Hari Puttar: Reviewing the movie and the judgment

The movie reviews of ‘Hari Puttar’ are still flowing in and trust me they aren’t very flattering towards the movie. CNN-IBN’s Masand apparently couldn’t even sit through the first half because it was that bad. Another review from buzz18.com ran the title of the review as ‘Hari Puttar is such crap’.  The Indian Express was of the opinion that the “script which doesn’t know the meaning of sense, and so full of holes that several large-size trucks can drive right through.” However they also rightly pointed out that the movie was targeted at 6 year olds who weren’t really concerned with the finer nuances of film-making. The Times of India, whose sister concern Mirchi Movies produced the movie, was the only national paper which gave Hari Puttar a flattering review. The ToI ‘lauded’ the movie as ‘cute’.

       The million-dollar question however is whether anybody in the audience confused Hari Puttar as a desi version of Harry Potter. The Guardian’s review  seems to suggest that this did indeed happen with a couple of moviegoers who had bought tickets for the movie thinking that it had some connection to the original Harry Potter series.

This brings us back to the Delhi High Court judgment and its summary dismissal of the plaintiff’s argument that the phonetic similarity between Hari Puttar and Harry Potter was confusing the general public. I use the word ‘summary’ because the court has disposed this very central issue of confusion in one paragraph while dwelling on the issue of laches/delay in much more detail. Readers may remember Sumathi’s earlier review of the judgment where she had pointed out that the Delhi High Court was of the opinion that the target audience for Hari Puttar was the cognoscenti and not the illiterates and that the cognoscenti, who were conversant with Harry Potter, could easily distinguish between Harry Potter and Hari Puttar. I’m sure not many of you will disagree with me when I say that this is an odd standard to follow for a movie which was targeted at kids below the age of 13 years. The plaintiffs had asked for the case to be judged from the more conventional standard of “a person of average intelligence and imperfect recollection” however for reasons which are not clear the judgment ‘summarily’ dismissed this argument. It is also quite surprising that the Delhi High Court has not given much weight to the substantial evidence produced by the plaintiffs pointing out to the confusion in the media between Hari Puttar and Harry Potter. The most damning piece of evidence was the fact that a news release by Mirchi Movies itself sought to clarify that the Hari Puttar was not a spoof of Harry Potter.

If the producers themselves sought to clarify that Hari Puttar was not a spoof of Harry Potter then I would think that this is more than ample proof of a prima facie case of possible confusion in favour of Warner Bros. Given the fact that the single judge disposed this issue without adequate reasons it would be interesting to see whether Warner Bros. appeals against this decision.         

Breaking News: Natco Withdraws "Doha" Compulsory Licence Application

SpicyIP has reason to believe that the Natco compulsory licensing application in respect of Roche's "Tarceva" and Pfizer's "Sutent" has been withdrawn. Apparently, Natco sent a letter to the patent office, requesting that its application be treated as withdrawn. We'll confirm this news soon. Natco's decision to withdraw may have stemmed from a fear that it would lose on merits.

For our earlier posts on India's first "Doha" compulsory licensing application, see here. In short, the dispute revolves around a "Doha style" compulsory licensing application filed by Natco who argued that in view of a public health problem in Nepal, it ought to be granted a compulsory license to export generic copies of Pfizer's patented anti cancer drug, Sutent (and Roche's patented drug, Tarceva) to Nepal.

In our latest post, we discuss the patent office decision in favour of Pfizer and Roche's right to be heard and state:

"It is important to note that this is not a decision on the main merits of the dispute. Rather, it is on whether or not the patentee, Pfizer has the right to be be heard. In a well reasoned judgment running into 13 odd pages, the Assistant Controller of Patents, Hardev Karar (who we predicted in our earlier post would render a "well reasoned" decision) ruled that Pfizer has the right to be heard....


From a close reading of the judgment, it appears that part of the reason underlying the patent office decision to grant such a right to be heard stems from the various "deficiencies" in Natco's application. The decision notes:

"In the instant case, the documents submitted by the applicant are not admissible because of the following reasons:

i) The letter issued by the government of Nepal, said to be permission for importation of patented pharmaceutical product is not in the language as recognised by Indian patent rules. Therefore, this letter cannot be considered as permission for import by Nepal government.

ii) The requirement for the importation of the patented drug from India has not been notified to the TRIPS Council by the Govt of Nepal.

iii) Rule 96 requires the applicant to set out the terms and conditions of the licence which he is willing to accept. The applicant has not complied with this requirement."

No doubt, the above statements ought to have been made during the final disposal of the case and not at this stage, which was confined to adjudging whether or not the patentee has a right to be heard. However, these statements indicate that the patent office was concerned that the Doha CL process ought not to be abused by generic manufacturers that wished to make a quick buck. Therefore, the best way to ensure this was to hear the other side as well ."

Natco's decision to withdraw its application may have stemmed from a fear that it would lose on merits.

Good Bye (with some more thoughts on Bayh-Dole)

It’s been about one year and six months since Shamnad introduced me to the wonderful world of blogging. Yet again, he did what he has always done as a mentor and very dear friend – teach me new things and give me opportunities to learn. In these past 18 months, I have indeed learned a great deal from this and other blogs. I have felt personal satisfaction and pride as the blog became more and more popular and respected. Today, I think it is safe to say that it is an honour to be associated with Spicy IP. It is with great sadness therefore that I write my last blog as an official Spicy IP blogger. (Sometimes circumstances are such that one cant do all the things one really wants to ☹) I will of course attempt to squeeze in blogs as a “guest” if my posts meet the “Spicy” standards for guest blogs ;)

So here goes: the last in the series of blogs on “Does India need a Bayh-Dole?” (I confess – I still haven’t found a satisfactory answer to this but I hope the following helps others reach one). As far as we know and have stated in this space before, no background studies seem to have been conducted prior to formulating the Bill. I decided therefore to do my own snooping around and uncovered some interesting numbers in the process.

Today’s analysis relates to the definition of “Recipient” under clause 2(9) read with clause 2(2) (defining ‘funding agreement’) and 2(1) (defining ‘fund’) of the Public Funded R&D Bill (hereinafter, "the draft Bill") In an attempt to study the possible impact of the draft Bill on public funded R&D in India, (and see exactly who it would make accountable), I started studying the “Public Funds” allocated for R&D in India and the manner in which these funds are allocated. But first, lets look at the relevant definitions under the Bill (reproduce here for convenience):

2. In this Act, unless the context otherwise requires

(1) "Fund" shall mean & include all monetary resources provided by Government to a Recipient(s).

(2) "Funding agreement" means any contract. grant, or cooperative agreement entered into between any Government agency, and any Recipient(s) for the performance of experimental, developmental, or research work f1mdcd in whole or in part by the Government.

(9) "Recipient(s)" means any institution, non-profit organization(s) or any other entity that receives money for research and development under a funding agreement with the Government.

