Bajaj vs TVS: Sai Deepak Cited by Judge

In what must certainly be the greatest achievement for this blog ever since its inception in 2005, Sai Deepak's incisive analysis in a previous post was cited extensively by the Madras High Court in the latest Bajaj vs TVS round.

In pertinent part, an appellate bench of the Madras High Court reversed the finding of the lower court and held that Bajaj had not established a "prima facie" case of infringement in respect of its patented twin spark technology. Consequently, it vacated the interim injunction granted to Bajaj by the lower court.

Indeed, Sai must be one of the very few law students to have evern been cited by a court. Please join me in congratulating him!

We'll carry a review of this judgment soon, but here is the cited portion:

"66. Apart from the above analysis, when we consider the claim of valid patent by the Respondent and the alleged infringement by the Appellant it will be worthwhile to understand the teachings of the already patented product of the Respondent and the claim of the Appellant in respect of the alleged infringed product viz., 125 cc 'FLAME', we had an opportunity of making a reference to an article written by a student of Rajiv Gandhi School of Intellectual Property Law, IIT Kharagpur, Mr.J.Sai Deepak titled "SPARKS FLY AS TITANS CROSS PLUGS". The said article throws much light on the working of the product of the patentee viz., the Respondent and that of the Appellant. We deem it appropriate to extract a few points expressed in the said article which reads as under:

".....Through its written description, Bajaj has explained in sufficient detail the disadvantage of using a single spark plug, as opposed to using twin spark plugs located preferably diametrically to each other (US patent 4177783 too contains a similar arrangement). This is because of better-controlled ignition timing in the latter and lesser time taken for the flame to travel during combustion. It has specifically listed the merits of use of twin spark plugs in a lean mixture (a mixture where the proportion of fuel in air is lesser when compared to rich mixture).

The novelty according to Bajaj, also lies in the use of a sleeve to protect the spark plug which is susceptible to exposure to lubricating oil. Such being the case, the emphasis and the scope of protection would be limited to use of twin spark plugs in a single cylinder with two valves, one plug protected by a sleeve. It is interesting to note that of the four patents cited in the International Search Report in the PCT application, 3 relate to inventions only on sleeve, and only one speaks of use of twin spark plugs.

CC-VTi, on the other hand, predominantly is about even combustion of fuel by altering the air-fuel mixture received by the 2 intake ports or valves. Usually, a cylinder has one intake and one exhaust valve. Earlier, the charge (air-fuel mixture) was either subjected to swirl or a tumble depending on the load conditions and speed. The stirred or circumferential motion of charge in the cylinder is called swirl, whereas a motion directed towards the axis of the cylinder is called tumble.

The former is used for a lean mixture and the latter is used for richer mixtures at high speeds. Several patents on the use of these phenomena exist. TVS s technology combines both these phenomena with 2 intake ports, providing swirl and tumble simultaneously, making the design compatible for both lean and rich mixtures. The degree of swirl would be greater for a lean mixture and the degree of tumble for rich mixture. This design ensures even combustion of fuel in all corners of the cylinder and is further marked by the use of twin spark plugs, which as explained earlier, provides fuller combustion.

This shows that the points of emphases in the designs of both these technologies differ considerably, notwithstanding the use of twin spark plugs in both instances....." (Emphasis added)

67. The distinction made out by the Author of the said article is quite appealing and does not conflict with the facts pleaded by the parties before us. By taking a clue from the said article, when the patented product of the Respondent is considered, the granted patent is an improved internal combustion engine working on four stroke principle. Accepting the stand of the Respondent that with the placement of the twin spark plugs in the cylinder head on diametrically opposite sides and the ignition points set in such a manner resulting in improved internal combustion in a lean burn mixture, the claim of the Appellant's in relation to its product viz., 125 cc 'FLAME' talks of even combustion of fuel by altering the air fuel mixture received by the two intake valves with the combination of swirl as well as tumble operated air fuel mixture.

In other words, while the Respondent's patented product of an improved internal combustion engine is by virtue of the functioning of two spark plugs due to its ideal location and the point of ignition in a lean burn operation, the product of the Appellant though also with the provision of twin spark plugs, the internal combustion was due to the receipt of air fuel mixture by the two intake valves (one providing swirl action and another tumble action) with the third valve being exhaust valve also providing effective internal combustion with the combination of lean burn and rich burn mixture.

68. Having regard to the nature of operation of the engine of the patentee viz., the Respondent as well as the Appellant in such a descriptive manner viz., one by virtue of twin spark plugs and the other by virtue of receipt of air fuel mixture through two different intake valves both by swirl and tumble operations, as rightly observed by the author of the said article, the point of emphasis in the description of the product of the Appellant as well as the Respondent differ considerably notwithstanding the use of twin spark plug in both the technologies. Viewed in that respect also we are convinced that the alleged infringement of the Respondent's patent cannot be prima facie accepted."

And later:

"71. Prima facie when we examine, as rightly set out in the article of Mr.J.Sai Deepak, student of I.I.T. Kharagpur, the Respondent's patented product de hors the fact that it has the already existing concept of twin plug operation in an internal combustion engine, at the threshold we are not inclined even prima facie to state that the validity of the patent is doubtful.

The operation of the invention as claimed by the Respondent appears to be plug centric one in as much as having regard to the descriptive statement in the final complete specification it will have to be held that the claim as set out therein if accepted would spark the ignition with twin plugs in a four stroke engine of a single cylinder with two valves specification produce improved internal combustion in a lean burn mixture and the Respondent may well be justified in its attempt to enforce its rights based on the said patent. Nevertheless, on that score alone, we find it difficult to countenance the claim of the Respondent that the Appellant's product specification have infringed its patented right.

Here again, we find considerable knowledgeable expression made by the author of the article Mr.J.Sai Deepak, wherein, he has differentiated the product of the Appellant as valve centric one in as much as the two intake valves as claimed by the Appellant provides for combined air fuel mixture of swirl and tumble action, with a separate exhaust valve in an internal combustion engine of single cylinder with four stroke with the aid of twin plug provision. The descriptive note of the author in stating that the Appellant's product is predominantly of even combustion of fuel by altering the air fuel mixture received by two intake ports or valves and that therefore the said technology differs considerably with that of the Respondent is quite convincing. "

SpicyIP Tidbit: Toshiba sues Moser Baer over DVD-R

Moser Baer, India's leading and the world's second-largest manufacturer of Optical Storage Media, finds itself at the receiving end of a lawsuit filed by Japan's Toshiba Corp. relating to alleged patent infringement of recordable DVDs. Reuters reports here that the lawsuit was filed in the US District Court for the Western District of Wisconsin against Moser Baer and seven other recordable DVD manufacturers and distributors across the world (Imation and RITEK are among others) that do not have licensing agreements with Toshiba to sell the products in the US.

"The infringement of Toshiba's patents by these companies, has negatively affected Toshiba's business, and also caused damage to the legitimate and licensed DVD product manufacturing and distribution business as a whole," reports this article . Toshiba has sought damages for past infringement and has asked for a ban on the sale, manufacture and import into the US of recordable DVD media by the companies named, but appears open to alternate resolutions, including post hoc license agreements.

Moser Baer has refused to comment on the issue at the moment, since information on this story is only just trickling in. However, commentators are already speculating on the unusual timing of this suit (why sue now, most would ask, if the complaint were valid all this while). It may not be coincidence, though, that the suit was filed simultaneous with a sale announcement of over $3 billion worth stock, subsequent to posting record losses last year.

SpicyIP Tidbits: GIs from the deserts and the hills

There are two updates on the GI front from very different parts of the country - the desert sands of Kutch and the languorous hills of the Nilgiris.

In an article replete with (standard) misreporting, the Indian Express informs us that Kutchi weavers, bandhini artists from Jamnagar and Ajrak printing craftsmen have applied for GIs, and expect to be granted their respective tags soon. There is a slight possibility (and this is entirely my own speculation) that issues may arise, here too like in the northern reaches of the country, of cross-border issues in the Kutch and Sindh regions. This has been brought up in previous posts on the blog here and here.

