FICPI INDIA SYMPOSIUM 2009 – Student Session

FICPI is an organization working for the interests of Patent and Trademark professionals world-wide. On 9th of December, 1st day of the Symposium CII & FICPI is organizing a Student session at IIT Campus. FICPI members from India and abroad will visit and deliver a series of presentations and speak with the students about the advantages and disadvantages of choosing the patent attorney profession as career. The program is tailored to suit the Technology & Legal & Post Graduates. The Key Motivation for the students will be topic such as: “Patent Profession as a Lucrative Career Opportunity for Science & Law Graduates”.

Date: 9, December 2009

Time: 2 PM – 5 PM

Venue: IIT Campus, New Delhi

Speakers and Panelists include,
Danny Huntington
Stephen Krouzecky
Ravi Srinivasan
Chetan Chadha
Eric Le Forestier

Please e-mail shilpi.jha@cii.in for more details.

Copyright Infringement and ISP Liability: A Critical Flaw in India's IT Act

An earlier guest post opined that the recently amended Information Technology (IT) Act absolves internet service provider (ISP's) and other intermediaries from IP infringement liability, provided they satisfy certain pre-requisites. Kaushik Krishnan, one of the brightest law students I have ever encountered thinks our guest got it wrong in one cardinal respect. I think Kaushik is spot on...but will wait to hear your thoughts on this.

The guest post states in pertinent part that:

"The most significant ramification of the amendment is that the immunity under the IT Act now extends not only to the liabilities arising under the IT Act, 2000 but to liabilities arising under any law in force in India. Therefore, an ISP can claim immunity from liability under Copyright Act, 1957 or criminal liability under the Indian Penal Code by virtue of Section 79 of the IT Act, 2000."

Section 81 of the IT Act

Unfortunately, the statement above overlooks the existence of a newly added proviso to section 81. Section 81 now reads as:

"The provisions of this Act [IT Act] shall have effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force. Provided that nothing contained in this Act shall restrict any person from exercising any rights conferred under the Copyright Act, 1957 or the Patents Act, 1970."

In other words, the IT Act cannot absolve an intermediary of liability, if that intermediary is otherwise found liable under the Indian Copyright Act. Secondary liability is mainly found in sections 51 (a) (ii) and 63 of the Copyright Act. If perchance an intermediary is found liable under one of these provisions or under any other provision of the Indian Copyright Act, it cannot take recourse to section 79 and nullify the "right" of a person to sue for such infringement.

Interestingly the proviso to section 81 of the IT Act only mentions "copyright" and "patent" liability. It does not include liability for other kinds of IP infringement such as trademarks, geographical indications, plant varieties etc. Therefore, in so far as these infringements are concerned, an intermediary can claim an exemption under section 79. Why this difference? Did this have anything to do with lobbying by special interests? Or was this a genuine mistake?

History of Section 79?

Rumour mills have it that the push to amend the IT Act came in the wake of the infamous Baazee case, when a "one name" Prabhakaran got after an unsuspecting Avnish Bajaj. Matters took a political turn when Condy Rice intervened. Given this political baggage, I'm surprised that eBay, Google and other intermediaries did not lobby hard enough to absolve IPR infringement as a whole.

Perhaps this error slipped in at the stage of the Joint Parliamentary Committee (JPC) which was tasked with reviewing the bill. Kaushik points out that this proviso is similarly worded to the one found in India's competition Act and surmises that this might be yet another instance of a blind legal transplant. However, the Competition Act (section 3(5))makes an exception for all kinds of intellectual property (barring Plant Variety Protection) and not just for patents and copyrights.

It is pertinent to note that section 79 is liberally worded and will even exempt any ISP or intermediary from liability, provided such intermediary:

i) does not initiate the transmission
ii) select the receiver of the transmission; and
iii) select or modify the information contained in the transmission

Most online intermediaries and ISP's (such as Rediff, eBay, Google, Youtube etc) ought to qualify under the liberal exemption above. Unfortunately, its a pity that they cannot do so, when it comes to copyright and patent infringements.

Intermediary Liability and the "Secret" Copyright Bill

Given that the current copyright amendment bill is underway, the ISP and intermediary lobbies ought to insist that "intermediary" exemption under the IT act extend to copyright infringements as well. Particularly when such exemptions are likely to favour public interest and the enormous number of users who avail of such intermediary services. Unfortunately, like most other IP initiatives, the copyright bill is also shrouded in considerable secrecy and none of us will know what the actual provisions look like until the bill is introduced in Parliament (scheduled for this Winter session).

The government insists that it made the bill public in 2006 and called for comments. While this is no doubt true, it is only partly so. Since the 2006 draft was put up, the government has made a number of changes, including the addition of altogether new provisions, such as an equitable remuneration in favour of artists. Little wonder then that lobby groups such as the Indian Broadcasting Federation are up in the arms decrying the secrecy and lack of consultation. Clearly there is, and will continue to be, a lot of politicking around the present Bill. Whether it will finally pass and if so, the form in which it will do so remains to be seen.

Perhaps we ought to kick-start a new form of wagering involving laws and policies: Is the current copyright bill likely to pass? Will it pass this winter session or be referred to a Joint Parliamentary Committee? And finally, what provisions are likely to make it? Any bets?

OSDD still well on track

Readers may remember the Open Source Drug Discovery (OSDD) programme launched by the Council of Scientific and Industrial Research (CSIR) which we had blogged about a little over a year ago here. Started in September, 2008, the OSDD is a consortium of Indian as well as global researchers who are currently getting together to find a cure to Tuberculosis.

As MIT's Technology Review notes, November 23rd marked a red-letter day for OSDD since after about 14 months since its launch, the consortium now has more than 2000 members with its global partnerships. Incidentally, inspired by the OSDD, India's national solar mission also announced on the same day, its plans to launch an Open Source Solar Development (OSSD) in the coming years in an attempt to make collaborative efforts towards further development of tapping solar energy.

The OSDD movement was initially conceptualised by CSIR's Director-General Dr.Samir K Brahmachari (Mrinalini had interviewed him earlier here) as a way towards providing easier access to medicines through means of providing cheaper medicines in medical fields which have largely been neglected due to lack of a high-paying consumer market. Taking the instance of tuberculosis, very little development has taken place in the last few decades towards the development towards drug discovery for treating it due to various factors and cost considerations.

As it's first target, OSDD has noted that of the roughly 1,550 new chemical entities marketed worldwide between 1975 to 2004, only 3 were for tuberculosis, representing a gross neglect for one of the world's most common tropical diseases. The OSDD consortium plans on tackling this by taking an alternate approach to drug discovery through means of open access to research conducted by voluntary researchers, thus significantly reducing the cost barriers involved. "It is a concept to collaboratively aggregate the biological and genetic information available to scientists in order to use it to hasten the discovery of drugs. This will provide a unique opportunity for scientists, doctors, technocrats, students and others with diverse expertise to work for a common cause."

According to the OSDD site, the Government of India has committed US $38 million towards this project. About US $12 million has already been released by the Government. OSDD also seeks to raise funds from Developmental Agencies and Global Healthcare NGOs. These funds would be used for conducting Quality Control Activities, tests and rewards and scholarships for contributors, etc.

In their efforts towards this drug discovery, they have set up a web portal [ http://www.osdd.net ] which has so far taken up more than 120 projects. Their current focus is on expanding our understanding of the Mycobacterium tuberculosis (MTb). It is expected that the collective work on collection and analysis of information by scientists, doctors, technocrats, students and other volunteers will lead to a collaborative, sustained and coordinated attempt at drug discovery for tuberculosis. Currently, in furtherance of this, OSDD has launched a "Connect to Decode" 2010, initiative to re-annotate the MTb genome. More than a 100 registrations were done within the first day of announcing this project. For readers interested in contributing, registrations end on November 30th, 2009. Student readers may be interested in noting that "For students this would be their summer project, the successful completion of which would fetch them a certificate from the Council of Scientific and Industrial Research (CSIR)". More details on the project can be found here.

