Friday, July 30, 2010
Thursday, July 29, 2010
National Phase (NP)
Posted by Rajiv Kr. Choudhry at 9:49 PM
Mr. Deepak Kapoor of Manupatra.com, one of India's leading online legal portals, has been kind enough to, promptly, share with us, his copy of the Hilltone judgment rendered by the Additional District Court, Sirohi District, Rajasthan, along with a translation of the same. We thank him for the same. It is now available on our website over here. Please note this is the judgment against which an appeal has been filed by the Rajasthan High Court and not the order of the Rajasthan High Court itself. We will be carrying an analysis of the judgment soon, however I would like to point out that the Judgement seems to have been rendered under the wrong legislation i.e. it has been rendered under the Trade Marks Act, 1958, which was in fact repealed and replaced by the Trade Marks Act, 1999!!! Having said that I would also like to point out to the fact that the judgment has been rendered in a record time of just 2 years.
Rajasthan HC refuses to 'stay' the operation of the permanent injunction in the 'Hilltone v. Hilton' case
We had earlier blogged about the District Court's order over here. The Plaintiff in this case – Hilltone Hotel – located in Mount Abu, had filed this suit against Hilton International Corporation alleging 'deceptive similarity' to its own name and praying for the Hilton International to be restrained from using the 'Hilton' name. Hilltone Hotel apparently had a trademark registration that was prior to Hilton's registration. The District Court in its Order had noted that:
“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.”
The Rajasthan High Court refused to stay the order, stating instead that “When registration of the Hilton Hotel has not been quashed and it is still in existence in their name and they are running their business in the said registered name, as such their apprehension is totally unfounded that due to judgement impugned they will suffer irreparable loss”. This is not the most logical of statements, since in the hospitality sector, a brand name is everything. If the hotel cannot use the 'Hilton' brand name it is likely that its business will indeed suffer disastrous losses.
However given the fact that the media so far has reported that Hilton has only been denied a 'stay' on the order of the district court, it is possible that the High Court is yet to hear the entire appeal and decide the matter on merits. Given that 'Hilton' is a well known brand name of international repute, it would have been expected that the HC would stay the operation of the district court's permanent injunction order, pending the outcome of the appeal.
Unfortunately the orders of the Rajasthan High Court are not yet available on the website of the High Court.
While it's about time that this unilateral and arrogant process of the US is challenged, and looking through the grounds on which it is being challenged, it seems to me even if successful, this is but a minor step in the bigger picture of enabling accessible medicines. By no means do I intend to undermine the importance of challenging barriers such as this, yet however, removing a barrier to what is proving to be an grossly inefficient process (referring to the patent system in its current form - and grossly inefficient for low and middle income countries particularly), simply makes it a smoother journey through that same grossly inefficient process. Ideally, we would have a system which develops and provides for necessary medicines as well as ensures that they are affordable to those who need them. Although indeed, till there is a remedy to that process or a better alternative innovation system, challenges to existing policy measures are probably the best way forward.
Tahir Amin dealt with this issue at length in this wonderful post here. I extract his introduction as under:
"Ask the question whether pre-95 drug inventions are patentable in India under the 2005 Patents Act – and the answer you are likely to get is ‘no they are not’. The reason? India became a member of TRIPS on 1 January 1995 and so any invention for a drug, and its related patent, before that date does not have to be granted protection in India.
However, in a recent report by Livemint.com , it appears that the Chennai Patent Office disagrees with that reasoning by granting patent Application No. 959/MAS/1995, for the drug Valganciclovir, (otherwise known as the L-monovaline ester pro-drug of the compound Ganciclovir), which is used for treating cytomegalovirus retinitis in patients with AIDS.
The patent was granted despite a pre-grant opposition by HIV/AIDS patient groups arguing that the drug is a pre-95 invention, because although the application was filed in India on 27 July 1995, it claims a convention priority from an earlier U.S Application No. 281 893 filed on 28 July 1994. So has the Chennai Patent Office got it wrong by granting a patent application claiming priority from a 1994 application?"
