and lawyers with 10 years experiences to be appointed as Technical Members to the IPAB. The problem however lies in the actual functioning since the Technical Members, who do not have degrees in law, are penning judgments purely on questions of law. For example almost all of the 21 patent decisions by the IPAB have been penned by S. Chandrashekharan, Technical Member and almost all 21 are purely on questions of law. There are more grounds which we have discussed in the petition.

(v) The qualification and role of the Vice-Chairperson: The qualifications of the Vice-Chairperson are such that any ILS officer of Grade I or a judicial or technical member with two years of experience can be appointed as Vice-Chairperson. A Vice-Chairperson as per the Act can then sit as both Judicial Member or Technical Member on a Bench. So, S. Usha who was appointed as Technical Member for Trade Marks became a Vice-Chairperson after two years. Once she became a Vice-Chairperson she sat as the Judicial Member along with S. Chandrashekharan, Technical Member and knocked down 12 patents belonging to Dr. Alloy Wobbens!

(vi) Irregular appointments: While researching for the petition, a well-wisher, forwarded to us an RTI query pertaining to the appointment of Mr. Syed Obaidur Rehaman as technical member of the IPAB. It appears that on his application form for the position of Technical Member, Mr. Rahaman has claimed to have appeared in English cases dating back to the 19th Century. Moreover we could not find his name even in the Indian cases in which he has claimed to have appeared. If our investigation is correct then Mr. Rahaman was not qualified to have been appointed as Technical Member. Mr. Rahaman is slated to retire early next month. The ToI has carried a story on this over here.

(vii) Inefficient administration: While the IPAB was probably setup to speed up pendency, the actual disposal rates published by the DIPP shows the complete inefficiency of the system. Of the 2245 trademark cases transferred to the IPAB, only 901 cases were decided in this period. Of the 155 patent cases transferred to the IPAB only 21 cases were decided by the IPAB. Additionally the IPAB last year had only 103 sittings, as per our research. A normal High Court sits for atleast 220 days a year. Furthermore the IPAB does not have any permanent facilities for its circuit hearings. The Hindu carried this report last year on a complaint by the IPAB to the DIPP that the Controller General of Patents and Trademarks had informed the IPAB that they could no longer conduct sittings in the Patent Office in Mumbai. The irony lies in the fact that the IPAB is hearing appeals against the Patents and Trade Marks Offices. Even in Delhi and Kolkata the IPAB conducts its sittings within the Patent Office premises. It is only in Chennai that they have an independent building. Furthermore the IPAB is currently staffed with only two members, down from seven earlier. Given the fact that Mr. Rahaman is retiring soon, there will be only one member Ms. Usha and the IPAB will therefore be rendered non-functional until another member is appointed.

C. The case against the Copyright Board: The state of affairs at the Copyright Board is as bad as the IPAB. Although created in 1957 the Copyright Board has achieved significance only in the recent past with the Rs. 100 crores compulsory licensing dispute. The Board is currently headed by a former ILS Officer, slated to retire shortly. The other members of the Board are Law Secretaries to various State Governments and the Directors of various National Law Schools. None of these members have prior judicial experience and this has reflected in its judgments and functioning. Earlier the Supreme Court itself had reprimanded the Copyright Board for its arbitrary conduct in the compulsory licensing matter and this probably highlights the importance of appointing persons with judicial experience. The state of affairs at the Copyright Board, in terms of infrastructure, was so miserable that the Delhi High Court had taken suo-moto cognizance of the same and ordered the Ministry of HRD to provide basic facilities to the Chairperson. As per the statute the Registrar of Copyrights is in a position to control the Copyright Board and the petition by SIMCA takes strong exception to this Executive interference in the ‘judicial independence’ of the Copyright Board, requesting the High Court to ensure adequate separation between the Registrar and the Copyright Board especially since the latter is deciding appeals against the former. As this post is getting a little too long, I would like to cut it short by pointing our readers to an earlier post of mine last year where we had made out a case for challenging the Copyright Board on the basis of the NCLT judgment.

D. Conclusion: While we have all spent a lot of time arguing the merits of substantive law, we have forgotten about the nuts and bolts of procedural implementation. Any law is only as good as the judges administering them. Hopefully both these petitions will change the way in which Intellectual Property disputes are administered in this country.

CSIR Tempers Patent Aggression

This piece is slightly dated, but an interesting one nonetheless. Soma Das of the FE highlights CSIR's changing patent culture from that of an aggressive patent filer to a more temperate and selective one. However, the numbers don't really add up and there are some inconsistencies.

While CSIR claims to have adopted such a temperate stance since 2007, its foreign filings went up in 2009, relative to its filings in 2008. The numbers for total foreign filings in each of these three years are listed below:

2007: 655
2008: 261
2009: 404

Its quite possible that CSIR may have targeted newer countries for filing or may have come up with a far greater number of inventions in 2009, which may perhaps account for this increased filing in 2009.

