IP AND INNOVATION: MAKING TRIPS WORK FOR DEVELOPING COUNTRIES

As a follow up to my earlier post on TRIPS and how best to use "IP" strategically to enhance technological development for developing countries, here is a post on a blog titled "Unheard Voices" dealing with issues in Bangladesh.

Intellectual Property Rights: Making Them Work For Us Posted by Amer under Foreign Matters , South Asia

"This is a somewhat dated issue, but I recently came across this wonderfully well document example by Abul Kalam Azad of how the WTO can work for developing countries like Bangladesh. The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is a by-product of the WTO’s Uruguay Round that many developing countries felt was something that they had little use for. The utility of this treaty however was fully realized by none other than our own Miles, when Anu Malik (aka the Captain Morgan of Bollywood’s music industry) tried to swipe “Phiriye Dao Amar Prem” for the Bollywood film Murder. Although it took them a while to work through the due process, Miles was eventually able to get some copyright-style justice: “As compensation for the ‘injury’ caused to the business interests of the petitioners, 50 million rupees were demanded from Anu Malik, Mahesh Bhat, Saregama India Ltd and RPG Global Music; in addition, ‘total reimbursement’ for the expenditure incurred in filing the case also was demanded. A court order was also sought for appointing a receiver or special officer to seize the entire lot of soundtrack software from Saregama’s Dum Dum studio. Besides this, the band’s lawyers demanded that the respondents ‘should be directed to disclose upon oath details of cassettes and CDs distributed by them to various vendors and retails’.” - (Rock ‘n Roll in Bangladesh: Protecting Intellectual Property Rights in Music, Abul Kalam Azad) This just goes to show that when properly informed, countries like ours really can make the most of otherwise obtuse treaties."


The "comments" to the post are particularly illuminating--and in the same way as some of the thought provoking comments on Spicy IP, are, in fact, better than the main post itself.

I reproduce one such comment by Mahmud Farooque and my response which attempts to highlight how the debate has played out in India:

Mahmud Farooque Says: July 22nd, 2007 at 3:55 am

"Amer, good choice for a topic.

Perhaps we ought to look at IP policy within the context of the specific industry and country in question. Strong IP does not necessarily lead to innovation. I prefer to interpret innovation a bit broadly and at the level of the firm: gaining the ability to develop a new product design or to master a new process. Once a firm can do that with respect to itself, then it can extend it to its cohorts, to the industry, the nation, etc. In other words, one has to learn to innovate first.

I don’t think a strong IP policy is always very helpful, particularly where the industry is just getting started, because innovation can happen through imitation as well. This is how first Japan, then the other South East Asian countries, and now India and China have successfully closed the technology gap between them and the industrialized countries.

Even within a given industry and country, to foster innovation, I think it pays better to use a more nuanced and pragmatic approach. If you look at the initial growth stages of the Indian Pharmaceutical sector, for the domestic market, they allowed IP protection for process, not for product. This in turn allowed local companies to make any drugs as long as they could develop it using a different method of production. Lack of IP protection in India’s case actually allowed tremendous process innovation to occur which ultimately gave its companies the ability to enter and then dominate the global generic drug market. Once they mastered the process side of things, Indian drug makers began investing more on product R&D, which is now allowing them to play with the big boys in the global markets.

Interestingly, only after its companies started to gain the ability to design their own drug molecules, did India sign the WTO agreement, which forces it to offer IP protection for pharmaceutical products as well.

I believe the Bangladeshi firms are trying to follow the same strategy because TRIPs gives an IP holiday for LDCs in the Pharma sector until 2016. So even at the WTO level, there is the recognition that a strong IP is not necessarily good policy for all countries and all industrial segments at all times."

Shamnad Basheer Says: July 23rd, 2007 at 5:35 am

"I’m inclined to wholeheartedly agree with the nuanced comments of Mohd Farooque. Innovation in many cases is likely to be preceded by imitation (after all, babies learn by copying!!)–and countries need to provide for regimes that provide some scope for imitation at the early stages. Historically, almost all countries imitated before they invented–including the US, Germany (product patents in pharma only in 1967), Switzerland (product patents in pharma only in 1977), Japan (’87) etc.

TRIPS and other international IP instruments are to be strategically used by countries and standards of protection calibrated according to thier local needs. There’s no point being hostile to TRIPS now–as most countries have signed it and are bound by it. The best you can do is to exploit “flexibilities” inherent in this international instrument and calibrate protection according to local needs.

I extract parts of a note that I am current authoring for a mainstream media publication.

“Contrary to popular perception, India did have a pharmaceutical product patent regime since 1911—thanks to the British and their propensity to gift colonies with law/policies that looked similar to theirs. And yet, this gift did not help create any indigenous pharmaceutical industry in India—not very surprising, given that most countries need to imitate first before inventing and strong IP regimes stand in the way of permitting such “imitation”. This colonial regime also resulted in extremely high drug prices—a US Committee investigating drug prices the world over found that in 1961, Meprobamate, an anti-anxiety pill cost more than twice the price in India, as it did in the US!

Independent India was therefore keen on breaking away from its colonial past and putting in place a regime that reflected “national” interest. A committee headed by a sagacious judge, Rajagopala Ayyangar undertook a quick survey of patent regimes the world over and found that most industrialized nations began by installing regimes that permitted some level of technological imitation. It also found that the chemical industry in India was reasonably strong and had the potential to reverse engineer drugs.

It therefore recommended the abolishment of product patents and the introduction of process patents for pharmaceuticals. As process patents are considerably weaker than product patents, the idea was that such patents would not prevent the domestic industry from reverse engineering existing drugs and manufacturing generic versions via alternative processes. The success of the Indian generic industry today is testimony to the far sightedness of Ayyangar’s policy. India has imitated for more than 30 years now—and quite successfully too. Its expertise at reverse engineering and finding alternative processes are more than amply illustrated by Eli Lilly’s attempt to prevent generics from introducing competing version of its anti-infective Cefaclor by patenting 56 different processes—and yet, within no time, Ranbaxy found the 57th process! The question now is: is this the right time to transition to a product patent regime? Unfortunately, India doesn’t have the luxury of asking that question anymore, since India already did so in 2005, pursuant to a TRIPS obligation. But what India can do is calibrate how much protection it wishes to grant to pharmaceutical inventions.

Section 3(d), is in many ways, an example of such calibration—and reflects India’s attempt at minimizing the impact of product patents by granting it to only those substances that are truly “inventive”. However, it uses terms such as “efficacy” that haven’t been defined. And this is why it is critical that we let the Novartis case run its course so that standards for helping interpret terms such as “efficacy” evolve. After all, Ranbaxy and Dr Reddy’s, two of our largest pharmaceutical company also file applications claiming “incremental inventions”. What we cannot afford at this stage is for our policy debates to get hijacked by emotional rhetoric and patent dogma.

India is neither “developed” nor “developing”—at least in the strict sense of the term—it is what I would prefer to call, a “technologically proficient” developing country. We’re strong in certain technology sectors and therefore need to find ways to incentivise innovation in these areas and yet, at the same time, 26% of our people live below poverty line and we are “developing” to that extent. The age old IP rules that were premised on this neat distinction between developed versus developing countries don’t fit us anymore. This calls for “new” norms—and in fact, our 2005 Act does manage to establish some new norms in parallel imports, compulsory licensing and in the patenting of biological material and traditional knowledge. In short, we need to “innovate” in our IP policy as well, without blindly copying norms created by the West.

We also need to understand that innovation is not about intellectual property alone, but is dependent on a host of other factors such as levels of skill/education, infrastructure etc. We need to therefore build a comprehensive framework for encouraging innovation. Perhaps the time is ripe to constitute another "Ayyangar" like committee to help us determine what the optimal "tautness" of our patent/innovation policy string ought to be in today’s “knowledge economy”.

"Kitney Aadmi The?" - The Sholay story (P.S. Don't believe what the reporters tell you)

After Shamnad's recent post on the RGV Nishabd case pertaining to copyright in film titles, it is but logical that I tell you the "Sholay" story.

But before I begin, let me clarify at the outset that one of the most settled principles of Indian copyright jurisprudence is that there is "no copyright in film titles". Yet our misinformed press labours on, doggedly exposing their ignorance to their hapless readers.

