Monday, May 28, 2012
The readers of Spicy IP may be interested to know of a new journal that has recently come into being and seeks to address issues pertaining to the nexus between IP and public interest, something which has always been one of the focus areas of Spicy IP too. The journal, named the Journal of Public Interest IP, is a brainchild of PIIPA (Public Interest Intellectual Property Advisors, Inc.). PIIPA is an international non-profit organization that provides pro bono IP legal counsel to governments, businesses, indigenous peoples, and public interest organizations in developing countries that seek to promote health, agriculture, biodiversity, science, culture, and the environment.
The journal intends to serve as a repository of peer-reviewed knowledge from thought leaders around the world. It seeks to address issues and discuss solutions that meet the practical demands of developing countries and public interest organizations with regards to intellectual property law. In that way, it appears to be the first publication of its kind that solely focuses on the complex ways intellectual property law impacts human capabilities and endeavours.
True to its goals, the journal is going to have an open-access policy. It has already published its first issue having the theme ‘IP and Development - Current Trends and Future Scenarios’. At present, it is accepting submissions for its second issue based on the theme ‘Food, Climate Change and Intellectual Property: Defining the Issue’.
For the submission policy of the journal, see here.
For further details about the journal, including policy matters, editorial team composition etc., see here.
Friday, May 25, 2012
There are completely new issues, perhaps ones that have never risen before, which are coming out as a result of the digital era we've entered. These aren't necessarily IP issues but are at the cross section of law and technology. Given the common overlap of interests between 'IP-ers' and 'Law and Tech-ers', along with a lack of any specific category I can think of for them, I have taken the liberty to put two of these issues in this blog.
1. Ruining democracy
If you and I search online for the same 10 random terms, there is a very high possibility that there will be a difference in most of our search results. The reason for this is the constant personalization that search engines are doing in order to customize search engines for us. This is true not only of search engines, but also facebook, for instance - where the facebook feed you see is customized according to the profiles you like to visit more often, the links you check, and even as the new lawsuit points out, your other browsing activities. However, I'm not referring to the privacy concerns that this is usually associated with.
While this may help bring us quicker results, there is also a different, perhaps mind numbing side-effect to this. We all have our own biases and while consciously would perhaps like to believe we are objective, we definitely tend to look into topics that we are more interested in / believe more in. The current algorithms, if stretched a little further, ensures that we see this.. and only this. That is, we see the side of the story that we are more likely to relate to / believe / accept.
A personal belief I have is that democracy doesn't work when people are stupid / uninformed / need to worry about their basic needs. This kind of search result customization certainly contributes to the first two, which - even if they aren't the reason for democracy's failures - are still not something we should just gloss over and should worry about!
As I was thinking about this topic and searching online to see what others have said on the topic, I came across this great TED talk, where Eli Pariser puts across some points far better than I have and with examples. It's a 10 minute video which is worth a watch - available here.
|Photo by Derek Harper|
2. Information asymmetry
A couple of weeks ago, the NYT carried a piece on Facebook's ability to shoot new start ups to top positions by combining their knowledge of their tremendous user-base's web habits along with their ability to promote the companies they choose to. To quote:
"When the company saw a staggering spike of Instagram photos flowing into Facebook, it knew it had to act quickly. It bought the photo service for $1 billion before Twitter or Google could make a move."
Now, I'm no expert in antitrust/competition law (or whatever else would apply here) and there could certainly be a strong argument that they were only making use of data that was available to them, but for all practical purposes, Facebook can almost completely control who gets ahead and thereby will most certainly have a huge advantage over any of their rivals. To be perfectly honest, I don't know if there's a strong argument against this - as they have reached where they are due to their success. As per the NYT piece, Jonathan Zittrain of Harvard Law School refers to this is as the Matthew Effect, where the rich get richer and the poor get poorer. Intuitively at least, there definitely seems to be something wrong with that sort of 'progress'.
The NYT piece is here for those interested.
With all the piracy, privacy and censorship concerns that are taking the foreground of internet-related debates, I'm not sure these issues are getting the attention they deserve. Not to say that piracy, privacy and censorship issues are in any way small, but these too are important and while they may be small right now, it would not be wise to wait till they are causing more of an impact.
The recent decision of the IPAB over the FT trademark, which Shan had analyzed about over here, is probably one of the most important judgements in the recent past. The distinction drawn by the IPAB between 'use' and 'reputation' will probably have an effect on several similar cases pending before different forums.
Arun Mohan, an IP lawyer practising before the Madras High Court has sent us this guest post providing a different perspective on the matter.
I also invite other practitioners to send us their views on this interesting judgement.
Reputation without use
Arun C. Mohan
A recent order of the IPAB in rectification petitions for the mark “Financial Times” has thrown forth several interesting propositions. The dispute is between the Financial Times UK(FTUK), which runs the well known publication Financial Times globally, and Times Publishing House Ltd which runs the well known Indian publication Economic Times within which it also runs a supplement called Financial Times. FTUK claims user from the 1948, and Times claims user from the 1980s. Given them being in the same market with considerable success, a dispute was but inevitable. There are also injunction proceedings pending before the Courts. The injunction proceedings however, are not relied nor referred in the conclusions of the IPAB.
There were cross-rectifications which are as follows:
1. Times filed rectifications against FTUK’s registration of the marks “Financial Times” and “FT” in classes 9 and 16.
2. FTUK filed rectification against Time’s registration of “Financial Times” under class 16.
The order at its outset clarifies that it is decided under the 1958 Act. The Order opens with an interpretation of the Hon’ble Madras High Court’s order in the Rhizome matter. FTUK had raised an objection that Time’s rectification cannot be entertained as it was under secs 9&11 of the Act, which runs contra to the Rhizome order. The Board found that given the wide statutory discretion vested in it under secs 46 and 56 of the 1958 Act (comparable to sec 57 of the 1999 Act) it had authority to consider Time’s application inspite of the Rhizome order. However, despite such specific preclusion of sec 9 & 11 of the Act, and its conspicuous absence in recent IPAB orders, it must be admitted that the spirit, purpose and language of the sections prevail across all recent IPAB orders including the present one.
