Image from here
(This post has been co-authored with SpicyIP Fellows Adyasha Samal, Anupriya Dhonchak and Nikhil Purohit.)
Here’s wishing all our readers a very happy, safe and healthy new year!
Unfortunately, many traditions worldwide had to be broken the past year, but here at SpicyIP we’re glad to continue our annual tradition of recounting all the significant developments that impacted the Indian IP landscape in 2020.
This year, we have divided these developments into four categories:
a) Top 10 IP Judgments/Orders (Topicality/Impact)
b) Top 10 IP Judgments/Orders (Jurisprudence/Legal Lucidity)
c) Top 10 IP Legislative and Policy Related Developments, and
d) Top 10 Other IP Developments
The decisions in the first category, i.e., Top 10 IP Judgments/Orders (Topicality/Impact) reflect those that we thought were important from a topical point of view and were covered by the media in some way owing to the importance of parties litigating or the issue being considered or for impact on industry and innovation/creativity ecosystem etc. We’ve tried to represent a diversity of subject matter also in this list, so we have a fair sprinkling of cases dealing with copyright, patents, trademarks, competition law etc.
And the decisions in the second category, i.e., Top 10 IP Judgments/Orders (Jurisprudence/Legal Lucidity) reflect those that we thought reflected a fair bit of jurisprudential rigour and/or legal lucidity. However, the two categories are not mutually exclusive.
The third category lists out notable developments on the legislative and policy side and includes important amendments, proposals for amendments, release of policy notes and reports etc.
The other important developments which do not fall in any of the above three categories have been highlighted in the fourth category.
We have also included a list of other notable IP developments of 2020 here. You may also view the list of most read posts on the blog in 2020 here.
Before you read on and check if our top ten for 2020 matches yours, on this first day of the new year, let’s collectively hope that this year brings us more spicy IP developments which help shape India’s IP regime into a more fair, balanced and effective one.
Also, a huge thanks to our readers for continuing to engage with our posts and constantly encouraging us, which keeps us going!
A. Top 10 Judgments/Orders [Topicality/Impact]
1. Allani Ferid v. Assistant Controller of Patents & Designs (IPAB)
In a development that could change the patent law landscape as it relates to software patents, the IPAB allowed a patent application for a ‘method and device for accessing information sources and services on the web’ to Tunisian citizen Ferid Allani, 19 years after the original application was filed! In 2019, Justice Pratibha Singh of the Delhi High Court had issued an order directing the Patent Office to re-examine the application in the context of developments that have occurred since the filing of the patent in 1999. This refers to the addition of the phrase “per se” in section 3(k) of the Patents Act, which earlier barred computer programmes from being patented. The court had observed that this was done to ensure that genuine inventions that are developed based on computer programmes (as opposed to being only computer programmes) are not rejected. Thus, if the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it would be patentable even though it may be based on a computer program. The grant of this patent has opened the field for patent applications related to artificial intelligence, blockchain technologies and other digital products which may computer programme-based.
2. Astrazeneca AB & Anr. v. Emcure Pharma Ltd. & MSN Labs Ltd. & Astrazeneca v. Intas Pharma Ltd. & Alkem Labs Ltd. & (Delhi High Court)
Early in the year, the Delhi High Court granted an interim injunction against manufacture of generic version of cardiovascular diseases drug Ticagrelor by holding that even though the drug was covered by a previous genus patent owned by Astrazeneca, since it is produced and marketed under a species patent, the patentee is entitled to enforce the later species patent. This decision was controversially in contradiction with the previous rulings of the court as well as decisions rendered later in the year which have held that coverage and disclosure cannot be separate.
In November 2020, the Delhi High Court refused to grant an interim injunction against manufacture of generic version of anti-diabetic drug Dapagliflozin, which was argued by patentee Astrazeneca to have been disclosed only by a species patent even though it had been covered in an expired genus patent. In this well-reasoned judgment, the court reiterated that there cannot be any dichotomy between disclosure and coverage. It also noted that owing to the COVID-19 pandemic, patients already suffering from diabetes are at a greater risk of contracting coronavirus and thus, affordable diabetes medication was in public interest. The court also clarified that disclosure requirements had to be strictly followed by patent applicants.