Subsequent to his post, I had an interesting conversation with him on this issue, and a recent query posed by Pradip Kumar Roy forced both of us to revisit this issue. We agree that there is a definite TRIPS obligation to not only institute a "mailbox facility" for pharma applications (in the period between 1995 and 2005), but also that the application can avail of any relevant priority dates, when such application is finally examined post 2005.
Let me explain as under:
TRIPS mandated countries to expand “patentable subject matter” categories. Illustratively, in the case of India, TRIPS stipulated that product patents for pharmaceutical inventions were to be granted from 2005. However, such pharma applications had to be stowed away in a mailbox and taken up for examination in 2005 (the mailbox facility was introduced in India only around the year 2000 or so, but was made retrospectively applicable from 1995).
Assume that Pfizer files an application for compound X in the US in 1994. It then publishes details of the invention on its website at the end of 1994. It files a similar application in India in 1995. India is obligated to treat this as a mailbox application and keep it pending for examination till 2005. When India opens this application in 2005, would it judge the application for novelty as of 1995? Or of 1994 when it was first filed in the US? If it judges priority as on 1995, Pfizer's application is not "new", since it has already been published on Pfizer's website.
Article 70.8 clearly stipulates that mailbox pharma applications can avail of any applicable priority date. In pertinent part, it mandates WTO member states such as India to apply to mailbox applications, "the criteria for patentability as laid down in this Agreement as if those criteria were being applied on the date of filing in that Member or, where priority is available and claimed, the priority date of the application."
The question now is whether or not India ought to grant such priority in the first place at all. Article 2 of TRIPS incorporates certain portions of the Paris Convention into TRIPS. Therefore Article 4 of Paris dealing with convention countries (and the availability of priority for a period of one year from the date of filing in the home country) kicks in and India has to grant priority to all applications emanating from any WTO member state (as all of them are signatories to TRIPS). Further, India has to grant such priority to all WTO member states and cannot chose between them, as it will otherwise violate the provisions relating to "most favoured nation".
Owing to the above framework, it does not really matter that India did not sign up to the Paris Convention till December 1998. Rather some provisions of Paris (such as Article 4) are automatically incorporated into TRIPS and become applicable to India on the day when TRIPS itself becomes applicable to India i.e. 1.1.1995!
Under the above framework, India would have grant priority to the Pfizer application and consider novelty as on 1994. However, another issue crops up. India is a dualist country and no international obligation can kick in domestically unless specifically legislated by Parliament and brought in (barring certain exceptions such as the Vishaka case). We deal with some of these issues with India's dualist approach in this piece here.
Therefore, unless the patents act were amended (from 1995) to provide priority status to applications from WTO member states, the said "priority" advantage cannot be conferred on such applications. Section 133 dealing with convention countries and priority was brought in only in 2005....and prior to this date, it was upto the Central Government to notify convention countries. Assume that the US had not been notified or at least had not been notified from 1995.
Can Indian courts and the Indian patent office refuse to grant priority to the Pfizer application, since the Patents Act did not mandate such priority as on 1995? I personally think they can...at least on a strict technical interpretation of the law.
This would of course amount to a TRIPS violation. But then Pfizer's remedy would lie in convincing the US to take India to the WTO? It has no remedy before the IPO or courts,...rather than to grin and bear it.
However, given that courts are not always "technical" but would look at a more harmonious interpretation, it is likely that they will come to a different result. i.e in order to avoid a TRIPS contravention, an Indian court may interpret the existing patents act to read in priority obligations dating back to 1995. We'll just have to wait and watch for a court decision on this count.
Wednesday, July 28, 2010
The Delhi High Court (Justice Ravindra Bhat) has "advised" the international environmental NGO Greenpeace to remove the TATA trademark from its online game - Turtle vs TATA, according to news reports here and here.
According to this story from the Indian Express, Justice Bhat is supposed to have told Greenpeace: “It (removing the logo) is only a suggestion and not a direction. We are not directing you to stop using the name but you can consider not using the logo.”
