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.

Ensuring Transparent Functioning: Functioning of Patent Offices to be revamped

Our readers will remember that the Mint and subsequently this blogger had not so long ago reported on alleged bias and corruption that ruled rampant in the Patent Offices across the country. It seems that those reports in fact made an impact! Announcing that the patent offices are now changing the process of examining applications, one of the Controller General of Patent, Design and Trademark (wishing to remain anonymous until an official order was released) further stated to the Mint that the four Patent Offices would henceforth work in coordination.

The controllers currently in-charge of looking into applications and assigning the same to examiners of their choice, could no longer do so. The working of the offices would from hereon work unitedly as far as allocation of patent examination and process granting was concerned.

This move hopes to cure at the very root the problems and deficiencies that the Mint and the AWS Report pointed out in October since instances of bias were hope to be neutralized.

In addition to this extremely promising move, the Patent Offices also now hope to make full use of the centralized and integrated monitoring system installed to ensure complete transparency and error-free patent granting. They further hope to build security by allowing limited authorized access by patent agents.

Kudos to the Government for looking at possible deficiencies of the Offices in a positive manner and ensuring that steps are taken to correct the same. SpicyIP also congratulates the Mint for bringing to light this story and helping increase transparency in Indian intellectual property institutions.

Another Bajaj-TVS Showdown in the Offing?

Readers may recall SpicyIP had extensively reported on Bajaj-TVS twin spark plug controversy around the same time early last year. It appears we will have more meat to chew on this year on a different technology but involving the two auto giants again. Yesterday it was reported in the Business Line that Bajaj was granted a patent 231498 dated March 5, 2009 by the Indian Patent office for its ‘ExhausTEC’ invention”. The press release issued by Bajaj states that ExhausTEC “significantly improves low/mid-range torque in a single cylinder four-stroke engine, employing a chamber of pre-determined volume attached to the exhaust pipe.” Apparently, Bajaj has used this technology in its motorcycles since August 2004 when it filed for a patent on this technology.

On December 12, 2007, Bajaj served a notice on TVS for “potential infringement” when it observed a perceived similarity between its product and the products unveiled by TVS on August 30, 2007. On December 24, 2007, TVS filed a pre-grant opposition before the Indian Patent Office under Section 25(1) of the Patents Act, 1970, opposing grant of patent for this invention which was dismissed by the patent office.

According to a news report in Business Line today i.e. April 4th, TVS has stated that the grant of the ExhausTEC patent to Bajaj Auto does not, in any way, impact its products in the market. The Business Line report states thus:

In a press release issued here on Friday, TVS Motor has said it “is not infringing on the said patent and the grant of this patent has no impact on our business as none of the products of the company utilise the said technology.”

Surprisingly, TVS has gone out of its way to clarify that there is no correlation between the DTSI patent and the exhaust technology; no person with ordinary skill in the art would need to be told this, but it reflects that TVS is probably being cautious and does not want to take any chances. One has a hunch that this may provide more cannon fodder in the future and a much-needed diversion from pharma-centric debates.

Placing Software Piracy Raids in Perspective: A Response by the BSA

Our last post on software raids elicited some very interesting responses. The post was an attempt to highlight the various inequities inherent in some intellectual property raids.

No doubt some of these inequities can be easily addressed by courts that could, whilst granting the order to raid premises and collect evidence, ensure that the business of the raided party is not drastically impacted and that such party is not put to undue losses.

We plan to run a future post synthesizing some of the more recent court orders in this regard 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.

In the meantime, we bring you an interesting perspective on software raids from the Business Software Alliance (BSA), a nonprofit trade association created to advance the goals of the software industry. It is headquartered in Washington, DC and counts all the big IT majors amongst its members including Microsoft, IBM, Adobe, Autodesk etc. Having been at the forefront of some of the leading software piracy actions in India, the BSA has considerable experience in this area.

Placing Software Raids in Perspective
By BSA India

We, Business Software Alliance (BSA) India, as a non-profit international trade association and voice of the commercial software industry, respond to a post on SpicyIP to ensure that a balanced and holistic picture is represented on behalf of the software industry as a whole, which grapples with serious challenges of piracy at all levels and fights for protection of software intellectual property (IP).

Independent studies conducted by internationally reputable research organizations have found unequivocally that PC software piracy results in significant damage to the domestic economy through negative impact on a nation’s GDP, jobs and tax revenues to the government. It is in this regard that we wish to present a broader and more balanced perspective to the discussion chain below.

