Bilski: Pandora’s Box or Panacea?- I

In the last post, we had reported in brief on the much-awaited decision of the US Supreme court in Bilski v. Kappos (with a few inaccuracies on my part). Just so that we don’t lose out on such an important development and of course, a delicious rousing heated debate, I thought it best to open the decision for discussion/debate with a few preliminary thoughts (because the judgment merits more than a single reading, particularly Justice Stevens’ brilliant opinion, which at times takes a withering tone).

In this post, we deal with the facts of the case and Justice Kennedy’s opinion; the next post shall discuss Justice Steven’s opinion.

The facts of the Bilski case in short are as follows:

1.    1. Bilski’s application broadly claimed a series of steps for hedging risks involved in commodity transactions. It also specifically claimed the use of these series of steps with respect to transactions where energy is the commodity.

2.     2. The application was rejected by the examiner on grounds that it was not directed to technological arts ---> since (1) the steps were not implemented on a specific apparatus and (2) it merely manipulates an abstract idea without limiting the use of the series of steps to a particular application.

3.    3.   The Board of Patent Appeals and Interferences (BPAI) affirmed the examiner’s decision but rejected his contention that the invention must relate to technological arts or must be performed on a machine to be eligible for a patent. The BPAI held the application disclosed a mere abstract idea which did not transform physical subject matter.

4.    4.  The Federal Circuit (FC) held the application ineligible on grounds that neither was it tied to a machine nor did it transform an article into a particular state or a thing, a.k.a machine-transformation test a.k.a MT test.

US Supreme Court

A. Justice Kennedy- Delivering the Opinion of the Court

Justice Kennedy’s opinion touches three aspects of the case- 1) exclusive application or otherwise of the MT test, 2) patent eligibility or otherwise of a patent application which claims a business method and 3) if the Bilski application merely discloses an abstract idea.

1) MT Test

On the MT test, Justice Kennedy, speaking for the Court, states that the test is not to be construed as the sole/exclusive test for determining the patent eligibility of an application. He says so because such exclusive application of the test would preclude genuinely patent eligible efforts from the scope of section 101 of the US Patents Act (which permits grant of a patent for processes, machines, manufactures, composition of matter, or material).

In other words, positing the MT test as the sole test would rob section 101 of its dynamism. This dynamism is necessary to ensure that “unforeseen innovations” are covered by section 101. Further, he takes the view that the MT test is better suited for inventions of the “Industrial Age”, but may not be adequate to address eligibility issues in the “Information Age”. He says, in trying to apply the test for a hitherto un-envisaged class of inventions, an examiner may lose sight of genuinely valuable contributions from a whole range of endeavours.

Having stated that the MT test is not an exclusive test, he hastens to clarify that the Court in this judgment does not attempt to define the contours of a new test for technologies of the information age, for that could have an adverse effect on the examination of such technologies. In other words, he leaves the formulation of a new test for the future, if and when the occasion calls for it.

2) Business Method Applications

He then proceeds to deal with the status of business method applications. He rejects the contention that the term “process” must be given a restrictive interpretation since the neighbouring terms used in section 101 are machine, manufacture, composition of matter, material. This rejection is based on the fact that process has been expressly defined in the Act and, when the Act provides for an express definition, it prevails over other interpretations. (interestingly, process has been defined in a tautologous manner in section 100 to mean “process, art or method, and includes a new use of a known  process.....”)

Since process has an independent definition, he rejects the sole use of the MT test which may find better application in the rest of the categories enumerated in section 101.

He further states that there is no statutory support to preclude grant of patents to business methods, and that such methods qualify as “processes” under section 101. This, according to him, is based on ordinary, contemporary and common meaning of the word “process”, with no indication from the Act that such meaning is contrary to legislative intent.

In fact, according to him, business methods receive support from Section 273(b) of the Act. Section 273(b) provides an alleged infringer a defense against infringement on grounds that the “method in the patent” had been used prior to the filing of the patent. Further, he points out that Section 273(a)(3) defines method for the purpose of this defense, as a "method for doing or conducting business".

Therefore, according to him, since the Act acknowledges the presence of business methods as a subset of processes and provides a defense only on grounds of prior use, business methods cannot be precluded from the definition of process in section 100.   

Consequently, he holds business methods as patent eligible, with a rider that the standard for evaluating them must be higher given the nature of subject-matter dealt with by such applications. In other words, the standards under sections 102, 103 and 112 must be adhered to more stringently for business method applications, according to him.

3) The Bilski Application

As for the conclusion that the Bilski application is nothing more than an abstract idea, he opines that the tests laid out in Gottschalk v. Benson, Parker v. Flook and Diamond v. Diehr are sufficient for the purposes of this application, without the Supreme Court having to come out with a different test.

Of these three precedents, Benson was relatively less complicated because it involved an algorithm to convert binary-coded decimal numeral to pure binary codes. Therefore, it was easier to conclude that it was a mere mathematical formula.

Flook  and Diehr have comparatively more meat to chew. In Flook, the application was for a procedure to monitor catalytic conversions in petrochemical and oil-refining industries. So in Flook, the Court held that notwithstanding the industrial context to which the application was sought to be used, the fact remained that the claim was on a principle, which is ineligible subject-matter.

As for Diehr, a mathematical formula was used to complete the steps in a process for molding rubber into finished products. Therefore, since a principle of nature was being applied in a specific industrial process and not just context, the application was a process under section 101. In other words, the claim was for a technology and not an abstract idea. Of these 3 precedents, Diehr comes closest to the MT test because the invention disclosed was used for transformation of an article.

Applying these to the Bilski application, Justice Kennedy compares the broad claims on hedging to the claims in Benson and holds the application to be a mere abstract idea. He then rejects the specific claims of the application on use of the method in energy markets, by equating it to the invention in Flook. In other words, restricting the use of a principle to a specific context without giving it a technological kernel does not change the fact that what is claimed is essentially an abstract idea.