Admittedly, the consortium wasn't always met with much optimism at the time of it's launch, but this is slowly changing as more and more participation is seen. We at SpicyIP wish them all the best with their efforts at finding a cure to tuberculosis and other neglected diseases, and indeed, to inspire others to join in or even take up such kinds of collaborative efforts for a common good.

CII Workshop on Patent Strategies

GLOBAL BEST PRACTICES IN PATENT INFORMATION : ANALYSIS AND PATENT PROTECTION STRATEGIES

Confederation of Indian Industry (CII) & Andhra Pradesh Technology Development and Promotion Centre (APTDC) in its IP Capacity Building Series’ IX is organizing a Workshop on Global Best Practices in Patent Information Analysis and Patent Protection Strategies. More details including registration form etc can be found at the SpicyIP Resources Page.

Location and Time: 5 December 2009 from 1000-1700 Hrs at Hotel Taj Banjara, Hyderabad.


This Workshop is an exclusive and focused initiative to enhance the IP Skills of Industry Professionals through a Comprehensive Case Study Presentation & practical experience sharing by International experts.

CII APTDC has been focusing on Intellectual Property Capacity Building Initiatives across the Country covering key areas such as Freedom to Operate Tools, Patent Drafting, IP Valuation & Commercialization & IPR Enforcement The Present Workshop covers the sessions integrating IP Information for R&D Planning, showcasing state of the Art Indian Patent Information Tools, case studies on Patent Information tools for infringement analysis, Successful Patent Portfolio Strategies in ICT Sector , Patent Valuation and Commercialization (Life Sciences/Pharma/IT Sectors).

The Workshop will be invaluable tool for all IP Professionals & forum for learning which has been the hallmark of CII APTDC Capacity Building Workshops. A Certificate of Participation will be awarded to all the Participants.

Registration:

You may confirm your participation either by return mail or at c.kamaraju@cii.in (98492-39783). For the form and other details pertaining to this workshop, please see here.

SpicyIP Discount:

If you wish to avail of a 10% discount on the registration fees, please mention that you came via SpicyIP.

Union Minister moots preventive detention as the answer to video piracy: Meet of Ministers at New Delhi on the 5th of December, 2009

Over the last few weeks, news has been trickling in that the Union Minister for Information and Broadcasting, Ambika Soni, has proposed a meeting in New Delhi, on December 5th to discuss the possibility of bringing in a nation-wide preventive detention law to tackle film piracy. Apparently the Tamil Nadu legislation, which was the first legislation to introduce preventive detention as a solution to combat film piracy, has been a success and according to the Minister it should be replicated all over the country. The only upside of such a proposal is that it will finally put an end to the ridiculous USTR 301 reports on the status of IP enforcement in India. There is no other advantage of such legislation being implemented throughout India.

We have already commented, over here, on the suspect constitutionality of the state passing such a legislation. The Union Government however may have the powers to pass such a legislation. However copyright law falls within the domain of the Human Resources Development Ministry and not the Ministry for Information and Broadcasting. Ambika Soni must therefore be careful about peeving off Kapil Sibal with just draconian suggestions.

The more pertinent question, in my view, is whether or not such legislations are justified from the view-point of a sane person. As already described in this earlier post, preventive detention is one of those sad relics from the days of the British Raj. As described by the Supreme Court preventive detention is not a punitive but a preventive measure i.e. preventive detention can occur even before it is determined by a Court of Law as to whether or not a crime has occured. For a person to be detained under a preventive detention statute he does not even have to be charged with a crime and found guilty under the law. All that is required to make such an Order is a reasonable suspicion in the mind of the Executive. Once a person is detained under a statute his detention period is reviewed not by a Court of Law but by an Advisory Board and the period of extension can be extended for upto a maximum period of 12 months i.e. one year of your life lost on the basis of a suspicion. The worst part is that this entire draconian process has been given Constitutional sanction in the form of Article 22(3) of the Indian Constitution. So much for your Article 21 fundamental right to life and liberty!

The obvious question that poses itself at this juncture is why do we have such a ridiculous law and whether such a provision is justified in the fight against video piracy?

In answer to the first question I will have to confess that my understanding in regards the history of preventive detention is hazy. For those of you interest you must read this article on preventive detention in India. I do know that they had their origins in times of war i.e. a period when fundamenal rights are suspended in more countries. Post independence preventive detention statutes have been used mostly in the context of either National Security legislations where it is absolutely crucial to detain the accused despite there not being enough evidence to prosecute a trial sucessfully. The other kind of statutes are the Goonda Acts that are present in each and every state in this country. These kinds of statutes are basically aimed at throwing into jail suspect elements, such as your unfriendly neighbourhood rowdy, against whom your equally unfriendly neighbourhood policeman and prosecutor cannot possibly get enough evidence to successfully carry out a criminal trial. Basically such legislations provide an easy way out for a resource strapped state that does not have enough policemen or prosecutors or judges to carry out trials of tough cases.

Piracy and copyright infringement however is a completely different ball game. When a pirate is arrested he usually has atleast a couple of hundred pirated CDS with him – that's enough evidence to prosecute a successful trial and throw the pirate into jail for atleast a couple of years under the Copyright Act, along with a fine etc. etc.

A better alternative would be to use the newly introduced plea bargaining provision in the Cr.P.C. Plea bargaining basically allows the prosecutor to make a deal with the accused and spare the system the resources that are consumed by a full trial. Such bargaining allows the prosecutor to offers lesser prison sentences in exchange for a guilty plea. Usually when evidence is strong the accused will be more inclined to enter into a plea. Most interesting is the fact that the IMI an Indian body dedicated to fighting piracy has recently announced that it has sucessfully managed to use the plea bargaining provision to secure 12 lakhs as fines in a criminal case for copyright infringement. Excusing for a moment the morality of money deals under a plea bargaining provision, I believe that plea bargaining can prove to be an effective strategy in combating piracy.

To conclude preventive detentions statutes are a disproportional response to video piracy and it would be prudent for our political masters to stop for a minute and think before being swayed by the over-zealous Bollywood, Kollywood, Tollywood producers who are more inclined to blame the video pirate for their losses, instead of realizing that it is their incompetence which is responsbile for an equal share of not only their financial losses but also the loss of productive time of their patrons.
p.s. I would love to know from our readers in Chennai, the status of the booming piracy market at Burma Bazaar in Chennai – is it still doing booming business or has it been 'prevented' from doing the same?

SpicyIP Tidbit: Madras HC Records Issues in Bajaj-TVS Patent Dispute

It was reported in the Business Standard yesterday that the Madras High Court has recorded 17 issues, 8 by Bajaj and 9 by TVS, to be argued before it in the twin spark plug ignition patent dispute. Foreign experts too are expected to be brought in for the case by both sides. Among the issues that TVS has raised, one is if a lean air fuel mixture constitutes an essential element of the patent as claimed by Bajaj.

Among the issues which Bajaj has raised, one is the territorial jurisdiction of the Madras HC. Readers may recollect that the Supreme Court had allowed sale of TVS’ bike Flame subject to maintenance of account of sales and had asked for early disposal of the suit by the HC.

