World IP Day: "Transparency" Letter to the Indian Patent Office

As the World Intellectual Property Day approaches (it falls on this coming Sunday, the 26th), we wanted to bring to your attention two things.

One is a petition that we wish to submit to the Patent Office, as is detailed in this post below. The other is a surprise that will be offered upto you only on the "D" day.

Petition for More Patent Information to be Made Public

As for the petition that is the subject matter of this post, it is addressed to Mr PH Kurian, the current Controller General of the Indian IP office. It calls for more transparency in the administration of the Indian patent system by interalia, providing more accessible patent information. As many of you may recollect, we made a similar petition to the government in 2007, which elicited a favourable response.

Pursuant to this letter and our intervention at the Patent Stakeholder's meeting in Kolkata, the government assured us that the database (with easy to access and searchable patent information such as patent specifications and patent office decisions) would be available by March 2009. Unfortunately, the database is yet to be complete. We are therefore requesting the government to indicate a broad time line now.

We are also calling for more patent related information to be made public --including all correspondence between patent applicant and the patent office (prosecution history), patet office circulars that impact patentability, "working" statements, claim amendments, section 8 information (on corresponding patent applications elsewhere).

We are also asking that the government be technology neutral whilst implementing the database and providing this information. As of now, it is near impossible to get any information out of the Indian patent office database, without using Internet Explorer. We are also requesting the government to organise a workshop to brainstorm and get the best ideas for effectively leveraging India's IT capabilities to build state of the art IT tools for the Indian patent office.

Importantly, we are also requesting that patent titles and patent abstract information be very clear and reflective of the inventive concept--and that patent applicants that deliberately obfuscate such information be taken to task.

Below is the draft letter that I propose sending, after eliciting signatures from those of you who are interested in requesting this additional information/change. It would be great if you could suggest any additions or amendments to this letter (or deletions also, if called for). In particular, do let me know about your experience accessing the Indian patent office website and database--and your recommendations for improvement in this regard. In one of the sections, I have outlined one of the errors in the document storage--let me know if oyu have more examples.

I hope to put this up for online signatures this coming Sunday..ie. the World IP Day. So if you have any comments, please try and send them (preferably using the "comment" function on this blog post) before Sunday. Thank you very much.

Letter to Mr PH Kurian, Controller General

To:

Mr PH Kurian
Controller General of Patents and Trademarks
Indian Patent Office


Dear Mr Kurian,

On behalf of several intellectual property stakeholders that are signatories to this letter, let me begin by wishing you a very happy world intellectual property day. I include all members of the public in this group of stakeholders, as the public are not only interested in technological progress and higher rates of innovation in India, but also keen to ensure that they do not pay monopoly prices for undeserved patents.

We chose this momentous day to express our gratitude for the wonderful initiatives you have undertaken, since you took office three months ago. Your initiatives have helped inject a fresh lease of life into an ailing institution and will no doubt go a long way towards making this office more transparent and more efficient.

We also chose this day to begin engaging with you as a community of IP stakeholders (including members of the public) that is interested in bettering the current Indian patent regime. May we therefore please put forward the below recommendations to you?

A PATENT DATABASE: PROMOTING “DISCLOSURE”

As you will appreciate, greater transparency in the functioning of the patent office can be brought about by ensuring that all patent related information is made available to the public in an easy to access, online, searchable format.

Such easy availability will also help in several other ways:

i) It is likely to encourage and strengthen the ‘disclosure” function of patents, encapsulated quite well in Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 141, 150-51 (1989: where the court held that “the patent system embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and non-obvious advances in technology in return for the exclusive right to practice the invention for a certain period of years”.

In other words, patents are a social contract where a 20 year monopoly is granted in return for scientific/technological information.

As you will appreciate, this information is meaningless if it is not easy to access.

ii) The ready availability of patent specifications and claims enables competitors and members of the public to assess as to whether or not the patentee has enabled all that he has claimed. As you are aware, the patents act requires that all the claims be supported by appropriate description of the invention in the text of the specification.

iii) Lastly, the disclosure and easy access to patent information will enable a robust use of the experimental use exception, an exception encapsulated in section 43 of the Indian Patents Act. Researchers that hope to experiment with such patented inventions cannot be expected to keep applying for physical copies from the patent office.

B OUR EARLIER LETTER TO THE GOVERNMENT

I enclose a letter we had sent on 3rd December 2007 to the Prime Minster’s office stressing the importance of a good searchable database with patent information including claims, specifications, and drawings.

In response to our letter, the government replied stating that that they were already digitizing patent records and that it would be complete soon. Please see our blog post for a copy of this response.

We raised the same issue at the Patent Stakeholders meeting in Kolkata and the government assured us then that digitization would be completed and the database ready by March 2009. Please see our blog post in this regard that documents this assurance.

We understand that the records in the database are still not complete. If possible, could you please indicate a likely date for such completion?

C TECHNOLOGICAL NEUTRALITY

While the current database that provides patent related information (complete specifications of applications and patent office decisions) are commendable, it is a pity that such databases can only be accessed through internet explorer, a proprietary browser belonging to Microsoft. We urge the government to be technology neutral here and permit those of us with other browsers such as Mozilla (an open source web browser) and Safari (a proprietary browser belonging to Apple Inc).

Enabling access through these other browsers will be relatively easy, given that the office can easily avail of IT expertise in a land that prides itself as an IT superpower. All one has to do in this regard is to implement the publicly available W3C standard.

To this end, we urge you to work closely with the highly talented software community in India to devise novel software enabled databases and other tools such as search engines that will enable easy access to patent information and make the functioning of the patent office much more efficient,.

Where possible, we urge you to opt for open source tools that are functionally the same or better than proprietary software, but costs far less.

Perhaps you could organize a workshop on this theme and invite all interested participants to generate ideas on this theme.

Could we also please request you to consider appointing a CTO (chief technology officer) for the Patent Office, who could be a one point contact person for all such IT issues?

D MORE DATABASE INFORMATION

As we mentioned earlier, we commend the government for making great strides in bringing us a comprehensive access to patent related information. The range of information that is now available via the government website is limited to:

• Published Applications
• Published Patent Grants
• Patent Office Decisions

Could we please request for the provision of more patent related information as below:

i) Prosecution/File History

Since the patents act only requires that communications between the controllers and the examiners remain confidential, all other information relating to a patent grant ought to be made public. In other words, every communication between the patentee and the patent office ought to be made public. This would enable easy access to the file history or prosecution history. In this regard, may we please request you to review the working of the PAIR system in the US and provide a similar level of public access to patent related information in India as well.

ii) Publishing all Amendments

We also urge that all amendments and changes to a patent application after the first publication of such application be published in a timely fashion. This would also help the public assess the working of this institution and ensure that issues of corruption are minimised.

