SpicyIP, in its over 17 years of existence, has discussed a substantial part of Indian IP’s modern evolution. From Prof. Basheer’s first SpicyIP post in October 2005, ‘from the sprawling corn fields of Illinois, Champaign’, till now, July 2023, at 17 years and 8 months old, the blog is nearing the age of legal majority! Another interesting number – in approximately 6400 days of its existence, there have been about 6200 blog posts – averaging almost a blogpost a day for close to 18 years! The year 2005 was also, of course, the year that TRIPS provisions on pharmaceutical products and agricultural chemicals came into force in India in the form of various amendments up till 2005. As such, the blog has been at a unique vantage point, tracing and grappling with the highs and the lows of the Indian IP ecosystem as it has become more mainstream. Of course, none of this would’ve been possible without the valuable contributions and engagement by our readers over all these years, and a huge thank you to everyone, for this. So, how exactly have things changed (or have they?) in these last several years? We thought we’d find out by digging into the past and seeing for ourselves! In this new monthly series, writers on the blog will dive into posts that are at least around a decade old and see how those developments have matured over the years!
Journey Through “June” on SpicyIP (2005 – 2023)
Lokesh Vyas
Living in history among other things allows us to actively appraise the collective (social-legal-cultural-political) consciousness of our present, comprehend the causes that constitute it, and in this process, help us participate in shaping its future. Perhaps, a better word to describe this is to say that one has a sense of “Sankofa” – a word in the Twi language of Ghana, introduced to me by a dear Ethiopian friend Luna. Sankofa literally means that “it is not taboo to fetch what is at risk of being left behind.” While we have traversed close to 2 decades, it is fun and fruitful to recollect the past events and see where they have led us and will lead us in the future. In the first post of this new SpicyIP series, I broach some old discussions and posts from the month of “June” (from 2005-2013) and touch upon what has or has not changed in these years. Please note that my engagement with previous posts is limited and we’d highly encourage our readers to join in with any thoughts they might have.
So with a sense of Sankofa, here I go:
- P.H. Kurian’s Trail of Transparency and Road Ahead: Since the June 2011’s post about the resignation of P.H. Kurian, the Patent Office’s “Knight in Shining Armour” as Prashant called him then, not a lot has changed. As Prashant notes, when Mr. Kurian was in charge of affairs, he overlooked the digitization of records, streamlined the procedure for grants of patents and trademarks, and revamped the patent agent examination. In the same year, missing files at the IPO was also an issue for which a petition was filed in 2012. In a decade since then, we have seen concealed consultation on copyright amendments, and we have seen the registration of a Copyright Society for Sound Recordings albeit with some questions of transparency left unanswered. We also have had other interesting situations, such as the scrapping of the IPAB but without any of its orders being kept publicly available (here’s a backup copy), and the Indian government’s denial of access to its Covid-19 vaccine collaboration agreements (See also Prashant’s recent post more broadly on this). Meanwhile, there also came a problematic proposal from the Trade Marks Registry seeking to categorize documents in a way that could restrict access to them. Similarly, RTIs filed by Prashant signaled tardy record-keeping practices at the IPO regarding patent and trademark oppositions and rectifications. However, the trail of changes fostering transparency, left by Mr Kurian has not completely waned. Indeed there have been some commendable efforts especially very recently. The Live Streaming and Recording of Court Proceedings Rules of the High Court of Delhi, 2022 (here’s its Copyright Quandary) and the Open House Sessions of the Office of Controller General of Patents, Designs and Trade Marks (CGPDTM) came to my mind first. The recent Intellectual Property Division Annual Report by Delhi High Court is another notable stride toward transparency. Nonetheless, the road is long, the destination is far, and the journey is incomplete without sailing the turbulent waters.
- Authors and Copyright Societies: 2023 has been a great year for the authors of the underlying works and the custodians of their rights. Recently, two important orders (IPRS vs Rajasthan Patrika and RDB v. HarperCollins) protecting the rights of authors of underlying works in music and cinematography works were passed. Out of the court, an agreement between the IMI and ISRA concerning royalties sharing was also in the news. However, our long time readers will recall that things haven’t been this merry. In June 2011, IPRS, one of the copyright societies, was investigated on the orders of Minister Kapil Sibal, Copyright societies and their (mal-)functioning constitute an important part of India’s Copyright history, as Sumathi and Prashant, have nicely accounted in their book, “Copy, Create and Disrupt”. Prashant’s incisive posts (too many to link) investigating the role of IPRS and non-payment of royalties is a sad yet important lesson in India’s copyright landscape, which would be later taken into account in Copyright Rules, 2021 as Nikhil noted here. (See the summary of the IPRS issue here). And speaking of IPRS, royalties, and payments, the Fortunes of Indian Copyright Societies are worth mulling over. Nonetheless, in over a decade’s duration, things have changed: we got the landmark 2012 Copyright amendment, both a celebrated and chagrined episode of Indian Copyright history and something which has been circumvented and even challenged by film producers, music labels (here and here) and book publishers (IRRO). Among other developments are the formation of M/s Cinefil Producers Performance Limited, a new copyright society for cinematograph work, the revival of Phonographic Performance Limited’s (PPL) application for registration as a copyright society, and the setting aside of the registration of Recorded Music Performance Limited (RMPL) as a copyright society for sound recordings. (Here, PPL/RMPL saga here, and here is also worth poring over).
