Almost a year after it was reserved by the Delhi High Court, the first post-trial judgement by an Indian Court in a Standard Essential Patent-related suit was issued on July 12, 2018. In Koninklijke Philips Electronics N.V. vs. Rajesh Bansal And Ors., Ms. Justice Mukta Gupta delivered a positive finding of the ‘essentiality’ of Philips’ patent, and held that the defendants, local manufacturers, in manufacturing standard-compliant DVD players were infringing this patent.

Background

Plaintiff, in 1995, registered Patent No. 184753 in India (the suit patent), which relates to a “Decoding Device for converting a Modulated Signal to a series of M-Bit Information Words”. Defendants are Indian manufacturers who imported DVD player components and assembled them in India. Plaintiff claimed that the defendant’s DVD players employ ‘decoders’ especially meant for decoding contents stored on optical storage media in accordance with the methods described in IN-184753, thus infringing the suit patent. The DVD standards in question are the DVD Video Standard and the DVD ROM Standard created by the DVD Forum, and subsequently adopted by the ISO and ECMA.

The Court describes the functioning of the patent (even though no claim construction is done in the judgement) as follows – “The invention concerns ‘channel modulation’ which involves a coding step that is performed directly before the storage of the data. This coding ensures that the data to be stored on the disk has a particularly suitable structure for storage. The decoding of 16-bit code words to 8-bit information words is performed by “looking ahead” to the next code words.”

Arguments and Court’s Analysis

The Court framed eight issues to be decided in the suit:

“(i) Whether the plaintiff No.1 is the proprietor of Indian Patent registered under No. 184753?

(ii) Whether the plaintiffs are owners of a valid patent?”

These two issues were decided at the outset in favour of the plaintiffs. The defendants during argument had challenged the validity of the suit patent, contending that it is an algorithm and not an invention, and therefore is not patentable. However, as this was not pleaded by the defendant’s in their written statement, the argument was not considered.

The Court next considered issue (vi),

“Whether the impugned suit patent (#184753) is an essential patent in respect of DVD technology and whether the essentiality as claimed is valid under the Indian Law?”

The Plaintiff argued that the suit patent was an essential patent required to comply with the DVD Standard. The Plaintiff sought to rely upon ‘essentiality certificates’ granted to its corresponding US and European Patents, to prove that the patent was, in fact, essential. The Court did not examine the validity of these ‘essentiality certificates’, holding that the Plaintiff had discharged their burden of proof by producing evidence of ‘essentiality’, despite Defendant’s objections over the credit-worthiness of the reports. In reasoning based almost entirely on the ‘essentiality certificates’ of the US and EP Patents, and without independent analysis, the Court held that the suit patent is an essential patent for the fulfillment of the DVD Standard.

“(iii) Whether the defendants have infringed the plaintiffs’ Indian Patent No. 184753?”

The Court found that the defendant infringed the suit patent on two counts – because the suit patents were SEPs, the logical corollary of the defendant manufacturing a standard compliant device without a license for the SEP indicated infringement. In the alternative, the plaintiff argued that infringement was independently proven in its evidence. The defendant argued that the plaintiff had failed to prove infringement. Importantly, the defendant also argued that the plaintiff was unable to prove that taking into account the prevalent technical practices and the state of the art in usage, making, selling, leasing of the DVD player without infringing the plaintiff’s patent is not possible. Unfortunately, this was not accounted for by the High Court. The Court considered the evidence provided by the Plaintiff’s witness, holding that the plaintiff was able to prove (through EFM (eight to fourteen modulation)+ demodulation technique) that the suit patent was in fact infringed. While the court discusses the precedent on the construction of a claim, no such construction is done, and no comparison of the patent claims with the allegedly infringing product is made. It is unclear whether the EFM technique is in fact disclosed in the suit patent, therefore the suitability of this analysis is circumspect. However, this analysis seems to be sufficient for the court to hold that there is factual infringement as well as infringement based on the compliance of a standard without taking the required licenses from the SEP.

The defendant’s next leg of argument rested on the principle of exhaustion of rights, which holds that the patent right over a product cannot be enforced against that specific product once it has been sold by the manufacturer or licensee. The defendant argued that it purchased the relevant allegedly infringing device from third-party manufacturers who were duly licensed by the plaintiff. The Court dismissed this argument routinely, stating that the defendant had not managed to prove that the sellers from whom they had purchased were properly licensed by the plaintiffs. However, this does not address the full scope of the exhaustion argument, in terms of the protections it grants innocent downstream purchasers.

“(iv) Whether the defendants had knowledge of the plaintiffs’ patents in respect of DVDs and the plaintiffs’ licensing programs?”

The Court held that the defendants, in applying for a license from the plaintiff, must have had knowledge of the plaintiffs patent, and therefore held this issue against the defendants.

“(v) Whether the plaintiffs along with various other members of the DVD forum are misusing its position with a view to create a monopoly and earn exorbitant profits by creating patent pools?”

The defendant next argued that the issue of licensing of a standard essential patent was a competition law issue and could not be decided by a civil court as per the Competition Act, 2002. The Court, rightly, rejected this argument, one which has already been settled by Telefonaktiebolaget LM Ericsson (PUBL) vs. Competition Commission of India and Ors. In which the Court held that the CCI and the civil court operate in different spheres and offer different remedies, and the civil court cannot go into issues of anti-competitive behavior

“(vii) Whether the defendant No.2 is liable to pay any license fee to the plaintiffs and if so at what rate?

(viii) Whether the plaintiffs are entitled to a decree of damages or any other relief?”

The plaintiffs argue that the value of royalty must be based on the entirety of the patent pool, which is the basis on which its licensing occurs. Defendants stated that this would amount to a breach of Fair, Reasonable and Non-Discriminatory licensing terms, which are usually followed in cases of SEP. However, there was no analysis in the judgement on what the scope of FRAND is, particularly in how the court should determine what is FRAND in a situation where it sets royalty rates. The Court relied on the US Federal Court’s decision in Commonwealth Scientific and Industrial Research Organization vs. CISCO Systems, Inc. to conclude that the royalty rates may be based on informal negotiations, and in the absence of a countervailing methodology by the defendants, allowed the royalty rate to be fixed at USD 3.175 from the date of institution of the suits till 27th May, 2010 and from 28th May, 2010 at USD 1.90 till 12th February, 2015.

Finally, the Court reproduced at length the law on punitive damages, as established in Hindustan Unilever, and expounded on the importance of not being arbitrary in the award of damages, then immediately proceeded to award an arbitrary Rs. 5 Lakh in punitive damages without taking into account any of the principles reproduced by it.

The Delhi High Court’s decision is certainly an important landmark in SEP litigation in India. However, the lack of analysis by the Court on crucial areas like assessing essentiality, forgoing a claim construction, disregarding exhaustion principles and assessing FRAND terms means that it is more likely to have a notorious legacy, and possibly subject to challenge in appeal on any of the above grounds.

Earlier (quite a few years ago!), Prashant had reported a 2008 order of the Himachal Pradesh High Court, wherein the Court had examined the validity of the Patent No. 195917, a patent granted to the plaintiffs for a “device used for manually hauling agricultural produce”, on the basis of its alleged similarities to a traditional handicraft called “kilta” (an-all-purpose bamboo basket used to carry any type of load, supported by a rope and tied to the forehead). In this case, the plaintiffs had averred that the respondent had infringed their patent rights by manufacturing the patented device and by selling it to the Himachal Pradesh Government and they had filed for a permanent injunction against this, which was subsequently denied by the Court.

This case serves as a typical example of pendency of litigation in Indian Courts since the matter, which was initiated by a suit filed in 2005, has been pending for 13 whole years. It only recently came into light on 29^th June 2018, when a single judge bench of the Himachal Pradesh High Court revoked the aforementioned patent grant. Though the parties’ arguments and the Court’s deliberations in its latest decision mostly remain similar to the ones in its earlier order, I will briefly recap it for the benefit of our readers.

Arguments of the Parties

The plaintiffs claim that the inventor of the patented product, Dhanpat Seth, based his invention on the kilta but improved upon the same by inventing longer baskets made up of synthetic polymeric material and by attaching removable harnessing which enabled farmers to tie the basket to the waist instead of the forehead. In effect, they claimed that this produced better orthopedic results since the traditional kilta used to cause severe back pain to farmers.

The defendants, on the other hand, contested the suit by stating that the patent had been incorrectly granted. They mainly argue that the patented product is not an “invention” under Section 2(1)(j) of the Patents Act, 1970 since it lacks novelty and an “inventive step” i.e., it is merely an application and a “workshop improvement” upon the kilta, which was well-known long before the prior date of the patent application.

The Court’s Decision

The Court based its decision on several provisions of the Patents Act, 1970, few of which I have discussed below:

Section 2(1)(ja): Clearly, the plaintiff’s product merely amounted to a “plastic kilta”, as has rightly been pointed out by the Court. The Court applied the test of “inventive step” defined under Section 2(1)(ja) i.e., whether the product undertakes “technical advance, as compared to existing knowledge” and/or whether it has “economic significance”, that makes the invention not obvious to a “person skilled in art”. It was decided that the defendants had successfully proven their case by showing that changes in size or that of raw material could not contribute to a “technical advance” or have “economic significance”. Since their product did not have any significant inventive features and bore striking resemblance to the kilta, it was decided that the patented product would appear obvious to a “person skilled in art”.

Section 3(d): The Court held that the product attracts Section 3(d) since mere replacement of raw material (bamboo replaced by plastic) amounted to merely a “new discovery of a known substance” i.e., the traditional kilta and that there was no “enhancement of the known efficacy” since the orthopaedic superiority of the product was not aptly testified by any surgeon.

Section 3(p): Stating that the kilta had been used in the “countryside of Himachal Pradesh since times immemorial”, the Court stated that the same amounted to “traditional knowledge” under Section 3(p) and that the product was a “mere aggregation or duplication of traditionally known components”.

Based on the above deliberations, the Court revoked the patent grant under Section 64 of the Patents Act, 1970.

How exactly did the Patent Office grant Patent 195917?

The plaintiffs had applied for the patent grant on 24^th June 2002, a day after which Section 3(p) was inserted into the Patents Act vide the Patents (Amendment) Act, 2002. A perusal of the First Examination Report, dated 19 June 2003, for Patent 195917 reveals that the Examiner of Patents and Designs clearly did not apply his mind while examining the patent application of the plaintiffs. In the Report, it is merely stated that the product was not an invention under Section 2(1)(j) and that it lacked an “inventive step” .They cited the introduction of lightweight nylon baskets for tea-pluckers in Sri Lanka as prior art.  Surprisingly, they did not consider the local example of the kilta as prior art or give consideration to the fact that the patent grant may be barred under Section 3(p). Later, in 2004, the application for the patent was accepted and the Examiner’s reasons for doing so were not specified. It is, hence, quite baffling and mysterious that the Patent Office granted a patent to the plaintiff’s product, despite existing prior art and when it was so clearly based on the traditional kilta.

Takeaways from this Case: Traditional Knowledge still remains undefined in India

The main problem in assessing patent applications based on traditional knowledge stems from the fact that “traditional knowledge” remains undefined. As has been noted earlier, the Himachal Pradesh High Court proceeds to assume that the kilta comes under the ambit of “traditional knowledge” in Section 3(p) on the vague assumption that it has been around since “time immemorial”. It does not lay down any test or parameters by which a certain invention can be said to be based on “traditional knowledge” or termed as an “aggregation or duplication of traditionally known components”.

The question, therefore, still persists; how is the Patent Office to define “traditional knowledge” and conclude that a patented product stands barred under Section 3(p)? Judicial interpretation on the same is required for efficient examination of future patent applications based on Indian traditional knowledge and prevention of needless and lengthy litigation.

Image from here

It’s been an interesting week at SpicyIP!

Thematic Highlight

The second guest post by Prof. (Dr.) N.S. Gopalakrishnan forms the thematic highlight of this week. In continuation to his first post, Prof. Gopalakrishnan states that there has been no report of an individual registering a new variety under the Protection of Plant Varieties and Farmers’ Right Act, 2001 till date. He then proceeds to describe how certain provisions and rules under the Act create confusion with regard to notification of crops and time limit for registration of extant and farmers’ varieties, which benefits seed companies at the expense of farmers. He concludes that there is an urgent need to challenge these rules and notifications to ensure that justice is meted to the farming community.

Topical Highlight

Prashant reported a Delhi High Court judgment whereby the Court upheld the constitutionality of Rules 56(3), 56(4), 56(5), 56(6), 57(5), and Rule 61(5) of the Copyright Rules, 2013, which gives the government the right to regulate tariff policies. Prashant argues that, under Section 33A of the Copyright Act, 1957, only powers to prescribe rules regarding mode or the timeline of publication have been delegated to the government and hence, the challenged provisions go beyond the scope of Section 33A. He concludes that the task of regulating tariff policies must be not hindered by bureaucratic inefficiency and must be left to the copyright board, an independent judicial body.

Next, Divij covered India’s first post-trial judgment in a Standard Essential Patent suit, delivered by the Delhi High Court. In its judgment, the Court decided the ‘essentiality’ of Philips’ patent positively, and held that the defendants (local manufacturers), by manufacturing standard-compliant DVD players, were infringing this patent. After examining the parties’ arguments and the Court’s reasoning, he concludes that Court’s lack of analysis on important areas like assessing essentiality, forgoing a claim construction, disregarding exhaustion principles and assessing FRAND terms would most likely be challenged via appeal.

Other Posts

Prof. Basheer brought this really interesting news about how a hit Chinese black comedy movie was reportedly inspired by the Supreme Court’s decision in Novartis AG v. Union of India. The movie provides an insight into the life of a cancer patient who started smuggling cheap anti-cancer drugs from India. Prof. Basheer then provides a relook at the 2013 decision of the Supreme Court, wherein it had invoked Section 3(d) and rejected Novartis’ attempt to patent its anti-cancer drug Glivec, since it had not demonstrated any significantly enhanced efficacy over earlier substances. By deciding so, the Court had effectively put an end to evergreening (the practice of making minor developments to existing patented drugs and then claiming secondary patents over those modified drugs).

Next, I wrote a post on a recent Himachal Pradesh High Court judgment which examined the validity of a patent granted way back in 2004. The plaintiff’s patented product had numerous similarities to the traditional kilta (an all-purpose bamboo basket used in Himachal Pradesh for hauling any kinds of goods). Invoking Section 3(p) of the Patents Act, amongst other Sections of the Act, the Court revoked the patent for being based on “traditional knowledge”. I then proceed to analyze the history of the patent grant and expose the lackadaisical attitude adopted by the Patent Office in granting this patent. I conclude my post stating that there is a pressing need for the Courts to define and lay down the parameters of “traditional knowledge” to avoid unnecessary litigation in the future.

Other Developments

Indian

Judgements

The Gillette Company LLC v. Tigaksha Metallics Pvt Ltd & Anr– Delhi High Court [July 9, 2018]

The Court ordered the continuation of the interim injunction restraining the Defendant from infringing the Plaintiff’s ‘WILKINSON SWORD’ trademark for razor blades by using the mark ‘ZORRIK TALVAR’ for the same product, Drawing analogies to the case of Allied Blenders & Distillers Pvt. Ltd. v. Shree Nath Heritage Liquor Pvt. Ltd., the Court found the balance of convenience in favour of the Plaintiff after explaining at length that using a word sharing the same semantic field for a similar product would amount to infringement and passing off due to the way brand recollection operates in associative memory of consumers, even though the trade dresses were dissimilar.

Insecticides (India) Limited vs Parijat Industries (India) Pvt Ltd – Delhi High Court [July 9, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from using the mark ‘VICTOR 80’ or any mark deceptively similar to the Plaintiff’s ‘VICTOR’ mark for crop protection products, holding that the Plaintiff cannot be dis-entitled on the ground of delay in filing the suit because the Defendant had only been squatting on the ‘VICTOR 80’ mark and even a registered trademark, if not used, cannot qualify as a trademark. Further, the Court held that the Plaintiff cannot be estopped by virtue of a past representation by it before the Registry that the two products in question were actually different because that representation was erroneous and contrary to the Trade Marks Act and there can be no estoppel that goes against the statute.

