STRETCHING THE WRONG WAY!! METAPHYSICAL MUSINGS ON THE YOGA--PATENT CONTROVERSY

The latest move by the government of India “to lodge its protest against yoga-related patents issued by the US Patents & Trademarks Office” prompted a number of emails to me this morning. Some even went to extent of suggesting: “Surely, if the government is taking this up, there must be some merit in this case”.

If you really want to believe that a naked emperor is adorned with the finest clothes, be my guest!! It’s all a matter of perception anyway, and as our good old sages rightly intuited: the world is nothing but “Maya”-- an illusion!!

Metaphysical musings aside, given the fact that governmental interventions in matters of this sort cost time and money (tax payers, of course), I think it’s important to think through these issues carefully and not fall prey to a trigger happy attitude. Shwetasree did an excellent post reflecting on this constant confusion between “patents” and “copyrights” and this tendency to force emotional rhetoric down the throats of unsuspecting members of the public.

In the wake of complaints that SpicyIP only caters to IP aficionados, I’ve tried to present the issues in a simple Q/A format below. A special thanks to my friend, Rohan George, an excellent journalist with “Down to Earth” for highlighting the utility of such a format to me.

1. Has the USPTO granted any patents on yoga asanas?

No. I searched the USPTO database and couldn’t find a single patent that claims any of the yoga asanas. It’s highly amusing therefore to hear a government official state lament:

"It's ridiculous to even think that an asana which has been practised for several years can be patented just because they think it is different. They have not been looking at the digital library,"

Well, good sir, they’re going to ask you to take a look at the USPTO database before venturing into your digital library!

2. Are there any patents related to yoga at all?

Yes, a search of the USPTO database reveals 166 Yoga related patents. However, most of them relate to yoga related props and accessories (and some of them only mention the term “yoga” in passing). Examples include:

i) Device and Kit for Body Stretching
ii) Yoga Grip Block
iii) Yoga Mat Carrier
iv) Yoga Socks

3. Do these patents matter?

A patent is granted to any invention that is “new”, “inventive” and “useful”. Upon grant, a patent provides the exclusive right make, use and sell the invention in question. Given this fact, do we have objections to any “accessory” related patents that meet the patentability criteria spelt out above?

I guess not, since they don’t lay claims on our “timeless” asanas –rather, they cater to what Ayesha had earlier referred to as “karma capitalism”—a world where yoga has become more of a fashion statement and less of a spiritual endeavour. In other words, Suketu Mehta who was concerned about his father performing Sirsasana in the wake of these “accessory” monopolies need not worry, unless his father insists on standing on his heard whilst at the same time, wearing the Yoga Socks.

4. If there are no patents on yoga asanas but only on the props/accessories, why is there so much of a fuss?

I’m not entirely sure—it probably has to do with the fact that such emotional appeals are fashionable today. Those that have been following this thread will know that this controversy has its roots in our famed “hot” guru Bikram claiming copyrights over his 26 sequence “sauna” room Yoga. I’m also guessing that some part of all this fuss (or tamasha, to use an Indian term) sprang from Suketu Mehta’s famed editorial that made its rounds in almost all the IP related listservs that I know of. I advised Suketu to stick to fiction when I first reacted to his NY Times piece—and now the advise turns to a deep imploration—as he has in many ways caused a considerable waste of my valuable time (and I’m sure of many others who are tired of dealing with this constant play on emotional rhetoric).

5. Where does Bikram Choudhary and the copyrighting of “hot yoga” poses fit into all of this?

If at all Yoga fans and guardians of Indian heritage need to be concerned, it’s with the copyrighting of Yoga sequences by Bikram Choudhury. Of course, this copyright only covers the exact 26 sequence step allegedly distilled out of the ancient scriptures by Bikram, to be performed in a “hot” environment. It does not prevent you from doing the asanas in any other sequence in a not so hot environment. More importantly, such a copyright may be contestable: As I noted in an earlier posting:

"… even under the most liberal IP standards that the US has now come to represent, you could still run a claim that yoga sequences are not copyrightable, since they are predominantly “functional”. And if the US is serious about “precedents” and respecting the classic “idea expression” dichotomy laid down in Baker vs Selden, you’re likely to succeed. The Patry Copyright Blog, by William Patry, Senior Copyright Counsel, Google Inc, elucidates this point quite well and also cites to 2 law review articles on this theme.”

The copyright issue is a complex one and the “real” issue here--- however, there are strategic ways of dealing with this, which the government or any interested party ought to explore. But unless we identify the correct issue, we may be barking up the wrong tree (or in the context of Yoga, breathing up the wrong nostril OR stretching the wrong way).

6. Any final pearls of wisdom?

Yoga in many ways is about “breath”—so lets take some deep breaths here, calm our minds and explore these issues in a sensible way.

As the noted Yoga maestro, BKS Iyengar, once remarked “Yoga teaches us to cure what need not be endured and endure what cannot be cured”.

I’m hoping that “ignorance” is something that can be cured. Else, we may have no choice but to endure it.

Postscript to A dash of yoga...

Turns out I was wrong and Michael Moore had best pan his camera on this side of the world...

Today's Times of India (Front Page) reads:

India to protest grant of yoga patents by US
30 May, 2007, Sidhartha/TIMES NEWS NETWORK

NEW DELHI: The Indian government has decided to lodge its protest against yoga-related patents issued by the US Patents & Trademarks Office.

While the health ministry has decided to take up the issue directly with USPTO, the commerce department is writing to the US Trade Representative against what it sees as a violation of rights over traditional knowledge.

If the move fails to impress USPTO, government is prepared for a legal battle to get the patents and trademarks vacated.

Officials said government was of the opinion that USPTO has been careless in granting patents and trademarks in matters related to traditional knowledge.