We provide a detailed note assessing the various sections in this regard pertaining to what information can be made available.

iii) Publishing Updated Information

We request that the patent office website provide updated information each week of published applications, patent grants and patent office decisions. At the current moment, the webpage in question merely has a search box to help one identify specific information that one is looking for.

However, it does not tell any member of the public about which publications were published or granted recently. Therefore, may we please request that when new applications are published (every Friday)., this entire list be put up as a separate file on the website? And similarly with granted patents and opposition decisions. This will enable interested patent stakeholders and members of the public to have a view of the most recent patent related information.

iv) Publishing Patent Office Circulars (and Patent Manual)

The Dimminaco case wherein the Kolkata High Court ruled against a patent office decision denying patents to material that contained a living organism exposed the fact that very often, patentability decisions are taken on “secret internal circulars”. In this case, the circular in question was sent out by the CG to all patent office personnel suggesting that no patents ought to be granted to any invention containing living material. The Kolkata office rightly ruled that since there is no statutory bar on living matter patentability, the said circular is bad in law.

May we therefore request that any such internal circulars that are likely to affect the patentability or otherwise of an invention be published on the patent office database. If possible the use of such circulars should be minimized, as such aspects can be easily fitted within the patent office manual. In this regard, may we also request you to update us on the status of the patent office manual?

vi) Publishing “Working” Information and Section 8 Information

Unlike most other patent regime, our patents act insists that the patentee submit statements demonstrating the extent of “working” of the patented invention. Such information needs to be made public and ought to be published on the patent office website periodically.

The Act also insists that patent applicants submit timely information about the status of corresponding applications in other countries (section 8). This information also ought to be published periodically.

v) Statistical Information

We also kindly request you to provide patent related data (statistics) from time to time. We understand that such information is made available annually through annual reports—however, there is a considerable time lag between the issuance of such reports. May we therefore please request that the website include periodic updates of statistical information. Such information could include number of patent applications filed, oppositions filed, cases decided etc and could be published either monthly or quarterly.

E DE-MYSTIFYING PATENT TITLES AND ABSTRACT INFORMATION

It is rather unfortunate that a number of patentees deliberately mislead their competitors and the public with the titles of patent application and/or their abstracts. The patent office must insist that titles and the abstract reflect the essence of the inventive concept as best as possible. Objections on this count could be raised during the examination process (and in the FER and other like documents).

As you will appreciate, it is on the basis of titles and abstract information that one often decides to further investigate the application or grant in question with a view to challenging it or using the information for other purposes, such as “experimental use”. Therefore, the deliberate obfuscation of such valuable patent information is against the very essence of the patent system and what is stands for. In particular, it eviscerates the “disclosure” function of patents outlined earlier in this letter.

E CORRECTIONS IN EXISTING PATENT INFORMATION

While we appreciate the benefits of the current database, we are also constrained to bring to your attention certain errors, some of which we are listing below:

i) Some of the entries have been entered wrongly. Illustratively, when searching the term “Pfizer” in the category titled “Public Search for Patents (No. 1-80,000)”, the first string of results that pops up lists an application numbered 27125 as the first result and indicates that the applicant is “Chas Pfizer and Company”. However, when opening the document, one gets a completely different specification which is numbered 27126 and states the applicant to be “Tootal Broadhurst Lee Company Ltd”.

We know that it is not possible to have the perfect database on day one. However may we please request that the office provide patent stakeholders and members of the public with some online avenue to bring these errors to your notice, so that it may be rectified?

We note that the website lists out Mr SK Roy as the contact person in this regard, to whom emails have to be sent. It might be far more optimal if the patent office had an online forum where such mistakes could be highlighted and addressed. This way, other users could also be informed of these discrepancies and also know when such discrepancies are corrected.

F THE RIGHT TO INFORMATION (RTI)

We conclude with an extract from our letter to the Prime Minister dated 3rd December 2007:

“Creating such a database will also conform with the mandate under the Right to Information Act (RTA) to make such information available to the public. Most importantly, urgent action in this regard will serve as an excellent example of India leveraging its IT prowess to achieve a worthwhile public policy goal.”

We thank you for your consideration and are hopeful that you will be open to public input of this sort, aimed at helping improve the functioning of the Indian patent system.

Thanking you very much, we remain,

Most sincerely yours,

Intellectual Ventures comes to India and NO its not a 'Big Bad Patent Troll'

Intellectual Ventures (IV), an 'Invention Capital' company headquartered in Washington, has reportedly entered into an MoU with IIT-B to assist the latter in commercializing its inventions in the market place. As per a press release in regards the MoU, Intellectual Ventures “will both license IIT-B inventions accepted under this program and work on a number of possible commercialization strategies for them. Intellectual Ventures will pay IIT-B fees for such licensing and will also bear the patenting costs associated with these inventions.” Since the patents for the various inventions are licenced and not assigned to IV, IIT-B and its innovators stand a better chance at being recognized for their contribution in the fields of science and technology. 

As a business model, Intellectual Ventures although radical in a sense, it is also a natural evolution of the patent market place in the knowledge economy. IV describes itself as an 'Invention Capital' company vaguely similar to Venture Capitalists and Private Equity companies but different in the sense that unlike VCs and PEs who invest in existing ideas and companies , IV invests not only in existing inventions but also invests in creating its own inventions with an aim to monetize these patented inventions as stand alone assets through various licensing deals, joint ventures, spin-outs etc. So far it claims to have generated $1 Billion Dollars in revenues. In a sense IV can be described as a 'patent dealer' which fulfills multiple roles, while increasing liquidity of patents, by hedging the risk involved in commercializing an invention and ultimately connecting the inventor to the market place. The potential contribution of IV in increasing the market efficiency of patents could be immense. For example there are several inventors out there with great ideas and great inventions who are unable to meet the costs of patenting as also the associated costs and skills involved in monetizing their patents. In such a situation a company like Intellectual Ventures would not only hedge the risks of these inventors but also provide them with all the requisite technological and business inputs to map out an effective market strategy. Coming to think of it the business model followed by Intellectual Ventures is very similar to the business model followed by the National Innovation Foundation (NIF) which focuses exclusively on grassroot innovation. In fact even CSIR is mooting a similar business model which I have discussed later in this post. Although the NIF for its part has won itself laurels around the country, Intellectual Ventures has been condemned by some for following the very same business model.

For example the BS published Latha Jishnu's views on the MoU between Intellectual Ventures and IIT-B under the title Hope is a patent troll for IIT-Bombay. Although she does gives a fair account of the entire deal there are some objectionable passages in her column such as the following:

IV enjoys a fearsome reputation globally of being a patent troll, that is, a company which specialises in buying up patents and licensing it to others. As a result, it engages in a vast amount of litigation to pursue other companies that it believes might have incorporated any part of the IP in the patents that it owns without due permission. The patent troll’s main activity is seen as litigation and thus the reason for its unsavoury reputation.