(The above numbers don't find mention in Soma's piece, and I thank her for providing them to me).

Soma begins her piece with:

"The Council of Scientific and Industrial Research, (CSIR) one of the top global patent-seekers in recent years in the league of Samsung, LG and Huawei, has seen a dramatic decline in performance since 2006. CSIR is the umbrella body of publicly-funded R&D institutions in India.

The US Patent and Trademark Office which granted the council as many as 133 patents out of a total of 342 granted to Indian applicants as a whole in 2003, received just 53 patents in 2009, while the total number for the country shot up to 679 (see tables).

While CSIR attributes the decline to more selective patent filing – i.e., the policy of seeking only those patents which would really have a commercial value or preemptive nature – data show the number of its patent filings has not actually dwindled. In fact, the number of CSIR’s patent filings abroad has fluctuated in the range of 420 to 728 between 2000-01 to 2006-07, with no consistent trend of increase or decrease, thus raising questions on the quality of patent applications as well. In fact, many of the council’s former director generals and directors who FE spoke to, expressed surprise and concern over the extent of drop in patents."

...Samir Brahmachari, director general, CSIR told FE: “A decade back, the idea was to drive the number of patent filings by motivating the scientists to file more and more patents to foster a culture of patenting. But, as the organisation matures, we have become selective in our patenting strategies and concentrate on the quality of patents. You must remember that only 1% of all patents is responsible for actually yielding valuable technologies.”

For more, read Soma's well researched piece here.

Rethinking Intellectual Property Rights Workshop at CIPRS

SpicyIP is pleased to announce an exciting opportunity for students interested in IP to participate in the first annual workshop on Rethinking Intellectual Property Rights, organised by the Inter-University Centre for IPR studies in association with the HRD Chair on IPR, Cochin University of Science and Technology, from March 10-12, 2011 .

The theme for this year's workshop is 'Indian Copyright Law: A Social Perspective'. The workshop has been organised keeping in mind the impending Copyright (Amendment) Act, 2010, with a view towards discussing the current challenges posed to Indian Copyright law in the digital age, and to answer the important question - should India borrow from the Western legislative and judicial practices and learn from their experience, or evolve its own jurisprudence keeping in mind our special needs and national aspirations?

The program includes lectures, invited talks, case studies, student presentations, discussions and field exposure. The workshop is open to all L.L.B law students nominated by their respective colleges. Registration ends on 30th January, 2011.

A summary of the important details are as follows:

Dates: March 10-12th, 2011

Venue: Cochin University of Science and Technology, Kochi, Kerala

Registration dates: Last date is 30th January, 2011

Eligibility: Registration is only by nomination through respective law schools. For L.L.B students.

Address for communication:

Director, Inter-University Centre for IPR studies,

Cochin University,P.O. Cochin - 22, Kerala

More details: Visit http://ciprs.cusat.ac.in/ripr.php

Patentability of traditional knowledge-capsicum this time

The USPTO had introduced an information sharing program with the Government of India designed to prevent the improper patenting of traditional knowledge.  The information being shared expanded the class of publications under 35 U.S.C. §§ 102(a)-(b), commonly used to deny a patent to an applicant.

The Traditional Knowledge Digital Library (TKDL) has been made accessible to the Examiners at the USPTO and as such the Examiners can reference and cite the TKDL information in an office action.

It seems that this provision might be tested soon.  In an application 12/721507 filed at the USPTO, the applicant claimed a process for the treatment of skin cancer which includes topically applying to an affected area of a human patient in need of such treatment a therapeutically effective amount of a capsicum extract (fresh raw Capsicum fruit and a carrier).

The CSIR has submitted a 3rd party protest against the grant of such a patent by pleading that, ""[S]ufficient prior arts are available in Indian system of medicine, e.g. in Ayurveda, Unani and Siddha in relation to the
claims made in the application."

However, a first office action has yet to be issued in this case and it remains to be seen how (or even if) the Examiner cites the TKDL information repository against the claimed invention.  We shall keep you posted on the same.

Reciprocal Recordings: Copyright Charity Must End at Home

In our submissions to the Parliamentary Standing Committee (tasked with examining the recent copyright amendment bill), we argued strongly in favour of strengthening our "reciprocity" provisions, an aspect first brought to light on this blog by Nikhil Krishnamurthy.

The committee either missed the point altogether or refused to take note of it, as it does not find any mention in their otherwise sophisticated report. Barking dogs may never bite, but when peeved, they tend to bark a bit louder. And this time, we decided to bark via the Indian Express. For those interested, here is the full text of the piece.

"A recent bill proposes revolutionary changes to the current Indian copyright scheme. Little wonder then that it has spurred a boisterous debate. A parliamentary standing committee constituted to examine the bill applauded the government for introducing reforms aimed at fostering social justice; however it castigated it for not going far enough. A case in point is a copyright exemption engineered to enable conversion of copyrighted works to accessible formats for the disabled. The committee urged the government to remove critical limitations in this exemption to provide for a more meaningful provision for the disabled.

