Namaskar … I am back with the “Sifting Through SpicyIP Pages” series! Apologies for the long delay; life got busier for some undesirable reasons. But things have finally gotten better, and this blogger is back. Mind you, I haven’t returned with just one post. Nope! I did two rounds this time – March and April to compensate for the wait. This is the “Marchs” Sift; the “Aprils” edition is here. As we dive into the 10th post of this series since June 2023, don’t forget to check out the previously explored pages of Junes, Julys, Augusts, Septembers, Octobers, November, Decembers, Januarys, and Februarys. Some stories that I have shared include the South Asian Basmati Brawls, the Indian “Bayh Dole” Bill, When IPO made the TM database Open, The Recording of Court Proceedings in 2008, and the Origin and Turns of the Ad-Words cases. If you missed any of these, just click SpicyIP Flashbacks and select the month to catch up.
Without further ado, here’s what I found in the Marchs:
Section 3(d), Patents, Policies, and Public Interest: Checking SpicyIP’s March pages, I chanced upon Prof. Basheer’s 2006 post discussing the First Mailbox Opposition (GLEEVEC) and commenting on its unreasonably quick disposal. The reasons for its rejection were Section 3(d) – one of the most contested topics and provisions on the blog over the years. First thing first, what’s Sectio 3(d) of the Patent Act, 2000. Well … as often said, Section 3 (d) is a unique Indian provision that bars the “ever-greening” of patents i.e., bars patentability of ‘the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance.’ The topic is so discussed so much that I am at a loss to determine what to underscore, so I will select the topical posts. (Please chip in important posts that I fail to highlight)
The initial discussions on the topic include the Differential Patentability Standard for Essential Drugs, and the detailed post analyzing the USIBC Report on Incremental Innovation. In 2009, Prof. Basheer also discussed the “Efficacy” of Section 3(d) in the context of Patent Oppositions in India here and here. Relatively more recently, Namratha Murugeshan also discussed DHC’s holding of Identifying ‘Known Substance’ as a Necessity for Section 3(d) Objections (for more on patent oppositions, See the sift of “Septembers”). For some detailed discussions, Suchita Saigal’s post called To be or not to be 3(d), Rajiv Choudhry’s A Numerical Quantifier for Section 3(d)?, Prashant’s Pages from History post, and Spadika post sharing Justice VR Krishna Iyer’s Legacy and 3(d). To see the provision’s journey since its advent, check Prof. Basheer’s post here, and for a more recent take, check Amit Tailor’s post here. Speaking of this topic, the Novartis case, where Prof. Basheer made an academic intervention, shouldn’t be missed. In 2018 too, Novartis’s application was rejected for the want of S. 3(d). Most recently, Shivam Kaushik penned a well-worded post on DHC’s Novartis Moment & Indian Patent Law’s Déjà Vu.
Okay, let’s end this seemingly unending point by highlighting a larger-than-law type post called “Trumping Trips: Indian Patent Proficiency and the Evolution of an Evergreening Enigma” and Aparajita Lath’s post discussing “Is Messenger RNA Patent-Eligible?” The international pressure to repeal/rid 3(d) isn’t unheard of, in that regard this post by Swaraj on the US and Switzerland’s potential “non-violation” complaint”, stands relevant.
Unending Compulsory Licensing (“CL”) Discussion: Reading SpicyIP old pages, I found this decade-old post called Compulsory Licensing is Not a Bad Word! discussing India’s first Compulsory License (“CL”). True to its title, as the post nicely puts it, “Given that “compulsory licensing” has acquired rather malignant overtones in several circles (pun intended), it was only appropriate that the judge [i.e., Justice Prabha Sridevan] set the tone by beginning with this sentiment that will no doubt reverberate in the hallowed halls of patent jurisprudence for several years to come.” Well … although it oughtn’t be so, CL has been a bad word for many, especially in the polarised IP world of pro vs anti-IP. There’s a reason why it’s only once in the life of Indian patent law that a CL was granted, check Prof. Basheer’s post discussing Bayer vs Natco where CL was granted for Bayer’s patented anti-cancer drug (Nexavar). To know more, see this eyewitness account of India’s first CL appeal before the IPAB (Part I, and Part II).