Hindustan Unilever Limited v. Emami Ltd. & Ors – Calcutta High Court [July 7, 2018] (Case not decided on merits yet)

The Court upheld the Trial Court’s ad-interim injunction on the defendant’s ‘Men’s Fair and Lovely’ ad which was prima facie disparaging the plaintiff’s ‘Fair and Handsome’ product on prime time telecast. The Court observed that the plaintiff’s modus operandi of initiating a disparagement (tort) suit before a Civil Judge as per the CPC for the denigrating comparative advertisement and then seeking leave to present a plaint for infringement of its trademark before the District Court to satisfy Section 134 of the Trade Marks Act, for wrongly using its distinct product as comparison in that advertisement, was procedurally valid. But it has not yet gone into the merits of the case.

Rohit Singh & Anr v. Apple Inc – Delhi High Court [July 4, 2018]

The Court dismissed a plea against Apple for naming its multiscreen software as ‘SPLITVIEW’, which was also the name of the plaintiff’s yet unregistered trademark for similar software. The Court ruled that under Section 27 of the Trade Marks Act, no protection can be granted for unregistered trademarks unless passing off is proved, which was prima facie not apparent. Further, the Court saw no prima facie case for interim relief for injury due to wrongful association, opining that any such association would likely be beneficial to the plaintiff’s reputation.

Xerox Corporation v. Sarita Agarwal & Anr – Delhi High Court [July 2, 2018]

The court granted an ex-parte permanent injunction restraining the Defendants from infringing and diluting the Plaintiff’s trademark ‘Xerox’ and from passing off their goods and services as that of the Plaintiff by carrying on their business under the deceptively similar style and phonetically identical name ‘Zerox’. The Defendants were also directed to transfer the domain  http://zeroxindia.com/ to the Plaintiff.

Lt Foods Limited v. Heritage Foods (India) Limited – Delhi High Court [July 2, 2018]

The Court stayed the present proceedings involving trademark infringement and passing off until final disposal by the IPAB of the applications filed before it by both parties to cancel each other’s trademarks, as both were holding trademark ‘HERITAGE’ registered under the Class 30 for selling rice. It further held that as per Section 124(5) of the Trade Marks Act, 1999, the stay would not preclude the Court from making an interlocutory order to consider interim relief for the plaintiff.

Syed Zakirali S/O Syed Jawarali vs Syed Zahidali S/O Syed Jawarali – Bombay High Court [June 29, 2018]

The Court set aside an Additional District Judge’s decree, holding that the defendant had passed off his bidies as those of the plaintiff by illegally using wrappers/labels that were deceptively similar to those trademarked by the plaintiff. Though the plaintiff had stopped business in 1986 and the defendant had stopped using the disputed labels since 1978, the Court awarded damages for the past infringement and also restrained the defendant from using these labels again if the plaintiff should renew the registration of his trademarks.

Dhanpat Seth & Ors v. M/S Nilkamal Plastic Ltd – Himachal Pradesh High Court [June 29, 2018]

The Court held that the Plaintiff’s patented ‘Device for Manually Hauling of Agricultural Produce’ was not in fact an invention as it did not constitute any inventive step over the traditional knowledge with respect to manufacturing the device known as ‘Kilta’ and simply using plastic as as raw material had not led to any proven enhancements, thereby negating the Plaintiff’s claim for infringement of patent. The Court went ahead and decreed the counter-claim of the Defendants, cancelling the above patent granted to the plaintiffs.

News

• Patient group opposes Gilead’s hep C drug patents
• Supreme Court to hear appeals on Monsanto patent issue on July 18
• Public Notice Regarding Electronic Processing Of Copyright Applications Received Online
• Bengal trademark battle over biriyani leaves ‘Malabar’ amused
• Delhi HC says no Nasha for Fever FM over trademark dispute with Radio Mirchi
• Madras HC stops Marathi remake of Dhanush’s VIP over copyright infringement

International

• Roger Federer in battle with Nike over ‘RF’ trademark
• Israeli patent spreading favorite odor using smartphone to be sold worldwide
• Milan court applies Nintendo v Big Ben in fast fashion lawsuit against ZARA
• “No closer to clarity” – UK’s Brexit White Paper offers clues to future IP approach, but big questions remain
• EUIPO raises battle-axe against Puma before Luxembourg bench
• Federal Circuit Vacates PTAB’s Determination of CBM Patent After Appeal by Apple and Google
• YouTube launches Copyright Match tool to fight content stealing and duplication

We are pleased to bring to you an insightful guest post by Dr. Balakrishna Pisupati on the interpretational and other issues in respect of India’s Biological Diversity Act and Rules.

Dr. Pisupati is an internationally renowned conservation and development specialist with close to three decades of experience working at national, regional and international levels, holding positions such as Vice-Chancellor, TransDisciplinary University (TDU, India), Chief of Biodiversity, Land Law and Governance programmes at United Nations Environment Programme (UNEP, Kenya), Senior Policy Fellow at Fridtjof Nansen Institute (FNI, Norway), Chairman, National Biodiversity Authority-Government of India (NBA, India), Coordinator, Biodiplomacy Programme at United Nations University (UNU-IAS, Japan), Head, Regional Biodiversity Programme for Asia at the World Conservation Union (IUCN, Sri Lanka), Head, Biodiversity and Biotechnology programme at the M S Swaminathan Research Foundation (MSSRF, India). He has advised more than 30 countries on conservation and development policy and served as advisor to international bodies such as China Council for International Cooperation on Environment and Development, China, the Global Environment Facility (GEF), World Bank, United Nations Development Programme (UNDP) and others. Currently, he is the Chairperson of FLEDGE based in India. He can be reached at pisupatibalakrishna@gmail.com.

Protecting India’s Biodiversity: Are we all Criminals?

Balakrishna Pisupati

India has a unique law that is not known to a majority of us. Unfortunately, a technically strict and mindless interpretation of it results in several of us being labelled as “violators”. Worse still, this law makes most violations a cognizable and non-bailable offence. It is the Biological Diversity Act (2002) and associated Rules (2004) that I am talking about.

A couple of weeks ago, the conservation community woke up to a paper in the journal Science, where more than 170 scientists lamented how a supposedly progressive international regime, the Convention on Biological Diversity or CBD in short, has become the ‘the cure that is killing’ biodiversity conservation.

This analytical piece comes in on the eve of 25 years of adoption of the Convention; even as countries have met in Montreal last week to discuss ways and means of saving the world’s natural wealth and sharing the resources. The key problem with the CBD, as per the authors, is the provisions related to access to genetic resources and benefit sharing.

India as a front-runner

It is a well known fact that India was one of the leading voices at the CBD negotiations during the early 1990s and facilitated its adoption during the 1992 United Nations Conference on Environment and Development – popularly called the Rio Earth Summit. This Conference also gave birth to the United Nations Framework Convention on Climate Change (UNFCCC) and the United Nations Convention to Combat Desertification (UNCCD).

The Indian government decided in 1993 that India should walk the talk in effectively implementing the CBD at the national level and agreed to develop a national legal framework to realise the objectives of CBD, namely conservation, sustainable use and sharing of benefits of such use equitably. And thus was sparked the trigger for the Biological Diversity Act.

Lengthy discussions, difficult negotiations with civil society and careful assessment of India’s priorities to secure its biological resources and associated knowledge in the 1990s resulted in the legislation being passed in the Parliament a full decade latter in 2002.

To some extent, India started the exercise with no previous experience of dealing with one specific issue – how to safeguard and secure its sovereign wealth– the biological resources and associated knowledge – from being misappropriated using the framework of access and benefit sharing (ABS).

Needless to say, articulating norms around ABS proved a significant challenge, owing to the absence of any significant international precedent. Compared to this, norms around conservation and sustainable use (which form the other two objectives of the Act and the CBD) was relatively easier to frame.

The ABS provisions, for the large part, require non-Indians (defined in very broad terms to include even an Indian company with a single non-Indian  shareholder) to seek prior permission before commercialisation of any biological resource and share a percentage of their profits with the National Biodiversity  Fund to be used for conservation and related actions. For purely Indian entities however, they only have to “intimate”  State Biodiversity Boards of such actions.

The Act has several excellent provisions that were considered futuristic at the time of drafting. Unfortunately some of them have now become redundant and/or troublesome for those who wish to comply. The key problem with some of the provisions clearly indicate the intent to restrict use than facilitate use. In short, the Act had a single intent – ensure India’s resources are not used by anyone for commercial purpose without prior permission or intimation. The intent can be argued as good and needed but all the trouble started in the way certain provisions of the Act are being  interpreted now by the administrative ministry, the Ministry of Environment, Forests and Climate Change and the implementing agency, the NBA.

When the trouble started!

Thanks to lack of coordination and collaboration during the formative years of implementation of the Act in India, several States in India drafted State-level Rules that are in many ways not in alignment with the national legislation. For example, though the Act calls for Indians to intimate the State Biodiversity Boards when commercialisation of biological resources happen, several State Rules are drafted in a manner that require Indians need ‘permission’. This in itself is a major legal and implementation challenge.

Real trouble started in 2012 when a newly established Biodiversity Management Committee (BMC) from Madhya Pradesh – a statutory body, as per the Act, created to implement the Act at local self-government level, filed a case seeking benefits from a coal mining company arguing that coal is a product of biological resources and mining of coal is nothing but commercialisation of biological resources and the profits be shared with it as per the Act. After long discussion and expert consultation, the NBA clarified before the court that coal cannot be considered a biological resource per se and therefore there is no issue of benefit sharing.

This led to a sudden deluge of interpretations as to what is a biological resource, what is commercial utilization, what aspects of the resources and associated knowledge are covered under the Act, how to interpret the exemptions and the related and more importantly what is meant by ‘prior’ permission before commercialisation by both Indians and non-Indians.

In the absence of clarity and multiple-interpretations, often not supported by legal certainty, the Act became a nightmare for a number of stakeholders, including researchers and those wanting to prospect the resources legally. Thus, the Act that was supposed to help India reap benefits using its bio-wealth has become a nightmare for those who wish to comply, those who implement it and those who will be interpreting the provisions in case of violations namely the judiciary.

Current interpretations

The following are some of the current interpretations that are being suggested by the implementing agency regarding provisions of the Act. Mind you, many of these are not documented anywhere but are those being verbally discussed and used in a case-by-case basis by the NBA. This makes the predictability of the interpretation a challenge.

For example, any act of commercialization of biological resource should have prior permission from the NBA if a non-Indian, non-resident Indian or an Indian entity with non-Indian participation is involved. If not, the act will be treated as cognizable, non-bailable offence. In other words, majority of Indian companies and entities using biological resources already are considered ‘non-Indian’. These include thousands of companies and research entities ranging from those manufacturing herbal products to biotechnology companies.

The definition of commercialisation is so broad that even someone ‘commercialising’ an extract or fragrance has to get the ‘prior’ permission.

Interpreted this way, almost all the food, beverage and related items one sees on the grocery store shelf will come under the purview of the Act and even a road side vendor who is trading biological resources or extracting juice and other such activities need to share a certain percentage of profit with the State or National Biodiversity Fund.

During one case of interpretation of ‘extract’ a few years ago, the arguments between the NBA and the Ministry of Environment and Forests has been whether selling soya bean oil attract the ABS provisions or not. One interpretation was since extracting of oil is a ‘traditional practice’ and since such practices are exempted from the Act (Section 2 of the Act), there is no ABS provision that need to be invoked. Another interpretation, that to an extent prevailed with no logic though was, that current methods of ‘extraction’ are not traditional and hence ABS mechanism should prevail and the oil extraction industry should share a percentage of profits

Also, there is no distinction that NBA makes regarding  commercial and non-commercial use of biological resources as of now. The arguments used by the NBA and its expert committee has largely been that the distinction is difficult to the made and hence non-commercial research is something that cannot be distinguished unless a formal application is made to the NBA or SBB for review and decision making. This has put a large number of non-commercial activities related to use of biological resources under stress.

Interestingly, another provision, that does not make much sense now is the Article 5 on collaborative research and how it is being interpreted under the Act. As per the Act and associated Notification, collaborative research is exempted – only and only if – it is approved by central government. In other words, all the collaborative research projects being implemented by research institutions, Universities, academia, NGOs and others involving biological resources and associated knowledge are in a way violating the Act and a criminal case may be bought against them anytime.

Some of the suggested interpretations of the Act make it sound more alarming. Take the case of an entrepreneur who has been in the business of commercial use of resources but not being aware of the need of prior permission. The applicant puts in application to the Authority for seeking permission to undertake commercialisation of resources now.

The first action by the Authority is not to entertain his application but send him a show-cause notice as to why a criminal action cannot be taken against him for his actions in the past, since prior permission is required under the Act. Not only the applicant now is denied an opportunity to correct the wrong (compounding of offence) but his entire enterprise is put on hold indefinitely threatening criminal action. Unfortunately, decisions related to such actions are not even being informed to the applicants months after receipt of such applications. This is clear violation of the Act in itself.

Recently, one of the SBSs undertook a search and seize operation in another State citing the resources collected from its State has been held by an entrepreneur and went to arrest him. This is in clear violation of Indian criminal procedural code.

On top of these, though the time to dispose applications for permissions and ABS are specified to be 60-90 days from the date of application as per the Act, it taken an average of time anywhere from 1-3 years.

I can cite a dozen more such interpretations and actions, including an objection by a staff of the Authority for non-Indians to participate in Indian workshops and seminars citing that the participants may misuse the knowledge gained from the participation. Simply put, bizarre!

Where to from here?

Given the above problems, a vast majority of Indians, companies and enterprises using biological resources, ranging from those making pickles to major biotechnology companies are violators of the Act as per the confusing interpretations suggested by NBA. Since there is no provision for compounding of offense or even an opportunity for someone to plead ignorance, research and development as well as commercialisation of biodiversity has almost come to a standstill for those who wish to comply has come to a stop.

Given the above, it is critically important for the Government, including the Law Ministry to address both the interpretation issues as well as correct the wrongs in the Act. In the absence of corrective action, India will significantly lose from its biological resources since no one would like to use the resource with such uncertainty and predictability of interpretation resulting in set-back to research and development using biological resources.

The following could serve as a beginning to corrective action:

First, initiate immediate steps to amend the Act since many provisions of the Act are unclear, does not resonate with what the country wants now and does not support ABS principles.

Second, ensure a notification will be made to compound past actions. Even the Income Tax Laws have such provisions. In the absence of any awareness about the Act since its enactment, it is incorrect to penalise those who approach the NBA with an application to comply now on. In fact, this option has already been provided to the Authority in 2013 but no action been taken.

Third, ensure the Authority is mandated to provide interpretation of the Act with clarity. Multiple interpretations from the Authority, its members, the expert committee and SBBs are only complicating the implementation and compliance. Clear indicators to monitor action by the NBA and SBBs has to be set. This has to be legally correct than based on emotions.

Fourth, ensure all the SBBs interpret the Act and its provisions uniformly. In the absence of this, as it is now, it is a challenge for those who wish to comply and easy for those who wish to violate. This means the State Rules have to be re-drafted urgently.

Fifth, raise the awareness levels of the judiciary, at all levels including the National Green Tribunal, about the Act, its intent, current obligations of India under the international legal regime (the Nagoya Protocol) and the provisions of Vienna Convention, and

Lastly, ensure NBA share all the information about decision making publicly, since very little information on how, why and when decisions are made by the expert committees and the Authority are available on the website, though there is a legal obligation for NBA to do to, both under the Citizen’s Charter and Right to Information Act.

I am not sure about you, but I want to be on the right side of law, if only I know which side.

We are pleased to inform our readers that the Sports Law and Policy Centre (SLPC), Bangalore is organising the second edition of the SLPC Symposium on August 17-18, 2018 at the India International Centre, New Delhi. Apart from sports law issues, some of the issues which will be discussed in the Symposium include refreshing sports broadcasting regulation in India, whether celebrities should be held liable for the products they endorse etc. For further details of the event, please read the post below:

The Sports Law & Policy Symposium 2018

India International Centre, New Delhi

August 17 – 18, 2018

The Sports Law & Policy Centre, Bengaluru, (www.sportslaw.in), powered by LawNK and the GoSports Foundation, is organising the second edition of the Sports Law & Policy Symposium in New Delhi, India over the course of two days, August 17 and 18, 2018 at the India International Centre, New Delhi. The objectives of the Symposium are to bring together the sports law and regulation fraternity in India, initiate dialogue on the role of sports lawyers in India, and catalyse collaboration on issues of common interest.