Go ahead, I encourage you to read the story in the Times of India which I have hyperlinked above. Please pay particular attention to the responsible and well researched bit of reporting reflected in the paragraph which reads "The issue of copyright on film titles was thrashed out by both sides. Varma's lawyers, Ravi Kadam and Amit Naik, argued that a title had no copyright or trademark, and that any trademark registration of 'Sholay' did not come in Varma's way."

And now that you've read the "fiction", here's the "fact":

The Plaintiffs, the right-owners in the blockbuster Indian film “Sholay”, had filed a suit before the Delhi High Court in October 2006 seeking to restrain a proposed remake of the film by Ram Gopal Varma, under the title “Ram Gopal Varma Ke Sholay”. Sholay, made in 1975, is hailed as one of the greatest films in the long history of Indian cinema. It attained cult status, and was screened in theatres continuously for five years after its release.

The suit was filed to restrain infringement of the registered trademarks SHOLAY and GABBAR SINGH (the name of the fictional villain of the movie who went on to become synonymous with "evil" in Indian cinema), and passing off by the Defendants.The suit additionally claimed reliefs in respect of infringement of the copyright in the cinematograph film itself. The latter relief treaded the fine line between remake rights and infringement of copyright. Since the suit was instituted prior to the release of the Defendants' production, the copyright claim was in the nature of a quia timet action and had absolutely nothing to do with the title of the film as claimed by our reporter.

On 5th October 2006, the Delhi High Court granted an ex parte restraint against the Defendants which prevented a release of the fim in its then-advertised state replete with the trademarks of the Plaintiffs. After an intensive series of hearings, lasting nearly nine months, an interim arrangement was arrived at between the parties on the 16th of July 2007.

The 16th July order records several undertakings provided by the Defendants to the Court. The Defendants have undertaken not to use the trademarks SHOLAY, GABBAR, GABBAR SINGH or any of the names of the characters from the original Sholay fim of the Plaintiffs including JAI, VEERU, BASANTI, SAMBA etc.

In addition the Defendants have also agreed that their production will not contain any portion of the script, screenplay, music, lyrics or any other underlying copyrighted work of the original production.

The arrangement of 16th July is without prejudice to the rights of the Plaintiff once the Defendants film is released. The suit continues, however, for damages etc.

PATENTING PHARMA SUBSTANCES: INDIA AND TRIPS

I came across this very incisive piece on pharma patents, TRIPS and India by Prabir Purkayastha in People's Democracy, a publication of the Communist Party of India (Marxist)..

An engineer and a science activist, Prabir is one of the founding members of Delhi Science Forum.

Whilst I agree with most of what Prabir states, I have a slight reservation with the highly contentious NCE (New Chemical Entity) vs Salt form distinction and the notion that we can somehow exclude all "salt forms" and other incremental innovations from patentability and still be TRIPS compliant.

As I've always maintained, denying patents to new salt forms without individually examining them under the traditional patentability criteria of novelty, non- obviousness and utility is likely to contravene TRIPS. Therefore, a "deeming" provision stating that all salt forms would always be presumed to be "obvious" or "not new" would count as an "arbitrary test" that may not withstand scrutiny under the "non discrimination" provision under Article 27. In other words, one cannot have a provision limiting the grant of patents to New Chemical Entities alone. However, by strategically tailoring standards of “non obviousness” or “inventive step”, one can limit the grant of patents to only those salt forms that are truly meritorious---in some ways, India seeks to achieve such tailoring via section 3(d), a section that is now in issue in the Novartis case. This was made clear in my submission to the Mashelkar Committee, whose report generated a great deal of controversy. For all posts relating to this issue, see the sidebar with the labels “Mashelkar Report on Patents” and “Novartis Patent Case in India”.

However, what is TRIPS compliant is one thing--and what is good for national policy is quite another--and sometimes (or many a time), never the twain shall meet.......

Therefore, countries ought to determine what works best from a national policy perspective and then bring in the TRIPS experts to suggest how their national policy solutions can be moulded to make it TRIPS compliant. Starting with the TRIPS compliance issue first and then working backwards to fit in national policy goals within such TRIPS framework (as was the case with the Mashelkar Committee and its mandate from the government) is tantamount to putting the cart before the horse!!. Certainly not a sensible move for countries that continue to see TRIPS as an inequitable international treaty.

Given that there was considerable asymmetry of information between the developed and the developing world, and that this treaty came to be signed by some countries under economic duress, one might be able to advance cogent arguments as to why this treaty ought to be voided from a contract law perspective. However, since this is no longer a politically expedient solution, the next best thing is for countries to look for ways in which to gut TRIPS obligations in so strategic a manner, that WTO actions brought against them will be likely to fail---and for those with some understanding of TRIPS, there are considerable “flexibilities” that enable one to adopt such a strategic move.

Of course, another option is to completely ignore TRIPS or other WTO obligations. The US, a country that was largely responsible for the advent of TRIPS, is a fine example in this regard and continues to be in breach of several WTO rulings against it. Noteable in this regard is a law that provides for the "business exemption" i.e. bars and retail outlets can play songs without paying royalties to copyright owners. Despite a WTO ruling against it in 2000, the US continues to maintain this law on its statute book. For a general view of cases where the US failed to comply with WTO rulings, see this note from the EC.

Anyway, back to Prabir's piece. I reproduce some of his paragraphs that I think are very critical to the debate on what the standards for the patenting for pharmaceutical substances ought to be in India.

Patent Wars And The Indian Scenario Prabir Purkayastha

“The now discredited Mashelkar Committee’s report talked about incremental versus breakthrough innovations and also on what is not TRIPS compliant in terms of patentability. In this, they provided little argument or evidence to substantiate their belief that making only New Chemical Entities patentable would not be TRIPS compliant.

The recent US Supreme Court judgement focuses its attention on when does incremental innovation becomes patentable and shows that Masheklar Committee did not apply its mind on the issue. The other issue is Mashelkar’s claim regarding incremental innovation versus breakthrough innovation, and how it is in India’s national interest to have incremental innovation to be patentable, not only breakthrough innovations. It is in this light the argument of not restricting patentability to just New Chemical Entities but also to others was presented.

We have already argued that Mashelkar’s brief was to only examine whether restricting patents in pharmaceuticals to New Chemical Entities would violate TRIPs. Instead of examining this question, he took up the question of what is in India’s national interest, which was not within his scope. However, let us take up the Mashelkar’s argument regarding incremental innovation versus breakthrough innovation. The Patents Act defines what is innovation that is patentable. In this, any incremental innovation that meets the criteria of non-obviousness, novelty and usefulness can be patented. Whether this makes the innovation ‘breakthrough innovation’ or an ‘incremental innovation’ is not a matter of law but of its significance in the field. If we take Mashelkar’s argument seriously, what Mashelkar seems to be saying is that Indian companies are incapable of making major innovations and therefore the bar of what is patentable should be lowered. Whether his judgement on Indian companies is right or not is not the point at issue.

The consequence of lowering the bar of patenting would mean a virtual floodgate of trivial patents and considerably strengthen the monopoly position of capital against the consumers. The argument for not allowing chemical entities that are not new does not flow from the non-obviousness provision of the Patents Act. The Patents Act defines the degree of innovation that would be required to qualify to be a patent. The US Supreme Court now agrees that giving patent protection to ordinary progress – incremental innovation in Meshelkar’s words – retards progress. However, in the chemical world, we could limit patentability to only New Chemical Entities (NCE’s) on the basis not of obviousness but of novelty.

Patent laws world over make specific provisions for specific areas. The biotechnology area has seen internationally such provisions. It is therefore permissible for India to declare that only NCE’s would pass the test of novelty. REVIEW TRIPS Would this be TRIP compatible? TRIPS allows different countries to set up different patentability criteria. It also allows differences such as whether the patent should be considered on ‘first to file’ basis or ‘first to discover’ basis. TRIPs is not a “harmonisation” of Patents Laws. It only prescribes certain elements that must be incorporated in all patent laws. This pertains to granting of product patents, no discrimination between domestic and foreign companies, no discrimination between different sectors and a common duration of the patents. As chemicals entities are specific only to pharmaceuticals and agro-chemicals, etc., it is possible to introduce area specific criteria such as New Chemical Entity for defining patentability. This would not violate discrimination between sector clause of TRIPs. Of course, the global MNCs would cry foul and so would their parent governments. This would also help in taking up the matter of TRIPs review.