The term ‘funds’ is defined very broadly to “mean and include all monetary resources provided by the government to a Recipient.” However, a “Recipient” is a person that receives government funds under a ‘funding agreement.’ As far as I understand the provisions of the draft Bill, the 'funding agreement' needs to be in writing and incorporate the terms of the model funding agreement annexed to the draft Bill as Schedule 1. (See for example, clause 3(1) of the draft Bill that requires that all Recipients accepting grants or funds to sign and ratify a “funding agreement” of the type prescribed under Schedule I.) However, not all public funds for R&D are given under such a written contract. I thought it would be interesting to get an idea of what % of India’s R&D expenditure would get covered by the draft Bill (if it were to be passed in its current form):

The public funding mechanism for R&D in India is very interesting. This is roughly how it works:

First, it’s important to note that over the past 15-20 years, the Indian government has been spending about 0.8% of India’s GDP for R&D (yup, that all – 0.8%! See R&D Statistics 2004-2005, NSTMIS (Chapter 1, page 6).
India's S&T Policy 2003 talked about increasing this to 2% by the end of the 10th plan i.e. by 2007, but I am not sure what the current status of that plan is). The planning commission of India decides the manner in which this 0.8% is to be divided up between various government departments engaged in R&D; the biggest chunks go to defense, space, atomic energy and agricultural R&D. (See the distribution for the current year here).

Once this 0.8% (of the GDP) is divided among various departments, each department sets aside a part of these funds for what are known as “extramural R&D projects.” Various government departments such as the Department of Science and Technology (DST), the Department of Biotechnology (DBT) and CSIR formulate projects/schemes under which entities engaged in R&D (they can be private entities, public institutions, universities or a mix of these) can submit proposals to "win" these funds. Peers competitively evaluate the proposals and meritorious proposals are awarded the extramural funds (either in the form of a grant or a loan). Each government department (or government funding agency as they are referred to in the draft Bill) allocates extramural R&D funds under pre-decided terms and conditions (We discussed some of these in the previous posts here)

Given that the draft Bill seems to cover only those funds which are received under a written ‘funding agreement,’ it seems that the only funds that will be considered “public funds” for the purposes of the Bill will be funds received under extramural projects. (I am pretty sure that the planning commission does not make the various government departments sigh a ‘funding agreement’ at the time of disbursal of funds.)

If the above is true, the next logical question is: "what % of the funds given by the planning commission to various government departments (who then become “funding agencies” under the draft Bill) is given out as extramural R&D funds." This I think might give us a good idea of the % of the total annual R&D expenditure of the government that would be impacted by the Indian Bayh-Dole. (I do hope I am missing something here... if someone could point this out to me, I would be grateful)

In absolute terms, the amount of money being given out in the form of extramural R&D funds has been rising steadily. (See Fig. below).



However, when looked at in terms of %, for the years for which data was readily available, there appear to have been no major changes until recently. (See table below). (Note: Amounts in the table are in Rs. Crores)



Furthermore, different funding agencies give out different % of their respective budgets to extramural projects. See graph below:



MOCIT - Ministry of Communication and Information Technology
DST - Department of Science and Technology
DBT - Department of Biotechnology
CSIR - Council for Scientific and Industrial Research
AICTE - All India Council for Technical Education
UGC - University Grants Commission

This brings me back to the first post in this series – DST, which gives out the maximum amount of funds for extramural R&D, also has the most liberal terms for awarding these grants/loans (terms that already incorporate many of the principles of the Bayh-Dole). On the other hand, the CSIR, which has more restrictive terms for extramural funding, (but receives a large chunk of the public money reserved for R&D), gives out <1% of its annual funds as extramural R&D funds.

All in all, it appears that the Public Funded R&D Bill would cover not much more than 4% of the 0.8% of the GDP given to R&D. Furthermore, it must be noted that even without a Bayh-Dole legislation, CSIR has been bagging the largest number of patents (Indian and foreign), when compared to any other institution or entity within India (including private companies) and has licensed out about 5.7% of its patents (according to Dr. SK Brahmachari, DG CSIR, who was kind enough to share these figures with me, this is better than the world average.)

In the light of the above figures (which I hope will provoke further investigations by those of our readers who are economists and therefore have a better head for number than I do!), I think the government might like to do a cost-benefit analysis before presenting the Bill to the Parliament. Undoubtedly, having a uniform law for all extramural R&D would help bring in uniformity and predictability (as Shamnad rightly pointed out in his article). It would also push the institutions/entities that do get the extramural funds to create IP Management Cells, educate themselves about IPRs and therefore increase general public awareness about intellectual property rights. I do not therefore say that the Bill would be a complete waste. However, in a country which still has limited resources, it is necessary also to see (a) whether the time is right for India to introduce a Bayh-Dole style legislation or whether more attention must first be given to increasing R&D funding, improving general awareness about IP and innovation and most importantly, improving the R&D ethos in the country (another bit of my research in this regard shows that India has a long way to go to make a mark in the international R&D community. See Larsen, Peder Olesen et. al., “Scientific Output and Impact: Relative Positions of China, Europe, India, Japan and the USA, 7 (May 2008) Paper presented at the Fourth International Conference on Webometrics, Infometrics and Scientometrics & Ninth COLLNET Meeting.) (b) Whether India has the capital and infrastructural capabilities to monitor the functioning of the draft bill the way the functioning of the Bayh-Dole has been monitored in the US; and (c) If yes, how the money invested in establishing and maintaining the necessary machinery to implement the Draft Bill can yield maximum returns for the country.

The questions are endless - at the end of the day, I have learned (in the short span of my life), that everything works out just fine... but with the right effort at the right time from public spirited individuals and entities, things can work out much better than just “fine.” To make things better is Spicy IP’s endeavor. I intend to continue to contribute to such endeavors in whatever way possible. On behalf of Spicy IP, I invite everyone reading this space to also jump in, participate, and enjoy the “spice”.

Sources for further research:
Budget of India Website (For those of you interested in studying the R&D budget over the years more closely)
Nanopolitan (I had a chance to talk to Abi – the founder of Nanopolitan and scientist at the Indian Institute of Science (IISc), Bangalore)
National Science & Technology Management Information System (NSTMIS)

TK, Spams and Biopiracy- IP's Own Triple Entente

“I am Mr MOYON GERARD, I am French expatriate and I live in cote d'ivoire. I do not very speak English, I am in this country for the marketing of a magical plant. This plant is the (STEVIA). This plant contain enough vitamin and it is without colestérol. I work on the case for a long time and this plant is wonder enough and is already sold in many countries around the world, this plant will replace the sugar. The STEVIA is a natural product used as a sweetener and to the advantage of being calorie. I travel around the world to sell this product rich in vitamin. This plant is not too well known, I am responsible for the marketing of this product in cote d’ivoire and I am looking for representatives who will sell this product in many countries around the world for me. This plant is legal and approved by the competent authorities. For more information try the product on internet. I will give $3,000,000.00 was one who will agree to be my representative to sell this product in his country.”

So goes a typical unsolicited commercial mail, which is a kind of email spam. Available literature says that email spam is deployed primarily for marketing products which constitute 25% of the total number of spam mails sent besides health-related spam which forms a good 7%. (By the way, about 14.5 billion spam mails are sent each day which accounts for 45% of all emails). What has this got to do with intellectual property? The content of the mail gives us the answer; the mail reproduced above was sent to Prof. Siva Thambisetty of the London School of Economics (We thank Prof.Thambisetty for drawing our attention to this issue) and points to a growing trend of biopiracy-related spam. Probably, a couple of questions need to be answered first.