Interestingly, while the author of the blog has openly painted all actions of the software industry with one brush, in fact one stroke, and has used a title (“court extortion”) demeaning to the courts, the author has chosen to remain anonymous, calling into question the motivation of the author. This practice of anonymity should be discouraged in issues of academics and research.

At the very outset, we need to establish that engaging in the use of unlicensed software is a criminal offence and is also subject to potentially severe civil consequences under the Copyright Act, 1957. Managers of businesses large and small have a choice. They can abide by the law and use licensed software or ignore the rule of law and seek a commercial advantage by using illegal software. Regrettably, we find that many managers knowingly choose to flout the law, which speaks volumes about business ethics and disregard for IP rights. What is astonishing is the knee jerk reaction, as the one raised by the anonymous author, of what happens when one gets caught. Knowingly breaking the criminal and/or civil laws of a country is a serious matter with potentially unpalatable consequences. To spin the consequences of one’s own illegal acts and point the finger at the software industry and the courts is approaching the very limits of credulity.

The fact is, the software industry in India is one of the leading lights in the economy and has benefited from protection of software, including in international markets. It has brought an untold number of jobs and improved the livelihood of millions. But maintaining the reputation and growth of this sector of the economy is a very delicate exercise. Acts such as the blatant disregard for the IP of others such as in the indiscriminate use of unlicensed software in the workplace causes untold harm to the reputation of India and also to the potential new investments into the software industry. With software piracy levels hovering at 69% in India software related revenue, jobs and government taxes are stunted.

A copyright violation under Section 63 B of the Copyright Act, 1957 (the Act), is a cognizable criminal offence where, upon complaint, police can raid and arrest officials of an infringing company and seize all evidence. In view of the unequivocal provisions contained under Section 69 of the Act, all persons responsible for the conduct of affairs of the company concerned, are liable for imprisonment and fine. While this strong legal remedy is available in India, as is in most other countries, in India, software companies more typically take select action against end-user piracy through milder civil actions. At the same time, the software industry engages in educational campaigns to promote the use of software asset management (SAM) within organizations.

Coming to the issue of Civil Search and Seizure process adopted by the court, we have no hesitation in saying that Indian courts have been pro-active in attacking piracy of all kinds, not just software, while being cautious of the remedies granted to the plaintiffs. In the past few years, Courts have themselves built-in safe guards to protect the interest of the defendants at the ex-parte stage itself, such as data back-up, and security cost in appropriate cases. Out of 100s of cases filed over the last 10-15 years, there has not been a single software anti-piracy case where an incident of abuse of the court order has been brought to courts attention and courts have held the plaintiffs liable.

1. The visits of the Local Commissioner to the premises of the Defendants are ‘unannounced’ because the Court Order recognizes the fact that an element of surprise is imperative in such cases and if prior notice were to be issued, the very purpose of conducting a software audit to determine unlicensed software usage, would obviously be defeated. The digital nature of software allows itself to be removed, deleted, uninstalled, stored and transferred with ease and speed. It is for this reason that the Defendants are denied the courtesy of prior notice. It is pertinent to note that a Division Bench of the Delhi High Court which laid down detailed guidelines on the issue of appointment of Local Commissioners in software cases, highlighted the importance of an element of surprise in gathering evidence relating to pirated/unlicensed software usage and held that unless an element of surprise is not preserved, the suit filed by the Plaintiff itself would stand frustrated.

2. The Court Orders which envisage backup of data, clearly stipulate that the backup of data could only be permitted in cases of data created through licensed software of the Plaintiff or through use of third party software. In stark contrast with what is alleged, this is not a distinction that is made by the Plaintiff’s lawyers. An impression is sought to be created that the Plaintiff’s lawyers overreach the Orders of the Court and read in conditions that are non-existent. It is extremely regretful that the writer of the blog has not read or has chosen to ignore what is clearly stipulated in the Order, for purposes of backup. We would like to stress that the industry always errs on the side of caution and a case in point is where over 500 unlicensed/pirated installations were found and yet no seizure was effected since there was no time left for the Defendants to make backups of their data, as directed by the Court. At the request of the Defendants, the systems were not seized and were left in an unsealed condition.