As a secondary indicator, I came across this Wikipedia entry on the craft of "Ajrak" printing which does not read like it has been scripted by an Indian, and clearly hints at potentially contentious issues of ownership about the craft. As it is, the murky tales of Basmati acquire increasing foulness by the day, which I shall try to touch upon in a separate post. One wonders if the Indian system is armed to take on more than it can handle at the moment.

Elsewhere, the New Indian Express informs us there was a grand little tea party in Coonoor some days ago, celebrating the grant of the GI tag for Nilgiri tea. Nilgiri tea reportedly has more connoisseurs abroad than with the country, and as a result, the Nilgiri Tea Fest,intends to go on a nationwide tour, Chennai being the next immediate stop. So the party will continue, eh.

As a tailpiece, it is sheer coincidence that I happened to visit an institute last week which has been key in helping obtain the GI for Kangra tea - the country's only variety to have obtained organic certification. Like Nilgiri, Kangra is an infusion tea, which is ill-favoured by most Indians, fond as they are of "kadak chai"! And it faces perhaps a worse fate than its southern relative, practically disappearing in daily local use, and a dramatic fall in production over the years, reaching near-insignificant levels. (At present, it hovers at around 0.1 % of India's total tea production).

Indeed, it was a struggle to find a dhaba that would serve Kangra tea on home turf. We had to return disappointed, with the chortles of the tea-shop owners ringing in our ears, laughing at the latest lot of out-of-towners. The tea was finally bought in a touristy shop in town, but there was something dispiriting about the entire incident. This is one of the challenges of the GI system itself - to not only ensure that the tag is not misappropriated by profit-seekers, but also, that it remains in healthy use, to prove that the GI was warranted at all.

Claim Construction I

In the last few posts, Mr.Basheer has mooted a wonderful discussion on claim construction. One would like to contribute to the same in the form of a few posts on the rudiments of claim construction. Since SpicyIP has very many readers whose knowledge of claim construction is formidable, contribution to the discussion would be greatly appreciated for it would help clarify conceptual comprehension as well as provide pointers to readers in general.

The question which usually arises first is why is it called “claim construction” and not “claim interpretation”? Is there a difference between “interpretation” and “construction”? Interpretation generally means imputing a particular meaning to words depending on the context of their use whereas construction refers to lending a logical meaning to a particular provision as a whole or set of provisions to ensure consistency among them. When and why does one resort to claim construction? Claim construction is undertaken both during the examination of a patent application or when a patent is under scrutiny by and before a Court of law where the primary intention is to set the metes and bounds of the claims to understand if the application covers prior art or if the invention so claimed has been infringed, as the case may be.

Ultimately, the objective of claim construction is to understand what a claim means; it was often said earlier that the purpose of a claim is not to claim anything new in the specification but to disclaim what exists in the prior art. Subsequently, the practice of including “positive” claims started in the US in 1822 which was later adopted in the UK. The development of the law on claim construction itself led to evolution of two different tests for infringement; the first one being the “literal infringement” test where all elements are taken into account and the second one being the “substantive infringement” test where the “pith and marrow” approach is employed.

Construction of claims is a matter of law which means it is the duty of the judge to etch the contours of the patent (In the US this was clarified in the Markman case where it was held that it was the duty of the judge and not the jury to construe claims). Strictly speaking, the Court steps into the shoes of a fictional person i.e. a person skilled in the art at the relevant date of filing of the patent and embarks on a hypothetical factual enquiry than a legal one. Over the years, Courts have developed several rules with regard to construing claims; one of the essential objectives of the rules is to give claims the same interpretation for all purposes at all times. Therefore, before issues such as infringement or validity are discussed, the scope of the claims must be clearly construed so that it is uniformly applied to either infringement or validity. The corollary to this in cases of infringement is that a patent should not be construed with a narrow reference to the defendant’s product.

The first step is to give meaning to the words and phrases in a claim before one decides what the essential and non-essential elements are. Such interpretation is to be made with reference to a person who is skilled in the art and is conversant with the jargon used generally. A word must be given its ordinary meaning unless a dictionary meaning has been ascribed or reference has been made to a publicly available document where the word has been used.

In cases where the Court needs expert assistance, it may seek the help of experts from the field. The rule with regard to use of an expert is similar to the general principles of evidence wherein the expert’s role is limited to helping the judge understand the scope of the claims better and not to interpret it himself. Also, it is not incumbent upon the Court to concur with the view of the expert and may construe the claim independently despite a view to the contrary being submitted by the expert.

What should be the standard of review? I ask this because s.103 of the US Act talks of a person with “ordinary” skill in the art and s.112 talks of “any person” skilled in the art. What exactly is the difference between the two and how does it affect the review of the patent? This is something I believe practitioners are best placed to answer and I humbly seek their opinion.

Since claim construction can make for dry reading, I shall continue with this discussion in the next post with specific attention being focussed on “purposive construction” and use of various parts of the patent in construing its scope.

The Pharmaceutical Patent Debate: Whither Drug Safety?

The Economic Times reports on a post grant opposition filed by Dr Reddy's against Chantix, a hugely profitable anti smoking drug patented by Pfizer in India and many other countries in the world.

As the name suggests, a post grant opposition is typically filed after the grant of a patent (an opponent is to file such oppn within a year of the grant). And this kind of oppn is subjected to a more stringent review than a pregrant oppn, since it involves a 3 member board who reviews the opposition and then sends their recommendations to the Controller.

The Economic Times Reports:

"DRL filed the opposition on May 24, 2008, against patent No 204091, which relates to the freebase of varenicline and its tartrate salt. DRL opposed the patent on the ground that the international application claimed only the tartrate salt of varenicline, whereas the Indian patent claims the freebase. The company also had an issue with Pfizer’s claim that the invention was novel.

The company stated the patent should be rejected on the ground that the alleged invention relating to varenicline has already been claimed in a prior Indian patent application and that it falls squarely within the ambit of Section 3(d), which says that the said invention is merely a new form of a known substance. Varenicline is a partial against of one of the nicotinic acetylcholine receptors in the brain and nervous system and is currently the only marketed and approved drug with this mechanism of action."

This news item appears to have been picked up from Varun Chhonkar’s excellent post at Patent Circle. He raises an issue that is often forgotten in the pharma patent debate: whither drug safety issues? He notes:

"In November 2007, the United States FDA issued a safety alert, reporting cases of suicidal thoughts and aggressive and erratic behavior in patients taking Chantix. Report also described Chantix affecting patients’ ability to drive or operate machinery. Later in May 2008, the United States FDA issued another alert highlighting important revisions made to the prescribing information for Chantix. Earlier this year in February, CBC News reported that Health Canada received 818 complaints for Canadian patients, many of them reporting mood swings, depression or suicidal thoughts.

We really wonder whether the Indian Drug Regulatory had taken the Varenicline adverse reports seriously enough and into consideration before giving marketing approval in India. Particularly considering that in India, it is not unusual to buy prescription drugs without doctor’s prescription – Varenicline may seriously pose high risk to Indian patients. And what if Varenicline generic versions also steps in?"

Varun refers to a Mint article by Bhuma Srivastava who notes in relation to Chantix (sold as Champix in India):

"Doctors and experts have expressed concern over an anti-smoking drug, manufactured and marketed by the world’s largest drug maker Pfizer Inc., being launched in India barely a month after the US health regulator issued safety warnings and said it was continuing investigation whether the drug triggers mood changes and, in some instances, suicides.

....Indian rules are fuzzy on actions based on such information. The government official responsible for regulating drugs sold in the country, Surinder Singh, the drug controller general of India, or DCGI, could not be reached for comment. Local rules do not mandate patient trials of a drug here if sufficient safety and efficacy data from international studies are produced. The Indian drug regulator gives approval to new drugs if they have been approved by regulators of the US and Europe. No clinical trials were carried out in India in the case of Champix.