1. What is the legal status of such mails? In other words, are these mails legal or illegal? If yes, under which law?
2. Is there any provision under biodiversity and biopiracy related conventions which are instructive in this regard?
3. How effective are such mails in boosting sales? Stated otherwise, are spam mails taken seriously at all by users?

Spam is considered harmful because of its content which usually promotes dubious ventures and messages that contain sexually explicit material. More importantly, the objection to spam is because it may contain hostile embedded codes and file attachments. In addition to this, the above figures show that it consumes a lot of bandwidth, memory and other resources, not to mention time. The actual illegality comes into picture when spammers tap into Simple Mail Transfer Protocol (SMTP) Servers and direct them to send copies of a message to a long list of recipients. Third-party relaying usually represents theft of service because it is an unauthorized appropriation of computing resources; a company’s reputation could be adversely affected if it is associated with spam because of third party relaying. Further, spamming violates the Acceptable Use Policy (AUP) of most Internet Service Providers.

However, there is no specific anti-spam legislation in India, unlike the US CAN-SPAM Act of 2003 (true to its name the Act says one CAN SPAM provided certain criteria are met), or the Personal Information Protection and Electronic Documents Act (2000) of Canada or the Spam Act of 2003 of Australia. Article 13 of the European Union Directive on Privacy and Electronic Communications (2002/58/EC) provides that the EU member States shall take appropriate measures to ensure that unsolicited communications for the purposes of direct marketing are not allowed either without the consent of the subscribers concerned or in respect of subscribers who do not wish to receive these communications, the choice between these options to be determined by National Legislation.

Our own Information Technology Act of 2000 for all its hype does not discuss the issue of spamming at all. It only refers to punishment meted out to a person, who after having secured access to any electronic material without the consent of the person concerned, discloses such electronic material to any other person. It does not have any bearing on violation of individual's privacy in Cyberspace unless ss.65 or 66 are interpreted so. (This explains why Prof.N.L.Mitra says that IT Act is not a part of Cyber Law). The Coalition Against Unsolicited Commercial Email is the only entity worth mentioning in this regard.

In a suit filed by Tata Sons Ltd and its subsidiary Panatone Finwest Ltd against McCoy Infosystems Pvt Ltd for transmission of spam in 2004, the Delhi High Court held that in the absence of statutory protection to check spam mails on Internet, the traditional tort law principles of trespass to goods as well as law of nuisance would have to be used. Noted IT expert Mr.Praveen Dalal is of the view that spamming can be treated as violation of privacy under Article 21 of the Constitution and can also be brought under nuisance and trespass under the Indian Penal Code.

Having said this, it is clear that these provisions have a general application with no particular focus on biopiracy, meaning it can be extended to all kinds of goods. As far as the specific question of biopiracy is concerned, both the CBD and the Biodiversity Act emphasize on the sovereign right of a State over its bio-resources and so the practice of prior informed consent and benefit sharing were introduced. So in a way, only a country to which a particular plant or herb belongs, can take action for biopiracy.

This unholy nexus of email marketing and biopiracy points to the need for transnational recognition of biopiracy i.e. not only should every country be empowered to monitor the flow of bio-resources from its country, it should also be mandatory for countries to take note of illicit flow of bio-resources into their territories. Possibly a multilateral register or monitoring agency on the lines of the one mooted for wines and spirits under Art.23 of TRIPS can be a rudimentary model to start with for nations which are keen on protecting the end use of their resources outside their territory. Interestingly, there doesn’t seem to be much literature available on this obscure or atleast lesser-noticed ligature between email marketing and biopiracy. Jurisdiction of courts over such internet transactions is another issue which may need a lot of brain storming given that it is still fuzzy with no uniformity in different jurisdictions.

One might say that technical means of reducing or eliminating spam such as filtering or eliminating might put an end to the menace. Added to that, since questions on legitimacy of spam mails and the ventures they promote loom large, promoters of such ventures may find it increasingly difficult to rope in new recruits. A recent survey by spamlaw.com indicates that after the initial surge of spam mails, the traffic has more or less tapered and saturated.

Notwithstanding this, this issue has reinforced a long-standing opinion which though universally acknowledged is hardly put into practice; issues concerning and related to traditional knowledge and biopiracy require efforts which go beyond territoria nexus i.e. long-arm jurisdiction appears to be more of a default requirement than an exception. The beauty of TK-related issues is that though such knowledge derives its ingenuity from its contextual/native origins, the solutions for TK-related issues have to be both contextual and outward looking. Ms.Latha Nair in her Times of India article, which Mr.Basheer referred to in an earlier post, makes a passionate argument for international legal mechanisms and follow-up procedures. One fervently hopes that her arguments don’t fall on deaf ears.

Pegasys hearing begins.

The Patent Office has begun the hearing of Pegasys, India's first product patent under the new Patent Act, which had been granted to Roche India, the Indian branch of the Swiss Hoffman La Roche, and then subsequently received one of India’s first post-grant opposition in March last year.

About Pegasys

Pegasys, or Pegylated interferon alfa-2a as it is also known as, is a drug which is used to treat Hepatitis C. The prescribed six-month course of treatment used to cost about Rs 4.36 lakh (available at a discounted price of Rs 3,14,496). It is to be taken in combination with Ribavarin, which costs another Rs 47,160. The drugs, prices of which have since dropped substantially, however, still cost Rs 2.25 lakh for a 6-month treatment course. As opposed to the earlier practice of having the dosages spread out over 3 injections a week, this drug involved a technology which reduced the required frequency to once a week.

The Challenge

The Patent Act allows for both pre-grant opposition as well as post-grant opposition where the drug company has to oppose the granted product patent within 12 months from the date of publication.

Sankalp Rehabilitation Trust, a Mumbai-based NGO that works with drug users, joined Wockhardt (which had filed its opposition 2 months prior) in its opposition of the patent at the Chennai Patent where Assistant controller of patents heard the post-grant opposition. It was argued that the claimed invention, the branched pegylated form of  interferon alfa 2a did not satisfy the patentability criteria under Indian law as Pegasys involves combining interferon with polyethelyene glycol (PEG) which helps the interferon to remain in the bloodstream, and also that the technology of combining interferon and other biologically active proteins with PEG had been known for years prior to Pegasys patent. In light of this, the counsel put forward that there was no inventive step and was obvious to a person skilled in the art. Further, they alleged that Roche’s ‘invention’ is at most a ‘mere admixture’ of known substances and thus not patentable under section 3(e) of the Patents Act 1970, and is just a ‘new form of a known substance’ and not patentable under section 3(d) of the Act.

In response to Roche’s questioning of Sankalp’s locus to file, Sankalp pointed out that a public interest group was a ‘person interested’ and as such was allowed to file under law. Roche also argued that the documents which were relied upon, spoke of pegylation as enzymes and that as interferon was not an enzyme, these documents could not be used to object to the novelty and

inventive step involved in the pegylation of interferons. This was countered by Sankalp stating that pegylation was known to protein chemistry generally and was not specific to enzymes.

The parties had until September 25^th to file their written submissions.

Implications

Though other generic copies of the drug are already being marketed in the country, the amended Patent Act does not require companies which have made substantial investments in products which were released prior to January 2005 to stop the manufacturing of their products. Despite competition from Indian companies such as Wockhardt, Shanta Biotechnics and Bharat Biotech, Roche managed to stick on to its pre-grant prices. Factors such as this along with the several pre-grant oppositions that big pharmaceuticals have been facing, post-grant oppositions such as this will probably keep other multinationals on their toes and will probably make the already cautious drug companies even more wary of the products they introduce in the future.