The Symposium will showcase and deliberate on key recent developments in sports law and related issues affecting the sporting ecosystem in India, and will feature presentations, seminars and interactive sessions involving leading legal practitioners, administrators, regulators and industry experts across the sporting spectrum, from India and overseas.

The first edition of the Symposium was held on July 15, 2017 at Bengaluru, and brought together over 20 eminent speakers and an audience of over 120 participants. The Symposium was structured around a keynote address, facilitated discussions and presentations on varied topics such as Sports Governance, SportsCommerce, Sports Regulation and Sports Careers. We also released the SLPC publication on the Ten Reforms Indian Sports Administration Needs.

In the context of the increasing professionalisation and commercialisation of Indian sport, the 2018 edition of the Symposium will focus on the following broad themes:

– Sports Broadcasting Regulation in India
– Sports Governance
– Structuring Leagues and Organising Sporting Events in India
– The Emerging Jurisprudence of Athletes’ Human Rights in India

This year it is expected that the Symposium will host about 300 participants, 10 international speakers, and 20 Indian speakers.

To register for the SLPC Symposium, please fill out the form available at this link goo.gl/buL8Xi.

For further information please feel free to write to us at slpc@lawnk.com.

About the SLPC

The SLPC is an independent think-tank focused on interdisciplinary research, scholarship, education and institutional support for public and private enterprises in areas relating to legal, policy and ethical issues affecting amateur and professional sports in India. The Symposium is SLPC’s annual flagship conference, and represents SLPC’s continuing commitment to thought leadership in India by bringing together leading sports law practitioners, sports policy experts, in-house counsel, researchers, academicians, sports administrators, NGOs and students in India to exchange and share their experiences and learnings on various aspects of the law and policy relating to sports in India.

In an interesting judgment
delivered earlier this month, the Delhi High Court adopted a highly tenuous (and bizarre) line of reasoning in arriving at the conclusion that the plaintiff was not entitled to passing off relief at the interim stage.

But first, the facts. Plaintiff No. 1, one Rohit Singh, a software developer who works for plaintiff no. 2, Vyooh Low Level Computing LLP, claimed that he developed a proprietary software product called Split View. The distinctive attribute of this piece of software is that it enables a user to simultaneously work on multiple windows on a computer screen.

According to the plaintiffs, they learnt in December, 2015 that the defendant, Apple Computers, had developed a piece of software, forming part of MAC OS X E1 Capitan (version 10.11) and iOS 9. This software enabled the screened to be split into two halves in order to enable consumers to work on multiple applications simultaneously and was called Split View. Given that this software was hailed as the most significant improvement in the software updates for Mac OSX and iOS 9, it soon became the first search result on Google for ‘Split View’. This gave rise to the mistaken belief in the public mind, the plaintiff argued, that the plaintiff’s software was an imitation of the defendant’s software, resulting in the plaintiff filing a suit for passing off.

Resisting the plaintiff’s prayer for the grant of interim relief, the defendant argued that it had been using the phrase ‘Split View’ to refer to the multi-windowing functionality in its products since 1993 and had introduced this feature with the same name in its Mac and iOS operating systems in a phased manner. Further, the defendant contended that ‘Split View’ was a descriptive phrase widely used by many third parties for which there were 1839 patents predating the Plaintiff’s development of its software product. Finally, the defendant argued that the plaintiff had not established that it had earned any goodwill and reputation for the Split View software and that the same had been swamped by the defendant.

While the plaintiff was able to obtain an ex parte interim order interdicting the use of the trademark ‘Split View’ in any of the defendant’s products, this relief was vacated by the Division Bench and the matter was remanded to a single judge for adjudicating upon the prayer for the grant of interim relief. The judgment under discussion was delivered against this backdrop.

While conducting a passing off analysis, the Court noted that the plaintiff had neither averred, nor established, that the defendant was seeking to arrogate to itself the goodwill and reputation earned by the plaintiff which is the sine qua non to succeed in a passing off action. To buttress its conclusion, the Court made the following, two parts bizarre, one part worrying, observation:

“E. In fact, during the hearing, the thought did cross my mind that the effect if any of the association, even if made between the plaintiffs and the defendant, at least at this stage appears to be to the benefit rather than to the detriments of the plaintiffs; if at all anyone familiar with the trade mark of the plaintiffs forms an opinion that the defendant, in its product has incorporated the software under the mark „SplitView‟ of the plaintiffs, in my mind it prima facie appears that the reputation and / or goodwill of the plaintiffs would go up, rather than down.”

While some may argue that the finding excerpted above was only in the form of obiter dicta and does not merit a detailed examination, I would submit that this observation is deeply problematic for 3 key reasons.

First, and most important, the judge’s observation, if taken to its logical conclusion, would give a tech giant like Apple a carte blanche to pass off the products and services of others as their own. Given that Apple would always have the upper hand vis-à-vis a plaintiff insofar as goodwill and reputation of its products is concerned, the logic underpinning the judge’s conclusion essentially forecloses the possibility of a finding of passing off ever being returned against them.

Second, and relatedly, given that it is a well settled principle that, at the interim relief stage, the Court should not make observations that would prejudicially affect the case of a party on merits and should only make a prima facie assessment, this finding is a cause for concern. Put simply, if the judge has already formed a view that the plaintiff has nothing to lose by Apple using its trademark, one wonders how any plaintiff would be able to disabuse a judge of this notion at trial.

Finally, it bears noting that the Court made this observation in the context of addressing the plaintiff’s argument that this was a case of ‘reverse confusion’. The Court records the plaintiff’s argument at para 10(x) in the following words:

“(x) this is a case on reverse confusion where the senior user suffers injury not because junior user seeks to profit from the goodwill associated with the senior user‟s mark but because public comes to assume that the senior user‟s products are really the junior user‟s or that the senior user is somehow connected to the junior user…” [italicized a portion of the argument for emphasis].

Simply put, the plaintiff’s argument was not that its goodwill has gone down by virtue of an association being made in the public mind between its software and that of the defendant; it simply is that the creation of such association, ipso facto, results in the causation of an injury. This being so, I would respectfully submit that it was wholly inapposite for the Court to assess this argument from the vantage point of erosion of goodwill and reputation.

The matter will now be listed on the 27th of August for the preparation of the trial schedule. One only hopes that, when the Court issues its final ruling, it does so with an open mind, uninfluenced by this deeply problematic observation.

Background

This Madras High Court judgment sets out certain significant pointers with respect to defensive registration (in the context of Trade Marks Act, 1958) and well-known marks (in the context of Trade Marks Act, 1999). My endeavour is to highlight these aspects of the judgment.

This writ petition was filed by the petitioner praying to quash the order dated 04.01.2013 passed by the 2nd respondent viz., Intellectual Property Appellate Board. The IPAB had earlier allowed the appeal filed by the 1st respondent herein in OA/19/2009/TM/CH and thereby had quashed the order passed by the 3rd respondent viz., the Deputy Registrar of Trademarks in MAS 25781 dated 26.06.2009.

The petitioner-company is engaged in the business of manufacturing and marketing incense (agarbathi) sticks and dhoop sticks for more than half a century. They adopted the trademark ‘CYCLE’ ever since their inception in 1954. The petitioner registered “CYCLE BRAND” mark under Registration No.163539 in Class 3 for Perfumes, oodubathy, dhoop and hair oil and the house mark device of ‘Cycle’ in all the 34 trademark Classifications.

Issues

1. Whether the 1st respondent’s application for registration of trademark (viz, a composite label comprising of the words “CYCLE” on the top, device of cycle in the middle and words “GRASS BROOM” at the bottom) under Class 21 (in respect of brooms and other articles for cleaning purpose) liable to be refused in the light of the fact that the petitioner has registered the “CYCLE BRAND” in all the 34 trademark Classifications?
2. Whether “CYCLE BRAND” trademark is a ‘well known mark”?

Reasoning

The Court based its reasoning on the following principles:

Common words are not entitled to protection under Trade Marks Act. (Citing Registrar of Trade Marks Vs. Ashok Chandra Rakhit, AIR 1955 SC 558 & Bhole Baba Milk Food Industries Ltd Vs. Parul Food Specialities Pvt Ltd, CDJ 2011 DHC 1174)

Non-user of the trademark should not be allowed to enjoy monopoly; otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone fide users of such common word. (Trading Vs. Vazir Sultan Tobacco co.Ltd, 1997(4) SCC 201)

Defensive registration

The petitioner company obtained registration for their mark under Trade and Merchandise Marks Act, 1958. Section 47 of the said Act provided for defensive registration of trademarks. The conditions laid down under Section 47 of the said Act for defensive registration were: i) the trade mark should consist of any invented word; ii) the trade mark should have become so well-known as respect any goods in relation to which it is registered and has been used, use in relation to other goods will indicate a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods. The petitioner failed to prove that “CYCLE BRAND” satisfies both the conditions. Neither the word “Cycle” or “Brand” is invented word and therefore, did not qualify for defensive registration. Further, citing Supreme Court judgment in Skyline Education Institute Vs. S.L.Vaswani & another, the Court held that “unless the word is an invented word coined by a person out of his own effort and thought process, he cannot prevent and exclude others from from using the generic and common word by holding it within his folds by not putting it to use for a long time from the date of registration of the said trademark.”

Therefore, petitioner’s registration of the trademark “CYCLE BRAND” under Class 21 will not be a bar for registration of the 1st respondent’s trademark/composite label.

Well-known marks

The next question that falls for consideration is whether the petitioner has established that his mark is a well known mark. The defensive registration was done away with under the Trade Marks Act, 1999 and the concept of a “well-known trade mark” as defined under Section 2(1)(zg) was introduced and Section 11 was amended in conformity with Section 47 of the Trade & Merchandise Act, 1958. In the Trade Marks Act, 1999, Section 11(6),(7),(8) & (9) explain the nature of a well-known trade mark and how to determine the same.

A reading of Section 11(6) makes it clear that while considering whether the mark is a well-known trade mark, the relevant factors to be take into consideration are i) knowledge or recognition of the Trade Mark in relevant sections of the public as a result of promotion of the mark, ii) duration, extent and geographical area of use and promotion through publicity and iii) record of successful enforcement of the rights in the Trade Mark, in particular the extent to which the mark has been recognized as well-known by any Court or Registrar. In the instant case, no evidence was adduced by the petitioner to show that the petitioner’s mark is a well known mark within the meaning of Section 2(1)(zg) and Section 11(6),(7) & (8) of the Act.

Citing these aspects, the writ petition was dismissed.

Comments

This judgment puts across two vital legal messages: i) law does not favour one who just ‘sits’ (or  squats) on his/her trademark; and ii) as for proving that a mark is a “well-known mark”, it is essential to adduce evidence. The burden of proof is upon the party claiming so. If the party does not adduce evidence, the claim gets negated.

The judgment refers to the claims made by the petitioner with respect to the Orders issued by IPAB and Deputy Registrar (Paragraphs 24 & 25). The judgment perceived it as a case of misinterpretation. It is unfortunate that an Order leaves even a scintilla of scope for misinterpretation as in the instant case. Our system is miles away from quality judgment writing / Order writing and it is definitely a serious systemic defect. Readers may be aware that the SC had earlier set aside a Himachal Pradesh High Court judgment owing to poor English. Now, contrast it with the early judgments of our SC and HC especially those judgments belonging to pre-independence era.

For the benefit of readers, I am copy-pasting Paragraphs 24 and 25 mentioned above:

“24.Further, it was argued by the learned counsel for the petitioner that both the respondents 2 & 3 have held that the petitioner’s mark is a well-known mark. But, this submission of the learned counsel for the petitioner deserves no merits. From a careful perusal of the order passed by the 3rd respondent, it is seen that the 3rd respondent has not given any speaking order on any issue for determining the mark as a well-known mark under Section 11(10) of the Act. The order of the 3rd respondent merely recorded the arguments of the petitioner and respondent and without any discussion goes on to hold that the impugned mark is deceptively similar to the opponent’s mark CYCLE BRAND as it is not only the mark of opponent’s, but, also the house mark of the opponent. Absolutely, We do not find any finding by the 3rd respondent to the effect that the petitioner’s mark is a well-known mark as claimed by the petitioner. Similarly, even the finding of the 3rd respondent that the mark is deceptively similar to the petitioner’s trademark CYCLE BRAND and that it is the petitioner’s house mark, is not based on any evaluation of evidence or analytical finding, but a mere repetition of the petitioner’s arguments.

25.Similarly, We find that the 2nd respondent-IPAB in para 9 of its order has only elaborated the submission made by the learned counsel for the petitioner herein/respondent therein and as a passing reference, it stated that the trademark of the petitioner herein is a well known mark and it is not the determination of the 2nd respondent-IPAB and it is only the submission of the learned counsel. For better appreciation, it would be appropriate to extract the relevant portion in the order of the 2nd respondent-IPAB at para 9 as hereunder “9.The Counsel for the respondent on the other hand argued that the appellant have deliberately copied their mark with minor cosmetic changes. The respondent trade mark is a well known mark. They have been using CYCLE BRAND since 1954. ……” No doubt, in the conclusion portion, at para 11, the 2nd respondent-IPAB has stated that there is no disputing that CYCLE BRAND for agarbathis (incense stick) is an established brand over many decades. But, it is not an invented or unique device. Again, only as a passing reference, the 2nd respondent-IPAB has stated that the mark of the petitioner is an established brand, but no determination was made to arrive at such a conclusion by the 2nd respondent. Therefore, the submission made by the learned counsel for the petitioner that the 2nd respondent-Board has rendered a finding that it is a well-known mark, cannot be accepted. The 2nd respondent has not given any finding based on document or evidence that the petitioner’s mark is a well-known mark. There is a mere passing reference in the order of the 2nd respondent-IPAB. It is not the same as a ‘well known mark’ defined in Section 2(1)(zg) and there is no determination of the mark as being well known, following the parameters laid down in Section 11(6) to (9) of the Trade Marks Act.”

As per Livemint, the Bombay high court restrained UP-based Unani medicine company Jamia Remedies from manufacturing and selling its mouth dusting powder under the ‘Ora-B’ brand. P&G had earlier approached the Bombay high court against Unani medicine company, Jamia Remedies, alleging infringement of their trademark ‘Oral-B’. [Please note that I am yet to go through the Order. I am relying on news reports.]

Procter & Gamble (P&G) had  also successfully sought the court’s intervention so as to permanently stop Jamia from using or registering ‘Ora-B’ or any other similar brand in any manner. The court further said that the defendants should withdraw any trademark application for the mark ‘ORA-B’ and undertake that they shall not make any application for any trademark or copyright registration for any other mark, which is deceptively similar to the plaintiffs’ well-known mark ‘Oral-B’.

Nativa was granted Russia’s First Compulsory License

In moves that should have significant global impact on public health, an Arbitration Court in Moscow, Russia, granted Russia’s first Compulsory License for Lenalidomide (trade name Revlemid). In a similar development this month, the German Federal Supreme Court upheld a preliminary Compulsory License granted by a lower court for the HIV drug Isentress.

The Russian License

Unlike in India, the Russian judiciary has the exclusive authority to issue compulsory licenses. The CL is an outcome of the suit filed in 2017 by Celgene against Russian pharma manufacturer Nativa, which was producing generic version of the anti-cancer drug Revlemid. The court instead allowed Nativa’s counterclaim for the issue of a compulsory license. The patent on Revlemid, held by US pharmaceutical company Celgene, will now be produced by Russian Manufacturer Nativa under the terms of the license granted by the Court.

Nativa had asked for the CL because it produced a dependent patent, i.e. a patent which could not be worked without the use of a prior patent. As per Russian law, a compulsory licence could be granted, where it is proven that the dependent invention is an important technical achievement and has significant economic advantages over the invention of the first patent. The court accepted both these points, and found that there was significant public interest in the grant of the CL, and consequently admitted the application for compulsory licensing. Interestingly, the terms of the license require Nativa to pay a whopping 30% of the revenue as royalty to the patent holder. In comparison, the compulsory license granted in India for Nexavar, required Natco to pay 6% in royalty.

