As I conclude my summer vacation at home, it’s the perfect moment to bring the series I started over a year ago to its conclusion …
Welcome to the climactic finale of our “Sifting Through SpicyIP Pages” series! Yes, it’s the 12th and final post, culminating this year-long time-travel-ish journey. I began the series with a sense of Sankofa—aiming to fetch what was left behind (if any) and see how we can take things forward. We aimed to explore SpicyIP’s history, which began in October 2005, ‘from the sprawling cornfields of Illinois, Champaign,’ by our beloved Professor Shamnad Basheer. And to see how and how far we have traveled over the years. Each post shares 5 stories on average, totaling 60 topics in 12 posts. While I hope for more, at the least, these posts will serve as mini-research guides. Wherever possible I could, I put these topics into a narrative showing their linear development. For those who wish to catch up, all previous posts from June to April are just a click away under SpicyIP Flashbacks. Without further ado, here’s what I found in the pages of “Mays” on SpicyIP:
IP and CSIR: Prashant Reddy, renowned for his incisive RTI-based posts (e.g. see this latest post), penned a potent piece in 2012— examining the controversial past and uncertain future of the Council of Scientific and Industrial Research (CSIR). While I have previously touched on CSIR in relation to the Indian “Bayh-Dole” Act (see the Julys’ Sift), today’s story brings, so I hope, a comprehensive round-up of CSIR’s coverage over the last few decades. Among the earlier discussions, we covered CSIR’s Open Source Drug Discovery Programme and featured an insightful interview with Dr. Samir Brahmachari, then Director General of CSIR. Some of the most telling stories on the topic revolve around CSIR’s troubling silence on royalties earned from licensing its patents—an issue Prashant addressed extensively in his posts (see e.g., see here, and here). Once upon a time, despite initially agreeing to disclose royalty data under the RTI, CSIR later backtracked, citing exemptions under the RTI Act. Even more startling was a revelation that CSIR spent a staggering Rs. 74.24 crore on securing patents in India and abroad, and refused to disclose its revenues from patent licensing.
For a one-stop overview of transparency issues surrounding CSIR, Prashant’s post aptly titled “Why is it so difficult for CSIR to be ‘transparent’?” is useful. See also here. Another hot aspect on the topic was the elusive MoU between the Indian Patent Office (IPO) and CSIR, which led to concerns about conflicts arising from outsourcing Indian patent searches to CSIR—a matter well-discussed here and here. Finally, the ‘access agreements’ between CSIR and the EPO, JPO, and USPTO for the Traditional Knowledge Digital Library (TKDL) catapulted some solid questions.
Overall, with layers of intrigue, secrecy, and questionable practices, the complex relationship between IP law, CSIR, and the ever-present quest for accountability is worth remembering when thinking of the larger scheme of IP things.
Triumphs and Trials of TKDL: While revisiting the CSIR coverage, I saw Prashant’s post requesting details from CSIR on search reports Traditional Knowledge Digital Library (TKDL) submitted to the EPO and IPO under their access agreements. This kindled my curiosity to explore the SpicyIP discussions on the topic. And here we are! The discussion appears to have begun with Prashant’s post on accessing ‘free access’ agreements entered into between CSIR and the EPO, JPO & USPTO for the right to use the TKDL. A very crucial discussion on this front began with Prashant’s post pondering whether TKDL is a ‘confidential database,’ and compliant with Indian copyright law, which it apparently was not! From this, he went on to problematize the absurdity of— if and how the Indian Patent Office lacks the ‘free access’ arrangements granted to foreign IP offices.
Underscoring the irony, he observed that some of the patents TKDL opposed in the U.S. and Europe were also filed in India and may proceed to grant—since TKDL doesn’t offer the same services to the Indian Patent Office as it does to the USPTO and EPO. The good thing is that this reporting got traction. And later on, the problematic patent application that Prashant highlighted in the post calling out the aforementioned absurdity was revoked. Some pertinent posts are here, here, and here. Mahima Rathi’s post “Unveiling the Link: CSIR and Indian Intellectual Property Office,” will help you understand the CSIR-IPO relationship better. For a thorough understanding of TKDL’s trials and triumphs, however, Prashant’s call for an ‘independent’ review of the project is a must-read. Similarly, worth highlighting are Balaji Subramanian’s posts questioning the fallacy of a Closed-Access TKDL and highlighting the structural and legal critiques of the TKDL. More recently, the discussion on TKDL came up after Laila Impex’s application relating to an herbal composition was opposed by CSIR’s TKDL unit and after the advent of the New WIPO Genetic. These issues underscore the ongoing relevance of this debate, making us wonder whether TKDL is a true success or just smoke and mirrors.
IP, trade, and Customs: As I trawled through the past posts, a 2009 post caught my attention: ‘twas Prof. Basheer’s post discussing Indian customs authorities’ order against Ramkumar in a case involving a patented dual SIM technology. Those who have followed the blog for a long time would know that it was not just a legal skirmish but involved several layers and implications. See e.g., here, here, and here. Another interesting issue that was going on at that time was Nokia v HMRC where the UK court ruled that “in-transit” goods not intended for the local market could not be seized. This decision could impact Indian drug companies facing similar seizures in Europe, though its application to patent disputes remained open to discussion. The background to “seizures in Europe” here was the seizure of Dr. Reddy’s drugs by Dutch authorities during transit led to a WTO dispute between India and the EU, ultimately resolved through an agreement. See here, and here. The CJEU ruling in India’s favor only deepened the significance of this issue. These posts contain some spicy details and discussions that I resist reproducing here but recommend checking. (One aspect that isn’t exactly connected to the issue but is worth highlighting is in Prashant’s RTI post here asking: why doesn’t the Indian government engage more Indian academics for advisory roles on IP and WTO issues instead of relying on foreign experts?)