Greenpeace's website, where you can (still) play the game, says:
"TATAs Dhamra port could be the beginning of the end for Gahirmatha’s turtles. Your objective is simple – get the turtles to eat as many of the white dots – jellyfish and other sea creatures – while dodging the TATA demons! If you eat a power pill, you will be gifted with super-turtle powers to vanquish the demons of development that are threatening your coastal home!DNA reports that TATA's petition stated, “The aim of the colourful and noisy video game is to help the yellow turtles eat as many little white dots as possible without running into Ratty (presumably referring to Ratan Tata, chairman of the Tata Group), Matty, Natty or Tinku… The NGO has not only infringed the trademark rights of the Tatas, but is also maligning the reputation of the company, thereby injuring the same in their profession.”
Of course, real life isn’t quite so rosy for the turtles, and they need your help to keep fighting for a safer future."
My first reaction to the news reports, I have to admit, was, wow, it's thirty years since Pacman? (Apparently one of the reasons the Greenpeace game was launched was to mark the thirtieth anniversary of the original computer game). And I remember spending many wasteful hours addicted to my XT frantically trying to eat up the ghosts.
(Images from here)
Admittedly, we've been very late in picking this very interesting story up, but we shall be following this closely in the days to come. The case is scheduled to come up again on August 12, when Greenpeace is expected to file its reply to the allegations made by the Indian conglomerate.
Monday, July 26, 2010
On the 21st of July when the matter was once again listed, the Registrar noted that Respondents No. 5 & 7 had once again delayed filed their replies to the SLP filed by Novartis. Respondents No. 5 & No.7 are Natco Pharma Ltd. & Ranbaxy Laboratories Ltd., respectively. The Registrar further noted that it had been seven months since notice had been issued to the Respondents and also that an extension had already been granted during a hearing on the 22nd of April, 2010. Refusing to give another extension the Registrar has ordered the matter to be listed before a Bench of the Supreme Court. The Respondents still have to time file the replies until the date of hearing.
The next date of hearing before the SC Bench is to be notified.
It is not exactly clear as to why these parties are delaying the matter especially since, one of them, Natco Pharma Ltd., has already filed a counter-appeal to Novartis's SLP. Ranbaxy's delay in filing a reply is suspicious especially given the high stakes involved. Please do feel free to speculate, in the comments section, as to the reason for this delay.
Saturday, July 24, 2010
Rajiv has a B.E. in Electronics from Nagpur University and an LL.B. from the University of Delhi, Law Center-II. Not content with two degrees, he went on to acquire an LL.M. in IP law at the George Washington University Law School and an MBA from the FORE School of Management. Prior to his US stint (where is based now as a patent attorney for a major patent law firm), he worked at ST Microelectronics as a project co-ordinator.
Rajiv is already familiar to many of you, since he's authored a number of guest posts, including a stellar one statistically analysing the results of the patent agent exam and one on section 3(d). With his comparative experience of both patent systems (the US and India), we're likely to see a flood of insightful posts that can help better our understanding of patent offices and patent policies. Please join me in welcoming him to our team.
Thursday, July 22, 2010
Which is why I have to steal it”
At the cost of radically departing from the usual academic tone of this blog, I will attempt to link the basic theme of the movie with general notions of copyright, without divulging anything in the way of spoilers.
The basic premise of the movie is that there exists a group of individuals skilled in the art of 'extraction' - stealing valuable secrets and ideas from deep within the subconscious, when a person is in a dream state. The movie is centered around Dom Cobb (played by DiCaprio), a thief who enters the dreams of others to obtain information and ideas that are otherwise inaccessible. Of course, the actual plot revolves around Cobb and his team doing the opposite - planting an idea, instead of stealing one, in someone's mind (hence the title 'Inception') for their own selfish motives, but the basic premise provides enough to talk about.
