Design v. Copyright- Need for a Clear and Rational Distinction- II

In the last post, I had given a prelude to the controversy surrounding s.15 of the Copyright Act stating that (1) anything that is an “artistic work” under the Copyright Act cannot be protected under the Designs Act, 2000 and (2) a work which is capable of being registered as a design under the Designs Act, 2000 would not be entitled to protection of any kind from either the Copyright Act or the Designs Act, 2000 so long as it remains unregistered.

On the face of it, these conclusions seem straightforward but how does one decide if a particular work is an “artistic work” or a “design”? This question needs to be answered clearly because there is a possibility of someone wrongfully claiming protection for the work under the Copyright Act as an artistic work if he has failed to register it under the Designs Act, 2000. Therefore, a clear point of segregation is necessary to prevent mischief of this nature.

Further, under the existing framework, if a work is decidedly an artistic work under the Copyright Act, does it remain within the purview of the Act even after it has been applied to an article by an industrial process for over 50 times? The answer prima facie appears to be in the affirmative because there does not seem to be anything either in the Copyright Act or the Designs Act, 2000 to suggest cessation of the copyright in the artistic work.

This stands in contrast with the UK Designs Act which stipulates that once an artistic work has been applied industrially, it loses copyright protection and is to be governed only by the Designs Act. Notwithstanding the absence of such a provision in the Designs Act, 2000, a purposive approach can be taken here to argue that copyright in an artistic work ceases to exist the moment it is applied to an article by an industrial process because firstly, copyright under the Copyright Act gives the owner the right of reproduction, 2D or 3D and not application to an article; and secondly, if the owner is allowed to continue enjoying the copyright, it would mean he gets to exclude others from applying the work to articles for the entire term of the copyright as opposed to a shorter term prescribed under the Designs Act, 2000.

This defeats the very purpose of the Designs Act, 2000 which governs the application of a work to industrially produced articles; consequently, a purposive construction of the 2000 Act would lead us to conclude that copyright in an artistic work ceases to subsist when it is industrially applied over 50 times (or even once?) to an article. This means that in effect the 1911 Act and the 2000 Act remain the same (barring subtle differences) in their intent.

To answer the question of a test for what constitutes an artistic work and what is a design, let us return to the discussion on the judgment of the Single Judge in Microfibres v. Giridhar, the facts of which were discussed in the last post. The Judge, rather the Court, undertook an analysis of the interplay between the relevant provisions of the Copyright Act (s.2(c), s.15), the Designs Act, 1911 and that of 2000.

The first issue as part of the analysis before the Court was if there existed copyright in the work of the plaintiff to begin with. The plaintiff’s contention that his work was protected as an artistic work under the Berne Convention was dealt with and the Court observed that since registration was not a condition precedent to the existence of a copyright in the work, lack of registration with respect to certain works of the plaintiff was not a relevant factor to be considered.

The plaintiff then contended that s.2(c) of the Copyright Act did not indicate that the intent behind the work was to be considered before according copyright protection to it as an artistic work; in the view of the plaintiff, originality was the essential prerequisite which if satisfied led to the vestation of copyright in the work. It was further submitted that rearrangement of old material too could lead to an original work.

The defendant’s counter to these points are worth reading because the above arguments could have been accepted in the absence of the Designs Act, but where there exists a separate legislation for the protection of designs, it becomes necessary to have a basis for distinguishing an artistic work from a design.

The defendant pointed out that the arguments of the plaintiff were based on the premise/assumption that the work in question was an artistic work, but such premise was never justified or explained. Since the very premise of the plaintiff’s submission was under question, it had to be answered before proceeding to other issues. The defendant argued that the impugned work had to be considered a design for the purpose of its creation was application on upholstery fabrics using an industrial process. In other words, what was being suggested was that anything which is created for the purpose of application on an article using an industrial process was the subject-matter of the Designs Act and not the Copyright Act.

According to the defendant, the only possible category the work could fall under, in the Copyright Act, was a “painting” under s.2(c), but this required the work to have an independent existence i.e. the sole purpose of its creation must not have been for application on an article by an industrial process. The question which comes to one’s mind is, does this proposition mean that anything which has an independent existence (and hence treated as an artistic work) has to be deemed unworthy of application by an industrial process? Conversely, does this mean that the sole criterion by which a design is treated as one, is its inability to stand on its own feet? The former question was answered earlier in this post using a purposive approach.

As for the converse, the argument put forward by the defendant has to be examined. According to the defendant, since a design does not contribute to the functional features of the product, is merely ornamental and is intended to provide only a visual appeal, it follows that it is incapable of having an identity of its own. Therefore, according to the defendant, the floral design of the plaintiff which conformed to these requirements was not an artistic work, but a design.

This line of argument was sought to be buttressed by the decision of the Privy Council in Interlogo v. Tyco Industries, where it was held that the whole purpose of the design legislation was to protect works which did not have independent artistic merit and assumed significance only on application to an article.

I feel that this point of the Privy Council does have merit in it for the following reasons; the difference between the right given to a copyright owner and a design right owner is of critical importance here. A copyright owner can prevent others from reproduction of the work itself whereas a design right owner can prevent others from applying the design to articles, but not for reproduction of the design itself which points to the fact that designs derive their identity only in conjunction with the articles they are sought to be applied to, which is not the case with a copyrighted work. Also, the presence of a classification for goods in the Designs Act and the absence of one in the Copyright Act only goes on to support this proposition.

To this extent, the submission of the defendant sounds reasonable, but does the logic explained above apply to the floral designs in question? I am not sure if one can say that floral designs are incapable of having an identity of their own. That apart, a further point made on behalf of the defendant is capable of being misinterpreted; here I reproduce para 53 of the judgment:

"The defendants contended that the legislative intent behind the repealed Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the same and the exclusion of 'artistic work' in the definition in the new Designs Act, 2000 is only clarificatory and was intended to exclude only artistic work pure and simple such as paintings, sculptures and works of art."