It is now obvious that AIDS, malaria, TB are major killers in the developing countries. The economic consequence of a patent regime that helps drug MNCs at the expense of the people cannot be allowed to continue. The developed countries today give as aid and charity, money which ultimately subsidises the global pharma companies. Billions of dollars given for AIDS treatment sources medicines from global pharma companies at 50-100 times the price of its actual cost of production. This is a rip-off not only of the poor in developing countries but also of the tax payers in the rich countries. This is what the government needs to put in its agenda. The current patent regime has yet not caught up with us as we have the window that if the drugs were discovered before 1995, they cannot be patented here. This position is going to change soon, as newer pharma entities would now be patented as they were discovered after 1995. What are we going to do when diseases resistant to non-patented drugs make their appearance?

If we want to protect the health of the people, we need to take up on a multiple front the challenge of TRIPs and the patent regime. One is to seek review of TRIPS, specifically on public heath issues. The second is to tighten up the patent provision in pharmaceuticals, agro-chemicals and food even further. The third is to prepare for compulsory licensing in those areas where the disease load is significant, posing a public health danger. It is time that the Indian government views the world from the lens of the people and not through those provided by pharmaceutical companies.”

On reading this excellent piece, I wrote to Prabir and we had an interesting exchange, some of which I am highlighting below for interested readers (with Probir’s permission, of course). For the sake of convenience, Probir’s comments are marked with “PP” and mine are with “SB”.

1. PP: "If we take Mashelkar’s argument seriously, what Mashelkar seems to be saying is that Indian companies are incapable of making major innovations and therefore the bar of what is patentable should be lowered."

SB: Historically, most nations provide for "weaker" patents first so that their national companies can be part of the patent game and can do some "technology catch up" before going in for stronger regimes. This has worked well in many countries, including Japan. What's make India different--particularly, when we've had only a handful of NCE's discovered till date (since 1960's, only about 5-6 of them)---it takes a lot to come up wth an NCE and you can't acquire the skills and money to do this overnight. It has to be a gradual process. Of course, you're right in asking the question of whether the patent system is the best mode of incentivising this sort of innovation. But at the very least, it has to be acknowledged that Indian pharma cannot jump directly to NCE's without having some expertise in tweaking existing NCE's (incrementally innovating).

PP: Re incremental innovation. Here is what you and I are arguing about is what is incremental innovation. In my view, patent laws anywhere do not have a definition of breakthrough or incremental innovation, but only define what is patentable (non-obvious and novel) as an advance over existing innovation. So the quote below in my view qualifies for incremental innovation (mashelkar's example of hygroscopic version of the salt) "Granting patent protection to advances that would occur in the
ordinary course without real innovation retards progress," Justice Kennedy said. He added that such patents were also undesirable because they might deprive earlier innovations of "their value or utility."

In fact, under Apotex case, a less hygroscopic form of salt (Meashelkar's example) would not have qualified as a patent. So any incremental innovation is not patentable, only when it passes tests of nonobviousness and novelty, it is. I believe by arguing incremental versus breaktrhu, Mashelkar is purposely confusing the issues and wants to simply lower the bar of non-obviousness.


2. PP: "The argument for not allowing chemical entities that are not new does not flow from the non-obviousness provision of the Patents Act. The Patents Act defines the degree of innovation that would be required to qualify to be a patent. The US Supreme Court now agrees that giving patent protection to ordinary progress – incremental innovation in Meshelkar’s words – retards progress. However, in the chemical world, we could limit patentability to only New Chemical Entities (NCE’s) on the basis not of obviousness but of novelty. Patent laws world over make specific provisions for specific areas. The biotechnology area has seen internationally such provisions. It is therefore permissible for India to declare that only NCE’s would pass the test of novelty."


SB: The salt form may be completely "new"--not known to the world before. However, it may be "obvious" from the New Chemical Entity. Think of the Imatinib Free base and the Imatinib Mesylate salt form (Novartis case). It might be difficult to qualify IM as not "new"--if its not been disclosed or anticipated in the patent document claiming the free base. But you have a better case when determining that although "new", it's still obvious from the free base--you just combine the free base with methanesulfonic acid.

PP: There are two issues. One is what is good for Indian Pharma companies. The other is what is good for the people. So I would like, in the interest of the people, make patents in pharma harder to get. That is why, I honestly do not care what Indian pharma companies have
to do, but would like to define only NCE (by definition) as novel.

Whether the salt has been there or not does not matter: if one salt has been discovered, all other salts by definition are not novel. The real question is if I do this in my patent law, is it TRIPS compliant or not. My view is that it is. But definitely, if we pass this, pharma companies thru US or Swiss would take us to Disputes Settlement. That
would be interesting! After Apotex, would argue that Federal Court has put in tests of obviousness very similar to 3 d). So in any case, 3 d) protection stays as an additional one.


SB: As for NCE's, I am with you on TRIPS permitting us to limit, if we so wish. But why do you want to do this via "novelty"--which could get you into TRIPS dispute issues (as this may count as an arbitrary test and therefore violate of Art 27: salt forms that never existed before cannot be taken to be part of the state of the art). Isn't is more pragmatic and strategic for you to do this under "non obviousness"--which is what India seems to be doing via sectin 3(d). And we have much more TRIPS leeway if we do this via "non obviousness"

In Pfizer vs Apotex, amlodipine besylate was not seen as having "unexpected properties" over and above Amlodipine Maleate--because the skilled person could have availed of existing literature and his/her skills to get there. However, if another salt form could not have been so arrived at by the ordinary person (with knowledge of state of the art), it will qualify as "inventive". As for whether Pfizer vs Apotex is similar to section 3(d)--would depend considerably on how we interpret 3(d). If efficacy does not include heat stable properties (as this is a property related more to ease of manufacture and transportation and not so much wrt efficacy on body), then there will be a different b/w "unexpected properties" standard articulated by the US/Eu and the "efficacy" test in India.


PP: I agree that with 3d) we have tried to limit patents in some ways. The question is do we have a way of limiting patents to only NCE's under TRIPS (or at the edge of TRIPS) in addition to 3 d). So if only NCE's could be made explicitly as patentable ( 3 d) would have to argue this implicitly and with the window of efficacy), it would hep us limit patents, particularly in pharma. So my argument that we do this by definition: in chemicals, only NCE's are novel, this is derived from "New". If we recognise a category called New Chemical Entities, why can we not define that only NCE's are new and therefore novel. I am curious to know what prevents such a definition under TRIPS as TRIPS allows me to define my patent laws in my way, provided it is non discriminatory, etc. We can then add chapter and verse on what is an NCE, for which we have enough material. From what you indicate, it may constitute as an Arbitrary Test under Art. 27. If there is a concept in chemicals of what is a "New" entity, then how can it be considered arbitrary? All we would be doing is taking this definition of "new" and saying only new is novel. In any case, novel is new in patents law, so why not the reverse?

By the way, efficacy in 3 (d) should be construed as manufacturing/storage/transportation efficacy as well as therapeutic efficacy. So it should be considered broader than just therapeutic efficacy. Most people have read only therapeutic efficacy into 3 d) as this was the Novartis case, but I do not see why this should be restricted to mean only bio efficacy. Interestingly, if we take "new/unexpected properties", then Apotex interpretation is actually broader than 3 d), if 3 d) is interpreted as only bio-efficacy.


SB: A patent is claimed for an "invention". It is this "invention" that has to be tested against the criteria of "novelty", "non obviousness" and "utility". The invention in your hypothetical is the "salt" form and not the New Chemical Entity (which under your example is already known). If the salt form is not known before to a skilled person in the art, then by deeming it to be not "new", aren't you introducing an "arbitrary" test? However, it may be that the salt form, though "new", is still "obvious" to a person skilled in the art i.e. A skilled person could figure out how to arrive at the salt form, given the existence of the NCE and given known techniques in the art for combining the NCE with an acid to arrive at an acid addition salt. I hope this clarifies.