While details of a counter-offensive by government are still being worked out, sources indicated that a protest was the first line of attack. There is a digital traditional-knowledge library, which has enough reference material, and a proper search should be done before USPTO grants a patent, India is telling the US authorities.

US-based Bikram Choudhury has applied for a patent of yoga practised in a steam-room. USPTO is learnt to have issued 150 yoga-related copyrights, 124 trademarks on yoga accessories and 2,315 yoga trademarks so far.

"It's ridiculous to even think that an asana which has been practised for several years can be patented just because they think it is different. They have not been looking at the digital library," said an official.

I GIVE UP!!!

A dash of yoga and a whole lot of confusion

The recent spate of posts on the now-dormant-now-alive issue of Bikram Yoga and the copyright battle in the US, especially Shamnad's piece on the Suketu Mehta op-ed brings a related though slightly tangential issue to mind. One that Shamnad once described as the "doctrinal confusion" issue - albeit in a different context.

I've seen this repeatedly in the Indian media. A tendency to confuse copyrights and patents and use both interchangeably. And it often does not stop there. It extends more often than not to the law itself and the alleged "simplification" of legalese by reporters, ostensibly to interpret legal jargon and make it comprehensible for the "lay person". And the "lay person" who often than not either for lack of access to the relevant background material or for a preference for a bullet-point summary of world issues ends up forming crucial opinions on the basis of this distilled and often incorrect representation of a legal controversy by reporters.

And the result? More often than not, the real issue is lost sight of on account of this spate of irresponsible and trigger-happy reporting.

Consider the piece below from the 23rd May issue of the Delhi Times, a supplement that accompanies the Times of India.

I've reproduced the article as I thought it may be worth spending a little time looking at whats wrong with it.

Patenting Yoga: The issue steams up

He’s called the bad boy of yoga by some in the US media. Bikram Choudhury, who migrated to the US several years ago, ostensibly on the invitation of former US prez Richard Nixon, is definitely in the big league. The man claims to have taught yoga to several Hollywood celebrities. Now, Choudhury is in the news for having applied for a patent on his form of yoga. This entails doing yoga in a steam room which Choudhury calls, ‘Bikram’s torture chamber’. Earlier, in 2002, Bikram had successfully obtained copyright to his style of yoga – for 26 poses and two breathing exercises.

Despite protests by a group of teachers in 2002 that yoga is not anyone’s personal domain, in 2005, a US federal judge ruled that Bikram’s copyright was legitimate and enforceable. Judge Phyllis Hamilton’s ruling said that you can get a copyright on a “compilation of information that’s in the public domain, as long as it’s assembled in a sufficiently creative fashion.”

And, it is learnt that the US Patent and Trademark office has reportedly issued 150 yoga related copyrights, 134 trademarks on yoga accessories and 2,315 yoga trademarks.

Yoga experts and practitioners here are livid about this. Says Hari Singh Bhupesh who has been teaching yoga for the past three decades, “How can anyone even think of patenting yoga? It’s a big mistake, because a real yogi would like his yog to spread to as many people as possible.” Talking about Choudhury in particular, he says, “By patenting it, this man has made it clear that he’s interested only in money, not yoga. He’s got diverted from the real purpose of yoga, which works towards making you independent and still binding you with people.”

“Yoga helps you become physically, mentally, emotionally and spiritually strong. It creates prem bhava and works to bind humanity into a comprehensive whole. But people who are ‘selling’ yoga for money are going against the basic tenets of yoga” says yoga guru Surakshit Goswami. According to him, the yoga scripture Gherand Samhita mentions that there are 84 lakh asanas. “Has he created one in addition to these?” he asks adding that the Indian government must take up this matter with the US authorities.

Adds keen yoga practitioner and art expert Alka Pande, “Nobody can patent yoga. It’s a particular wisdom. Tell me, can you patent Indian classical music or meditation? You cannot. Likewise, yoga too reflects the collective wisdom of the country. You can’t take everything and anything into the domain of commerce.” Yoga, reiterates Alka, emerges from the Yoga Sutras that are the canons of knowledge. “You can interpret it in different ways and even devise your own method of doing it, but it will be from these Sutras only. So, how can you patent it?”

To Bikram’s claim of doing yoga in a high-temperature steam room, Bhupesh says, “He seems to be going against our scriptures that prefer yoga done in open, fresh air.”

And to America’s intervention on matters that are quintessentially Indian, popular yoga guru Baba Ramdev says, “America has no right to do this. The Indian government must intervene and get such patents cancelled.” And he warns those doing yoga in steam rooms, “This is extremely harmful. Yoga should be done in cool conditions, other wise you can end up with hypertension, heart problems, depression and problems related to the nervous system.” Adds former CBI chief Joginder Singh, “It’s stupid of America to even think of doing such things. No country should entertain requests for such patents, on matters they have no knowledge of.” -- PURNIMA SHARMA




Firstly, it begins with the predictable pronouncement that Bikram Chaudhury is attempting to patent yoga and then goes on to contradict this by stating that the USPTO has issues 150 yoga related copyrights.

Thereafter, it seeks comments from people who clearly are not any more aware of the real issue than the reporter herself. So, while "Hari Singh Bhupesh" trashes Bikram Chaudhury for not being a real "yogi", "Surakshit Goswami" demands to know if Chaudhury has created any "new asanas" that are not written about in "the yoga scripture Gherand Samhita (which) mentions that there are 84 lakh asanas".

Perhaps no one explained the concept of copyrights in compilations to Surakshit Goswami.

"Keen yoga practitioner Alka Pande" announces that no one can patent yoga. She is absolutely right. But who is attempting to do so? Remind me again?

"Bhupesh" laments that yoga done in a steam room is "against our scriptures"...(And the intellectual property violation issue there is...?)

Even Baba Ramdev adds his two penny bit to encourage the Indian Government to contact the American Government to get such patents cancelled.