For starters there is no denying the delicious irony in the decision to term IV as a 'patent troll', since the man – Peter Denkin – who coined the term patent troll, to replace the term 'patent extortionists' (after almost being sued for libel), is one of the co-founders of Intellectual Ventures! A patent troll is basically an entity which sues despite not working the patent in the market. Usually a patent troll does not even invent but instead sources the invention from the inventor. Some of the most famous cases of patent trolls are the Blackberry case where an IP holding company almost shut down RIM's Blackberry service because it violated a patent that the 'troll' held. Other biggies which were sued by 'trolls' were Microsoft. In each instance the troll extracted hefty compensation running into hundreds of millions of dollars.

My primary reasons for disagreeing with Ms. Jishnu passage are as follows:

1. IV has not been involved in any litigation so far and therefore there is no question of it enjoying a 'fearsome reputation globally of being a patent troll'. An internet search revealed no cases where IV was involved in any patent litigation. We even contacted IV to ascertain whether they had been involved in any litigation so far. They replied to us assuring us that as of now they are not involved in any patent-related litigation. Our contact person at IV however was honest enough to state that in case any of their patents were violated they would not hesitate to sue the party involved in the infringement if in case attempts at negotiating a licence failed. That's a fair enough proposition. Thus except for your standard anti-patents brigade nobody else is convinced that IV enjoys a 'fearsome reputation globally as a patent troll'.

2. Secondly, I would like to challenge this entire presumption that the activities of patent trolls, or as I like to call them 'sleeping inventors', are damaging, unethical, unnecessary and irresponsible. In his paper titled “The Myth of Patent Troll” James F. McDonough the Third argues, and very convincingly so, that patent trolls in fact increase the efficiency of the market place and in fact they're emergence is nothing but a natural evolution of the patent marketplace. The reason for his supporting 'patent trolls' is simple: not all inventors can afford to commercialize their inventions and in such a case they are entitled to sell it to a patent dealer who is better positioned to handle the associated risks. This dealer is then entitled to do as he pleases with the patent. There are several entities which may hold patents but do not practice them. There is nothing unethical about such a practice. For example CSIR owns about 3,000 patents but has a terrible record at actually monetizing these patents. The Mint infact recently reported that CSIR will create a company which will now be the sole owner of all the IP generated by CSIR. This company is then expected to expedite the process of monetizing these patents through licensing deals. There is no doubt that when push comes to shove this company will be required to sue any potential infringers although it does not actually work these patents. This company will fall within the definition of a patent troll but there is no denying that it is actually carrying out a very useful function in increasing the efficiency of CSIR's patents. Therefore the presumption that a patent must be worked by the patentee is wrong. Once this presumption is proved wrong it can be argued that there is no reason for this hostile approach towards patents.

In conclusion I disagree with some of the points made by Ms. Jishnu. One point on which I do agree with Ms. Jishnu is in regards the 'transparency' aspect. So far I have been unable to access a copy of the MoU between IIT-B and IV. Since IIT-B is a public institution and a recipient of hundreds of crores in subsidies, it can be presumed that it falls within the purview of the Right to Information Act and it would be extremely easy for one of us to procure a copy of the MoU. Given that it would be easy to source a copy under the RTI Act it would have probably boded well for IV to have publicized the terms of the MoU so that they could be publicly debated. This non-disclosure is most dis-appointing when viewed in the context of this paper, co-authored by genius Stanford Professor – Mark Lemely & Nathan Myhrvold, founder of IV, where it is argued that it must be made mandatory to publish the terms of patent licences so as to enable rationalizing the rates of royalties and transactions. The paper argues that such a move would enable both buyers and sellers to make decisions made on complete information, which is one of the pre-requisites for the success of the free-markets. It is unfortunate that Nathan Myhrvold has not implemented this policy in all transactions regarding his organization.

Nevertheless I'm sure we all wish Intellectual Ventures the best of luck in its Indian ventures and hopefully IV will help in unleashing the true potential of the Indian innovator who until now has had trouble going beyond the stage of patenting his invention.

The "Mashelkar Committee Report" on Pharma Patenting Resurfaces!

The Mashelkar Committee Report on pharmaceutical and micro-organism patents, a report that hogged headlines in 2007 for all the wrong reasons was resubmitted to the government recently.
The revised committee report reiterates the same conclusions as the earlier report submitted at the fag end of 2006, albeit with more strong reasoning to back up its conclusions.

In short, the Committee notes, and rightly so, that any attempt to exclude an entire class of inventions i.e. incremental pharmaceutical inventions would violate the mandate under Article 27 of TRIPS to grant patents to all inventions in all fields of technology.

For those interested, please see the patent office website, where this revised report is snugged away in a quiet corner titled "Revised Report of the Technical Expert Group on Patent Law Issues".

For those interested in this saga which captured national media attention in 2007, see these extensive posts on SpicyIP.

History of the Mashelkar Committee Report

Explaining the reasons behind the withdrawing of the earlier report and its current resubmission, the revised report states:

"The Report was submitted by the TEG (technical expert group) to the Government on 29 December 2006. It was subsequently noted that there were some ‘technical inaccuracies’ in the Report. The Chairman wrote a letter dated 19th February 2007 to seek Government’s approval to ‘’withdraw the Report, re-examine it and resubmit a Report, which meets with the requirements of the highest standards’’. The Government, vide D.O. Letter No.12/14/2005-IPR III on 7th of March 2007 accepted this request.

Subsequently, due to certain developments, the Chairman of the Committee expressed his desire to resign from the Chairmanship of the TEG vide letter dated 15th of March 2007. The Government, however, did not accept this request of resignation vide D.O. letter No.12/14/2—5-IPR II dated 1st May 2007 and requested the TEG to submit the Report incorporating the changes.

Further communications followed, and most recently, the same decision was communicated by the Government vide D.O. letter No.12/14/2005 – IPR III of 10th February 2009, and the TEG was requested to expedite and submit the Report at the earliest. Vide letter dated 9th March 2009, the Chairman, while respecting the decision by the Government, agreed to accept his responsibility as the Chairman again and to submit the Report. Accordingly, the Report, incorporating the changes, has been resubmitted."

Key Conclusions of Revised Report

The report concludes as below:

"The Technical Expert Group (TEG) concludes that it would not be TRIPS compliant to limit granting of patents for pharmaceutical substance to New Chemical Entities only, since it prima facie amounts to a “statutory exclusion of a field of technology”. However, every effort must be made to provide drugs at affordable prices to the people of India. Further, every effort should be made to prevent the grant of frivolous patents and ‘ever-greening’. Detailed Guidelines should be formulated and rigorously used by the Indian Patent Office for examining the patent applications in the pharmaceutical sector so that the remotest possibility of granting frivolous patents is eliminated."