3. Interdigital Tech Corp & Ors. v. Xiaomi Corp & Ors. (Delhi High Court)
In a significant development, the Delhi High Court rejected InterDigital’s proposal for constituting a two-tier confidentiality club for sharing confidential documents to assess whether the licensing terms being offered by InterDigital were on FRAND basis. This proposal sought to exclude any representatives of parties, “other than “non-in-house” advocates and the experts appointed by them”, from accessing documents like “confidential, comparable patent license agreements on FRAND terms, as executed by the parties in the suit”. The court held such a proposal to be against fair play to the defendants and against the lawyer-client relationship.
4. Prof. Dr. Cluadio De Simone & Anr. v. Actial Farmaceutica SRL. & Ors. (Delhi High Court)
In another significant development, the Delhi High Court provided clarity on the interplay between two different IP protections by observing that the same innovation cannot enjoy both trade secret and patent protection. The court rejected the Plaintiffs’ contention that the aspects of the innovation that they sought to protect as trade secrets were separate from the aspects that formed subject matter of their patent. It held that once a patent has been applied for and expired, the ‘innovation’ is in the public domain and no trade secret protection can be claimed thereon.
5. Monsanto Holdings Pvt. Ltd. & Ors. v. Competition Commission of India (Delhi High Court)
The Delhi High Court ruled on the issue of overlap of jurisdiction under the Patents Act and the Competition Act in case of patent licensing terms that may be anti-competitive. It rejected the argument that the specialized regulator, i.e., the Patent Controller would be the one to first determine whether the agreements were an abuse of rights under the Patents Act before the CCI could look into it. The Controller did not have the power to act upon the exercise of patent rights or the agreements that are entered into by patentees with third parties in relation with these rights. Moreover, patents are not an industry in themselves and the grant of a patent merely recognizes an IP right. Thus, Section 3(5) of the Competition Act does not enable an IP right holder to include onerous conditions.
6. Arudra Engineers Pvt. Ltd. v. Pathanjali Ayurved Ltd. & Anr. (Madras High Court)
In an important judgment, the Madras High Court held that Patanjali’s use of the word ‘Coronil’ in its immunity booster tablets caused confusion regarding the possibility of curing coronavirus and played on the prevailing panic and fear among people to make money. Significantly, it ruled that this use infringed upon the Plaintiff’s registered trademark rights on ‘CORONIL’ under Section 29(4) of Trade Marks Act and interpreted the term ‘reputation in India’ under this section, literally. It stated that the Plaintiff simply needed to show that the trademark enjoys a reputation within the country and not meet the standard of fame held by a well-known mark. This interpretation of Section 29(4) allows for marks of significant repute in the domestic market to seek injunctions across classes without being subject to the onerous requirements of being declared a well-known mark under Section 2(zg). They are required to be known only amongst the relevant class of consumers as opposed to the general public.
7. Interdigital Tech Corp & Ors. v. Xiaomi Corp & Ors. (Delhi High Court)
The Delhi High Court (DHC) granted an anti anti-suit injunction in the patent infringement dispute between InterDigital and Xiaomi. The court viewed the lis as not impacting the proceedings before the Wuhan court concerning fixation of FRAND rates. The court noted Xiaomi’s argument to be predicated on comity of courts and held public policy concerns to trump the comity principle, considering the Wuhan judgment to be a direct impediment to its ability to decide the matter before it. The order was criticised for failing to consider the greater number of InterDigital’s patents in China than India, investigations against InterDigital’s policies in China in 2013, and strategic litigation against defendants in SEP disputes. Rajiv argued that the DHC ignored the public interest aspect that lies at core of a patent infringement suit.
8. Sameer Wadekar & Anr. v. Netflix Entertainment Services Pvt. Ltd. (Bombay High Court)
The Bombay High Court held that copyright protection subsists in the theme, plot and story line constituting the essence of a literary work. The plaintiff wrote a story titled ‘Singardaan’ in Urdu and alleged that the defendants’ web series under the identical title, ‘Singardaan’ launched on the App ‘Ullu’ and available on YouTube copied his story’s plot, narrative, characters and title. The court held that the web series contained all the essential parts of the story. It came to this conclusion noting that it would have been obvious to anyone who had read the story that the web series was only an adaptation of it. The interim order was criticised for its reasoning that the differences drawn up by the defendant between their web series and the plaintiff’s story were not crucial because they constituted ‘mere embellishments’ whereas the story line of the plaintiff was the ‘life and blood’ of the web series. This is because the ‘life and blood’ of the web series is irrelevant to a finding of substantial similarity and copyright infringement. Even if the web series had used the story as an ancillary trivial part of a larger plot whose ‘life and blood’ was something else, if the Court has concluded that the story used was a substantial part of the plaintiff’s copyrightable expression (as it had in this case), it would still result in a finding of infringement. The good thing about this order, though, was the Court’s candid acknowledgement of the difficulty in the ‘delicate task’ of applying the idea-expression dichotomy in practice, ultimately based on a value judgment of the right degree of abstraction.