For some of the initial discussions on the topic, check Prof. Basheer’s posts on India’s First “Doha Style” Compulsory License, Entertainment Network Limited v. Super Cassettes Industries (see here), and a very curious post called “Copyright Band-its and Public Interest: A Tainted Compulsory Licensing Decision? among others. But given the uber rarity CL granting in patent law, you can validly wonder why there aren’t any takers for compulsory licenses. Sai Vinod’s post can get you some intellectual relief. See also, Prashant’s post about the need for an IP policy to build a strategic stockpile for pandemics. However, it’s also worth noting that you don’t always need to grant CL this traditional way of applying for the same, sometimes, there can be inadvertent CLs as well. However, they are more common in the USA than in India. Read Prof. Basheer’s post Compulsory Licensing: Pot Vs Kettle and this post on Thai compulsory licensing to understand what I mean. That’s it. Let’s shift to the next story now.
Matters of Madrid Protocol: While diving into the SpicyIP pages, Shwetasree Majumder’s 2007 post about India giving a nod to the Madrid Protocol caught my attention. You may know that India finally submitted its instrument of succession in 2013. But what’s interesting about this protocol is its simplicity: trademark owners can protect their trademarks in all member countries with a single application. The significance of this system became evident (to me, at least) through Mathews’ comprehensive two-part series (here and here) —detailing procedural frameworks and useful considerations for leveraging the Madrid System effectively. Whereas, Tasneem Shariff’s FAQs on the India-Madrid Protocol and Spadika Jayaraj’s insights on guidelines for functioning under the protocol further enrich our understanding. The adoption journey of the Madrid Protocol in India is an interesting tale on its own. Check Prashant’s detailed post and Ankit Prakash’s post. Speaking of the International System, the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration shouldn’t be missed. We have carried some notable posts on this topic, e.g., see Latha Nair’s post here, and Kiran George’s two-part posts, here and here.
That’s it from my end about this story. Please share if I missed something.
“Public Interest” in IP: Parsing past posts, I came across Prof. Basheer’s 2008 post called “Roche vs CIPLA: ‘Public Interest’ Imported into Indian Jurisprudence.” Comparing Indian and US injunction jurisprudence, the post appreciates Justice Ravindra Bhat’s innovative incorporation of “public interest” into the balance of convenience/irreparable hardship test. While public interest has been a factor in nearly all our posts, this one nudged me Though public interest has been a recurring theme in many of our discussions, this post prompted me to explore more explicit discussions on “public interest” within SpicyIP articles.
To start, Dr. Henning Grosse Ruse-Khan’s enlightening post, “Policy Space in TRIPS,” caught my attention for it offers a comparison of the policy space available for domestic public interest measures under the three core areas of WTO regulation: TRIPS, GATT, and GATS. Additionally, Justice Prabha Sridevan’s keynote address, “Life of P.I.” (P.I. = Public Interest) adds another valuable perspective to this discourse. While I won’t delve deeply into the public interest aspect of injunctions —thanks to Swaraj and Praharsh for summarizing India’s interim injunction landscape–I must highlight Adarsh Ramanujan’s, Victor Vaibhav Tandon and Devvrat Joshi’s, as well as Swaraj and Varsha‘s pointed posts on the public interest element in patent infringement cases. Beyond injunctions, my post arguing that a PhD thesis is a public document as per UGC guidelines might interest you. Okay, this is it. Needless to say, almost every post on SpicyIP touches upon the public interest in some manner, but the ones highlighted here underscore its critical role in IP discussions. Notably, speaking of public interest, I cannot let Prof. Basheer’s public interest interventions go unmentioned.
And that concludes my reflections. But before I start the next story, I recommend a fun read: an imaginative poetic conversation between personified ‘intellectual property’ and ‘public interest’.
Ex Parte Injunctions: I know I’m wading into familiar waters, but this topic is too compelling to ignore. This idea came after coming across a critique by Prof. Basheer on the increasing tendency of courts to issue ex-parte injunctions—decisions made without hearing the opposing side—in highly technical patent cases. This issue, it seems, remains relevant even after a decade and a half, as evidenced by Surabhi, Aarav, and Nikhil. As I see, the issue has consistently attracted attention on the blog, with notable discussions here, here, and here. However, there have been instances where courts have denied or decried them, sometimes even setting out guidelines, as discussed by Shan, Prashant, Tejaswini (see also), Mathews, and Thomas. Also, see here.
But despite these strides, one burning question lingers: why are ex-parte injunctions still all the rage? What’s needed to ensure they aren’t handed out easily? Could we, as Prof. Basheer proposed, skip the interim injunction phase altogether and move directly to trial? Perhaps. Perhaps not. It’s a question that demands our continued contemplation. But before you go, do check Roshan’s post discussing whether sending a cease-and-desist notice could impact our chances of securing an ex parte ad interim injunction.
Okay, that’s about it for this sift. See you in the next post.