Indo-US TKDL bilateral, and TK 'possibilities'

Some months after India's access-sharing with the European Patent Office (EPO) on the Traditional Knowledge Digital Library (TKDL), the impact of which we had reported recently, the United States Patent and Trademark Office (USPTO) too now has been granted access to the database. (Image from here)

USPTO and TK from India

A brief look around the USPTO TK tools section shows this will not be the first Indian database that the examiners will have access to - if the links are anything to go by, the USPTO has already been using the open databases made available by the Central Council for Research in Ayurveda and Siddha (in five volumes of Ayurvedic Pharmacopia) and - interestingly enough - the Himalaya Healthcare herbs database. Nevertheless, the TKDL should widen the scope of search significantly.

Along with the TKDL access-sharing agreement, there was also a renewal of vows on the IP front, where the two governments have bilaterally agreed to focus on human resource development, capacity building and public awareness programs in intellectual property protection and enforcement.

Francis Gurry on the TKDL

Appropriately enough, as I write this, Mint has posted an interview with Dr Francis Gurry of the World Intellectual Property Organisation, who was on an India-visit recently, which, inter alia, refers to the TKDL and the work that CSIR has done in the field --

Dr Gurry, praising the TKDL, says -

"It is a very important and fine product that is being produced by the Council of Scientific and Industrial Research. It is a product that can make available to patent offices around the world on a confidential basis...detail of traditional knowledge to assist in preventing the granting of patents over that traditional knowledge by unauthorized parties. It is also a basis on which to establish potential collaborative arrangements with private sector or industry to actually use the traditional knowledge in practice. I hope to also collaborate with India to lead a process of establishing similar TKDLs using its approach in other developing countries that wish to use this methodology."

Tips from WIPO?

Note some key phrases in Dr Gurry's comments -- TKDL can make information available "on a confidential basis", and is "a basis ... [for] potential collaborative arrangements". There were concerns raised on this blog earlier of the vulnerability of such a database on opening up access - Dr Gurry is inclined to balance between keeping information confidential and strategically leveraging TK in collaboration with perhaps industry or the private sector. Is Dr Gurry hinting at how India and Indian industry to strategise in the times to come?

I would think there are already many players in the traditional pharmacopeia business in India, although there may be room for plenty more - perhaps game changers like Dabur or Himalaya or Hamdard could share a lesson or two in their experience with TK? I say this without knowing anything about their business models or resource bases, but there should be some case studies available at hand to explore the WIPO chief's proposition further?

International agreement by 2011-12?

On a related note, and in reference to the same interview, Dr Gurry has indicated there may be some form of "international architecture" on TK in about two years from now, once the negotiations on TK resume next month at WIPO. You will recall this is something we have briefly discussed on the blog, but this has mostly been at third remove courtesy folks in Geneva (e.g., KEI and IP Watch), who have been keeping a much closer eye on things.

Indian Company bears the brunt of Section 3(d)

After a series of overseas pharmaceutical companies, it is now the turn of an Indian pharmaceutical company to bear the brunt of Section 3(d). The relevant patent relates to Clopidogrel Bisulfate claimed by Cadila Healthcare, a pharmaceutical company based in Ahmedabad. A pre-grant opposition was filed by Glochem Industries, a Hyderabad based pharmaceutical company. The instant writ petition has been filed by Glochem Industries alleging misconstruction and misapplication of the law. The judgment followed the interpretation of Section 3(d) in the Novartis judgment and laid down some procedural guidelines in relation to the opposition procedure. The series of posts on Section 3(d) can be found here.

Facts:
Clopidogrel (the image is the molecular structure of clopidogrel and it is from here) is an antiplatelet agent used in the prevention of blood clotting and in the treatment of cardiac ailments. Clopidogrel Bisulfate, a salt of Clopidogrel is marketed by Sanofi as Plavix. The instant patent application is with respect to Clopidogrel Besylate. The application was filed by Cadila Healthcare (respondent in the writ petition) in April 2003.

Glochem Industries (petitioner in the writ petition) filed a pre-grant opposition to the patent under Section 25 (1) of the Patents Act (henceforth the Act). The Assistant Controller ruled in favour of granting the patent. The writ petition was filed by the Petitioner, Glochem Industries alleging misconstruction and misapplication of the law in the context of Section 3(d) read with Section 25 (1) (f) of the Act by the Assistant Controller of Patents and Designs.


The Petitioner, Glochem Industries claimed that,
i) The respondent (Cadila Healthcare) failed to produce legal and admissible evidence.
ii) The respondent has failed to show enhancement of the known therapeutic efficacy.
iii) The Assistant Controller of Patents and Designs (Respondent No. 4) has misconstrued and misapplied Section 3(d).

The Respondents however argued that,
i) The Court cannot sit in appeal over the opinion of the Assistant Controller on technical issues.
ii) The Petitioners had a fair opportunity to pursue their objections before the Assistant Controller.
iii) The Petitioner had alternative and efficacious remedies in the form of post-grant opposition under section 25 (2), suo motu revocation under Section 64 and remedy under section 104.


Judgment:
The Court allowed the petition as the matter related to alleged misapplication and misreading of provisions of law.

The court held that even if the enquiry at the stage of pre-grant opposition is a summary enquiry as prescribed by Rule 55, adherence to principles of natural justice cannot be dispensed with. It was held that section 79 is applicable to all proceedings under the Act before the Controller and not limited to post – grant opposition proceedings. Section 79 provides that the Controller has powers to admit oral evidence in addition to or in lieu of evidence by affidavit. However the court said that since section 77 confers upon the Patent Controller the powers of the Civil Court, the Controller needs to first ascertain as to which evidence produced by the applicant can be looked into in order to answer the issue in question.

Moreover, the court observed that the evidence produced by the applicant should serve to show that the alleged invention enhances the “known efficacy” of the substance. In the opposition proceedings, the Petitioners objected to the consideration of the certain document as evidence. The Petitioners claimed that the comparative data produced by the Petitioners compared the pharmaceutical characteristics of Clopidogrel Besylate vis-a vis toluene solvate and dioxane solvate and not vis-à-vis solvated forms of Clopidogrel Bisulphate salt. The Court noted that these objections have not been considered by the Assistant Controller. The Controller had also refused to consider the averments of the Petitioner that there was no evidence to establish enhancement of therapeutic efficacy as required by Section 3(d).

The judgment then noted that the Assistant Controller had refused to apply the interpretation of Section 3(d) laid down by the Madras High Court in the Novartis case. Keeping aside the fact that the Assistant Controller had not considered comparative data with respect to Clopidogrel Bisulphate salt; the Assistant Controller had ruled that Clopidogrel Besylate constitutes patentable subject matter owing to increased stability, increased shelf life (over the bisulphate salt) and lesser toxicity in comparison to solvated toluene and diozane. The Court ruled that these factors however as per the Novartis judgment do not lead to enhancement of known efficacy in the context of “better therapeutic effect”.

The Court set aside the impugned order and directed the Assistant Controller to consider the arguments afresh.

Guest Post: The Power to Suspend the Operation of a Patent

We bring yet another guest post by Mathews P. George, a fourth year student of NUJS.

As posted by Prof. Shamnad Basheer, IPAB has again stayed the operation of Ramkumar's patent covering dual SIM phones. I have argued in my earlier post that IPAB does not have the power to stay the operation of patent. In this post, I shall argue that the Order favouring the existence of such a power lacks logic and coherence. (Image from here).


Background:
The petitioner applied for revocation of patent under section 64 of the Patents Act, 1970. In the said revocation application, two miscellaneous petitions were being filed - a stay application and an application for urgent and early hearing. The Appellate Board passed a stay order suspending the operation of the patent till the hearing of the stay petition on July 13, 2009. The Madras High Court set aside this Order and directed IPAB to hear the stay application expeditiously.