The most contentious amendment relates to what one might label as the “Bollywood royalty” provision, wherein the government proposes to ban all music composers and lyricists from assigning their rights. The brainchild of noted lyricist Javed Akhtar, this provision aims at redressing an obvious injustice perpetrated for years in Bollywood, where film producers would buy out music composers and lyricists upfront for a pittance — and then rake in the huge moolah that flowed from the success of the music, without sharing any of the proceeds.

The standing committee not only endorsed the government proposal, but insisted that any royalties ensuing from the commercialisation of film music had to be split equally between music producers and artists. If this translates to law, it will be the most transformative and socially progressive copyright amendment ever in India. Bollywood producers are obviously upset and have been threatening to strike for many weeks now.

In the midst of all this brouhaha, what has been largely missed is a problematic provision that effectively sanctions an inequitable transfer of wealth from India to the US.

Section 40 of the copyright act urges the Indian government to protect foreign copyrighted works in India only if Indian works of a similar nature are protected in the foreign country. While the Indian government has largely adhered to this principle of reciprocity, it has miserably failed to protect our interests in the context of sound recordings.

It bears noting that the US copyright scheme does not provide any protection for the public performance of Indian sound recordings. However, US sound recordings are protected in India, just as all other sound recordings are.

By way of background, our copyright act provides for the protection of a number of works, including literary works, artistic works and musical works. It also provides separate copyright protection for producers of sound recordings. In the context of a movie, the sound recording is usually owned by the producer of the movie and then assigned to a music mogul such as T-series.

A typical Bollywood number has two set of rights associated with it: the copyright over the sound recording (which vests with the sound recording producer) and the copyright over underlying words (such as the lyrics and musical composition which continue to vest with the lyricist and composer). When a dimly-lit bar in Mumbai belts out raunchy numbers hailing Sheila’s Jawani or bemoaning Munni’s Badnami, both sets of rights are implicated. Therefore, under our present copyright norms, royalties have to be paid by the bar to both the underlying artist and the sound recording company.

However when this music is played in a US bar, no royalties need to be paid at all, to either the sound recording company or the artists, provided that “home-style” equipment are used to play the music within the bar.

An ideal outcome for many of us who lack respect for the innate sanctity of copyrights would be to simply replicate the US position — amend the law to remove such public performance rights, at least in the context of small outfits that play such music.

Yet, till such time that we evolve to this superior position, the spirit of Section 40 dictates that the government must exclude US sound recordings from the ambit of the international copyright order, an order that lists out the various foreign copyrights recognised under Indian law.

One may argue that the letter of Section 40 permits the government to violate this cardinal principle of reciprocity in some respects. And it is this ambiguity that ought to be rectified immediately through an amendment.

If the US does not protect our interests, there is no reason why we should go out of our way to protect theirs. Charity no doubt begins at home, but has to be curbed when it results in an unfair filling of US coffers at Indian expense. And this is precisely what happens when Phonographic Performances Ltd (PPL), a coercive collecting society, comes knocking on many a hotel or club door to collect moneys for recordings that are played. In its operations, PPL is about as transparent as a coal seam and there is considerable uncertainty about its rights to collect in this regard and whether or not it remits money to its foreign counterparts. But that is the subject of another debate altogether.

One hopes that the government strengthens this reciprocity provision prior to re-introducing the amendment bill in Parliament during this budget session. For, any apathy in this regard will continue to spur the inequitable transfer of wealth from an aspiring super power with appalling levels of squalor to an existing super power tiding over a turbulent economic wave."

EU-India closer to FTA-hampered public health regime?

Draft IP chapter made available

The chapter on IP in the draft EU-India FTA has been made publicly available for the first time. As Malini Aisola has pointed out in her blogpost at CIS, the draft shows India's rebuff of EU's stand on several key IP provisions. There is a copy of the draft available here for those interested. [CIS-India has also helpfully compiled a chart comparing the language put forth by India and that put forward by EU, available here]. There seems to be a clear difference in position on some important issues. However, there is still a lot of insistence that the agreement will be completed soon (some sources say it will be completed by March, 2011).
(picture credit - Madiha Tallat)  

Most importantly, the draft shows that EU is pushing India to accept TRIPS-plus data-exclusivity provisions. More on that in a bit. Aside from this, CIS also reports that the EU is pushing for more radical enforcement mechanisms, including more strict border measures for in-transit goods. For those who don't see the irony of this demand, the short version is that after much hue and fuss including India and Brazil bringing the dispute to the WTO DSB, the EU backtracked and claimed they would suitably amend the problematic EU Regulation 1383/2003 - and now, they're asking for more strict in transit regulations, i.e., the same problematic regulations again? If the EU were a person, I'd call him shameless!