9. Amazon Seller Services Pvt. Ltd. & Ors. v. Amway India Enterprises Pvt. Ltd. & Ors. (Delhi High Court)
The decision of the Division Bench of the Delhi High Court set aside the Single Judge’s order which had restrained various e-commerce platforms (including Amazon, Flipkart and Snapdeal) from enabling sale of products of ‘direct selling’ companies without their consent. The case concerned the applicability of the 2016 Direct Selling Guidelines (DSGs), Section 79 of the Information Technology Act, and contentions regarding inducement of breach of contract and tortious interference. The Court held that the DSGs are not law, and are only advisory in nature. Further, it noted that the mere fact that the online platforms may have knowledge of the Code of Ethics of the DSEs and the contractual stipulations imposed by such Direct Selling Entitiess, is insufficient to lay a claim of tortious interference.
10. Madras Bar Association v. Union of India & Anr. (Supreme Court)
Adding to an existing trail of decisions on administration of tribunals, the Supreme Court passed a detailed judgement in November, 2020, wherein it upheld the constitutional validity of the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020 (or Tribunal Rules 2020). Among other things, the decision is crucial for its observation on appointment of the Chairpersons, Vice-Chairperson and Technical Members to different tribunals including IPAB.
B. Top 10 Judgments/Orders [Jurisprudence/Legal Lucidity]
1. Interdigital Tech Corp & Ors. v. Xiaomi Corp & Ors. [Delhi High Court]
In a significant development, the Delhi High Court rejected InterDigital’s proposal for constituting a two-tier confidentiality club for sharing confidential documents to assess whether the licensing terms being offered by InterDigital were on FRAND basis. This proposal sought to exclude any representatives of parties, “other than “non-in-house” advocates and the experts appointed by them”, from accessing documents like “confidential, comparable patent license agreements on FRAND terms, as executed by the parties in the suit”. The court held such a proposal to be against fair play to the defendants and against the lawyer-client relationship.
2. Astrazeneca AB & Anr. v. Intas Pharma Ltd. & Alkem Labs Ltd. [Delhi High Court]
The Delhi High Court refused to grant an interim injunction for the manufacture of generic medicines whose subject matter was argued to be disclosed by a species patent, whereas they had already been covered in an expired genus patent. In this well-reasoned judgment, the court reiterated that there cannot be any dichotomy between disclosure and coverage. It also noted that owing to the COVID-19 pandemic, patients already suffering from diabetes are at a greater risk of contracting coronavirus and thus, affordable diabetes medication was in public interest. The court also clarified that disclosure requirements at the time of application had to be strictly followed by patent applicants.
3. Hindustan Unilever v. Endurance Domain and Ors. [Bombay High Court]
In a cybersquatting suit against various domain name registrars for using HUL’s trademark in domain names for fraudulent businesses, the Bombay High Court held that domain name registrars cannot be expected to ‘block access’ to a domain name, but can only be asked to temporarily suspend specific domain names. This provides clarity to the role and liability of domain name registrars in online trademark disputes.
4. Delhivery Private Ltd. v. Treasure Vase Ventures Private Ltd. [Delhi High Court]
The Delhi High Court held that the registered trademark ‘DELHIVERY’ is phonetically similar to the English word ‘delivery’ and is thus a generic mark, making it ineligible for trademark protection. It observed that only a generic mark which has achieved distinctiveness can enjoy trademark rights and refused to restrain the defendant from using the similar trademark ‘DELIVER-E’.
5. Vinay Vats v. Fox Star Studios India Pvt. Ltd. & Anr. [Delhi High Court]
In a notable decision, the Delhi High Court refused to grant an interim injunction against the release of the movie Lootcase “twenty-four hours before it [was] due for release”. Here the injunction was sought based solely on a trailer released by the petitioner in 2011. The court, after noting the contested similarities between the two works, rightly highlighted that this “plot idea is as old as the hills” and that it was not the “exclusive province of the plaintiff”. It also came down heavily on the plaintiff for approaching it on the last minute and noted that there was “no justification for the plaintiff having approached this Court on the eve of the release of the film” and considered it an example of “misuse of the judicial process”.