Order:
The Tribunal considered the fact that the order passed by the Customs authority pertaining to the prototypes was wholly adverse to the respondent. The Tribunal held that an extremely strong prima facie case of breach of section 64(1) (j) existed and the patent was liable to be suspended in the interest of justice. Balance of convenience was also held to be against the patentee as the patent had not been put to use. It was also observed that the respondent neither filed a counter nor evidence against the appeal. Further, the respondent did not appear when he was given an opportunity of being heard. On the other hand, written submissions were submitted which were not enough to prove the non-existence of prima facie case. Considering these factors, the Tribunal stayed the operation of patent.


Can the operation of a patent be suspended?
In the instant case, the Appellate Board rejected the contention that it did not have the powers to suspend the patent. The provisions of section 95 of the Trade marks Act, 1999 have been made applicable in discharge of functions by the Appellate Board by virtue of section 117B of the Patents Act, 1970. The Appellate Board held that the conditions (a) and (b) enumerated therein [i.e serving copies of the appeal on the party against whom such appeal has been made and giving an opportunity of being heard] had been satisfied in this case. There is no condition in the statute pertaining to the filing of counter and evidence by the party against whom such an appeal is made. The Tribunal accepted the argument of the petitioner that in a strong prima facie case of invalidity of a trademark, the Tribunal had earlier interfered and suspended the rights in the registered mark [ Smt. Raj Rani Agrawal Proprietor of Bios Laboratory v. M/s. Parul Homeo Laboratory (P) Ltd. ORA/4/2008/TM/DEL]. Following this stream of reasoning, the Board dismissed the contention of the respondent that the interim order for stay of patent could not be issued till the filing of counter by the respondent.

The stream of reasoning employed in this Order lacks coherence and logic. A provision has to be interpreted in consonance with its text and context. If text is the texture, context is what gives it the colour. Neither can be ignored. The best interpretation is that which modulates the textual interpretation to its context. A statute has to be interpreted by exploring the intention of the legislature through the most natural and probable signs which are the words, the context, the subject matter, the effects and consequences and the spirit and reason of the law [District Mining Officer and Ors. v. Tata Iron and Steel Co. and Anr. (2001)7SCC358 & The Reserve Bank of India vs. Pearless General Finance and Investment Co. (1987)2SCR1]. In the instant case, the tribunal interpreted the provision without paying heed to its context. The Order has the effect of suspending the rights of patent holder in toto during the stated period. A bare perusal of the Order gives an impression that the Tribunal can exercise any power under Section 95 of Trade marks Act provided the conditions therein are met. This is an interpretation which does not consider the context for the following reasons:

• Firstly, section 53 which lays down the term of patent to be twenty years from the date of filing of application for patent, does not offer any other method for calculating the term of a patent. Consider a situation where a patent is suspended for a year. Will this loss of one year be considered while calculating the term of a patent? Further, does suspension of a patent mean that the patent can be infringed with absolute impunity during the tenure of suspension? Since the Patents Act is silent on these germane issues, it is difficult to impute IPAB with the power to stay the operation of patent.

• Secondly, the tribunal referred to some of its earlier Orders suspending the rights in the registered mark. Assuming the legal validity of the referred Orders, the drawn parallel is far-fetched. While the term of a trademark is indefinite (subject to renewal of registration of the mark), the term of a patent is finite (twenty years). In other words, the suspension of operation has an altogether different effect in case of patents.

• Thirdly, the interim stay of operation of a registered patent amounts to temporary revocation of patent. It has the effect of granting the prayer for final relief of revocation of patent under Section 64 of Patents Act. Interestingly, the Andhra Pradesh High Court in Hyderabad Chemical Supplies Limited v. United Phosphorus Limited and Anr (2006(6)ALT 515), on a similar prayer, declined to grant the prayer for interim suspension of patent. The Court observed that such an interim order has the effect of granting the final relief. The Court based its reasoning on the principle that such interim orders can be made only in “exceptional circumstances”. The Court, in the instant case, declined to bring in the prayer for interim suspension of patent under “exceptional circumstances”. The Court, however, did not define exceptional circumstances. The Tribunal did not at all refer to this jurisprudence in the instant dispute.


To conclude,
The Order sets a dangerous precedent. It is a different matter altogether that the patent in dispute is highly controversial and dubious. While some jurisdictions calculate the term of patent from the date of granting of patent, the Patents Act calculates the term of patent from the date of filing of patent application which takes on an average at least a year before the grant of patent. Considering this, allowing suspension of patents will result in harming the interests of the patent holders.

SpicyIP Scholar: IJLT-CIS essay competition on the interface between law and technology

We have recently been informed that the Indian Journal of Law and Technology (IJLT), the flagship law and tech journal from the National Law School of India University, has announced an essay competition that is being jointly organized along with the Centre for Internet and Society (CIS).

The four themes on which essays may be submitted are as follows:

1. Criminality and Second Life: Dr. Jekyll and Mr.
2. Trademark and the Internet: Cybersquatting to the Goggle Adwords-Consim controversy - Reasonable Limits to Trademarks
3. 3G Services and Spectrum Allocation: Fair Competition, Welfare and Freedom of SPeech and Commerce on the
4. Easier to be criminals: Judicial and Legislative responses to cyber crime in India

As you can see there is atleast one interesting IP topic amongst the four.

The total, cumulative prize money is Rs. 16,500 (i.e. inclusive of all three positions) and an internship for the winner at CIS. Additionally the winning essay will also be afforded a chance to get published in the next volume of IJLT. Details of the essay competition can be accessed at: http://www.ijlt.in/

Definitely a competition that is worth taking part in and winning. May the best essay win!

SpicyIP Tidbit: Patent Agent Examination

According to the patent office website, the patent agent examination is scheduled to be held on the 23rd of January, 2010 (which incidentally coincides with Netaji’s birthday) followed by viva-voce on the 24th. For more details on the pattern of the exam, please visit the hyperlink above.

Breaking News -- Delhi HC on jurisdiction and the Banyan Tree case

A Division Bench of the Delhi High Court today made some key observations on jurisdictional issues in matters where the cause of action lies in that nebulous space called the World Wide Web. The judgement comes on a referral made by a Single Judge of the court last year in the Banyan Tree Case, which Kruttika had covered and analysed in a superb piece that you can read here.

In summary, the court held that merely accessing a website in Delhi would not satisfy the exercise of jurisdiction by the Delhi court. Rather, it has to be shown that the defendant "purposefully availed" itself of such jurisdiction, by demonstrating that the use of the website was with intent to conclude a commercial transaction with the site user, and such use resulted in injury or harm to the plaintiff. (Image from here)

The matter has now been placed again before the Single Judge to decide if in view of the law laid down in this judgement, and on the facts of the suit at hand, the plaintiff has been able to show prima facie that this court has the jurisdiction to entertain the suit. For a brief discussion of teh facts of the case, I invite you to read Kruttika's original post on this issue.

This post is more in the nature of an update, and will be followed by a lengthier analysis shortly.

However, for those of you who are curious to know more, I quote some key observations made by the Court in CS (OS) No.894/2008, which you can access in full from the Delhi High Court website here (choose Nov 23 2009 under the date-wise section) --

1. Mere accessibility of the Defendants' website in Delhi would not enable a court to exercise jurisdiction. A passive website, with no intention to specifically target audiences outside the State where the host of the website is located, cannot vest the forum court with jurisdiction. To such extent, the court has overruled the proposition in Casio India Co. Limited v. Ashita Tele Systems Pvt. Limited 2003 (27) PTC 265 (Del).