  

Or in alternative...

In the meanwhile, 2 scientists, back in the beginning of 2007, claimed to have ‘invented around’ the patent. Claiming to have cured Hepatitis C, British Scientists Shaunak and Brocchini claimed to have used the basic molecular structure of pegylated interferon, (the very same patented by Roche Pharmaceuticals).

 The ultimate aim in doing all of this is to provide access to the drug to impoverished nations, at affordable rates to treat Hepatitis C, whether produced by the La Roche or through alternative means by different scientists. SpicyIP only hopes that this hearing is completed as speedily as possible, to help provide quicker access of the drug to those in need of such treatment.

Open Source Research Programme Launched by CSIR

Mid-month, the CSIR has launched the 'Open Source Drug Discovery' (OSDD) programme. Conceptualised by CSIR Director General Samir K. Brahmachari, the project seeks to initiate Tuberculosis research since there has been no major scientific breakthrough in its treatment since 1960. (Our readers will remember Mrinalini's interview with Mr. Bramhachari earlier this year)

Drawing their inspiration from open source movements, the Programme seeks to build a consortium of voluntary researchers from across the world to work around the patent regime that makes drugs expensive . The OSDD has futher set up a website to share their collaborative research, data on pathogens, tools for data analysis, and discussion forum for members to share ideas and projects for students to participate in drug discovery.

The terms of the OSDD licence are also spelt online. The terms are fairly straightforward, and we reproduce some relevant conditions below for readers:

"Terms and Conditions (Terms)

...

3 Proprietary Rights

3.1 The Portal, its services, the content, Information, and results of collaborative research including, but not limited to, the identification of drug-able non-toxic targets, in vitro and in vivo validation, in silico screening of molecules, lead optimization, pre-clinical toxicity and clinical trials will constitute �Protected Collective Information�. You agree that the ownership of Protected Collective Information belongs solely to the OSDD and is the proprietary right of OSDD, to be held in trust on behalf of OSDD by CSIR to be used to further the Vision and Mission.

3.2 Anyone accessing the Protected Collective Information has an obligation to contribute any addition or improvements made to or using such Protected Collective Information or any research result or proprietary rights generated out of the Protected Collective Information, except as provided in these Terms, back to OSDD through this Portal to add to the Protected Collective Information. Any appropriation of the Protected Collective Information to acquire proprietary rights which is in violation of its Vision and Mission to will be violation of these Terms, liable to legal action under the applicable laws.

3.3 By becoming a member of OSDD and using this Portal and in consideration thereof you agree that any Information submitted by you or generated using the Portal shall form a part of the Protected Collective Information to be shared and used by the OSDD members for furtherance of its vision, to be held by OSDD acting through CSIR (India) in trust as Protected Collective Information and you authorize OSDD acting through CSIR (India) to take any action in furtherance of the vision of OSDD. Such actions taken by OSDD acting through CSIR (India) will be informed to its members through the Portal.

3.4 You agree that Protected Collective Information is a valuable proprietary right of OSDD and in consideration of your accessing the Protected Collective Information you promise to submit all further developments or improvements made by you or your agents, to or using the Protected Collective Information back to the OSDD to add to the Protected Collective Information for others to work on it and make further improvements on it.

3.5 You assign to OSDD the worldwide royalty free non exclusive license on any Information submitted by you to Protected Collective Information for the sole purpose of use of OSDD members for furthering the Vision and Mission and for that purpose only. It is understood that if your intellectual property rights are used for any purpose contrary to the Vision and Mission, this assignment shall stand unconditionally revoked.

3.6 In the event of your acquiring any intellectual property rights by making improvements or modifications on any part of the Protected Collective Information, you shall grant an unencumbered worldwide non exclusive right to the OSDD for use of such rights for further research in furtherance of its Vision and Mission.

3.7 You agree that by virtue of using the Protected Collective Information, even partly, on your technology or invention, whether patented or not or kept as your confidential information or not, you shall submit back to the Protected Collective Information the out put or the result of such use, in whatever form, whether such output contains the Information contained in the Protected Collective Information or not.

3.8 You agree that OSDD acting through CSIR may license any research result generated out of OSDD for the sole purpose of furthering the Vision and Mission of OSDD provided that there shall be no direct monetary gain or other benefit for CSIR out of such assignment.

4. Your Rights

4.1 You may access the Protected Collective Information under the condition that for any use of it you shall credit the author or the contributor. You may contribute to Protected Collective Information and shall get credit for it, while not being considered responsible for modifications made by others.

4.2 You may make improvements, additions and modifications on the Protected Collective Information, and use it commercially or non-commercially, provided that you contribute all such improvements, additions and modifications, back to it.

4.3 You may submit your patented inventions (product or process) for the use of OSDD. You may retain the rights over the patents except to the extent to be used in the open source drug discovery process and for selling any product or process arising out of the use of your invention in that process. By submitting your patented invention for OSDD you agree not to place any encumbrances on the product or process arising out of the use of your patented product or process for fulfilling the Vision and Mission of OSDD. You agree that any use of your patented invention for the drug discovery process and any Information generated out of use of your patented invention while being used for drug discovery process on OSDD shall belong to Protected Collective Information.

4.4 You may use your patented invention or technology kept as trade secret to generate Information for OSDD without licensing or disclosing or in anyway parting with such invention or technology, but submit the Information so generated to OSDD to be a part of Protected Collective Information.

5. Other Terms

5.1 OSDD respects Intellectual Property Rights of others and expects the members not to infringe the Intellectual Property Rights of any third party contributing to the Protected Collective Information or while involving themselves in the drug discovery process. If any infringing material is posted on the Portal, it should be brought first on the discussion forum so that appropriate action can be taken. If infringing materials are posted online, the administrator will have the rights to take down or remove them without any notice.

5.1 The source code of all copyrighted software programs made available on this Portal should be open, in the sense that it is available and any software derived out of the software available on the Portal should also make the source code available.

5.2 You agree not to indulge in any attempts to destroy or deface the Portal including but not limited to knowingly introducing viruses and to bear the cost and consequence of any such action arising from your account.

5.3 You agree to indemnify OSDD and CSIR India against all legal fees, damages and other expenses that may be incurred by a result of your breach of the Terms.

5.4 These Terms shall be governed by and construed in accordance with the laws of India. Disputes arising here from shall be exclusively subject to the jurisdiction of the High Court of Delhi, India.

...

8 Limitations of Liability

You expressly understand and agree that OSDD and CSIR (India) shall not be liable to you for any direct, indirect, incidental, special, consequential or exemplary damages, including but not limited to, damages for loss of profits, goodwill, use, data or other intangible losses (even if OSDD have been advised of the possibility of such damages) resulting from: (i) the use or the inability to use OSDD services; (ii) the cost of procurement of substitute goods and services resulting from any goods, data, information or services purchased or obtained or messages received or transactions entered into through or from OSDD services; (iii) unauthorized access to or alteration of your transmissions or data; (iv) statements or conduct of any third party on OSDD services; or (v) any other matter relating to OSDD services."

We would greatly appreciate our reader feedback on this new and commendable venture undertaken by CSIR. We here at SpicyIP wish them the best of luck and hope to see several new breakthroughs in the field of research.