It is clear that to conclude that the Bilski application claims an “abstract idea”, one needs a syllogistic underpinning. Therefore, Justice Kennedy’s conclusion has to necessarily flow on the basis of some test to determine what would be an eligible process under section 101. Since no new test has been proposed, he goes on to rely on benson and flook together. 

Nowhere does he state that he relies on Diehr or the MT test to arrive at the finding of abstraction in the Bilski application. So it could be said that the principle of Diehr and the MT test were endorsed as useful investigative tools (not as exclusive tests), but were not applied in this case since they were not required according to the Court. 


On second thought, if the decision in Diehr is to be treated as being not just consistent with the tests laid down in benson and flook, but also as being subsumed in flook, then we might say that the Court applied all the 3 precedents, and in a way applied the MT test to hold the Bilski application ineligible.

In the next post, Justice Steven’s concurring opinion will be discussed, although he differs in no uncertain terms with Justice Kennedy in the path he takes to reach the same conclusion.

We welcome the opinions of our readers...

SpicyIP Tidbit: US Supreme Court Affirms Invalidity of Bilski Patent

In what is definitely one of the most anticipated IP decisions in recent times, the US Supreme Court yesterday affirmed the decision of the Court of the Federal Circuit invalidating the Bilski patent which was on a method for commodities hedging. Although this is not an Indian decision, it certainly is of relevance to Indian practitioners and patent applicants.

Based on a strictly cursory skimming of the decision, the Court seems to have upheld the invalidity on grounds that the patent claims did not reveal a concrete invention, but an abstract idea.  Holding that the machine-transformation test (MT Test) is not the sole or exclusive test to determine patentability of a process, the Court  added that it did not altogether do away  with the  MT test under which  for a process to be patentable:

1.   1.  it must be tied to a machine or apparatus or

2.   2. it must transform a particular article into a different state or thing

The stance taken by the US Supreme Court appears to be similar to the one taken in KSR v. Teleflex, where the TSM test was not rejected completely, but its rigid and formulaic application was questioned. A detailed analysis of the decision and the interpretation of the Indian “per se” will be undertaken shortly. 

National Conference on Building Next Practices of IP Management -15-16 July,2010

Confederation of Indian Industry (CII) and Andhra Pradesh Technology Development and Promotion Centre (APTDC) is organizing a National Conference on “Building Next Practices of Intellectual Property Management” on 15-16 July 2010 at Hyderabad.

Venue:Hotel Taj Krishna,Hyderabad,India.

Objectives of the this Conference are: 

• Develop an understanding of the basic concepts of IP management and learn about recent developments and next practices in this field.
• Shape the future of IP management in India among Industry and Academia
• Create a platform for Industry and Institutes to collaborate in this important Mission
• Establish linkages and partnerships with IP management professionals, teachers and researchers in the Country.  
• To provide a forum to learn implications of various important tools of Management of Intellectual Property Rights for enhancing competitiveness.

Important  Technical Sessions  to be covered:

• IPR’s and their strategic  relevance: an overview
• Integrating IP with  Management  
• Role of IP Management  in  Enhancing Business Competitiveness
• Managing IPRs: Internal Assessment  of Technology
• IPR’s  Valuation,   licensing and strategic alliances
• Management of IP : inter and  intra-organizational issues
• Issues Relating to  Commercialization of IPRs
• Managing IPRs: Role of Networks and  Strategic Alliances 
• Developing a road map for the next best practices on IP Management 

This conference  will be beneficial to IP managers; consultants and professional who  wish to shape the future of IP management Representatives from  government agencies, including IP offices, business associations,  chambers of commerce and other bodies with an interest in the  subject of IP management education and research will also find the  program useful.  

This conference is also  designed for professors, researchers and administrators and  faculties of management science who seek a working knowledge of IP  management with a view to launching educational and research  programs in this emerging field.

The reply form and fee structure per delegate is available here.

I had posted the link to the brochure but I guess it not working.I am really sorry for the inconvenience caused.I am trying to figure out a way to get the link here.Alternatively, please drop in an email and I will mail you the brochure.

SpicyIP Team wishes all the best to the organizers and the attendees!

Roche-Natco update: Natco commences arguments

Here's a belated but surely much awaited update on the ongoing Roche-Natco hearings in the Delhi High Court. SpicyIP's friend GenericIPGuy has already updated that the hearing is next scheduled for 16 July 2010. The SpicyIP team here offers news of what actually transpired at the previous hearing on 2 June, where Natco commenced its arguments. We hope there's enough spice in the news to make up for the delay in posting this detailed transcription of what took place. Our previous posts on this are here.

Natco's arguments hinged on the following basic issues (which are substantiated below) -- that Roche does not manufacture the product in question; that the patent is invalid; that Natco does not infringe; that the Division Bench order of the Delhi HC (in the Roche-Cipla case) is binding in this case; and that there is material suppression of facts.

First, Senior Counsel Arvind Nigam, appearing for Natco, argued that Roche's product (the anti-cancer drug Tarceva) did not conform to the patent specification they were claiming infringement of. By extension, Natco suggested that Roche's patent was effectively a "paper patent", and not capable of being worked. From what I gather, Mr Nigam appeared to argue that the patent had to be manufactured in order to be worked in India. (We've discussed this issue many times on the blog here)

The second line of argument was that since neither Tarceva (Roche's product), nor Erleva (Natco's product) could be associated with the patent in question, there could be no infringement.

Expectedly, Natco then drew attention to the Roche-Cipla case, where Roche had been denied an interim injunction by the Division Bench of the Delhi High Court (mentioned above). In view of the DB order, it would be inconsistent to suggest that the same patent could be considered invalid against one party (Cipla), and not invalid against others. Natco also reiterated the "public interest" argument that had come up in the DB order, as also that the same order had noted that a credible challenge had been raised against Roche's patent.