2. ...[M]ere hosting of a website which can be accessible from anyone from within the jurisdiction of the court is not sufficient... Also a mere posting of an advertisement by the Defendant depicting its mark on a passive website which does not enable the Defendant to enter into any commercial transaction with the viewer in the forum state cannot satisfy the requirement of giving rise to a cause of action in the forum state.

3. The Plaintiff would have to show that the Defendant “purposefully availed” itself of the jurisdiction of the forum court. For this it would have to be prima facie shown that the nature of the activity indulged in by the Defendant by the use of the website was with an intention to conclude a commercial transaction with the website user and that the specific targeting of the forum state by the Defendant resulted in an injury or harm to the Plaintiff within the forum state.

This is what caught my eye at first read. Be assured you have not heard the end of the Banyan Tree!

Bumpy Road Ahead

The Financial Express recently reported that the Indian government has eased the norms on technology transfer from overseas firms to Indian companies, hoping that the move will encourage collaboration and effective exchange if know how. (“Tech transfer, royalty payment norms eased”)

Commenting on this move, Anand Sharma from the Commerce Ministry stated that, “Technical collaborations are commercial transactions. India needs to access the best of technologies available abroad. The caps were coming in this way. Hence we have liberalised the policy.”

According to the old policy, automatic approval was only permitted if the transfer of technology involved fees payment of up to $2 million, 5% on domestic sales of royalty and 8% for exports. Above these limits, the proposals were scrutinised by an inter-ministerial body viz. Project Approval Board (PAB) which was chaired by DIPP secretary. Automatic route was restricted on royalty from trademarks and brands upto 2% of exports and 1% of exports respectively.

The Government’s step in relaxing the norms means that the PAB is not required any more and the abovementioned regulatory framework can be done away with. New rules reflecting these changes, including rules for payments for royalty, lump-sum fee for transfer of technology, payments for use of trademark/brand name on the automatic route without any restrictions will be framed in due course. Hence, presently, no permission is required to transfer technology from foreign firms involving use of trademark, brand name as well as payment of royalty by collaborating Indian companies.

As far as a regulatory body is concerned, under the revised setup, a mechanism replacing PAB would be setup to monitor technology transfer compliance in 3 months with consultations between Dept. of Industrial Policy and Promotion (DIPP), Dept. of Economic Affairs and Reserve Bank of India (RBI).

Commenting on this new policy, Vatsala Kamat and others at Livemint write that while liberal economic policies give entrepreneurs more freedom, they can have unintended consequences for others. They critique the move on the basis that given this change would result in (possible) sharp increases in royalty outflows of listed multinational companies (MNCs), lowering their profit growth and even affecting their market valuation. Moreover, this change could also adversely affect the interests of the minority shareholders.

The main concern centers around the question: Should foreign companies charge Indian companies royalty at all? The argument is that after all, the foreign parent is the ultimate owner—even if it does not own 100%. The parent also gets dividend income and it also accounts for its share of profits. And most foreign products are adapted for local markets by the Indian company, which also invests significant sums in product and market development. They need not charge royalty to benefit from the subsidiary’s performance.

Using the following example they illustrate their point, there is a 51% foreign-owned company, with a profit of Rs100, dividend of Rs20 and royalty of Rs10. The foreign company can account for Rs51 as its share of profit, and its income is Rs81, after adding dividend and royalty. If the royalty is doubled to Rs20, lowering its profit, its total income will still be higher at Rs86. Hence, the losers will be the residual shareholders.

Their Warning: Watch out for a bump in “other expenditure” in the coming quarters—higher royalties could be the reason.

Harmonizing the interpretation of 'efficacy' in Section 3(d) with Article 27 of TRIPs

As most of our readers may know Novartis has filed an appeal against the decision of the IPAB in the Glivec case. The decision of the IPAB is troublesome for several reasons which have already been listed out by Shamnad in one of his previous posts.

One of the principle questions of law before the SC in this appeal is going to be the interpretation of the term 'Efficacy' in Section 3(d). The addition of this term in Section 3(d) sparked of a legal battle between the Union of India and Novartis wherein the latter challenged the constitutionality of the provision. Apart from challenging the constitutionality of the provision Novartis also sought a writ of declaration from the Madras High Court declaring that Section 3(d) was incompatible with TRIPs. The Madras High Court judgment which ducked the TRIPS question, has been adequately analyzed in this article that Shamnad and I had co-authored for NLSIR.

Harmonizing the conflict between national and international law: The question that I would like to explore in this post is whether it is possible to interpret the Constitution and the precedents of the Supreme Court of India to conclude that in case of an ambiguity in an Indian legislation it is necessary to resolve this ambiguity by interpeting the provision in a manner which is consistent with international treaties to which India is a signatory. The sum and substance of my submission aims at arguing that given the ambiguity in the term 'efficacy' in Section 3(d) it should be interpreted in a manner consistent with India TRIPs obligations i.e. the term 'efficacy' needs to be interpreted in a TRIPS compliant manner. 'Efficacy' therefore should be interpreted in a manner compliant with the definition of 'inventive step'. Such an interpretation would require the Court to judge 'efficacy' as any improvement from the perspective of a person skilled in the art. Such an interpretation would render void the selective interpretation of 'efficacy' by the IPAB and the Madras High Court, both of whom have interpreted 'efficacy' as only 'therapeutic efficacy'. This interpretation is one of the reasons that Glivec was denied a patent despite the IPAB acknowledging that the beta crystalline form of imatinib mesylate (i.e. Glivec) demonstrated increased bio-availability, lower hygroscopicity and greater thermodynamic stability. The only problem with these improvements was that none of them contributed to 'curing the disease' as required under the IPAB's definition of therapeutic efficacy.
The advantage of couching the arguments in the above terms is that it in case it fails the Supreme Court will pretty much be forced to declare that Section 3(d) prescribes criteria above and beyond Article 27 thereby paving the way for a succesfull challenge of Section 3(d) before the WTO Dispute Settlement Body (DSB).

Now comes the difficult part, explaining the proposition of law that requires the Supreme Court to interpret municipal law such as the Patents Act, 1970 in harmony with India's international obligation such the Agreement on Trade Related Intellectual Property (TRIPs).

Constitutional Provisions: The principle provisions of the Indian Constitution that are of relevance here are (i) Article 51(c), Article 253 and Article 73.

Article 51(c) states that “The State shall endeavour to foster respect for international law and treaty obligations in the dealing of organized people with one another”. It must be noted that Article 51 is a Directive Principle of State Policy and as such is not justiciable in a Court of Law. It is only meant to guide the State.

Article 253 states that “Notwithstanding anything in the foregoing provisions of this Chapter, Parliament has power to make any law for the whole or any part of the territory of Indian for implementing any treaty, agreement or convention with any other country or countries or any decision made at any international conference, association or other body.”

Article 73 states that “Subject to the provisions of this Constitution, the executive power of the Union shall extend – (a) to the matters with respect to which Parliament has power to make laws and (b) to the exercise of such rights, authority and jurisdiction as are exercisable by the Government of India by virtue of any treaty or agreement”.

As a result of Article 73 read along with Article 253 the Union Government is empowered to enter into any treaty on behalf of the Union of India. Once the treaty has been signed by the Union Government it creates an international obligation on India. Such international treaty is automatically incorporated into Indian jurisprudence unless it conflicts with municipal law. Article 51(c) of the Indian Constitution as pointed out above requires the State to make every “endeavour to foster respect for international law and treaty obligations”. The inevitable question therefore is which law will triumph in case of a conflict between international law and national law?

The answer to that is simple – in case of an apparent conflict national law will triump over international law.