People tend to cling to their ideas. Christopher Nolan (the director) seems to have appreciated this fact remarkably well, and whether that was the intended message or not, it is something that was reinforced, in my mind at least, as I walked out of the theatre. The hoarding of ideas often serves as a contentious issue in copyright law and innovation debates and with good reason.
I say, let us unleash the Dom Cobbs of the world into the minds of dreamers. Let them extract all the ideas (good, bad and ugly) and bring them to the center table for people to pick their favourite ones and evolve meaningful expressions from them. In fact, let's have multiple expressions of the very same idea so that innovation and creativity develops and ideas aren't left half-baked in the oven.
Of course, some may contend that the very existence of an idea in one's mind (whether in a dream or conscious state) gives one a pre-emptive right to build upon that idea and explore different ways of expressing it, thereby securing protection by means of copyright at a later stage. But is that really what copyright law is about? Nobody can stake a claim to an idea. Copyright law will look the other way and high-five Cobb and his team. The very purpose of copyright is not to allow monopolisation of ideas to the exclusion of others, but rather to encourage people to create new work from crude, primitive and raw ideas. The way I see it, there can be no 'theft' of ideas, per say. It's a different matter if those ideas are expressed in a crystalline form in some way or the other and then stolen, but that isn't always the case.
If there is still some disagreement on the benefits of sharing ideas, let me direct you to a slogan that I recently came upon, coined by famed motivational speaker Paul Arden – 'Don't Covet Your Ideas'. In his book, It's Not How Good Your Are, It's How Good You Want To Be he suggests that it is always better to give away your ideas for free and stay hungry for new ones. I reproduce a few interesting extracts from his book sourced from here:
“Give away everything you know, and more will come back to you.
The problems with hoarding is you end up living off your reserves. Eventually you'll become stale.
They're not your ideas anyway, they're someone else's. They are out there floating by on the ether. You just have to put yourself in a frame of mind to pick them up.
If you give away everything you have, you are left with nothing. This forces you to look, to be aware, to replenish.
Somehow the more you give away the more comes back to you.
Ideas are open knowledge. Don't claim ownership.”
Whether you agree with everything he says or not, there are some valuable lessons to be learnt.
Let's share ideas willingly. Sharing will help find others who may be able to use them better than one could by one's own effort, and both will eventually benefit. Let's give DiCaprio and his team (and possibly copyright lawyers who fight futilely for the protection of ideas instead of concentrating on copyrightable expressions) a well-deserved rest!
(On a side note, I highly recommend watching this film, which is earning rave reviews and whispers of several Oscar nominations)
[Image from here]
China, Canada, Japan, Turkey, Ecuador seek to join consultations in the Indo-E.U. Trade Dispute over Seizure of 'In-transit' Generic Drugs
(i)Canada: Canada has a substantial trade interest in these consultations, as it exports 40% of generic drugs manufactured in Canada to over 120 countries. Canada is also an active WTO Member on the issue of public health, including access to medicines. Accordingly, Canada requests to join in these consultations.
(ii)Ecuador: Ecuador has a substantial trade interest in these consultations as shipments of generic drugs destined for Ecuador have been seized in transit in the territory of the European Union in 2008 and 2009. Ecuador is also concerned that these measures could adversely affect the shipment of drugs destined for Ecuador in the future.
(iii)Brazil: Brazil imports significant amounts of generic medicines, including from India; Brazil is also an exporter of generic medicines. More specifically, one of the drug seizures listed in India's consultation request affected a consignment of medicines bound for Brazil. In addition, Brazil requested consultations with the European Union under the DSU on similar measures. Brazil has therefore a substantial trade interest in the present dispute and in the correct application of the General Agreement on Tariffs and Trade as well as the Agreement on Trade-Related Aspects of Intellectual Property Rights.
(iv)Japan: The Government of Japan hereby notifies the consulting Members and the Dispute Settlement Body of its desire to be joined in these consultations pursuant to paragraph 11 of Article 4 of the Understanding of Rules and Procedures Governing the Settlement of Disputes, in light of the substantial trade interest of Japan in the seizure of consignments of generic drugs, originated in India and in transit to Brazil, at ports and airports in the Netherlands on the ground of alleged infringement of patents subsisting in the Netherlands.