What I find slightly confusing is that both parties seem stubborn about their conflicting positions on these (and other) issues, and yet both are apparently insisting that the FTA will be sealed soon. Does this mean that one of the parties is more flexible than it appears currently? Or is this simply optimistic talk about an unlikely deadline? The American Chronicle reports that it seems possibly that the Indian PM is starting to reconsider in order to quickly conclude the agreement. In any case, while this deal on it's own is certainly important enough for global relevance (its effect on India's pharmaceuticals would in turn affect the vast majority of the world's patients that India supplies medicines to), this is also important as this FTA would act as precedent for future and concurrent developed-developing country negotiations and agreements, such as the FTAs that EU is trying to enter with Brazil, Thailand and South Africa. 

Back to the data-exclusivity provisions

There is currently a lot of talk about data exclusivity provisions and about how it will affect Indian pharma. DG Shah, the Secretary General of the Indian Pharmaceutical Alliance, in an interview to DontTradeAwayOurLives, gives a very well explained and succinct account of the harm that importing such provisions will create. For those who want to read the whole interview - it's available here. I'll briefly go over some of the issues below. 

What is Data Exclusivity? How does it differ from patents? 
Drugs are required to undergo clinical trials before the public can use them. These trials are extremely expensive, but necessary. This data, gathered from the clinical trials is the subject matter which is 'monopolized' by the data exclusivity provisions. Thus, even off patent or generic drugs, which in normal circumstances are just required to show bio-equivalence to the drug which has already gone through approved clinical trials, can no longer use this data to show that they are safe for usage - and thus cannot sell them. This, in effect allows the owner of the data to extend a monopoly over the drug besides the patent - if it (still) exists for that drug at all.

What is the international position on this? 
This is clearly a TRIPS plus provision, and as DG Shah has pointed out in the interview, the WTO, WIPO and World Health Assembly have all opposed data exclusivity provisions. However, expectedly, both the US and EU (whose big pharma companies have the most to gain by these provisions) have tried pushing in DE provisions in various FTAs.

How does it affect generic pharmaceuticals in India?
As mentioned above, it allows a second form of exclusion, or monopoly right, over a drug - even if that drug is not patented. This means that the patent term can be in fact, extended. Or where it is a question of an off patent drug, an artificial monopoly period over the drug by submitting the data. But unlike a patent, DE cannot be challenged in a court as there is no provision safeguarding against misuse of DE in any law. It's almost asking to be abused. Similarly, with respect to compulsory licenses, there is no provision for waiving DE requirements - so this would come in the way of compulsory licensing of pharmaceuticals as well.
In short - it restricts the supply of generic pharmaceuticals further as well as undermines the access part of an effective public health policy.

An effective public health policy consists of balancing drug innovation with allowing for access to these drugs. So the only reason to allow for a compromise (if at all?) on either of these two positions, is if it balances out by at least a somewhat equal gain on the opposite position. But do DE provisions help drug innovation in any way? According to DG Shah, there is absolutely no evidence substantiating this - and in fact, there is evidence against this.

Whether any of this makes a difference to the final terms of the FTA...? Let's hope so. 

Legalsutra is here!

Legalsutra is yet another wonderful effort from Mr. Arjun Sheoran of the Lawkhoj fame. Congratulations Mr. Sheoran! Let's hear what Arjun has to say about Legalsutra:

" Legalsutra, a non profit - non commercial venture, is a free legal knowledge and document repository. The repository not only includes variety of academic papers/projects but also archives moot memorials and class notes, which otherwise go waste and unacknowledged.

In order to encourage academic writing and interaction amongst law students pan India, Legalsutra   gives students the option to comment, share, rate and upload their papers. By virtue of content being user generated, it gives the user greater freedom to collaborate and interact with their peers.
Keeping with the spirit of free access to knowledge, Legalsutra also provides for several research tools such as search engines   created solely for legal research and links which not only cover Indian legal resources ; but also covers foreign legal resources.

 Legalsutra  was created with the belief that a common platform to share knowledge and research would lead to better access to legal education and improvement in the standards of academic writing. Legalsutra  is modelled on the principle that access to education and legal research resources should not be restricted to certain law schools/colleges but must be easily available to each law student with a quest for knowledge.

Legalsutra  understands the growing menace of plagiarism and the impact it has on the legal writing. As clear stated on the site, Legalsutra  strongly condemns and discourages plagiarism. The site is, uniquely, designed to prevent plagiarism and a simple plagiarism check or an internet search would indicate if any work has been plagiarised from Legalsutra .

Help us by doing your bit to make this a success!"

We here at SpicyIP wish all the best to Mr.Sheoran.

PS-Image from here.