Subsequently, the Board in deciding FTUKs registrations for the mark “Financial Times” observed that FTUK has proved its trans-border reputation, intention to enter India and that the mark “Financial Times” has become distinctive of FTUK. The Order then detracts to say there is a ‘hitch’. It finds that FTUK claims user since 1948, and was in fact referred to in various articles in the Indian Express in 1948. However, it finds that such ‘mention’ is not ‘use’ and only shows ‘reputation’. It then goes on to find that a mention of a 1981 conference titled “Financial Times Conference” tantamounts to use. The Board concludes that since FTUK cannot prove its exact user date of 1948, the mark stands to be cancelled. This appears to me to be a rather unique distinction between reputation and use. It is possible to have reputation without use? It also creates a rather dicey position for holders of marks of yore. To go back in time of several decades to establish exact user date in the event of a challenge is rather daunting. A probable midway solution could have been to order amendment of the user date rather than cancel the mark itself, when there are such clear cut findings on reputation and distinction. In respect of FTUK’s registration for the mark “FT”, the Board found that since FTUK did not claim use prior to application, there was no reason to cancel the same. This causes us to consider that if the Board accepts the validity of “FT” from its application date, then “Financial Times” must have been “used” atleast since such application date of “FT”, and could have considered directing the registry to amend FTUK’s user detail for the mark “Financial Time”. When there is no finding of fraud, and there seems to be reputation in and around the claimed user date, it appears perplexing why such an old mark stands cancelled on a technicality, more so when it’s concurrent acronym is allowed to stand.
The Board in deciding Time’s registration of “Financial Times” stated that Times was aware of FTUKs existence and had entered into syndication agreements with FTUK for articles from the Financial Times. Further, the Board makes an observation that in businesses such as automobiles and newspapers, one cannot claim to ignorant of a rival’s business. In any event, the circulation and sales figures provided would be applicable only to the Economic Times, and would not support Financial Times. Therefore, it also cancelled Times registration.
The position today therefore, is that no one has registration for the mark “Financial Times”. The Boards findings on FTUK not establishing its user date would again be tested in the Courts, and we will have to wait and see if the Courts arrive at a different conclusion in the injunction proceedings.
Wednesday, May 23, 2012
(Image taken from here)
Most of the regular readers of Spicy IP would by now be familiar with the growing controversy and debates surrounding Section 3(d) of the Indian Patents Act, 1970 (For a detailed list of Spicy IP posts relating to this provision, see here). A while ago, a post had also been made on how other countries like Thailand had been coming up with legislative provisions similar to S. 3(d) within their own IP regimes (see here). For those who are not familiar with the provision, it seeks to prevent “ever-greening” of patents, by stating that only pharmaceutical derivatives demonstrating significantly enhanced efficacy are patentable. By making derivatives with added efficacy patentable, Section 3(d) encourages sequential developments of existing products or technologies that help bring in improved products to the market, capable of addressing unmet public health needs.
Recently, a piece of news has been brought to the attention of the Spicy IP team. Apparently, the 3(d) wave is spreading to other developing countries also, the current case in point being Argentina. On May 2, 2012, the Argentine Patent Office (also known as the National Institute of Industrial Property, or INPI), along with the Ministries of Industry and of Health, have issued a few resolutions (Joint Resolution Nos. 118/2012, 546/2012 and 107/2012), which include a set of new guidelines for examining the patent applications relating to chemical/pharmaceutical inventions. The resolutions have become effective from May 9, 2012 and will be applied by the Argentine authorities to all pending applications too.
A closer look at these guidelines will reveal that they intend to restrict the patentability of certain categories of pharmaceutical inventions, such as claims directed to polymorphs, hydrates, solvates, salts, esters and other derivatives of known compounds (processes to obtain the same will be considered mere routine experimentation), single enantiomers where the racemic mixture is already known (although novel and inventive processes for obtaining enantiomers may be patentable if they are clearly disclosed and the resulting compound is fully characterized by spectroscopic data), compounds represented by Markush structures (if the specification does not include examples representing all the compounds claimed), selection patents, active metabolites, etc.
The resolutions also prescribe that prodrugs must be supported by the specification, which must include the best method for obtaining them and their characterization. The specification must also demonstrate that the prodrug is inactive or less active than the active compound. New formulations as well as the preparatory processes should generally be deemed obvious over the prior art. However, exceptions are in place insofar as claims directed to formulations are concerned. Such a claim can be deemed acceptable if the invention caters to a long-felt need in a non-obvious manner. Claims relating to combinations of known active compounds, second medical uses or dosage regimes have been termed equivalent to methods of treatment and hence excluded from patent protection.
Apart from the above, the resolutions do contain certain additional flexibility that may be useful to the applicants. They allow any additional example/information filed during prosecution of an application to be considered so long it does not broaden the original disclosure.
Insofar as manufacturing methods are concerned, they must produce an industrial result to be deemed acceptable. Hence manufacturing procedure of active compounds disclosed in a specification must be reproducible and applicable on an industrial scale, which can also be considered a progressive move by the Argentine authorities.
While it remains to be too soon to comment on the resulting effectiveness of these new guidelines in the Argentine context, what remains true is that with the passage of time, more and more IP regimes are leaning towards a stance favourable to the approach adopted by Section 3(d). No doubt such a trend is likely to induce anxiety in the minds of the inventors engaged in pharmaceutical research.
|Image from here|
I had recently filed a RTI Application with the DIPP to collect information on the backlog of certain specific proceedings before the Patent Office and the Trademark Registry. The application was transferred to the office of the CGPDTM and the replies from his office indicate a daunting backlog which is going to be impossible to clear with the present staff, especially at the Trade Marks Registry.