Indeed we hope that the collective wisdom that governs the legal advisory mechanism for the Indian Government is better informed on the issue or we stand to have a political gaffe larger than what Michael Moore ever dreamt of, on our hands.

On a more serious note, I am not on the merits of the issue. I am personally sceptical about the copyrightability of a series of yogic postures in a controlled environment, but my point today is different. All I am saying is that responsible reporting can go a long way in influencing, moulding and positively channelising public opinion, encouraging healthy debate and promoting greater activism in the world's largest democratic society.

Yet what happens is far from it. Today nobody correctly understands the real issue. Yet nobody is willing to admit it. The result? We cry ourselves hoarse about scriptures and traditional knowledge when none of that has even been sought to be monopolised by the man in question.

I am reminded of a recent debate in Indian political circles over whether singing of Vande Mataram (also known as the 'Morning Song of India')in schools should be made mandatory. The ruling coalition (UPA) and Opposition members debated over the Government's stance that singing the National Song Vande Mataram on September 7, 2006 to mark the 125th year celebration of its creation should be voluntary.

A television channel in a "sting operation" visited a number of ministers in their homes and offices (those who were spearheading the movement to make the singing mandatory) and simply asked them to sing the song. They faltered, they stared, they tried and all of them, with no exception, failed to sing the song. They knew neither the words, nor the tune! While the country laughed at the twenty seconds worth of discomfort of its leaders, the issue, predictably was buried forever.

This time round too, for all our blogging and academic analyses, Bikram Yoga and its copyrights, I fear, will remain intact and unchallenged, while the collective energy of our intelligentsia is spent, ahem, barking up the wrong tree!

STRETCHING IP: YOGA, SUKETU MEHTA's OP-ED AND PROF SAMPAT’S RESPONSE

The controversy surrounding the Yoga guru, Bikram Choudhary and his copyrighting of “hot” yoga poses (perhaps a better term ought to be “sauna yoga”) has reared its ugly head yet again. Talk about ‘stretching” IP!!.

Oh well—if a patent can issue on a method of exercising a cat by making it chase a laser beam, what’s wrong with copyrighting a more holistic exercise regimen that does not involve anything as fancy as lasers—and more importantly, one that pertains to human beings.

What’s funny (or rather “troubling”) is that, in all this media frenzy, the Indian press continues to conflate the terms “patents” and “copyrights”. Most news reports are shocked at the “patenting” of yoga asanas—when Bikram’s claim to fame (or rather, “in-fame”) is really in trying to “copyright” it. Anyway, what began this new found interest in the monopolization of yoga may be Suketu Mehta’s op-ed in the NY times, titled “A Big Stretch”—something that was commented on by Aysha in her excellent (and provocative) post on religion and IP.

Prof Bhaven Sampat, whom I’d blogged about earlier, in connection with the creation of a very useful database of Indian patent applications, responded to Suketu’s piece and sent a copy to the NY Times—unfortunately, for reasons best known to them, they didn’t publish.

Bhaven is spot on in his critique—but I also think he is way too kind. After reading Suketu’s highly “stretchable” notion of trading Gleevec for yogic nirvana (maybe a future India—Swiss FTA should have this!!), and his rather implicit preference for the monopolization of knowledge along caste lines, my advise to Suketu would be along the lines of what was tendered by a towering Indian intellectual, Ramchandra Guha to Booker winner, Arundhati Roy in response to her piece on the Narmada dam: Please stick to fiction!!

In fact, Suketu’s very first paragraph reveals a deep ignorance for how copyrights operate. He states:

“I grew up watching my father stand on his head every morning. He was doing sirsasana, a yoga pose that accounts for his youthful looks well into his 60s. Now he might have to pay a royalty to an American patent holder if he teaches the secrets of his good health to others.”

Suketu—notwithstanding Bikram’s abominable attempt at monopolizing an ancient Indian knowledge form, his dubious copyright over yoga poses does not in any way prevent your dad from standing on his head or of teaching this to others. Of course, if he does this in a “sauna” environment (105 F or 45 C) and follows the exact same sequence of 26 odd steps that Bikram claims to have distilled out of the ancient scriptures, he may be in a little bit of copyright trouble in the US.


I say “may be”—because even under the most liberal IP standards that the US has now come to represent, you could still run a claim that yoga sequences are not copyrightable, since they are predominantly “functional”. And if the US is serious about “precedents” and respecting the classic “idea expression” dichotomy laid down in Baker vs Selden, you’re likely to succeed. The Patry Copyright Blog, by William Patry, Senior Copyright Counsel, Google Inc, elucidates this point quite well and also cites to 2 law review articles on this theme.

Suketu is right to be concerned about this rampant commercialization/monopolization of a holistic health regimen that has been in the public domain for several centuries—but deploying his poetic (or literary) license to “stretch” logic is nothing short of disrespect to an intelligent public that will soon tire of excessive emotional rhetoric. Anyway, this is Prof Sampat’s critique:

Re: "A Big Stretch" (Opinion, May 7)

The posturing in Suketu Mehta's op-ed column on patenting yoga may have interfered with his quest for enlightenment. The author is correct that there has been a worldwide growth of patenting of knowledge and techniques that are not novel but rather have long been in the public domain. These include not only the yoga related patents identified by Mehta, but also, in the United States, patents on how to swing on a swing (U.S. Patent 6368227) and a crustless peanut butter and jelly sandwich (U.S. Patent 6004596).

However, none of these patents have had deleterious effects: the vast majority of patents are never enforced or litigated, and most are easy to invent around. Just as we can swing and make our lunches without fear of paying royalties, Mehta can continue practicing downward dog in peace. Mehta's article does point to a more important and more general point: worldwide, patent offices lack the expertise, incentives, and resources to make determinations of whether an invention is really "new enough" to merit patent protection.