Broadly speaking, this submission might be correct, but there are subtle yet critical implications of the repeal of the 1911 Act and the promulgation of the 2000 Act which I had attempted to bring out in the last post, saying that under the erstwhile Act i.e. 1911 Act, copyright came into existence in the design as an artistic work upon its creation and subsisted until it was registered or had been manufactured by an industrial process for less than 50 times.

However, under the current Act of 2000, there exists no copyright or any monopoly of any kind in a design (if it satisfies the definition of a design) until it is registered and that it remains an orphan so long as it remains unregistered. This logic seems to have received the endorsement of the Court in the case of Samsonite Corp. v. Vijay Sales in which it was observed thus:

“If they (the impugned works) were designs and had not been registered under the Designs Act, they were not subject to copyright protection.

This was reiterated in AGA Medical Corporation v. Faisal Kapadi as follows:

“This Court on a consideration of the matter and more particularly the meaning of copyright and the definition of 'design' in the Designs Act is, prima facie, of the view that the plaintiff does not have a subsisting copyright under the Copyright Act, firstly; because it is capable of being registered under the Designs Act though it has not been so registered…”

Applying this logic to the facts of the instant case, the Court ruled that in such cases, the object behind the work could not be lost sight of in deciding if a work was an artistic work or a design. The second factor was the ability or otherwise of the work to hold its own. The Court ruled that since the object of the floral designs was its application to the upholstery fabric i.e. industrial use, the first condition had been satisfied. The Court then proceeded to conclude, without sufficient elaboration, that the design was incapable of having an independent existence.

On the basis of these conclusions, the Court ruled that the work of the plaintiff would fall under the Designs Act, 1911 and since it had been produced for more than 50 times, copyright in the work had ceased to exist. Further, as there was no registered design in respect of the work, there was no valid claim in favour of the plaintiff.

As Mihir had rightly asked, I am not sure of the wisdom of using the object behind the work as a guiding light in deciding its status. Here’s a hypothetical to explain why; the author of a work may not have intended to commercially produce the work which means it could be treated as an artistic work, subject of course to its ability to have an identity of its own. Subsequently the author may assign to another person the right to apply the work industrially for less than 50 times.

If the thumb rule to decide if a particular process is an industrial process is the 50-time rule, then does this mean that the work remains an artistic work despite the object of the use of the work undergoing a change? Also, should'nt we be distinguishing between the object behind the creation of a work and the object of its subsequent use?

The point which one is trying to convey here is that a hierarchy of values is necessary if one is to decide which is the more objective criterion and which ought to come first- the object or the stand-alone capacity of the work.

Even when it comes to the question of an independent identity, the Court did not elaborate sufficiently on what would accord a work such an identity because only then would it be possible to separate an artistic work from a design.

The alternative to the “object test” and to do away with this confusion would be to use the object of the Designs Act and stipulate that any work, be it an artistic work or a design, if applied to an article for commercial purposes using an industrial process even once, would immediately fall within the ambit of the Designs Act. Therefore, if the author/owner of an artistic work intends to apply the work to an article, he has to register it under the Designs Act or stand to lose his copyright if it is applied to an article but remains unregistered.

In the next post, we shall discuss the judgment of the Division Bench on this case.

South Africa's Bayh Dole Regulations

While India is awaiting parliamentary consideration for its own Bayh Dole Bill, another developing country, South Africa has just come out with Draft Rules (available here) for its own version of this IP legislation. The new Rules as well as the new Act itself, which was initially circulated in some secrecy, is sparking a debate between two sides. One side is claiming that it is unconstitutional, that it may stifle innovation and that it breaches WHO commitments. While the other side is saying that it promotes research by providing incentive and providing funds. Sounds familiar? (for simplicity's sake, the US, SA and Indian versions of the Bayh Dole legislation will be referred to as USBD, SABD and IBD respectively)

SpicyIP has already carried a series of posts on the IBD and the similar debate that it had sparked. The main problem being (aside from the secrecy in which it was initiated), in short, to re-iterate from a previous post,

"The Indian bill, much like its US equivalent is premised on the assumption that intellectual property rights are the best way to drive innovation. The more IP, the better for innovation. There is plenty of literature that casts strong doubt on this lopsided view."

For those joining us late, the USBD was introduced in 1980 to promote the patenting of publicly funded research by Universities and licensing to private firms. The assumption was that this commercialisation would add more incentive in the form of economic growth, for research in sciences. Indeed, as Mr Harry Thangaraj has pointed out (in this article) , it has facilitated and incentivised the translation of research into essential goods and services. At the same time however, without the appropriate safeguards, there is the danger of it not protecting public interest as it should.

Looking at the SABD, critics are worried about several factors.
Firstly, that the patent-centric commericialization nature of the Bill underestimates and is hostile towards Open Source and Open Processes. They point out that several crucial decision making posts are in the hands of bureaucrats. These include boards which are required to impose reviews at the national and international level before approving of open approaches. Worries are voiced about the tendency of such a board to shift focus from public interest, to a more business like profit-oriented approach.