The German License

In 2017, a Federal Patent Court heard a challenge against Merck by Japanese pharmaceutical Shinogi, against Merck’s manufacture of its HIV drug, Raltegravir (trade name Isentress). According to the press release by the German Supreme Court, the CL was upheld on grounds of public interest and the threat to public health posed by an injunction. The press release reads:

“The Federal Court also shares the assessment of the Federal Patent Court that a public interest in the granting of a compulsory license is credible. It is true that not every HIV or AIDS patient is required to be treated with raltegravir at any time. There are, however, patient groups that needed raltegravir to maintain the safety and quality of treatment. These include, in particular, infants, children under 12, pregnant women, people who need prophylactic treatment because of the risk of infection, and patients who are already treated with Isentress and who are threatened with significant side effects and interactions when switching to another drug.”

The lower court decision of the German Federal Court was well covered in a guest post on this blog here.

The global use of compulsory licensing is encouraging particularly for developing countries which regularly face public health crises due to unavailability of medicines, in which patent rights have a large role to play. Even as the developed world, particularly the USA, pressurises developing countries like India against utilizing legitimate TRIPS flexibilities like compulsory licensing, the use of such provisions by other developed nations like Russia and Germany should lend greater credence to the legitimacy of its use and hopefully incentivise more nations to utilise such flexibilities in favour of public health.

We are pleased to inform you that IIPRD along with Khurana & Khurana, Advocates and IP Attorneys (K&K) is offering a crash course for preparation for the Patent Agent Examination (PAE) 2018, which is tentatively scheduled to be held on 28th October, 2018. For further details of the course, please read the post below.

Crash Course For Cracking Patent Agent Examination (PAE) 2018: By Senior Practicing Professionals Of IIPRD, And Khurana & Khurana, Advocates And IP Attorneys (K&K)

IIPRD along with Khurana & Khurana, Advocates and IP Attorneys (K&K) is conducting a professional training programme in Patent Law Practices and Procedures for candidates appearing for the Patent Agent Examination (PAE) 2018 that is planned to be conducted by the Ministry of Commerce and Industry (Govt. of India) through Patent Offices in October 2018, for obtaining the necessary qualification to practice as a Patent Agent under the Patent Acts and Rules 1970.

On demand of practitioners and stakeholders in the Indian IP Industry, IIPRD and Khurana & Khurana are delighted to announce an impactful and practical case studies based crash course for cracking the Patent Agent Examination 2018.

Key Highlights of the Course

• The proposed PAE crash course is a 2 months programme (September-October 2018), with face to face physical classes being held on each Saturday from 10 AM – 12 PM. The sessions would be taken by thorough and practicing professionals of K&K who have, on an average, over 12 years of relevant experience in Patent Prosecution and Litigation.

• The course would be held physically and simultaneously across 5 Offices of IIPRD/Khurana & Khurana (or other venues as mentioned below), specifically in Delhi, Bangalore, Hyderabad, Pune, and Mumbai.

• Each session of the course (coverage of which is given below) would be video-recorded and in case a participant is not able to attend a particular class, the recorded video can be shared through a secured account created for the participant and accessible only to the participant. Each video session is and would remain the Copyright of IIPRD and hence would not be open for any kind of distribution or use other than the mentioned purpose.

• The fee for the complete PAE crash course is INR 15000 + GST per participant, payable latest by 30th August 2018. Fees for the course can be paid through bank transfer or through a cheque/DD that can be issued in favor of IIPRD.

• IIPRD and K&K are also happy to offer scholarship to a few students based on an online examination that would be held on 1’st August 2018, wherein the complete fees for the course shall be waived off for the selected students. Anyone can apply for the scholarship through the scholarship link given below by giving their respective details, and would be contacted on 20th of July 2018 to confirm their participation for the above-mentioned examination through email, which email would also give complete instructions on how the examination would be conducted. The examination would basically involve 2 sections, one for checking technical skills/competence of the participating professionals, and the other one for evaluating their written English skills, based on which final results would be announced on 10th August 2018. Any candidate who does not qualify for the scholarship can of course apply for the course as a general participant/candidate by payment of the course fee.

Session-Wise Breakup of the Course

01 September 2018: Section 1 – Section 21 of the Indian Patent Act, 1970 (and corresponding Rules and Forms) with specific focus on Definitions, Criteria of Patentability, Non Patentable Subject Matters, Types of Applications, and Powers of Controllers.

08 September 2018: Section 25 – Section 66 of the Indian Patent Act, 1970 with specific focus on the Oppositions, Anticipation, Provisions of Secrecy, Revocations, Patent of Addition, and Restoration of Patents.

15 September 2018: Section 67 – Section 115 of the Indian Patent Act, 1970 with specific focus on Patent Assignments, Compulsory Licensing, Power of Central Government, and Infringement Proceedings

22 September 2018: Section 116 – Section 162 of the Indian Patent Act, 1970 with specific focus on Convention/PCT Applications, Functions of Appellate Board and other Provisions. Amendment Rules 2016 with emphasis on important revisions to examination and Hearing procedures; provisions for start-ups and fees.

29 September 2018: Comprehensive Claims and Specifications Drafting training with emphasis on identification of inventive concept from the disclosure and drafting of claims. Common mistakes to be avoided during drafting. Do’s and don’ts for drafting different parts of the specification viz. title, abstract, examples, etc. with applicable rules.

06 October 2018: Hands-on exercises for Claims and Specifications Drafting with emphasis on standard practices for drafting patent applications pertaining to engineering domain and life sciences domain. Specific tips in view of common objections raised in FER (approach of Indian patent office towards the patent application drafting practices). Amendment of Application and Specifications. Drafting of Patents of Addition and Divisional Application.

13 October 2018: Training by practicing Attorneys and Agents: Important case laws and implication thereof on interpretation of various Sections of the Patents Act, 1970. Advising clients with respect to patenting of inventions of different domains, implications of assignment and various types of licensing, infringement related issues, filing of patent application in India and PCT with detailed procedures and many other aspects with dedicated Q&A session.

14 October 2018: Mock Exam 1

20 October 2018: Mock Exam 2

27 October 2018: Tips for Viva and General Discussion

Venues

New Delhi K-16, Jangpura Extension

Mumbai FA27, Lake City Center, Kapurbavdi Circle, Thane (W)

Pune Office No. 203 + 204, 2nd Floor, Citymall, University Road, Ganesh Khind, Shivaji Nagar

Bangalore Brigade Reap, Brigade Gateway Campus, 26/1, Dr. Rajkumar Road, Malleswaram – Rajajinagar

Hyderabad Regus Business Centre, Krishe Sapphire, Level 7, South Wing, Hitech City Main Road, Madhapur

* Venues are subject to change

Course Fee

INR 15,000 + 18% GST

Registration

For registration, please click here or visit the IIPRD website.

Contact Information

Bhumika
(M): +91 8920269831
(T): (120) 4296878, 4909201, 4516201
Email: bhumika@khuranaandkhurana.com, course@iiprd.com

We have had another eventful week at the blog.

Thematic Highlight

Our thematic highlight for this week came from a guest post by Dr Balakrishna Pisupati, who wrote on the strict interpretation of the Biological Diversity Act 2002 and associated rules, which has resulted in a number of people falling foul of the legislation’s penal provisions. Dr Pisupati highlighted the dissonance in the provisions on access to genetic resources and benefit sharing which have been interpreted by the Indian Govt. to restrict the use of biological resources rather than facilitate it. Dr Pisupati also discussed the overly broad meaning given to ‘commercialisation’, which results in activities such as manufacturing grocery items require permission of the Govt.

Topical Highlight

Rahul blogged about a recent Delhi High Court judgment was this week’s topical highlight. The case concerned a passing off claim against Apple for using the phrase ‘Split View’ to describe a particular software. While the court rightly found in favour of the respondent, Rahul highlights the court’s statement positing that the usage of the trademark by Apple could only increase the goodwill in the plaintiff’s brand is deeply problematic, since it would allow giants such as Apple a free pass to knock-off trademarks of any company that is relatively small.

Other Posts

Next, Mathews wrote on a recent decision of the Madras High Court on trademark registration and well-known marks. In this judgment, the court refused to recognise the defensive registration of CYCLE BRAND as it did not contain any invented words. The court also cited a lack of evidence while refusing to accord the ‘well-known trademark’ tag in this case. Mathews notes that the court’s stance indicates zero tolerance towards squatters and a deference for evidence.

Mathews also broke P&G’s recent win in a trademark case against Jamia Remedies in the Bombay High Court. The mark, ‘Oral-B’ was held to have been infringed by the usage of the mark ‘Ora-B’ due to deceptive similarity.

Finally, Divij blogged about the grant of Russia’s first compulsory license by an Arbitration Court in Moscow. The compulsory license was granted to Nativa for the production of a generic version of Revlemid, an anti-cancer drug after the Russian court found that the dependent invention of Nativa is an important technical achievement and has significant economic advantages over the invention of the first patent.

SpicyIP Events

Pankhuri informed us of the second edition of the Sports Law & Policy Symposium, to be held at the India International Centre, New Delhi between August 17-18, 2018. Apart from sports law issues, some of the issues which will be discussed in the Symposium include refreshing sports broadcasting regulation in India and whether celebrities should be held liable for the products they endorse, amongst others.

Pankhuri also brought to our notice a crash course for the Patent Agent Examination 2018 being offered by IIPRD and Khurana & Khurana. The course will last for a duration of 2 months between September-October 2018 and will be held physically in Delhi, Bangalore, Hyderabad, Pune and Mumbai. Registration charges include a fee of INR 15,000.

Other Developments

Indian

Judgements

Tata Sia Airlines Limited v. Vistara International Private Limited and Another – Delhi High Court [July 18, 2018]

The Court granted an ex-parte decree of permanent injunction restraining the Defendant from using the Plaintiff’s mark “VISTARA”, with respect to travel and ticketing services, on the ground that the Plaintiff was the registered proprietor of the mark and the Defendant may be confused to be an affiliate of the Plaintiff due to their identical trade names. Furthermore, the Court permitted the Plaintiff to seek a transfer of the Defendant’s domain names and cancellation or modification of its corporate name due using the mark “VISTARA”.

Sh. Sanjay Kumar Gupta & Anr. v. Sony Pictures Networks India Private Limited & Others – Delhi District Court [July 13, 2018]

The dispute concerned the alleged infringement of the Plaintiff’s copyright in the concept of home viewers’ participation through their phones in a quiz competition being simultaneously played by a contestant, by the Defendant in their television show through the “JIO KBC Play Along” format. The Court noted that the engagement of audience at their homes has been a recurring phenomenon across various television shows and therefore, certain similarities in relation to the concept are bound to occur. However, it was further opined that the Defendant’s concept with respect to the selection of the home audience, progression of the game, rewards system and the prize money was substantially different from that of the Plaintiff. The issue of alleged breach of confidence was also found against the Plaintiff, and in view of these two issues, the Court dismissed the suit.

Jasper Motors Private Limited and Another v. The Proprietor, Basantee Battery Operated Rickshaw and Others – Calcutta High Court [July 18, 2018]

The Court recalled the interim injunction order passed by it in relation to the Plaintiff’s patent on application by the Defendant. In arriving at this conclusion, the Court stated that the Plaintiff’s patent was merely a duplication of the known devices to create a Fuel Cell system and did not result in improvement or advancement of the existing knowledge on the subject, besides the fact that the patent had not been in use by the Plaintiff. However, the Court did not conclusively rule on the issue of the validity of the patent.

Sun Pharmaceuticals Industries Limited v. Naveen Kumar Jindal & Anr. – Delhi High Court [July 13, 2018]

The dispute concerned Defendant’s use of various trademarks like “VOLFITZ”, “ANTOSID” and “LULYF” in committing alleged infringement and passing off of the Plaintiff’s corresponding trademarks of “VOLINI”, “PANTOCID” and “LULIFIN”. The Defendant agreed not to use such deceptively similar marks and to also withdraw or amend the pending trademark applications for the impugned marks. The suit was decreed in favour of the Plaintiff and 50% of the Court fees were refunded to them.

News

Copyright circus: The curious case of the state acquisition of a poet’s works

AR Rahman, Ilayaraaja Join Indian Performing Rights Society

As Chandamama firm goes bust, rare copies, key patents lie locked up in Mumbai building

BSE building at Dalal Street gets a trademark

OnePlus likely to rebrand its Dash Charge as Warp Charge

Plea against GI tag for Rajkot Patola rejected

Bio-piracy initiative by India

International

English Court extends Premier League’s live blocking order

Kenyan Court settles the row over collection of music royalties

Music Theatre International Files Copyright Action Against Northern Virginia Community Theatre Theaterpalooza

Sri Lankan medicines to be protected under international intellectual property system

BNP allegedly using ‘Prothom Bangladesh’ without permission

In an earlier post, I argued that an Indian supreme court decision may have unwittingly unleashed a Chinese blockbuster. As promised, here is a bit more on this stupendous Supreme court (SC) ruling that effectively denied Novartis a patent over its blockbuster anticancer drug, Glivec. And raised the bar for pharma patents in the bargain!

For those interested, here are some excerpts from a recently published piece of mine in the Oxford University Commonwealth Law Journal (OUCLJ) capturing the core of this decision and situating it within the larger theme of India acquiring more patent proficiency over the years. Paradoxically enough, at the time of deciding the Novartis case, the Supreme Court lacked patent proficiency. However, I argue that this deficit may have actually helped it question well entrenched patent dogma. And infuse some common sensical wisdom into an otherwise isolated and esoteric legal regime. In particular, the court applies general legal concepts (such as evidentiary principles) and catches Novartis on the wrong foot (having it hoist on its own petard, so to speak). The take home lesson for me at least: always important to have some “generalists” too in the patent firmament. Else we risk the tyranny of specialists: those that know more and more about less and less! Or as the talented Taleb is wont to say: “The problem with experts is that they do not know what they do not know”.

In any case, with the advent of Artificial Intelligence (AI) and all, specialists may soon get replaced by machines. But a generalist who is able to cross pollinate and create (through hunches etc) may be more difficult for a machine to replicate, no matter how “artificially” intelligent it is.

Anyway, here are some short extracts from the piece. Situating the Supreme Court decision within the larger history of Indian patent law and the making of section 3(d), reflecting on what transpired in court and the various pros and cons of the ultimate decision. Come to think of it, the making of a law (or decision) is always so much more interesting than the final product itself!

The full text of the piece is here (available only to paid subscribers). A freely downloadable draft version is available on SSRN.

Excerpts as below. Grateful for feedback (caustic comments also welcome, but in somewhat civil language please).

Courts’ Take on Section 3(d): Therapeutic Efficacy?

Novartis claimed that the active ingredient in Glivec was more effective than the imatinib free base, since it displayed better properties, such as solubility and bioavailability (the potential of a substance to be absorbed into the bloodstream). To this effect, Novartis submitted evidence demonstrating an increase in bioavailability of up to 30%.

The Supreme Court, however, was not impressed. First, it held that Novartis had used the wrong comparators: given that imatinib mesylate (in amorphous form) was the closest known prior art, the comparison ought to have been between this ‘known’ substance and the beta-crystalline form, not between imatinib (free base) and the beta-crystalline form. The court noted that Novartis itself had admitted that the claimed invention was ‘two stages removed from imatinib in free base’ and that ‘the substance immediately preceding the subject product is imatinib mesylate (non-crystalline)’. Second, the court held that the claimed advantages for the beta-crystalline version did not constitute a significant enhancement in efficacy.

 In order to arrive at this conclusion, the court had to interpret section 3(d) and distil the meaning of the term ‘efficacy’. The court appears to have drawn from my submissions (as intervenor cum amicus) in this regard, where I had argued:

“The structure of section 3(d) as also its legislative history supports a narrow reading of the term ‘efficacy’. Illustratively, the Explanation to section 3(d) clearly states that all pharmaceutical derivatives would be considered the same ‘substance’, unless ‘they differ significantly in properties with regard to efficacy.’ The above clause refers to only those ‘properties’ that have some bearing on ‘efficacy’ and not all properties. If ‘all properties’ were to qualify, it would effectively render the term ‘efficacy’ redundant.”