Supreme Court Precedents: This proposition was laid down in the Supreme Court case of Gramophone Company v. Birendra Pandey (1984) 2 SCC 534 which in pertinent part held that “National Courts will endorse international law but not if it conflicts with national law. National courts being organs of the National State and not organs of international law must perforce apply national law if international law conflicts with it.”

The same judgment also states that “There can be no question that nations must march with the international community and the Municipal law must respect rules of International law even as nations respect international opinion. The comity of Nations requires that Rules of International law may be accommodated in the Municipal Law even without express legislative sanction provided they do not run into conflict with Acts of Parliament.”

In the case of Vishaka v. State of Rajsthan (1997) 6 SCC 241 the Supreme Court held that “Any International Convention not inconsistent with the fundamental rights and in harmony with its spirit must be read into these provisions to enlarge the meaning and content thereof, to promote the object of the constitutional guarantee. This is implicit from Article 51(c) and the enabling power of the Parliament to enact laws for implementing the International Conventions and norms by virtue of Article 253 read with Entry 14 of the Union List in Seventh Schedule of the Constitution.”

M.P.Jain a leading commentory on constitutional law points out two more pertinent judgments:

(i)In the landmark case of Kesavananda Bharti v. State of Kerala AIR 1973 SC 1461 the then Chief Justice observed the following in regards Article 51: “It seems to be that, in view of Article 51 of the Constitution, this Court must interpret language of the Constitution, if not intractable, which is after all a municipal law, in the light of the United Nations Charter and the solemn declaration subscribed to by India.”

(ii)The minority opinion in ADM Jabalpur v. Shukla, AIR 1976 SC 1207, which is worth its weight in gold, observed that “Equally well established is the rule of construction that if there be a conflict between the municipal law on one side and the international law or the provisions of any treaty obligations on the other, the courts would give effect to municipal law. a construction which would give rise to such inconsistency unless compelled to adopt it by plain and unambiguous language.If however, two constructions of the municipal law are possible, the courts should lean in favour of adopting such construction as would make the provisions of the municipal law to be in harmony with the international law on treaty obligations. Every statute, according to this rule is interpreted, so far as its language permits, so as not to be inconsistent with the comity of nations on the established rules of international law, and the court will avoid ”

Conclusion: All of the above provisions and precedents clearly point towards a tendency amongst Supreme Court judges to harmonize the conflict between national and international law. Therefore if in case it is argued that Section 3(d) is in conflict with Article 27 of TRIPs the Supreme Court will attempt to harmonize this conflict by defining 'efficacy' in terms of 'inventive step' in Article 27. If they do decide to interpret 'efficacy' in terms of the Article 27 criteria then in that case this artificial distinction between 'therapeutic efficacy' and 'clinical efficacy' will not not stand for any longer. However if the Supreme Court is of the opinion that the conflict cannot be harmonized it will have to necessarily declare that Section 3(d) is beyond the scope of Article 27. In doing so the Supreme Court may endorse the IPAB definition of 'efficacy' and deny Glivec a patent. In a way Novartis wins either way in the sense that even if they lose the case, they will atleast be able to call the Indian Government's bluff on TRIPs compatibility. This in turn would make it so much easier for Section 3(d) to be challenged at WTO DSB.

Contd...Delhi High Court rules on Section 47: Provides the Indian Railways a carte blanche to bust patents

Continuing from the last post on Justice Murlidhar's Order, this post will attempt to understand the Delhi High Court's interpretation of Section 47 of the Patents Act. As already explained in the earlier post one of the primary arguments of the Defendants was that Defendants 2,3 & 4 were manufacturing the infringing product on behalf of Defendant No. 1 (The Ministry of Railways) who had supplied the drawings of the product.

Defendants Arguments: It was argued by the Defendants that Section 47(1) which states that the grant of a patent under the Patent Act shall be subject to the condition that any machine appartus etc. may be imported or made by or on behalf of the Government for the purpose merely of its own use exempts the Railways and its agents from being held liable for infringement under Section 48 of the Patent Act.

Plaintiffs Arguments: The Plaintiffs decided to counter this by repeatedly stating the contents of Section 156 of the Patent Act i.e. the patent shall bind the Government. They also seemed to have put up a feeble defence on the basis of the Bombay High Court decision in the Garware Wall Ropes Ltd. Case. This case is discussed below.

The Delhi High Court's ruling: In its Order the Delhi High Court sided with the Defendants by ruling that Section 47(1) would bar the Plaintiff from “seeking to prevent Defendants 2 to 4 from making the subject device since it is going to be manufactured and supplied only to the Railways for its own use”. The Court therefore concluded that the Ministry of Railways was the 'Government' as understood by Section 47 of the Act and that the infringing products in question were being manufactured on behalf of the Government and for the use of the Government itself. Going by this interpretation of the Delhi High Court one would have to conclude that the Government and its undertakings are completely exempt from infringement proceedings thereby implying that the Government and its agents are not required to pay a single penny in royalties to any patentee.
Clearly the above interpretation is a very suspicious, if not alarming interpretation, of the Patents Act. The Delhi High Court has basically given the Government and its undertakings a carte blanche to bust any patents that they so desire.

I'm still scratching my head trying to understand how and why, both, the Plaintiffs and the Delhi High Court failed to make the obvious distinction between Section 47 and Section 100 of the Patent Act. This distinction was made in an excellent order of the Bombay High Court in the case of Garware Wall Ropes Ltd. v. A.I.Chopra 2009 (111) Bom LR 479.

Sai had covered this Order in an equally excellent post that can be accessed here.
The Order itself can be accessed here.
The most crucial distinction between Section 47 and Section 100 is that while Section 47 does not requires the payment of any royalty, Section 100 requires the Government to pay a certain royalty for the use of a patent.

The Garware Decision: In its Order the Bombay High Court distinguished between these provisions on the grounds that while Section 47 allowed the Government to use a a patent 'merely of its own use', Section 100 of the Act uses the term 'for the purposes of Government'. As per the Bombay High Court the former implies the use of the invention directly by the Government or its Departments in performance of the duties assigned to them. The Bombay High Court reasoned that Section 47, was limited to sovereign functions and would not cover the Railways or its contractors. Although the Judge does not clearly support this aspect of its Order with enough reasoning I think he was trying to imply that the Railways was not part of the Government but was instead a Government undertaking which was carrying out a non-sovereign function. Moreover it is also important to note that while Section 99 extends the 'Government use' to even Government Undertakings, Section 47 uses only the word 'Government'. As per this interpretation of the Bombay High Court, Section 100 ensured that the Railways had to pay a royalty for exploiting a patent.

If this aspect of the Order is not overturned the Indian Railways is free to bust as many patents as it wants and the same will be highly detrimental to investment in innovation in the railway sector in the country.

Delhi High Court rules on Section 8 and 47 of the Patents Act: Lack of disclosure under S.8 = No interim injunction

Thanks to Sumathi's wizadry over Google we have for your viewing pleasure yet another Order authored by Justice Murlidhar on two very crucial provisions of the Patents Act – Section 8 & Section 47 (In this post I'll cover only the Section 8 aspect, the Section 47 aspect will be covered in a subsequent post – for now let it suffice to say that the patentee lost the case on both sections).
The Judgment can be accessed here at the website of the Delhi High Court.

• The Judgment can also be accessed here at India Kanoon website.
  

The Facts: The brief facts of the case are as follows: The Plaintiff in this case, an American corporation by the name - Chemtura Corporation - were granted Indian Patent No. 213608 for a 'Side bearing Pad' that is “specifically directed to devices that dampen lateral rolling motions that occur during the movement of railroad cars”. The equivalent US Patent is 7083165 and can be accessed here.