Apart from the above, the main highlights of the technical expert group (TEG) are outlined right at the start of the report in a couple of paragraphs as below:

Article 27 of TRIPS

The Committee notes, and rightly so, that any attempt to exclude an entire class of inventions i.e. incremental pharmaceutical inventions would violate the mandate under Article 27 of TRIPS to grant patents to all inventions in all fields of technology. As extracted from the report:

"4.1. Article 27 of TRIPS, which deals explicitly with the issue of patentability, inter alia, states that ‘Member States may not exclude any field of technology from patentability as a whole and they may not discriminate as to the fields of technology, the place of innovation’ etc.

Reading this obligation in the light of the overall purpose of the Agreement, it appears that linking the grant of patents for pharmaceutical substances only to a new chemical entity or to a new medical entity may prima facie amount to ‘excluding a field of technology’, even when they satisfy the basic requirements of patentability’. In such a situation, TEG concludes that it is possible to hold the provision as being not TRIPS Compatible."

Doha Declaration and Article 7/8 of TRIPS

The Committee notes that neither the Doha Declaration on Public Health nor Articles 7 and 8 can detract from the above conclusion that an outright exclusion of incremental inventions from patentability would violate TRIPS. As extracted from the report:

"4.2. The TEG carefully examined the flexibilities allowed under the TRIPS Agreement to the member states (especially Articles 7 & 8) and also as a consequence of the Doha Declaration.

The detailed analysis and reassessing provided in the Report has led TEG to conclude that it is debatable as to whether national interest or the flexibility allowed under the Agreement to Member States would be accommodated by such ‘statutory exclusion’ of an entire class of inventions."

Preventing Evergreening

The report then goes on to reiterate that its point that including patents from non NCE's does not necessarily amount to "evergreeing" and that the patent office has now enough tools to prevent this.

"4.3. Every effort must be made to prevent the practice of ‘ever greening’ often used by some of the pharma companies to unreasonably extend the life of the patent by making claims based sometimes on ‘trivial’ changes to the original patented product. The Indian patent office has the full authority under law and practice to determine what is patentable and what would constitute only a trivial change with no significant additional improvements or inventive steps involving benefits. Such authority should be used to prevent ‘evergreening’, rather than to introduce an arguable concept in the light of 4.1 and 4.2 above of “statutory exclusion” of incremental innovations from the scope of patentability."

Encouraging Incremental Innovation

The TEG also stresses on the importance of using the patent stystem to incentivise more incremental innovation.

"4.4 The process of innovation is continuous and progressive leading to an ever extending chain of knowledge. Innovative incremental improvements based on existing knowledge and existing products is a ‘norm’ rather than an ‘exception’ in the process of innovation. Entirely new chemical structures with new mechanisms of action are a rarity rather than a rule. Therefore, “incremental innovations” involving new forms, analogs, etc. but which have significantly better safety and efficacy standards, need to be encouraged. What is important, however, is for the patent office to be vigilant about setting high standards of judging such innovations so that efforts on “evergreening” are scrupulously prevented.

Section 3(d) Examination

It was rather unfortunate that both Novartis as well as critics of the earlier report by the TEG misguided the public by stressing that the Mashelkar Committee had opined that section 3(d) violated TRIPS. I attempted to counter this false propaganda several times on this blog by noting that:

"...the Mashelkar Committee Report was not asked to review section 3(d) or in fact, any section under the current patents act. And in all fairness to the Committee, it did no such thing. It was asked to only review two prospective provisions that were sought to be introduced, but held back since the government apprehended that it wouldn’t comply with TRIPS. One of these prospective provisions relates to the controversial “New Chemical Entity” debate and asks:

“Whether it would be TRIPS compatible to limit the grant of patents for pharmaceutical substances to new chemical entities?”

Those of you familiar with pharmaceutical technology will appreciate that new chemical entities are very difficult to come by and in some ways are comparable with “pioneer” inventions in other technology areas. All the other inventions that follow might in some sense be “incremental” as they attempt to build on this pioneer invention/technology. Thus for example, a new cancer drug might be based on a patented “new chemical entity”. CIPLA comes up with a new form of this old drug that is much more effective—i.e. you have less side effects whilst taking the new form by CIPLA. Should CIPLA get a patent on this improvement or this incremental innovation? This is precisely what this referral addresses. If the grant of patents is limited to new chemical entities alone, then CIPLA does not get a patent, despite the fact that it has come up with a “new” and “non obvious” invention, that also has an “increased efficacy” under section 3(d). In fact, if such a prospective section limiting the grant of patents to “new chemical entities” were to be introduced in the law, section 3(d) would be rendered redundant i.e. even if the new form by CIPLA has increased efficacy, it would still not merit protection.

In short, the two issues (the NCE query which the Committee addressed AND the TRIPS compatibility of section 3(d)) are really separate ones and ought not to be conflated."

Thankfully the committee has made clear in its revised report that its report has nothing to do with section 3(d)! It notes:

"4.5 The TEG was not mandated to examine the TRIPS compatibility of Section 3(d) of the Indian Patents Act or any other existing provision in the same Act. Therefore, the committee has not engaged itself with these issues."

Patenting of Micro-organisms

In its earlier report, the committee concluded that excluding micro-organisms from patentability would contravene TRIPS. It reiterates the same conclusion in the revised report, albeit with better reasoning and better language this time.

IPI Report and the Alleged "Plagiarism"

In my report to the Mashelkar Committee, commissioned by the Intellectual Property Institute (IPI), I had concluded as below:

" Limiting the grant of patents to NCEs/NMEs and thereby excluding other categories of pharmaceutical inventions (the ‘proposed exclusion’) is likely to contravene the mandate under Article 27 of TRIPS to grant of patents to all ‘inventions’. Neither Articles 7 and 8 nor the Doha Declaration can be used to derogate from this specific mandate under Article 27.

2. The proposed exclusion amounts to an ‘unjustified differentially disadvantageous treatment’ of pharmaceutical inventions and is therefore likely to violate the ‘non discrimination’ mandate under Article 27.

3. If the aim of the proposed exclusion is to prevent a phenomenon loosely referred to as ‘ever-greening’, this can be done by a proper application of patentability criteria, as present in the current patent regime.

4. Lastly, it is important to distinguish the phenomenon of ‘ever-greening’ from what is commonly referred to as ‘incremental innovation’. While ‘ever-greening’ refers to an undue extension of a patent monopoly, achieved by executing trivial and insignificant changes to an already existing patented product, ‘incremental innovations’ are sequential developments that build on the original patented product and may be of tremendous value in a country like India."