(v)China: As a significant bilateral trade partner of the EU and the Netherlands and a big producing country of generic drugs, China therefore has substantial interest in these relevant consultations.
(vi) Turkey: Turkey has a customs union with the European Union and it has a substantial trade interest in these consultations.
Given that Japan, Canada and the E.U. are also the founding members of ACTA, it would be interesting to see the nature of their arguments before the DSB. The future of these consultations and the outcome of the dispute may very well be key to determining whether ACTA will proceed as planned.
It pains me to see so many of our students devastated during the campus recruitment phase when they fail to land jobs with prestigious firms. And the one question I always ask is: are you sure this is what you want to do? Or are you merely following in the illustrious footsteps of your seniors? Surely, there are a million different ways of putting legal skills to use? Thinking "out of the box" and doing something different than being a mere cog in the wheel of corporate transactional lawyering is certainly more appealing?
More importantly, if you expand out the "base" of potential legal career opportunities, you don't need to depend so heavily on firms that come to recruit? And surely, this will help future generations of law students that take inspiration from you... and relieve themselves of the herd mentality to think differently?
Why don't you try something different, I ask in all earnestness?
I see a blank face...a blank stare...and often times, a smirk...
So what ails? Why don't many of our students consider alternative legal careers and look beyond law firms? Or perhaps join firms, but move beyond the typical corporate transactional work to do more pro-bono stuff?
I hope to engage with these maladies another day. In the meantime, I'm delighted to report on a fabulous alternative lawyering initiative sparked up by a bunch of bright lawyers who recently graduated. Our own Prashant Reddy happens to be one of them.
Styling themselves as the Pre Legislative Briefing Service (PLBS), these young turks have begun engaging with the Indian law making process in a fairly intense way. They pick up drafts of recent bills that are before Parliament, study it extensively and come up with nuanced reports on the various legal/policy implications of the bill.
Most recently, they've done an in-depth study of the nuclear liability bill and raised points that stalwarts who've been shouting in the media have simply failed to appreciate. If you wish to read their analysis of this bill, please see this report posted on SSRN.
Engaging with legal policy at this level will no doubt improve the quality of our laws in the long run. And we will have to much to thank this bright bunch for.
I list out details of their service and the team below:
The Pre-Legislative Briefing Service (PLBS)
i) To provide rigorous, independent and non-partisan legal and policy analysis of Bills introduced in Parliament
ii) To suggest appropriate legal reform to enable bills to pass tests of constitutionality if challenged
iii) To suggest appropriate policy reform if the legislative policy is to be sound in principle and efficacious in practice
1. Arghya Sengupta, B.A.LL.B. (Hons.), National Law School of India University, Bangalore (2008), Rhodes Scholar (2008), B.C.L., University of Oxford (2009) Current Status: M.Phil. Candidate in Law, University of Oxford.
2. Prashant Reddy T., B.A.LL.B. (Hons.), National Law School of India University, Bangalore (2008) Current Status: Research Associate, Ministry of HRD Chair on Intellectual Property Rights, West Bengal National University of Juridical Sciences, Kolkata.
3. Sanhita Ambast, B.A.LL.B. (Hons.), National Law School of India University, Bangalore (2009) Current Status: Candidate for the Masters in Law and Diplomacy and LL.M. joint degree, at the Fletcher School of Law and Diplomacy, Tufts University and Harvard University.
4. Shivprasad Swaminathan, B.S.L; LL.B., Indian Law Society, Pune (2004), B.C.L., University of Oxford (2006), Clarendon Scholar (2008) Current Status: D.Phil. Candidate in Law, University of Oxford
For those of you who've engaged with law making in this country and are privy to the legal illiteracy widely prevalent amongst Parliamentarians, you'll appreciate how valuable this offering really is.