Surely enough, and with an evident reference to Roche's previous arguments, Justice VK Shali, who is hearing the case, pointed out that the Supreme Court order in the Roche-Cipla case had reiterated the general principle that interim orders were not binding,

Natco then proceeded to tackle Roche's reference to the pre-grant opposition and the compulsory licensing application that followed. Readers will recall Roche's contentions, among others, that Natco was estopped, and that res judicata came into play. Natco responded, not surprisingly, that the pre-grant was neither final nor binding, and that Indian patent law allowed anyone to question the validity of a patent at any stage. It also argued that the fact that Natco's not filing a post-grant opposition was inconsequential.

Natco then went into the meatier aspects of the patent and the product, arguing variously as follows --

1. That Roche had suppressed material facts, in not disclosing the composition or form of their product. Roche was aware that their product was in fact the "Polymorph B" form of the compound claimed in the suit patent. Explaining what a polymorph was (one compound with differing crystal structures), Natco claimed that Roche had failed to bring to the attention of the court that each Polymorph of a compound could exhibit different physical properties- which could be drastically different from the main compound.
2. That the US equivalent of the Indian patent US 5747498 was for "a mixture... a formula". And to highlight that the patent in question was not the same as Tarceva, Natco's senior counsel referred to the Polymorph B application in the United States and India.
3. That the Indian patent specification made no mention that the patent cured Non-Small Cell Lung Cancer. This was contrary to the Polymorph B application (and the patent as granted in the US) which made specific reference to the same.
4. That the Division Bench had specifically asked Roche to disclose X-ray diffraction data. On its part, Natco submitted affidavits on such data to show that both their Erleva and Roche's Tarceva were the Polymorph B form of the patent in question, thus confirming that Roche did not manufacture the patent, and that there could be no infringement.

With that, the matter has now been adjourned and been made a part heard matter and will be heard by Justice Shali on the 16th of July 2010, when the SpicyIP team will provide you with the next meaty update on the hearing!

Guest Post: Viacom loses $1 billion copyright infringement battle against YouTube

We are pleased to present to our readers a guest post by Ashish Arun on the recent motion for summary judgement in the Google v. Viacom case, dealing with intermediary liability for copyright infringement.


Asish is a law graduate from the National University of Juridical Sciences and is the Managing Partner at Offshore Research Partners, a Legal Process Outsourcing firm based in Kolkata. His primary areas of work are litigation support and Intellectual Property Rights. ORP provides services to AmLaw 100 firms and a few of the leading databases in the United States and Europe. He can be reached at ashish.arun@orp-india.com.


It seems that the woes of production houses and television channels are not going to end anytime soon. In a judgment delivered yesterday, the United States District Court for the Southern District of New York held that YouTube was protected by the “safe harbor” provision for service providers in spite of the fact that almost every other song or video is available for viewing on YouTube. YouTube was acquired by Google for a staggering $1.7 billion but can it be said that its value was built largely on the unauthorized appropriation and exploitation of copyrighted works belonging to others, - at least Viacom thinks so!

In its complaint filed on March 13, 2007, Viacom alleged that YouTube knew and intended that a substantial amount of the content on the YouTube site consisted of unlicensed infringing copies of copyrighted works and had done little or nothing to prevent this massive infringement. With respect to YouTube’s duty to remove copyrighted material, Viacom argued that YouTube proactively reviews and removes pornographic videos from its library, but refuses to do the same thing for videos that obviously infringe Plaintiffs' copyrights.

It is to be noted that the American Society of Composers, Authors and Publishers, Broadcast Music, Inc., Sesac, Inc., Disney Enterprises, Inc., NBN Universal, Inc., Warner Bros. Entertainment Inc., Association of American Publishers, Center for the Rule o f Law and a few others had filed an amicus brief in support of Viacom’s complaint against YouTube whereas Ebay Inc., Facebook, Inc., Interactive Corp, and Yahoo! Inc. had filed amicus briefs supporting the position of YouTube and Google in this case.

On April 30 2007, YouTube filed its response and argued that Viacom was trying to challenge the careful balance created by Congress when it enacted the Digital Millennium Copyright Act. All claims made by Viacom with respect to primary or secondary copyright infringement were refuted by YouTube and it moved for summary judgment. In that motion, YouTube even outlined the public service it had been doing by affording political candidates and elected officials a new way to communicate with the public; enabling first-hand reporting from war zones and from inside repressive regimes; allowing unknown performers, filmmakers, and artists to rise to worldwide fame; inspiring laughter at the antics of dancing babies and skateboarding dogs; letting students of all ages audit classes at leading universities; and giving creators of all sorts a powerful new way to promote their work to a global audience. Taking the ball back to Viacom’s court, YouTube alleged that Viacom had previously authorized many clips to be on YouTube and were now suing for hosting the same.

Section 512(c) of the DMCA sets out the safe harbor applicable to Internet sites hosting user-submitted content and it was argued that YouTube, which had pioneered efforts to protect copyright while maintaining an open environment for creative, political, and personal expression, was exactly the kind of service that Section 512(c) was enacted to protect. The motion for summary judgment read:

“At the heart of the safe harbor was a notice-and-takedown procedure that required cooperation between content owners and service providers. To claim the safe harbor, a service provider like YouTube must remove purportedly infringing materials when notified of their existence and location on its service. This regime gives copyright holders a quick and efficient way to stop any misuse of their content, while protecting service providers against the fear of crushing liability that could stifle technological innovation and free speech. In this way, the DMCA balances the interests of copyright holders with those of online services and the First Amendment rights of their users.”