Given below are the figures of some of the pendency rates, if you are interested in detailed year wise breakups, please access the entire reply (available over here):
(i) Pending pre-Grant Oppositions under Section 25(1) of the Patents Act, 1970: 835
(ii) Total number of pre-Grant Oppositions disposed in last 5 years: 144
(iii) Pending post-Grant Oppositions under Section 25(2) of the Patents Act, 1970: 156
(iv) Total number of post-Grant oppositions disposed in last 5 years: 68
(v) Pending applications under Section 69 of the Patents Act, 1970 for recording of assignments of patent: 1,127
(vi) Pending oppositions under Section 21 of the Trade Marks Act, 1999: 135,874
(vii) Pending rectification applications under Section 57(1) of the Trade Marks Act, 1999: 878
(viii)Total number of opposition and rectification petitions disposed under Section 21 & Section 57(1) in the last five years: 21,978
(ix) Pending applications under Section 40 of the Trade Marks Act, 1999 for recording of assignment of trademarks: 37,569
A. Pre-grant and Post-grant opposition before the Patent Office: It is interesting to note that the pre-grant opposition mechanism which was almost done away with by the government in the 2005 amendments, is much more popular than the post-grant opposition mechanism. Contrast these figures for the year 2010-2011: 294 pre-grant oppositions versus a mere 29 post-grant oppositions.
The current pre-grant opposition mechanism, while necessary, is also open to abuse because of weak procedural safeguards. The standard strategy is to keep filing representations through different sister companies or employees so as to delay the hearing for as long as possible. Patentees with strong patent applications are made to suffer through these delays and in worst case scenarios the grant of a patent can be delayed by years together. We had blogged about such abuses of the pre-grant opposition mechanism over here. I’m guessing that at least 5-10% of the pre-grant oppositions are bogus.
What I also find interesting in these numbers is the fact that they do not seem to be consistently increasing every year. Conventional logic would determine that as patent filings go up, even pre-grant and post-grant oppositions filed every year would go up. However that does not seem to be the case. If anything pre-grant oppositions have shown wild variations. While in 2009-10 these oppositions were at 103, they spiked to 294 in the subsequent year and then fell to 193 in the next year.
B. Rectifications and Oppositions before the Trade Marks Registry: Moving on to the Trademarks Registry, the situation appears to be serious. In fact ‘serious’ would be an understatement. If anything the situation is suicidal. Apart from the mounting number of trademark examinations, the 5 Trade Marks Registries are faced with a cumulative total of 135,874 i.e. one hundred thirty five thousand eight hundred and seventy four only! Unlike mere examination of trademark applications, oppositions take up significant resources of the trademark registry because such oppositions can be conducted only by Registrars and each hearing can take up to a few hours. Therefore while technology can ease the examination process to a considerable extent, trademark oppositions necessarily need a fixed number of man-hours. As per the latest figures with me there are only 15 Registrars. How exactly will they tackle 135,874 oppositions while also granting trademark registrations on the side.
In addition, the Trade Mark Registry also has the responsibility to hear applications under Section 57 for rectification of the trademarks register. This includes the power to cancel registered trademarks. There are around 878 applications under this section pending before the Registry. Please note that even the IPAB has the power to dispose such applications. Like the petitions under Section 21, these petitions also take up considerable man-hours since hearings have to necessarily be conducted by a Registrar.
The disposal rate of oppositions has been directly proportional to the strength of the trademarks registry. For example in the year 2009-10 when the trademarks registry was working at a mere 17% of its total strength, the number of oppositions disposed plunged to a mere 983 from 4703 for the previous year.
C. Recordal of assignments in the Register: Apart from oppositions and rectifications and of course examination, the Patents Office and the Trade Marks Registry also have important miscellaneous functions such as recording the transfer of ownership in patents and trademarks through licensing and assignment agreements.
Recording such transactions in the patents and trademarks registers is critical not only from the point of greater transparency but also from the viewpoint of business transactions. In certain cases the assignee of a trademark or patent cannot himself sue for infringement until such assignment is recorded in the register. Also trademarks are being used increasingly as collateral with banks for the purpose of raising loans and working capital and it is absolutely pivotal for such businesses to have a timely recordal of their assignment deeds in the register without which banks are apparently not prepared to grant loans.
According to the RTI Reply, the Trademark Registry has a pendency of over 37,659 applications under Section 40 of the Trade Marks Act while the Patent Office has a more manageable 1,127 applications pending before the Registry.
D. The future challenge: The main reason for these huge backlogs at the Patent Office and the Trademark Registry is the crippling lack of staff. I had blogged about these shortages over here. As per the last RTI reply from the DIPP, the Trade Marks Registry was working at a strength of a mere 40 examiners and 15 registrars against a sanctioned strength of 86 examiners and 36 registrars. Even if the Trade Marks Registry were to be functioning at its sanctioned strength, it would still be doubtful whether they would be able to tackle the backlog.
The situation at the Patent Office is slightly better given that they have recently recruited at least 248 patent examiners. However of these 248, only 185 have been officially notified on the Patent Office website. Where have the remaining 63 patent examiners gone? However, even without these 63 patent examiners, I think the patent office is much better equipped to handle the increasing pile of patent examinations and oppositions, once these examiners are trained and the existing examiners are promoted to the post of Controllers.
The biggest challenge therefore for the new CGPDTM Chaitanya Prasad will be to convince the DIPP to drastically increase the strength of the trademark registry beyond the current levels.
Apart from increasing the strength the CGPDTM must seriously think of convincing the DIPP to amend the Act to transfer post-grant oppositions of patents and rectifications of trademarks to only the IPAB which already has the power to handle both types of proceedings. It simply makes no sense to vest the same powers in two different institutions. Just transfer everything to the IPAB and upgrade the IPAB with more benches to hear such matters. The Patent Office and Trade Marks Registry should focus exclusively on the administrative process of granting patents and trademarks rather than judicial functions such as post-grant oppositions and rectification of trademarks.