Only in specific cases when the safety or efficacy data does not satisfy DCGI are clinical trials asked for but this is always “on a case-to-case basis”, explained a senior official in the DCGI’s office who did not wish to be identified. There is what is called “a pharmacovigilance department to take note of any ADRs (adverse drug reports)” but it is very new and would take time to be fully functional, this official added. Former DCGI M. Venkateswarlu added that there “is always a risk-benefit ratio to a drug. One cannot just keep out a drug especially when it addresses an issue of major public health concern.”

Although one can understand the logic of a risk-benefit ratio above, one wonders as to whether the DCGI did undertake such a computation and whether doctors and even members of the public can be privy to his reasoning on this count.

Just as we have been pointing out the need for more transparency in the grant of patents and the need to make more patent information public, there is a greater need to open up the drug regulatory process as well and wherever possible authorities ought to give their reasons for the grant or rejection of drug marketing approvals.

ps: Interestingly, Pfizer is considering funding a clinical trial to test whether this drug can be useful in preventing heart attacks in smokers. Some rubbish this claim, stating that since this is an anti smoking drug and a smoker will either give up or smoke less after taking this drug, they will naturally have a lower susceptibility to an attack. Anyway, let's wait and watch to see if Pfizer manages to get lucky with establishing such second medical use, ala Viagra.

Given India's bar on second medical use patents under section 3(d), it is clear that even if Pfizer establishes this "new medical use" in India, it will not procure a patent.

Rating Consumer Friendly Copyright Laws: India at No. 1

After much criticism of the law and the lack of transparency in the system, Indian IP finally has something to cheer about! A study of over 16 States by Consumers International (which describes itself to be the “world’s only global consumer advocacy body”) has ranked India at the top of a list which globally surveyed “national copyright laws and enforcement practices from the perspective of how well they promote access to knowledge for consumers, by allowing them fair access to the fruits of their society's culture and science.” This is the inaugural edition of CI’s IP Watch 2009 that as per their own admission aimed at rating not primarily the most strict legal system with respect to copyrights but the most “fair”.

While India was ranked number one, the surprises continue down the top5 of the list with three other Asian countries- South Korea, China and Indonesia all keeping India company on the list. Interestingly, the United States of America that comes out with its year Special 301 Reports that critiques other IP regimes only manages to come in at number 4 on the list.

The survey concludes that the existing copyright law in India “is a relatively balanced instrument that recognises the interests of consumers through its broad private use exception, and by facilitating the compulsory licensing of works that would otherwise be unavailable. Neither has India rushed to accede to WIPO Copyright Treaty, which would expose India's consumers to the same problems experienced in other jurisdictions which have prohibited the use of circumvention devices to gain access to legally-acquired copyright material.” Furthermore, while acknowledging the fact that there does exist a large market where infringement of physical media is prevalent, the report contextually holds the same only to be a by-product of the current economic scenario of the Indian peoples.

Strangely, the copyright laws of the United Kingdom (that India has based itself/ borrowed heavily from) along with Brazil, Argentina, Thailand and Chile round off the last few places on this list. 

Despite there being several doubts as to the adequacy of the Indian copyright law-with unresolved loopholes in the law and several cases that challenge basic provisions of the act- the present survey is all in all, a good showing for the Indian copyright laws especially when the same is seen in the perspective of the consumer.

[Some interesting articles on the existing copyright law as well as global policy as regards the same are to be explored in the second issue of the Indian Journal of Intellectual Property Law. With reference to the present post, readers are recommended to earmark two excellent articles by Ms. Latha Nair and Ms. Nadia Lambek. The same will be made available on the IJIPL website after the publication of the forthcoming issue due to be released in July 2009. ]

News reports on this survey are available here and here.

SpicyIP Tidbits: GI update

It's been a while since we've updated you on GI-related activities, and there have been several developments over the past few weeks, which I have tried to put together in a enhanced-tidbit-type post. Future GI updates will hopefully be less lengthy, and more timely!

1. GI for Banarasi sarees

Last year, there were reports that UNCTAD intended to support a GI application process for traditional Banarasi silk sarees, which SpicyIP had picked up here. Latest news here and here suggest that the process is nearing completion, with the Banarasi Bunkar Samiti - a collaborative of traditional handloom weavers - along with eight other organisations awaiting clearance for the GI tag for 'Banaras Brocades and Sarees'. The traditional woven silk from eastern Uttar Pradesh faces stiff competition from manufacturers in Bhagalpur (Bihar), Surat and Bangalore, as well as from China.

2. Basmati-APEDA politics: MP vs the rest

The Madhya Pradesh government appears to be miffed at having been ignored by the Agriculture and Processed Food Products Export Development Authority (APEDA) for the registration and protection of IPR related to Basmati rice, including GIs, according to this report. APEDA has apparently only considered Basmati rice grown in Haryana, Punjab and Uttar Pradesh for this purpose. MP's Basmati rice growers are particularly concerned over not being able to export the rice if GI becomes mandatory in the times to come. Things are in cold storage for the moment, but if reports are to be believed, the MP government will resume lobbying once the election-mania subsides.

3. Legal opposition to GIs from J&K?

Pakistan's Daily Times reports that the High Commission of Pakistan in New Delhi has decided to go litigious and block India's attempts to obtain GIs for products originating in Jammu and Kashmir. The concern is that the rights to these products rests in both countries - in Indian-, as well as Pakistan-occupied Kashmir, and no state can claim exclusive ownership. The report adds that "the Rawalpindi Chamber of Commerce and Industry and AJ&K Chamber of Commerce and Industry has authorised the Pakistan High Commission, New Delhi, to file appeals against the registration of Pashmina, Kanni Shawl and Kashmiri Sozan Kari crafts in Indian legal forum." With a USD 20,000 grant in hand from its nation's Export Development Fund, the Pakistan High Commission appears to be gearing up to take it to the mattresses. Get ready for the ringside seat.

4. Post-GI stress for Kullu shawls

In a study that portends a great deal for a GI-hungry nation like India, we are informed that three years since Kullu shawls were granted a GI tag in 2006, benefits are yet to permeate to the original weavers. According to this study, and this report, awareness about the Kullu shawl GI remains abysmal, and fake products remain as prolific as ever, with no perceptible effects on business. This is primarily due to implementation issues, which are detailed as follows:

"The Kullu Shawls Weavers Association (KSWA) was given the responsibility of registering Kullu shawl as a geographical indicator in 2006. Ever since, there has been slow progress in its implementation. The association, which plays a key part in the implementation of the GI, is busy identifying the number of local household and commercial weavers whose shawls could be given a GI mark to protect them from imitations. This process has been slow and taken close to two years mainly because the weaving industry in the valley is highly disorganised. ...The logo, which is a representative of Kullu shawls as a GI, is yet to be finalised and this has been largely due to the miscommunication between the Department of Science and Technology (DST), the KSWA and the Wool Board."

This is an excellent eye-opener for manufacturers and representative groups and whoever else is lobbying for GIs for various products across India. A significant quantum of GIs are awarded to products manufactured by cottage industries, which are intrinsically challenging to monitor. Therefore, any application for such products/industry should consider implementation issues , which among others, includes, (i) consolidating the industry for the purposes of manufacturing under a common tag/brand; (ii) maintaining the tag/brand reputation; and (iii) in some cases even sustaining the industry qua traditional heritage.

5. God's own GI redux

As a tailpiece, and for those among you who haven't already, I invite you to read Dwijen Rangnekar's delightfully written op-ed that appeared in Economic Times recently. Dr Rangnekar, an Assistant Prof. of Law at Warwick University has a particular interest in GIs, and here he analyses the application for the Tirupati laddu (which, along with other items of religious heritage where the sacred and the profane have commingled, has stoked some embers). The article puts several things in perspective, not least the nearly 200-year old history of religious institutions attempting to "invoke the ethic of money-making". Besides the obvious issue of the application potentially "hurting religious sensibilities", and therefore invalidable under law, he also highlights other issues including of the applicant, i.e., Tirumala Tirupati Devasthanam (TTD), being a single entity, and not an 'association of producers' as required under GI law, which may prove problematic in times to come. An engaging and thought-provoking read!