This can not only lead to the issuance of silly patents that don't matter, like those discussed above, but also questionable patents on inventions that can have life-or-death consequences, like the cancer drug Mehta cites. But the implication of the article—that the problem in both cases is patenting per se—is misguided. Well—designed patent systems can simultaneously promote innovation and prevent encroachment on the public domain. (And patent-based regulation of knowledge is probably better for facilitating diffusion than the caste-based regulation of knowledge Mehta appears to favor.)

The salient concern is granting of low-quality patents: those that should not have been issued in light of what was already known. The solution is two-fold. First, policymakers worldwide need to think carefully about how high (or low) to set the bar for patentability. Second, they need to provide patent offices with better information about pre-existing knowledge and inventions, and the resources needed to evaluate this information.

Bhaven N. Sampat

New York, NY May 7, 2007.

The author is an assistant professor at the Mailman School of Public Health at Columbia University, and co-creator of a free searchable database of Indian patents and applications, india.bigpatents.org .

Treading on Traditional Terrain!

With many of us into a well deserved summer break after a sensational quarter of pounding patent action, allow me to lead you on, from the provocative world of patents to the softer subjects of religion and spirituality as they exist within the realm of IP.

To keep my mind and body muscle agile through the summer, I am signing up for a yoga class. For those of you who prefer more sedate pastimes I suggest Yoga, Inc, a documentary that made its debut last week at the Toronto International Film Festival. The movie deals with the rampant commercialization of this traditional spiritual discipline citing instances such as those of Bikram Choudhry ,the self styled yoga guru who has produced a glamorous kitsch of the traditional hatha yoga to market it as his own brand of ‘Hot yoga’ in the up market LA locale. Hot or otherwise, distilled down to its essence, this is just a variation of Sage Pathanjalis’ Yoga teachings. Yoga as a spiritual discipline finds its genesis in Traditional Hindu Vedic Philosophy.A classic case of Traditional Knowledge moving out of Indian shores to the west FOC (free of cost) and inhibition. That Bikram himself could bring about a copyright infringement suit against other yoga teachers for usurping his techniques is a different tale altogether.

'The U.S. Patent and Trademark Office has issued 150 yoga-related copyrights, 134 patents on yoga accessories, and 2,315 yoga trademarks. There's big money in those pretzel twists and contortions - $3 billion a year in America alone', claims'Suketu Mehta, in his article titled 'Can you patent wisdom' published recently in the New York Times.
Suketu in his piece gives us his witty take on the universal lift of yoga , while drawing an interesting parallel between drugs and hatha yoga. I agree that there is an element of truth in what he says, that both dugs and yoga act pretty much in the same way ,that of adding health, vigour and vitality, but does that validate the quid pro quo arrangement.?Right to manufacture generic Gleevec to the Indian drug manufacturers in exchange for proprietary Padmasana to the western world?Talk of robust mercantilism!
Suketu, thank you very much.As suggested I shall stick to the Sirassana and pass the pretzel yogic pose. Bawdy irreverance, but the message stands well conveyed!

More on the subject of subject of Religious poaching(or should I say Irreligious)and moving on to another religious hotbed......
Early last year, the papacy allegedly came under fire for charging a royalty fee on papal announcements. The controversy was triggered by the fact that a Milanese publishing house was slapped with a hefty royalty fee for publishing an anthology of Pope Benedict’s speech without due authorization from the Papacy. My spiritual sensibilities ring with unease at the idea of attaching a price tag on religion, However in situations such as this where religious edicts and property are exploited to derive a pecuniary benefit it does become necessary to demarcate the ‘sacred’ from the ‘saleable’. While a ‘fair use’ of religious texts is certainly valid a free use sans a fee certainly constitutes Theopiracy! (thats derived from the word Theology) A regulation of such use appears imminent. A report in MIP states that the papacy proposes to introduce a legislation that will extend copyright protection to all papal texts and announcements henceforth as well have a retrospective effect on texts released by the Vatican over the last 50 years

Speaking of converting the sacred in to ‘saleable merchandise’, a visit to the local gift store ,I see shelves lined with paraphernalia of every kind etched with sacred symbols and texts.’Om’ or the traditional Vedic symbol appears to the most popular. Cashing in on the spiritual boom and awareness, manufactures of these wares seemed to have discovered an ingenuous way of marketing their goods to the hungry spiritual seeker. That said, drinking from the ‘Om Cup’, or chanting knockoff Tibetan chants bearing new age inane lyrics do little to ease the soul or awaken the kundalini. Old wine in a new bottle, the much sought after Nirvana remains elusive!Using sacred symbols and signs that constitute Traditional Knowledge as a marketing gig not only infringes upon certain residuary IP rights that vest in them but also seem to derogate from the sanctity of the sacred syllable.

Emphasizing the importance of Traditional Knowledge Systems, the United Nations University (1990's) proposal says, "Traditional knowledge or 'local knowledge' is a record of human achievement in comprehending the complexities of life and survival in often unfriendly environment. Traditional knowledge, which may be technical, social, organizational, or cultural, was obtained as part of the great human experiment of survival and development

In the light of this definition, Religion as a TK stream assumes great significance in the Indian setting , the cradle of many religions and spiritual philosophies. While initiatives are afoot to address the menace of Biopiracy ,there is an emergent need to cover other streams such as religion ,culture et al , and the entire gamut of TK systems that constitute precious IP of the country. The sensitive nature of the TK-Religion discipline compounded by the difficulties in documenting and tracing its origins have perhaps deterred legislators and activists from doing the needful on the TK-Religion front.
A sui generis legislation to regulate the appropriation of the varied streams of TK is definitely the need of the hour.Copyright and patent protection may just not be adequate to protect TK…..it seems paradoxical to assign a time frame to the timeless!
To push the case to its frontiers, Religion is one stream of TK that may be worthy of ‘ever greening’ ,of course with an appropriate licensing mechanism thrown in to cater to the demands of ‘Karma Capitalism’ . You can’t be in the system and beat the system! .