Tuesday, May 22, 2012
Earlier today, the Lok Sabha on the last day of the current budget session, unanimously voted in support of the Copyright (Amendment) Bill, 2012, which has been pending in Parliament for the last two years, with overwhelming support from members across the political spectrum. Minister Sibal was also commended by all the speakers for the amendments being brought in by the Bill. The Bill had been passed by the Rajya Sabha on 17th of May, 2012. We had blogged about it over here. Today's debates can be accessed over here, here and here. Please note that these are the uncorrected versions of the debate. Minister’s Sibal’s speech introducing the Bill on the floor of the House can be accessed over here.
The Bill was originally not listed for voting in revised ‘list of business’ but in the supplementary to the list of business. Given the last minute listing of the Bill, it appears that Minister Sibal was determined to have this bill passed in this session itself. Normally such last minute additions to the ‘list of business’ have great potential to elicit opposition from the opposition. However in this particular case, the Leader of Opposition Ms. Sushma Swaraj herself commended the Speaker for accelerating the passage of this very important legislation.
|Sushma Swaraj. Image from here|
Ms. Swaraj who spoke for a good twenty minutes, delivered a speech which was as passionate, if not more, than Javed Akhtar’s speech in the Rajya Sabha. Leaving aside the legalese and nuances of the Bill Ms. Swaraj narrated how she had heard stories of great song-writers from the sixties and seventies dying in penury and how leading lights of the creative community such as Javed Akhtar & Vishal Bharadwaj had urged her to support the rights of the creative community in the Bill. While I’m sure that I’m losing some of her speech in translation, I think her most emphatic statement was when she stated that a society was judged by how it treated its artists and musicians and how Indian composers and song-writers have suffered great injustice and that the only way to offer some redemption in these circumstances was to ensure passage of the Bill. Her speech can be viewed on Youtube over here.
Ms. Swaraj’s speech was followed by Mr. Shashi Tharoor, an author of some repute himself who in his free time also authors some rather brilliant tweets such as the one where he had to fly cattle class in deference to ‘our holy cows’.
Other speakers included Sharad Yadav, Mr. Shailendra Kumar, Mr. Anup Kumar Saha.
|Minister Sibal. Image from here.|
Mr. Saha who is a CPI(M) MP from West Bengal informed the House that the Minister had very ‘cleverly’ dropped the parallel imports clause to protect the interests of publishers and demanded that parallel imports be allowed.
The amendments will now have to be officially notified into law by the Government of India after which the Copyright (Amendment) Bill, 2012 will have the force of law.
While I am almost certain that these amendments will be challenged in Courts by the next month on the grounds of constitutionality, I would think that tonight should be a night of celebration for all those who have toiled hard to ensure the smooth passage of the Bill.
The decision in the long standing dispute over the FT trademark was finally decided by the IPAB last month. The case was an amalgamation of five related applications. The first application for removal of the FT mark was the main one since it encompassed issues raised in the other applications.
The IPAB ordered the removal of Financial Times Limited’s (FTL) mark from the register as it was not able to prove use from 1948. However it allowed FTL’s rectification application against the mark, ‘Financial Times’ registered by Times Publishing House Ltd. (TPHL).
Our previous posts on the case can be found here and here. For a recap on the facts of the case please see here and here. The entire IPAB judgment can be found here.
This was an application filed by TPHL under the old act i.e. the Trade and Merchandise Marks Act, 1958. S.56 (equivalent provision is S.57 in the new Act) of the Act provides for cancellation of mark on the ground of any contravention or failure to observe the conditions entered on the register. S.56(2) gives to the rectifying authority, a wide area of discretion to check the wrong entries made without sufficient cause or an error or defect in the entry. The High Court was the rectifying authority earlier, under the new Act it is the IPAB.
The two main issues were use of the mark in India and applicability of the Press and Registration of Books Act, 1867.
I. Descriptive and Use of Mark in India
- TPHL sought rectification on the grounds that the mark was descriptive and unless there is evidence of distinctiveness, the mark must be removed from the register. Evidence of distinctiveness should be on the basis of use of the mark in India. Such use should be genuine, commercial use and not intermittent or sporadic use. If it is not used in India that would be a valid ground for removal from the Indian register. FT has only been able to show a circulation of 350-500 copies in India which is insignificant.
- The newspaper industry earned revenue mainly through advertisements and not by circulation. Financial Times Limited’s (FTL) low sales in India coupled with lack of evidence regarding advertisements for Indian goods show that the quantum of sales did not amount to use in India.
- FTL has not been able to establish trans-border reputation in India, proof of trans-border reputation by itself will not dispense with the requirement of use of the mark in India. The fact that there is an exclusive clientele of readers cannot mean that the mark was used in India.
- The syndication agreement entered into with FTL was only to indicate source of the syndicated articles for publication and does not prove use of the mark.
- The grant of registration is not merely a right given to the applicant but a right taken away from the rest of the world, therefore the decision regarding validity should be tested by the strict rule of evidence. Counsel referred to Chandra Bhan v . Arjundas AIR  Cal 280 where it was held that the evidence of distinctiveness and evidence required must place the matter beyond reasonable doubt and stronger evidence is requires than in a passing off case since registration asserts a title against the rest of the world and requires consideration of future as well as present circumstances.
- Mere use of mark will not prove distinctiveness. The title should be capable of being associated with a particular source to achieve that otherwise it is likely to lead to confusion. Hence the sale of a few copies of the newspaper in India was not enough to prove distinctiveness.
- TPHL could not deny FTL’s Indian presence and territorial reputation as it was itself a FTL subscriber and had entered into syndication agreements with FTL. It had actively pursued commercial arrangements with FTL.
- TPHL cannot allege that the mark is only descriptive and unless distinctiveness is proved the mark must be removed from the register since they have themselves applied for registration of the same mark.
- The newspaper had existed for 124 years and enjoyed a formidable reputation. The extent of trans-border reputation would amount to distinctiveness. The trans-border reputation was supported by its use.