Closer to home, analysis of cases like the customs’ refusal to enforce Bharat Bhogilal Patel’s patents raised thoughtful debates on patent law and customs, in 1970. There, the discussion was also on the lawfulness for Examiners to grant Patents under the Patents Act, 1970. See also here. Equally interesting were the Delhi High Court’s interventions when customs authorities overreached its jurisdiction in the L.G. Electronics case (see also here) and the Kingtech Electronics where it stayed the order of the Commissioner of Customs restricting the clearance of consignments. Before I conclude this story, let me point you to Prashant’s other puissant post called “A face-off in the offing between the Delhi High Court and the Customs Board?”, observing a telling trend: the responses by Mr. Satish Kumar Reddy, Director at the CBED, to rulings of the Delhi High Court’s Justice Manmohan Singh.
On and all, this story is a timely reminder that IP at the borders is more than just a legal issue—it’s where global commerce, sovereignty, and strategy converge.
Comparative Advertising Coverage: As I read this decade-old post on comparative advertising, centered around the SAFFOLA vs. FORTUNE battle, I thought of revisiting the two-decade conversation on this ever-relevant topic. One of the earliest notable pieces is by Mihir, titled Commercial Disparagement: A New Approach to Puffing?, where the Madras High Court made a surprising remark about consumer law. It said that “[t]he recognition of this right (to puff) of the producers, would be to de-recognise the rights of consumers guaranteed under the Consumer Protection Act, 1986.” Hmm… only consumers, whiter competitors, and proprietor’s interests? Sounds a tad myopic. No? Check Mihir’s post for more. Anyway, the idea of comparative advertisements has been discussed in other cases like Rin vs. Tide, Horlicks vs. Complan, The Hindu and The Times of India, Reckitt Benckiser v. Hindustan Lever Limited (see also here and here), and Colgate vs HUL. Generally, the benchmark for comparative advertising hinges on the “average consumer” test. Yet, more nuanced cases, like Colgate vs. HUL have complicated this standard.
Balu Nair’s Constitutionalisation of Private Law Disputes presents a telling take on the issue, analyzing the Horlicks vs. Heinz India case. For a contemporary take, a must-read is an insightful analysis of men’s fairness creams and generic disparagement, and Swaraj and Praharsh’s titillatingly titled post “To Mock the Corona Word: Disparaging During the Time of Crisis ” which revisits how this complex area of law has evolved. Talking of this topic, one cannot miss thinking of freedom of expression’s overlap which is well-exemplified through the Zydus Wellness V. Dabur and Harpic v. Domex. Similarly, no reflection on this topic would be complete without mentioning the quirky case Bearded Chokra vs. Parachute. SpicyIP carried an interesting discussion on the case from two of our senior bloggers offering differing views namely, Latha Nair (see here, here, and here) and Prashant Reddy (here, and here). Just one post before you go – Ishant Jain’s post Smells like Luxury, Does it Cost a Trademark Battle?! Okay.
On Patent Linkage: While I generally steer clear of the patent world—admittedly, it’s not my forte—I couldn’t resist reading Prashant’s thought-provoking post titled “Why is the DCGI trying to implement a patent-registration linkage system in India?” The issue’s seriousness intrigued me and I decided to dive deeper into the patent linkage debate, spanning two decades. In that post, as Prashant discussed, Dr. Surinder Singh, the then Drug Controller General of India (DCGI), publicly announced a significant shift in policy— linking drug regulatory approvals to the patent system. This means that generic drugs couldn’t receive regulatory approval if the original drug was still under patent protection—a policy that would prolong monopolies, betide costly legal battles, and may even create misinformation against generics. Fortunately, this proposal never gained an official nod after the DCGI retracted the statement. However, pharmaceutical companies have continued trying to push patent linkage through court cases like Bayer vs. Cipla, where Bayer’s attempts were thwarted by the Delhi High Court, even slapping fines (see also here). The case even reached the Supreme Court, but the outcome remained unfavorable for Bayer. More recently, patent linkage resurfaced during the 2015 Indo-US IP negotiations, showing that this is far from a settled issue. For a nuanced alternative to the controversial policy, don’t miss Prof. Basheer’s Middle Path Solution to Drug Patent Linkage Controversy.
And with that, we close the chapter on Mays—and the series! I’m sure there are some hidden gems I couldn’t uncover from each month, so feel free to share any I might have missed in the comments. A reminder that every ending brings a new beginning. So fret not, take it just a pause before something even more exciting drops soon. Until then, salam, sayonara, and see you (t)here! Stay tuned.
A big thanks to Swaraj Barooah for encouraging me to do this series and helping me craft the posts for the series. Looking forward to your comments and feedback.