6. Zee Entertainment Enterprises v. Ameya Vinod Khopkar & Ors. [Bombay High Court]
In yet another notable decision, the Bombay High Court refused to grant interim injunction sought by PLEX, a client-server media player that also provides services such as Live TV and free movies, against Zee’s recently launched a pay-per-view service, ZEEPLEX. The court held that the plaintiff failed to establish its reputation within India as against the defendant’s greater reputation. It also noted the difference in the two services and the inability of the plaintiff to show any anticipated injury. Justice Patel also made a pertinent observation on the plaintiff moving the court at the last minute despite earlier knowledge of the incident. He stated that plaintiffs deliberately moving at the eleventh hour “must be prepared to face the consequences” for the same.
7. S.D. Containers Indore v. Mold Tek Packaging [Supreme Court]
In this judgment, the Supreme Court clarified that ‘High Court’ under Section 22(4) of the Design Act includes a High Court that does not have ordinary original civil jurisdiction. On the other hand, Section 7 of the Commercial Courts Act, 2015 only deals with High Courts having ordinary original civil jurisdiction. It also stated that in case of infringement suits under Section 22(4), the cause of action arises in the state where the suit had been initially filed and not the state where the designs are registered.
8. Zee Entertainment Enterprisesv.Ameya Vinod Khopkar & Ors.
In this case, the Plaintiff had been assigned the negative rights over the film ‘De Dhakka’ and thus sought to restrain the original creators from releasing a sequel of the film, ‘De Dhakka 2’. The Court refused to grant an ad-interim injunction, holding that the assignment deed pertained only to negative rights in the original film and prima facie did not transfer to them the right to make a sequel or a prequel. It also noted that the sequel in question has a completely different script, different dialogues, different concept, different characters and different locations and different music. The Plaintiff had also sued for infringement of the rights in the film title, but the court maintained, as per established jurisprudence, that the title of a work is not copyrightable.
9. Anil Rathi v. Shri Sharma Steeltech [Delhi High Court]
The Delhi High Court rejected the plea for the allowing the use of a surname-based mark, ‘RATHI’ in the course of trade because the usage of the trademark is regulated by a Memorandum of Understanding and a Trust Deed between the members of the Rathi Family to which the Defendant belongs. The court found that the Defendant’s act of issuing licenses in his personal capacity for the usage of impugned mark amounts to trademark infringement as such issuance is ultra vires the MoU and Trust Deed. It held that even though Section 35 of Trade Marks Act allows one to use a trademark based on their name, this is restricted to personal use of marks and does not to extend to the grant of licenses or use by artificial entities.
10. Novartis AG v. Controller of Patents [IPAB]
The IPAB quashed the revocation of Novartis’s patent on the anti-cancer drug Ceritinib by ruling that although the compound was contained in the markush claim of a broader genus patent, it was not ‘disclosed’ therein, as it hadn’t been specifically identified. This judgment helped shed light on the question of what constitutes disclosure, and held that generic disclosure of a chemical class did not take away the novelty of a specific compound within the class, unless the latter was ‘individualised’. It also clarified rules regarding filing of additional evidence for oppositions and reiterated the significance of adhering to statutory timelines.
C. Top 10 Legislative and Policy Developments
1. Govt published revised Form 27 (patent working statement)
After an enormous delay of almost two years, the Government finally published the revised version of the Form in October 2020, as part of the Patent (Amendment) Rules, 2020. The new Form has reinstated the requirement to state the reasons for not working the invention and steps being taken towards working the invention (with an arbitrary word limit of 500 words though) which was removed in the draft Form published in 2019. However, instead of seeking more elaborate details in respect of the information that the previous Form called for (as was suggested in Prof. Basheer’s PIL), it has done away with the requirement of submitting the following information which was sought by the previous Form:
- Quantum of the patented product manufactured in India or imported into India;
- Country wise details of the value and quantum of the patented product imported into India;
- The licenses and sub-licenses granted during the year; and
- Statement on whether public requirement has been met at a reasonable price.