I really wish 'efficacy" is interpreted the way you read it. But till such time as we have guidelines in this regard or a court case, we can't be really sure. And I guess this is why it is important to let the Novartis case run its course, so that we have at least some guidelines on how to interpret "efficacy.

PP: Thanks for clarifying the point. Shall continue to think on this. From what you say, the New Chemical Entity could still have salt forms that are novel though not a new chemical entity. Your interpretation may be right, but will think that new and novel could be defined in chemicals
as same without being arbitrary. But I am not a lawyer!

Re efficacy: Yes, of course it would help if guidelines are clear on this. Though not sure this should be done by the Patents Office or by the Courts. Courts can be a little hit and miss on this.

Patent, Trademark Filing goes the E-way!

In keeping with the trend of adopting all things, 'E' and making systems more time e-fficient and e-z.... the Indian Government has introduced the e-filing system for patents and trademarks.

E-savvy indeed!

An article in The Hindu reports

The Government has launched a facility for e-filing of patent and trademark applications to speed up the process of securing exclusive rights over a product or trading symbol.

“With the launch of e-filing facilities, applicants can file their patent and trademark applications at their convenience through the Internet. Payments can also be made through payment gateway of authorized bankers, which would save time and money and the hassles involved in visiting and filing the applications in offices,” the Union Minister for Commerce and Industry, Mr Kamal Nath, said

The modules for e-filing and on-line processing have been developed by the National Informatics Centre, while the payment gateway is currently being provided by State Bank of India.

Mr Nath said that the next step is to make the Indian Patent Office an International Search Authority and an International Preliminary Examining Authority under the Patent Co-operation Treaty.

The Indian Government has been on a spree to shore up its IPR image and project itself as a mature player in the world IPR arena .Concerted efforts to revamp systems, legislations and the knowledge base have catapulted India into the elite list of nations that offer a conducive climate to protect investment and foster innovation through an effective IPR protective mechanism.

As of now five lakh trademarks have been registered in the country and efforts are being taken to ensure the backlog of applications is cleared promptly, Secretary in the Department of Industrial Policy and Promotion Ajay Dua said.

Last year, 29,000 patent applications were filed in the country, of which 8,000 were approved, he added.

Dua said the number of patents in the country increased by over 600 per cent from 1999-2000, when less than 5,000 applications were filed.

Dua said the government had undertaken a Rs 153-crore programme to modernize infrastructure of Intellectual Property Offices in the country, under which four new offices were built in metros. A National Institute of Intellectual Property Management would also be set up in Nagpur to train people in IPR.

A word of caution though….. What is essentially intended to raise the efficiency levels of the system, if used otherwise could potentially lead to frivolous registrations. Let us hope that what is primarily intended to serve does not act counterproductive and stifle.

The winds of change, brings with it the rain-the rain that can either fill the ears of the corn or add strength to the thorn.!!!!!

Novartis' objection to Chandrasekharan dimissed by IPAB

Pursuant to my earlier postings on this issue, the IPAB has dismissed Novartis's objection to the presence of Chandrasekharan as a technical member on the IPAB panel. As many of us expect, this decision is likely to be appealed--and apart from more biiling hours to lawyers involved in this highly politicized case, the delay will do no one any good!! I haven't seen the IPAB order yet--but it does seem like Novartis has a good case in trying to get Chandrasekharan off the panel and an appellate court may be more open to their objection.

The Business Standard Reports:


"The Intellectual Property Appellate Board (IPAB) has dismissed the application by pharma major Novartis to appoint a new technical member in place of former Patent Controller S Chandrasekhar to hear its appeal against the Patent Office’s denial of patent to its blockbuster blood cancer drug Glivec.

Novartis was of the view that Chandrasekhar, being the Patent Controller who denied the patent rights for Glivec, should not be on IPAB when an appeal against the decision is heard.

IPAB, in its hearing today, dismissed the Novartis plea. It is yet to give a date for hearing the original appeal.

Terming the development as disappointing, a Novartis spokesperson said the company is considering various options. "Today’s decision was a summary judgement and we will not know the panel’s reasoning until a full written judgement is issued. We will consider our options once we see the full text," she said."

iPhone and Antitrust Implications: US vs EU vs India

To continue our fascination with the iPhone (see Aysha's earlier post), I picked up an interesting news item pertaining to the antitrust implications of Apple’s exclusive deal with AT&A (Cingular).

If this issue cropped up in Europe, I could bet a thousand horses that the EC Commission will be far more likely to clamp down on the deal and hold that the "exclusivity" agreement between Apple and AT&T violates EU competition law norms. The EC is much more intrusive than any other competition authority that I know of—owing in large part to its “pro consumer” focus.

Unfortunately, in India, till such time as our bureaucratic and political bottlenecks clear up, we may not see the coming into force of the new competition regime. But it’s certainly worthwhile to reflect on this issue and see if the India’s Competition Act which has some provisions that are broadly similar to Article 81 and 82 of the EC code will be interpreted in a manner similar to cases in the EU. In other words, should we create an “efficiency” or business justification exception to the normal rule that exclusive agreements have a tendency to foreclose competition in the market and should therefore be voided. If we come down too strictly on exclusive tie up’s, would this hamper the rate at which innovative technology products are introduced in the market? Anyway, below are excerpts on the congress hearings:


“Congress's iPhone hearing starts tomorrow.

Its official title is "Wireless Innovation and Consumer Protection," but "Really, they're the iPhone hearings," says public interest lobbyist Ben Scott. The House Subcommittee on Telecommunications and the Internet is expected to consider the future of cellphone and wireless data communications, including the "unbundling" of cellphones from their carriers, while activists are pushing for a new wireless data network in newly-available spectrum. Both developments could ultimately affect AT&T's exclusive carrier status with Apple.

"We need to unbundle phones," according to Committee Chairman Ed Markey. He told The Street that "The consumer should be king and should be able to take their device with them, to whichever network provider is offering them a better deal… "

Wireless carriers find their phone and internet services facing new scrutiny after AT&T's exclusive carrier deal with Apple's iPhone. "Congress doesn't need to run a hearing on whether the iPhone is the coolest, shiniest gadget on the market…" says Scott. "The reason they're having a hearing is because the iPhone…is going to set the mold. This device and how it's treated by the Congress and the regulators in Washington is going to determine how we access the internet from now on with every device that follows in the iPhone's footsteps."

Markey set the tone for the debate, telling The Street that "the more portable these devices are, the more innovation we'll see."

Adding juice to the debate is the upcoming release of new airwave spectrum in early 2008. Reed Hundt, former chairman of the FCC, notes news reports panning the iPhone's internet service from AT&T as "pokey" and "excrutiatingly slow". He's calling for the creation of an open national data network, five times faster than AT&T's EDGE, as part of the airwave auction — "a new, independent national, high-speed, fourth generation, wireless broadband network available to Steve Jobs and all other entrepreneurs at very low cost." Noting this auction is "the last of its kind" — a one-time vacancy as TV stations switch over to a different digital spectrum — he warns that the carriers could launch a pre-emptive purchase to eliminate competition for a lifetime. In a nod to Apple, he calls his proposal "a great chance for the new FCC…to accomplish something insanely great. "

The current chairman of the FCC agreed yesterday - at least with the need for
an open network. "Whoever wins this spectrum has to provide [a] truly open broadband network…," he told USA Today, "one that will open the door to a lot of innovative services for consumers."

The same day the CEO of Working Assets continued its attack on the "closed network" model behind AT&T's exclusive iPhone deal. "Perhaps unfairly, we tend to think of the consumers of Apple products as being a bit more progressive than those who stick to the Microsoft world. We think that they should know that their use of the iPhone will enrich and entrench precisely those forces that are seeking to eliminate the very soul of the internet."

It's a unique moment in time, argues blogger Matt Stoller. "Right now, there are a few confluent events that are inspiring a lot of debate around the public airwaves, and it all hinges on the iPhone and its immense significance." To inspire a discussion, he's recorded a five-minute video presentation by public interest lobbyist Ben Scott.”