IPWatch points out that the SABD is also in opposition to many of the recently adopted WHO provisions on global strategy and plan of action on public health, innovation and intellectual property. The global standard is set on becoming more focused on open access of resources on public health. This goes hand in hand with regional, national and international collaborations and knowledge transfer, including methods such as patent pools, open licensing, open access to research publications and data, etc. These efforts would face severe road blocks with the SABD and the National IP Management Office (NIPMO) formed under it which is responsible for assessing decisions about IP protection on inventions and innovations made by Universities. Eve Gray, on IP-Watch has stated that the Act “casts its wide net to include potential IP and patent protection in any legislation in the world,”. Databases, research methods, business processes, software and collaborative research ventures will be subject to scrutiny by NIPMO to ensure that publicly funded research is kept in South Africa, she said. The WHO plan of action doesn't exclude the parallel traditional patenting, though it does include safeguard measures to ensure that public health goals are not lost in the process. Eve Gray, in her blog, puts forward the suggestion that it would perhaps be appropriate for "for public health departments in our universities and their researchers to submit a request to the DST for the withdrawal of the Regulations for further consideration of the issues at stake by all the government departments that might be involved in this potentially embarrassing clash. "


In a well written piece jointly written by several prominent US based academics (So AD, Sampat BN, Rai AK, Cook-Deegan R, Reichman JH, et al) the authors have examined the effect that mimicking a Bayh-Dole legislation would have on developing countries. They note that there seems to be a wide-spread belief that the USBD was a factor in spurt in research and development that came with the growth in the economy over the last 20-30 years. The paper challenges this belief stating that the role of the USBD was very overstated, and in fact, that a significant share of the academic patents and licenses which resulted in commercial products, could have been effectively transferred by being placed in the public domain or licensed non-exclusively. They also shoot down the belief that it acts as a revenue generating mechanism for laboratories as studies show that most labs barely manage to even break-even. According to the article, the head of the technology licensing office at MIT (and former President of the Association of University Technology Managers) notes that “the direct economic impact of technology licensing on the universities themselves has been relatively small (a surprise to many who believed that royalties could compensate for declining federal support of research)… [M]ost university licensing offices barely break even”

They also delve into the necessary safeguards, such as ensuring exclusive licensing is limited only to cases where it is necessary for commercialisation, transparency, govt access, etc. Read their paper here for more details.

Meanwhile, on the other side, there are those who support the legislation. As reported in IPWatch, Yasmin Forbes, Microsoft’s South Africa national technology officer, stated that it represents 'sound public policy'. There were also those who stated that the concerns pointed out by the SABD's critics are overstated and that the SABD, rather, will drive innovation and economic growth. However, regardless of which side one is on, there is the fact that much of these issues, which are now arising with the Rules, are substantive issues which should have been discussed before the SABD was enacted. Hopefully a statement that will not have to bear re-iteration with the IBD.

Patents, Public Interest and Pricing

In M.C. Jayasingh v. Mishra Dhatu Nigam Ltd. & Ors. the division bench of the Madras High Court dismissed an appeal filed by the Appellant - Plaintiff against the decision of a Single Judge disallowing the interlocutory application of the Plaintiff.

The facts in brief are as follows: The Appellant – Plaintiff had filed an infringement suit against the Respondents – Defendants on the ground that the latter were infringing his patents for prosthesis, more specifically, Custom Mega Prosthesis - Knee Joint Prothesis (subsequently referred to as ‘CMP-KJP’). The prosthesis, made of titanium alloy or medical grade stainless steel, were manufactured and marketed by the Appellant as CMP – KJP and were used in limb salvage surgery.

In his infringement claim, the Plaintiff - Appellant stated that for manufacturing prosthesis he use to purchase titanium from the First Respondent - Defendant, Mishra Dhatu Nigam Limited (MIDHANI), who is the sole producer of titanium products in the country. Issues arose when, after a passage of time, the First Respondent refused to supply titanium alloy to the Appellant and post this refusal the First Respondent, in partnership with the Second Respondent, Apollo Hospitals, began to manufacture and sell prosthesis, marketed as “Apollo Midhani Prosthesis” to hospitals, including Apollo Hospitals. The Appellant became aware of the First Respondent’s alleged infringing activities through a newspaper report on such limb salvage surgeries conducted by doctors of Second Respondent, wherein it was stated that they purchased the prosthesis from the First Respondent.

Furthermore, the Appellant also contended that he had been supplying CMP-KJP to the Fourth Respondent, namely, Cancer Institute (W.I.A.), Regional Cancer Centre, Adayar, Chennai. However, in spite of the fact that limb salvage surgery is continued in the Cancer Institute, all of a sudden, the Fourth Respondent stopped the placement of order for the prosthesis virtually without any reason. Thus, presumably the institute was manufacturing and producing the concerned invention internally.

On these grounds, the Appellant contended that Respondents 1 to 4 were making, using, selling and distributing the patented CMP including CMP-KJP by infringing his monopoly rights and asked for an injunction against the Respondents.

The Respondents in turn challenged the validity of the patent and claimed that the prosthesis used by them was dissimilar to that of the Appellant’s. They further contended that their prosthesis was significant improvement over the Appellant’s version and was also more affordable. It is pertinent to note that the stated price difference was significant, the Appellants’s prosthesis cost Rs. 1,36,000/-, as against the First Respondent's rate of Rs.39,200/-. Respondent No. 1 also argued that it was his titanium implants which made prosthesis, earlier available only in super speciality hospitals, affordable for the common man.

As stated earlier, the Single Judge dismissed the application for temporary injunction filed by the Appellant and the matter was being heard by the division bench on appeal.

The division bench applied the three parameters of (1) Prima Facie case (2) Irreparable Injury and (3) Balance of Convenience to the facts at hand and concluded that the Appellant failed to satisfy any of the criteria.

As regards prima facie case the court held that each CMP-KJP was made as per the specifications and requirements of the patient. Hence, the fact that the Appellant has patent over one model of CMP – KJP cannot entitle him to claim protection over variations of such model. Moreover, on examining the two models, the judges stated that the two models were visually dissimilar and functional similarity alone does not establish a prima facie case. It was stated that, “… since the products of the appellant and the First Respondent were not appearing similar or identical at the initial stage of the proceedings …. Given the fact that the products of the Appellant and also the First Respondent have their own uniqueness vis-a-vis the requirement of the particular patients, a mere functional similarity does not lay a strong ground for granting interim injunction.”