On this strict construction of the term ‘efficacy’, the Supreme Court held that Novartis’ alleged invention failed to qualify, since it merely enhanced physical properties such as bioavailability and solubility. The court, however, qualified this by suggesting that bioavailability could in certain cases amount to enhanced therapeutic efficacy, provided the patent applicant empirically demonstrated the causal link between the two. While the court interpreted ‘efficacy’ to mean ‘therapeutic efficacy’, it refused to define the contours of this term. This failure to provide definitional guidance will necessarily mean that future cases on this count will find their way back to the apex court.

Patent Pitfalls:

Apart from the above, the court’s decision and decision-making process would appear to suffer a few other infirmities. Firstly, the court spent a significant amount of time (more than 100 hours at least) and heard each counsel (over 10 of them representing various parties to the litigation) patiently. Given the court’s overburdened docket, this would, at first glance, appear to be a greatly disproportionate amount of time spent on a patent case. However, given that this was the first pharmaceutical patent case to be decided by the Supreme Court in the post-TRIPS era, involving a provision that had no precise parallel anywhere in the world, it was to be expected that the court would take a longer period of time to adjudicate this than a regular dispute in one of the more traditional legal disciplines such as contract or property law.

In particular, a significant portion of the court’s time was spent in making technical or factual assessments (eg the nature of the ‘known substance’ for the purpose of section 3(d)), despite the fact that the apex court is meant to focus on the law more than facts. This extensive fact-finding mission by the court may well have detracted from its ability to offer more interpretative clarity around legal concepts, beyond the confines of the narrow set of facts before it.

The apex court refused to lend any deference to findings by the lower fora, namely the patent office and the IPAB. Rather, it went on to reassess the facts and other technical findings afresh. This might have stemmed from the fact that the lower fora had not adequately reasoned out their decisions. In particular, the patent office decision was very sketchy and failed even to mention what it considered to be the ‘known’ substance against which the efficacy comparison for Novartis’ claimed pharmaceutical substance was made. Given the shoddiness of the decisions below, the court may have thought it better to make this assessment itself, without necessarily remanding it back to the lower fora.

What was surprising, however, was the Supreme Court’s failure to utilise a statutory provision that might have aided it in its factual assessment of the various technical issues before it. Section 115 of the Act provides:

“In any suit for infringement or in any proceeding before a court under this Act, the court may at any time … appoint an independent scientific adviser, to assist the court or to inquire and report upon any such question of fact or of opinion (not involving a question of interpretation of law) as it may formulate for the purpose.”

During the course of the proceedings, the court posed a technical question to me in my capacity as intervenor cum amicus. The court wanted to know if a skilled person in the art could have arrived at Novartis’ claimed invention (the beta-crystalline version of imatinib mesylate) without undue experimentation from the teachings of the earlier patent specification filed by Novartis over the imatinib free base (and the common general knowledge up to 1997, which is the priority date for Novartis’ secondary patent application covering the beta-crystalline form).  I pleaded my incompetence in addressing this issue, as I was not a chemistry expert and suggested that the court invoke section 115 and appoint an independent expert to help determine this. Thereupon, the court requested all those present in court to suggest the names of competent independent experts, who could be approached. Unfortunately, one of the counsels objected, stating that most academic experts in India were compromised and could not be relied upon. Without bothering to interrogate this assumption, the court immediately dropped the promise of this prospect, and went on to make a factual finding, relying largely on party submissions and without the benefit of independent technical expertise.

Patent Proficiency?

Notwithstanding the above infirmities, the court needs to be appreciated for demonstrating a far higher degree of adjudicatory competence than one might have come to expect from a country whose judiciary had seen very few patent disputes.

In fact, neither of the judges deciding the dispute had any significant prior patent experience. The court also deserves praise for refusing to wed itself to a Western patent construct that entails clever claim drafting and the propensity to claim more than what was disclosed. Rejecting this well-entrenched norm, the court held that patent coverage had to be commensurate with disclosure and that any claim that did not find adequate disclosure in the patent specification would be axed. In a sardonic statement, the court held:

“We certainly do not wish the law of patent in this country to develop on lines where there may be a vast gap between the coverage and the disclosure under the patent; where the scope of the patent is determined not on the intrinsic worth of the invention but by the artful drafting of its claims by skilful lawyers, and where patents are traded as a commodity not for production and marketing of the patented products but to search for someone who may be sued for infringement of the patent.”

A specialised court firmly entrenched in the global narrative around patents might not have reacted this sharply to a practice that is at odds with the primary purpose of the patent system: to reward inventors for that which they specifically disclose to the public, enabling interested competent members to work out the invention on their own and study from it.

Similarly, the benefits of having a generalist Supreme Court bench (with no prior entrenchment in the practice of patents) might have helped the court draw on common legal precepts to hold against Novartis. Illustratively, the court’s determination that imatinib mesylate’s non-crystal form was the ‘known substance’ for the purpose of a section 3(d) analysis was based inter alia on the finding that Novartis’ earlier patent (referred to as the ‘Zimmermann’ patent) covering the imatinib free base referred to this potential salt form, stating that it could be prepared using ‘known’ processes. The court went on to note:

“That imatinib mesylate is fully part of the Zimmermann patent is also borne out from another circumstance. It may be noted that after the Zimmermann patent, the appellant applied for, and in several cases obtained, patent[s] in the US not only for the beta and alpha crystalline forms of imatinib mesylate, but also for Imatinib in a number of different forms. The appellant, however, never asked for any patent for imatinib mesylate in non-crystalline form, for the simple reason that it had always maintained that imatinib mesylate is fully a part of the Zimmermann patent and does not call for any separate patent.”

The court relied on this conduct to ultimately hold that it would be incongruous for Novartis to now claim that its earlier patent did not anticipate imatinib mesylate. The court was careful to note, though, that it was only ruling on the limited set of facts before it. It cautioned that its decision should not be taken as sounding the death knell of all secondary pharmaceutical patents:

“We have held that the subject product, the beta crystalline form of imatinib mesylate, does not qualify the test of Section 3(d) of the Act but that is not to say that Section 3(d) bars patent protection for all incremental inventions of chemical and pharmaceutical substances.”

Conclusion:

The 2005 amendments marked a watershed in Indian IP history. Not only were they informed by a level of public debate and political contestation never witnessed before in the annals of Indian IP history, it heralded India as a pioneer in the patent doctrine space. The lack of drafting finesse notwithstanding, section 3(d) played a critical role in this new transformative phase. Unlike the mid-1990s, when India’s disdain for what it thought to be an inequitable treaty led to rash non-compliance, the year 2005 marked an innovative phase, with India creatively leveraging TRIPS’s flexibilities to further its own national interest.

Section 3(d) faced its toughest litmus test in the aftermath of Novartis’ patent challenge. Not only did the Indian judiciary endorse the legality of section 3(d), it insisted on a rigorous ‘therapeutic efficacy’ threshold. In doing so, it complemented the efforts of the Indian legislature in refusing to co-opt itself into a cosy patent construct engineered by the allegedly more sophisticated patent regimes of developed countries. Notwithstanding some of the infirmities in the decision, the court still demonstrated a fair degree of patent proficiency, given that neither of its judges came with any prior patent adjudicatory expertise.

The innovative advantage of section 3(d) lies in its potential to serve as a more definite rule, legal heuristic, or shortcut to the obviousness enquiry, by examining the merit of a pharmaceutical invention from the perspective of its ex post utility or impact—as opposed to an extensive ex ante analysis of how the invention was conceived in the first place, which is often what the standard convention inventive step enquiry entails. As such, section 3(d) makes for a speedier and less resource-intensive decision-making process for developing country institutions (such as the Indian patent office) which face severe resource constraints.

In the overall analysis, the Indian example is a striking one for the IP and development debates, where a developing country with allegedly less patent expertise than its developed counterparts pioneered patent norms to suit its own national interest, and did it with a fair degree of proficiency.

ps: Image from here.

In Gillette Company LLC vs. Tigaksha Metallics Private Ltd, the Delhi High Court recently passed an order deciding to extend an ex-parte injunction restraining the defendant from infringing the plaintiff’s mark. Interestingly, the decision in favour of the plaintiff hinged a lot on psychological theories, about associative thinking and memory retrieval, read and endorsed by the judge.

Background

The plaintiff, Gillette, instituted a suit against two defendants, Tigaksha Metallics Private Limited and Supermax Personal Care Private Limited, seeking a permanent injunction restraining them from infringing the trademarks by adopting the mark ZORRIK TALVAR and similarly deceptive variations of the plaintiff’s mark, WILKINSON SWORD.

Plaintiff’s Mark

Defendant’s Mark

Arguments and Judgment

The plaintiffs argued that:

1. the usage of TALVAR was infringing because it is a literal translation of the word SWORD, and was being used in a conceptually similar manner.
2. both marks had similar images of double-edged swords and were written in the italics font. These similarities, they argued, are accentuated since these marks represent the same product (safety razor blades).

On the other hand, the defendants argued that their product was being sold under the mark of ZORRIK for more than 50 years. The association of the sword-image and TALVAR with the mark ZORRIK was likely to negate any impression of similarity or confusion between the marks. The respondents also claimed to have spent over INR 2 crores on advertising their brand and argued that barbers (the primary consumers) would recognise the difference between the two brands.

Rejecting the notion that the consumer was to be considered as a barber, the court noted that the determination of similarity depends on whether a consumer with ordinary intellect would be able to distinguish the goods on the basis of the marks.

And now the interesting part! Justice Endlaw began by stating that it was high time that courts refined their similarity analysis by taking advantage of “sweeping scientific advances in the study of the human mind”.

Embarking on this journey, Justice Endlaw relied on large parts of a judgment he had written in 2014 in Allied Blenders & Distillers Pvt Ltd v Shree Nath Heritage Liquor Pvt Ltd (which has been covered on the blog here and here). As in the present case, the court had relied on studies of consumer psychology, associative thinking and memory to make a determination on whether the idea conveyed by the mark is similar, and therefore likely to cause confusion. In Allied Blenders, the court had found that OFFICER’S CHOICE and COLLECTOR’S CHOICE were similar since the words ‘officer’ and ‘collector’ both represented ranks with authority and would, therefore, be likely to cause an associative link in the mind of ordinary consumers. That is, ‘officer’ and ‘collector’ are hyponyms of ‘ranks with authority’, and therefore, likely to be associated with each other.

To further emphasise this point, Justice Endlaw cites a survey conducted in which –

“The study revealed that, when five brands of the same type of product: ‘Orange Juice’, were named on the basis of a shared conceptual background (all five being named after different islands in the Caribbean: ‘Bahamas’, ‘Bermuda’, ‘Aruba’, ‘Dominica’ and ‘Barbuda’), the consumers’ ability to distinguish the various brand names was found to be poorer due to this shared conceptual background.”

Similarly, the court noted that synonyms would have a similar effect on infringement analysis, with marks such as AQUA-CARE and WATER-CARE being already found as similar.

In the present case, it was found that the use of TALVAR results in an association with SWORD in the minds of the consumer. Additionally, Justice Endlaw opined that the presence of ZORRIK, which is phonetically and visually distinct from WILKINSON, does not save the respondents because it is not perceived to affect the association of SWORD and TALVAR. Further, the court also relied on the wording of Section 2(1)(zb)(ii) of the Trade Marks Act, 1999, which defines a trademark to include marks “…whether with or without any indication of the identity of that person…”. In the paradigm of similarity, the court extended this provision to render irrelevant the existence of a phonetic difference between ZORRIK and WILKINSON.

In order to buttress this line of thinking the judge cites extensively from the literature on the human brain and cognition. For instance, he notes –

“ […] but having recently read the book “Thinking, Fast and Slow” by Daniel Kahneman, a Professor of Psychology and a Nobel Laureate, on the subject of how the human mind thinks and how we make choices, and in Chapter-4 titled “The Associative Machine” of which the learned author had dealt with “the association of idea” and on the basis of research conducted found that most of the work of associative thinking is silent, hidden from any conscious selves […]”

The court also relies heavily on McCarthy on Trademarks and Unfair Competition heavily and in particular this excerpt:

“[The] mental impact of similarity in meaning maybe so pervasive so as to outweigh any visual or phonetic differences that is the psychological imagery evoked by the respective marks may overpower the respective similarities or differences in appearance and sound.”

Comments

This judgment is pioneering in its attempt to infuse some inter-disciplinary learning from studies of the human brain and how we think and retrieve memories. However, there is cause for concern.

For one, if associative thinking is the benchmark for trademark infringement, it will end up cordoning off entire spectra of words and concepts into the monopoly kitty of the trademark proprietor. Denying to competitors and the public the ability to freely use words and concepts.

Secondly, given that judges are generally not trained in the social sciences, and social sciences are generally an inaccurate science, it would be wise to use it only in cases where it is absolutely necessary, following a doctrine of ‘social sciences avoidance’. This doctrine recognises that in certain cases using social science is inevitable, but posits that in all other cases that judges should refrain from using it. In the present case, one expected that there would be a stronger reliance on the more traditionally accepted factors for TM infringement analysis, such as phonetic and visual similarity. Rather the decision hinges heavily on theoretical psychological assertions, citing even the works of the controversial Sigmund Freud!

Using psychology to determine similarity will also lead to real-world complications. The subjective nature of the inter-disciplinary analysis will result in an uncertainty in the breadth of protection accorded to marks. Trademark Officers and judges alike will require extensive training in psychology as well!

Indeed, on the aspect of uncertainty and a slippery slope of overbroad protection, Justice Endlaw himself notes –

“ […] it is important to create a parameter within which marks conveying similar ideas should be accorded protection under trademark law. This is because if protection is accorded to the sense relation of a word, it raises a slippery slope as to what extent such monopoly over the sense relations be extended under trademark law. For example, in contrast with five brands of Orange juice named after islands of the Caribbean would naming a brand of orange juice after any other island X (which is not in the Caribbean) would also be prohibited in stating that island X is a hyponym of the broader hypernym ‘Island’?”

As a solution to this, however, the judge simply prescribes a healthy dose of self-restraint on the part of judges. Even if judges did attempt to exercise restraint, there are little objective criteria on the basis of which they may do so. Using a particular study is an inherently subjective decision, given the nature of social sciences.

To conclude, while it is certain that the inclusion of psychological studies and Sigmund Freud does make for a better read of the judgment, one must remain sceptical of its usage in judicial decision-making, particularly when it is used to subvert older and more traditionally accepted tests of visual and phonetic similarity.

We are pleased to bring to you the third post in an ongoing series of perceptive posts by Prof. (Dr.) N.S. Gopalakrishnan on India’s problematic plant varieties’ regime. The first and second post in the series can be viewed here and here.

Problems with the Indian Plant Varieties Regime (III):

Setting Arbitrary DUS Standards For Extant Varieties?

Prof. (Dr.) N.S. Gopalakrishnan

A new plant variety is registered under the Protection of Plant Varieties and Farmers’ Rights Act only if it satisfies the criteria of novelty, distinctiveness, uniformity and stability (NDUS). According to Section 15(3), the new variety is deemed to be “novel” if at the date of filing of the application for registration it has not: (i) been sold or otherwise disposed of in India, earlier than one year; or (ii) been sold or otherwise disposed of outside India, earlier than six years (in the case of trees or vines) or four years (in all other cases).

The variety shall be treated as “distinct”, if it is clearly distinguishable by at least one essential characteristic from any other variety whose existence is a matter of common knowledge in any country at the time of filing of the application. Similarly it shall be treated as “uniform” if subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its essential characteristics and “stable” if its essential characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle. Thus the Parliament is clear as to the criteria of NDUS to be applied for registering a new variety under the law.

In addition to the above, section 19(1) of the Act also envisages the conduct of field tests to determine whether the variety along with parental material confirm to the standards specified by the regulations. Section 19(3) makes it clear that such test shall be conducted in such manner by such method as may be prescribed. Thus it is obvious that Rules and Regulations are necessary to ascertain the DUS of the variety, before it is registered under the Act. Rule 29 dealing with the manner of testing DUS makes it obligatory that the field test must be at multi-locations and at least in two similar crop seasons and special test if required in the laboratory. The Authority has been developing separate guidelines for conducting field tests for each notified crop to determine DUS as defined by the law.