Exponential damages in Walt Disney civil suit

Disney Enterprises, Inc. & Anr. v. Jitendra Aggarwal & Ors.;
C. S. (OS) No. 175 of 2006 before the High Court of Delhi

A rather unique order was passed on 13th July, 2007 by the High Court of Delhi in a case of counterfeiting of Walt Disney characters by a party who was reproducing them on labels which were then being affixed on baskets and sold in the market.

At the first instance it may be pointed out that Disney Inc. is the holder of several device and word mark registrations in Idia in a variety of classes for a whole range of characters and their names.

The Defendants in the matter did not file any written statement despite sufficient opportunities granted over a period of nearly a year. On 13th July 2007, their right to file a written statement was closed and the counsel for the Defendants submitted that his client was willing to pay token damages of Rs. 50,000/- to the Plaintiffs and suffer an injunction in consideration of the Plaintiff’s withdrawing their claim for liquidated damages of Rs. 20 lakhs. The Plaintiff’s counsel accepted the amount of Rs. 50,000/- as token damages towards settlement of the damages component of the reliefs prayed for.

The court, in turn, issued an injunction restraining the Defendants and all others acting on their behalf from manufacturing, selling, offering for sale or advertising goods bearing the Plaintiff’s trademark and also directed them to deliver all infringing articles seized at the time of execution of the Anton Pillar order to the Plaintiffs for the purposes of destruction. The court additionally awarded the Plaintiffs costs of the suit and directed that the amount of Rs. 50,000/- which was to be paid as token damages towards full settlement of the decree of Rs. 20 lakhs be payable to the Plaintiffs within a week of the date of passing of the order.

The court additionally held that in case the amount was not paid within a week, the Defendants would be liable to pay Rs. 1 lakh the next week and if they defaulted further, then, in the third week, the Plaintiffs would be entitled to a recovery of the entire decretal amount. The uniqueness of this order lies in the court exponentially increasing the damages amounnt payable by the Defendants even when it is in the nature of a consent decree as opposed to a damages award, and thereby creating an inbuilt deterrence which would prevent the Defendants from violating the decree.

Needless to say, the order was deterrent enough for the Defendants to pay up before the period of one week was over!

Update on the Super Basmati.

Pursuant to my earlier blog on the Super Basmati, I received queries and clarifications on the patent status

On probing and analyzing the issue, I find the Pak allegation that India has filed a patent has trickled down from the Pakistan media and found its way into the Indian Press room. The Indian media(and to some extent I) has quoted them verbatim and fanned the issue without any independent verification

On checking the Big Patents Database compiled by Prof. Bhaven Sampat, I was not too surprised (something that Shamnad had so rightly intuited pursuant to my earlier blog) to find that there is no Patent application for the Super Basmati. This is again the proverbial case of the media conflating IP terms.I cannot rule out with certainty that this is a 'wolf call' from the other side of the border and that the Indian press is toeing the line . A bit of both seems likely!

What comes across clearly is that there definitely exists a doctrinal and definitional confusion on both sides...one that none has cared to delve , study or fix.There is no official confirmation forthcoming from either the Registry or DIPP either , despite a round of calls to corroborate the facts.

Further,I have also come across reports in the media where it is said that India plans to register the 'Grain' as a national trademark.(whatever that means!)I await a definition on that as well.
This issue seems to be mired in confusion one too many!

What stands established is that a G.I application was filed some years back, one that is moving at snails space.

An appeal to the media again......IP rights are distinct in themselves and hold far reaching implications in the current global scenario. Flirtatious attempts at reporting IP issues are thoroughly misleading and a !!!!......waste of precious time leading to consternation and confusion over non-issues.

Should the media want to engage in some light hearted reporting to keep the pulse ticking, suggest innocuous activities like a walk in the park or dance in the dance to indulge amorous reporting instincts.....May well save us the trouble of groping in the dark based on flippant deliveries!

Genome Valley Bags Certification Mark

Chandrabbau Naidu, the Ex-Chief Minister of Andhra Pradesh can wear the moniker ‘Biotech Babu’('Babu' is the Indian honorific for a senior officer) with aplomb and pride. Having spearheaded the Bio-Renaissance in the state, that placed the City of Hyderabad on the Biotech world map, the State ,thanks to the Babu ,has become the forerunner in producing cutting edge innovation and R&D in the fields of bio-all.

Bio-all that encompasses the field and flurry in the areas of bio-informatics, medics, agriculture et al.

Bio- all and Buoyant all the way!

Located in the State Capital of Hyderabad, is Indias’ first state-of-the-art biotech cluster providing world-class infrastructure to over 100 biotech companies. Spread over 600 sq. kms, the Genome Valley is a natural cluster for biotech research, training, collaboration and manufacturing activities.

Home to major Pharma companies and various centers of excellence such as the Centre for Molecular Biology, DNA Finger Printing, and the ICICI knowledge Park, the Genome Valley has grown in strength and reputation to earn the ‘most favored destination’ amongst MNC conglomerates desirous of setting upBio/Pharma operations in India.

Key player contributing to the growth momentum in this direction has been the CII that acts as the nodal agency for policy, regulatory and outreach activities happening in the Biotech arena in the State.

Noteworthy initiatives of the CII include the establishment of the IPR Cell in association with the Andhra Pradesh Technology Development and Promotion Center (APTDC) and Govt. of Andhra Pradesh with the primary aim of creating a strong IPR base in the state, to enhance the quality of Invention, Innovation; fine tune the institutional and Policy issues and shore up the patent regime. Working in close alliance with the Genome Valley innovators, this has provided a great thrust to IPR activity to preserve the Bio- assets that emerge out activity in the Genome valley.

As a result of the IPR policy and protection measures undertaken by them, The IP juggernaut is on a fast forward in the State of Andhra Pradesh. Having notched up a fair number count with G.I registrations, the Certification mark that was recently granted by the U.S for the Genome Valley is another shot in the arm for the City of the Jolly Nabobs.

Genome Valley was issued a registration certificate for the certification mark (Intellectual Property Rights) by the United States Patent & Trademark office (USPTO), headquartered in Virginia , Alexandria, U.S.A

Genome Valley, Hyderabad, Andhra Pradesh is India’s first state-of-the-art biotech cluster providing world class infrastructure to over 100 biotech companies. Spread over 600 sq. Kms, the genome valley is a natural cluster for Biotech research, training, collaboration and manufacturing facilities.

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It has also been granted a community trademark (Intellectual Property Rights) in the European Union in the year 2005. The Industries and Commerce Department, Government of AP, is the authorized user of the Certification Mark. This is a major milestone for the Govt of Andhra Pradesh to promote the brand name of genome valley in U.S.

CII - Andhra Pradesh Technology Development and Promotion Centre (APTDC) with the support of the Govt of AP started working on the project of registration in 2003. There was a huge need for registration of the "Genome Valley” symbol in US and Europe as to draw more foreign investments and promote the cluster.

The symbol of "Genome valley" has also been filed in India for registration and is now under the process of grant.

Certification marks are one form of Intellectual Property Rights, usually given for compliance with defined standards. They may be used by anyone who can certify that the products involved meet certain established standards. An important requirement for certification marks is that the entity which applies for registration is considered "competent to certify the products concerned”

A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner's permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

Footnote :I wrote this blog on my train journey to Bangalore…..alternating between writing this post and reading Khushwant Singhs ‘Train to Pakistan, my mental meanderings kindled thus:

Rising above the quagmire of challenges ranging from Colonialism, Feudal agrarianism, pathos of Partition, spills and spoils of the Raj, and now to mapping the human genome, has been a long interesting road, one that the country has navigated with skilful dexterity of a intrepid traveler who has successfully covered each milestone along the path and enjoyed every bit of the ride!

Borrowing flavor from Khushwant Singhs style of swishing wisecracks and earthy sense of humor….…..perhaps this blog should be titled the…The Fast Train to Hyderabad…..!!!!!!

COPYRIGHT OVER FILM TITLES?