IPTO notifies the 3rd draft patent amendment rules, 2010

The Indian Patent and Trademark Office (IPTO) today notified the 3rd draft patent amendment rules, 2010.
The notification can be seen here (warning: file size is large ~5MB).
A few major highlights from the draft rules are:
Our IPTO becomes an International Preliminary Examination Authority (IPEA) and International Search Authority (ISA) upon publication of the rules in the Official Gazette.  IPTO's Delhi office will perform the function of the IPEA.  
The rules also define a specific section relating to the format of applications to be submitted before the Controller.  All documents except affidavits and drawings, should be submitted in a font that is not less than 0.28" and have at least 1.5 line spacing.  The document should be on A4 paper, with defined margins (4 cm for top and left, 3cm for bottom and right).  Each sheet must be numbered in Arabic numerals in the bottom center.  Numbering to be provided after every 5 lines.

Our more experienced readers would appreciate that the format of the application is similar to that of EPO requirements (See Rules 46, 47 and 49).
Hopefully, once the rules are officially notified- it would be possible for the IPTO to publish a complete application and subsequently it's file history.

Good luck for the patent agent's examination!!

To our readers who are taking the exam today, Good luck!!
The total number of candidates taking the exam this time are 1819.  (584(M)+63(K)+698(D)+ 474(C)).

Image from: http://www.mylot.com/w/image/1263594.asp

IPAB knocks down 12 patents of Dr. Alloy Wobbens; Major victory for Enercon India

Over the last few months we have carried a few posts on a massive patent battle between Enercon India and its JV partner Enercon GmBH, one of the largest players in the wind-turbine market. The genesis of the dispute has been discussed by us over here. All the Enercon GmBh patents are held in the name of Dr. Alloy Wobbens the founder and CEO of Enercon GmBH.

Image from here.

Enercon India had challenged 23 patents belonging to Dr. Alloy Wobbens in the year 2009 by filing revocation petitions before the Intellectual Property Appellate Board (IPAB). After hearing both parties through October and November, 2010, a bench of the IPAB, consisting of Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member revoked 12 of the patents. The remaining petitions will be heard after a new technical member has been appointed by the Central Government since Chandrasekharan has now retired from the IPAB.

While Enercon India was represented by leading patent law firm Lakshmi Kumaran and Sreedharan, the patentees were represented by Remfry & Sagar, DePenning and DePenning and D.P. Ahuja. Apart from the litigation before the IPAB there is also pending patent litigation before the Delhi High Court, where Dr. Alloy Wobbens is being represented by another leading patent law firm – Anand and Anand. The status of the litigation before the Delhi High Court is not yet clear. As we had blogged earlier the same patents were under litigation before both the Delhi High Court and the IPAB. It is yet to be ascertained whether any of the patents before the Delhi High Court were struck down by the IPAB.

Either way this is a stunning victory for Lakshmi Kumaran and Sreedharan and will go a long way in cementing their reputation as one of the leading patent law firms in India.

The IPAB website is unfortunately not hosting any of these Orders.

Delhi High Court orders the Secretary, DIPP to investigate missing files in the Trade Mark Office

Thanks to Devanshu Jain, a practising advocate, we have news of yet another petition before Justice Murlidhar of the Delhi High Court regarding missing files at the Intellectual Property Office of the Government of India.

The petition (W.P. 12505 of 2009), filed by Haldiram Pvt. Ltd., requested the Delhi High Court to issue orders to the Trade Mark Registry to allow for inspection of a particular trademark file which was under litigation. The petitioner was joined by other parties who filed intervention applications seeking similar orders in regards several other trademark files that are supposed to be in the custody of the Trade Mark Registry.

After asking for adjournments for over a year the Trade Mark Registry filed an affidavit before the Delhi High Court, speculating that the files in the Haldiram case may have been misplaced either when the Trade Mark Registry was shifting its office in Mumbai or when the Trade Mark Registry was de-centralizing its work by dispatching its files to the respective branch offices.

Justice Murlidhar was clearly not moved by these explanations when he ordered the Secretary of the Department of Industrial Policy and Promotions (DIPP) to personally supervise an investigation into the missing files and file a sworn affidavit before the High Court within three months. The Court has also demanded to know the extent of the ‘missing files’ problem in the Registry.

This is not the first time that the Intellectual Property Office has lost files. A few months ago we had carried a post on another petition before Justice Murlidhar regarding missing files in a pre-grant patent opposition that had been filed before the Patent Office.

In the present case Justice Murlidhar has, interestingly, even issued directions to register FIRs if required, thereby hinting at the possible of criminal action against officials at the Trade Mark Registry. Missing files in a government office is always serious business more so when the files in question are involved in litigation before civil courts as was the case in both the above instances.

Accuracy of IPTO Data: Bidding Tata to Reliance?

Responding to Sumathi's post announcing the latest transparency drive by the IPTO, wherein registered trademarks are now freely searchable via an online database, a commentator rightly expressed concern at the accuracy of data entries.

This issue of accuracy, and the extent to which IP stakeholders can rely on this data could not have come at a more opportune moment. For in a recent patent infringement suit, an unsuspecting patentee got caught on the wrong foot owing to a negligent database entry made by the IPTO (Indian Patent and Trademark Office).