Ramkumar's Lawyer Threatens "Defamation" Action

Pursuant to our last post on the Ramkumar "Dual Sim" patent litigation, I received a very strongly worded letter threatening legal action against me from Ferdinand, a lawyer who represents Ramkumar.

As many of you may be aware by now, Ramkumar's efforts to unduly squeeze moneys out of cell phone importers by misrepresenting the scope of his claims has been denounced extensively on this blog. And naturally this must have irked Ferdinand considerably.

Unfortunately Ferdinand has picked the wrong target. If he thinks that he can quell free speech through aggressive threats of initiating criminal action, he is sadly mistaken. Let it be known to him that our efforts to keep you updated on this case will continue unabated.

Ferdinand states that the comments made in my post were defamatory and has threatened to take action against me, including criminal action. I am extracting his key allegations and responding to them here:

1. Ferdinand questions my rather straightforward interpretation of his client's patent to show that it is extremely limited in scope.

He states: "Your other comments on the Patent and the scope of the same are all juvenile."

My Response: I have to agree with Mr Ferdinand that my interpretation of the patent is indeed "juvenile". For, even a mere "juvenile" will appreciate that the scope of the patent is limited and that both he and his client have taken the court, customs authorities and several innocent cell phone importers for a ride by attempting to monopolise what is legitimately in the public domain.

So let us examine the claim in question. Claim 1 of Ramkumar's patent states:

"A mobile phone is to be incorporated with a provision for a plurality of current SIM cards and/or modified SIM Cards, a plurality of current SIM sockets and/or modified SIM sockets for accepting a plurality of current SIM Cards and/or modified SIM Cards, a plurality of headphone/earphone jacks for accepting a plurality of headphone/earphone plugs and/or a plurality of Bluetooth devices in order to operate simultaneously the said mobile phones in said different communication networks is presented, and a plurality of incoming and/or outgoing calls can be communicated simultaneously with the said respective SIM Cards."

Please note that the "commas" between the various sections of the claim above denote the word "AND". Therefore, it is clear that the patent does not cover all "Dual SIM phones" (as Dual SIM technology itself has been around and is part of the prior art), but only those Dual SIM phones that also provide for more than one headphone/earphone jack, so that two people can be on two calls at the same time via the same handset. However, Ramkumar has claimed that any cell phone that uses dual SIM technology infringes his patent. In other words, he is dishonestly attempting to claim rights over technology that is part of the prior art and clearly outside the scope of his patent.

I now link to the patent specification as granted so that readers can take a look at this patent claim and judge for themselves. Even "juveniles" will appreciate the dishonest nature of Ramkumar's claim that his patent extends to all dual SIM phones. If Roche has been fined Rs 5 lakhs for alleged misrepresentations to the court, one wonders what kind of costs Ramkumar will be finally subjected to when the courts call his bluff!

2. Ferdinand is agitated about insinuations that his firm was involved in collecting moneys from importers.

He begins by quoting from our post which states:

"Apparently, Ramkumar, his partners and his lawyers collected more than ten crores from various importers (particularly the smaller players) threatening them with litigation, if they did not pay up. They also pressurised customs authorities to block all imports of dual SIM phones, barring the phones of those importers that had paid up and obtained "clearance" letters from them"

He then alleges:

"The above passage authored by you is baseless and false. You have stated in no uncertain terms as if Ramkumar's lawyers, viz. myself and my firm, have collected money from various importers, threatening them with litigation. This is an absolutely false statement, which we do believe you know to be false, but still proceeded to publish the same. Neither have I nor anyone from my firm, have ever been in touch with any importer, big or small, let alone threaten them with litigation. Neither have I nor anyone from my firm collected any money whatsoever from any importer. Since you have published such a statement, which you obviously know would bring down the reputation of my firm, could you produce the documents that you have to back up the false allegation you have made?"

My Response: Could I produce the document? Of course I can!

At the end of the post, I refer to an article in a Tamil daily Dinakaran, which when translated to English suggested as below:

"Vikas systems, in which both Ramkumar and Diwakaran (the deceased) were partners, was collecting payments from the importers of dual SIM phones.

It appears that of the moneys collected, Ramkumar and his lawyer, Mr.Ferdinand would get 60%, and Vikas system would get 40%."

Ferdinand was clearly aware of our referral to the Dinakaran piece, as made evident from this statement below:

"For the record let me state very categorically that the report that appeared in Dinakaran‚ is false and I have written to them about the same."

Well, there you have it, Mr Ferdinand. Our basis for the report was the Dinakaran piece. And the right recourse for you would be to write to Dinakaran and convince them of your bonafides in this affair and get them to issue a retraction or clarification. We promise to carry that retraction, if and when it appears. Also, I am more than happy to publish (on this blog) any clarification from your end on the veracity or otherwise of the Dinakaran piece.

Further, given that the cops are now investigating this murky affair, we're all hoping that there will be more clarity on this issue in the months to come. In the interim, I've deleted the initial statement at the start of the blog that you've objected to, but retained the reference to the Dinakaran piece at the end, and I see no reason to remove that.

3. Ferdinand lashes out at the end, questioning my motives in exposing Ramkumar's extortionary tactics:

I quote from his letter: "I understand that you were earlier working for the firm which is currently the Counsel on record for Samsung as well as Micromax and is thus advising them. It also appears from your blog that you are obliged to the firm and its Partners and are in fact still very close to them. I am certain that I do not need the kind of imagination you have to find out who your friends‚ are and what your ulterior motives are. Your posts and your comments on the Judge and the Madras High Court Order are now very much understandable."

My Response: Ferdinand is understandably irked by our exposing of the extortionary tactics deployed by his client to monopolise public domain material and extract money out of cell phone importers. Naturally, when you cannot argue on the substance, you resort to ad hominem attacks. And that is precisely what Ferdinand attempts to do here. He alleges that I am motivated out of a desire to help a law firm that I used to work with before my transition to academia.

Ferdinand forgets that I have, on this very blog, critiqued decisions that went in favour of this very same law firm. A noteable example is the BMS vs Hetero case, where this law firm represented BMS and obtained an injunction from the court, where the court "expected" the Drug Controller to not grant approval. I had then critiqued this purported "drug linkage" sought to be sanctioned by the Court, arguing that it was against the law.

And so it is with Ferdinand's case. He and his client have taken advantage of poorly drafted customs regulations and the relative lack of competence of customs officials to appreciate patent nuances. And I have come out strongly against customs officials deciding this matter without any aid from the courts. But there is a fundamental difference between earlier "linkage" cases that we had spoken out against and Ferdinand's case. In the other cases, the merits (as to whether or not the patent was valid and whether it covered the allegedly infringing product) was arguable.

What was objectionable was the purported "linkage"--i.e. an attempt to enforce a patent right through an authority that was both incompetent and not statutorily authorised to look into such matters. In Ramkumar's case, the matter on merits itself is highly suspect. And it is only a matter of time before courts and other authorities call them on this bluff.

The Impact of Ramkumar's Fraudulent Claims on Small Cell Phone Importers:

One aspect that we've ignored in this whole controversy is the impact that Ramkumar's fraudulent strategy has had on the small scale cell phone importers. Apparently a number of them opted to just pay up and not fight. It will be a travesty of justice if these small scale importers do not get the moneys that they paid up, when Ramkumar is finally called on his bluff.

In future posts, I will try and explore the legalities of obtaining such moneys back. Just so that Ferdinand is prevented from spinning this into a Ramkumar vs MNC (Samsung) saga, I attach some documents relating to a small time importer, Hansum India that was also hit by Ramkumar's false claims. But this importer decided to fight back and refused to pay up. Bravo!

To conclude, let me once again repeat the message that I had outlined right at the start of this post:

If Ferdinand thinks he can quell free speech through aggressive threats of initiating criminal action, he is sadly mistaken. This blog has always taken an "issue" based approach, critiqued ongoing IP cases and exposed flaws in the law wherever they existed. We value our freedom to continue with such reporting and we think it serves a public interest. Consequently we refuse to be intimidated and will staunchly defend our rights in this regard.

SpicyIP Tidbits: The 'IP' in the IPL!