- The use of the newspaper cannot be determined by quantity alone, the quality, price and target audience must also be taken into consideration.
- Counsel cited the Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Ors. [MANU/TN/0526/1995] which in his opinion was identical to the present case. In that case the HC held that though at one time the view was that unless a business is carried on at a particular place one cannot rely on reputation or goodwill this view has changed. Just because a company’s goods are not sold in the open market does not mean that their goods cannot have acquired reputation in India.
The court accepted FTL’s evidence of a subscribers list, proof of ‘A Financial Times Conference” organised in 1981 and the syndicated agreement with TPHL. On the basis of this evidence it held that FTL had proved trans-border reputation and its intention to enter India. It held that the mark had become distinctive of FTL. Quality was more important than quantity, the newspaper was meant for a specific target audience. Therefore the minimal number of newspapers sent to India was not an issue.
However, it was held that there was no evidence to suggest use from 1948. TPHL’s application was removal of the mark was therefore allowed.
II. Press and Registration of Books Act, 1867 (PRB)
FTL has not complied with the provisions of the PRB which regulates the publication of a newspaper in India and therefore is not entitled to have the mark registered.
The Act was not applicable in this case. The PRB Act applies only to newspapers printed and published in India and circulation is not the same as printing and publication. The Act does not cover circulation of newspapers.
The PRB Act does not apply in the present case. S.6 of the PRB bars adoption of a title similar to an existing title and to that extent the PRB is applicable. When FTL applied for this mark, there was no other newspaper being published under the same title so there is no violation of the PRB Act. FTL only circulates their paper in India, once they start printing or publishing their paper they will have to comply with the law.
The Trade Mark Registrar would transgress his jurisdiction if he embarks on an examination as to whether every newspaper owner who seeks registration of his mark has complied with the provisions of the PRB Act.
On the second application, for rectification filed by FTL against their mark, ‘Financial Times’ registered by TPHL, the IPAB ordered removal of the mark from the register. It held that since TPHL and FTL were in the same business TPHL would have been aware of the existence of FTL and its circulation in India. TPHL was not able to prove distinctive use of the mark, the circulation figures cannot be accepted as evidence in furtherance of distinctive use since TPHL’s Financial Times was circulated as a complimentary copy with Economic Times, and therefore their version of the Financial Times had not established any reputation on its own.
It’s 1-1 to both parties after this case, with both of them having applications decided in favour and against them. It remains to be seen whether this will be the last of the battle or if another appeal awaits...
Monday, May 21, 2012
SpicyIP Tidbits: The text and video of the Rajya Sabha debates on the Copyright (Amendment) Bill, 2010
The text of the Rajya Sabha debates discussing the Copyright (Amendment) Bill, 2010 are now available on the website of the Rajya Sabha. These debates, which went on for almost three hours, can be accessed over here, here and here.
Apart from the text of the debate available on the website of the Rajya Sabha, you can also see the recorded broadcast of Javed Akhtar’s and Kapil Sibal’s speech on Youtube over here and here. I would definitely recommend a viewing of Akhtar’s passionate, charismatic speech which captivated MPs across party lines. Not bad for his maiden speech in Parliament, right? Youtube also has the 'post-debate' analysis on Rajya Sabha TV by Neel Mason, a leading IP lawyer and Mr. Jagdish Sagar a former bureaucrat and author of the 1994 amendments, now a practising lawyer. That video can be accessed over here.
In light of the recent debate on the efficacy of ‘nominated members’ in the Rajya Sabha, I think Akhtar’s effective lobbying for the Bill is a prime example of the wisdom and intent of having nominated eminent artists, sportsmen, jurists and scientists as members of the Rajya Sabha.
Sunday, May 20, 2012
As I wait for the Central Public Information Officer at CSIR, to send me details of the royalties earned through licensing of CSIR’s patents, I thought that it would be interesting to share with our readers some of my research into CSIR’s latest bid to commercialize its patents and public funded research – CSIR Tech Pvt. Ltd.
A. First a bit of history: CSIR Tech Pvt. Ltd. is not the first govt. venture aimed at commercializing public funded research. As of today, there exist at least three government companies, which I am aware of, in the same line of business. The first and oldest is the National Research & Development Corporation (NRDC) setup in 1953 “to develop, promote and transfer of technologies emanating from various national R& D institutions.” The second government company, NALTECH Pvt. Ltd. was setup to act as the “business front” of the National Aeronautics Laboratory (NAL) with “the mandate to Commercialize and Market the technologies developed from time to time by NAL and assist NAL in every possible and conceivable manner to make use of the technologies developed.” The third government company is the Entrepreneur Development Centre Ltd. (EDC), a not-for-profit company incorporated in October, 2006, by the National Chemical Laboratory (NCL), one of the constituent labs of CSIR. EDC operates under the trading name of ‘Venture Centre’. EDC was setup with the mandate of not only commercializing NCL’s research but also providing incubator facilities to start-ups.
Of the three companies above, EDC appears to be the most business-savvy, at least according to its website which is quite informative about all its activities. The NRDC and NALTECH websites appear to be quite ancient.
CSIR Tech Pvt. Ltd. is therefore the fourth government bid to commercialize public funded research. Before discussing the current state of affairs at CSIR Tech. Pvt. Ltd. it is necessary to delve into the very controversial history of CSIR Tech.