Defendant 1 was the Union of India through the Ministry of Railways and its Original Equipment Manufacturers. Defendant No. 2,3 & 4 used to be licensees of the Plaintiffs before they began to independently manufacture and sell to Defendant No. 1 the allegedly infringing product.

On the first day of hearing, in May 2009, the Plaintiffs were granted an ex-parte ad-inteim injunction restraining Defendants No. 2, 3 & 4 from infringing the Plaintiff's suit patent. Subsequently the Defendants sought vacation of the interim injunction on a host of grounds, the main being, supression of facts before the Patent Office. They also claimed the Section 47 – 'government use' defence.

Justice Murlidhar through his Order dated August 28th, 2009 vacated the injunction with some damning findings against the Plaintiffs.

Plaintiff's Averments: As already mentioned above, the invention claimed that the suit patent, is aimed at dampening the roll forces experienced by a two stage suspension system of a railroad carriage. The invention at suit does so by absorbing and cushioning compression forces. The suit patent was granted to the Plaintiffs after the Patent Office carried out a due examination under Section 12 and 13 of the Patents Act. In order to establish a prima facie case of patent infringement the Plaintiffs pointed out that the drawings of the product, submitted to the Railways Board as a part of the tender process, clearly established that the Defendants were infringing atleast Claim 1 of the suit patent. In order to bolster its argument the Plaintiffs produced an expert witness affidavit. The expert in his affidavit testified that the Defendants product had all of the features required by at least Claims 1,3,6 and 14 of the suit Patent.

Defendant's Averments: The Defendants for their part viciously attacked the validity of the suit patent claiming that the suit patent was bad in law especially since the Plaintiffs had witheld crucial information from the Patent Office. I wish I could explain this in greater detail but the relevant part of the judgment i.e. para 16 is incomplete. The sum of the submission was that the Plaintiffs were forced to narrow their claims, before the EPO and the USPTO because of the prior art cited against them and that the Plaintiffs witheld this information from the Indian Patent Office thereby creating a very strong possibility of their patent being invalidated on the grounds of Section 8, which requires the patentee to keep the patent office appraised of all foreign patent prosecutions.

The Defendants also pointed out that while the USPTO and EPO pointed out several prior art documents forcing the Plaintiffs to restrict the scope of their claims, the Indian Patent Office for its part, had failed to raise any objections of a similar nature thereby implying that the patent office had not carried out a thorough search. This automatically brings into doubt the validity of the patent.

The Scope of Section 8 of the Patents Act

Section 8 of the Patents Act which is titled 'Information and undertaking regarding foreign applications' is a provision which will prove to be the Achilles' heel for all Indian patentees. This provision requires all applicants to furnish the patent office with an undertaking that upto the date of grant of patent in India the Controller would be informed in writing, from time to time, detailed particulars in respect of every invention if any filed in any country outside India. The Section also gives the Patent Office the power to order the applicant to provide at any time before the grant of patent any information regarding the 'processing' of the application in a country other than India.

The Defendants for their part alleged that only did the Plaintiffs fail to make a Section 8 disclosure on their own but also blatantly mislead the Patent Office when the Patent Office sent them a Section 8 letter, dated 20th October 2004, requesting them to disclose “details regarding the search and/or examination report including claims of the application allowed.... in respect of same or substantially same invention filed in any one of the makor patent office such as USPTO, EPO and JPO etc.” The Plaintiffs had replied to this request stating that there had been no further development subsequent and thus no further information was required to be submitted.

The Plaintiffs attempted to argue that as of the date of their reply to the Patent Office no grant of patent had been made by either the USPTO or the EPO and that the requirement of furnishing the information as asked for by the Controller, was required to be submitted only when a patent had been granted by such Foreign Patent Offices. The counsel for the Plaintiffs – Mr. Shanti Bhushan – also pointed out that the word 'status' used in Form 3 (the procedural form corresponding to Section 8) only required the Plaintiff to indicate whether the applicantion for patent in a country outside India was pending, allowed or dismissed. He urged before the Court that if every stage of the application in a country outside India has to be disclosed to the Controller of Patent it would make his task impossible and cumbersome.

The ruling on Section 8: The Court however shot down the Plaintiff's arguments and stated that this was exactly the requirement of Section 8. It went on to state in no uncertain terms that the Patent Applicant was required to have furnished any and all foreign search reports in his possession at the time of his reply to the Patent Office's request on the 17th of October, 2005. In the facts of the present case the USPTO had issued multiple Office Actions since the Plaintiff's patent application was repeatedly rejected until the claims were finally narrowed down to an acceptable limit. The fact that all of these amendments took place before the 17th of October, 2005 fatally affected the Plaintiff's case.

Conclusion: Given the obvious suppression of vital information Justice Murlidhar held that there was a prima facie ground to revoke the grant of the patent under Section 64 and held that the IPAB was at liberty to decide the same in the revocation petition filed by the Defendants. The only option left before the Patentees is to amend and narrow the claims before the High Court. This order is of some significance since it is one of the few orders on Section 8 of the Patent Act, 1970. Future patentees will now have to be extremely careful about their Section 8 disclosures.

The Section 47 aspect of the judgment will be covered in a subsequent post.

Panel Discussion on Bilski

The Program on Information Justice and Intellectual Property (PIJIP) Washington College of Law, American University and the Federal Circuit Bar Association (FCBA) will host a panel of experts to discuss the much debated Bilski v. Kappos on November 19, 2009,4.30 pm-6.30 pm, EST. This is being made possible due to outstanding efforts of Prof. Josh Sarnoff of Washington College of Law who has written extensively on the matter here and here .

The case essentially throws light on the limitations on patentable subject matter in matters of business method innovation. The panel discussion will therefore aim at scrutinizing the repercussions of the decision in Bilski on innovation, prosecution, licensing and litigation.

Panelists for the session include:

• Raymond T. Chen, Solicitor, U.S. Patent and Trademark Office

• J. Michael Jakes, Counsel for Respondent

• Finnegan Henderson, Counsel of Record for Petitioners,

• Nancy Linck, Rothwell, Figg, Counsel for Amicus Curiae BIO,

• Randolph Moss, WilmerHale, Counsel for Amici Curiae Bank of America

Moderators:

* Thomas C. Goldstein, Akin, Gump, Counsel for Amicus Curiae American Bar Association

* Professor Joshua Sarnoff, Washington College of Law, American University, Counsel for Amici Eleven Law Professors and the AARP

The discussion would be followed by a Q and A session and a reception with the panelists.

PIJIP and FCBA will also be broadcasting the program live via web on November 19, 2009 as a part of its Regular Horizon Series. They are priced as follows:

• Private Practitioner-$105 (non members); $65 (members)

• Government/Academic/Retired-$35 (non member); $15(members)

For registration and participation, please follow the instructions below:

• To register and participate via internet at a “discounted” price, please visit here 

(registration password : FCBAbilski09)

• To participate On Site, please visit : here

• For FREE internet participation for university law schools and special group pricing , please contact Elisabeth Reed at reed@fedcirbar.org ( reed [at]fedcirbar dot org)

For more info on the event , do visit here

This promises to be a really interesting event!

Copyright Access for the Disabled and Collaborative IP Policy

In previous posts, we covered the Right to Read Campaign, a campaign aimed at increasing access to copyrighted works for the print impaired. As many of you know, most works of literature, science and the arts are practically out of bounds for the disabled, unless converted to readable formats such as Braille or digitized and accessed via expensive screen reader software such as JAWS.