Along with everyone else cashing in on the success of the IPL, IPR firms do not seem far behind. With the objective “to protect IP, make a profit and increase brand valuation”, teams like the Deccan Chargers have opted to create an IP portfolio, including trademarks for team logos, copyright over player uniforms and website layouts. 

The Mint reports that the exponential popularity of the IPL has led team owners to recognise the inherent brand value attached and proactively protect the same. Aside from The Deccan Chargers, the Kolkata Knight Riders seem to have also applied to the Controller General of Patents, Designs and Trademarks for protection of their mark in the fields of financial services, insurance, beauty care products (amongst others) and the Mumbai Indians have filed trademark applications for cosmetics, musical instruments and photographic equipment etc.

Apart from the more traditional protection, with the aggressive promotion in the real world has been coupled with a more defensive approach on the internet. The teams have opted to drive away cyber squatters by pre-empting unauthorized linking of team websites to other sites as well as pre-empting squatters from buying the team domain names.

With matches becoming more exciting, these concerns are definitely well founded. It certainly looks like it has become the Intellectual Property League!

Generics now face trouble in Africa

Indian generic drugs are facing a lot of trouble world over. Besides the many 'in-transit' EU seizures, and the high percentage of generic pharmaceuticals seizures by the US customs (which will be covered in a subsequent post), African countries are now looking towards new 'anti-counterfeit' legislation which are believed to have been due to the persuasion of European based multinational pharmaceutical companies. And as can be guessed, suggestions of persuasion by MNCs imply a maximalist IPR enforcement attitude. One of the first ones to have come into existence is the Anti-Counterfeit Act, passed by Kenya in Decemeber 2008. The problematic part of the legislation is that it recognises intellectual property rights of pharmaceutical products registered in any part of the world and not just in the country of export or import. This means that the intellectual property rights of a pharmaceutical product which is patented in any other country can be enforced in a sale of the generic version of that drug by India to Kenya.

Currently this legislation has been enacted by Kenya, however Indian officials fear that this will also influence other African countries of export such as Uganda, Peru and Ghana. The legislation claims that copies or generic versions of all products having protection in Kenya or anywhere else will be considered 'counterfeit'. The aim of this legislation is in line with developed countries efforts at the WIPO to implement a regime which would recognise a patent registered in one country, world-wide. India is also likely to ask Kenya to review this legislation in order to protect its exports. The Financial Express also points out the timing at which this is coming. By the year 2012, the global pharmaceutical market will see approximately $123 billion worth of products lose their patents. Given that the expiry time line for drug patents differs across countries, it’s really problematic that the Kenyan legislation protects the intellectual property rights of drugs that are registered even outside Kenya. This gives good reason to believe that the Kenyan legislation has been influenced by vested interests.

The legislation also lacks a differentiation between the definitions of spurious goods and counterfeit goods. While one implies a sub-standard product - a public health issue, and the other merely refers to alleged IPR violations and do not necessarily compromise on quality of the product and this is not reflected in the legislation. According to the East African Community Customs Union, this definition does not distinguish between mechanical details of intellectual property rights (IPRs), such as trademarks, copyright, patents and data protection from quality control issues related to medicines, which basically revolve around formulation. The Kenyan definition of what a counterfeit medicine is, as contained in the law, also differs from that of the World health Organisation (WHO), they say.

As per the Economic Times, India along with Brazil will be lodging a complaint with the WTO alleging that that the EU based MNCs are persuading African nations to enact these anti-counterfeit laws. D.G Shah, secretary-general of the Indian Pharmaceutical Alliance (IPA) has said that these multinations pharmaceuticals, not being able to compete with the cheaper and efficacious medicines produced by India, are now resorting to underhanded tactics.
Kenya’s Anti-Counterfeit Act will sound the death knell of India’s pharmaceutical exports to African countries as others may follow suit,” he said. Altogether, African countries account for 14 per cent of India’s $8-billion pharmaceutical exports. Aside from the growth in exports of Indian drugs to Africa which will be affected by this legislation, Africa's access to drugs at affordable prices will also be affected.

Recently, on 24th April, India's Commerce Secretary Mr. G.K.Pillai called for an extraordinary meeting of Ambassadors of all African countries and addressed them regarding this new development. Centad (Centre for Trade and Development), has made available a brief summary of Mr. Pillai's speech. Mr. Pillai drew attention to the maximalist approach to enforcing IPRs that multinational pharmaceuticals backed by developed countries such as USA were taking. Their efforts in subtly circumventing the minimum standards clause in TRIPS by pushing for a more TRIPS-plus regime in regional agreements were also noted. “Having failed at the WIPO, they are attempting to succeed through the backdoor by strategically detaining our drugs at ports and convincing African countries to bring in such legislations,” Mr Pillai said. Noting the seriousness of the diseases which the countries needed to fight, he laid down the potential scenario where only branded and patent-protected medicines were allowed and generics were not, thus creating an oligopoly for the MNCs involved and raising costs by a huge margin for the affected.

At the meeting, he also brought up the issue of a conflict with the Doha declaration of 2001. According to this, members may grant compulsory licenses for exporting medicines to countries that lack manufacturing facilities. He emphasized that this provision would be rendered meaningless if African nations enacted laws that restricted legitimate trade in generic medicines. The Secretary also pointed out that the Doha Declaration stated that the TRIPS Agreement can and should be interpreted and implemented in a manner supportive of WTO members right to protect public health and, in particular, to promote access to medicines for all.

William New on WIPO Nominees

William New, Editor in Chief of IPWatch, the most authentic and reputed source for any news/ analysis of international IP developments has a great piece on prospective names for top level WIPO posts. For those of you interested, IPWatch offers free subcription for readers from developing countries.

In a previous post, we announced the filling in of one such post by NN Prasad (who was recently appointed as the Chef De Cabinet to the WIPO DG, Dr Francis Gurry). Hal Wegner's email list also has some good updates on the prospects of Jim Pooley as one of the potential Deputy Director Generals.

WIPO Buzzing With Possible Names For Top Cabinet Posts
By William New

Behind the day-to-day policy and technical work at the World Intellectual Property Organization, member governments’ lobbying of new Director General Francis Gurry to obtain top positions for national officials at WIPO has been intensive in recent weeks and is near conclusion, according to sources. Among the pack of possible names is a recent former director of the US Patent and Trademark Office, according to sources.

[Editor's update: NN Prasad, Joint Secretary at India's Department of Industrial Policy and Promotion, Ministry of Commerce, has been chosen as the Chef de Cabinet (chief of staff) to the WIPO director general, according to Indian sources. This was first reported in the SpicyIP blog.]

Any government may put forward a name, and upwards of nearly 20 candidates’ names are said to have been in consideration for four posts of deputy director general - who are second only to Gurry - or three assistant director general spots. Positions are usually for six years, though there is a precedent for splitting them into two three-year terms in order to resolve political conflicts.

This time, the full terms for DDGs and ADGs may only be 5 years, a source said, as Gurry will already be one year into his six-year appointment when they come on board due to unusual circumstances at WIPO last year.

There are four deputy director general positions to be filled. Under the pre-existing WIPO structure these included: patents, Arbitration and Mediation Centre, and global IP issues (left open by Gurry, of Australia), copyright and enforcement (Michael Keplinger, United States), administrative matters (Philippe Petit of France, who is completing his term despite illness), and economic development (Narendra Sabharwal of India).

It was noted the last time, in 2006, that three out of four of the DDG positions came from a single regional group - Group B of developed countries (Australia, France, United States). There were some calls for better representation of the membership (IPW, WIPO, 1 June 2006). It should be noted that WIPO also has not yet named a chief economist or top official for global issues.

Gurry and Petit had been recommended by previous Director General Kamil Idris, who left one year early in 2008 after a lack of confidence among members arising from doubts about his employment record. Keplinger served three years after replacing another American, Rita Hayes, in 2006. Sabharwal completed the second half of the term started by Geoffrey Yu of Singapore, as pre-arranged.