B. The Ayyadurai-CSIR controversy: In the latter half of 2009, a string of stories appeared in several newspapers regarding the summary dismissal from CSIR of Dr. Shiva Ayyadurai, recently recruited MIT professor. These stories appeared in the Mint, the New York Times and the science weekly, Nature. The controversy was also the subject of several lively debates on the Nanopolitan, a personal blog maintained by T.A. Abinandanan, a scientist at IISc.
|Dr. Shiva Ayyadurai. Image from here|
The story goes that Ayyadurai, an American scientist of Indian origin, with degrees from MIT and Cambridge was supposedly invited to join CSIR under its STIO program i.e. Scientist & Technologist of Indian Origin. The STIO program sought to bring back to India, scientists of Indian origin from top foreign institutes in a bid to rejuvenate Indian science. Ayyadurai was one of the first appointments under this program. According to Ayyadurai’s version of the story, the DG of CSIR – Dr. Samir Brahmachari himself requested Ayyadurai to head CSIR-Tech, a new venture aimed at commercializing patents. Reportedly Ayyadurai was also promised a free hand in terms of management and funding required to get CSIR-Tech operational. Ayyadurai claims to have been recruited for the job because he had considerable success in setting up such ventures in the U.S. and it was hoped that he could replicate his success in India. As per Ayyadurai’s version, Dr. Brahmachari proceeded to appoint Ayyadurai, on June 9th, 2009, not through an official contract but through a hand-written note! It is not quite clear why he was appointed through a 'hand-written' note, instead of following set protocols under government rules.
Once appointed, Ayyadurai set about his task, along with another scientist of Indian origin - Dr. Deepak Sardana, by conducting several rounds of interviews with CSIR scientists on the challenges faced by them in conducting research and also getting that research commercialized. The end product of that three month effort was a 47 page report titled – “CSIR-Tech: Path Forward”.
The report discussed amongst other things, the history of ventures to commercialize public funded research in India, the possible structure of CSIR-Tech, various strategies to create spin-offs to commercialize CSIR technologies and lastly, the controversial chapter 7 which outlined the challenges within CSIR. In this chapter the report made its most serious allegations against CSIR’s top brass. These included allegations of absolute arbitrariness, zero-tolerance towards dissent and lastly a culture of sycophancy at the highest levels of CSIR.
|Dr. P.M.Bhargava (Image from here)|
This report was sent out to the thousands of scientists who work at CSIR on the 19th of October, 2009 and a day later Ayyadurai and Sardana were stripped of their access to CSIR email and internet systems, forbidden from interacting with CSIR staff and their offer of employment withdrawn. A few days later Ayyadurai sent a letter to the Prime Minister, who is the President of CSIR, complaining about his dismissal. Ayyadurai was backed by Dr. P.M. Bhargava, the founder of the prestigious Centre for Cellular & Molecular Biology (CCMB) and widely acknowledged as one of the most respected Indian scientists, well versed with the internal workings of CSIR. On November 19th, 2009 Ayyadurai submitted his resignation to the PM putting an end to what must have been one of the most controversial episodes in CSIR’s history.
CSIR’s DG offered different reasons to different reporters on why Ayyadurai’s services were terminated. In an interview to Nature, CSIR’s DG claims that the job offer to Ayyadurai had to be withdrawn because he had demanded unreasonable compensation. However in an interview to Mint, the DG reportedly stated that Ayyadurai’s services were terminated because he had violated some law which forbade using CSIR’s internal email systems to spread ‘annoying’ or ‘slanderous’ messages and that Chapter 7 of the report violated this law thereby necessitating the termination of his services for ‘rule-breaking’. The interview with the New York Times turned into a complete PR disaster. Apparently not only did the CSIR-DG turn up two hours late for the interview but he also supposedly threatened to complain to the reporter’s bosses if she continued to pursue the story.
C. The Report & the letters to the PMO: A copy of Ayyadurai’s Report, “CSIR Tech: Path Forward”, is available on the Freedomof Science blog which appears to be run by some anonymous person, although it really doesn’t take much to guess the person responsible for the same.
I’m normally suspicious of anonymous blogs and therefore applied to the Prime Minister’s Office for a copy of the following documents and let me add that the RTI Officers at the PMO are some of the most efficient RTI officers:
(i) The report prepared by Ayyadurai & Sardana; (available over here)
(ii) The letter written by Ayyadurai to the Prime Minister; (available over here)
(iii) The letter written by Dr. Bhargava to the Prime Minister in support of Ayyadurai (available over here);
(iv) The resignation letter from Ayyadurai addressed to the PM (available over here)
In his letter to the PM, Ayyadurai, ironically, enough complains that “This extreme response of CSIR leadership unfortunately serves to reinforce the Challenges that were identified in Chapter 7”.
Dr. Bhargava in his letter informs the PM “I have gone through Dr. Ayyadurai’s report (CSIR-Tech: Path Forward) and find it to be excellent. In this report he compliments the CSIR on its real accomplishments and suggests how they can be taken forward, but he has also been extremely critical of the functioning of the CSIR including its headquarters and its Director General. I have known CSIR since 1950 and believe all his criticisms are justified”.
Ayyadurai’s letter was forwarded to the DG-CSIR with a request for comments at the earliest. (note available over here). The paper trail from the PMO ends at this point.
|Dr. Vijay Kelkar (Image from here)|
D. The current status of CSIR Pvt. Tech: Almost a year ago, on April 29th, 2011 the Council for Scientific & Industrial Research (CSIR) finally incorporated under the Companies Act, 1956 a new corporate entity by the name CSIR Tech Pvt. Ltd.
According to its website “CSIR-Tech is a company that aims to work closely with CSIR (India) laboratories to commercialize CSIR technologies and intellectual property primarily by identifying suitable spin-out opportunities, developing them further and then spinning them out as start-up enterprises. CSIR-Tech aims to leverage private investments and entrepreneurial energy to aggressively pursue technology commercialization and entrepreneurship.”
Almost a year after its incorporation, CSIR-Tech has no employees (according to a RTI reply from CSIR available over here) and the only staff at CSIR appear to be the Board of Directors consisting of Dr. Vijay Kelkar (Chairman of the Board), Mohandas Pai, Dr. Saurabh Srivastava, Dr. S. Sivaram, Mr. Luis Miranda all of whom are reportedly working pro bono. Contrast this to the Indian head of IV who gets paid Rs. 1.65 crores.