While the Mashelkar Committee agreed with my conclusions above in its initial report, it did not provide much way of reasoning. I had noted in an earlier post that :

"What worried me, however, is that while it took me about 35 pages to come to the conclusion that keeping non NCEs or incremental pharmaceutical inventions outside the scope of patentability would contravene Article 27 of TRIPS, the Committee disposed of this issue in a couple of paragraphs."

The revised report does a lot more in terms of substantiating its conclusions.

Many critics who were keen on rubbishing the Mashelkar Committee report vehemently argued that the report plagiarised form my IPI report. Here again, I attempted to counter this false suggestion by noting that:

"I first deal with their charge of plagiarism, since I am the alleged “victim” here. They attempt to substantiate their claim of plagiarism by selectively quoting from my blog. They however omit the most critical part of my blog statement in this regard “To be fair to the Committee, they did include the crux of my submission in an Annex to their Report.”

In other words, the Committee did include my submission as an Annexure, as they did with every other submission (about 24 in all) that was made to them. It bears noting in this regard that the Committee received submissions from a variety of IP stakeholders including industry (Ranbaxy, Biocon, IPA, IDMA), civil society groups (ALF, MSF), law firms (Lex Orbis, K&S Partners), IP Associations (AIPPI) and even retired members of the judiciary (Justice Krishna Iyer). Those with the patience to read the entire report including the Annexures would have gathered that some of the Committee’s observations were borrowed from my report to them. This being so, qualifying their borrowing of some of my conclusions as “plagiarism” is incorrect."

Conclusion

The analysis of the Committee in the revised report remains similar to the old report, although there has been an attempt to strengthen the conclusions.

The revised report rightly concludes that any outright exclusion of an entire class of inventions (non NCE's) would violate Article 27 of TRIPS.

It also rightly notes that the current version of the Indian patents act, through section 3.d and other provisons provides a robust enough mechanism to help prevent evergreening.

If one takes stock of the huge number of patent office oppositions in the recent past that denied patent rights to many pharma patent application (many of them excluded under section 3.d), one will see the force of this logic. Some of these recent rejections are listed below:

1. Pfizer's Applications Claiming Caduet (rejected pursuant to a PreGrant Opposition filed by Torrent Pharma)

2. Novartis' application claiming the alpha crystalline form of imatinib mesylate (oppn filed by Sun Pharma and Okasa)

3. Glaxo's Application for Rosiglitazone Salt

4. Gilead's application for the Tamiflu drug (Oseltamavir): Pursuant to pre-grant oppn filed by Cipla. In particular, I would recommend our readers to this extremely well reasoned decision of Dr Kardam that goes into some 50 odd pages!

Most of these decisions can be found on the website of the Indian Patent Office. We had also blogged on some earlier decisions that denied patents to weak applications. See in particular this rejection of BI's patent over Nevirapine. For a more detailed post on the Nevirapine rejection, see here.

Anyone reading these decisions will appreciate that the standards under the Indian patent act are fairly rigorous and do not permit of frivolous patents. As to whether or not these standards are in fact being applied rigorously by the patent office is another issue altogether. Having said this, it is important to appreciate that any lapse in scrutiny by the patent office can always be offset through an effective deployment of the opposition machinery (which is perhaps the most potent machinery anywhere in the world) and/or a resort to courts and the specialised IP tribunal (IPAB) by way of appeal.

The "Kurian" Effect: Increased Efficiency at the Indian Patent Office

SpicyIP was greatly enthused when Mr PH Kurian was appointed as the first IAS officer to head the Indian patent office. We expressed the hope that:

"...Mr Kurian's appointment will usher in some fresh thinking at the Indian patent office. As many familiar with the Indian patent office are aware, fresh and innovative thinking is an absolute must for this office, which has hitherto been beset with several problems, including understaffing, lack of "specialised" examiners/controllers, sub optimal access to specialised patent databases, sub optimal training and mentorship, high rates of attrition and issues of "transparency", something that has been the focus of this blog and mainstream media as well. Needless to state, the recent spike in the number of applications pertaining to complex areas of technology such as pharma, biotech etc has only added to the pressure."

In part, our optimism at Mr Kurian's appointment was based on his past legacy, and most notably his stint as the industry secretary in Kerala.

Our optimism was offset by the caution sounded by others. Latha Jishnu noted in the Business Standard at:

"Is the appointment of an IAS man a good thing for the patent office which is clearly in need of an overhaul? But so is the vast machinery of the Government of India which has the very same babus at the senior level. Will this be yet another case of the IAS being allowed to spread its grasping tentacles further without any thought for the outcome? Some patent analysts are clearly delighted with the development merely because it marks a change, which they believe is for the better."

Given that Mr Kurian has been at the helm for a just under 3 months now (he assumed office on Jan 22, 2o09), what has been his legacy? Were we justified in our optimism? Or is too early to tell? We leave the better judgment to our readers, after bringing you an overview of some of the changes that this high energy bureaucrat who is not known to mince his words has brought about to the patent office machinery.

Circular Demanding Expeditious Disposal of Patent Oppositions

Within a month after he took charge, Mr Kurian issued a circular, asking that all pending opposition decisions be disposed of expeditiously. Apparently, in a number of opposition cases (both pre grant and post grant), the respective controllers had heard the cases several months (and perhaps years back) but had not yet issued their decisions.

Mr Kurian's circular mandated that all pending opposition decisions was to be cleared by the end of March 2009. The circular also stated that in future, all pre-grant decisions ought to be issued within a month of the final hearing by the Controller and all post grant decisions within 3 months of such final hearing. And that if necessary, hearing officers ought not to be allotted further cases until they cleared the cases that were already pending with them.

An order similar to the one relating to patent office "opposition" decisions was issued in the context of trademarks as well.

It's Raining Patent "Opposition" Decisions!

The flurry of recent opposition decisions that I had mentioned in the last post (dealing with the recent submission of the revised Mashelkar Committee Report) owes itself to this circular. I reproduce portions of that post below:

"If one takes stock of the huge number of patent office oppositions in the recent past that denied patent rights to many pharma patent application (many of them excluded under section 3.d), one will see the force of this logic. Some of these recent rejections are listed below:

1. Pfizer's Applications Claiming Caduet (rejected pursuant to a PreGrant Opposition filed by Torrent Pharma)

2. Novartis' application claiming the alpha crystalline form of imatinib mesylate (oppn filed by Sun Pharma and Okasa)

3. Glaxo's Application for Rosiglitazone Salt

4. Gilead's application for the Tamiflu drug (Oseltamavir): Pursuant to pre-grant oppn filed by Cipla. In particular, I would recommend our readers to this extremely well reasoned decision of Dr Kardam that goes into some 50 odd pages!"

Mihir will bring you a detailed post on the Gilead post grant opposition decision soon. Incidentally, in two articles (both available on SSRN: here and here), I had opined (along with Tahir Amin) that the patent covering the Oseltamavir composition was not likely to issue, since it was non obvious and likely to contravene section 3(d).