The Section 512(c) safe harbor presumptively applies to a service provider that meets the threshold “conditions for eligibility” set out in Section 512(i) and designates an agent to receive “notifications of claimed infringement” (§ 512(c)(2)). The agent's role is to facilitate the notice-and-takedown regime at the heart of the safe-harbor. Using the procedures described in the statute, copyright holders can avoid a costly and time-consuming judicial process by notifying service providers that certain material stored on their systems is not authorized to be there. § 512(c)(3). The copyright holder must identify the work that it owns and believes to be infringed, identify the location of the allegedly infringing material on the service provider's system, and certify its claims under penalty of perjury. § 512(c)(3). Service providers in turn must respond expeditiously by taking down or blocking access to that material. § 512(c)(1)(C). The DMCA also gives the users who posted the material subject to a takedown notice an opportunity to contest the copyright-owner’s claim by filing a counter-notice confirming that they have the authority to upload the work in question. § 512(g)(3).

The critical question to be decided in this case was the determination of “actual knowledge” and “facts and circumstances from which infringing activity is apparent” as mentioned in § 512(c)(1)(a)(1) and (2). The Court looked into the legislative history of the provision and noted that the above mentioned phrases described knowledge of specific and identifiable infringement of particular items and not a general awareness or knowledge of prevalence of such activity in general.

Talking about the burden of notifying the infringement, the Court reiterated that the burden of notification under the DMCA was on the copyright owner and could not be shifted to the provider. (See Perfect 10, Inc. v. CCBill Inc. 488 F.3d 1102). The Court also noted that the “safe harbor” protection was unconditional and was not limited to a pro-active provider who took affirmative action to remove infringing activity.

It was held that the DMCA provisions were effectively followed by YouTube as it had removed virtually all the content mentioned in the take down notice sent by Viacom. Summary judgment was granted to YouTube.

While many would argue that this would promote more copyright infringement and work as a legal approval for service providers to turn a blind eye to the same, it needs to be seen that the world at large would suffer in the absence of such services. However, it will be unfortunate if this law is applicable to all kinds of service providers through a straight jacketed formula. Websites providing access to movie torrents, which are again uploaded by individuals, cannot be put with YouTube on the same pedestal. Such cases need to be decided on their individual merit and while the Court seems right in upholding YouTube’s safe harbor protection, judges should look at the nature of the website and the overall content that is available to the users before determining whether availability of copyrighted materials is just a small part of the game or is it the game itself!

(Copy)Righting a Bollywood Wrong

We'd blogged earlier on the government move to amend the copyright act to inter-alia redress a historical injustice and compensate Bollywood artists more justly for their creative endeavours.

As many of you may be aware, most such artists (mainly music composers, lyricists and script writers) have been at the receiving end of unjust contracts from film producers and sound recording companies who've taken away all their rights for a lowly lumpsum.

The Indian Express carried an editorial of mine on this issue today. I reproduce it below:

Sold for a Song

“Bhagwaan teri duniyaa mein insaan nahin hai”

Shakeel Badayuni’s memorable words set to a melancholy tune by Ghulam Mohammed (the music director of Pakeezah) — holds a foreshadowing of Ghulamji’s fate.

He died in penury, despite his works minting lakhs (in those days) for the film producer who commercialised and marketed his art. He was not alone in this predicament; the wife of the legendary music director Khemchand Prakash was found begging on the streets of Mumbai soon after his unfortunate demise.

The word “inequity” could not have found a better situational fit than this — to this day, Bollywood artists (music composers, lyricists and scriptwriters, whose works are incorporated into films ) are forced to sign away entire copyrights to film producers for a measly lumpsum, even as their works reap crores at the box office.

Sample this clause, extracted from one of the Bollywood contracts:

“the Lyricist expressly acknowledges and agrees that the Producer shall be considered the first author and owner of the Lyrics... without condition.. of any kind, and free and clear of any and all claims for royalty... The Lyricist irrevocably and unconditionally waives all rights in respect of the Lyrics to which he is now or in the future entitled to under the Copyright Act.”

Not content with snatching away all economic rights to future returns, this legal parchment goes on to strip creative minds of their very right to claim authorship. Little wonder then that the government is now attempting to redress this injustice through a set of statutory amendments to the copyright act.

Should these amendments come into force, artists would be considered as authors/first owners of their works and would, notwithstanding any assignment, retain the right to receive royalties from the commercial exploitation of their works. Even someone with no knowledge of copyright basics is likely to agree that this sounds just and fair.

And yet, if the proceedings of a recent parliamentary committee tasked with examining the desirability of these amendments are anything to go by, one finds that film producers are up in arms. They have threatened to shut down Bollywood. More worryingly, it has been hinted that artists may not get credit for their works in future.

India’s proposal to amend the copyright act to ensure better returns to artists is not without international precedent. Not only do European countries such as Germany and Austria prohibit copyright assignments by authors, they also stipulate that, notwithstanding contractual arrangements to the contrary, authors are to be “equitably” remunerated for the commercial exploitation of their works by third parties.

However, laudable as the present set of Indian amendments is, they do not go far enough. First, the amendments provide for a right to royalty only when the underlying works (lyrics and music compositions) are exploited separately from the film or sound recording. In line with international practice, a right to remuneration ought to accrue on every exploitation of the underlying work, whether as part of the film or sound recording or separately.

This is best done by simply prohibiting any assignment or exclusive licensing by the authors of such works in favour of any third party, except to their legal heirs and collecting societies. Such a bar would ensure that the author continues to retain ownership of her works that have been incorporated into a movie and can claim continuing royalties for its exploitation.

Secondly, as it stands now, the right to royalty applies only to lyrics and musical compositions. It should extend to all underlying works that are incorporated into a film, including the script, which may be treated as literary/dramatic work.

Thirdly, the amendments aim to incentivise authors to join collecting societies by stipulating that authors can assign their “right to royalty” to a collecting society. Such societies are likely to strengthen the negotiating power of authors to ensure fair returns for the exploitation of their creative genius. However, there is no need for an author to assign away her rights to such a collecting society. A mere license to administer such rights in favour of the society would suffice.