An excellent summary of a recent decision dealing with copyrights over film titles from Manisha Singh, Partner at Lex Orbis, one of the prominent IP law firms from India (as extracted from an IBA newsletter). The decision seems a sound one--as I can't imagine a court protecting a mere new title as a "literary work" or as operating as a trademark (particularly when it is a new film that hasn't been advertised for long or is not part of a "series"). Anyway, here goes:


"The recent decision in Kanungo Media (P) Ltd v RGV Film Factory (2007 (34) PTC 591 (Del)) considered the use of identical titles for two films released at around the same time. In the Indian film industry titles are obtained from regional film trade associations that maintain records and reserve titles at the request of producers. In the present case the Delhi High Court addressed the question of whether the title of a literary work can be protected under the Copyright Act 1957 and, if not, whether trademark principles can be used to protect it.

Facts

Kanungo Media (P) Ltd had adopted the title Nisshabd for its Bengali film and had exhibited the film at several film festivals, However, the film was not released publicly. Subsequently, the producer of the film learnt that RGV Film Factory had adopted the same title for its forthcoming film in Hindi. Kanungo filed suit for a permanent injunction for copyright infringement and passing off by RGV. Kanungo stated that its film had been shown at many film festivals and had received awards and accolades; thus, it had acquired distinctiveness among the film industry and the public. It further claimed that use of the word 'nisshabd' or a word deceptively similar to it was bound to cause confusion among the film industry and the public, and would imply an association with Kanungo. In addition, Kanungo claimed that the title was aesthetically and philosophically connected with the key theme of the film, and thus it held copyright in the title. Kanungo stated that during the pendency of the suit it had applied for registration of the titles Nisshabd and Nishabd as trademarks. It argued that it had acquired prior rights over those titles and that subsequent use of an identical or similar title by another party in respect of a film would amount to passing off. It sought relief in the form of a permanent injunction for copyright infringement and passing off, as well as damages and costs. In addition to the suit, Kanungo filed an interlocutory application for an interim injunction.

Kanungo contended that RGV's use of the title was carried out in bad faith. It also alleged that RGV learnt of the film title at a film festival where Nisshabd was shown, and within a short time of the screening RGV had applied to the Western India Film Producers Association to reserve the similar title Nishabd. It further contended that its financial position had prevented it from taking court action earlier, and that it had believed in good faith that once the Central Board of Film Certification had issued a release certificate for its film, it would not grant certification for a film with a similar title to RGV. As soon as Kanungo learnt that the board had awarded a release certificate to RGV, it applied to the court for relief.

RGV argued that Kanungo had approached the court in a belated manner as RGV's film had already been completed and was about to be released. RGV also contended that it had already invested a large sum in the promotion of the film. Accordingly, it noted that the delay in filing the suit was fatal since Kanungo had been aware for some time of the adoption of the title and forthcoming release of RGV's film. RGV claimed that the delay in filing implied that Kanungo consented to the use of its title by RGV and therefore the grant of an injunction could not be justified.

Decision

The Delhi High Court addressed the question of whether the provisions of the Copyright Act could be extended to protect film titles as literary works. The court observed that in the United States, film titles are protected under the Trademark Act rather than the Copyright Act. It held that in India, the legal position in respect of film titles is the same as in the United States. The court observed that film titles fall into two categories: titles of series of film and titles of single copyrighted works. Protection is certain as regards titles of series of film, and such titles enjoy standard trademark protection. However, the court found that in order to extend this protection to the title of a single copyrighted work, it must be proven that such title has acquired a wide reputation among the public and the industry - that is, has acquired secondary meaning. Therefore, in order to obtain an injunction the onus is on the plaintiff to establish that its film title has acquired secondary meaning.

The court also addressed the impact of the delay in bringing the suit before the court. Based on the documents on record, the court held that Kanungo was aware of the adoption of the title and the making of the film under that title by RGV. However, Kanungo refrained from legal action and RGV proceeded with the production and release of its film. Kanungo's silence was fatal and amounted to a waiver of its rights. The court also cited the decision in Ramdev Food Products (P) Ltd v Arvindbhai Rambhai Patel ((2006) 8 SCC 726), which held that delay in taking action implies acquiescence. Therefore, the court dismissed the suit.

Comment

India faces a lack of judicial precedent in such cases. This case is a commendable attempt by the judiciary to fill the gap. The court's decision reinforces the established position that the title of a copyrighted work cannot on its own enjoy protection under the Copyright Act."

Urmi Juvekar Chiang v. Global Broadcast News Ltd. and Anr.

If the caption does not a ring a bell it is probably because most popular newspapers have not been covering this matter. There are of course a number of reports on the facts of the case on the internet (See for example, here, here and here) but I haven’t so far come across any analysis of the law relevant to the case. This is probably because the judgment itself is very hard to get a hold of. Thanks to my friend who is an advocate in the Mumbai HC, I was able to get an authenticated copy of the interim order no. S/1467/2007 dated - 07/06/2007 (which was the order refusing the appeal to vacate the stay granted earlier). I have also been speaking with counsel working on the matter. While I work to get my hands on the reasoned order, here’s an analysis of the issues that emerge from the facts.

To begin with, for those of us who haven’t heard about the case the brief facts are as follows:
In November 2005, Urmi Juvekar, a documentary film maker, came up with a concept which she called ‘Work in Progress”. The concept note, which was registered with the Film Writers Association, Mumbai, disclosed the idea of a reality show on TV which would follow citizens from around the country as they took the initiative to solve a civic problem of their choice in their locality. The show would follow the citizens and telecast the hurdles that the citizens face in solving the problem - the bureaucracy, the general attitude of the people and the final outcome. See more details of the concept here. and for a detailed sequence of events see here.

The concept note was sent to CNN-IBN, which initially took great interest in it and a number of meetings with directors, line managers and producers followed. Discussions continued until February 2007 and then stopped abruptly. On April 19, 2007, Ms. Juvekar-Chiang saw promotions of the program titled “Summer Showdown” on CNN-IBN which, in the words of Rajdeep Sardesai, CNN-IBN’s editor in chief, “promise[d] to be a captivating account of citizens from across the country on the civic conditions of their cities.” Mr. Sardesai further stated, “With inclusive journalism as our mantra, CNN-IBN hopes to not only give voice to the plight of citizens but also elicit among others a sense of civic responsibility." The program was to be aired daily in the form of short three-minute stories on CNN-IBN's news (click here for details). Ms. Juvekar filed a petition claiming injunction and damages on the grounds of breach of confidentiality and copyright infringement on May 21, 2007 before the Mumbai High Court.

From these facts, the issues that pop into mind immediately are:

(1) What kind of protection is a concept note entitled to? Is it just an idea written down?
(2) Does the concept note amount to a literary work under copyright laws?
(3) Would the TV program based on the concept note constitute an “adaptation” of the literary work?
(4) What other legal theories are applicable to the facts?

If one were to consider copyright laws in their very strict sense – namely, that ideas cannot be protected, the immediate conclusion would be that a concept, even for a TV show, being a mere idea is not protected under copyright law. Arguably, even if the idea were to be reduced to writing in the form of a concept note, the creation of a TV program based on the same idea (or concept) would not violate the literary work. It could be argued that the TV program would constitute an adaptation of the literary work and would therefore be an infringement of the copyrighted concept note. However, the term adaptation has been defined in a manner as to not include a cinematographic work at all.

Section 2(a)(ii) of the Copyright Act, 1957 defines “adaptation” in relation to literary works as “the conversion of the work into a dramatic work by way of performance in public or otherwise.” Section 2(h) defines “dramatic work” as not including cinematographic films. Further, section 2(m)(i) defines “infringing copy” in relation to literary work as “a reproduction thereof otherwise than in the form of a cinematographic film;” Interestingly however, the Explanation to section 51(b) appears to contradict section 2 (m) [or as one court has state, “carves out an exception to section 2(m)” see (1991) 107 Mad LW 220] in that it provides that for its purposes, the reproduction of a literary … work in the form of a cinematograph film shall be deemed to be an ‘infringing copy’. [Section 51 deals with when a copyright is infringed.]

Further, Section 14 of the Copyright Act, 1957 states:

14. “…, ‘copyright’ means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of any of the following acts in respect of a work or any substantial part thereof, namely, -

(a) in the case of a literary, dramatic or musical work, not being a computer programme, -
(i) …;
(ii) …;
(iii) …;
(iv) to make any cinematograph film or sound recording in respect of the work;
From the above, although there seems to be a contradiction between sections 2(a)(ii) read with 2(h) and 2(m) and section 14 read with the Explanation to section 51(b), it appears that the exclusive right to make a cinematograph film in respect of a literary work lies with the author of the literary work.