The fact that the bench decided the issue of prima facie case on visual similarity is rather unusual, given the fact that functional elements normally are predominant factors in deciding patent infringement suits. On the other hand, visual comparisons are more of a copyright and design parameter to determine infringement. However, their reasoning was probably directed by the public interest involved and the fact that a determination on the basis of functional similarity would grant the Appellant a very wide patent.

Next as regards balance of convenience the court opined that, “considering the relevance of prosthesis to those who are in need of the same as a life saving equipment, its cost effectiveness and the functional advantage of a customised titanium made prosthesis, ... the balance of convenience [is not] in favour of the Appellant to grant the interim injunction.”

Lastly, the court also held that the Appellant did not satisfy the criteria of irreparable injury. They stated that, “the affidavit of the Appellant was bereft of any details with regard to the loss suffered and likely to be suffered by the appellant on account of the supplies by the First Respondent.”

On these grounds the court dismissed an appeal for an interim injunction.

The case is interesting given the emphasis laid on the public interest involved in access to prosthesis and the same being used as a ground to conclude that ‘balance of convenience’ tilted in favour of the Respondents, because of their ability to provide access to medicine to the public at large at an affordable price.

Furthermore, the question is, whether there a trend catching up in the judiciary wherein the ‘public interest’ factor is used to tilt the balance and decide an injunction application. This approach was also seen in the tarceva patent case, dealt with in earlier posts.

Finally, a rather disturbing trend in the judgment is that the judges kept confusing the intellectual property involved. Though concerned with patents, they spoke about infringement of copyright and design rights. Given the fact that they possibly confused standards applicable in deciding the existence of a prima facie case, the confusion in terms of the intellectual property being dealt with is rather undesirable.

SpicyIP would like to thank Sandeep Rathod for bringing this case to our attention. Also, I would like to thank Shamnad for his suggestions and inputs on this post.

The Mint Is Looking for Legal Correspondents

The Mint, a leading business paper, is looking to hire legal correspondents/analysts. Pay will be commensurate with the best in the industry (and will depend on years of experience etc). So for those of you looking to combine law with journalism, this presents a great opportunity.

If interested, please write to Anil Padmanabhan (anil.p@livemint.com), Deputy Managing Editor, Mint for further details. Also, please pass this on to folks that might be interested.

As many of you are aware, we've often featured Mint articles on this blog. Of the various newspapers today, Mint's IP news reports/analysis (by journalists such as CH Unnikrishnan and Radhieka Pandeya) stand out as being extremely well researched and nuanced. Further, their science and technology reports by Jacob Koshy and Seema Singh are a terrific read. And so are their law reports by Malathi Nayak.

In fact, recently, Malathi Nayak did two outstanding pieces focussing on India's leading IP attorney, Pravin Anand. We'll run a separate feature on this soon.

So for those of you looking to explore this wonderful opportunity to combine legal and journalistic skills with India's leading business paper, you will be in very august company.

The Dual SIM (Ramkumar) Patent Murder: Vikas Partner Arrested

The Hindu reports that Rajamani, one of the partners in Vikas Systems (the collection agency that worked for Ramkumar) was arrested for the gruesome murder of Sankaran Diwakaran:

"One person was arrested on Wednesday in the case pertaining to the murder of a businessman, Sankaran Diwakaran, in K.K.Nagar on May 1. The arrested person, Rajamani, was a partner in the victim’s company.

Business rivalry has been cited as the motive behind the murder.

Sankaran Diwakaran was hacked to death by a group of men who came on motorcycles. The company was founded to market dual SIM technology in mobiles. There were regular conflicts between the victim and Rajamani over profit-sharing, according to a police press release.

Rajamani has been charged with hiring contract killers from Madurai and Dindigul with a motive of killing Sankaran Diwakaran. Special teams have been formed to arrest other accused in the case."

From this latest arrest, it would appear that neither Ramkumar nor his lawyers had anything to do with this dastardly act. In fact, our own investigations reveal as below:

i) Vikas Systems was set up specifically to help Ramkumar exploit his patent.

As an aside, I couldn't help thinking that India needs more agencies of this sort...but ones that would help a legitimate inventor commercialise his/her invention. As many of you appreciate, Lab to Market is the most difficult part of the "innovation" matrix. It would have been terrific if someone had helped Ramkumar to develop a product out of his patent (assuming of course that his patent supported "simultaneous dual SIM communication"). In its revocation petition before the IPAB, Samsung alleges that Ramkumar does not "enable" the patent in any way and that his patent lacks sufficient disclosure. Further, one of our commentators to an earlier blog post had noted that the claims and specification merely describe what is desired to be achieved rather than how it is to be achieved.

ii) Sankaran Diwakaran was the main brain behind Vikas Systems and went around India, convincing several customs authorities to block dual SIM imports.

iii) Apart from Diwakaran and Ramkumar, the other partners in Vikas Systems appear to be Rajamani, Murugesan and James. The arrangement was that Ramkumar being the patentee, would get 60% of the royalties, while the other partners would get 40%.

iv) It appears that Diwakaran was quite unhappy with the fact that Rajamani was not putting in enough work into Vikas' royalty collection efforts. He was therefore planning to call a board meeting seeking to reduce Rajamani's share in the royalties (out of the 40%). This angered Rajamani, who collected some thugs from Madurai and hacked Diwakaran to death in broad daylight in KK Nagar, Chennai.