'Spirituality should include a fair measure of common sense'. Thats the Bodhisattava for you!

FISHING FOR TECHNOLOGY....OR VICE VERSA

The Economist carries an interesting piece on how mobile phones have contributed to increased efficiency(and economic returns) to Kerala fishermen. Somewhat off topic, but an interesting read nonetheless.

"YOU are a fisherman off the coast of northern Kerala, a region in the south of India. Visiting your usual fishing ground, you bring in an unusually good catch of sardines. That means other fishermen in the area will probably have done well too, so there will be plenty of supply at the local beach market: prices will be low, and you may not even be able to sell your catch. Should you head for the usual market anyway, or should you go down the coast in the hope that fishermen in that area will not have done so well and your fish will fetch a better price? If you make the wrong choice you cannot visit another market because fuel is costly and each market is open for only a couple of hours before dawn—and it takes that long for your boat to putter from one to the next. Since fish are perishable, any that cannot be sold will have to be dumped into the sea.

This, in a nutshell, was the situation facing Kerala's fishermen until 1997....


But starting in 1997 mobile phones were introduced in Kerala. Since coverage spread gradually, this provided an ideal way to gauge the effect of mobile phones on the fishermen's behaviour, the price of fish, and the amount of waste. For many years, anecdotes have abounded about the ways in which mobile phones promote more efficient markets and encourage economic activity. One particularly popular tale is that of the fisherman who is able to call several nearby markets from his boat to establish where his catch will fetch the highest price. Mr Jensen's paper* adds some numbers to the familiar stories and shows precisely how mobile phones support economic growth.

As phone coverage spread between 1997 and 2000, fishermen started to buy phones and use them to call coastal markets while still at sea. (The area of coverage reaches 20-25km off the coast.) Instead of selling their fish at beach auctions, the fishermen would call around to find the best price. Dividing the coast into three regions, Mr Jensen found that the proportion of fishermen who ventured beyond their home markets to sell their catches jumped from zero to around 35% as soon as coverage became available in each region. At that point, no fish were wasted and the variation in prices fell dramatically. By the end of the study coverage was available in all three regions. Waste had been eliminated and the “law of one price”—the idea that in an efficient market identical goods should cost the same—had come into effect, in the form of a single rate for sardines along the coast.

One criticism levelled at such studies, says Mr Waverman, is that it is difficult to tell if mobile phones are promoting growth, or growth is promoting the adoption of mobile phones, as people become able to afford them. It is easy to imagine ways in which mobile phones could stimulate economic activity—they make up for poor infrastructure by substituting for travel, allow price data to be distributed and enable traders to engage with wider markets, and so on. Mr Waverman uses a variety of statistical tests to try to tease apart cause and effect. But detailed analyses of micro-market data like Mr Jensen's, he says, show how phones really do make people better off."

The Bilcare decisions by the Delhi High Court: Preliminary injunctions and the presumption of validity of a 'new' patent

Two recent decisions of the Delhi High Court discuss the issue of grant of interim/preliminary injunctions in patent infringement disputes. The cases, M/S Bilcare v. M/S Amartara and M/S Bilcare v. M/s Supreme Industries were both decided on March 20, 2007. The key issues discussed in the decisions are:

(1) Whether there is any presumption in favor of the validity of the patent for grant of preliminary/temporary injunction in favor of the patentee?
(2) What are the grounds for grant of a preliminary injunction in a patent infringement action.
(3) Whether no interim injunction could be granted if the validity of the patent was challenged.
(a) The weight to be attached to the age of the patent when determining whether or not an interlocutory injunction ought to be granted


The Delhi High Court recently decided two appeals against interim orders in patent infringement suits filed by Bilcare Limited. The two suits, Bilcare Vs. Amritdhara, pending before the High Court of Delhi and Bilcare Vs. Associated Capsules & Supreme Industries, pending before the Delhi District Court (Tis Hazari), were both filed by the same plaintiff (Bilcare) and have substantially the same facts. Because it was almost impossible to understand the reason why Bilcare filed suits in two different courts, I spoke with Mr. Manu TR, a lawyer who has been closely associated with this matter, to get the details. (For other summaries of the case, click here and here)

The summary of the explanation by Mr. Manu TR is as follows: Bilcare filed the matters in different courts for strategic reasons. The suit seeking ex parte injunction against Amritdhara was filed in the High Court and Amritdhara opposed the same. In order to obtain a quick ex parte injunction without having to face a possible caveat filed by defendants, Bilcare filed the next two suits, against Associated Capsules (a competitor) and Supreme Industries, in the District Court– Tis Hazari. Usually, if the Defendant in an infringement action counter claims for revocation of a patent, the entire suit is transferred to the High Court. In the case against Associated Capsules and Supreme Industries however, the case did not get transferred to the High Court because Associated Capsules had already filed an opposition proceeding (against Bilcare’s patent) before the Controller of Patents.

Summary and Discussion of the case:

The invention: A multilayer thermoformable, translucent pharmaceutical and food packaging film which has a core PVC layer, a metallized layer and a third polymeric layer ranging from 0-250 microns, and which prevents moisture from entering the material packaged using the same. Plaintiff (Bilcare) claimed that PVC films made prior to its invention were incapable of preventing moisture from passing through and were therefore unsuitable for packaging medicines and vitamin tablets. The PVC invented by Plaintiff had the additional quality that was highly desirable – it was translucent, thereby allowing patients to identify them easily.