Breaking News: Roche Sues Cipla Again

Pursuant to our last post (quoting from a BS report by Joe C Mathew), we've learnt that Roche has filed a law suit against Cipla for both patent and trademark infringement in the Bombay High Court. The drug in question is an anti-infective (Valgancyclovir, sold as "Valcyte" by Roche), that is used by patients undergoing organ transplants, as also HIV patients.

The details of the Roche patent covering this drug are as below:

i) Indian patent number is 207232 (Chennai), granted on 1st June 2007. An official journal published this patent on 29th June 2007.

ii) Corresponding EPO Patent (0694547) is similar to the Indian patent and claims:

"The compound 2-(2-amino-1,6-dihydro-6-oxo-purin-9-yl)methoxy-3-hydroxy-1-propanyl-L-valinate or a pharmaceutically acceptable salt thereof, in the form of its (R)- or (S)-diastereomers, or in the form of mixtures of the two diastereomers."

iii) Corresponding US patent (6083953) claims: "The compound 2-(2-amino-1,6-dihydro-6-oxo-purin-9-yl)methoxy-3-hydroxy-1-propanyl-L-val inate hydrochloride in crystalline form". However, unlike the Indian or EPO patents, this patent is in the name of Syntex USA Inc (at least on the USPTO database).

Note that the US patent contains limitations in terms of "hydrochloride" and "crystaline form". Contrast this with the Indian and the EPO patent claims (which are more or less identical) which do not contain this limitation.

Post grant oppositions against this patent were filed by Ranbaxy, Cipla and one patient group (Delhi Network of Positive People (DNP+), an organization representing the needs of people living with HIV/AIDS (PLHAs). The main claim in these opposition petitions are that the current patent is obvious over a previously known compound and that it violates section 3(d).

Roche is expected to file its reply to these post grant oppositions soon. Thereafter the parties would be heard and an order on this can be expected in the next 3-4 months or so.

Likely Result

Given the above pending post grant oppn proceedings, the easiest way for the Bombay High Court to deal with this issue is to:

i) stay the suit proceedings till such time as the post grant proceedings are completed
ii) injunct Cipla in the interim to maintain status quo.

As we mentioned in our last post, if the post grant goes against Roche and the patent is invalidated, then the suit before the court becomes infructuous. However, if the patent is upheld, the Bombay High court can lift the stay and hear the injunction application afresh.

Therefore, a stay of the suit (along with an order injuncting Cipla in the interim ) and a direction to the patent office to dispose of the post grant proceedings speedily seems the most sensible way forward for the Bombay High Court..

Having said this, it is important to bear in mind that Bombay High Courts have been more restrained in their grant of injunctions in IP cases than the Delhi courts--so one is not sure as to whcih way the court is likely to go on this issue.

As for the trademark issue, from my limited understanding of the facts, Cipla is likely to win. While Roche's drug is called "Valcyte", Cipla's drug is "Valcept". The term "Val" derives from the chemical name of the active ingredient, "Valgancyclovir". Since "Val" is not a proprietary term but one that is derived from a chemical name, the courts may hold that Cipla's "Valcept" does not infringe. The court is also likely to give due consideration to the fact that:

i) There is a significant price difference between the products
ii) These are not over the counter drugs (brought directly by the average consumer) but prescription drugs dealt with by more erudite and informed doctors.

A Delhi High Court ruling last year involving Astra Zeneca (whose drug was called "Meronem") and Orchid Pharma (drug called "Meromer" ) is instructive. The chemical name of the molecule in queston was "Meropenem". The court held:

"Admittedly, 'Mero', which is common to both the competing marks, is taken by both the appellants/plaintiffs and the respondent/ defendant from the drug 'Meropenem', taking the prefix 'Mero" which is used as a prefix in both the competing marks. Both the appellants/plaintiffs and the respondent/defendant are marketing the same molecule 'Meropenem'.

Neither the appellants/plaintiffs nor the respondent/defendant can raise any claim for exclusive user of the aforesaid word 'Meropenem'. Along with the aforesaid generic/common prefix, 'Mero', the appellants/plaintiffs have used the syllables 'nem', whereas, the respondent/defendant has used the syllable 'mer'."

and later...

"Meropenem' is the molecule which is used for treatment of bacterial infections. In that view of
the matter, the abbreviation 'Mero' became a generic term, is publici Jurisdiction and it is distinctive in nature. Consequently, the appellants/plaintiffs cannot claim exclusive right to the use of 'Mero' as constituent of any trademark. The possibility of deception or confusion is also reduced practically to nil in view of the fact that the medicine is sold only on prescription by dealers. The common feature in both the competing marks i.e. 'Mero' is only descriptive and publici Jurisdiction and, thereforee, the customers would tend to ignore the common feature and would pay more attention to the uncommon feature."

The Indian Journal of Law and Technology - Information and Call for Submissions 2008-09

The Indian Journal of Law and Technology, published by the Law and Technology Committee of the Student Bar Association of the National Law School of India University, Bangalore, is India's first and only journal devoted to the field of law and technology. Articles are selected for publication after being peer reviewed by an external Article Review Board consisting of eminent academicians and practitioners in the field of technology law. The Journal is managed and edited by an Editorial Board comprising of students from the National Law School of India University, selected annually on the basis of editing skill and expertise in technology law.

The Journal accepts submissions in the form of articles, notes, comments, and book reviews on a host of legal issues regarding the interface between law and technology, including e-commerce, cyber crime, biotechnology, bioethics, competition law, outsourcing, intellectual property, relevant public policy, and law and society issues posed by technology, communications and evidentiary technology, with particular emphasis on issues affecting developing nations.

Past issues of the Journal have featured articles by distinguished authors such as Yochai Benkler, Donald S. Chisum, Raymond T. Nimmer, John Frow, Lawrence Liang, and Shamnad Basheer, among others. The forthcoming 2008 issue of the Journal features:

• A special comment entitled 'Saving the Internet' by Jonathan Zittrain, Harvard Professor of Internet Law and Co-Director of the Berkman Center for Internet and Society.
• An article on Data Protection Efforts in India by Latha R. Nair, Partner, KNS Partners, New Delhi.
• A review of Thomas Schultz's 'Information Technology and Arbitration: A Practitioner's Guide' by Promod Nair, an Associate with Herbert Smith LLP's International Arbitration Group.
• An article on a way forward with respect to Database Rights by Deepu Jacob Thomas and Prasan Dhar.

Submissions are invited for Volume 5 of the Journal, which will be published in March–April 2009. The Journal follows a rolling submissions policy with the deadline for the 2009 issue being 31st of October of this year; manuscripts received after this date will be reviewed for publication in the subsequent issue. The Journal welcomes articles from a variety of viewpoints, and greatly encourages submissions which respond to content previously published in the Journal. All submissions may be e-mailed to ijltsubmit@nls.ac.in with a CC to ijlt2009@gmail.com.

Information regarding the journal, including subscription and submission information can be found at http://www.nls.ac.in/students/IJLT. Abstracts of articles published in the current issue, and full texts of past articles, are also available. For any further information concerning the Journal's editorial policies, or subscription details, kindly contact us at ijltedit@nls.ac.in.

Raman Jit Singh Chima
Chief Editor,
The Indian Journal of Law and Technology.