It is soon going to be almost 3 years since the Ayyadurai controversy and CSIR-Tech continues to exist only on paper with no real action taking place on the ground, at least according to its website.
|Image from here.|
In response to one of my previous posts on the TKDL project, I received some queries on the possible cost of the TKDL project. Well, predictably, I sent in a RTI query to CSIR for the figures. The response from CSIR can be accessed over here.
As per CSIR, from 2001-02 until March, 2012 a sum of Rs. 15,96,72,589 (Rupees Fifteen crores, ninety six lakhs, seventy two thousand, five hundred and eighty nine). As per the exchange rates in the March, this would mean around US $ 3,053,630 (Three million dollars approx.). Of the total expenditure, a sum of Rs. 82,34,750 (Eighty two lakhs, thirty four thousand, seven hundred and fifty rupees) was on capital expenditure, while the remaining was towards recurring expenditure. I also asked for a list of employees along with their salaries. I was provided with a list of 80 employees, with the highest per month salary being Rs. 46,700 and the lowest salary being Rs. 11,700.
Unfortunately, I forgot to ask for the rank or role of each of the employees so I’m not really sure what those 80 employees are doing at TKDL. I’m guessing that at least some of them are translators responsible for translating the various texts into English and other foreign languages.
I filed another RTI asking TKDL for the number of search reports that they sent out to the EPO and the IPO in pursuance of the access agreements signed with both organizations. CSIR replied informing me that they were not required to submit to the IPO or EPO, any search reports in pursuance of the access agreements but that they did file suo moto representations before the EPO under Art. 115 of the EPC Convention and before the IPO under S. 25(1) of the Indian Patents Act, 1970. Despite knowing exactly what I was asking for they didn’t provide me with the number of such interventions filed by the TKDL, instead they informed me that they would provide such information if I asked for it. Well if they knew what I was asking for, why didn’t they just provide it instead of asking me to apply once again? That response can be read over here.
Having said that, I must give credit where it is due. TKDL has just recently filed two pre-grant oppositions against two patent applications by Laila Nutraceuticals which I had pointed out in a post last month. The US and EU counterparts of these applications were successfully opposed/modified by the TKDL in those jurisdictions. Last month however there were no pre-grant oppositions filed at the time when I had blogged about these applications. I hope TKDL scores similar victories in both these cases before the IPO and that the same are reported on the website of the TKDL. Interestingly, the third patent application that I had written about in the same post, the one filed by Avesthagen, was granted by the IPO (i..e. published under S. 43(2) on the 27th of April, 2012) within seventeen days of my blogging about how the exact corresponding patent application in the EPO was abandoned on the basis of TKDL evidence. It remains to be seen whether TKDL will file a post-grant opposition against this particular application. It may also be noted that the letter granting the patent has not yet been loaded on IPAIRS. Also there is just a three months gap between the patent applicant replying to the examination report and the grant of the patent certificate and the publishing of the patent in the patent journal. That’s pretty quick in my opinion.
Getting back to the TKDL, I think its true test is going to be in opposing patents filed by the government bodies such as the Central Council for Research in Unani Medicine and the Central Council for Research in Ayurveda & Siddha. In several of the first examination reports for these patents applications, the Examiners have raised the objection of Section 3(p) i.e. traditional knowledge is not patentable subject matter. The Examiners do not however refer to the TKDL. I hope the staff at TKDL take cognizance of these applications and file pre-grant oppositions where necessary.
To conclude, I believe that TKDL’s true potential and true value lies in raising the standard of scrutiny of Indian patent applications rather than the patent applications in the EPO or the USPTO. My grouse so far with TKDL was the lack of any victories before the IPO because of the lack of focus on the IPO. For some reason TKDL had become a project catering only to foreign patent offices. The numbers of TK-related patent applications being filed in India are simply enormous and I’m confident that with the right focus the TKDL will be successful in blocking these dubious applications and raising the quality of patent grants in India.
Friday, May 18, 2012
For the last couple of months, I've been at the receiving end of several emails and phone calls that ask: did you really say that on your blog. How could you? My short terse response is: But it wasn't me! Please read the post again and the name of the author carefully. Pat comes the reply: but isn't this your blog?
Well, I own the domain and the website and will naturally take the fall for defamatory statements and the like. But please do not ascribe authorship to me, unless the post has been specifically authored by me. We're really a bunch of people with very different ideologies and takes on life and more importantly, on IP. So you'll see very different perspectives being reflected on the blog...and often times conflicting opinions from our bloggers on the very same issue. Perhaps the only common ground we share is our love for transparency and for a good debate on IP issues.
If at all anything, I cherish this wide diversity of views and think that it adds a lot of vibrancy to the discussion. We don't have a culture of censoring posts by our bloggers, unless they specifically violate a law of some kind or are completely untethered from any rational nexus with know facts or the law/jurisprudence.
Very often, many of our posts on the blog have come at the cost of friendships and alliances, but that is a cost we pay in our bid to foster transparency and enhance the discussion around IP issues. As I mentioned to an erstwhile friend who reacted to a post that was critical of his organisation (again the post was authored by a co-blogger and not by me), if you threaten to sever our friendship in a bid to quell free speech and the right to a fair discussion, it wasn't worth it in the first place. And we parted ways.
So please help us continue this culture of a free and fair discussion, without ascribing authorship in all cases to me or someone else on the blog. We have a space for comments and value informed comments and discussion. If you've got an issue with any of the posts, please feel free to take the author to task in the comments section (within the bounds of civility of course). However, if you think the statement made by the concerned blogger is defamatory or completely untenable (legally or otherwise) or otherwise flouts a law or regulation, please write to me.
We would also welcome as many of you to please help enrich the discussion by contributing guest posts. So long as you make reasonably sound arguments in reasonably sound English, we're more than happy to carry it. So please shy away from shyness and chip in with your perspectives and views on IP issues.
Thank you for understanding and helping us maintain this valuable diversity on the blog.
Dear Mr. Sibal,
It is unfortunate that in rejecting the motion to annul the Intermediary Guidelines, 2011, for reasons I can only assume relate to narrow political gains despite the loss of individual rights, you have also effectively shot down the opportunity to fix one of the many holes in the current copyright system in India.