Design v. Copyright: Need for a Clear and Rational Distinction- I

In an earlier post, Mihir had crisply and clearly brought out the conundra posed by s.15 of the Copyright Act in drawing a distinction between works protectible under the Designs Act and those which may be bestowed with copyright protection, using 2 judgments delivered by the Delhi HC, one by the Division Bench in Rajesh Masrani v. Tahliani Design and the other by a Single Judge in Microfibres v. Giridhar. On the 28th of last month, the Division Bench of the Delhi HC delivered its judgment on the appeal filed in the latter case by Microfibres which is of considerable significance in resolving the dilemma the provision poses.

Before I proceed to discuss the DB’s judgment, I think it proper to briefly discuss the judgment (rather the facts of the case) delivered by the Learned Single Judge. The plaintiff Microfibres filed a suit against the defendants Giridhar and Co. and Ors. for infringement of its copyright in the “artistic works” applied to upholstery fabrics and for attempting to pass off its goods as that of the plaintiff’s.

The plaintiff submitted that what was printed on the upholstery fabrics fell under “unique and original artistic works” which were conceptualized and drawn/printed either by the plaintiff’s employees or the copyright in which was assigned by other persons to the plaintiff. What is borne out from this submission is that the purpose/objective of these “artistic works” is their application to the fabrics. We shall see, as we proceed with the discussion, the role of this factor i.e. objective, in drawing a distinction between “artistic works” as defined in the Copyright Act and “designs” as defined in the Designs Act of 1911 and the Designs Act, 2000 which is currently in force.

It was further submitted by the plaintiff that he had obtained copyright registration in respect of some of these drawings and that violation of copyright was being alleged even in respect of those which did not have a registered copyright, for in the plaintiff’s view, copyright subsisted in them as “artistic works” under s.2(c) of the Copyright Act. In 2002, the plaintiff discovered that the defendant was selling inferior fabric which allegedly used the “artistic work” of the plaintiff thereby infringing the copyright in it besides being guilty of passing off.

To this, the defendant countered that the work of the plaintiff did not merit protection under the Copyright Act in the first place and that if at all a valid claim subsisted, it had to be under the Designs Act, 2000 since the works of the plaintiff were designs relating to textile products. The defendant stated that since the plaintiff had failed to obtain a design registration in respect of the works under the erstwhile Designs Act, 1911 and the current Act of 2000, copyright protection was being sought, which claim, according to the defendant, was untenable in the light of the existing framework of both the Copyright Act and the Designs Act.

The other relevant fact which the defendant pointed out was the design registration obtained in respect of the works by the plaintiff in the US and UK in addition to a letter from the Designs Wing of the Indian Office attesting to the fact that the work was registrable under the Designs Act, 2000. Besides, according to the defendants, in addition to the fact that the works did not qualify as “artistic works”, they had to fall within the definition of a design under the Designs Act, 2000 since they were merely ornamental in nature and appealed to the eye. As to the question what qualifies to fall within the definition of artistic work, the defendant submitted that paintings, drawings and pictures which were not industrially applicable fell under “artistic works” and therefore were excluded from the definition of a design. Also, according to the defendant, since textile fabrics were registrable subject-matter under the Designs Act, it implied that they did not qualify to be categorised as “artistic works”.

The next part of the argument tendered by the defendant with regard to s.15 of the Copyright Act is the crux of the issue here which has for long been a bone in the throat of Courts and we shall see if this is so for good reason. According to the defendant, s.15(2) of the Act went against the plaintiff because the provision envisages the cessation of copyright in a design which is capable of being registered under the Designs Act,1911 but has not been registered and has been manufactured 50 times using an industrial process. Before I continue with the judgment, let’s see what the section says and why is it so contentious.

S. 15(1) of the Copyright Act states with zero ambiguity that copyright shall not subsist in any design which is registered under the Designs Act, 1911 and s.15(2) reads thus:
Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

Both the sub-sections speak of the 1911 Act and not the 2000 Act, so one might say that the provision is applicable only to those designs which are registered under the 1911 Act or were capable of being registered under it. There doesn’t seem to be anything in the Act which militates against such a plain and literal interpretation of the section. Further, if one were to go by an internal aid of interpretation, the title of this section reads “Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911”. The primary intention of the section appears to be to prevent the owner of a work from enjoying simultaneous copyright protection once the work is registered under the Designs Act of 1911 (this means copyright existed in the work prior to the registration and it must have been categorised as an “artistic work”). Another objective appears to be that the moment the owner of an unregistered work decides to apply the work to an article using an industrial process for 50 times, he brings himself within the objective sought to be achieved by the Designs Act, 1911 which is to encourage creativity and therefore cannot enjoy copyright protection which has a longer term.

If this is so, what is the position of something which is capable of being registered under the 2000 Act, but has not been so registered? In other words, is s.15 of the Copyright Act applicable to those designs capable of being registered under the Designs Act, 2000 but remain unregistered? How long does copyright subsist in such a work, that is, if at all it exists in the first place?

For this, one has to refer to the definition of “design” under the current Act, which is an amended version of the definition as given under the 1911 Act. The definition of a design under the 2000 Act excludes from its purview artistic works as defined under s.2(c) of the Copyright Act. What does this exclusion signify? In simple terms, the exclusion means this- something which is an artistic work under the Copyright Act cannot enjoy design protection under the 2000 Act (please note that this was not the case under the 1911 Act). But what about a work which falls under the definition of a design under the 2000 Act (implicit in this is the conclusion that it is not an artistic work), but has not been registered under the Act? Is it vested with copyright protection by virtue of its creation? No, this is because if it has to enjoy copyright protection, it has to fall within one of the categories under s.13 of the Copyright Act and the only (possible) category is that of “artistic works” (can it fall under any other category?), but if it does fall within such category, the definition of a design itself robs it of design registrability. The end result of all this seemingly tautologous farrago is that the effect of the framework of the Designs Act, 2000 is as follows- something which is capable of being registered under the Act but has not been so registered receives neither design protection nor common law copyright protection, it remains an orphan.