- Change in Patent and Trademark Litigation: In 2011, Prashant penned a post bemoaning that India’s patents & trademarks adjudication mechanism has a multiplicity of forums that can revoke both patents and trademarks. The post asked a question: why did the law provide for three forums (IPAB, Patent Office/Registrar of Trademark, Courts) where a patent/trademark can be revoked/rectified and adjudicated? While we may not have the complete answer to Prashant’s question even after a decade passed, IP litigation has definitely taken a new turn – the IPAB is scrapped and now Intellectual Property Divisions (IPD) have started being established, first at Delhi High Court and now Madras High Court, with Calcutta High Court in the queue. Speaking of specialized courts, Prof. Basheer’s 2010 post “Pondering the “Legal” Competence of the IPAB” deserves a special mention which recommended having special IP benches at high courts, just like IPD. This also reminds me of his 2016’s three-part post on Specialized IP Courts, see Part 1, Part II, and Part III. Similarly, Justice (Retd.) Prabha Sridevan also envisaged a similar system to IPD in her 2013 keynote speech and later in a guest post here. Meanwhile, the Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance 2021 emerged, transferring IPAB’s authority over both ongoing and new cases related to patents, trademarks, geographical indications (GI), and plant varieties to the High Courts. On the other hand, copyright matters were transferred to the Commercial Courts. Talking about Commercial Courts, the issue over pecuniary jurisdiction under Commercial Courts Bill, 2015 should not go unnoticed (See Aparajita’s posts here and here). Hopefully, with time, we’ll see a similar progression in administrative uniformity with regard to the functioning of the Indian IP Offices, which are in dire need of reform.
- FTAs, Flexibilities, and International IP: There was also a bit of International IP in the mix of June(s) past. Prof. Basheer’s 2011 post calling FTA’s and TRIPS Flexibilities an ‘oxymoronic safeguard’ comes to mind. As he noted then “The trend towards TRIPS-plus obligations in FTAs has led to changes in the perception of TRIPS: initially viewed by developing countries as serving primarily the interests of the IP exporting industries in the developed world, TRIPS is now often acknowledged for the flexibilities it offers.” Between this week and that year, a lot has come and gone. If you ask, what ‘came’ in these years, I’d say among other things the long-due Agreement on Regional Comprehensive Economic Partnership (RCEP) making the world’s largest trade bloc has become finalized, though India chose to step out. And at the ‘gone’ front, TRIPS waiver and the lack of utility of flexibilities even in the Covid emergency are perhaps the most obvious examples that come to mind. What a jabby journey it had – from an IP Waiver to a Compulsory Licensing Leeway (?) In this light, stories around leaked drafts also ought to be not lost on our readers, and the Leaked Draft of IP Chapter of India UK FTA with TRIPS-plus norms needs some highlighting. Also, with so many FTA negotiations between India and other countries scheduled to take place in the future, we are surely up for interesting times ahead.
- Presumption of validity of (an Indian) patent: In June 2011, Rajiv wrote a post pondering upon the Presumption of validity of (an Indian) patent, wondering why “the Indian patent law does not provide for a presumption of validity of a patent, while Indian trademark law considers registration as prima facie valid.” As we fast forward to June 2023, we find that the question remains an open one. Although there have existed gray areas like the six-year rule (presuming some inventions valid which have crossed six-year protection), the patentability still does not result in the presumption of validity. A recent example is Boehringer v. Vee Excel Drugs, decided on 29th March 2023. Tellingly, this has worked a bit differently in the Design Act, 2000 which though also doesn’t have a validity presumption; however, registration of a design can be prima facie proof of validity in recent case law. (See here).
- Patent and Statements of Working: The (Non-)Working of Patents has been one of the most highlighted issues on SpicyIP. In 2013, Prashant penned a post announcing the publication of all ‘Statements of Working’ by the patent office. Then, the Patent Office issued a public notice in 2013 directing all patentees and license holders to submit Form 27 applications for each calendar year. Later, in 2015, Prof. Basheer filed a PIL in the Delhi High Court requesting the court “to order the government to fully enforce patent working norms and take action (impose penalties etc.) against errant patentees.” After the Court’s direction to make the required amendments to the patent working provisions within strict timelines, Patent Office invited comments from stakeholders on Form 27 which was later also published by it. Around the same time, however, the Government of India also released the Draft Patent (Amendment) Rules, 2015 which hardly addressed the defects in the then Form 27. Later, Draft Patent (Amendment) Rules, 2019 and 2020 also came but they appeared to be in the direction of diluting these disclosure requirements. (see the comparison chart here). In all these years, the US Govt and Big Pharma never left this terrain unattacked. Thus, worries over the working of patents never waned. The recent Jan Vishwas (Amendment of Provisions) Bill, 2022 further worsens this by proposing a ten-fold reduction in penalty for non-compliance with disclosure requirements.
Needless to state, between what came and gone during these years, some may have even lost. Our readers who have long read and engaged on the blog may be aware of those “lost” items/events, please feel free to drop mention of these in the comments below! Till next time, when we sift through the pages for a look at past Julys on SpicyIP.
Thanks to Swaraj Barooah and Praharsh Gour for their substantial comments and inputs on the draft.