Regarding the conditions for registration of extant variety, section 15(2) excludes the requirement of novelty and mandates that it “conforms to such criteria of distinctiveness, uniformity and stability as shall be specified under the regulations”. The use of the words “notwithstanding anything contained in subsection (1)” in section 15(2) make it abundantly clear that the criteria of DUS as laid down in section 15(3) for registration of new variety is not to be applied for registration of extant variety. Rule 24 dealing with registration of extant variety also clarifies that it shall confirm to the criteria of DUS as laid down under the regulations.

An examination of the Regulations, Guidelines and other notifications by the Authority, it is amazing to note that the Authority has not developed any separate criteria for DUS to register “extant” varieties, even though subheading and the title of the Regulations in 2006 and 2009 respectively give an impression that the Authority has laid down separate criteria for DUS. Instead what the Authority attempted in practice was to follow the same criteria of DUS stipulated in section 15(3) for the new variety along with the Guidelines developed for testing DUS for each crop variety to determine the DUS of extant variety. What is astonishing is that the Authority had, from the very beginning,  completely dispensed with the DUS testing for “extent” varieties which were “notified” varieties (under the Seeds Act, as per section 2(j)(i)). In addition to this, with the help of the 2009 Regulations and notice, the Authority defined a “variety about which there is common knowledge” (VCK), laid down different testing methods for it and conveniently excluded the other two categories – farmers’ variety and any other varieties which is in public domain – from registration under extant variety. It is fascinating to track how this illegal activity is systematically achieved by the Authority to protect the interests of modern breeders and the seed industries at the cost of the farmers. It is to be clarified here that farmers’ variety has been registered under section 14(c) as an independent category since 2009 by following different testing methods, as detailed in a forthcoming blog post.

DUS for Extant Notified Variety (ENV)

In 2006, the first Regulation was made under the Act to implement various provisions and one among them was the criteria of DUS for registration of extant variety. Regulation 6 deals with criteria for registration of extant varieties. Instead of laying down criteria for DUS for all four categories of extant variety as mandated by section 15(2) of the Act, it singled out varieties notified under section 5 of the Seeds Act, 1966 (ENV) and an “Extant Variety Recommendation Committee” (EVRC) consisting of seven members including one from farmers’ representative, one from seed industry representative and subject experts nominated by the Authority was envisaged for recommending the suitability of the registration of ENV. Regulation 6 clarified that on the recommendation of EVRC, notified varieties shall be registered. It also stipulated that criteria for DUS for registration of extant variety differ from species to species and they shall be notified by the Authority in the Gazette of India. The wording “criteria for DUS for registration of the extant variety” gives an impression that this is applicable to all the four categories included in the definition of extant variety. It is extremely difficult to appreciate how the Authority could frame such regulations which go against the mandate of the Parliament.

Regulation 11 of 2006 also deals with the standards of seeds or varieties during tests stipulated in section 19(1) of the Act. It states that the test to be conducted for evaluation of a variety to be referred under the Act shall conform to the criteria of DUS test Guidelines published by the Authority and shall be revised and updated from time to time with the prior information to the Central Government. Thus it is apparent that there will be only one set of test Guideline to evaluate the DUS for all varieties to be registered under the Act and which will keep on changing.

If Annual Reports of the Authority are any guidance to trace how DUS is implemented, a reading of the relevant portions in the Annual Reports from 2008 to 2017 dealing with extant varieties indicates that it hardly mentioned about any separate criteria of DUS for registration of extant variety. All the Reports extensively talked about the Guidelines developed for testing DUS for specific crops every year. The Reports from 2010-11 onwards repeatedly stated that “the plant variety protection as enshrined in the Act, follows a broad principle of internationally recognized system of DUS and novelty for a new variety” and tested for all varieties to be registered under the Act. If one examines the Guidelines for testing DUS, it deals with seed material required, conduct of test, method of observation, grouping of varieties, characteristic and symbols, characteristic table etc. Till date, no separate test Guidelines have been developed for extant varieties and it is the same Guidelines used for testing all the varieties registered under the Act. The Annual Reports categorically stated that ENV were registered based on the recommendation of the EVRC and no DUS testing was conducted. One of the justifications for dispensing with the DUS testing as stated in the Annual Report of 2010-11 and repeated in subsequent Reports reads: “The registration of extant varieties notified under the Seeds Act, 1966, is a potent provision for protecting domestic crop varieties which have been mainly bred under National Agricultural Research System at ICAR/State Agricultural Universities/other research organizations/industry, tested through multi-location trials under All India Coordinated Research Project (AICRP) and recommended for release by Central Seed Committee under Department of Agriculture and Cooperation, Ministry of Agriculture, Government of India”. No information is readily available to find out the guidelines, procedure and records examined by the EVRC, before recommending a notified variety for registration. The Annual Reports indicated that almost all applications were recommended every year for registration by the EVRC and the same registered without DUS test after notification.

It is important to note that as on 31^st March 2018, out of the total 3430 certificates issued, 1056 were for ENV, with the majority of these certificates issued to ICAR and other public funded institutions. Similarly as on 7^th May 2018, out of 550 closed/withdrawn applications, 225 were ENV and the majority were from ICAR and other public institutions. Equally important is to note that as on 10^th July 2018, protection of 365 ENV expired and of out of which 350 belong to ICAR and other public funded institutions. An independent study is required to find out what kind of benefits these registrations have conferred on our public funded institutions.

Whatever may be the justifications for dispensing with DSU requirements in so far as notified extent varieties (ENV) are concerned, the decision of the Authority is a blatant violation of the mandatory requirement under section 15(2) of the Act and adopted to protect the interest of the modern breeders and private seed industries. These provisions deserved to be struck down as unconstitutional for being discriminatory and exercise of excessive delegation.

DUS for Variety about which there is Common Knowledge (VCK)

In 2009, a specific Regulation known as “Protection of Plant varieties and Farmers’ Right (Criteria for Distinctiveness, Uniformity and Stability for Registration) Regulation 2009 was notified for the purpose of registration of VCK (variety that is commonly known) and farmers’ variety. According to Regulation 4, the criteria for DUS for VCK under section 14(b) “shall be determined by conducting field test on one season on two locations for the purpose of confirming the DUS following the descriptors and plot size as may be specified in the Journal”. It is evident that no different criteria for DUS as envisaged in section 15(2) is specified, but stipulated concession in the method of field test to determine the DUS. An examination of the Annual Reports clearly indicate that the same set of DUS for new variety along with the Guidelines developed for testing DUS is used for conducting field test of VCK, following the concessions provided in Regulation 4 of 2009 .

What is astonishing was a notice issued under Section 20 (1) read with Section 2(j) (iii) of the Act in the Plant Variety Journal of India, 3 (Sept), 2009 stating that the application for registration of VCK will be processed if the following conditions are met: “A1. If a variety which is not released and notified under the Seeds Act, 1966 but is well documented through publications and is capable of satisfying the definition of ‘variety’, or A2. The candidate variety should either have an entry in any official register of varieties or in the course of being made, or A3. The candidate variety should find inclusion in a reference collection or is having a precise description in a publication, or A4. By any other means a variety has become a matter of common knowledge. AND B. The variety is under cultivation or marketing during the time of filing of application for registration. C. The true representative seed of the variety should be available at the time of filing of application. D. A candidate variety should have been sold or otherwise disposed of in India one year prior to the date of filing of the application and it should not have been sold or otherwise disposed of 13 years prior to the date of filing of application and in case of trees and vines it should not have been sold or otherwise disposed of 16 years prior to the date of filing of application” (emphasis mine). The sum and substance of the requirement is that VCK is existing varieties developed by the modern breeders, and not notified under the Seed Act but on commercial chain for the last 13 and 16 years as the case may be before the filing of the application. The net effect is that a time limit of 13 and 16 years is fixed for determining “common knowledge” and any existing variety beyond this time is excluded from registration. No information is readily available explaining the justification for making such a decision by the Authority.

An examination of section 20(1) of the Act makes it obvious that it deals with the power of the Registrar to accept the application for registration of a variety under the Act “after making such inquiry as he thinks fit with respect to the particulars contained in such application, accept the application absolutely or subject to such conditions or limitations as he deems fit”. It is the general understanding that such powers are conferred on the Registrar to check whether all the requirements of the content of the individual applications are satisfied before accepting the application to proceed further. Thus the power to impose “such conditions or limitations as he deems fit” is necessarily confined to satisfying the content of the application. It is difficult to comprehend how this provision could be used by the Authority to define VCK which was left open by the Parliament.

It is equally surprising and difficult to figure out the reasons for the Authority not exercising this dubious power to lay down conditions for registration of the other two categories i.e., farmers’ variety which is an extant variety and any other variety which is in public domain. This is important because farmers’ variety falls as a separate category for registration under section 14(c) and also as extant variety under section 14(b). Similarly the second part of the definition of farmers’ variety also cover “a variety about which the farmers posses common knowledge”.

It is shocking to notice that, of late, the Authority in the Annual Reports has confined the registration of extant varieties to ENV and VCK. Even though in the earlier Annual Reports all four categories were shown under extant variety, gradually it was reduced to three and now only two. The Authority had the audacity to state in the Annual Report of 2014-15 & 2015-16 (p. 3) that: “Public domain variety: these varieties are not eligible for registration as they are already in public domain” and is no more included as part of extant variety for registration. Similarly farmers’ variety which is an extant variety is also excluded from registration under the category of extant variety. Nowhere in the Annual Reports has the Authority clarified the justifications for excluding these two varieties that are expressly covered by an Act of Parliament.

It is an accepted fact that all the four categories included in the definition of extant variety were in the public domain at the time of the enactment of the law. It is also an accepted fact that the Parliament wanted to capture within the fold of the law, varieties that were developed through “formal and informal innovation” process. These also include varieties that are identifiable with an individual, group of individual or communities who developed the variety and varieties whose breeders are unidentifiable. This seems to be the reason why the Parliament has expressly included “any other variety that is in public domain” as part of extant variety and also included “a wild relative or land race or a variety about which the farmers possess common knowledge” in the definition of farmers’ variety. This also seems to be the reason for the Parliament to mandate different criteria of DUS for registering extant varieties. This is strengthened if one examines the history of including these categories in the definitions by the Joint Parliamentary Committee which were absent in the 1999 Bill presented to the Parliament.  It appears that the failure of the Parliament is not in including these varieties within the definitions, but clearly laying down separate standards, terms and conditions for registration and also the nature of the rights it enjoy after registration. The absence of these provisions compel one to read the general provisions included for the protection of the new varieties including the strong IP rights conferred to them applicable particularly to the “public domain varieties” and farmers’ variety, inflicting a sever “cultural shock” to the sharing culture traditionally followed by the farming communities. Notwithstanding the existence of a very broad research exception in the Act, it appears that these failures created concern among the formal breeders regarding free access to plant genetic materials and seems to have started using the Authority as a convenient means, as far as possible, to do away with the unique sui generis features of the law intended to preserve and promote informal innovation practiced by the farming communities in India. This is also an agenda that private seed industries are bound to execute for their continued survival in the market following capitalist mode of production and distribution of new varieties using emerging technologies and claiming IP protection; a model that is seriously contested as unsustainable.

The fact that as on 31^st March 2018, out of the 370 VCK registered under the Act, 330 belongs to the private seed industry speaks volumes about the intentions of the Authority to carve out such a set of conditions for VCK. The seed industries efficiently used this opportunity to enclose for a period of 15 years, the otherwise commercialized and freely accessible varieties to the farmers. A cursory look at the denomination of the VCK, the impression one gets is that majority are F1 hybrids successfully marked by the private seed industry where the farmers’ are forced to come back to the seed industry for access to seed for each season and the parental lines were kept secret from use by competitors, an area that needs further research for conformation. It is pertinent to note that there is not a single VCK registered in the name of an individual. What the Authority is trying to achieve is to make sure that only varieties that were developed through formal innovation methods alone are registered under the extant variety and push out all the varieties that were developed through “informal innovation” predominantly followed by the farming community, leave alone the question whether registration of farmers’ variety under section 14(b) or (c) is going to make much difference. To say the least, this is a surreptitious way of arrogating to itself the power of the Parliament to create norms to protect the vested interest of the seed industry. This is in direct contravention of constitutional norms.

In short, the Plant Variety Authority has effectively taken advantage of gaps in the law to re-writing the clear mandate of the Parliament in order to enable modern breeders and seed industries to enclose publicly available varieties. This trend needs to be arrested at the earliest, through either a judicial intervention or by Parliament in order to protect the future of Indian agriculture and the interests of poor farmers.

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Time for the Argumentative Indian to step down?

They say that time is money, but clearly no one seems to adhere to this adage in the Courts of law in India. It’s no news that shortage of judges, inefficient administration, delaying tactics adopted by lawyers and several other factors lead to massive pendency of cases in Indian Courts.

About Delays in Indian Patent Examination and Litigation

IPR disputes meet the same fate. In particular, delays in patent litigation are quite stark. The few cases that go to trial take forever to decide. And even the interim stage is dragged on endlessly. Causing a Supreme Court judge to once recommend abolishing the interim phase altogether in IP cases. (For more on this, see our previous post here. See also our series of posts on interrogating interim injunctions.)

Previously, SpicyIP reported that out of 143 patent infringement suits filed between 2005 and 2015, only five judgments had been handed down! In another post, where I discussed a Himachal Pradesh High Court judgment revoking a patent grant, I had pointed out that the suit had been filed 13 years ago and had barely received attention by the Court during this time period.

Not only do these delays affect the individual who is looking for speedy justice, they also have a deleterious effect on the business ecosystem which relies on speedy and effective transactions and whose operations are encumbered by long-drawn out litigation.

It’s clear that we need better alternatives.

And the Solution is…

Something that is now widely labelled as “ADR” or Alternative Dispute Resolution and defined by the World Intellectual Property Organization (WIPO) as a “neutral mechanism” that allows “parties to solve their disputes outside of court in a private forum, with the assistance of a qualified neutral intermediary of their choice”. ADR today includes a wide variety of dispute resolution mechanisms including mediation, arbitration and negotiation. While arbitration has been around for a while in IP disputes, mediation is slowly gaining ground. In a mediation, the mediator acts as a neutral intermediary to help the parties reach a mutually satisfactory settlement of their dispute. It is a non-binding, interest-based procedure controlled by parties and is confidential in nature. It must be kept in mind that IPR disputes are usually complex, involve technical knowledge and are business-oriented, hence requiring quick and flexible solutions to minimize delay and costs. Mediation, therefore, provides a perfect mechanism of resolving IPR disputes since it merely focusses on parties’ interests and on reaching a settlement, rather than delving into the rights of the parties and declaring a “winner”. However, mediation has to operate in the shadow of “formal” law to some extent—so it may not work well in areas, where the jurisprudence is yet to be developed in some way by courts. Pharmaceutical patent disputes in India are a great example of this, and we cautioned readers on the move to mediate these initially by the Delhi High Court. (To see our previous posts on the Roche-Cipla mediation controversy issue, click here and here).

India: Rise in Mediation of IPR Disputes

There is no gainsaying the fact that mediation of IPR claims and disputes is slowly gaining traction in India. In a positive move towards adopting alternative dispute resolution mechanisms for resolving IPR disputes and in order to deal with overwhelming backlog, the Controller General of Patent Designs and Trade Marks, in collaboration with the Delhi Legal Services Authority (DLSA), had referred around 500 pending oppositions and rectifications in the Trademarks Registry(TMR), Delhi, to mediation and conciliation via a public notice, dated 31^st March 2016, under the Legal Services Authorities Act, 1987. In furtherance to this, the DLSA also released a Standard Operating Protocol on 13^th May 2016 for introducing uniformity in such mediation processes in TMR, Delhi.

Another positive step towards mediation of IPR disputes is the introduction of Section 12A in the Commercial Courts Act of 2015 (“The Act”) via Chapter IIIA of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendment) Ordinance, 2018 (“The Ordinance”) to mandate pre-institution mediation and settlement in cases where no urgent relief has been sought. (Under Section 2(c) of the Act, “commercial disputes” include disputes arising out of intellectual property rights.)The mediation can be conducted by authorities constituted under the Legal Services Authority Act, 1987. It is required to be completed within a period of three months and it may be extended by two months. A signed settled agreement between the parties is to have the same effect as an arbitral award under the Arbitration and Conciliation Act, 1996. Further, the Central Government, on 3^rd July 2018 notified Commercial Courts (Pre-Institution Mediation and Settlement) Rules, 2018 for standardizing such mediation processes. This Amendment and the subsequent notification of the Rules are welcome steps since they are in keeping with the original aim of the Act i.e., to bring about reduction in delay of cases. These steps will also encourage parties to stop depending on external agencies such as Courts for resolving IPR disputes and take the matter into their own hands.