The dispute: The dispute arose when the defendants were found to be manufacturing and marketing similar PVC films, which Bilcare alleges is an infringement of their exclusive rights under the patent. Pending the final decision of the cases, Bilcare obtained ex parte injunctions against the defendants, which were later set aside on motion by the defendants. Bilcare thereafter, filed appeals in the High Court against the orders setting aside the ex parte injunctions. The two cases are decided by Justice JM Malik and Justice Sanjay Kishen Kaul respectively. The judges reach the same conclusion, albeit on different reasoning, that in the facts of the case, a temporary injunction need not be granted.

A number of arguments were made for and against the grant of an interlocutory injunction. The key arguments and holdings are discussed hereunder. While I am discussing the arguments presented as well as the decisions in the two cases together, I have, for the purpose of convenience, identified the argument/holding as being from the decision by Justice JM Malik (JMM) or by Justice Sanjay Kishen Kaul (SKK).

Key Arguments and issues:

One of the main issued addressed in both cases is “whether there is an any presumption in favor of the validity of the patent for grant of temporary injunction in favor of the patentee?” (JMM) In both decisions, the judges hold that there is no presumption of validity of a patent. In support, they quote § 13(4) of the Indian Patent Act, 1970, which states that:

“The examination and investigation required under section 12 and this section shall not be deemed in any way to warrant the validity of the patent, and no liability shall be incurred by the Central Government or any other officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.”

A related issue was whether no interim injunction could be granted if the validity of the patent was challenged. This issue was discussed in relation to the age of the patent.

The courts looked at a number of decided cases. The JMM court quoted from National Reseach Development Corporation v. Delhi Cloth and General mills AIR 1980 Delhi 132: “It is also a rule of practice that if a patent is a new one, a mere challenge at the bar would be quite sufficient for a refusal of a temporary injunction but if the patent is sufficiently old and has been worked the court would for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than 6 years old and there has been actual user it would be safe for the court to proceed upon this presumption.”

The (SKK) court cited a number of cases as well as Kerr on Injunction (2nd ed pg 320), which state that when the validity of a patent is challenged and a revocation application is filed, no injunction should be granted. However, it has also been held that once a violation is established in a case of a registered patent, subject of course to the patent being used, it would not be possible to contend that the patentee is not entitled to an injunction. [Telemecanique and Controls v. Schneider Electric 2002 (24) PTC 632 (Del)] (It is interesting that this is the current law in India because the Bilcare court does not over rule this holding in Telemecanique. This is contrary to the holding in the Ebay decision last year where the US Supreme Court put an end to the general rule that a permanent injunction should follow a finding of infringement of a valid patent. [See Comment here)

Other cases were also cited which state that the mere fact that a patent is young (i.e. the grant was made recently) is on its own not a sufficient ground to refuse an injunction. For example, the (JMM) court cited the case Metro Plastic Industries v. Galaxy Footwear, New Delhi (AIR 2000 Delhi 117), which held that merely because a registration is recent, it is not by itself a ground for refusing an injunction (although it could be one of the many factors considered). After considering these cases, the court held that “it is not sufficient for the grant of an injunction that a patent is registered and the strength of the defense including the revocation application have to be looked into.” (SKK)

Determining whether or not to grant an interlocutory injunction in patent infringement actions:

The court (JMM) enumerated the following factors to be considered while determining whether or not to grant an interlocutory injunction in an alleged patent infringement action:

“Whether the Act [sic.] in question is really an invention. It is to be proved that the device in question is new, non-obvious and inventive.” From reading the case, it appears that this question may be paraphrased as “whether the invention was a meritorious one that truly deserved patent protection. In answering this question, the court considered the prior art on record and came to the conclusion that the plaintiff’s alleged invention cannot qualify as an invention under the Patents Act because it was already known in the trade.

“Whether it is not of recent origin.” Quoting from M/S National Research Development Corporation v. M/s Delhi Cloth and General Mills, AIR 1980 Del 132, the court stated: “it is also a rule of practice that if a patent is a new one, a mere challenge at the bar would be quite sufficient for a refusal of a temporary injunction, but if the patent is sufficiently old and has been worked, the court would for the purpose of temporary injunction, presume the patent to be valid one. If the patent is more than 6 years old and there has been an actual user, it would be safe for the court to proceed upon this presumption.” The court also stated that “it is settled law that in an action for infringement of a patent, an injunction would not be granted where the validity of the patent itself has been questioned and a revocation petition has been filed.” [citing Niki Tasha India v. M/S Faridabad Gas Gadgets AIR 1985 Delhi 136 at 140].

“Whether it pertains to a three layered product or a two layered product.” This step seems to require a comparison of the patented invention and the allegedly infringing product.
“Whether damages would provide adequate remedy should the claim succeed.”
“Whether it would be proper for the appellate court to upset the trial court order which has made its perspicacious judgment.” For this issue, the court held that the “it would not be proper to upset the well reasoned judgment of the trial court. The trial court has meticulously checked the record for precision and clarity”

Other defenses
Issue of Mosaicing (SKK). In response to the allegation that the patent was invalid as being obvious, the plaintiff submitted that the argument of the defendant was based on “mosaicing” various prior art documents, which is not a permissible means challenging the validity of a patent. According to Terrel, “the mosaicing of individual documents or prior uses is not permissible unless it can be shown that the skilled person, confronted with a particular citation, would turn to some other citation to supplement the information from the first. Whether he would do so is a question of fact.” (Terrel on Law of Patent (16th ed) as quoted in Technograph v. Mills and Rockley [1972] RPC 346 at 355. The court further observed that when dealing with non-obviousness, mosaicing is permissible but it must be a mosaic that can be put together by an unimaginative man with no inventive capacity.

The court did not accept the argument of mosaicing on the ground that in the facts of the case, not only were the individual components known, but so was a combination of the components. The court therefore held that the invention was neither novel nor non-obvious.