Recently, this campaign, the brainchild of CIS and Inclusive Planet, came home to us at NUJS, Kolkata and I was amazed to see the bonding between these children of a lesser god and their struggle to transform society into a more inclusive one. NUJS was particularly fortunate to host this campaign that day, as we have a student (Moiz Tundawalla, who ranks in the top 5 of his class) as well as a faculty member, Dr TV Sudhakar, who are visually impaired.

As part of the campaign, a group of us including Rahul Cherian of Inclusive Planet (and the brain behind Bookbole, one of the most innovative solutions yet catering to the needs of the visually impaired), Sunil Abraham and Nirmita Narasimhan of CIS and Lawrence Liang of ALF began working on a copyright defence that would enable the conversion of copyrighted works to more accessible formats for the disabled..formats that would enable them to enjoy such works as comfortably as the others.

Such a provision is critical, given that hardly 0.5% of all published books are accessible by the print impaired. Further, given the constitutional mandate that each one of us shall have the right to life under Article 21 (which includes the right to education and the right to read) and the right not to be discriminated against (under Article 14), the State is under a positive obligation to provide accessible works to the disabled and thereby help them lead better lives.

The Government Copyright Proposal

This is not to suggest that the Indian government lacks sensitivity on this count. Indeed, it is commendable that as far as back as 2006, the government proposed the introduction of Section 52 (1) (za) to the Copyright Act, 1957 to resolve the issue.

The proposed Section 52 (1) (za) states that the following act shall not constitute an infringement of copyright: “reproduction, issue of copies or communication to the public of any work in a format, including sign language, specially designed (emphasis added) only for the use of persons suffering from a visual, aural or other disability that prevents their enjoyment of such works in their normal format.”

While this is a great start, this draft suffers from some serious limitations:

1. Firstly, it restricts permissible formats to those “specially designed” for persons with disabilities. In practical terms, this means that only Braille and sign language is permitted. As many of you may know, Braille is extremely expensive to print and distribute and is not portable. Moreover persons with low vision, dyslexics, people with paralysis, cerebral palsy etc. cannot use Braille and require alternate formats.

Given recent technological developments and the burgeoning of audio formats and electronic formats that are now used by a large number of visually impaired persons, the exception ought to cover such formats as well... formats that do not strictly constitute "formats specially designed for the disabled". Indeed, any creation of a digitized version of a copyrighted work would enable access by the visually impaired (provided they have tools such as screen reading software on their respective computers).

We understand that the Indian government wishes to ensure that the defence is availed of only by the disabled and not by others, who may free ride on such an exception. While limiting the exception to “formats specially designed for the disabled” may help achieve this objective, it seriously limits the scope of access by the disabled in this technological day and age, as explained above. Rather than limit the kinds of formats that could be created, we propose that the government restrict access of works created under the aegis of this exception to only people with disabilities. One way to do this is by insisting on reliable certificates that confirm one's status as "differently-abled".

2. Secondly, the proposed amendment fails to ensure that software and other intellectual property protected tools required to create accessible formats and enable persons with disabilities to access such formats are available at a reasonable cost. Illustratively, the most widely used screen reading software, JAWS, is licensed at a whooping Rs 50,000!

3. Thirdly, the proposed amendment must provide wording to the effect that if content owners apply any technology circumvention measures or DRM locks to digital content, they must make available such content to persons with disabilities. Without such provision, the production of talking books or the use of screen reading software for the benefit of the visually impaired will be restricted if the owner of a digital work has prohibited such use of his work.

Thankfully India does not have any specific protection for anti-circumvention measures and DRM as yet. However, we're not sure if the government plans to introduce such a protection via the recent copyright amendment bill that is likely to be introduced in Parliament in December. Unfortunately, the bill is still secret and will be made available for public viewing only after it is introduced in Parliament.

Our Copyright Proposal

We've therefore proposed a more liberal and meaningful exception as below:

Section 52 (1) (za) (i): The doing of any act, the primary objective of which is to enable persons with disabilities to access copyrighted works as comfortably and flexibly as a person without a disability.

Such acts shall include, without limitation, the making of any accessible format of a work, reproducing such work/format, adapting such work/format, making available such work/format, lending such works/formats etc. and the provision of any facility that is primarily designed to enable any of the acts contemplated above.

Provided that if any entity wishes to undertake any of the above activities on a for profit basis, it shall pay such remuneration to copyright owners as may be prescribed by the Copyright Board from time to time. For the purpose of determining remuneration, the Copyright Board shall take into consideration the need to ensure that works are accessible and available at prices that are affordable, taking into account disparities of incomes for persons who are disabled.

Provided that if any software or other tool that is covered by any intellectual property right is necessary to create accessible formats or to enable access to such formats, or to enable disabled persons to access any work in any manner as contemplated above, such intellectual property protected software or tool shall be licensed at an affordable price, to be determined by the Copyright Board.

Provided that if any works are protected by technology circumvention measures or subject to DRM limitations that restrict access to the work in any way, the owner of copyright shall grant access to any person who wishes to secure such access for the primary purpose of doing any act contemplated within any of the provisions above.

Provided that the exemption or other benefits envisaged under this section can be availed of only when reasonable measures have been taken to ensure that the end beneficiary is a person with a disability.

Provided that if any act done in good faith in pursuance of any of the above provisions falls outside the ambit of such provision, such act shall not be enjoined by an injunction, whether temporary or permanent, but shall be made compensable by payment of a reasonable royalty to be determined by the Copyright Board.

This provision shall override any conflicting provision in any other legislation, regulation or rule in force in India, only to the extent of such conflict.

Section 52 (1) (za) (ii): For the purpose of Section 52 (1) (za) (i) "accessible format" means any format or form which gives a disabled person access to the work as flexibly and comfortably as a person without a disability, and shall include, but not be limited to, large print, with different typefaces and sizes all being permitted according to need, Braille, audio recordings, digital copies compatible with screen readers or refreshable Braille and audiovisual works with audio and or text description.

The above section draws from a provision recommended by the World Blind Union and supported by countries such as Brazil and NGO's such as KEI.

Readers will note that the above exception not only caters to the visually impaired, but any differently-abled person who is unable to access copyrighted works as comfortably as others. Illustratively, without the subtitling of audio-visual material, a hearing-impaired persons is unable to enjoy movies, TV programs and other audio-visual material.

CLIPP and Collaborative IP Policy Making

Readers may recollect an initiative called CLIPP (Collaborative Innovation in IP Policy), that we touched upon sometime back, but never really got around to implementing. We are still in the process of designing an appropriate IT architecture to support this endeavour, which will greatly aid transparency and public participation around IP law making in this country.

Till such time as we unleash this specialised architecture, we're trying to see if we can make do with the blogger format. Indeed, if our experiment around the parallel imports provision is anything to go by, where our posts elicited around 50 odd comments that helped suggest ways in which to interpret (and perhaps reword section 107A), there is no reason why the blogger format itself should not suffice.

Leaving comments on posts is fairly easy. You scroll down to the bottom of the post, hit the "post a comment" button and either sign in with your gmail account or click on the "anonymous" tab to post a comment anonymously. You could also chose any other online identity. For those that are averse to using the comments section at the end of this blog post, please free to email me at shamnad[at]gmail.com.

I hope all of you can take some time out to help this worthy cause by inspecting the suggested provision with a fine tooth comb and recommending ways to improve it. I understand that we have many sophisticated copyright experts on our subscriber list ..and I do hope that you will lend your minds and hearts to this cause. Needless to state, a mere copyright provision by itself is not enough--but it will certainly go some way in ensuring that we provide a better and more "inclusive" tomorrow for these children of a lesser god.

ps: Venky Hariharan, a leading open source advocate has referred me to Orca, an open source screen reader software, freely downloadable.
pps: image by Christopher Moustier from here