A recent example of an IPR dispute in India quickly and effectively wrapped up through mediation: In what seemed to signal the beginning of yet another messy, drawn out legal affair in the fashion world, designer Vaishali Shadagule alleged that Sanjay Garg of Raw Mango had copied her designs and she accordingly accused him of plagiarism. In return, Garg filed a suit of defamation against Shadagule in the Delhi High Court. The issue was then mediated before the Fashion Development Council of India in accordance to the parties’ wishes and the dispute was amicably nipped at the bud within four working days of the institution of the suit!

With our Courts and our institutions repeatedly letting us down with their continued inefficiency and delay, the status quo doesn’t seem likely to change and people need to resort to other viable options. The following quote from Prof. Basheer’s post on a related issue sums up my views on why mediation may, in many cases, be a better alternative to litigation:

“To take the adversary out of the adversarial! And to be civil to even those that oppose us.”

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Thematic Highlight

Prof. Basheer wrote another post on the Novartis AG v. Union of India decision in continuation to his earlier post on a Chinese blockbuster inspired by the Novartis decision. In the first half of his post, he focuses on the Court’s strict construction of the term ‘efficacy’ under Section 3(d) and how Novartis was unable to prove the same in its anti-cancer drug Glivec. He then recounts several flaws in the Court’s reasoning and the decision-making process. He then analyses how the 2005 Amendment to the Patent Act and Section 3(d) brought about a revolution in pioneering innovative patent norms.

Topical Highlight

Rishabh reported an interesting order by the Delhi High Court where the Court had delved into certain psychological theories to reach its decision! In this case the plaintiff (Gillette) had instituted a suit against two defendants, seeking permanent injunction restraining them from adopting the mark ZORRIK TALVAR, which they alleged was deceptively similar since it amounted to a literal translation of the plaintiff’s mark WILKINSON SWORD. The Court relied on Freud’s theory of associative thinking to conclude that the defendant’s use of its trademark resulted in trademark infringement. In his comments on the decision, Rishabh observe that such use of psychological studies in judicial decisions could lead to several complications in the application of legal reasoning and concepts.

Other Posts

Prof. (Dr.) N.S. Gopalakrishnan continues to provide us insightful posts on the plant varieties regime in India. (His earlier posts can be accessed here and here.) In his latest post, he examines the novelty, distinctiveness, uniformity and stability (NDUS) criteria required for registration under the Protection of Plant Varieties and Farmers’ Rights Act and explains how the Authority has not developed any NDUS criteria for registering extant varieties in the Regulations, Guidelines and other notifications issued under the Act, thus introducing arbitrariness in the registration procedure.

Lastly, I wrote about how mediation of IPR disputes is on the rise in India. I first focus on how delays in patent examination and litigation add to the massive pendency of cases in Courts of India. I then reason out how mediation can prove to be a solution to this by citing a recent IPR dispute in the fashion world wrapped quickly through mediation. I also briefly highlight the recent amendment to the Commercial Courts Act which mandates pre-institution mediation and settlement to buttress my conclusion that mediation, in many IPR cases, may prove to be a better solution than litigation.

Other Developments

Indian

Judgements

M/s. Kumudam Publications Private Limited v. A.R. Prabhu and Another – Madras High Court [July 12, 2018]

The Plaintiff filed a case for permanent injunction in order to restrain the Defendants from using the Plaintiff’s mark “KUMUDAM REPORTER”, or any other mark identical or deceptively similar to the Plaintiff’s for the publication of its magazine. The Court decreed the suit on the basis of the Defendant’s undertaking to not use marks or font, colour, design and style of the wrapper similar to that of the Plaintiff.

News

• In Patent Suits with High Stakes, Right to File Written Statement Can’t be Forfeited at the Outset: Rajasthan HC
• No bail for ‘copycat’ who embossed logo on dupes of cosmetics
• AstraZeneca sues DRL on patent
• GI tag for Rasagola: Odisha to submit data by August 1st week
• Proprietor of a Trade Mark Cannot enjoy Monopoly over the Entire Class of Goods: SC
• PepsiCo India secures Delhi HC order to wipe out ‘Kurkure has plastic’ posts from social media platforms

International

• Tesla clears the air with “farting unicorn” artist after copyright stink
• Prince’s Label says Video of fans singing ‘Purple Rain’ is Copyright Infringement
• Judge dismisses ‘Shape of Water’ Copyright Suit
• Aaron Hernandez’s Wife the subject of Copyright Infringement Case against Boston Globe
• EU Judges offer no break in ‘Kit Kat’ trademark war
• IBM wins $83 million from Groupon in e-Commerce patent fight
• Breaking: AG Wathelet advises CJEU to rule that the taste of a cheese CANNOT be protected by copyright

In a recent decision dated 26^th June, 2018, the Assistant Controller of Patents and Designs exercised his power under Section 15 of the Patents Act, 1970 (“the Act”) and rejected the bid for a patent application. Below, I give a brief description of the patent application and the reasons which led the Controller to come to such a decision, before analyzing the final order.

About the Patent Application

The applicant, Bayer Intellectual Property Gmbh (Initially, Bayer Animal Health Gmbh was the applicant and they later assigned their patent rights to the present applicant), had applied for patent application number 9382/DELNP/2010 for a pharmaceutical invention entitled “Use of nifurtimox for treating giardiasis” on 31^st December, 2010. A perusal of the abstract, claims and full description reveals that the said application proposed several compositions containing nifurtimox and an anthelmintic (anti-parasitic drug) for treatment of giardiasis (a particularly nasty intestinal infection caused by parasites belonging to the genus Giardia) in dogs and cats. The disease can spread to humans, by cysts of cats and dogs, circulated via infected water or feces. The description stated that, prior to this, nifurtimox was only known for its efficacy against protozoans of the genus Trypanosoma, which cause African and American trypanosomiasis, or sleeping sickness. However, the applicant’s invention proposed that nifurtimox was effective against the Giardia species too and it could target the gut-pathogenic stage and prevent cyst formation, thereby reducing spread of the infection.

Consequent Events

Stating that the mere “use” of nifurtimox does not amount to an invention under Section 2 (1) (j) of the Act, the First Examination Report (FER), dated 17^th March, 2017, proceeded to object to the patent application on mainly three grounds, listed below:

Lack of Inventive Step: The Report stated that the requirement of inventive step under Section 2(1) (ja) was not met since the combination of nifurtimox with an anthelmintic (both previously known substances, as per the applicant’s disclosure) would be within the technical knowledge of a person skilled in the art. Further, the combination did not yield any “unexpected/surprising and/or enhances or synergistic technical effect”.

Non-Patentable Subject Matter: The Report stated that the invention merely amounted to a new use of a known substance since the prior art revealed that nifurtimox was already used against organisms of the genus Trpanosoma and hence it fell within the ambit of Section 3(d) of the Act. It further stated that Section 3(e) of the act would apply since the composition merely amounted to an admixture of nifurtimox and an anthelmintic, without any synergistic effect.

Insufficiency of Disclosure: The Report stated that the requirements of full disclosure under Section 10(4) (a) and (b) and 10(5) were not met since no working examples had been given for the claimed compositions of the components and hence, there was no disclosure of the best method of performing the invention.

The Reply to the FER, dated 17^th September, 2017, does not reveal much since the Applicant merely deleted a few claims from its Application and requested the Controller to accordingly waive off the afore-mentioned objections. The Applicant was consequently offered a hearing on 19^th March, 2018 and 23^rd April, 2018 for clearing the outstanding objections the application related to non-patentability and insufficiency of disclosure.

Reflections on the Final Order

And here comes the twist! Instead of filing further submissions and dragging the application procedure, the applicant’s agent informed the Controller via telephonic conversation that they wished to withdraw their application, resulting in the consequent rejection of the patent application by the Controller. Hence, we see, that in accepting the inevitable outcome at an early stage of the procedure, the applicant’s step effected speedy disposal of the matter.

Which brings us to the issue of pendency in the Indian Patent Office: This issue is currently being effectively tackled by the Government and measures such as computerization of work-flow, automation, electronic transfer of applications between branches etc. have indeed led to a decline in the number of pending matters. Self-initiated steps taken by future patent applicants, such as the one taken in the present decision, will also go a long way in tackling the issue head-on.

H/T: On behalf of the SpicyIP team, I would like to thank Mr. Sandeep Rathod for alerting us about this interesting development!

Image from here.

Earlier, we covered Ms. Justice Mukta Gupta’s decision in Koninklijke Philips Electronics N.V. vs. Rajesh Bansal And Ors. where the Delhi High Court found certain local manufacturers of DVD players liable for infringing Philip’s patents, which it claimed were Standard Essential Patents. I pointed out that the judgement was flawed on several counts. Given the importance of the jurisprudence on SEPs, the Court’s judgement requires some deeper examination.

‘Essentiality’ and the (Absent) Claim Construction

In determining infringement, the plaintiff adopted two lines of argument, both of which were accepted by the Court. First, to determine the ‘essentiality’ of the suit patent the plaintiff argued that if the suit patent could be mapped to a standard, it would not be technically possible to manufacture the suit patent without infringing. The defendant countered that the standard relied upon by the plaintiff was not recognised in India. The Court found that the suit patent was essential, and therefore the defendants infringed the suit patent.

While the court also (somewhat) conducted a separate patent-to-patent infringement analysis, the judgement implies that it is legitimate for patentees to prove infringement by simply mapping the patent to a standard, instead of mapping the patent claims to the infringing product/process.

Unfortunately, the High Court makes glaring omissions in this regard. It accepts (at face value and despite the objections of the defendant) the plaintiff’s evidence led to prove that the suit patent is a Standard Essential Patent. These were two privately granted ‘essentiality report mapping the Plaintiff’s European and US Patents to certain relevant standards in those jurisdictions. The standards themselves (the ECMO and the ISO respectively) were not proven by the plaintiffs. Logically, this should have meant that any ‘essentiality report’ relying upon these standards would be disregarded. Instead, the Court goes on to first conduct a mapping of the Indian, EU and US patents, to arrive at a bare and unreasoned conclusion that they cover the same claims – despite the language of the claims being different in all three. Further, while disregarding the standards themselves for lack of proof, the Court accepts at face value the private reports of the plaintiff, which mapped unproven international standards to unexamined international claims, despite the defendant’s objections. The Court then sweepingly declares that the suit patent is a standard essential patent in a DVD Technology Player.

This is a concerning precedent to set in SEP litigation, particularly at the post-trial stage. It could imply that all other standard-compliant inventions are automatically infringing, without requiring an analysis of the standard or the allegedly infringing patent itself. This could have significant fallout effects on the development of new technologies as well as standardization and interoperability.

The problem arises because standards are often not sufficiently precise to imply that use of the standard can be claimed to be infringing. The standards themselves may be implementable in other, non-infringing ways. Even in the US, where this was recognised by the Federal Court, its use was sufficiently caveated and its application limited to the facts of this case. The Court recognised that

“in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement. Or, as with the ’952 patent, the relevant section of the standard is optional, and standards compliance alone would not establish that the accused infringer chooses to implement the optional section. In these instances, it is not sufficient for the patent owner to establish infringement by arguing that the product admittedly practices the standard, therefore it infringes. In these cases, the patent owner must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard.”

Presently, it turns out, the Court did not need to make this significant yet offhand contribution to SEP jurisprudence because it determined that the plaintiff had independently proven infringement. This analysis was also flawed.

Essentially, the suit patent is a chipset embodied in DVD devices. This device is claimed to perform specific functions for decoding. However, the plaintiff’s witness led evidence not on the claims of the suit patent and corresponding technology being used in the allegedly infringing devices, but rather by describing the process of EFM + Demodulation techniques, which were claimed to be utilized by the defendants. This infringement analysis is completely contrary to the Court’s own judgement in Cipla v Hoffman la Roche, in which the principles for claim construction by the Court were laid down. In fact, Ms. Justice Gupta extensively cites the judgement before ignoring it entirely by foregoing a claim construction and comparison. Instead of mapping the claims to the defendant’s products, the Court accepted the plaintiff’s expert witness stating that the particular technique could not be exhibited without the use of the suit patent, even though both the credibility of the witness and the lack of claim construction was challenged by the defendant.

Raising the Bar for International Exhaustion

The Court also rejected the defendants’ argument that there was no infringement as the devices had been imported from a valid licensee of the patentee. Citing the principle of international exhaustion, the principle, that the first sale of a patented product invalidates further rights to that specific product. Section 107 of the Patents Act incorporates this principles in favour of imports of patent products which have been first sold abroad. In the present case, the defendants argued that the purchase was from valid licensees. However, in the Court’s analysis, the defendant had the additional burden of proving that the entities from which it purchased the devices were duly licensed or sold by the plaintiffs. This restricts the scope of the principle of international exhaustion. It imposes a high burden on any downstream purchaser to ensure that the products lifecycle prior to import is compliant with patent laws in that country. Placing the burden on the plaintiffs to prove that the product does not fall under the scope of Section 107 is more logical and procedurally fair, given that it is their burden to prove that manufacture or sale is unauthorized in the first instance. The Court’s determination in this case does not undertake this analysis and assumes a high threshold for international exhaustion defence to prove authorization of the first sale.

FRAND Licensing and Damages

Finally, the Court also erred in its assessment of damages which should be payable to the plaintiff. Firstly, the Court’s assessment of FRAND rates for royalty are not in line with its own precedent or international precedent. Secondly, it prescribes punitive damages – a slightly absurd outcome in SEP litigation.

The Court once again placed the burden upon the Defendant to prove that the rates offered by the Plaintiff were not compliant with FRAND obligations. The Court firstly noted that the royalty determination could be based on the net sales price of the DVD players, similar to the interim arrangement based on per unit costs it had established for royalty in the Ericsson v. Micromax dispute. Secondly, the Court accepted the plaintiffs argument that the patent royalty rates should be as determined by evidence of prior negotiation between the suit parties, led by their expert witness. Unlike in the Ericsson dispute, the Court did not assess FRAND rates based on comparable licenses, but simply inferred them from the parties on conducts and the plaintiff’s bare assertion that its ‘Philips Only’ license was on FRAND terms.

Bizarrely, the Court also justified imposing punitive damages on the defendant. This is despite extensively citing its own judgement in Hindustan Level precautioning against the arbitrary imposition of punitive damages. Without any reference to the principles in Hindustan Lever, the Court went on to impose Rs. 5 lakhs as costs against the defendants.

The damages claims, both the royalty determination and the punitive damage assessment by the Court, are unfortunate developments for SEP jurisprudence. Damages for SEPs should stand on a different footing from regular damages assessments. The recognition of certain patents in standards implies that some of a patentee’s rights are given up in favour of standardization and to ensure that interoperable technologies or technologies for consumer welfare are adopted consistently. In such a context, imposing punitive damages is dificult to justify. Further, the standard setting process should not be allowed to be used to extract monopoly rents by SEP holders. Courts have recognised that the SEP holders are not entitled to the incremental value derived from merely being part of a standard. Even as many useful and innovative precedents have appeared on FRAND royalty determination in US Courts, this judgement does nothing to improve upon the confusing landscape left by a handful of interim judgements determining interim royalty rates. In fact, some of the interim judgements contain significantly more analysis of FRAND commitments and determination than this.

In all, the judgement is a setback for technologies relying upon standards and SEPs – the implementation of standards can be fraught with new risks of infringement and the determination of FRAND is left unclear and appears to be weighted towards the plaintiff’s claims. A chance to clarify Standard Essential Patent litigation and FRAND commitments in India seems to have transfigured into SEP-uku instead.

(This post has been co-authored with Prof. Shamnad Basheer)

It’s been more than two years since India’s National IPR Policy was first announced. Mired in one controversy after another, this policy has been the subject of much heated discussion and debate. We bring you the first ever comprehensive assessment of this policy, weighing in on its pros and cons (spoiler art: the cons far outweigh the pros!).