3. A Division Bench of the Delhi High Court, while laying down guidelines for appointment of Court Commissioners in software piracy cases, underscored the objective of appointment of Court Commissioners by holding that the purpose of appointing Court Commissioners is not to collect evidence but to preserve infringing evidence. Suits instituted by copyright owners for software piracy are also inter alia, for damages. In the absence of the media containing infringing software being taken into custody, it would be impossible for the Plaintiff to establish that the Defendant concerned actually illegally used the software as opposed to merely installing the same on its computer systems.

4. The audit of the Defendant’s computer systems are always done in the presence of the defendant’s IT personnel and once an inventory of the software contained on the systems is made, the defendants are called upon by the Local Commissioner, to furnish corresponding licenses. Contrary to the claims of the writer of the blog, the Local Commissioner, an officer of the court, arrives at an objective determination of what software is licensed and what is not, based on the licenses, if any, produced by the defendants themselves and not on the basis of the Plaintiff’s lawyers’ claims. In fact, a copy of all licenses produced by the Defendants is annexed with the Report filed in Court in terms directed by the Court. It is pertinent to note that in case any additional licenses are subsequently found by the Defendants, the defendants may move an application in Court seeking de-sealment of their computer systems.

5. It is not unusual for defendants to insist that settlement discussions commence immediately after the local commission proceedings have been concluded. There is obviously an urgency to enter into an out-of-court settlement and the fact that the Plaintiff’s lawyers agree to discuss a possible settlement, after several hours of hard work, can by no stretch of imagination be considered being unreasonable. On almost all occasions, the Plaintiffs have shown objectivity in optimizing the actual usage of the defendants and have accepted post-inspection usage requirements, which is substantially lower then what was actually found to be in actual use. It is curious that, on the one hand, the blog writer claims that the Plaintiff does everything in its power to delay the matter and in the same breath, claims that the Plaintiff’s lawyers are in a hurry to forge an out-of-court settlement. In any legal dispute, an out-of-court settlement is always the preferred option as it enables parties to move on after settling their disputes rather being involved in a long drawn litigation for years. Finally, all out-of-court settlement terms are reviewed by the Judge concerned and only upon satisfaction of the legality of the same does the Court pass a decree in terms of the settlement.

6. Contrary to the claims of the blog writer, there has not been a single case of any adverse publicity being given of any end-use court matter involving a company or an organization involved in usage of pirated/illegal software. Although the press is free to cover court proceedings and peruse court records, software publishers have always been alive and sensitive to these issues and have actively respected the privacy of these proceedings for all concerned.

7. It must also be emphasized that most software companies follow a series of escalatory steps prior to initiating legal proceedings in the form of a civil suit. Initiation of an action is most often preceded by a series of letters/personal visits of company representatives, appealing to the end-user concerned to refrain from using unlicensed software and engage in a Software Asset Management exercise so as to identify shortfalls in licenses. It is pertinent to note that such audits are offered free of cost by most software companies. In other words, a legal proceeding is initiated most often as a matter of last resort when companies brazenly continue to use unlicensed software without paying heed to the legitimate demands of the software company concerned.

8. Lastly, the Court, while granting Orders for appointment of Local Commissioners, is doing so on account of being prima facie satisfied of the case of the Plaintiff. It is pertinent to note that the investigation enquiries are articulated in the form of a sworn statement and if the falsity of the contents of the statement is subsequently established, the consequences would obviously follow.

We hope the above observations give an objective, non-personalized analysis of the situation to the readers. We regret that the tenor of the blog writer seems to suggest that all equities must favour an entity that is deliberately and brazenly engaging in pirated software usage, with complete disregard to the legal rights of software companies, which are critical for the survival and sustainability of these companies. It is also important to point out here that respect for these legal rights will not only protect existing software companies but also provide a secure space for nascent IP owners in India at the threshold of marketing their new product and benefiting from their innovations.

THE HITCHHIKER’S GUIDE TO OFFSHORING PATENT SERVICES TO INDIA

Research and Markets, one of the world’s largest research resources, has recently released a guide to Offshoring Patent Services to India. The report gives an exhaustive account of the Indian patent services offshoring industry, and deals with topics ranging from the present market players and future growth figures.

The report, first of its kind on the Indian market, provides an in-depth analysis of the buyer market as well as the Indian vendor space along. Based on secondary data as well as extensive interviews with key people (buyers of patent services, patent attorneys and offshore patent service providers), it makes a must buy for those who are practicing or otherwise interested in the area. For more information on the report one can check out the table of contents available on Research and Market’s webpage and/or the following link:

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Typically catering to the international markets, patent services outsourcing to India is still in its infancy with a history of only about 3 to 4 years behind it. There are about 50 vendors in the industry with an estimated 1,550 professionals employed as of end 2007. While a few vendors have been in this business longer, this industry has gained momentum only in the last
few years….