Also, in an earlier post, I opined that Pfizer's "Caduet" was an obvious combination (of Lipitor and Norvasc) and therefore not patentable.

Anyway, back to the "Shinkansen" like Mr Kurian. If only our courts could take a cue from him. The appellate hearings in the Tarceva patent case (between Roche and Cipla) concluded in September 2008. And yet, despite more than 7 months going by, the judges are yet to issue their decision! We are also yet to hear from Justice Bhat on the controversial drug linkage case (involving Bayer and Cipla) which has been pending for about 2 months now.

Circular Mandating Expeditious Publication of Patent Office Decisions

A few days ago, Mr Kurian was at it again. He issued a circular mandating that all applications that had matured for publication under section 11A of the Indian Patents Act ought to be published immediately. As many of you familiar with the working of the Indian patent regime know, every patent application ought to be published upon the expiry of 18 months from the application date or priority date, whichever is earlier. Under the rules as they stand now, the patent office personnel in charge of publication get about a months' time to publish the application after this 18 month period expires. Of course the applicant can even request an earlier publication date--but in any case, the date of publication cannot cross the 18 month limit outlined above.

National phase applications (in the context of the PCT) are a little tricky in this context, as the 18 month period may expire even before the application enters its national phase in India. Which obviously means that the application needs to be published immediately, after it enters India. However, do the rules stipulate any time line for this? Or would this only be subject to the one month rule that binds the patent office personnel above?

Apparently, in the Delhi patent office alone, there were thousands of applications that had matured for publication as early as 2005! This explains the strong tone in the circular (issued on 15 April, 2009) which ends with the ominous warning that any contravention of the said circular would be "viewed seriously".

Conclusion

Speed--thy name is indeed Kurian!

If he continues at this pace and with this formidable spirit, the Indian patent regime will come in for some serious overhaul--an overhaul that will increase its efficiency exponentially and make it comparable with the best in the world.

One can only hope that this man is given the leeway to push through the desired changes and that politicians (patents are an intensely political subject matter in India) do not play spoil sport.

To conclude, I take you back to the question that I posed earlier: were we justified in our initial enthusiasm and optimism at Mr Kurian's appointment? I certainly think so! But let's wait and watch what the future has in store for this bureaucrat and his mission to reform an agency that is increasingly coming under attack for its non transparent, corrupt and inefficient functioning.

Bollywood warned about Button remake

US media giants, Warner Bros, have warned Bollywood against any attempts at remaking one of their latest hits "The Curious Case of Benjamin Button" through a public notice in the Times of India newspaper and various Trade Magazines.

"Recent press reports have indicated that certain parties are in the process of producing a film in Hindi based upon the aforementioned film,"
A lawsuit will be slapped on anyone producing a film "either in English or Hindi or other language, having a similar script, screenplay or story line or character sketches or interplay of characters or sequence of events," the public notice said. This notice comes in the light of reports that a Hindi remake of the Hollywood hit are in the pipelines. Called “Action Replay', starring Akshay Kumar and Aishwarya Rai, the movie is about a man who ages in reverse, similar to “Benjamin Button” where Brad Pitt stars as a man who also ages in reverse.

This broad inclusion of potential infringements by Warner Bros represents a much more aggressive and pro-IP enforcement stance than has been seen so far with regards to a Bollywood industry where rip-offs and remakes abound in plenty (with a bit of song and dance strewn in for good measure).

Lawyer Chandel Lall told the AFP that it is becoming a concern since Bollywood is becoming a competing industry. As per TOI, UTV Motion Pictures CEO Siddharth Roy Kapur says "Many Hollywood studios themselves have plans for the Indian market. They're probably planning to remake some of their own films in India. So, they feel it is best to warn those who may cross the line.''

Last year, Warner Bros had also filed a copyright and trademark infringement case for the protection of their Harry Potter series of movies after “Hari Puttar: A Comedy of Terrors” was released. The case was subsequently dismissed though. However, there isn't much similarity between these two cases and the fact that Warner Bros have, in this case, issued a pre-emptive notice will also be considered in the event of a suit being filed. Of course, the success of the suit will depend on how exactly the Indian producers go about the movie, as copying of expression is what is not permitted, while copying of ideas is permitted.

Though there have been countless times of border line instances of copying of movies, if not outright lifting of plots/storyline/characters/script, there have been very few actual cases coming before the court. Even if it does come before the court, Warner Bros will have to prove that it is not just the idea which is being copied, but also the expression. The difficulty in this lies in the fact that an Indian remake of a western movie is bound to be “Indianised”, which automatically means a lot of the scenes, though possibly copied, will be heavily clothed in the Indian cultural requirements. It will be interesting to see how this new more aggresive stance of Hollywood affects its Indian counterpart, notorious for its remakes and rip-offs.

EU-India FTA Negotiations continue : Details... Unknown.

An agreement between the European Union and India slated to cover many areas including trade in goods and services, investment, intellectual property rights, competition policy, government procurement etc. Sounds promising? Except the details of the same remain largely unknown.

Begun in 2007, the EU-India rounds of negotiation to establish a Free Trade Agreement between the two, aims to have far reaching consequences in the way the trade is carried out. However, there have been several gaping holes in the proper execution of the same, the most obvious being the lack of transparency.

As the 6th round of negotiations began on March 17th in the Indian capital, it was obvious that groups likely to be affected by the FTA would no longer remain silent spectators. A peaceful protest in front of the office of the European Commission (EC) demanding an audience or at least attention to the issues brought forth before Trade bureaucrats from the EC and the Indian Commerce Ministry, led to police detention. This 3 day round of negotiation was to deliberate on issues ranging from services, manufacturing, trade facilitation which includes contentious issues such as agriculture, investment, fisheries, intellectual property, and government procurement.

It is no secret however, that the agreement will in fact affect several groups of people from the grassroot level right up to big leading industries. Agriculturally, there are worries have been expressed that “EU subsidies are kept out of the negotiations and this will allow agribusiness in EU to dump subsidized products such as dairy into the country.” However, closer home to SpicyIP, the Intellectual Property scenario does not seem to bode well either.

A number of reservations being made on the fact that the standard prescribed in this FTA is probably of a standard that is much stricter than that prescribed in the TRIPS. Furthermore, several groups also articulated the concern that there might be an undermining of the access to treatment, across the nation and other developing countries. With the widely recognised leader in generically manufactured drugs involved in a possible FTA that is stringently worded and following incidents that we have reported several times - the adverse impacts of stringent provisions on intellectual property rights are evident, and the worries are seemingly justified.