Prosecution history and scope of specification: Another interesting issue raised by the defense was that the plaintiff had expressly disclaimed a two layered film during the US patent application process by stating before the USPTO that its invention applies to film containing at least three layers as a two layered film had been patented as long back as 1975 (JMM – Para 5). The court did not discuss the issue of prosecution history in the United States but did look at the specification in the Indian patent which stated in relevant part that “a multi layered film essentially comprising at least three layers is developed…” Since the defendant’s product only had two layers, it could not be an infringement. (SKK paragraph 80)

Non disclosure of material facts (SKK): The defendant claimed that the invention is not novel because the plaintiff failed to disclose that it was not manufacturing the product itself but was sourcing the same from a Taiwanese corporation. The defendant also contended that the plaintiff had started selling the product before filing a patent application (thereby killing its novelty). In response, the plaintiff claimed that the know how for manufacturing the product was given by the plaintiff to the Taiwanese corporation and that the product it was selling before applying for the patent was different from the patented product. The court did not accept either of these arguments and held that the original injunction was obtained without disclosing the complete facts.

Considering the above arguments as well as the fact that the patent was granted recently and there was a post grant opposition pending against the grant of the patent, the court came to the conclusion that the balance of convenience was in favor of vacating the injunction. The court further stated that the interests of the plaintiff can be protected by direction the defendant to keep accounts of the same of the product in question during the pendency of the suit and filing the same on a quarterly basis.

I was discussing this issue with Shamnad and he raised an interesting question in the context of the Ebay decision: in the light of the Ebay decision, what is the likely standard for permanent injunction in India? Ebay, as many of you will recall, stated that injunctions (even after the patent is found to be valid and infringed) are not a matter of right. The Ebay court relied on the “traditional” “four-factor test” for determining whether to issue a permanent injunction, namely, that a plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. (See Comment on the Ebay case) The court found that these familiar principles apply with equal force to disputes arising under the Patent Act. The key 4th factor, namely, “public interest” is one that the Bilcare courts did not discuss. The traditional grounds for grant or refusal of a preliminary injunction in India, are, (1) that the plaintiff demonstrate that it has a prima facie case; (2) they must produce prima facie evidence that there has been an infringement of their patent by the defendant; and (3) that the balance of convenience is in favour of the plaintiff. This is the standard applied in most intellectual property cases as well. While it may be argued that these considerations if met, will indirectly lead to a result that is not contrary to public interest, none of the cases discussed by the Courts in Bilcare expressly mention “public interest” as a factor in determining whether or not to grant a preliminary injunction. I am also not personally aware of any Indian case that discusses public interest as a determining factor for the grant or refusal of preliminary injunction. Any additional information on this is welcome.

KSR VS TELEFLEX AND PFIZER VS APOTEX: IMPLICATIONS FOR NOVARTIS LITIGATION IN INDIA

Its been a while since the Court of Appeals for the Federal Circuit invalidated Pfizer’s patents covering Norvarsc, one of their best selling drugs used by high blood pressure patients. Close on the heels of this important judgment that in some ways endorses a section 3(d) kind of approach (an issue pertinent to the ongoing Novartis litigation), comes another judgment, KSR vs Teleflex, where the United States Supreme Court raises the bar for “non obviousness”.

As some of you may know, the Norvasc decision (Pfizer vs Apotex) was an attempt by the Court of Appeals (CAFC) to convince the US Supreme Court (before which the KSR vs Teleflex matter was pending) that the suggestion/motivation/teaching test employed by them to test “obviousness” was a robust test and not as inflexible as it looked. They attempted this in earlier cases as well—Dystar—and it’s funny that the court devotes an entire 3-4 pages in Dsytar to demonstrate the robustness of their test (almost like an amicus brief!!). The Supremes however were not moved and the KSR opinion is a stinging critique of the CAFC’s rigid standard.

The Supreme Court held that the suggestion, motivation and teaching test by the CAFC is not the “hard and fast” rule to be applied in all cases---rather, the right approach is the more flexible one laid down under Graham vs John Deere. See the Wall Street Journal article that states:



“We can't believe we're writing this, but the Supreme Court is restoring some sanity to America's runaway patent law. A year ago, it gave judges much-needed flexibility in granting or denying permanent injunctions in eBay. And this week it took another positive step in KSR v. Teleflex, which dealt with the design of the humble gas pedal but has far larger consequences.

In striking down a Teleflex patent on a gas pedal, the High Court showed how easily patent law can "stifle, rather than promote" progress, in the words of Justice Anthony Kennedy's unanimous opinion. The question was whether a pedal design patented in 2001 was nothing more than an "obvious" combination of previously existing designs. The trial court ruled it was obvious, and invalidated the patent. An appeals court overruled, but the Supremes sided with the trial court. In doing so, the Justices rebuked the appellate patent court for having raised the bar too high in assessing "obviousness."


For a more nuanced analysis, see Dennis Crouch’s analysis in Patently O, the most widely read patent blog in the world:

“In a unanimous decision, the Supreme Court rejected any notion that the concept of obviousness in patent law can be rigidly or narrowly defined -- holding that "the obviousness analysis cannot be confined by a formalistic conception." However, the opinion does not radically change the notion of obviousness or immediately invalidate a wide swath of already issued patents.

The question of nonobviousness comes-up in Section 103 of the Patent Act. That section declares that a patent shall not issue if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

But what is "obvious"? Certainly, this amorphous term has continuously stumped engineers and scientists for the past 50+ years. One particular issue involves combination inventions that take various existing elements and combine them in a new way. When is such a combination obvious? In an attempt to provide improved notice and regularity, the Court of Appeals for the Federal Circuit (CAFC) introduced a test that holds a combination invention is nonobvious absent some teaching, suggestion, or motivation (TSM) to combine the various parts together.

In KSR, the Supreme Court began by rejecting the CAFC's test for obviousness:
"We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here."