The assistant directors general (ADGs) completing their terms this year are from China (Wang Binying), Nigeria (Geoffrey Onyeama), and Uruguay (Ernesto Rubio). All three appear to be seeking to continue or elevate their positions in WIPO, according to sources.

Rubio has served two terms. Wang Binying was given a newly created position in 2006, giving China its highest post in WIPO since joining in 1980. Onyeama was named in 2005 to fill a post vacated by Tanzanian Khamis Suedi, who resigned after being investigated for financial concerns related to an earlier renovation of a WIPO office building.

Gurry, who took office last October, is expected any day now to send his recommendations to the 83-member Coordination Committee, the member state executive body. The committee will then meet in June to decide on his recommendations and pass them on to the September assemblies for final approval of the full 184 members. The new officials would take office by the end of the year.

Gurry reportedly has been choosing from among about 17 names of senior officials, several already employed within WIPO, whose names have been put forward by their governments. There is a loose emphasis on geographic representation in the selection process.

A Crowded Stage

Countries of origin of possible candidates may include, according to sources: Argentina, Barbados, Cameroon, China, Croatia, Germany, Ghana, Japan, Macedonia, Nigeria, Philippines, Russia, United States, and Uruguay.

Note that many of these names could not be confirmed by press time, and this list may be non-exhaustive.

The United States is said to be considering putting forward Q. Todd Dickinson as the US candidate for deputy director general. He was formerly undersecretary of Commerce and director of the US Patent and Trademark Office in President Clinton’s second term.

The US was said to have been considering more than one possible candidate, such as Matthew Bryan, director of the Patent Cooperation Treaty (PCT) legal division sector of the PCT and Patents, Arbitration and Mediation Centre, and Global Intellectual Property Issues.

Other US names said to be in consideration include: Richard Wilder, associate general counsel for IP policy at Microsoft, a former director of the WIPO Global IP Issues Division; Jon Santamauro, an attorney at Sidley Austin who was the lead US delegate on IP issues in Geneva; and Jim Pooley, a partner at Morrison and Foerster law firm who is also said to be a candidate for USPTO director.

[Editor's update: US industry sources say Pooley has been selected for backing by the US government for the DDG patent role, which signals he was not chosen for the USPTO director position. This has yet to be confirmed with official sources.]

From the Latin American and Caribbean region, a potential nominee is Barbados Ambassador Trevor Clarke, chair of the WIPO Committee on Development and Intellectual Property. Ernesto Rubio, head of trademarks at WIPO, is another possible candidate from the Latin America and the Caribbean region, sources said. A third potential Latin American candidate is Marcelo di Pietro Peralta of Argentina, who is a senior advisor in the Office of the Director General at WIPO.

From Africa, there at least three, sources said, all from within WIPO: Onyeama of Nigeria, a current ADG; Edward Kwakwa of Ghana, who is WIPO general counsel; and Herman Ntchatcho of Cameroon, senior director of the technical assistance and capacity building bureau for Africa.

The names appear to include a few who competed with Gurry in last year’s election for director general. According to a source this may include Yoshiyuki Takagi of Japan, executive director of the WIPO Global IP Infrastructure Department and Boris Simonov of Russia, director general of the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent).

Gurry’s closest competitor in last year’s election, Jose Graça Aranha of Brazil (who lost by one vote), has moved out of the WIPO headquarters in Geneva to head the WIPO Latin America office based in Rio de Janeiro.

Joining Japan and the United States from the non-geographic Group B of developed countries is Germany, which has put forward former WIPO official Johannes Wichard.

From Asia, the Philippines has put forward a candidate for deputy director general, Adrian Cristobal, director general of the WIPO office in the Philippines with the rank of undersecretary. Indonesia was considering a potential candidate but has decided against it, sources said.

China, its own regional group at WIPO, may be seeking to extend Wang Binying, a source said.

WIPO also has regional groups representing central and eastern Europe. The Eastern European group is headed by Russia. Two countries from the Central European and Baltic States group are said to be putting forth candidates: Georgi Avramchev, the Ambassador of Macedonia to the United Nations and World Trade Organization, and Zeljko Topić, director of the IP office of Croatia.

The central European group sees itself as more western European-leaning in IP and is trying to move faster than some of its eastern neighbours to adopt European-style IP policies, Avramchev told Intellectual Property Watch. Currently, the group has only one representative in senior WIPO management, Michel Svantner of the Slovak Republic, according to a regional source. Bojan Pretnar of Slovenia, who was a candidate in the WIPO director general election last year, was expected to retire this year.

The 17-member central European group consists of: Albania, Bosnia-Herzegovina, Bulgaria, Croatia, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Macedonia, Moldova, Montenegro, Poland, Romania, Serbia, Slovak Republic and Slovenia.

Summary of existing officials completing terms:

Philippe Petit (DDG) - general affairs and administration sector
Francis Gurry (DDG) - Patent Cooperation Treaty, arbitration and mediation centre and global intellectual property issues
Narendra Sabharwal (DDG) - economic development sector
Michael Keplinger (DDG) - copyright and related rights

Ernesto Rubio (ADG) - sector of trademarks, industrial designs and geographical indications
Geoffrey Onyeama (ADG) - coordination office for external relations and industry relations
Wang Binying (ADG) - office of administrative support services, security matters and general assembly affairs.

Patent Database Petition: Techgoss Articles

Thanks to all of you, we now have about 230 signatures on our petition requesting the publishing of more patent information. For those of you that still haven't signed, we still have another 2 days left before we submit this petition.

I also want to thank techgoss.com for highlighting this petition on their blog in two punchy pieces, authored by Bala Shah. I enclose an extract below:

"The Indian Patent Office, like its counterparts in the world, has been set up to serve the public. Essentially, this involves in striving for an honest balance between the clever people/business who invent new ideas/machines to make our lives better and the general public (like you and me) which pays to use these goods and services.

That is the theory. In reality, every Indian Government is hampered by lack of funds and sometimes thuggish interference by its political masters.

One of India’s most credible and popular legal blogs SpicyIP is actively campaigning to ‘engage’ the Indian Patent Office to serve the best interests of the Indian public. One of the elements of their petition is promote open source. Any such public activism for the larger good of the masses should be encouraged and supported in every way."

We couldn't have put it better. Thank you very much for that wonderful encapsulation of what we are trying to achieve, Bala. Like you, we remain hopeful that in some years, the Indian patent office will earn the distinction of publishing the most amount of patent information anywhere in the world.

Ramkumar "Dual Sim" Case: Micromax Obtains a Declaratory Judgment

Close on the heels of what might turn out to be India's first "patent" murder, SpicyIP just learnt that Micromax has obtained an interim declaratory order against Ramkumar in a high profile patent infringement matter.

By way of background, Micromax, a dual SIM cell phone importer filed a declaratory suit for non infringement before a court in Gurgaon (a satellite town close to New Delhi) asking that the court declare that Micromax's imports of dual SIM phones do not infringe Ramkumar's patent, since they are outside the scope of the claims in his patent.

I will bring you more details once I have a copy of this judgment. The interim court order apparently declares that Micromax does not infringe Ramkumar's patent.

Recall our earlier post, where we assessed the patent and opined as below:

"....the patent does not cover all "Dual SIM phones" (as Dual SIM technology itself has been around and is part of the prior art), but only those Dual SIM phones that also provide for more than one headphone/earphone jack, so that two people can be on two calls at the same time via the same handset. However, most of the goods seized by customs (consisting of both Samsung's products and a number of other imports belonging to several Indian importers) appear to be generic Dual SIM phones with just one headphone/earphone jack. In other words, the patentee is attempting to claim rights over technology that is part of the prior art and clearly outside the scope of his patent."

This ruling by the Gurgaon court will certainly impact other ongoing litigations, most noteably the Madras High Court proceedings.

Given Ramkumar's extortionary tactics and blatant mispresentation of the scope of his claims, one wonders what consequences are likely to befall him after a court calls his bluff and finds against him. Will he have to return all these monies collected? It would appear that a good legal arugment can be made that he ought to return all these monies wrongly collected.