Free trade agreements have oft been opposed by groups in India, since a developing economy has unequal bargaining power and probably little to gain (and more to lose) from such an agreement. With worries of unemployment, falling demand of domestically produced products, and the lack of resources to compete with internationally produced products, worries are writ large in India as to the possible outcome of these negotiations. In addition to this worry, generic manufacturers that contribute greatly to the economy and aid in the access to medicines for treatment of various diseases could also be gravely affected by the materialization of this FTA.

To understand what the scope of the agreement is as well as its consequences the Forum on FTAs (the Forum on FTAs, a platform of people’s organisations that organized the protest) had made a public statement and sent a letter addressed to the Head of Delegation, Delegation of the European Commission to India, Bhutan and Nepal and the Minister for Commerce (India), requesting the details of the rounds of negotiation (available here). However, the response to the same was that the texts could not be made available. This was described as ‘disappointing but not surprising’. However the endeavour to get such documents in the public domain cannot stop.

Especially with the current economic scenario globally, an agreement such as this, that is likely to affect several groups of people across the board in different ways, the need for transparency cannot be emphasized enough. And to achieve the same, movements such as those organized by the Forum on FTAs are laudable and must be encouraged.

Software Copyright Raids: Striking an Optimal Balance

A. Introduction

In two previous posts, we discussed the issue of software raids from two different perspectives. One from the point of view of a raided party, to whom such raids are often inequitable, and the other from the point of a view of an IP enforcer, to whom speedy enforcement is absolutely essential for protecting their valuable IP rights.

In a previous post, I promised that we we would run a future post "synthesizing some of the more recent court orders ...to ask if the orders draw an optimal balance between the need to protect IP owners against infringement, whilst at the same time safeguarding the interests of a raided party."

I am still in the process of collecting these orders, but wanted to reflect on a very important Delhi High Court order that attempts to lay down some guidelines in this regard.

In Autodesk Inc. and Anr. v. A.V.T. Shankardass and Anr {2008 (37) PTC 581 (Del.)}, Autodesk appealed against the order of the Single Judge dismissing their prayer for the appointment of a Local Commissioner.

The single judge (if I'm not mistaken, it was Justice Ravinder Bhat) had refused to appoint a local commissioner on the ground that the only evidence before him of any alleged infringement by the defendant was the affidavit of an investigator hired by the Plaintiffs. The said investigator had not even visited the premises of the defendant, but had merely based his testimony of infringement on a telephone call with an executive from the defendant firm. The single judge therefore found no evidence of a "prima facie case" of software infringement and refused to appoint a commissioner.

The appellate court (Division bench at the Delhi High Court) overruled the single judge on this count, holding that the sworn affidavit of the investigator recording the nature of his conversation with the defendant firm was sufficient to constitute aprima facie case. And that it would be unrealistic to expect any further evidence at this stage. The court noted in pertinent part that:

"The private Investigator had sworn an affidavit on oath with regard to his conversation and information as received. In these circumstances, it could not be said that the appellant did not have a strongprima facie case. At the initial stage itself, it would be unrealistic to expect production of evidence of actual usage. The learned Single Judge failed to consider that in an action of infringement of software and piracy, the element of surprise was of critical importance and necessary. Issuance of notice would result in effacement of entire incriminating evidence."

Incidentally, the appellate court also strongly castigated the single judge for failing to follow its earlier rulings (that were also in the nature of appealsagainst the decisions of the said single judge). It noted:

"Even if a learned Single Judge has a firm belief or conviction and holds a view which is at variance with the view taken by the Division Bench, judicial discipline and propriety demand that the view of the Division Bench is adhered to rather than distinguishing it without there being any material difference or basis therefore."

I find myself in agreement with this ruling of the appellate court, as "speed" and "surprise" are critical elements in any software piracy action and evidence of infringement is often difficult to come by.


B. The Delhi High Court Guidelines: Protecting the Copyright Owner

In the process of overruling the single judge, the Division Bench of the Delhi High Court also laid down some broad guidelines for the conduct of software raids. For a good review of this case, see this article by Divya Balasubramaniam of Lex Orbis.

Firstly, the court noted that it did not intend to lay down elaborate guidelines, since different fact situations would warrant different kind of "raid" orders.

Surprisingly, most of its alleged guidelines were not really in the nature of how software raids ought to be conducted, but more in the nature of propositions that supported the plaintiff's case i.e. the fact that the element of "surprise" and the quick appointment of commissioners was absolutely critical in ensuring the protection of a plaintiff's right in software piracy cases.

I've listed some of the points enunciated by the court in this regard:

"(i) The object of appointment of a Local Commissioner in software piracy matters is not, as much to collect evidence but to preserve and protect the infringing evidence. The pirated software or incriminating evidence can only be obtained from the premises of the opposite party
alone and in the absence of an ex parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed;

(ii) Request for ex parte appointment of a Local Commissioner in such matters is usual and in fact is intended to sub serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered;

(iii) The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.

(iv) It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendants premises. Any such attempt also inheres in it the possibility of dis-appearance of the pirated software/incriminating evidence in case the decoy customers is exposed. Accordingly, visit by decoy customer or investigator is not to be insisted upon asa pre -condition. A report of private Investigator need not be dis-regarded or rejected simply because of his engagement by the plaintiff. The information provided by the private Investigator should The information provided by the private Investigator should receive objective evaluation.

(v) In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy."

C. The Delhi High Court Guidelines: Whither the Interests of the Defendant?

i) While I appreciate that the court made some attempt to spell out factors that ought to be taken into consideration whilst deciding an ex parte application for the appointment of a local commissioner in a software piracy case, it is pitiable that the court did not use this occasion to draw out "safeguards" to protect the interests of the raided party. As stated earlier, most of the courts propositions above cater to the interests of the Plaintiff copyright owner. Whither the defendants interests?

As an earlier ghost post argued, the danger of some of these broadly worded orders is that they go beyond the mere legitimate tracking down of infringement evidence and permit the disruption of the defendants business! It is therefore critical that we work out adequate safeguards to protect the interests of a raided party.

Had the court given more serious consideration to the defendant's interests, it might have insisted on costs (last factor in the court ruling above) as not just optional, but compulsory. In other words, in every case software piracy case, an ex parte order appointing a commissioner to raid premises ought to come with the condition that the plaintiff deposit a sum of money in court to protect an innocent defendant who might be raided and put to losses.

ii) Interestingly, although the court discusses another potential safeguard in favour of the defendant, it ducks the issue and again leaves this to be decided on a case by case basis. It notes:

"We may also notice that the learned counsel for the respondent submitted that there is general exploitation by the multinational companies holding copyrights who make the cost of licences prohibitive. As a result of the appointment of Local Commissioner and consequential orders passed by the Courts, seizing the equipments and machines, including the software in question, the business of the respondent comes to stand still.