At this point, I would have expected the Court to obliterate the past twenty-five years of obviousness jurisprudence and begin again with a clean slate. It did not do that — rather, the opinion appears to simply refine the particulars of how prior-art can be combined and when a "combined patent" will be seen as obvious. Without explicitly saying so, the Court's opinion appears to affirm the CAFC's more recent pronouncements of a flexible test of obviousness. Dystar, Alza.”

For more analysis on this, see also the notes by Prof Josh Sarnoff (a very good friend of SpicyIP) and Prof Mandel


Both the Norvasc ruling and the Supreme court ruling (which will lead to more Norvasc style decisions) will have tremendous implications for pharmaceutical patents and in particular to the Novartis litigation in India.

The court in pertinent part seemed to suggest that amlopidine besylate (the patent in issue) did not have any “unexpected properties” over and above amlodipine maleate (the prior art salt version). I personally think the court also indirectly endorsed an “obvious to try” standard—i.e. if it is obvious to try a couple of salt forms (once you have the main pharmaceutical substance) and a skilled person in the art is likely to experiment with all these different salt forms, then all of those salt forms are likely to be “obvious”. The court of course was careful enough to state that it wasn’t endorsing the “obvious to try” standard (as that would have changed the law)—but the net effect of the decision is that an “obvious to try” standard has crept in.

Not a very sound ruling (from the legal/jurisprudence point of view), but an excellent one from the point of view of the Novartis dispute and section 3(d). In fact, doesn’t section 3 (d), in some way, mirror the Norvasc “unexpected properties” standard—a standard that is followed by the EPO as well. If that is the case, then will Novartis take even the US and the EU to court over such an allegedly “TRIPS non compliant standard?

Of course, a large part of whether 3 (d) mirrors the “unexpected properties” standard will depend on how the Indian courts are likely to interpret “efficacy”. If efficacy is interpreted narrowly to mean only those properties that directly implicate the human body and the way the drug works to cure the disease in question, then any salt form that contributes to the manufacturing process or entails “logistical” benefits (such as heat stable drug forms that can be transported over long distances without refrigeration) are not likely to be patentable—as they don’t provide enhanced “efficacy” in relation to the body/disease.

All this aside, isn’t is fascinating that India’s IP regime has traditionally attempted to mirror the approach in the UK/US—and yet, with pharmaceutical substance patentability, we seem to have got it right—and the US rulings now seem to mirror what India had cleverly articulated in section 3(d)!!

In a post KSR and post Norvasc patent climate in the US, what are the other kinds of pharmaceutical patents that might come under attack? Take a look at this note by Cal Cary on the Patently O Blog. Cal, a litigation analyst for the investment community (are we going to see the birth of this new breed of service providers for patents in India soon?) states:

“We do not believe that too much guessing is needed to see what the new patent environment will be like, since we already have the benefit of Chief Judge Michel’s March 23, 2007 decision in the Norvasc case, in which he identified the likely changes in the court’s obviousness jurisprudence. . . .

A few of the principles reflected in Judge Michel’s opinion are as follows:

i) routine testing to optimize a single parameter, rather than numerous parameters, is obvious;
ii) an approach that is obvious to try is also obvious where normal trial and error procedures will lead to the result;
iii) unexpected results cannot overcome an obviousness challenge unless the patentee proves what results would have been expected;
iv) a reasonable expectation of success does not have to be a predictable certainty but rather it can be an expectation that can be satisfied by routine experimentation; and
v) motivation can be found in common knowledge, the prior art as a whole or the nature of the problem itself.
....
[T]here are certain types of patents in the pharmaceutical industry that will have to be looked at, or looked at again, in light of the Supreme Court’s opinion. We happen to believe that enantiomer patents are especially vulnerable, at least in cases in which the technology to separate them was available in the public domain at the time the separation was made.

However, we do not believe that the courts will permit a massive extermination of drug industry patents or that a meat-axe approach to them will be used. Rather, we think the Supreme Court’s only demand is that common sense be injected into the determination of what a person of ordinary creative skill in the art would do. The primary examples of enantiomer patents that we regard as vulnerable include Forest Labs’ Lexapro, Bristol-Myers’ Plavix, AstraZeneca’s Nexium and Johnson & Johnson’s Levaquin. We think that all four of these drugs are especially vulnerable now, in light of the new, broader scope of obviousness. In the case of Levaquin, Mylan Labs lost at the district court level in a case that it should have won, even under the law as it existed at the time, and then it was affirmed by Judge Pauline Newman, a pro-industry Federal Circuit judge, in a non-precedential decision without opinion. In a new case, if obviousness is in the mix and if Judge Newman is avoided on appeal, then Levaquin will be a generic drug.

Forest Labs’ Lexapro: Forest won this case before Judge Joseph Farnan, a strongly pro-patentee judge in the U.S. District Court in Delaware, and is scheduled to defend the decision in the Federal Circuit on May 9, 2007. Since the lower court gave no meaningful analysis of the obviousness issues, we think that a reversal in light of KSR would be reasonable to expect so as to give the lower court a chance to consider these issues again. We plan a report on the case later this month.

Bristol-Myers’ Plavix: The district court trial is over, post-trial briefs have been submitted and the case is under submission to the district court judge, who will probably be influenced by the Norvasc decision, in which obviousness invalidated the patent where there were a relatively small number of options to try. AstraZeneca’s Nexium: This slow-moving case in New Jersey is in the pre-trial phase, but is subject to the fundamental problem that separation of the enantiomers of omeprazole is likely to be considered obvious.

Procter & Gamble’s Actonel: Trial of this case was completed before Judge Farnan in Delaware last November, and the post-trial briefs were submitted in January of this year. Teva’s fundamental argument is premised on obviousness, and therefore it would have had little chance of winning prior to the KSR and Norvasc decisions. That said, we think that Judge Farnan is unlikely to change his pro-patentee bias, but a Teva win could come out of the Court of Appeals.”