Cipla Takes on Roche Again: Valcyte vs Valcept

Joe Mathew of the Business Standard reports that Cipla recently introduced Valcept, a generic equivalent of Roche's patented Valcyte, an anti infective predominantly used by HIV patients:

"This is the second instance of Cipla launching a low-cost version of Roche’s patent-protected drug after India's amended patent law began to recognise product patents or patents for specific drugs instead of protection to the processes through which medicines are produced. While Roche had dragged Cipla to the court on the earlier occasion, it is yet to seek legal remedy on valganciclovir.

....
Cipla’s joint managing director Amar Lulla confirmed his company has launched valganciclovir under the brand name Valcept in Indian market. While Valcept is priced at Rs 245 per tablet, Roche’s maximum retail price for its medicine branded as Valcyte is over Rs 1,000, trade sources said.

Valganciclovir is used to prevent eye infections in people who have less immune power (HIV/AIDS patients, for instance)...

In June this year, the Delhi Network of Positive People (DNP+), an organization representing the needs of people living with HIV/AIDS (PLHAs), had filed a post-grant opposition against the decision. Cipla’s product launch has come at a time when the patent office is considering the post-grant opposition.

“Unlike the earlier case, Roche cannot approach the court to see legal intervention as the decision of the authority itself is being challenged through a post-grant opposition. The courts will not intervene unless the patent office gives its view on the post-grant opposition,” Gopakumar Nair, a Mumbai-based patent expert, said.

Cipla had in January this year launched a copycat version of erlotinib, a lung cancer medicine, on which Roche has patent protection in India. The price tag was one-third of Roche’s branded medicine Tarceva. Roche had sued Cipla for infringement of patent in the Delhi High Court. The high court, which completed hearing on the case on September 15, is expected to announce its verdict within two months."

The Mint ran a report several months earlier suggesting that Cipla would take on Roche again in the near future. And true to their prediction, Cipla has once provided fodder for patent junkies.

What is SpicyIP's Take on This?

For one, I am surprised at Cipla's timing. As our readers are aware, arguments in the Tarceva case before the Delhi appellate court concluded on September 15 and judgment has been reserved. Chosing this very moment to outrightly challenge another one of Roche's patents appears to be bad legal strategy.

More importantly, given that post grant opposition proceedings are pending in this case, the courts may (a Mint report suggests that Roche might take this litigation to the Chennai courts and away from Delhi), injunct Cipla, at least till such time as the post grant opposition proceedings are concluded. The courts may reason it thus:

The post grant proceedings could either go in Roche's favour (patent held valid) or against Roche (patent held invalid). If the former, then the courts could take up Roche's injunciton application again and decide on merits. If the latter, then the suit becomes infructuos.

On a related note, I plan to continue blogging on the Roche vs Cipla (Tarceva) case. The reason I stress this is because some of our well wishers wrote in to ask me as to whether I'd stopped reporting on this case owing to the various threats made to my family members. Once again, I wish to reiterate that such threats will not deter us from our avowed task of increasing transparency by a fair and objective reporting of key IP cases/issues.

As our earlier posts stressed, Cipla strategically dropped its "public interest" and pricing argument before the appellate court. An argument that formed the very basis of Justice Bhat's ruling in Cipla's favour.

Cipla's key argument now is that there is no infringement, as the patent in suit does not cover Cipla's product, Erlocip. We'll have to wait and watch to see how the Delhi High Court finally rules on this.

Harry Potter vs Hari Puttar: If You Delay, You Will Pay

In her recent post, Sumathi rightly points to the fact that Justice Khetrapal's decision against Warner Brothers hinges substantially on:

i) "Delay" In Taking Action Against Hari Puttar

Despite knowledge of the defendant's proposed movie title "Hari Puttar" in 2005, the judge finds that Warner Brothers sat on their rights and chose to approach the court only in 2008. In the court's words:

"It is settled law that if the plaintiffs stood by knowingly and let the defendants build up their business or venture , then the plaintiffs would be estopped by their acquiescence from claiming
equitable relief"

ii) Suppression of Material facts by Warner Brothers in a Bid to Cover up Their "Delay"

The judge is quite scathing in her reprimand of Warner Brothers for "half-heartedly whimpering against the use of the title "Hari Puttar" by the defendants" and thereafter "attempting to trip up the defendants at the finishing line". Most noteably, the judge accuses Warner Brothers of misleading the court with false statements and attempting to "pollute the stream of justice". Sample these statements from the court:

"The plaintiffs in the instant action have attempted to lightly brush off their intentional non disclosure by feigning oversight, contending that they had nothing to gain from the aforesaid non disclosure . What has been lost sight of is the fact that it is a cardinal principle that a person who seeks the equitable relief of injunction must come to the court with unclean hands".

and later..

"the false assertions of the plaintiffs and the suppression by them of material facts were quite obviously intended by them to be a cover up for their delay in approaching the court"

and later..

"any suppression or concealment of material facts cannot therefore, but be viewed as an attempt to pollute the stream of justice"

Very damaging statements for Warner Brothers! Statements that are no doubt likely to be exploited by wily defendants in future law suits. Warner Brothers can therefore be expected to appeal this decision. Howeveer, their "appeal" window is quite short, as the movie is scheduled for release this Friday. Unless they appeal by tomorrow, the chances of securing an injunction are next to impossible.

Most of the press reports today however miss out the above aspects and merely focus on "confusion" and the "sophisticated vs rustic" consumer distinction that the judge seems to have drawn out. I'll come back to this and the "initial interest confusion" doctrine in a later post.

What is particularly noteworthy is that this is the second big IP litigation this year that has been impacted by "delay". We'd blogged on the Scotch Whisky case earlier, where the Supremes refused to grant any relief to the Scotch Whisky Association (SWA) on the ground that they waited for 12 years before taking action against "Peter Scot". We noted then that:

"One of the factors that influenced the court to hold the way it did was the delay/acquiescence on the part of SWA i.e. although SWA had knowledge about registration of the 'Peter Scot' trademark as early as September 1974, it waited for more than 12 years to move the Registrar for deletion of the said mark. The judge held that “We, therefore, in the peculiar facts and circumstances of this case, are of the opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver."

The message from the Indian courts appears to be pretty clear: "If you delay, you will pay...."

Warner loses the Hari Puttar plot

Hari Puttar- A Comedy of Terrors is going through for release finally this Friday, after the Delhi High Court decided against Warner Brothers, hinging its 26-page judgement on the issues of delay in filing the suit, and suppression of facts. We wait to see if Warner appeal against this judgement or not, but meanwhile, for the benefit of our readers, I reproduce substantive paragraphs of the judgement below (as a result of which this post is uncomfortably lengthy).

Delay in filing of suit
While noting that the plaintiffs had failed to establish that any irreparable loss or injury would be caused to them upon release of the film, the court highlighted the timing of the suit, which was so close to the release date of the film in question. You may recall that SpicyIP had expressed prior concern over the timing in an earlier post, and speculated on whether the film would be allowed for release, even if the decision went in favour of WB, as in the Durga Puja Pandal case. Circumstances here are different, but the issue of delay has indeed played a crucial role in the decision.