Counsel for the defendant, therefore, prayed that the computer system and the CPU's which may be found or suspected to be involved in use of infringing software should not be seized or taken possession of and the ghost copies of the same including the software could be made for purposes of use as evidence in Court. Counsel for the plaintiff strongly objected to the same, raising objections to the feasibility of making ghost copies of hard discs and the possibility of manipulation therein and objections being raised of their admissibility. We are of the view that the above need not form part of the suggested guidelines and the directions to be given. These issues are best left to be assessed and appropriate orders passed in each individual case by the court."

I personally think that we must work towards a system where the court commissioner can record evidence of infringement, without seizing the computers and other equipment.

Any techies on our reader list know how feasible it is to capture evidence of infringing software and data built on it, without actually seizing the machines? Can one create a copy of the infringing software and the data built on it (in exactly the same manner as it would have existed on the defendant's computer) and can this copy then be used as evidence of infringement? I believe that such snapshots of the defendant's computer and even the creation of a virtual machine that replicates what is contained in the defendant's machine are possible with tools such as Norton Ghost.

If such a technical solution is a feasible one, it must be adopted--for it strikes an adequate balance between the need to preserve evidence and the defendant's interest in carrying on his business. Consequently, any negotiated settlement between the parties is a fair one and not one that is skewed against a raided party, who is likely to agree to most terms drawn out by the plaintiff, given that his/her business has just been shut down.


iii) If the above technical solution is not immediately feasible, the defendant must be offered the right to back up his/her data. Such data must not only include data created on licensed software, but also data created using unlicensed software. After all, such "data" can hardly belong to the plaintiff copyright owner. If that were the case, then any copyrighted work (e.g. a book) that includes some infringing content (e.g. a few pages of the book) would automatically belong to the copyright owner of those few pages!

Having said this, it is important to appreciate that the copyright owner can certainly claim damages based on the "use" to which the infringing material has been put. In other words, if data has been created on unlicensed software, the copyright owner can insist on damages for the said "use" of the software to create that data. In a lengthy comment to an earlier ghost post, Nikhil Krishnamurthy very persuasively demonstrates the need for such backup's and also discusses their legality.

It is quite disheartening that the appellate bench did not see the need to discuss the issue of "back ups" at all!

D. Conclusion

A recent post on original fake by Prashant Iyengar rightly articulates the concern that what was meant to be a civil remedy for copyright infringement may have morphed into almost police like powers in the hands of the commissioner. It is therefore critical that we work out adequate safeguards to protect the interests of a defendant.

Some of the safeguards could be as below:

i) That the copyright owner be asked to deposit costs in court, so as to cover any losses to a wrongfully accused defendant.

ii) That the copyright owner be asked to only capture evidence of infringement (through software such as Norton Ghost), without seizing the computers or other equipment.

iii) That if (ii) is not "technically" feasible at this stage, the defendant be permitted to back up all of her data, prior to her computers being seized.

I look forward to hearing from our readers on this issue and our attempt to formulate guidelines that might strike a somewhat healthy balance between the interests of a copyright owner and those of a raided party. Any other guidelines that you can think of?

GREEN BRANDING – CASHING IN ON THE ECO-MARKET

WIPO (World Intellectual Property Organisation) is a specialized agency of the United Nations, dedicated to developing a balanced and accessible international intellectual property (IP) system. The WIPO Magazine, a bimonthly Magazine issued by WIPO (isn’t that a guess!) aims to inform readers about WIPO-led activities, and to show intellectual property, creativity and innovation at work across the world. Thus, the magazine features selected initiatives, policies, meetings, and other activities that have an impact WIPO’s work and the work of the intellectual property community worldwide. The latest issue of the magazine deals with issues relating to climate change. [To subscribe to the printed edition (free of charge), contact WipoMagazine@wipo.int.]

This post aims to review the article written by Jo Bowman titled “Green Branding – Cashing in on the Eco-Market.” In the article, journalist Jo Bowman takes a look at the flourishing business of green branding. Green Branding, simply put, is an attempt, either through a certification mark or other process, to show that your company and/or its products are environmentally friendly.

Bowman argues that the ‘Go Green’ agenda of corporations stems from the consumers demanding products which do not harm the environment. Thus, at least on behalf of the companies, the move to ‘Go Green’ seems to be a purely competitive one. Given this change, companies are opting for green marketing strategies and the process of creating ‘brand value’ for any product or company includes recognizing that environmental issues have the potential to impact brand value, positively or negatively, and accordingly taking action.

For instance, in an interview in 2007, Lee Daley [Chairman and Chief Executive of Saatchi & Saatchi UK] stated that “Brands will not be able to opt out of being green. Companies which do not live by a green protocol will be financially damaged because consumers will punish them. In the longer term, I do not think they will survive.” Moreover, in a recent poll relating to corporate social responsibility, the American consumers concluded that “damaging the environment is the main reason [consumers] would think that a company is socially irresponsible.”

The main question then is what brought about a change in consumer preferences? According to the article, the reasons for change range from increased awareness of environmental concerns to the need to cut back on rising energy prices and tax policies that punish polluters. It is interesting to note that the consumers have realized that the switch won’t come cheap and are ready to pay up to 20% premium on environmentally friendly goods.

Thus, given these changes, all efforts are being made to join the green bandwagon. As Bowman states, “certification marks, labels and logos are increasingly being used by brand owners to signal their green credentials and so boost their market share.” This isn’t a bad bet, as a properly controlled eco-label offers consumers a guarantee that a product or service has been independently verified to meet given environmental standards. Such schemes (for labeling) may be run by government agencies, consumer protection groups, industry associations or other non-governmental organizations. Examples of such certification marks are Australia’s Greenhouse Friendly™ label [which is a registered certification mark administered by the Government Department of Climate Change], Thailand’s Green Label, the Korea Eco-Label and Germany’s Blue Angel mark. Furthermore, some companies, like Philips and BASF, are developing their own eco-standards and product labeling schemes.

However, the Green Bandwagon is getting crowded and confusing, greenwashing being the latest problem. Greenwashing is used to describe companies trumping up their green credentials without any real basis, can backfire on a brand. As stated by Jacob Malthouse [a co-founder of the Vancouver-based consumer advice site ecolabelling.org] in the article, “eco-labels can, however, be something of a mixed blessing for consumers. The sheer number of labels available can be enough to make your shopping trolley spin.” For instance, in Britain alone, there are at least four labels to tell consumers about a product’s carbon footprint. To help consumers navigate through the eco-label maze, the ecolabelling.org website, launched this year, details more than 300 eco-labels and sets out who runs them and what they mean.

Thus, on the shop floor, it’s the consumer that’s king. Grey’s Chris Beaumont sums up: “Ask anyone whether they’re concerned about the environment and it’s almost an academic question. Everybody is.” The question is will similar initiatives hold good in India, especially if it means shelling out more dough.