In short, if the real mischief sought to be remedied by the government is the contractual exploitation of artists, it should simply prohibit them from assigning away any of their copyrights. The concept of a separate “right to royalty”, as crafted under the present set of amendments, is jurisprudentially and practically problematic and needs to be done away with.

Although such a bar on assignment is likely to impact the freedom of contract, it is imperative from the vantage point of social justice. An excellent parallel is the Minimum Wages Act, where even if a destitute labourer wishes, she cannot contract to perform the labour at rates below statutorily prescribed levels. In a similar manner, authors too should be divested of their right to sign away rights for a measly lump-sum amount. Only such a revolutionary change in our copyright regime can help infuse some “insaniyat” into an industry given to rampant exploitation.

ps: image from here.

Hindustan Times & Mint bring forth 'Innovative India'

A large section of the populace may be unaware of the degree to which India and Indians have contributed towards shaping the skyline of the innovation scenario. Ranging from the touch-screen of an IPod that is a must-have for majority of the global populace to the humming engines that drive a jetliner speeding across the sky, India has done its share of filling the technology-basket through different ways of conceptualising, designing, modifying or stress-testing such technologies in one or another of the Indian laboratories. From being the back-office of the global business-line and providing low-end services, India has progressed to being considered one of the research and development hubs in the world. That is what Hindustan Times, one of the leading newspapers in the country, aims to portray in course of its editorial partnership venture with Mint, another leading business newspaper of India. For that purpose, the newspapers have collectively identified a set of companies, people and institutions, who have played pivotal roles behind the aforesaid transformation. Special features will be launched every Friday in the ‘Big-Picture’ page of Hindustan Times, starting from June 18, 2010, on these companies and people and this ‘innovation project’ is scheduled to continue for at least the next 6 months. In this way, HT wishes to bring forth into limelight the most innovative amongst the Indian companies, laboratories, scientists and entrepreneurs. For an announcement of the ‘innovation project’, see here.

Clarifying the Myths Surrounding GWU-CII IP Summit: A Response from Dean Lawrence

As a follow up to the GWU-CII controversy, I present to you the excerpts from the blog of Dean Fredrick Lawrence, George Washington University Law School where he shared his views surrounding the controversy and clarified several misconceptions.

 Dean Lawrence reiterated that the only agenda of GWU is to "foster discussion,dialogue and knowledge." and it is with this objective that the Intellectual Property Law Summit was flagged.On the issue surrounding the sponsors of the Summit (readers will remember that the letter addressed to Mr.Anand Sharma,Minister for Commerce and Industry questioning the role of DIPP as a co-organizer of the 2010 Summit), Dean Lawrence specifically stated that :

".. sponsors’ contributions, while helping us co-host events in India, do not dictate what anyone can or will say. In fact, GW Law does not support, encourage or endorse anyone’s particular statement at the symposium, including our own faculty whose views and opinions expressed are their own. Any speaker’s statement is not attributable to us. Participants have the right to speak freely without threat of reprisal as this is critical to the promotion and success of a dialogue."

 

Allegations were also leveled against the pharma cos suggesting that the Summit served as a platform for these companies to lobby against patent rejections.Responding to this,Dean Lawrence said:

"Ranbaxy Laboratories Ltd., a major Indian generic drug manufacturer, has not only had a representative speak every year but also has been a frequent co-sponsor of the symposium as it was this year. In past years, other generic manufacturers have spoken or were scheduled to speak. This has created a healthy, open dialogue on innovation versus generics."

 

Highlighting the transparency of the Summit and the objective of fostering discussion and healthy debate about contemporary issues surrounding IP,Dean Lawrence referred to the  2007 symposium where Professor Shamnad Basheer,  Ministry of Human Resource Development Chair in Intellectual Property Law at the National University of Juridical Sciences, Kolkata, prompted a lively discussion by arguing in support of section 3(d) of the Patent Act 1970 as an “enhanced patentability standard” and within the boundaries of the  Trade Related Aspects of Intellectual Property Rights (TRIPS). At that event, the late Sir Hugh Laddie,  openly challenged the views on patents as put forth by a GWU faculty and  questioned whether they make sense for India. This is precisely the kind of debate GW Law and the other symposium organizers seek to foster and that has been fostered in prior years.

 

The moot court competition organized at this year's Summit was  highly criticized by several quarters who suggested that  instead of honing the skills of argumentation, the mock trials were aimed at discussing patent enforcement issues pending in the courts.To this Dean Lawrence said:

"GW Law usually co-hosts a moot court on an IP issue, in which U.S. lawyers present mock arguments before U.S. judges on a hypothetical patent issue under U.S. law followed by Indian lawyers arguing the same mock issue before Indian judges under Indian law. This year’s moot court was held at the new National Law University Delhi before a room full of students, summit delegates, and anyone else who wanted to attend. We have hosted similar moot courts at National Law School Bangalore and Indian Institute of Technology Delhi. The exercise is strictly an educational tool that allows audience members to compare and contrast how a U.S. court and Indian court would handle an IP issue."

Ending on a positive note, Dean Lawrence signed off saying:

"We take very seriously the concern that our efforts not be used as an advocacy tool for a single position, and we are committed to ensuring this balance. We plan to announce soon details for next year’s India IP initiatives that will continue and enhance the summit’s tradition of diverse and robust exchange of views. I look forward to continuing our lively discussions about IP matters."

 

 

 

This response from GWU has indeed  provided a much needed balanced response to the serious allegations posed earlier.It will be interesting to see how the critics  respond to this.