TenXc Wireless sued Andrew LLC and another party before the Delhi High Court for infringing its telecom patent relating to "“Asymmetrical Beams for Spectrum Efficiency”. The trial judge initially granted an ex-parte injunction restraining the defendants from manufacturing or selling the infringing devices. However, the defendants discovered that the patent specification (particularly one of the claims) as filed by the patentee was slightly different from the one that was actually granted by the IPTO

It turns out that the IPTO had actually uploaded a prior version of the patent specification and not the version that was finally granted. The trial judge therefore vacated the injunction, but without so much as hearing the patentee on this count. One ex parte deserves another... or tit for tat, as one might say...

The patentee appealed on the ground that it was not at fault, since it assumed that the IPTO website would be accurate. Owing to the urgency of the situation and the need to obtain a quick injunction, it did not wait for certified copies from the IPTO, but downloaded the granted patent specification from the IPTO website and submitted this in court.

The appellate court came down strongly on the trial court for refusing to even hear the patentee on this count. It therefore remanded the matter back to the trial court.

Most of us who've accessed the IPO database know only too well that it leaves much to be desired, suffering as it does from occasional inaccuracies. Why then did the patentee rely on this database when filing an important law suit? Sai Krishna, counsel for TenXc was quoted by the Delhi High Court (as explaining his reasons) thus:

"Mr. Saikrishna Rajagopal learned counsel for the Appellants has tried to explain that Indian Patent Office takes anywhere between 20-40 days to supply certified copy of the granted Patent Specification and therefore, it was not feasible for Appellant No.1 to await receipt of certified copy of granted specification because it was praying for an urgent ex-parte ad interim order.

...He explained that no information was withheld nor there was any question of any forgery or making false or misleading statement.

It has been submitted that the specification filed by the Appellants along with the Plaint was never represented as certified copy of the granted specification and the source from which it was obtained was prominently mentioned on the document itself.

It is also the case of the Appellants that comparison of the corresponding claims between the complete specification downloaded from the official website of Indian Patent Office and the complete specification as granted was also made in the Affidavit of Mr. Rajiv Pancholy filed on 28.09.2010 (not considered by the learned Single Judge) with a view to satisfy the learned Single Judge that the Appellants had not gained any undue benefit by filing the downloaded specification as against the certified copy of the granted specification."

We applaud the IPTO for its transparency drive and for unlocking vast amounts of hitherto hidden IP information, a process that no doubt fosters greater accountability in the IP system. However, these reforms will come to naught, if care is not taken to verify the authenticity of data that has been uploaded. The IPTO needs to have a robust team and a mechanism for thorough assessment/review of data. It also needs to provide an easy and open channel, whereby users that spot wrong data can immediately intimate the IPTO and have it corrected.

On a related note, this case (involving the filing of a wrong patent specification) also highlights the perils associated with ex parte injunctions in patent cases...an aspect I've been wailing about for many years now...unfortunately, this song of distress has gone unheeded and continues to merely blow in wind...

ps: TexXc is represented by Sai Krishna Associates. One of the defendants is represented by Luthra and Luthra and the other by Amarchand Mangaldas.
pps: image from here

Transparency Move Sounds the Death Knell of a Paternalistic Section 45

The IPTO (Indian Patent and Trademark Office) hit another nail in the coffin of several of us who made money off clients by performing perfunctory TM searches. However, the "half full" cup suggests that this will free up a lot of our time to engage with serious TM work involving actual legal analysis, assessment and advice. And leave the dirty work to a not so aesthetically appealing online database.

As Sumathi rightly notes, we need to applaud the IPTO for unabashedly continuing with its transparency drive and opening up huge segments of hitherto hidden IP information. However, I write today not to praise the IPTO or to bury it for piercing a hole in many of our pockets, but to link up this extraordinary move with another policy proposal that was made some weeks back...a proposal that drew a number of varied comments and persuasive arguments in support thereof.

I had noted then that:

"I've always wondered at the logic of a rather bizarre provision under the Indian copyright act.

Section 45 relates to artistic works that have the potential to double up as trademarks. It states that prior to registering any of such works under the Copyrights Act, one must obtain a "no-objection" certificate from the Trademarks registry.

....Firstly, if at all the creation of an artistic work infringes upon the trademark rights of a person, that person is free to sue the artistic creator in a court of law. And this is possible even if the said artistic work is not registered as a copyright. For, as most students of elementary copyright appreciate, the set of rights commonly associated with a copyrighted work come into existence upon the creation of that work and do not depend for their validity upon any registration process. The entire process for the registration of a copyright is a mere formality and may, at best, offer an evidentiary advantage at the time of suing a third party for infringement. But the registration cannot, by itself, help prove that the work is copyrightable or that one owns title to the work.

If a copyright certificate is a mere formality and confers no substantial "right" on the piece of work, why insist on a no-objection from another IP regime ( I speak of the trademarks act here)?