[from para 36] [T]he defendants have painstakingly trudged a considerable distance in the production of the film, which is now complete and at the stage of release within a matter of days. During the sojourn of the defendants, the plaintiffs at the most may be said to have half-heartedly whimpered against the use of the title "Hari Puttar" by the defendants, but thereafter they chose to squat comfortably and thus ensconced, have been watching the defendants' progress step by step towards their goal, to the finishing line. Their belated attempt to trip up the defendants at the finishing line is a course of conduct which, in my opinion, is diametrically opposed to the cardinal principle of vigilentibus non dormientibur enquitor and cannot be countenanced by a Court bound to take into consideration legal as well as equitable considerations.

In arriving at her decision, Justice Reva Khetrapal brought to notice the last extant communication from the plaintiffs to the defendants, that thanked the filmmakers for proposing three alternative film titles for their review (all of which contained the words 'Hari Puttar') while suggesting that an entirely different name (without this combination of words) be used.

The court observes that after this last exchange,
{from para 24} No cease and desist notice or any legal notice whatsoever appears to have been addressed by the plaintiffs to the defendants, and even the attempt of the defendants to have their film registered with the [MPAA] in ... 2007 does not appear to have propelled the plaintiffs into filing a suit against the defendants. Why the plaintiffs did not attempt to file a suit against the defendants at this juncture is indeed mystifying, for, no doubt, could have been left in the mind of the plaintiffs at least at this juncture that the defendants intended to complete the film. The plea put forth by the plaintiffs in ... the plaint that plaintiffs fairly believed that the defendants had shelved the project is, therefore, in my view, clearly aimed at misleading the Court by suppression of the true facts.

Dismissing the plaintiff’s arguments of absence of acquiescence, the court notes,
{from para 30} It is settled law that if the plaintiffs stood by knowingly and let the defendants build up their business or venture, then the plaintiffs would be estopped by their acquiescence from claiming equitable relief. Acquiescence on the part of the plaintiffs would amount to waiver, if not abandonment of their right. … Needless to say that delay by itself may not necessarily be a ground for refusing injunction, but delay would be relevant in adjudging a change in the subject matter in an action brought about by a situation in which the plaintiff sat on the fence, watching the defendant enrich its trade by investment of money and labour and involving third party rights in the same [referring to tie-ups with other brands].

Suppression of material facts
While suggesting that the plaintiffs did not come to it with clean hands, the court says that “a deliberate suppression of material facts, viewed singularly or coupled with blatantly false assertions, so far as the grant of equitable relief of injunction is concerned, is fatal. The plaintiffs... have attempted to lightly brush off their intentional non-disclosure by feigning oversight, contending that they had nothing to gain from the aforesaid non-disclosure.” [para 29]

In this regard, the judge refers to two submissions made by the plaintiffs as being misleading:
1. an affidavit of 8 September 2008, which stated that there no posters of "Hari Puttar" in any film theatres or any promotion in McDonalds, "completely forgetting that the stand taken in the plaint was to the contrary".
2. the procurement of a letter from the MPAA withholding information of how MPAA had sent an email to the plaintiffs mentioning the suit number of the present suit and other details and enclosing the Rules of the "Title Registration Bureau".

The cognoscenti vs the illiterate
The denouement, though, comes right at the end of the judgement, where the court says that the potential audience of the books and the movies is of a profile that would know the difference between HP and HP. Most print stories (see HT and IE) today have pegged their pieces on this.

Recall that the plaintiffs had argued on grounds of Initial Interest Confusion, and that the question of similarity between the two titles had to be approached from the perspective of an "unwary purchaser of average intelligence and imperfect recollection”. The judge summarily dismissed this argument with this caustic observation:

[from para 33] [E]ven assuming there is any structural or phonetic similarity in the words ‘Harry Potter’ and ‘Hari Puttar’, what has to be borne in mind is that the Harry Potter films are targeted to meet the entertainment needs of an elite and exclusive audience—the cognoscenti - an audience able to discern the difference between a film based on Harry Potter book on the one hand and a film which is a Punjabi comedy on the other, the chief protagonist of which is Hariprasad Dhoonda. It is not the case of a consumer good or product, which stands on an entirely different footing.

Necessarily, the yardstick must also differ bearing in mind the fact that a consumer product such as a soap or even a pharmaceutical product may be purchased by an unwary purchaser or even an illiterate one, but the possibility of an unlettered audience viewing a Harry Potter movie are remote to say the least. To put it differently an illiterate or semi-literate movie viewer in case he ventures to see a film by the name of Hari Puttar would never be able to relate the same with a Harry Potter film or book. Conversely, an educated person who has pored over or even browsed through a book on Harry Potter or viewed a Harry Potter film, is not likely to be misled. Such a person must be taken to be astute enough to know the difference between a Harry Potter film and a film entitled Hari Puttar, for, in my view, the cognoscenti, the intellectuals and even the pseudo-intellectuals presumably know the difference between chalk and cheese or at any rate must be presumed to know the same.

What about SpicyIP’s audience?
This leaves me asking just one question: What does this say about participants in the SpicyIP poll, including myself, where a 68% majority believes that the name “Hari Puttar” does indeed make one think of “Harry Potter”? Are they members of the cognoscenti or the illiterate? You decide. A new poll, anyone?

SpicyIP Tidbit: 'Maaza' trademark under dispute

Media reports in the last week seem to suggest that a major trademark battle is brewing between Bisleri and Coca-Cola over the use of the ‘Maaza’ trademark. ‘Maaza’ is one of India’s most popular mango based non-carbonated soft drinks. It competes with two other popular mango drinks – ‘Frooti’ & ‘Slice’ which is owned by Pepsi. Originally ‘Maaza’ was owned by the Chauhan family which at that time also owned other famous trademarks like Thums-Up, Rim-Zim, Goldspot, Limca and Citra. However when Coca-Cola entered the Indian market it bought out all five brands from the Chauhans and initially attempted to kill these desi brands so as to market their  own drinks in the Indian market. The Thums-Up, Limca and Maaza brands however were quickly re-introduced into the market because of their widespread popularity in the rural markets.

 The FT reports that Coca-Cola had initially registered the ‘Maaza’ trademark in European countries so as to market the drink in those countries. However the Chauhan family which now owns Bisleri International claims that the agreement to hand over the ‘Maaza’ trademark to Coca-Cola was limited only to the Indian market and that Bisleri still has the international rights to the ‘Maaza’ trademark. The Hindu reports that Bisleri has in fact already entered into franchisee agreements with European companies and has started selling ‘Maaza’ in Europe. Since Coca-Cola’s move to register the Maaza trademark in Europe has directly threatened Bisleri’s commercial interests in Europe, they have sent a legal notice to Coca-Cola alleging that the initial agreement has been violated by Coca-Cola’s actions and have claimed upto $50 million dollars in damages for the alleged infringement. Bisleri has also threatened to file for cancellation of the ‘Maaza’ trademark in India. The FT reports that Coca-Cola has withdrawn a number of trademark applications for ‘Maaza’ in Europe. It remains to be seen whether this placates Bisleri. If not the matter could be headed for arbitration.  

Scrabble vs Scrabulous: Reports on the Delhi High Court Judgment

After the Delhi High Court verdict in the high ticket Scrabble vs Scrabulous litigation, reports on this judgment have been pouring in.