Patent services include a wide range of specific tasks or services. We have divided these services into the following broad areas: Patent searches, Patent illustration and proofreading, Patent drafting, Patent analytics, Patent asset management, Patent litigation support and Patent consulting.
Among the various functions in the patent services industry, the manpower intensive and process driven services are more easily offshored. The relatively low-value, high volume services include prior art searches, patent illustration and patent proofreading. Large corporations are in favor of offshoring patent related (and other legal) work to India as they are the ultimate beneficiaries of the cost savings. The current addressable value of the patent services offshoring
market is estimated at $2.2 billiom. According to Subha Kalathur, analyst and co-author of the report, "Indian vendors have significant opportunity to grow as the current addressable market is 50 times the current size of the industry. Having already established relationships with American companies and law firms, vendors also have significant opportunity in taking on work
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This report is designed to help:

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A few updates on Global IP

Seizures on Drug Consignments

At the recent WTO TRIPS meeting, India and Brazil, along with 9 other developing countries strongly criticised the EU for its attitude towards generic medicines in transit between developing countries. On 26th of March, Indian officials said that they will be ready to drag Brussels to the World Trade Organisation (WTO) if they do not change their stance on allowing Indian drugs transit through EU customs even after their bilateral negotiations. In previous posts, we have pointed out the wrongful seizures of the generic drugs in transit by the EU custom officials. Indian officials have described these seizures as acts of piracy by the EU. There could perhaps be a link between this and another on going disagreement surrounding the issue of the definition of "counterfeit" as per the WHO mandate. (see our previous post here)

Latha Jishnu has provides a detailed list of consequences to the current choking of Indian generics here.

ACTA suppressed for reasons of National Security?

One would think that the new Obama government would be less likely to try pushing matters under shrouds of secrecy, especially in the light off Obama's campaigning that only transparency could restore the citizens trust in the government. However earlier this year, in response to a Freedom of Information request for documents on the ACTA negotiations, USA's foreign trade office claimed that the documents are “classified in the interest of national security.” How National Security comes into the picture is anybody's guess. USA is not the only one being criticised for keeping the ACTA proceedings under wraps. Severe criticism has come in on the Canadian Government and EU as well. Michael Geist from Canada has put together a comprehensive timeline of events that the ACTA has gone through, starting all the way from lobbying back in 2004.
While on one hand they are claiming secrecy for reasons of National Security, on the other hand, there are a large number of corporate lobbyists who have been let in on the negotiations. (Click here for a list of parties which have access to the documents.)
Recently in the EU, the EU Parliament has demanded more transparency from the EU, specifically pointing out the ACTA.
There's an excellent article here which analyses the problems and consequences of the ACTA and its secret negotiations.

Microsoft and TomTom settle
After some anticipation as to how the suit would go, TomTom has finally bowed to the (financial) pressure and has agreed to a settlement with Microsoft. The terms of the settlement are said to be in compliance with the GPL license, with TomTom paying Microsoft for for coverage under the patents in the Microsoft case, and with Microsoft also recieving coverage under the 4 patents included in the countersuit. TomTom also is to remove functionality related to two FAT patents.

Earlier, there had been some sort of promise of a fight, with a countersuit being filed by TomTom after Microsoft had initially filed a suit for patent infringement over some kernels, support for which is implemented by Linux. Further, TomTom then joined Open Invention Network (OIN), a company which (as per Wikipedia) "acquires patents and licenses them royalty free to entities which, in turn, agree not to assert their own patents against Linux or Linux-related applications". This lead to a wide-spread belief that Tomtom would fight it out in court, as opposed to the rather tame end that eventually occured. The settling of the case(s) however, means that the question of Microsoft's FAT patents validity is yet to be tested in court.

Groklaw has provided a detailed coverage of the settlement.


G20 considering Global IP Court?
On a lighter note, IP-Watch, IP Think Tank and IP-Kitten have posted on a G20 summit agreement for a Global IP Court to come up by 2012.
"The Chinese have suggested that this Court be located in China, since that is where everyone says most infringing products are made."
On a lighter note" because, besides a few confused bloggers, the consequences of this, would not reach beyond April 2nd, 2009. A well carried out April Fools joke carried out by these widely read blogs!