2. Copyright Office sought comments from industry stakeholders on amendments to Copyright Act
The Copyright Office recently invited comments from industry stakeholders and law firms asking whether there was a need for amendments to be carried out to the Copyright Act. In this context, a group of ‘like minded IP teachers’ prepared a list of recommendations that focus on desirable public interest oriented amendments.
3. India and South Africa proposed waiver of key TRIPS provisions for Covid-19
India and South Africa issued a joint statement before the World Trade Organization for relaxation of certain TRIPS provisions in the wake of Covid-19. The rationale behind the proposal is to ensure accessibility of medicines and diagnostic products to cure the virus that might be hindered due to patent protections. Many countries might also face difficulty in using the TRIPS flexibilities. Additionally, for those countries lacking sufficient manufacturing capacity, the cumbersome process of Article 31bis of TRIPS is a cause of concern. Praharsh highlighted the issue of vaccine nationalism, given that as per manufacturing deals a large part of world’s population will not receive the vaccine till at least 2022. He pointed to the non ‘user friendly’ nature of Article 31bis for countries without manufacturing capacity. He notes that even a compulsory license would not suffice since trade secrets protections also come in the way. Moreover, effective technology transfer and know how sharing is important for which the developing countries are particularly not protected. This proposal was blocked at the WTO by High Income Countries.
4. IPAB to fix statutory licensing rate for radio broadcast royalties after 10 years
In this very significant development, IPAB passed an interim order maintaining the status quo of the royalty rate for radio broadcasts for statutory licenses under Section 31D of the Copyright Act. Subsequently, IPAB also issued a public notice inviting suggestions from stakeholders regarding fixing the royalty rates. The royalties had last been determined by the now-defunct Copyright Board in 2010, fixing them at a rate of 2% of the net advertisement revenues of the radio organizations from radio business, charged on a pro-rata basis. IPAB’s order fixing the rates, passed yesterday, can be viewed here.]
In February 2020, the Ministry of Corporate affairs came up with the draft Competition (Amendment) Bill, 2020, pursuant to the recommendations of Competition Law Review Committee. Among several other new provisions, the Bill proposed a new Section 4A. This was not a brand-new addition as such, as it extends the similar provision to Abuse of Dominance (AoD) cases that was hitherto applicable to anti-competitive agreements in the form of Section 3(5) as a ‘balancing’ provision. A closer look at the existing Section 3(5) or at the newly proposed Section 4A clarifies that it is not a blanket exemption to IP rights from the application of competition law as such, rather it is a declaration to affirm the right of an IP holder to safeguard her intellectual property. Vikas Kathuria argued on the blog that this seemingly benign declaration, however, may create new problems in the AoD cases related to intellectual property.
6. NDLI published a draft of India’s first copyright guide for Indian libraries
The National Digital Library of India (NDLI) came up with India’s first Copyright Guide for Indian Libraries. The stated objective of NDLI is to educate, enable and empower the youth using quality knowledge and learning resources while harnessing the power of the digital medium. The Guide was created, keeping in mind our current age where new technologies and gatekeepers of knowledge make it difficult for librarians to understand and deal with multiple issues pertaining to copyrights. It is a crisp 20 page document for public review and NDLI had invited feedback on it by 30th September, 2020 via a Google form. Overall, the Guide seems to have been drafted, keeping accessibility in mind. To that effect, it tried to simplify the complicatedly drafted provisions in the Indian Copyright Act pertaining to library exceptions. It purports to be a skeletal explanation of the law as it stands and the rights implicated in the functions of the library. Anupriya responded to some questions posed in the feedback questionnaire on the blog. She also argued that templates and declarations meant to scope permissible and impermissible uses, can contribute to a permissions and clearance culture that inevitably restricts fair dealing.
7. Govt axed Bt cotton licensing royalties paid by Indian seed companies to Bayer
Reuters reported that the Government of India “axed” the royalties that over 45 Indian seed companies had to pay Bayer (which acquired Monsanto) under IP licensing agreements which have been the centre of a massive legal dispute between Monsanto (before its acquisition by Bayer) and Nuziveedu (one of India’s biggest seed companies) for the last five years. For years, the Bt licensing agreements have earned Monsanto a fortune. Prashant wrote that this decision controls not only the retail price of cotton seeds, but also “trait fees” which cover ‘fee for patented technology, “know-how” and other services.’ He noted that though the ‘trait fees’ have consistently fallen over the past three years, its benefit has not been passed on to the farmers. Further, he suggested that the government’s decision may lead to more restrictive IP licensing agreements in the future. Analysing the government’s decision from a trade perspective, he noted the effect of suspension of U.S.’s GSP trading privileges on Indian industries. He concluded that a trade-off should ideally be between farmer incomes and incentivizing companies like Bayer to make their technologies available in India, rather than between profits of Indian seed companies and profits of MNCs.