On another note, we are given to believe that hearings between the various parties involved in this saga have been going on before customs authorities in the various metros, including Chennai, Mumbai and Delhi. I'm not sure if any of these authorities have issued any written decisions in this regard and would be happy to hear from any of our readers in the know. Apparently, the Chennai customs authorities appear to now suspect Ramkumar's case, as they are no longer blocking any dual SIM cell phone imports.

Further, on a related note, we are given to understand that the Samsung writ petition challenging the constitiutonality of the customs rules had not been refiled in the Delhi High Court. Now that Samsung appears to be getting a favourable response from the customs authorities, they may be hesitant in taking on such authorities in a writ petition.

Lastly, as we continue to explore the legalities of this case, the "murky" murder side of this case continues to be investigated. A friend of mine sent me a rough gist of a news item that appeared in a Tamil daily, Dinakaran (caveat: the translation and encapsulation of the gist may not be entirely accurate):

"Vikas systems, in which both Ramkumar and Diwakaran (the deceased) were partners, was collecting payments from the importers of dual SIM phones.

It appears that of the moneys collected, Ramkumar and his lawyer, Mr.Ferdinand would get 60%, and Vikas system would get 40%.

After Ramkumar and his lawyer had procured the Madras High Court order, they did not need the help of Vikas systems or Diwakaran anymore. And therefore refused to share the 40% with him. This might have been the basis of a dispute between the parties."

NN Prasad appointed as Chief of Staff to WIPO DG

In a momentous development for India, NN Prasad, Joint Secretary at the DIPP (Department of Industrial Policy and Promotion, Ministry of Commerce) has been selected as the Chef De Cabinet to the Director General of WIPO, Dr Francis Gurry. This is a very high profile appointment, as the post of Chef De Cabinet is akin to the Principal Secretary to the Prime Minister of India.

As many of you may be aware, NN Prasad has been instrumental in changing the face of Indian IP administration. And more importantly, in increasing the influence that India has on the international IP arena. Under his stewardship, India has carved out a nice for itself as a balancer of sorts at international negotiations involving the developed and the developing world. Illustratively, India hosted a development agenda meeting in 2006, where Prasad played a key role in getting the two sides to agree on common themes. Naturally, this is all very close to the middle path approach that this blog has been advocating for a while now.

Prasad’s legacy at the DIPP has been nothing short of exemplary. He was one of the first bureaucrats to take an active interest in the administration of the Indian patent office. He openly supported principles of public participation and transparency and was again one of the first government servants to hold public consultations on the draft Patent Manual. We had blogged about one such event in Kolkata.

Prasad has defended the interests of India and of developing countries as a whole at several international fora. Illustratively, he conveyed his deep displeasure at the recent inclusion of India in the coveted "priority watch list" by the US.

Also, see here for a recent update of the generic drug seizures at European ports, where Prasad has indicated an imminent TRIPS complaint by India. And here, for his passionate statements about the need to protect traditional knowledge through an international framework.

It's no wonder then that Prasad was named as one of the fifty most influential IP thoughtleaders by MIP.

With this plum posting at WIPO, India is likely to become even more influential on the global IP stage. Particularly since there are already 3 other Indians with high level postings at WIPO:

1. Narendra Sabharwal, Deputy Director General,
2. Pusphpendra Rai, IP and Economic Development Division
3. Guriqbal Singh Jaiyya, Director, SME Division

We wish Mr Prasad the very best of luck and are certain that he will make a significant contribution to the current course of global IP. Further, for those of us that remain optimistic about the Development Agenda, the appointment of this brilliant IAS officer from India lends much support to the cause.

On a related note, a "development agenda" book under the stewardship of Jeremy DeBeer, a leading Canadian IP academic, has just been published. This book deals with concrete strategies to take the development agenda forward. I have a chapter with an Italian economist ,where we've categorised India and several other countries as "technologically proficient developing countries" (TPDCs). Our core thesis in this paper is that supporters of the Development Agenda need to explicitly recognise and leverage this TPDC distinction to make the agenda much more effective.

Introducing IndianIPR.com: The Most Affordable IP Database

I chanced upon an IP Database, "IndianIPR.com" and wrote to its founder, Manpreet Singh Sood to find out more.

Upon being given access, I browsed it and found it to be an excellent resource for those of us looking for easy access to tailored India IP Information.

In particular, it contains:

i) Reported IP judgments
ii) All acts of Parliament, rules, forms, circulars and notifications pertaining to Indian IP.

Importantly, the search engine is efficient and comprehensive and throws up results very swiftly. The database is also updated regularly, and the Roche vs Cipla appellate decision found mention immediately after the decision was posted on the Delhi High Court website.

For those interested in accessing its offerings, please click here.

Costs:

IndianIPR.com is a paid site and the annual fee for subscription is Rs 1500. However, for students, NGO’s and students and other non-profits, it is only Rs 750, making it one of the most affordable legal databases anywhere in the world.

Apart from its online database offering, IndianIPR.com also sells CD's containing IP judgments. These CD's are priced at Rs 6000 and are annually updated at a cost of Rs 2000.

Demo Database:

For those of you who wish to try this resource out before subscribing to it, a demo database is provided. Please read the following instructions for accessing the demo database.

Please note that since this is a demo database, it hosts only a few judgments.

Happy browsing!

WHERE DO WE GO? CHENNAI LIVE 104.8 FM ASKS THE MADRAS HIGH COURT

The name of the case is:

Indian Performing Rights Society Ltd. & Ors. v. Branch Manager, Muthoot Finance Private Limited,

Chennai & Ors, [2009 INDLAW MAD 697].

 This case was filed before the Madras High Court by the Plaintiff Copyright Society against the Respondent Radio Channel, the former seeking to restrain the Respondent and it’s agents from communicating to the public, any musical and literary works of the members of the Plaintiff’s Society in the form of a broadcast on their private FM Radio Stations.

In an earlier hearing the Hon’ble High Court granted an ad interim injunction in favour of the Plaintiff Society, the same was being challenged by the Respondents. In its final decision the Madras High Court disposed off the application of the Respondent Radio Station and also gave the final verdict in favour of the Plaintiff Copyright Society.

The Plaintiff is a Co-operative Society registered under S.33 of the Copyright Act, 1957. In lieu of its status as a registered society, it is permitted to carry on business in musical and literary works. The working is as follows: members of the Plaintiff Society compromise of authors, composers and publishers of Indian musical and literary works. All the members have assigned their public performing rights in respect of their musical work to the Plaintiff society. Thus, the Plaintiff’s license the work on behalf of the owners, who are entitled to receive royalty as and when the sound recording is communicated to the members of the public.

The Respondents are engaged in the business of broadcasting private FM Radio Station in the city of Chennai in the name of Chennai Live 104.8 FM. The Plaintiff society alleged that the Respondents had begun unauthorized broadcasting of recorded songs (qualifying as musical and literary works) on their FM Radio Stations, in respect of which the members of the Plaintiff Society owned copyright. The Respondents cannot use or exploit the copyright of the members without duly obtaining licence from the Plaintiff and paying the necessary licence fee/royalty for such use and exploitation. Moreover, unless the Respondents are restrained from broadcasting any of the music and literary works of the members of the Plaintiff in the form of broadcast, the Plaintiff would suffer loss, harm and injury.

The Respondent argued that it had received licenses for the allegedly infringing broadcasts from the Phonographic Performance Limited (PPL). Therefore it was allowed to broadcast the works without obtaining license from IPRS.

Thus, the main question in the case was whether the Plaintiff has established a prima facie case that the respondent radio channel has got no right to broadcast the songs through its FM Station with the agreement of assignment it has entered into with Phonographic Performance Limited (PPL) without obtaining separate licence from Indian Performance Rights Limited (IPRS).

The Plaintiff argued that literary and musical works constitute a separate category of work, distinguished from sound recordings and that these different categories of works don’t merge.  The Court agreed with the Plaintiff and stated that, “It is pertinent to note that the legislature, in its wisdom, has classified sound recording as a separate class of work from that of literary and musical work. The copyright in a sound recording shall not affect the separate copyright in any work in respect of which a sound recording is made as per section 13(4) of the Act. The separate classification of literary and musical work as contemplated under section 13(1) has been emphasised under section 13(4) of the Act.”