Controller General Kurian continues march towards greater transparency at the Patent Office

In an absolutely fantastic effort to increase transparency at the Patent Office, Controller General of the Patents & Trademark Office Kurian has published on the patent office website details of the Prosecution History, Complete Specification and Examination Reports of published patent application and all details including e-Register in case of granted patents. The patent office information database has been renamed from IPIRS to the much cooler sounding – IPAIRS. This announcement has come shortly on the heels of another announcement that all trademark information was being put up on the website.

Up until now the patent office website carried only the patent specification, abstract and the publication dates of the application, filing etc. The latest additions to the IPAIRS system will be the First Examination Reports (FER) and the details of the Patent Register. With these additions the Patent Office has basically ensured that almost the entire file wrapper is available on the website. I would have provided more details on the new system except that it seems to be facing some preliminary glitches.

The publication of such information on the website greatly eases the process of retreiving information from the patent office. Prior to this information being put up on the website a patentee would have to necessarily end his agent to the Patent Office to carry out a physical inspection of the files after which he would have to apply for photocopies. By putting up this information on the website the CGPDTM has ensured that patentees and the general public can access information related to their patents in a cost-efficient manner.

We will get you more details on the website once it is fully functional.

SpicyIP Tidbit: Expanded trademark classification

A snippet for those tracking trademarks -- there are a couple of amendments to the Trade Mark Rules 2002 with effect from 20 May 2010.

The key change is the expansion of the Fourth Schedule to include four additional classes of services to the existing list. The notification, which can be accessed here, mimics the list of services present in the Nice Classification, which is an international classification of goods and services for the purposes of registration of trade marks. The total number of classes now stands at 45, instead of the previous 42. (image from here)

The added services are as follows:

42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
43. Services for providing food and drink; temporary accommodation.
44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture. horticulture and forestry services.
45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

SpicyIP would like to thank Prateek Garg for bringing this news to our attention.

Controller General Kurian Facilitates Trademark Transparency

With all the controversy surrounding the trademark portfolio, currently in the hands of PH Kurian, the the current Controller General, news that the Intellectual Property Office has made available to the public, complete details relating to Trademark Registry is heartening to note and is another example of his continued efforts to increase transparency and public accountability in the trademark office.

From the IPO website's homepage, a short news report states that:

“In a further step to achieve complete transparency in the Trade Marks Registry, Office of the CGPDTM has made available to the public complete details of pending Trade Mark Applications, Registered Trade Marks including the Prosecution History, Examination Report, Copy of the Application, e-Register of Trade Marks, Copy of the Trade Mark Certificate, Opposition details etc.”

This is a noteworthy development for a couple of reasons. For one, there is the obvious benefit of having such information at our fingertips, made available to us instantly and without any charge. Secondly, there was a significant amount of time, energy and money utilised in obtaining such information, providing ample opportunities to make a quick buck. In effect, the move eliminates the middleman and is a big step towards promoting efficiency, something distinctive to the Kurian administration. The IPO also invites suggestions from all stakeholders for improvement and refinement of the system, a concern that is rarely seen in the administration of such offices. Kudos to Kurian and his office for taking up this issue and making deliberated efforts towards cleaning up the systems currently in place.

Fair Dealings by Television Networks: SCIL v. Hamar Television

With all the hoopla surrounding the Copyright Act amendments, a recent decision of the Delhi High Court (Super Cassettes Industries Ltd. v. Hamar Television Network Pvt. Ltd) which throws some light on the extent of the fair dealing provisions that are statutorily provided under the Indian Copyright Act as of today, provides a good basis to anchor one's arguments in support of or against the expansion of fair dealing provisions under the Act. I have attempted a brief examination of the judgement, highlighting the key aspects that formed part of the ruling.

(a) Facts: The plaintiff, Super Cassettes Industries Limited, which operates under the brand T-Series, sought an injunction against infringement of its copyright in cinematographic and musical works, by the defendants, Hamar TV, a television network which primarily caters to Bhojpuri audiences and runs a series of entertainment and news channels, including 'Focus TV'. The defendants were broadcasting the plaintiff's copyrighted works without a license. Specific instances of infringement include the use of clips from the movies Ghajini, Main Aisa Hi Hoon and Slumdog Millionaire, as part of its program E! Martini.

(b) Contentions

(i) Super Cassettes India Ltd.:

(a) The plaintiffs contended that as the sound recording company, it is the first owner of copyright in musical works and compositions that are produced under its direction and control, and thereby, its rights under S.14(e)(iii), S.14(d)(iii) and S.14(a)(i) in respect of sound recordings, audio-visual recordings and its exclusive right in the music works by broadcasting it to the public, were violated.

(b) The defence of fair dealing is not available to the defendants as it was not a defence raised with bona fide intentions since the defendants falsely asserted that the broadcasts were made prior to the formal launch of the channel and they continued to infringe the plaintiff's copyright works, despite getting notice of the same


(c) The provisions of the Indian Copyright Act, when read in conjunction with the TRIPS Agreement (Article 13)and Berne Convention (Article 9.2) provides no reasonable basis to hold the defendant's acts as fair dealing.

(d) Although the broadcast itself does not compete with other uses such as the theatrical distribution, DVD rentals and sales etc. the defendants restricted the plaintiff's ability to exploit its works normally, through licensing.

(ii) Hamar Television:

(a) The defendants contended that the maximum duration of broadcast at any given point was not more than 40 seconds long and hence cannot be dubbed as indiscriminate use of copyright for commercial exploitation or 'substantial taking'.

(b) It sought the defence of S.52(1)(a)(i) and (ii) which by claiming that the alleged broadcast were in the nature of “review”, “preview”, “news”, “special programmes” and “interviews” and for reporting “current events” under S.52(b) and S.39(b) of the Act.