Further, given that many copyrighted artistic works are unlikely to be registered, what purpose does the "no objection" certificate serve? And lastly, it bears noting that even despite the registration of a copyrighted work, a trademark owner is still free to sue the copyright holder, if she apprehends that the said copyright infringes her trademark.

This entire process appears nonsensical to me, with no other purpose than that of increasing the work-load of the trademarks registry. Needless to add, it also ends up providing "extraction" fodder for the many unscrupulous trademark officials who milk those that are desperate to obtain quick "no objection" certificates."

Some of you argued that this provision may help in preventing unwanted litigation and actually helps the hapless artistic creator. While this may be somewhat true, isn't it overly paternalistic and patronising? In an era where IP information was scarce and trademark searches had acquired the status of a fine art, one might have seen some value of a provision that insisted that trademark conflicts be checked for through an official process. However, now that the TM database is freely available and accessible, do we need to continue with our paternalistic attitude of hoping to save our artistic creators from unwanted trademark litigation. Won't they simply search for this themselves? I noted in one of my responses to a commentator that:

"I'm still not sure why we need to retain the NOC scheme under section 45. There are two possible scenarios:

i) A person who uses an artistic work is completely unaware of its trademark status
ii) A person who uses such work is aware of the TM but still wishes to go ahead and use. Perhaps the person thinks that the TM owner will not sue or that he/she doesn't infringe (as per current legal standards) or that the TM regt is not valid.

As you can appreciate the NOC scheme under section 45(1) really does not help with situation number (ii) outlined above. Even after a person is refused a NOC for an artistic work (owing to the presence of a registered TM covering the mark), he/she can still decide to use the artistic work on goods. The copyright act merely prohibits the registration of the artistic work. It does not prohibit the use of the artistic work, In fact, the copyright act registration is not even conferring any special validity on the work--as registration is a mere formality and no substantive rights flow from the registration.

As for situation (i) i.e lack of knowledge by the artistic work owner, can't we merely have them attest in an affidavit or form that they have searched the TM database and don't believe that they infringe any registered TM's? ...

...One of the following solutions can be adopted:

i) to insist on a declaration from the artistic work owner that they have searched and found no conflict
ii) If we want the burden to be a bit more onerous, we also state that along with the above declaration, they have to submit print outs of all searches of TM's done by them. However, once this is submitted, the copyright authority cannot sit in judgment over whether or not the print outs demonstrate a conflict with a registered TM.

They have to rely on the assertion by the artistic work owner that it does not conflict. However, assuming the copyright owner lies (which I guess will take this situation directly to situation number (ii) outlined above), and the matter goes to court, the court is always at liberty to read in bad faith adoption and factor this aspect into damages calculation and even the grant or non grant of injunction."

To conclude, let me recast the title of this post: The latest transparency move by the IPTO has effectively hammered the last nail on the coffin of an overly paternalistic section 45! Is the Ministry of HRD listening?

ps: image from here

SpicyIP Tidbit: TM search free; application fees up

The Trademarks Registry is acting on its promises this 2011, with the trademark search engine officially going free.

At the same time, the application fees to register a trade mark in one class has gone up from Rs 2,500 to Rs 3,500. The revision takes effect from 29 December 2010. (Image from here.)

(Readers will recall previous discussions we have had on the impending changes at the Registry, including here and here.)

The notification in the Gazette of India confirming the free search and the revised application fees appeared on 29 December 2010, which you can read here. The Controller General issued a follow-up public notice to the same earlier today, which you can read here.

According to this notice, anyone can now access the search facility at the IPO website at zero cost. Also, TM applications made on or after 29 December 2010 will need to be made with the revised fees of Rs 3,500. Any extra/revised payments will need to be made before 30 January 2011, according to this notice.

SpicyIP would like to thank its readers Karthik Murthy and Chetan Chadha, for keeping us on the ball with this news. Karthik also gleefully informs us that "the free search is on:-) ".

I just checked out the search engine platform, which you can too, here, and the interface has changed slightly from what it used to be previously, when accessed with a code. It's cleaner, and AND/OR options have been introduced, opening up a variety of search options to users. It would be great to receive feedback from those who've actually tried the engine on how it works.

Equally, it will be interesting to hear feedback from users about the revised application fees, whether it affects business (at all?), and so on. I personally believe that while the percentage increase in fees is substantial (40 %), the fees being charged by the Indian TM Registry is relatively low in comparison with many other jurisdictions.

In any event, the Trademarks Registry, the Intellectual Property Offices and the Controller General deserve a standing ovation for pushing these amendments through, and delivering on their promises in record time. We hope this is only a teaser, and is a sign of improvements to come!

YET ANOTHER TROUBLE FOR BRITANNIA

ET and other business dailies including Business Standard reported yet another trouble for Britannia. According to news reports, US based Kraft Foods sued Nusli Wadia-owned Britannia industries for trademark infringement of its popular “Oreo” cookies. For more about Oreo cookies see here.