The next contention was regarding whether the broadcast of songs on FM amounted to public performance of the works. The Respondents argued that the Applicant’s only had the right over performances of the copyrighted works [meaning they could only issue licenses with respect to performer’s rights] and not broadcast of the works as such, as the same did not amount to a performance under the realm of performers rights. The Plaintiff Society disagreed and stated that, “in the case of literary or musical works, copyright means an exclusive right to perform the above work in public or to communicate it to the public. ‘Communication to public’ is defined under s.2(ff) of the Act and means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display. Therefore, performing literary or musical work in public does not only mean a musical performance in a public place. Broadcasting of the songs involves communication of the music to the public which is heard and enjoyed by them.” The Court agreed with the submission of the Plaintiff Counsel.

Post proving that there was separate copyright for musical and literary works and that broadcasting the works amounted to communication to public, the most important question came up, i.e., respondent radio channel has got no right to broadcast the songs through its FM Station with the agreement of assignment it has entered into with Phonographic Performance Limited (PPL) without obtaining separate licence from Indian Performance Rights Limited (IPRS).

Addressing this question the court held that, “the Government of India had registered two separate Societies one for carrying on the business of issuing or granting licence in respect of literary and musical work viz., IPRS and another one in respect of sound recording work viz., PPL. Thus, unless the Respondent Radio Channel obtains licence for broadcasting literary and musical work of the members of the Plaintiff Society, they have no right to broadcast the songs of the members of the Plaintiff Society. Under such circumstances, if the Respondent Radio Channel continues to broadcast the songs of the members of the Plaintiff Society without getting licence from it, the interest of the Plaintiff and its members would be in jeopardy.”

On this basis the Court concluded that the ad interim injunction already granted by this court was made absolute and the application made by the Respondents was dismissed. 

Parallel Imports and Exhaustion: A Different Framework for Copyrights?

Justice Ravindra Bhat of the Delhi High Court has – through several important judgments – helped advance the understanding of intellectual property law in the country. While his judgments need not necessarily be seen as the only correct point of view, they at least have helped stimulate debate on several important issues. On this blog itself, his decisions have been the subject of much discussion, as evidenced in posts linked here. His recent judgment in CS(OS) No. 1692/2006, Warner Bros. v. V.G. Santosh, is another instance of a well-reasoned judgment which may well give rise to great debate. The case deals with parallel imports and the doctrine of international exhaustion of rights, and Justice Bhat held that the principle is not applicable to cinematographic works. But before going on to examine the learned Judge’s reasoning; a brief look at the facts of the case…

Facts:

The Plaintiffs carried on the business of film production. The films in which they claimed copyright were first published in the United States. Under the International Copyright Order, 1991 read with the Copyright Act, 1991, the plaintiffs therefore claimed copyright in the films even in India. The Defendant was a “movie club / video library” based in India; in the business of hiring out DVDs of popular and critically acclaimed films on rent to Indian customers. The Plaintiffs had not released some of their films in India, but the films had been released in the United States in DVD format. The DVDs were coded according to specific geographic zones. The Defendant legally bought these DVDs in the United States, and imported them into India. They then made available the particular DVDs (which had been legally bought by them) to their Indian customers.

The Plaintiffs alleged that these acts of import and hiring out amounted to an infringement of their copyright. The Defendant stated that the DVDs were bought legally – there was no copy of those particular DVDs. That being the case, it was contended that no infringing copy had been made. Further, relying on the “first-sale doctrine”, the Defendant argued that once a DVD has been legally sold to them by the Plaintiffs, the plaintiffs’ rights in that particular DVD were exhausted. Accordingly, the Plaintiffs could not exercise control over the particular DVDs after the first sale had been completed.

The question then arose before Justice Bhat as to whether the defendants actions of importing the DVDs, as also the giving on rent of the DVDs, amounted to infringement of copyright.

The Court’s reasoning:

Justice Bhat began by noting that whether or not the principle of exhaustion of rights applies, is a matter dependant on the particular statute before the Court. Among the points raised by the Defendant was that the Explanation to, Section 14 of the Copyright Act states, “For the purposes of this Section, a copy which had been sold once shall be deemed to be a copy already in circulation”. On this basis, it was urged that the doctrine of first sale applies in India, and there was no case of infringement.

However, as Justice Bhat noted Section 14(d) of the Act stated that in respect of cinematographic works, “copyright” would mean the doing or authorizing the doing of the following:

i. Making a copy of the film

ii. Selling or giving on hire or offer for sale or hire any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions

iii. Communicating the film to the public

Thus, the content of copyright in case of cinematographic works is different from that in the case of literary works, dramatic works etc. The phrase “copy in circulation” was found in describing the copyright vis-à-vis literary, musical and dramatic works. It found no application in cinematographic works. On a plain reading of Section 14, the phrase was used to limit the copyright in the case of literary, musical and dramatic works only. In defining copyright vis-à-vis cinematographic works, the phrase was not used at all. Thus, Justice Bhat noted that while the exhaustion principle would perhaps be applicable to literary, musical and dramatic works; that would not mean that the principle also applied to cinematographic works.

Under Section 14(1)(d), in the case of cinematographic works, the right is “regardless of whether such copy has been sold or given on hire on earlier occasion”. This is in express contrast to the position regarding literary works. Hence, the nature of the bundle of rights which make up the copyright is different in the two cases; and the wording of the statute did not leave any room for the principle to be applied to cinematographic works. As the Judge put is, “…Parliament having intervened in one category of copyrights to grant a limited kind of exhaustion and consciously chosen not to extend it to others, sleight of judicial reasoning cannot extend its application…” Furthermore, on the question of parallel imports of cinematographic works, the Proviso to Section 51(b)(iv) states that importation for private use of the importer is not deemed to be an infringement. The very fact that this proviso was inserted into the statute would indicate that importation for commercial, non-private use would be tantamount to infringement.

On the face of it, therefore, a plain reading of the statute indicated that the Defendant’s arguments could not succeed. In order to get over this hurdle, the Defendant raised two ingenious pleas. They contended that as a matter of interpretation, there should be no disconnect between various intellectual property laws, and Courts should try to move towards a uniform interpretation and application of such laws. Section 30 of the Trademarks Act, 1999, and Section 107-A of the Patents Act, 1970, permit certain types of use and importation analoguous to that in the present case (see here for the previous discussions on ‘parallel imports’). It was therefore argued that the same should be extended over copyright so as to ensure uniformity between the different laws. Justice Bhat however turned the argument over, and said that if a specific provision allowed such use and import under the Trademarks Act and Patents Act, the absence of the provision in the Copyrights Act is a sure indication that the legislative intent was to not have the same treatment in this respect for copyrights. The other argument raised was that unless the interpretation put forth by the Defendant was accepted, the Copyright Act would be ultra vires the freedom to carry out trade under Article 19 of the Constitution. The Court rejected this argument as well. It was stated, “There is no public interest in insisting that such copies should be permitted, on the ground that the cinematographic films are not made available in the country. If that is the position, the defendant is always free to negotiate the terms of a license, in such of the films as are not available, for the purpose of their publication or performance in India…”

Accordingly, the Court came to the conclusion that the defendant’s actions would amount to infringement of copyright.

A few questions:

The decision itself is rather lengthy, but contains a detailed discussion of the principle of exhaustion of rights, as well as parallel importation. However, was the Court a bit too ‘literal’? Would accepting the defendant’s arguments really have been a case of “sleight of judicial reasoning”, or would it perhaps have been a legitimate exercise of interpretation? Should cases of this kind be decided – as a matter of policy – simply on the question of interpretation of the transaction as to whether a ‘sale’ has really taken place? Once a ‘sale’ takes place, ownership in the particular copy passes. Once admittedly the transaction is a ‘sale’, would it be possible to hold that all rights of the plaintiff in that copy are exhausted; not as a matter of interpretation of statute, but as a matter of the contract between the parties? I look forward to what our readers have to say on these issues…