(b) Holding: First and foremost, it is interesting to note that the table given below was constructed for the purpose of determining whether the claim of 'reporting current events' could be availed of by the defendants or not. Using this table, the Court observed that the alleged purposes for which the copyrighted works were used did not fall within the exceptions set out in S.52(1)(a)(ii), S.52(1)(b)(ii) or S.39(b) of the Copyright Act. There was sufficient disparity in the relevance of the copyright musical works that were used by Hamar TV and Focus TV and the nature of the programmes telecast by them.

The ruling rested on two main aspects – that of substantiality and fair use for the purpose of criticism, review or reporting current events.

1. Substantiality

   The court concluded that the qualitative test is as important as the quantitative test and so rejected the earlier contention of the defendants that a mere 40 second broadcast, cannot be considered as 'substantial takings'. Thus, the essence of the copyrighted work is of importance, and not the overall quantity. It also found that while it is not possible to delineate the exact contours of fair dealing, its determination is a question of fact, degree and overall impression.

2. Review/Criticism/Reporting Current Events

   The court concluded that the motives of the alleged infringer, the extent and purpose of the use are all considerations that go towards determining whether the broadcast was necessary to report current events. The defendants clearly failed this test. Further, one cannot use the garb of criticism to infringe copyright, although a liberal approach by the courts is generally preferred in determining the motives of the alleged infringer.

The court concluded by noting that repeated instances of infringement by the defendants would result in a reasonable cause for grant of aggravated damages at trial.

The Court in this case relied primarily on US and UK principles of fair use and fair dealings and sought to incorporate them in its reading of the S.52 and S.39 exceptions. The convergence of opinion on these principles across jurisdictions, is more pristine that one would ordinarily expect and their use to advance the understanding of the limitations of the fair use provisions in the Indian regime is certainly justified.

Revisiting the Constitutionality of the Copyright Board in light of the SC judgement in the NCLT case

Some months ago Shamnad had a run a post on the legality of the appointment of Dr. Raghbir Singh as the Chairperson of the Copyright Board and also the constitutionality of the Copyright Board as provided for under the Copyright Act, 1957.

In regards Dr. Raghbir Singh's appointment, as the Chairperson of the Copyright Board, Shamnad had pointed out how it was highly unlikely that Dr. Singh actually fulfilled the eligibility criteria laid down in the Copyright Act. Section 11(3) of the Copyright Act, 1957 clearly states that only a person qualified to become a Judge of the High Court can become the Chairperson of the Copyright Board. The qualifications to become a Judge of the High Court are laid down in Article 217 (2) of the Indian Constitution. According to this provision of the Constitution, in order to become a Judge of the High Court a person should have either held a judicial office for a period of 10 years in India or he should have been an advocate with 10 years of practice in a High Court.

Although it is known that Dr. Raghbir Singh is a highly experienced bureaucrat, it has been difficult to unearth the nature of his legal qualifications and his years of standing at the Bar.

In regards the second issue pertaining to the constitutionality of the Copyright Board, a recent Supreme Court judgment in regards the National Company Law Tribunal, has laid down some interesting law which has wide reaching ramifications for the current membership of the Copyright Board.

I. The Constitutionality of the Copyright Board – Separation of Powers and Independence of the 'Judicial Office'

The current composition of the Copyright Board is as follows:

1. Dr. Raghbir Singh (Chairman)
2. Joint Secretary to the Government of India, in charge of Copyrights, Ministry of Human Resources Development (Member)
3. Joint Secretary and Legislative Counsel, Ministry of Law & Justice (Member)
4. Law Secretaries to the Government of Haryana, Gujarat, Maharashtra. Kerala, Bihar and Uttaranchal (6 Members)
5. Directors of the various leading National laws in India (5 Members).

The current Panel hearing the compulsory licensing dispute does not employ any of the directors of the National Law Schools. Instead the Secretary to Union Law Ministry and the Law Secretary of the Bihar Government are hearing the dispute along with Dr. Raghbir Singh.

In a recent judgment in the case of Union of India v. R. Gandhi, President of the Madras Bar Association the Supreme Court while deciding the constitutionality of the National Company Law Tribunal (NCLT) stated in no uncertain terms that active bureaucrats could not be tasked with judicial functions since the same would go against the doctrine of separation of powers between the Executive and the Judiciary. In pertinent portion the Supreme Court held the following:

The issue is not whether judicial functions can be transferred from courts to Tribunals. The issue is whether judicial functions can be transferred to Tribunals manned by persons who are not suitable or qualified or competent to discharge such judicial powers or whose independence is suspect.We have already held that the Legislature has the competence to transfer any particular jurisdiction from courts to Tribunals provided it is understood that the Tribunals exercise judicial power and the persons who are appointed as President/Chairperson/Members are of a standard which is reasonably approximate to the standards of main stream Judicial functioning. On the other hand, if a Tribunal is packed with members who are drawn from the civil services and who continue to be employees of different Ministries or Government Departments by maintaining lien over their respective posts, it would amount to transferring judicial functions to the executive which would go against the doctrine of separation of power and independence of judiciary. (para 45)

A lifetime of experience in administration may make a member of the civil services a good and able administrator, but not a necessarily good, able and impartial adjudicator with a judicial temperament capable of rendering decisions which have to (i) inform the parties about the reasons for the decision; (ii) demonstrate fairness and correctness of the decision and absence of arbitrariness; and (iii) ensure that justice is not only done, but also seem to be done. (para 47)

We hasten to add that our intention is not to say that the persons of Joint Secretary level are not competent. Even persons of Under Secretary level may be competent to discharge the functions. There may be brilliant and competent people even working as Section Officers or Upper Division Clerks but that does not mean that they can be appointed as Members. Competence is different from experience, maturity and status required for the post. (para 48)

The current composition of the Copyright Board therefore is patently unconstitutional.