In the next post, I shall discuss in detail the judgment of the lower Court to verify the accuracy of the afore-made conclusions. Further, this logical structure is built on the assumption that if a particular work is presented before a Court, there exists a test by which the work may be objectively slotted as an “artistic work” or as a “design”. What exactly is the test and how objective is the test too will be discussed in the next post.

Delay in Filing a Power of Attorney(POA): Does it Prejudice a Patent Application?

A quick query for our readers in the know:

Although the Indian patents act requires the filing of a power of attorney (POA) along with the patent application, my understanding is that this can be filed at a later stage as well. And attorneys routinely file this later (after date of filing the application). Is this correct?

Do our readers know what the global practice is in this regard? Do the USPTO, EPO, JPO etc require the power of attorney to be filed on the date of filing of the patent application or later? Or are they generally lax about this and do they permit a later filing (or does their statute or other notification etc permit such later filing of the POA).

And does the same position apply with respect to trademark filings as well?

Introducing GIIP: A Leading Indian IP Training Institute

I have the great pleasure of introducing the Global Institute of Intellectual Property (GIIP) to our readers. Many of you are likely to have already heard of this leading IP training institute that has notched up a commendable reputation in the short span of 2 years that its been around.

GIIP, headquartered in New Delhi is the brainchild of the legendary silicon valley entrepreneur and TIE founder, Kailash Joshi. With a recently opened branch in Bangalore and a new collaboration with Delhi's National Law School (headed by Dr Ranbir Singh), this institute is slated to set global standards and help India generate well trained and well qualified IP professionals. It has also struck a deal with the world's leading IP exchange, OceanTomo to offer courses in IP management and valuation.

Importantly, for those of our readers who wish to hone their IP skills and make themselves more employable in the current market, GIIP has begun accepting applications for the coming year, beginning July 2009. If you wish to register for their IP training programs, please click here.

I met Atulya Nath, the vibrant director of this institute recently and was impressed with the infrastructure (great IP library), the curriculum, faculty and most importantly, the vision that he has for GIIP.

SpicyIP Discount on Fees

Luckily for us, he agreed to offer a 10% discount to any SpicyIP reader that wished to register for any of the GIIP programs. To avail of this discount, please mention that you heard of the program through SpicyIP in your application (or please communicate this orally to the GIIP office when you register for any of their programs).

Readers may recollect the rather lively debates on IP education that we've been having on this blog. Given the dearth of good patent professionals in India, GIIP is a very welcome initiative. Indeed, it has already mustered a commendable reputation in India and globally since its inception in 2007.

Placements:

A key advantage of GIIP is its excellent counselling service that helps a student chalk out their future career path. More importantly, GIIP strives to place its students with leading law firms, companies and LPO's. Students of the past batches have been placed with leading law firms and companies such as Anand and Anand, Remfry and Sagar, Ranbaxy, Panacea Biotech, Intellevate, Evalueserve etc.

Courses Offered:

a) A nine month (full time) program, which includes 3 months of Corporate Internship.

Start Date – 29th June 2009. Classes will be held from Monday – Friday (10:00 A.M. – 3:30 P.M.). For complete information, click here.

b) A one year (part time) program.

Start Date – 27th June 2009.

Classes will be held on Saturdays (10:00 A.M. – 5:30 P.M.) and there will be an Industry-Institute Partnership Seminar on 3rd Sunday of each month. For complete information, visit URL - http://www.giipinfo.com/part-time-certificatecourse.aspx

c) Short Term Courses and Corporate Series

Amongst other things, the training programs have the below features:

1) In-depth knowledge in US and Indian IP laws and processes
2) Curriculum has been designed keeping the industry requirements at core. Course material includes books, manuals and training material of Mr. Steve Shear (former US PTO Examiner )
3) Highly Experienced Faculty team, includes Professors, Patent Agents & IP Practitioners from the US , Europe and India
4) Practical, Hands-on training and regular exams, assignments and group discussions
5) Placements with leading KPOs, MNCs, Law Firms and Indian Corporate

Scholarships:

For those of you who are cash strapped for the moment, GIIP provides a variety of services to assist the financing of your education, including educational loans and financial assistance through scholarships, and Corporate sponsorships.

Affiliation details:

GIIP has strong ties and collaboration with the following distinguished universities and institutions.

i) University of Washington, CASRIP, USA, to offer dual certification programs in India.

ii) IIT Delhi for conducting training programs on campus. IIT professors also teach at GIIP programs.

iii) William Mitchell College of Law(WMCL), USA for conducting post-graduate IP programs in
India and to attract Indian legal professionals for higher level studies at WMCL LLM program.

iv) Silicon Valley Seminar SVS Inc. for Train The Trainer (TTT) program and exclusive
publication rights for Steve Shear’s (Head, SVS Inc.) books on US Patent and Patent Process.

v) National Law University, Delhi for conducting training programs on campus and have their professors teach at GIIP programs.