By the time I finished going through the relevant provisions of the Copyright Act, my head was spinning thinking how one can know for sure whether a concept note is a mere idea that does not merit protection or whether it is a literary work, a subsequent creation of a TV program based on which would contravene section 51 of the Copyright Act. While I was discussing the issue with Shamnad, he suggested I look at Swayamavar case decided by the Delhi High Court a few years ago.

The facts and the arguments of the parties in the Urmi Juvekar case are very similar to the arguments taken by the parties in Swayamvar case, officially Mr. Anil Gupta and Anr. Vs. Mr. Kunal Dasgupta and Ors. IA 8883/2001 in Suit No. 1970 of 2001 (Delhi High Court 03.06.2002) (Popularly referred to as the Swayamvar case, Swayamvar roughly translates as finding one’s own groom. Swayamvars were conducted in olden times by royal households where the King would invite eligible bachelor princes and the King’s daughter would choose one of the invited princes as her husband.).

In the Swayamvar case, the Plaintiff had given a concept note as well as attended a number of meetings with the defendant in which he gave a detailed description of his idea for a reality show in which an Indian woman would choose her own spouse from among a number of suitors. After these meetings, Sony TV came out with a show titled “Shubh Vivah” based on the same concept.

On these fact, the Delhi High Court held that “An idea per se has no copyright. But if the idea is developed into a concept fledged with adequate details, then the same is capable of registration under the Copyright Act.”

The court further observed that “In the modern day, when the small screen has taken over the earlier means of mass communication like radio, idea/concept/script of a broadcaster has wider potentiality of capitalising revenue and if that idea/concept or script is not protected then in a given case, a person who has conceived an idea to be translated into the reality TV show which could be key to its success with audience then channels with their enormous resources could always be in a better position to take the idea/theme/concept from any author and then develop at their own end and the original author of the concept will be left high and dry.”

The court further held that “One has to bear in mind that persons who create an idea/ concept or theme which is original, laws must ensure that such like people are rewarded for their labour….Otherwise authors of the ideas who are individuals, their ideas can be taken by the broadcasting companies or channels owning companies and the persons who has conceived the same, would be robbed of its labour.”

The above observations appears to come dangerously close to protecting an idea per se. It seems in fact that the court is carving out an exception to the rule that ideas per se are not protected by copyrights to accommodate the special circumstances of the “small screen”. Although the decision in the Swayamvar case is well reasoned and cites a number of decided UK cases, I found myself struggling to understand where, under well established principles of copyright law, one can place this reasoning. The struggle was partly the result of the holding of the Supreme Court in R.G. Anand v. M/s Delux Films & Others, where it was held that “there can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work.”

In relation to confidential communication, the court in the Swayamvar case held “When an idea or concept has been developed to a stage that it could be seen to be a concept which has some attractiveness so as to get an audience on a television programme and could be realised as an actuality then the concept is capable of being the subject of confidential communication.” The court observed that “In television industry, it matters as to who has gone first, once the reality show is televised on the television, the same comes within the purview of public domain and anybody else can take up the same concept and launch their own television programme.”
The Swayamvar court concluded that “Shubh Vivah based on concept of spouse selection in any form as a reality TV show cannot be permitted as that has been conceived by the plaintiff at the first instance.” The court explained further by stating that “To depict match making in the form of a reality TV show or spouse selection, is the theme of the concept. How it is done, who plays as anchor person, gifts are given or not, may be the various elements which may differ but if Shubh Vivah is based on match making process to be televised on the TV as a real life drama, defendants cannot reap the fruits of labour put in by the plaintiff in this regard.”
The Mumbai HC has held in the Urmi Juvekar case that: "The argument of the defendants that there can be no copyright in the theme of citizen activism towards civic problems, and that the said theme cannot be considered to be original or entitled to copyright protection in favour of the plaintiff exclusively, would have been valid only if this court were to find that treatment, format, structure, expression and presentation of the programme Summer Showdown were materially dissimilar and do not resemble the literary work of the plaintiff." Quoted here.
The rationale of the judgments in both cases is clear. Speaking the language of equity and fairness, it cannot be denied that concept notes that are submitted by individuals need to be given protection in order to encourage ordinary people to communicate their ideas and see their fruition into TV programs. Else, it may lead to a result wherein no individual who has a concept for a TV program, movie or screen play would feel comfortable disclosing it to a prospective producer or TV channel. In the Swayamvar case, the court did an excellent job of explaining the rationale. I am now eager to read the reasoned order of the Mumbai High Court to see if it also discusses provisions of the law in greater detail. I have been told by counsel who are working on this matter that CNN will probably appeal the Mumbai High Court’s decision in the Supreme Court. We’ll keep you posted on the analysis. Please keep the comments coming in. :)

Super Basmati to the Fore!

Yet another Basmati bombshell is in the offing! The Basmati –patent saga continues and this one comes from right across the border. Pakistan all set to challenge the Indian patent of the Super Basmati, a fresh round of ‘rice diplomacy’ is expected. The Indian Basmati having passed through a phase of protracted wrangling to wrest the Indian grain from the patent pirates, it is turn the turn of the Super Basmati Rice to be embroiled in a battle to establish supremacy of right and legitimacy of origin.

Pakistan plans to take legal action against India over a dispute on patenting of Super Basmati rice, a media report in Islamabad said on Tuesday.

Pakistan accuses India of "deceiving" it by patenting the variety of Basmati rice on the basis of Geographical Indicator (GI) and intends to file a case in the Supreme Court of India.

"Trading Corporation of Pakistan & Rice Export Association of Pakistan will now represent the petitioners in India," the 'Observer' newspaper said quoting officials.

Leaders of the rice exporters associations of both the countries would meet in New Delhi on July 18 to discuss the prospects of joint registration and a joint export strategy of it.

The controversy kicked off, pursuant to a notification dated May 24^th May issued by the Commerce Ministry amending Basmati Rice (Quality Control and Inspection) (Amendment) Rules, 2006 declaring Super Basmati eligible for export. This move in consequence is likely to substantially impact Pakistans’ monopoly sway over the market in terms of export of Super to the West.

While Basmati is sui generis to both India and Pakistan, Pakistan claims that the Super Basmati is an indigenous discovery. In an interesting development, the Founders Group of the Rice Exporters' Association of Pakistan stated in a presentation to the EU recently that Pakistan's Super basmati is an authentic variety developed as per the original methods under which Basmati-370 was approved for the first time. Basmati-370 was first found at Kolu Tarrar in Hafizabad district in 1926. India did not grow basmati in commercial quantities as early as the 1970s and eventually developed a variety called Pusa.

In contradistinction, the Punjab Agricultural University in Ludhiana agrees that the seeds were sourced from Pakistan, but claims that the variety in question is an ‘evolved’ one that was engineered after intensive R&D efforts, and hence its claim to a patent and eligibility to be certified as ‘exportable’ is valid.

Further, to add insult to injury, India acquired a first mover advantage by making the first move to register the Super Basmati G.I in the EU, while Pakistan clearly tarried over establishing its rights. Early bird gets the Super and in that India has clearly obtained an edge over its counterpart.

The fall out of this face off, the G.I talks between India and Pakistan scheduled for the first week of July has been called off, with Pakistan alleging that India has resorted to subversive tactics to acquire the patent vide the notification and G.I.

With the stage set for a pitched battle this one has all the makings of a Super IP Nuke. Both sides equally poised with respective claims that appear legitimate, who will walk away with the spoils of the war is anybody’s guess!

JC BOSE, WIRELESS TECHNOLOGY AND PATENTS

I’d blogged earlier on India’s contributions to mathematics. As some of us are aware, it wasn’t just in mathematics, but in several other areas of technology that Indian accomplishments are overlooked in standard text books and literature. In fact, in ancient India, scientific breakthroughs range from references to astronomy in the Rig Veda to Shushruta’s trysts with plastic surgery.