In an interesting editorial titled "Capitalism Kills the Fun ", the Mint states:

"A court decision in India on Wednesday will be of much interest to hundreds of thousands in the global online community. A popular blog on intellectual property rights, SpicyIP, reported that the Delhi high court has ruled on a lawsuit against two Kolkata-based brothers’ online version of the all-time favourite game Scrabble.

Under pressure from the copyright holders—Hasbro and Mattel—Facebook, the host, had banned the huge hit, Scrabulous, in all countries it served last month— except India, which was waiting for this ruling. The high court has now said that the online version can run as it does not infringe any copyright, but it can’t use any name derived from the trademark Scrabble. What will Mattel/Hasbro do now? Two Wharton professors had raised pertinent issues last month. First, as Scrabulous was doing wonders for the Scrabble franchise, a tie-up with it might be smarter than a knee-jerk lawsuit. Second, does the revenue from Scrabble exceed the cost of all negative publicity?

One among the multiple outraged users has questioned if all this is “capitalism’s victory over fun.”

I'm not entirely sure that the assumption of the Wharton professors that Scrabble never attempted to tie up or buy out the Aggarwala brothers is correct. Some online reports/comments suggest that Hasbro/Mattel did negotiate, but that the parties never agreed on the price. Perhaps the lawsuits in India and the US are attempts to drive a hard bargain?

For more details on this controversy, see this excellent review at Techgoss, which is coming to be a wonderful resource for all things relating to the tech sector in India:

"So what happened to the Agarwala brothers after Toy maker Hasbro (who own the rights for Scrabble in US and Canada) got them evicted from Facebook?

The next battle was fought between Mattel (who own the Scrabble rights in the rest of the world) and Agarwala brothers at the Delhi High Court. Mattel wanted the Delhi High Court to ask the Bengal-based brothers to stop using Scrabulous in any shape or form.

The Agarwala brothers had launched a Scrabble like game WordScraper after Facebook banned Scrabulous.

India’s leading IP blog is reporting that the Delhi High Court has given judgment in the Scrabble Vs Scrabulous matter. The Delhi High Court has directed that the Agarwala brothers were restrained from using Scrabulous, Scrabble or any other deceptively similar trademark. The brothers cannot even hyperlink to Scrabble. But the court ruled that Mattel did not have a copyright to their famous board game Scrabble."

Also see this Valleywag report which notes: "The popular Facebook application version had already been banned by the social network, both in the US and in India, but a new version called Wordscraper appeared, but now competes with official versions from Mattel and US rightsholder Hasbro."

SpicyIP:Patents for a Smoke !!!

The Controller of Patents and Designs has issued an advertisement related to Godfrey Philips’ new invention a Cigarette cum matchbox in the latest patent journal

According to the company, which filed application on October 31, 2005, the improved cigarette packet with match box comprised a slide having side flaps on two longitudinal sides and end closures at the two transverse sides.’

Godfrey Phillips, which manufactures leading cigarette brands - Four Square, Stellar, Red and White and Cavanders - aims at giving smokers an option to do away with a separate lighter or match box.’(ET, PTI)

In keeping with the statutory requirement of a Pre-grant publication, the Controller has invited comments, objections and public opinion on inventions prior to the grant of a patent.
The Pre grant publication is a healthy provision (there are mixed opinions, some aver that it is a hamstring too given the ambiguous timeline) incorporated in the Indian Patent Law in that as it allows public participation in policy formulation; on the publication and advertisement of an invention in the Journal the Controller invites the public in the stipulated manner to raise objections if any on matters relevant and pertinent to the invention pertaining to subject matter patentability, on prior art, disclosure requirements including morality and public good concerns.

This Pre-Grant provision assumes added importance in the light of inventions that are likely to raise a moral controversy and could thus be used as an effective pre grant ethical control as well.

Section 3(b) that is also in consonance with Article 27.3 of the TRIPS Agreement states that

Any invention ‘‘the primary or intended use of which would be contrary to law or morality or injurious to public health.’

Thus the morality exception is clearly factored in the Indian Patent Legislation and is a valid ground for the refusal for a patent

Readers may recall Shamnads earlier post ‘Diggers, Immoral Patents and the NBRA’ that dealt with the ‘morality’ exception provisions in the Indian Patent Law."Right from its inception in 1911, the Indian Patent regime have always had a ‘morality’ exception


Up until now the morality exception has been applicable to contentious inventions in the life sciences domain. With industry getting competitive, industries and scientist across the spectrum could find themselves come up with R&D that could seemingly appear prejudicial in a larger public good and morality standpoint. Profit maximization vs. public good may vie for predominance in conflict zone.
Godfrey Philips invention may in a macro corporate perspective could be passed of for strategic business strategy aimed at enhancing shareholder value. Business ethics one may say!
Nothing out of line with the Company intending to commercialize, diversify or provide a value add to its existing product lines. Nonetheless in a larger social light, what does such an invention add up to? Essentially a contraption that facilitates the smokers urge. Is the invention inimical to a larger public good, enough for the purists to invoke section 3(b) in opposition and thereby prevent an invention of such nature from corrupting the moral fabric of society?

A lot rests on the definition of morality and it is for the ethicists and the public to add meaning and substance to aid the legal definition of the term. Is there something as timeless morality, on a philosophical note???

That the cigarette industry may well contend and legitimately so that such a stance smirks of hypocrisy, when cigarettes per se has not been banned, it makes sound contention that the morality exception cannot be invoked since the “commercial exploitation” of the primary invention is by itself not banned.

Article 27of the TRIPS Agreement reads thus (the Indian corresponding section worded similarly)

“Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality”

If commercial exploitation itself has been permitted of cigarettes, it may be very difficult to argue that any inventions pertaining to this ought to be banned.

Perhaps somewhat of an extreme analogy, nevertheless one in defense-should a novel gag mask that aids euthanasia be granted in a patent in country where the practice of euthanasia raises outrageous moral, social apprehensions.???

Not exactly euthanasia, but smoking statistics and the resultant mortality rates amongst the Indian population, not to mention child smokers, is distressing enough!!!

Also of relevance is the fact that should such innovation be accorded legal endorsement when India’s Anti tobacco campaign is at its vociferous best.
The Union Health Minister Anbumani Ramdoss has been a tireless active crusader in the Anti-Tobacco campaign, much to the ire of the politicians and the Bollywood superstars who are patronized by the deep pocket tobacco lobby
The Government of India has passed the Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply, and Distribution Bill in 2003 that aims to prohibit direct and indirect advertisements of tobacco products, prohibit of the sale of tobacco products to minors, and prohibit smoking in public places

In objective analysis, one may argue that if the Controller denies a patent to this invention would this directly impact or curtail the smoking habit and inhibit smoking trend. The answer may not necessarily be in the affirmative. This innovation is merely an object of utility and an add -on to something that already exists.

But what about moral utility. If the moral utility doctrine is applied as a parameter would this innovation pass the public health patent muster? Can we be so unabashedly utilitarian that larger public health interest be sidelined? A lot rests on the interpretation and connotation of what is ‘morality’-an acceptable definition would be one that is sensitive to upholding the sanctity of life and human dignity.

As much as it is every citizen’s right and responsibility to exercise his franchise, it becomes incumbent on every responsible citizen to lend his voice to debates such as the above; contribute towards fostering not only a robust innovation ecosystem but a socially healthy one.Vox Populi!!!