Faculty:

GIIP boasts a stellar team consisting of resident faculty, overseas faculty and visiting faculty. Some of the luminaries include:

Steve Shear, (J.D. American University), Program co-Chair & Trainer
Dr. Heinz Goddar, (Ph.D. Munich U.), Senior Advisor & Mentor
Firasat Ali, J.D. (John Marshall Law School, Chicago), Trainer & Mentor
Hitesh S Barot, J.D. (U. of California, Berkeley, Boalt Hall School of Law), Trainer & Mentor
Ravi B. Upasani, Ph.D. (U. of Bombay) , Trainer & Mentor
Robert Lee, J.D. / MBA (law and business) (UC Berkeley), Trainer & Mentor
Manish Kumar, Ph.D. (Jodhpur U.), Associate Professor
Bhavya Mehta, Ph.D. (Delhi U.), Assistant Professor
Bharti Birla, LLB (Delhi U.), B.Pharma (Delhi U.), Assistant Professor
Lakshmi K, Ph. D. (CUSAT), Senior Trainer
Mr. Rajeev Ranjan, ex Joint Secretary, DIPP, Ministry of Commerce
Prof. S.K. Jain, IIT Delhi
Dr. Guriqbal Singh Jaiya, SME Division, WIPO, Geneva
Dominic Keating, Intellectual Property Attaché to India from the US

Management:

a) Dr. Kailash Joshi, Chairman & Mentor, ex-IBM
b) Mr. Jerry Rao, Senior Advisor & Investor, Former Citibanker. Ex-Chairman and CEO Mphasis
c) Prof. Dr. Heinz Goddar, Senior Advisor & Director, European Patent and Trademark Attorney, Partner, Forrester & Boehmert, Germany
d) Dr. V S Ramamurthy, Padma Bhushan, Senior Advisor & Director, ex-Secretary Govt. of India, Department of Science and Technology and Chairman, Board of Governors of IIT Delhi.
e) Mr. Atulya Nath, President & CEO, ex-CEO ASAP Solutions (now part of MindTree Consulting, Pvt. Ltd.)
f) Ms Girija Varma, Senior Advisor, practicing IP & Patents Attorney
g) Mr. Steve Shear, Senior Advisor & Mentor, Former US Patent Examiner

Contact Details:

Global Institute of Intellectual Property
45, FF, Okhla Industrial Estate, Phase III, New Delhi - 110
Phone - (011)-3088 4000, Fax - (011)-3088 4034, Email - info@giipinfo.com

Bombay HC rules on Copyright in Drawings: Part II

The case of Indiana Gratings v. Anand Udyog which was previously reported on the blog was based solely on an article. This post briefly will deal with the nuances of the judgment to elaborate upon the analysis in the preceding post.

- The present drawings were not registrible under the Designs Act. Apart from the West v. Francis, importantly the following highlights of this section of the judgment must be pointed out:

(a) A design that is multiplied/ intended to be multiplied by an industrial process will not be registrible under the Designs Act.

(b) It was reiterated using the precedents of AMP v. Utilux and Interlego v. Tyco that the basis of granting protection under the Designs Act was visual eye appeal.

(c) Therefore, where every feature of a sketch was governed by the functionality of the finished article the same would not fall within the purview of the Designs Act.

- Indiana Gratings held copyright in the drawings: Despite using the idea of the machines in question from a European design, the judges used precedents to explicitly state that this would fall within the accepted idea-expression dichotomy and the expression in the drawings of the Plaintiff would fulfil the requirement of ‘originality’. Therefore the same was copyrightable.

- The reliance on the judgment of LB Plastics has already been mentioned in the previous post dealing with this case. The judgment has been quoted extensively, the essence of which has been reproduced in the previous post.

- With respect to the contention that the 2-d drawings only held copyright and this did not extend to the 3-d finished articles, the judgment is very scattered and hardly any importance is laid on this specific contention. However this is mentioned mostly in conjunction with the specifics of what a copyright entails as specified under Section 14 (c) of the Act and other judgments such as the Popeye case.

In conclusion, the judgment says nothing that hasn’t already been said before. It very clearly relies on precedents to grant the temporary injunction as prayed in the case. As many of our readers have pointed out, there is no mention of the Mattel, Microfibre matters. However, I believe Sai giving us a detailed appraisal of the judgment and I shall leave that portion of the analysis to him.

A Big Thank You

SpicyIP has also found that once I reported that the judgment was unavailable online, several of our extremely helpful readers came forward to aid us. Thanks to our ever resourceful reader (Manu) who took the trouble to scan the judgment and an anonymous commentor who left us with the details for us to find the judgment on the Bombay HC website. I also was redirected to the website IndianIPR, which is an excellent resource for finding IP judgments- such as this one- as I have come to realise. With judgments being made available by this website and reported by SpicyIP, it seems like we have the latest in Indian IP news covered :-P !

Bombay HC rules on the Infringment of Copyright in Drawings

A recent article on Mondaq has reported the judgment of the Bombay High Court in the case of Indiana Gratings Private Limited & Anr v. Anand Udyog Fabricators Private Limited & Ors. While the article provides the following citation -2009 (39) PTC 609 (Bom)- this judgment is as of now unavailable on internet web resources, and so the article will primarily be used as a reference point for the facts and issues. (Any additions or clarifications to this post shall be made by the blogger once the original order is available).

The case revolves, simply, over the existence of copyright in artistic works and the alleged infringement of the same. A European machine imported was found to be unsuitable for Indian conditions and therefore the Plaintiffs herein, incorporated certain improvements and modifications. These changes were initially incorporated in drawings and thus copyright was claimed in such drawings as an artistic work within the meaning of section 2(c)(i) of the Copyright Act. Therefafter, it was alleged that the defendants had stolen the artistic works and reproduced the drawings into a finished products. Being a competitor in the business, the plaintiff’s therefore argued that Anand Udyog was guilty of theft and infringement of copyright existing in the artistic works.

On a primary level, the Court first dismissed the claim of the Defendants that no copyright subsisted in the drawings and they were only registrible under the Designs Act. Keeping in mind Section 2 (d) of the Designs Act, the court stated that the criteria therein was not satisfied by the drawings or the finished articles, and therefore they did not come within the purview of the Designs Act. More succinctly put, the drawings were not indicative of “finished articles” (notwithstanding the fact that the finished article was also not “appealing to the eye”) and served a “mere functional purpose”- both of which would disqualify the drawing from the purview of the Designs Act, 2000.