This note captures Shushruta’s brilliance:

“The practice of surgery has been recorded in India around 800 B.C. This need not come as a surprise because surgery (Shastrakarma) is one of the eight branches of Ayurveda the ancient Indian system of medicine. The oldest treatise dealing with surgery is the Shushruta-Samahita (Shushruta's compendium). Shusruta who lived in Kasi was one of the many Indian medical practitioners who included Atraya and Charaka.

Shushruta was one of the first to study the human anatomy. In the Shusruta Samahita he has described in detail the study of anatomy with the aid of a dead body. Shusruta's forte was rhinoplasty (Plastic surgery) and ophthalmialogy (ejection of cataracts). Shushruta has described surgery under eight heads Chedya (excision), Lekhya (scarification), Vedhya (puncturing), Esya (exploration), Ahrya (extraction), Vsraya (evacuation) and Sivya (Suturing).

OPHTHALMIC SURGERY: Shushruta specialised in ophthalmic surgery (extraction of Cataracts). A typically operation per formed by Shushruta for removing cataracts is desired below.

"It was a bright morning. The surgeon sat on a bench which was as high as his knees. The patient sat opposite on the ground so that the doctor was at a comfortable height for doing the operation on the patient's eye. After having taken bath and food, that patient had been tied so that he could not move during the operation."

The doctor warmed the patient's eye with the breath ~ of his mouth. He rubbed the closed eye of the patient with his thumb and then asked the patient to look at his knees. The patient's head was held firmly. The doctor held the lancet between his fore-finger, middle-finger and thumb and introduced it into the patient's eye towards the pupil, half a finger's breadth from the black of the eye and a quarter of a finger's breadth from the outer corner of the eye. He moved the lancet gracefully back and forth and upward. There was a small sound and a drop of water came out. “

The list of scientific/technological breakthroughs in India is a long and impressive one. What is interesting for me personally are India inventions in the post patent era. Notable amongst these would be the works of JC Bose. A long standing controversy has been over whether Bose ought to be credited as the first inventor of the “wireless”. See this note by Varun Aggarwal which begins with:

“The aim of the present article is to acquaint the younger generation that the real inventor of wireless was not Guglielmo Marconi (Italy), but Jagadish Chandra Bose (India). The classic paper of Dr. P. K. Bondopadhyay [1] published by the IEEE has now established this fact.”

Bose’s antipathy towards patents is well known, although he is credited with being the first Indian to ever have filed a patent (thanks largely due to the compulsions of two of his friends). Prof Kochhar, in a note states:

“In May 1901, Bose wrote to his friend Rabindranath Tagore: "...the proprietor of a reputed telegraph company...came himself with a Patent form in hand...He proposed to take half of the profit and finance the business in the bargain. This multi-millionaire came to me abegging. My friend, I wish you could see that terrible attachment for gain in this country, that all engaging lucre, that lust for money and more money. Once caught in that trap there would have been no way out for me."

If only Bose had understood the real value of patents and used it strategically to create wealth for the country!! Had he appreciated that a government cannot indefinitely fund R&D, he might have commercialised his inventions and used the money to fund more research and perhaps even to build more scientific infrastructure in the country --without necessarily falling into the “lust for money” trap. Particularly so, when his fellow scientists were not as charitable with their knowledge, but were using it strategically. Professor Kochar notes:

"There can be no doubt, as P.C. Ray reminded the audiance assembled in 1916 to greet Bose on his knighthood, that "If he had taken out patents for the apparatus and instruments which he had invented, he could have made millions by their sale". More importantly, he would perhaps have become an Indian role-model for production of wealth through science. As it is, Bose abandoned radio waves altogether, there were no trained students to continue the research; and India's tryst with technical physics came to a premature end.”


Anyway, an interesting counterfactual to pose would be:

What if JC Bose had patented his inventions? Would this have helped him gain recognition as the true and first inventor of the wireless? More importantly, would this have changed things in terms of how and to what extent wireless technology (and other technologies with which he is credited) might have developed in India and abroad. And would his have influenced the direction of science/technology in India and more importantly, the attitude of Indian scientists towards patents? I’d be intereted in hearing your views.

Emerging Issues in G.I:Muga Silk@ Assam

Emerging Issues IN G.I: Muga Silk@ Assam.

Environmental Concerns cloud the Muga Silk Industry of Assam.

‘Round and round the mulberry bush’, sing children in praise of the fine art of silk weaving. If only it were so simple to weave silk by going round the mulberry bush, we would all be clad in the finest of silks fit for the king. And if royalty were to indulge their tastes, it would be nothing less than the Muga Silk of Assam.

Muga silk popularly referred to as the ‘King of Silks’ is traditionally produced in the Brahmputra Valley of Assam. A traditional craft that has been practiced for centuries provides a great fillip to the socio-economics of the state. Traditionally a green agrarian society, western consumerism and faulty urban living have taken a toll on the sericulture industry of Assam. Environmental Pollution and negligent waste disposal mechanism threaten to disturb the fine balance of the ecological mantle and industrial well being of the region.

An application for the G.I rights of the Muga silk has been filed by the Assam Science and Technology Council based on the data generated by the Institute of Advance Studies in Science and Technology (IASST), a premier institute engaged in R&D of Muga Sericulture.

An extract from the G.I journal reads:

Muga the golden yellow silk produced by the Antheraea assama is found only in the Brahmaputra Valley of India. The shimmering yellow golden silk is referred to in literature from as long as 1662 B.C.The Anthraaea Assamensis is cultivated especially in the Brahmaputra Valley because its characteristic ecological requirements are found only in its natural abode.

As the name suggests, the people of Assam have been traditionally engaged in the cultivation of Muga Silk. Historical Records indicate the presence of Muga Silk in the Brahmaputra Valley since 321 B.C which was also on the silk route.

At a time when the industry can rest on its laurels and take comfort in the fact that a G.I right is on its way, environmental pollution emanating from the Gawhati Municipal Corporation (GMC) is likely to affect the fate of the G.I or for that matter the continuance of sericulture industry in the area. On investigation it was found that toxic fumes from the burning of urban waste at the GMC has stunted the growth of the silkworms and the Som plants reared at the IASST. As a result, the Muga silkworms failed to attain maturity for three consecutive seasons. Long and short, R&D efforts in this direction have slowed down, that is likely to act as an impediment to the G.I process.

A fit case for environmentalists to make a strident statement. A greater cause for activists of IP rights.

Mother Nature envisaged a web of interdependence in her panorama of creation. Wise and quirky she embedded a domino effect amidst constituents, to ensure a harmonious interplay. Thus a tectonic plate shift off the coast of Malibu could render asunder the economy of Maldives. Creation and survival was essentially intended to be a combination of the various sciences-pure, natural and social that spans boundaries.

The problem faced by the Muga sericulture trade is largely a ecological menace. Nonetheless, this is likely to have a cascading effect on the G.I Rights to be acquired which in turn would have an adverse effect on industry and socio-economics of the state.

The case in point established here is that any IP right cannot be examined in isolation, whether it is a product of the mind, process, or land. Broadly speaking a trademark is a combo of IP and commerce, copyright arises of art, patent from industry and G.I from the characteristics of the land .An analysis of any contentious IP matter is likely to throw up an array of underlying factors ranging from public health, environmental, regulatory, sociology, sustainable development, and the entire gamut of issues that govern society at large.

As is the case with all other IP rights, G.I rights can be established in purpose and spirit only if other surrounding factors are addressed. Geography is not a stand alone science either. If the exercise is aimed at conserving products of geographical origin, it is imperative that we look at the associated factors that go with it however disparate or remote they seem.

Post GI legislation, there has been a renewed interest in the direction of craft revival. Much debate has been aroused, both at Mandi house and at coffee tables. I don’t discount the importance of any debate- all debates lead to the solution and help to further the case.

Here I seek to make a difference between a case and a cause- and for those who know the difference there is one. Laudable coffee table banter add to the case no doubt, but if hearts bleed over a cause then it is worth the effort to walk the extra mile and get your hands dirty with the grime of the cause.

In the context of Muga Silk, we need to act before the fine silk curtains go down on Muga sericulture and the silkworms get smoked out their habitat. …in which case the G.I right may stand reduced to a mere document on the wall and the nursery rhyme is sung as an eulogy to the dying silkworms of Assam.