The distinctive face of an Oreo cookie

In a suit filed in the Delhi High Court, Kraft claimed that Britannia’s recently-introduced “Treat-O” biscuit is a copy of its cream-filled sandwich cookies. According to Kraft, Britannia copied the specific design etchings such as florets and inner rings of “Oreo” cookies. It alleged that the brand name, “Treat-O”, with an emphasis on ‘O’, was inspired by “Oreo”. It is also reported that the US giant sought injunction for precluding Britannia from manufacturing, selling, marketing or advertising any product with any distinctive element of “Oreo” cookies. Assuming the veracity of the report, this is the second instance in four years where Britannia is involved in legal tussle with a multinational food company over trademark. [Its tussle with French food giant Danone is covered here ]. 

The tenability of the claim can be ascertained only after examining the package design and the style in which “Treat-O” has been written. Curiously, I could neither trace this product in the local market nor online including the official Britannia website! Thus, I am unable to independently verify the tenability of this claim. Assuming the similarity between the competing marks and applying the ratio in Warner Bros. Entertainment Inc. v. Harinder Kohli and Ors., 2008 (38) PTC 185 (Del), Kraft will have to prove that the targeted audience is unable to discern the difference between the two marks. Prima facie, “Treat-O” and “Oreo” sound quite distinct to me. However, a conclusion cannot be drawn for the reasons stated above.

Natco seeks license from Pfizer to manufacture a low-cost version of HIV drug

The new year seems to have ushered in with some news for compulsory licensing in India.

As ET reports, Natco Pharma has sought a voluntary license from Pfizer to manufacture and sell Pfizer's HIV drug maraviroc (sold as Celsentri).In its notice to Pfizer, Natco stated that the US drug costs an arm and a leg to the HIV patients in India, which has approximately 2.3 million HIV positive patients. Celsentri costs about 65k for a month's dosage whereas Natco claims that it can make a copy of the same which will cost around 15k. To quote ET, "this will be a big test case for the application of compulsory licensing provision in India". Pfizer,as is expected, will be declining this license to Natco owing the investments made for the R&D of the drug.

This case will thus be a landmark in striking a balance between the affordability of the expensive medicines by the poor masses in India and the investments made by the pharma companies. As per the Patents Act, Pfizer will have six months to reply to the notice of Natco. In the event of a likely rejection of the grant of license, Natco can approach the government for compulsory licensing to sell a affordable version of the drug after paying due royalties to Pfizer. As per the Indian law, the government can invoke the provisions relating to complusory licensing after three years of grant of the patent if the product patented is not affordable for public or if the company fails to launch the product after having obtained the patent.However, most innovator companies have been opposed to the idea of compulsory licensing.

Natco had tried to seek a similar license from Pfizer for its anti-cancer drug to be sold in Nepal  in 2007 but was unsuccessful in obtaining the same.  We have covered this issue on the blog which can be read here, here and here. The outcome of this notice to Pfizer will be instrumental in determining the fate of compulsory licensing in India which has been a fairly recent addition to the Patent Act.

Recently, we had covered the issue of  DIPP discussion paper on compulsory licensing  in the Indian pharma sector which can be accessed here and here.

PS-Image from here.

Patent office rejects Abbott's application on HIV drug

The Indian Patent office has rejected Abbott's patent application on its heat-stable version of Lopinavir/Ritonavir drug ( sold under the brand name “Kaletra” ) on grounds including failure to satisfy inventive step. The rejection was in response to pre- grant oppositions filed by I-Mak , Cipla, Okasa Ltd and Matrix Lab Ltd.

The decision paves the way for access to life-saving medication for patients across the world, noted Tahir Amin, director of initiative for Medicines, Access & Knowledge (I-MAK), one of those who initiated legal action against the US company. The development sets an important precedent to stop pharmaceutical companies from gaming the patent system, I-MAK note added. A generic version of Lopinavir/Ritonavir is currently being produced in India for domestic consumption and exportation. As Abbott’s patent application has been denied, generic manufacturers can continue producing them.

Lopinavir/Ritonavir is one of the medications recommended by World Health Organization for second-line treatment in HIV-positive patients whose first set of medications can no longer keep them healthy. I-MAK points out that the medication is the subject of the greatest abuse of the patent system around the globe. Since 1992, when Abbott was awarded its first patent related to Ritonavir in the U.S., the company has sought at least 75 new patents on essentially the same set of drugs in Lopinavir/Ritonavir. Abbott has continued making minor modifications over the last two decades and cement its monopoly on these products. In a continuation of that strategy, Abbott tried to seek a new patent in India on the basis of a modification which adds no clinical benefit.

There are over 33 million people living with HIV today. Of these, nearly 15 million require access to HIV drugs, the note said. Further, it adds, cost-savings generated over a three-year period by introducing generic Lopinavir/Ritonavir to 43 low- and middle-income countries will be sufficient to cover 130,000 new patients on HIV treatment who currently lack access. In other words, 130,000 lives can be saved from opening up the market for this drug alone. 

For more, see here.