More importantly, from the perspective of inspiring younger law students to think of alternative careers, the PBLS team couldn't have done better. Rather than playing around with the nitty-gritty of the law in badly drafted statutes, these recent graduates have decided to influence the very formation of the law itself. Certainly a much higher and more valuable terrain to play on. Perhaps law schools need to take a cue from this and focus more on the art and science of law making, rather than merely interpreting statutes and cases.
One Doctoral Researcher in Law
• You will engage in doctoral research in the context of a research project investigating the interaction between legal architectures and open innovation strategies, leading to a Ph.D in Law.
• You will contribute to current and future research activities of the Centre for Intellectual Property Rights (CIR) and the Department of Managerial Economics, Strategy and Innovation (MSI).
• You obtained a Masters in Law or other Graduate-level Law Degree (such as a JD from a US law school where law is a graduate program) with a clear interest (and, if possible, demonstrable expertise) in intellectual property law and competition law.
• Your knowledge of English is excellent.
• During your studies you obtained excellent results at a leading University, preferably great distinction (magna cum laude) or at least 77%.
We offer employment as a full-time doctoral researcher starting around October 1, 2010, in principle for 4 years.
- Two Doctoral Researchers in Economics
• You will engage in doctoral research in the context of a research project investigating the interaction between legal architectures and open innovation strategies.
• You will contribute to current and future research activities of the Department of Managerial Economics, Strategy and Innovation (MSI) and the Centre for Intellectual Property Rights (CIR).
• You obtained a Master in Economics or a Master in Business Economics.
• Your knowledge of English is excellent.
• During your studies you obtained excellent results at a leading University, preferably great distinction (magna cum laude) or at least 77%.
We offer employment as a full-time doctoral researcher starting around October 1, 2010, for 1 year, renewable till 4 years.
The Centre for Intellectual Property Rights is an interdisciplinary research centre initiating and encouraging research initiatives in relation to evolving areas of intellectual property law, such as the protection of software, semi-conductor products and biotechnological inventions, standardisation and technology transfers, with a particular focus on patents, trade marks, designs and copyright (seehttp://www.law.kuleuven.be/cir).
The Department of Managerial Economics, Strategy and Innovation (MSI) is a research department stimulating research in the domains of managerial economics, industrial organization, international business, innovation economics and management, political economy, and entrepreneurship. The department contributes to theoretical and empirical research on the organization of firms, industries and markets in an international context (see http://www.econ.kuleuven.be/msi/).
Innovation is considered crucial for creating a sustainable competitive advantage by firms and for generating – even more importantly – growth and welfare in the national, European and global economy. However, many firms struggle with the successful management of innovation. Innovation management – amongst other things – calls for a careful understanding of the dynamic interaction between the legal framework, in particular IP legislation and firm-based IP policies (“IP architectures”), and the business opportunities the legal framework fosters.
Moreover, there is growing evidence that successful innovation depends more and more on the combination of new ideas and inventions whereby firms cannot confine their efforts to internal R&D. Firms increasingly adopt the so-called “open innovation paradigm” where firms do not develop new technologies independently from other actors in the innovation systems, but open their innovation strategy towards more collaboration and external sourcing of knowledge
The current research project will advance our understanding of the interaction between the relevant legal framework conditions and firms’ innovation strategies by developing a clear typology of IP strategies adopted by firms. Our focus is on “open innovation” arrangements that have not yet been approached systematically from a legal perspective, whereas legal framework conditions are of utmost importance here as they deal with arrangements that cross organizational boundaries.
Please visit http http://www.kuleuven.be/personeel/jobsite/vacancies_aapbap/phd_humanities.html and apply online.
For more information about the job description, please contact Prof. dr. Geertrui Van Overwalle (email@example.com),tel. +32 16 323736 or Prof. Bart Van Looy (firstname.lastname@example.org), tel. +32 16 326901 or +32 16 326700
Applications must be received no later than September 10, 2010.
K.U.Leuven carries out an equal opportunity and diversity policy.
Posted by Prashant Reddy at 12:06 AM