When you stated in Parliament today that Rule 3(2) of the Guidelines, which prescribes 'due diligence' requirements for internet intermediaries, originates from Section 66A of the Information Technology Act, 2000, thus making them valid, you were either misinformed or just plain lying. The official gazette notification, available at the Ministry of Information & Technology website, reads as follows:
"— In exercise of the powers conferred by clause (zg) of subsection (2) of section 87 read with sub-section (2) of section 79 of the Information Technology Act, 2000 (21 of 2000), the Central Government hereby makes the following rules, namely.-
1. Short title and commencement — (1) These rules may be called the Information Technology (Intermediaries guidelines) Rules, 2011."
Section 66A itself contains several words that are problematic (for example - causing 'annoyance', 'inconvenience', 'danger' etc.) with no definition to specify the scope of these phrases, raising constitutional issues relating to permissible restrictions on free speech on the internet - but that isn't the point here.
The fact of the matter is that the Information Technology (Due diligence observed by Intermediaries Guidelines) Rules, 2011 not only prescribes due diligence requirements (essentially conditions that need to be met by intermediaries in order to qualify for immunities provided to internet intermediaries by S.79 of the IT Act) but also creates a notice and takedown system under Rule 3(4) of the Guidelines. This system applies irrespective of the type of content and the nature of the complaint involved - so it could be an allegation of defamation from Nirmal Baba, or it could be a copyright infringement claim from Saregama, but the rules that apply are the same.
Even if you were to argue on the lines of S.66A, I would like to point out that Reliance Communications and other ISP's have consistently relied on Section 79 of the IT Act to justify their actions of blocking entire websites on the grounds of preventing piracy. This, on the basis of highly dubious John Doe orders, that clearly bypass statutory mechanisms under law. They refer to notices and court orders under the Guidelines and the necessity to comply with these rules in order to claim immunity from liability. Thus, irrespective of what provision of law you believe the Rules flow from, the entities actually affected by the Rules, seem to be applying the Rules to themselves.
While the most compelling objections to the Rules as they currently stand stem from the fact that they are vague, unconstitutional, lack transparency, contain a presumption of illegality and permit government and private censorship, there are several issues concerning copyright law that also deserve mention:
Firstly, the period of 36-hours for the removal of content is simply impractical for certain websites to address copyright claims. 60 hours of video are uploaded to Youtube
everyday (edit: every minute)- that is an incredibly large number of videos, and therefore an incredibly large number of takedown notices to deal with on a daily basis. There needs to be greater discussion on the reasonable period for removal of content.
This brings me to the second issue - lack of differentiation between intermediaries in the Guidelines. As a lawyer yourself, you will understand that the underlying principle in the right to equality is that equals be treated equally and unequals, unequally. Youtube cannot be treated the same as Wikipedia, for reasons relating to differences in the nature and frequency of content being uploaded on each of these websites. Similarly, for reasons relating to scale of operations, a small start up with 6 employees working on a shoestring budget, should ideally not be held to the same standards as a large corporation like Youtube in honouring takedown requests especially when they relate to something relatively trivial like a single copyright claim.
Thirdly, you stated in Parliament today that the government need not interfere in such matters, and that the intermediary could work directly with the complainant after sending the notice. For such a system to be effective, there needs to be a complete and foolproof mechanism - a detailed takedown and notice system, with the rights and duties of each of the parties - the intermediary, the owner of copyrighted material and the third party user - being clearly stated. This does not exist under the current Rules and the rejection of this motion, thwarts the attempts already underway by the likes of the Centre for Internet and Society, to replace the discarded IT Rules with a more evolved and effective notice-counter notice-takedown mechanism.
Annulling the existing Intermediary Guidelines would have provided a fresh slate to work with, allowing the incorporation of the abovementioned details that the initial drafters seem to have complete ignored, but you dismissed it outright without considering these factors.
You have recently introduced some laudable changes to the Indian copyright regime, particularly to advance the rights of lyricists and composers and were successful in your efforts. I appreciate these effort greatly. However, there is a risk that the copyright related issues to the Intermediary Guidelines will be trivialised and side-stepped in the hullaballoo over political censorship.
That is not to say that censorship and copyright law are unrelated. I need hardly give you examples of situations where free speech and expression have been curtailed behind the veil of copyright laws. The recent protests in the United States of America relating to the Anti-counterfeiting Act (ACTA) and the Stop Online Piracy Act (SOPA), including a blackout by Wikipedia and supported by the likes of Google, should be more than sufficient. The movement developed from public recognition of the fact that inequitable, incomplete, vague and poorly thought out rules and legislations, provide the government with ample power to abuse the system and restrict access to information if it is in the government's interest to do so. And if they can, they will. And as a citizen of the globalised village we live in today, I know that what is true of the United States on an issue like this, could just as easily be true of India in the near future.
India seems to be headed towards the dark ages when it comes to internet censorship and our ministers, like yourself, seem unconcerned and unfazed. So let me speak a language that ministers understand - MONEY.
Think of the promising Indian start-ups in the technology field that are deterred by our unclear intermediary liability regime and resist from investing their time, effort and money in India. While you spend your time forcefully trying to design, build and market the world's cheapest tablet, there are several internet-based ideas, which given the right incubation and clarity on legal liability, could rake in millions in revenue, like no Aakash tablet can. I don't know how many Indian Youtubes and Vimeos could have been developed had the risk of legal liability been clarified. From my legal internships in firms and organisations advising internet start up companies, I can assure you that every due diligence report necessarily includes a point warning about the ambiguous and unfair intermediary liability regime in India, making specific references to the Intermediary Guidelines, 2011.
So to conclude, Mr. Sibal - don't fight for OUR right to freedom of speech and expression. Just fight for YOUR own right to collect taxes from internet intermediaries that invest in India on the basis of a clear and acceptable intermediary liability regime.