8. As 15 Asia-Pacific countries signed RCEP, India chose to sit out.
In November 2020, ten south-east Asian countries along with Japan, China, South Korea, Australia and New Zealand signed the Agreement on Regional Comprehensive Economic Partnership (RCEP), making it the world’s largest trade bloc. Initially projected as the alternative to Trans Pacific Partnership, the negotiations for this free trade agreement (FTA) were underway since 2012 and after 31 rounds, the member states finally sealed the deal via a video conference.The RCEP Agreement contains a dedicated chapter on prevention and enforcement of IP rights of the member states. Article 11.8 expressly declares that the Agreement shall not hinder the utilisation of Article 31bis of the TRIPS Agreement. India had withdrawn from the negotiations in November 2019 due to certain concerns. Regardless, RCEP members sent a formal statement showing willingness to commence negotiations with India even after the signing, provided India submits a written intention to accede to the RCEP Agreement. However, it doesn’t seem like India is eager to accede to the Agreement any time soon.
9. Controller General’s Office agreed with a petition for shutting down IPAB
In May 2020, Prashant Reddy and Rahul Bajaj had sent a petition to the Ministry of Commerce, asking it to consider shutting down the Intellectual Property Appellate Board (IPAB). They had argued that not only was the IPAB non-functional for a long time but it was also poorly designed, especially with regard to the post of the ‘technical member’. Rather than continuing with this broken model, they recommended that the existing functions of the IPAB be shifted back to the High Courts and commercial courts. The Ministry of Commerce sent their petition to the Controller General of Patents, Designs and Trademarks, asking for his comments on the petition. The Controller General’s office agreed with most of the contentions in the petition. Prashant noted on the blog that it was rare to see Indian bureaucrats speak in such categorically clear terms, in favour of reform.
10. Report on Non-Personal Data (NPD) Governance Framework released
The Committee of Experts on Non-Personal Data (NPD) Governance Framework, constituted by the Ministry of Electronics and Information Technology released its report on July 12, 2020. The Report purports to be a framework for governance of NPD, meant to grant access to NPD to industry players and the government for overarching public purposes. In order to increase the competitiveness of local and small enterprises and spur innovation, the Report is aimed at mandatory sharing of data to create economic advantages that are currently precluded due to data monopolies of a few dominant players. Anupriya examined on the blog, the government’s eminent domain powers against private entities’ right to IP, that arises in the case of data acquisition. The Committee has now revised the report and is seeking public feedback on it till January 27.
D. Top 10 Other IP Developments
1. Copyright infringement suit filed by academic publishers against Sci-Hub and Libgen
Three major academic publishers Elsevier Ltd. (UK), Wiley India, Wiley Periodicals (USA) and American Chemical Society (USA) have sued the websites ‘Sci-Hub’ and ‘Libgen’ before the Delhi High Court for infringing their copyright in their publications by making such publications available for free on these websites. They have sought for these websites to be blocked and a dynamic injunction issued against them. The matter is pending before the Court and is up for hearing on January 6, and in the meantime based on the defendant’s undertaking, the Court has instructed the defendants not to upload any new material of the plaintiffs.
Nikhil’s three-part post explaining the background of the case, analysing the plaintiffs’ dynamic injunction and the interim injunction plea, and the applicability of the fair dealing and educational use exceptions to the case, was also the most read copyright post on the blog in 2020.
2. Appointment of IPAB Chairperson/ Members
There were a lot of developments regarding appointments at the Intellectual Property Appellate Board (IPAB) last year:
i) In March, the Appointments Committee of the Cabinet (‘ACC’) notified the continuation of Justice (retd) Manmohan Singh as IPAB Chairperson until September 21, 2020.
ii) Then in July, the Indian Drug Manufacturer’s Association sued the Central Government over non-appointment of technical member for patent matters on the IPAB. Subsequently in August itself, the ACC notified the appointment of five technical members to the IPAB, including one for patent and two each for trademarks and copyright.
iii) Thereafter, in the same month the Department for Industry and Internal Trade called for applications for the post of the Chairperson of the IPAB, while an interim application for extension was filed in Supreme Court. The Chairperson’s tenure was further extended till December 31, 2020, by the Supreme Court.
iv) Finally, the most recent development concerning IPAB appointments is that the Supreme Court upheld the constitutional validity of the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020.