II.Rectifying the situation – Amend the Act
As per the current scheme of the Copyright Act, the Central Government may prescribe its own criteria to appoint the members of the Copyright Board. In my view it was unconstitutional for Parliament to delegate this essential function to the Central Government. Since the independence of the judiciary is a basic feature of the Constitution, all factors affecting their independence, such as appointments, removals, tenure, salary are all essential functions, which must be decided by the Parliament itself and not delegated to the Central Government. A seven judge bench of the Supreme Court in the case of In Re. Delhi Laws had upheld the delegation of powers from Parliament to the Executive but drew the line at delegating essential legislative functions. Therefore the only way to amend the situation is to amend the Act itself.

No entry for Hilton Hotels rules Rajasthan Court

Believe it or not, but the international hospitality group Hilton International Corporation of the Hilton Hotels fame cannot carry on business in India (Conrad Hilton has a joint venture with DLF),owing to the outcome of a pending trademark suit in Sirohi District Court in Rajasthan,as the Hindustan Times reports.

The facts of this 'spicy' suit relate to the petitioners claiming that Hilltone Hotels, situated in Mount Abu is registered under the Companies Act,1956 and therefore Hilton International should be restrained from carrying out business in India by using a "deceptively similar trademark."

Rejecting the contention of the defendants who stated that the domestic firm had adopted its name and trademark for the purposes of deriving  benefits of fame and reputation, the rather astonishing Order of

Additional District Judge Narinder Singh Dadda stated:

"The defendant, in any state of India, may not use the registered trademark Hotel Hilltone of the plaintiff or any kind of sabotage in it by using any kind of misleading logo and mark.It may not use and enjoy by causing confusion of being plaintiff's hotel and in collaboration with any other Indian establishment may not carry on business of hotels and food items under such duplicate trade mark.The defendants (Hilton International Corporation and Hilton International) are restrained by permanent injunction that they not give the threat to the plaintiff to use the name of Hotel Hilltone and the defendant may not create any obstruction of any kind in the manufacturing and sale of the food items to be manufactured by the plaintiff under the registered trademark."

In the opinion of the Judge, use of such misleading logo and mark had the potential to cause confusion among general public.

I tired to get copy of the Order but couldnot locate it.

Sir Robin Jacob - Sir Hugh Laddie Chair in Intellectual Property Law ,University College London

The first Sir Hugh Laddie Chair in Intellectual Property  Law at University College London would have Sir Robin Jacob as its first appointee.

Prof Hugh Laddie,a leading English Judge and an expert in the field of intellectual property law,passed away in November 2008.He was appointed the Chair Professor in Intellectual Property at the University College London in 2006 after he retired from the Bench in 2005.He was also the founder of the Institute of Brand and Innovation Law (IBIL). Shamnad Sir had a wonderful post commemorating this "wittiest IP maverick ever."

University College London created the academic chair funded by private giving to ensure that Sir Laddie's name is forever associated with world class legal thinking.The objective behind the creation of the Chair was to carry forward the immensely successful seminar series spearheaded by Sir Laddie as a part of IBIL.

As well as shaping the research agenda of IBIL, the Chair is to develop leading-edge IP courses for academics, practitioners and industry, including programmes focusing on areas of emerging economic importance, such as India and China, where Hugh had strong links.

Sir Jacob practised at the Intellectual Property Bar from 1967.He was made a Queen’s Counsel in 1981 and served as a High Court Judge (Chancery Division) from 1993 to 2003. He was appointed a Lord Justice of Appeal in October 2003, and is currently in charge of the Court of Appeal’s Intellectual Property List. He has written extensively on all forms of intellectual property. He often lectures, mainly on IP topics, in the UK and abroad.Expressing his sincere gratitude on the appointment,Sir Jacob said :

“This is a unique, once in a lifetime opportunity for me. I can carry on what my old and dear friend Hugh started so brilliantly. His imaginative establishment of IBIL was a significant event. Under him IBIL had started to become a major force for debate and constructive thinking, about IP Law not only in Europe but the world generally. My intention is to build on what Hugh started:  to make UCL one of the key world centres for practical  IP law research and teaching. UCL has the talented staff and suitable environment to make that happen.”

Sir Jacob will be taking up the position in 2011 and will also serve as the Director of IBIL.

An Affordable Vaccine Model

TV Padma of SciDev has a wonderful write up on an interesting experiment involving the Serum Institute of India and the NIH in relation to the production of an affordable meningitis vaccine. As many of you may know, SII is one of the most innovative companies in India.

I reproduce some excerpts below:

"An unusual vaccine development collaboration, which should lead to the launch of a cheap meningitis vaccine for Sub-Saharan Africa later this year, is emerging as a feasible way forward in the quest to make newer vaccines affordable in developing countries.

The Serum Institute of India's vaccine for meningitis — a bacterial infection of the brain — was developed under an unusual technology transfer pact with the US National Institutes of Health (NIH). It is expected to receive certification this month from the WHO, and UNICEF will supply 40 million doses to Sub-Saharan Africa later this year. Meningitis can be prevented with vaccination, but the technology is complex and beyond
the capacity of scientists in developing countries.

....If made by large pharmaceutical companies the meningitis vaccine would have cost US$2.5-3 per dose but, under the Serum Institute, the vaccine will cost 50 US cents per dose — a limit imposed by the NIH after consulting with African nations. Profits will be driven by the 'low cost, high volume' principle rather than 'high cost, low volume'.

...A report from the international medical charity Médecins Sans Frontières and Oxfam — released last month (11 May) — describes the collaboration as an "intriguing model" of vaccine development in developing countries, in which a vaccine with specific characteristics tailored to a particular population is developed at a modest cost and provisions to ensure sustainable access are built in from the start."

The low cost high volume principle is one that is particularly attractive for India. And we hope that many companies will follow suit in the years to come. Particularly since Moser Baer has had tremendous success with such a model. And Merck tasted a bit of this success when it transposed this model to the pharma arena and sold Januvia at 1/5th of the global price.