Thankfully our analysis has been published in the Indian Journal of Law and Technology, an open access journal, so you can access the article for free here.  You can also access this via an SCC subscription.

Our abstract is as below:

“Amidst much fanfare, the Indian government unleashed an Intellectual Property Rights (“IPR”) policy around two years ago. This paper aims at the first ever comprehensive assessment of this policy, its purported rationale and implications. It argues that the policy is a shoddily drafted and poorly conceptualised document, which is resting on empirically unproven intellectual property (“IP”) assumptions. It is more faith-based than fact-based and endorses a fairly formalistic view of IP, taking it to be an end in itself. The paper goes on to demonstrate through the Carol Bacchi frame of “What’s the problem represented to be” (“WPR”) that the very rationale for the policy itself is unclear.”

Indeed when compared with the progressive South African IP policy that released on May 24, 2018, our policy falls short on several counts. As Prof. Carlos Correa rightly stated in a recent interview in the iconoclastic IP Watch: “The recently adopted IP Policy by South Africa provides a good example of how a policy may be developed taking into account public interests rather than dogmatic views on the matter.” Also, a recent piece in the Business Line notes:

“The approach of the Indian IP Policy offers only lip service to the use of [TRIPS] flexibilities and does not offer any measures to optimise the use of flexibilities… Instead it focusses on enhancing the protection and enforcement of IPRs, which goes beyond its international obligations (referred as ‘TRIPS-plus’) without taking into consideration its negative implications. ”

Anyway, for those interested, we’ve excerpted some bits from our piece as below:

  “IV. Problems with the Policy

[T]he policy makes all the right noises and is long on its list of recommendations, but short of any real inventive solution or insightful measure as befits a national level IP policy of this stature. Most of its suggested solutions are rather trite at best, and regressive at worst. While the problems with the IP policy are many, we highlight the most egregious ones below:

A. Conflation of IP and Innovation

The greatest flaw of the policy lies in blindly exhorting a rapid “generation of IPRs”. This reflects the policy’s one-sided view of IP as an end in itself, rather than as a means to an end, namely creativity and innovation…

[It]…leans in favour of a rather formalistic and reductionist view of IP, failing to situate it within the larger context of the innovation ecosystem, refusing to acknowledge that while IP could accelerate innovation in certain technology sectors, it could block innovation in others.

This is a truth touted not only by those labeled as left-liberal ideologues, but also by powerful industry giants facing the brunt of a promiscuous patent regime — renowned giants such as Tesla’s Elon Musk, who castigated the present patent situation thus:

“When I started out with my first company, Zip2, I thought patents were a good thing and worked hard to obtain them. And maybe they were good long ago, but too often these days they serve merely to sti- fle progress, entrench the positions of giant corporations and enrich those in the legal profession, rather than the actual inventors.”

The policy assumes that innovation and creativity can be fostered only through increased IP protection, and fails to acknowledge the more significant role played by non-IP factors such as education, infrastructure, culture, financing, etc. as identified by the first think tank.

The policy sounds almost militant when it exhorts Indians to convert all conceivable knowledge to IP….

i. Public Funded Research and IP

…i) The policy assumes that scientists fail to register their putative IP out of ignorance. However, history tells us that a number of visionary scientists consciously eschewed IP protection.

ii)… Some scientists may wish to patent their wares and enjoy the consequent exclusivity, while others may wish to promote a culture of open access, where new scientific discoveries are free of IP entanglements. There is no gainsaying the fact that IP registration, for the mere sake of registration, is non-sensical!… it bears noting that, on an empirical cost-benefit analysis, most U.S. universities have a negative balance sheet, when one compares the costs of IP registrations and licensing, as against the revenues through IP royalties.

iii) An undue focus on IP registration as a key performance indicator is likely to skew research priorities at scientific establishments, moving research away from basic into more applied streams that are more patentable and palatable to industry collaborators.

iv) Lastly, profiteering from publicly funded patents means that the tax payer pays twice…

The policy could have done better by encouraging a plurality of approaches for appropriating the value of publicly funded research, and vested more autonomy in the hands of scientists and researchers in this regard.

iii. IP Teaching and Respect

The policy advocates that IP be taught in schools and colleges. Leading one to ask: wouldn’t a course designed to make children more creative be better for fostering creativity than bogging them down with an additional course on intellectual property? Even if schools lack the resources to impart specific courses on creativity, they could at least ensure that they don’t stand in the way of what might otherwise have been a natural flowering of creativity in children.

A strenuous course on a legal regime whose alleged impact on innovation and creativity is highly contested is hardly the right recipe for a blossoming of creativity in schools.

Interestingly, the policy speaks about creating “respect” for IP as one of the steps for strengthening ‘Enforcement and Adjudication’. Why “respect”? Given that intellectual property has had a chequered history (with many viewing it as an inequitable tool of economic exploitation), “respect” is hardly the appropriate term.

The policy also proposes a long list of measures for spreading awareness of the benefit of IPRs, but none for making people aware of the various public interest exceptions inbuilt in the IP laws in order to ensure that the very purpose of creating these private rights is not defeated.

B. Other Problems with the Policy

Other problems with the policy are highlighted below:

i. Excessive Enforcement of IP and Criminalisation

The policy suggests a host of steps for strengthening of enforcement mechanisms for greater protection of IPRs, but none for balancing the enforcement, especially, criminal enforcement, that often compromises the civil liberties of defendants.

Most problematically, the policy proposes an amendment of the Cinematography Act, 1952 to criminalize unauthorized copying of movies. Undoubtedly, Bollywood requires some protection from the pirates, but criminalizing what is essentially a civil wrong (much like defamation) is tantamount to killing an ant with an elephant gun, not to mention the potential for abuse at the hands of our police.

Also, many a time piracy is one of the best ways to ensure access to notoriously priced IP goods. Importantly, a certain level of piracy has in the past proven to be beneficial to the IP owner in that it encourages adoption of the IP good by the consumer at a cheaper pirated cost, and later at a higher IP price when the consumer can so afford.

The proposition that piracy always reduces incentives to create is not empirically born out. Quite the contrary! Illustratively, notwithstanding the allegedly high rates of design piracy in the fashion industry, the creation of new designs continues to take place at a frenetic pace. Paradoxically, one might argue that piracy fosters more creativity in this industry at least. Further, the effect of piracy may not be homogenous across every industry. In other words, piracy may not reduce the legitimate sales of all goods in an industry. This was amply demonstrated by a study on the effect of the shutdown of Megaupload, a website that facilitated pirated content, on the box office revenues. The study concluded that the shutdown benefitted only those movies that premiered in a relatively large number of theaters and not those which had smaller audiences.

…The policy, however, does not take any of the above nuances into consideration. Rather, it proceeds on the simplistic assumption that piracy necessarily deters creativity and therefore recommends an ultra muscular mode of IP enforcement.

ii. IPR: Whither Balance?

The policy tends to treat IP as a “marketable financial asset” and an “economic tool”, and recommends a strict enforcement of IP rights. While it does mention the importance of “balanc[ing] the rights of the public in a manner conducive to social and economic welfare and to prevent misuse or abuse of IP rights”, it fails to include any specific proposal or recommendation that might help effectuate this balance.…

iii. Whither Transparency?

The policy fails to make any mention of the need to foster transparency in the intellectual property and innovation ecosystem. As noted earlier, the law not only grants rights, but also imposes certain duties on IPR holders in order that they might serve the interests of the public….The think tank could have…recommended a stronger enforcement mechanism with respect to these important IP duties too: one that would have helped foster greater transparency within the innovation ecosystem.

iv. Shoddy Drafting and Research

The policy also suffers from extremely shoddy drafting and research, as evident from the following:

i) The policy speaks of the need for commercial IP courts, when only a few months prior to the unleashing of the policy, the government had steered a legislation creating specialized “commercial courts” to success. Further, the policy speaks about housing all of the IP agencies within DIPP, when again, this was done a month prior to the release of this present policy. The government should at least have been up to date on its own initiatives, when formulating the IP policy.

ii) The policy exhorts multinational corporations (MNCs) to have IP policies. One wonders why the government is going out of its way to do so, when MNCs are known to be very savvy IP players in the market. It is the MSMEs and individual inventors who require encouragement and guidance to help access a regime that is terribly expensive and unduly complex…

V. A Few Commendable Proposals

To be fair, the policy does contain some commendable recommendations. We highlight the main ones below and draw attention to some of their shortcomings, where relevant:

1. The policy encourages openness in innovation, specifically noting the desirability of the free and open source paradigm in domains such as software and even pharmaceuticals. Unfortunately, the inclusion of these proposals in the section on “IPR generation” renders the commitment towards openness a bit suspect.…

8. The policy speaks about alternatives to the current IP regime such as the institution of awards or prizes. Unfortunately, this appears to have been recommended not as alternative to IP, but as an incentive for creation of IP itself.…

VI. An Uncreative Policy

…Many decades ago, a two-member committee (headed by Justice N.R. Ayyangar) conceptualised a patent policy that formed the blueprint of the present patent regime.97 By most accounts, this far-sighted policy triggered the remarkable growth of India’s pharmaceutical industry, earning it the moniker “pharmacy of the world”. It was a policy that was thoroughly researched, empirically validated and elegantly written in a little over a year. Compare and contrast that with the present policy that took more than two years and two separate think tanks to come to fruition. One beset with banality, dogged by dogma, rife with ridiculous assertions, lacking in any credible empirical support, and written in language that, at best, mimics a masterful memo from one bureaucrat to another. Surely we could have done better!

While proudly proclaiming the slogan “Creative India, Innovative India”, the policy states that “[t]here is an abundance of creative and innovative energies flowing in India”. It is a sheer pity that none of that abundant creative energy made it to this policy document, rendering it rather dull and dreary.

VII. What’s the Problem Represented to Be?

 Even apart from the various flaws in the text of the policy, one needs to revisit the rationale: What precisely is the point of this policy? Or to interrogate a bit deeper using Carol Bacchi’s frame, “What’s the problem represented to be?

[It] would appear that the policy appears to have stemmed out of a sincere belief that India lacks in creativity and innovation; and that a strengthening of IP protection would help enhance the rate and range of creativity and innovation. The assumption therefore (that underpins this implicit representation of the ‘problem’) is that IPRs necessarily ‘enhance’ creativity and innovation and also play a strong role in the same. Granted, India is lagging on several technological counts.

…But is it the country’s IP regime that is problematic? Or does the malaise lie elsewhere? Could it be cultural, where parents put undue pressure on their children to take up secure salaried jobs, as opposed to risky entrepreneurial ventures? Such factors are absent from the “problem representation” of the policy, and therein lies its biggest flaw. IP policy making should be driven by facts, and not faith. It must be based on empirical studies and stakeholder surveys and not on intuitions and assumptions; a point stressed by the First Think Tank Draft…

IX. Conclusion

The Indian IP policy will go down in the annals of history as a wasted opportunity: an opportunity where we might have fashioned a progressive policy in a country that has thus far bucked mainstream pressure to conform to a developed country driven IP script. Instead, what we have is a dull and dreary document that contains soporific platitudes at best, and an aggressive one sided ratcheting of IP norms up at worst.

The policy lacks empirical rigour and appears more faith-based than fact based. It endorses a very formalistic and reductionist view of IP, taking it to be an end in itself. It ignores other factors such as education and cultural aversion to risk, which are likely to play a far greater role in triggering creativity.

To this end, the policy misses the larger macro frame where IP is but one tool in the overall innovation ecosystem; a more holistic approach might have made for a more progressive policy. In the end, one needs to ask: was there a need for such a policy at all? What purpose did it serve? Alas: Carol Bacchi’s thoughtful question remains unanswered!”

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We are pleased to announce that the Centre for Innovation, Intellectual Property, and Competition (CIIPC) at National Law University, Delhi will be conducting a five-day Certificate Course on IP Licensing and Competition Law from August 22 to August 26, 2018. As part of the course, a two-day workshop on SEPs: Patent & Antitrust Issues in High-Tech World will be conducted by Prof. Jay Kesan and Dr. Kirti Gupta on August 25 and 26, 2018. The deadline for sending applications for both the course and the workshop is August 10, 2018. For further details, please read their post below:

Certificate Course on IP Licensing and Competition Law

The Centre for Innovation, Intellectual Property, and Competition (CIIPC) at National Law University, Delhi, is pleased to announce that Prof. Jay Kesan, Professor, University of Illinois and Dr Kirti Gupta, Senior Director, Economic Strategy at Qualcomm Inc. will be conducting a five-day Certificate Course on IP Licensing and Competition Law, from 22nd-26th August, 2018. The sessions on 22nd-24th August, 2018 will take place from 2:30 pm – 5:30 pm at National Law University, Sector 14, Dwarka, New Delhi 110078. A two-day workshop on SEPs: Patent & Antitrust Issues in High-Tech World will be conducted on 25th-26th August, 2018 from 10:00 am – 4:00 pm as a part of the Certificate course at the Dome, Vivanta by Taj – Ambassador, Sujan Singh Park, Subramania Bharti Marg, New Delhi -110003.

About the course

Intellectual property (IP) rights are fundamentally rights to exclude others from making, using, selling or offering to sell products and services that infringe on one’s IP rights.  As such, the exercise of one’s IP rights is one of the few legal ways to reduce competition in a market economy.  Antitrust law focuses on maintaining competitive market conditions against a backdrop of a large variety of market transactions between various entities who may be in horizontal and vertical relationships to each other.  In the context of IP, it is the licensing of IP rights that is often the focus of antitrust policy.  Specifically, when licensing is seen as going beyond the scope of the original patent grant (such as paying royalties in perpetuity), then it is likely to raise antitrust concerns.  On the other hand, antitrust policy is also increasingly recognizing that many market transactions and private ordering mechanisms involving IP might be both pro-competitive and efficiency enhancing.  It is this rich legal and policy landscape at the patent-antitrust interface that is the focus of this certificate course.

This course will cover topics such as introduction to patent licensing, market power and intellectual property, vertical integration involving tying, exclusive dealing, package or blanket licensing and anticompetitive royalty provisions, and horizontal restraints such as cross-licensing, patent pools, standard setting organizations (SSOs) and research and production joint ventures.

Who will be conducting the workshop?

Prof. Jay Kesan is a Workman Research Scholar and the Director of the Program in Intellectual Property and Technology Law at the University of Illinois at Urbana-Champaign. His Academic interests include technology, law, and business; and his recent work has been focused mainly on patent law policy. Prof. Kesan has served as one of the inaugural Thomas A Edison Scholars at the U.S. Patent and Trademark Office (USPTO), and has been actively involved in every aspect of patent litigation, apart from being an inventor and patentee himself.

Dr. Kirti Gupta is the Director of Economic Strategy at Qualcomm Inc. With fifteen years of practice as an engineer and an economist at Qualcomm, she has extensive knowledge of the mobile wireless and high-tech industry, and expertise in applied microeconomics and econometrics. She manages and leads the substantive direction of global intellectual property and antitrust policy and outreach and is actively involved in international antitrust and litigation matters. Having published and presented her work extensively, Dr Kirti Gupta has also represented Qualcomm in various global technology standards bodies. She currently holds ten US patents and has several pending patent applications.

Who can apply?

The sessions from 22nd-24th August 2018 is only open to law students who have demonstrable interest in the areas of intellectual property and/or competition law. Interested candidates must send in an email application, along with a statement of purpose (maximum 500 words), and their recent CV to events@ciipc.org on or before 10th August 2018.

The subject title of the e-mail must be “Application for Certificate Course on IP Licensing and Competition Law.” Selected candidates will be informed by 15th August, 2018.

The Certificate will be given only to those who have attended all the sessions of the course and the workshop.

The workshop on 25th-26th August 2018 is open for early professionals, regulators, public servants, and academics working in the areas of intellectual property and/or competition law.

Interested candidates must send in an e-mail application, along with their CV, to events@ciipc.org on or before 10th August 2018. The subject title of the e-mail must be “Application for Workshop on SEPs: Patent and Antirust Issues in the High-Tech World.” Selected candidates will be informed by 15th August, 2018. The Certificate will be given only to those who have attended all the sessions of the two-day workshop.

There is no registration fees for selected candidates. However, CIIPC will not be responsible for reimbursing any expenses incurred by the candidates. In case of any query, please contact Ms. Khushbu Kumari at khushbu@nludelhi.ac.in