3. Govt urged to revoke patent for Gilead’s potential anti-Covid drug Remdesivir
The Cancer Patients Aid Association (CPAA) had written to the Health Ministry and the Pharma Ministry urging them to revoke the Indian patent granted to Gilead’s Remdesivir, at a time where it was thought as a potential COVID-19 cure. The said petition invoked grounds of non-patentability and public interest. Interestingly, the WHO has recently issued a conditional recommendation against the use of Remdesivir for COVID-19 treatment.
4. IPRS’ new tariff scheme for live-streaming of online events and live/disc-jockey performances
The Indian Performing Right Society (IPRS) issued a notice regarding a tariff scheme to be made applicable for live-streaming and live/ disc-jockey performances. Upon receiving backlash from singers, musicians and popular press this scheme was put on hold. Subsequently, it was clarified that the released tariff scheme was only for engagement with stakeholders before its Annual General Meeting, and that it will not be applied unless it is approved.
5. AIDAN challenged Para 32 of Drug (Prices Control) Amendment Order, 2019
All Indian Drug Action Network (AIDAN) filed a petition before the Delhi High Court challenging Paragraph 32 of the Drug (Prices Control) Order 2013, which was amended through the Drug (Prices Control) Amendment Order, 2019. Paragraph 32 creates exemptions from price control, among which is one particular exemption for new drugs under the Patents Act, 1970, for five years from the date of commencement of the drug’s commercial marketing. However, it has been unclear whether this exemption is self-invocatory. As a result, several pharma companies were issued notices by the National Pharmaceutical Pricing Authority’s (NPPA) for relying on Paragraph 32 to exempt themselves from price caps without the authority’s approval, after having been granted patents. Subsequently, companies such as Lupin, Abbot Healthcare, Sun Pharma and Glenmark filed different petitions in High Courts concerning the interpretation of the exemptions granted under Para 32 and whether the same is self-invocatory.
6. India-Pakistan’s dispute over Basmati’s GI registration in the European Union
India had applied for protected geographical indication (PGI) status for Basmati before the European Commission. This application was published in September 2020 seeking objections if any against such registration. Earlier last month, Pakistan filed an opposition to India’s sole ownership of Basmati arguing that Basmati is a joint product of both countries. Interestingly, Basmati is yet to be given the GI status domestically in Pakistan.
7. RTI on Details of Patent Oppositions
Swaraj and Praharsh filed an RTI seeking information about the Annual Reports for 2018-19 and 2019-20 of the Office of Controller General of Patents. Using the response from the RTI and the publicly available reports, they tabulated statistics concerning pre-grant and post-grant oppositions from 2016-17 to 2019-20 which revealed a discrepancy in the numbers.
8. India ranked 40 out of 53 countries in the GIPC IP Index 2020
The 2020 edition of the GIPC IP was released. It ranked India at 40 out of the 53 countries considered by the index. It praised India on a few counts including calling it a “Global leader on targeted administrative incentives for the creation and use of IP assets for SMEs”.
9. Appeal filed before the Supreme Court in a PIL on access to legislations
A PIL was filed before the Delhi High Court seeking a direction from the High Court to mandate the Central Government to make hard copies of legislations available at a reasonable price. It claimed that publication of these laws by private publishers amounted to infringement of government’s copyright in them. The High Court denied to grant this relief and disposed off the petition. The petitioner filed an appeal against the said order before the Supreme Court. The Supreme Court had issued notice to the Union of India but the case has not yet come up for hearing.
10. Reverse engineering of Aarogya Setu mobile app initially prohibited
The terms of service of the Government’s Covid-19 tracking mobile app Aarogya Setu App imposed a blanket prohibition on reverse engineering, the legal enforceability of which was questioned by Aparajita in light of the fair use rights of users under Section 52 of the Copyright Act, 1957. This prohibition was, however, subsequently lifted in an update to the terms of service of the app.