In this respect, the Court referred to the case of West vs. Francis, (1822) 5. B & Ald. 743 “whereby it was held that a drawing of an industrial product, which could be multiplied by an industrial process, would not qualify as a design under the Designs Act but a copyright as an artistic work.”

Moving on, the claims of Indiana Gratings were refuted by Anand Udyog on two levels:

(a) Indiana Gratings did not hold copyright in the drawings: Their logic in this respect was that since they had copied the drawings from the European machine, this could not be considered as an ‘original work’ and therefore not a copyright within the meaning of Section 2(d) of the Copyright Act. It was further claimed that the drawings were not “artistic works” within the meaning of the Copyright Act.

In this regard, the Court clearly said that the idea-expression dichotomy would come into play. Thus, even though the original idea of the machines in question was that of the European manufacturers, copyright subsisted in the expression which herein was in the form of the drawings which included the modifications and improvements. Next, with respect to the term “artistic work” under Section 2(c)(i), the Court opined that a drawing in the form of a diagram would qualify as an "artistic work" even if it did not portray any artistic quality to a layman.

(b) Anand Udyog claimed that there was no theft and that the drawings were “commonplace shapes based on principles of engineering mechanics” and therefore there was no theft of the drawings of Indiana Gratings. It was however argued by the Plaintiffs that ndiana Gratings retorted stating that the various drawings taken as a whole for various parts of the machinery would fit into one another and when used together did not show commonplace drawings.

The Court relied on the case of L.B. (Plastics) Limited vs. Swish Products Limited, (1979) RPC 551, where the House of Lords states that where there was a striking similarity of the Plaintiff’s and Defendant’s work with proof of access to such work and no alternative to copying was provided, the same would constitute infringement. A similar judgment in this regard was also passed by the Delhi High Court in the case of Escorts Construction Equipment Ltd. & other vs. Action Construction Equipment Pvt. Ltd. & Anr., AIR 1999 Delhi 73 and was take note of by the Courts.

The dimensions of drawings submitted by the co-defendants was found to be “identical to the drawings of Indiana Gratings', which the Court held to prove beyond doubt that the drawings were copied.” This included specific identifiable marks alongside the copies recovered, the logo, ‘complete name and description of the product along with the legend for the various items in the drawings and a warranty.”

Therefore in this case, taking into account the evidence and the insufficient explanation given as to the origin of the drawings used by Anand Udyog, it was held by the Court that the wrongful use of the drawings of Indiana Gratings would amount to theft.

(c) Lastly, the defendants stated that the copyright of Indiana Gratings existed only in the 2 dimensional form and therefore not in the 3 dimensional finished product.

The Court here held that the use of Indiana Gratings' drawings would infringe the copyright in their drawings or making any 3 Dimensional objects of machine parts amounting to the reproduction of Indiana Gratings' drawings.

Analysis:

This judgment once again rakes up distinction of the subsistence of an artistic work and design. But in every other respect, the judgment is extremely straightforward in that if the theft was proven, the use of the same by the Defendants would amount to infringement. Since the judgement is unavailable at the moment to the blogger, it is unclear whether any case law was relied upon to dismiss the last claim of the Defendants with respect to the reproduction of the 2 dimensional drawing to the 3 dimensional finished article. However, the case of British Leyland v. Armstrong Patents,(1986) FSR 221 in this respect would be a clear case in point and should be relied on to remove all doubts as to the subsistence of copyright in the finished product from its 2 dimensional form.

MS v Linux: Sparks of the Tom Tom Fire stubbornly refuse to die

In course of the last decade, every once in a while Microsoft has been known to have accused Linux of infringing one of its patents or another. Despite the said multiple claims for years that elements of the open-source operating system violate its patents, Microsoft had restricted itself till 2009 to supporting legal action against Linux (for instance, the infamous alleged funneling of money by Microsoft to SCO so as to fuel the latter’s lawsuits against IBM and other Linux-user companies). Simultaneously with such actions, Microsoft has not restricted either its alliances with the said companies, including its partnerships with Novell and Red Hat.

Matters had come to a head, however, when Microsoft filed a suit against the GPS navigation device vendor TomTom International BV in the U.S. District Court in Seattle in February, 2009, alleging that the in-car navigation company's devices violate eight of its patents -- including three that relate to TomTom's implementation of the Linux kernel. Following is the link wherein the text of the complaint can be found:

http://media.techflash.com/documents/tomtomComplaint.pdf

Five of the alleged patent violations related to proprietary software, relating to in-car navigation technologies, while the other three involved file-management techniques, with Microsoft virtuously maintaining all along that open-source software was not the intended focal point of the action. Despite the case having taken an even more interesting turn when TomTom countersued Microsoft and joined the Open Invention Network (OIN), an open-source patent protection group, matters came to rather an abrupt end on March 30, 2009 when the parties surprisingly agreed for a mutual settlement. In return for an undisclosed licensing fee, TomTom has been given leave to use Microsoft's patents.

The matter becomes murkier, however, when one pays attention to a statement from Peter Spours, TomTom's director of IP Strategy and Transactions, who said that the said settlement agreement has been drafted in a way that ensures TomTom's full compliance with its obligations under the General Public License v2, and thus reaffirms its commitment to the open-source community. No explanation was forthcoming, however, as to how exactly can TomTom both use the rights granted under the patent and conform to the GPLv2! As per the claim advanced by the companies, the agreement includes patent coverage for Microsoft's three file management systems patents provided in a manner that is fully compliant with TomTom's obligations under the GPLv2. At the same time, TomTom will remove, within 2 years from its products, the functionality related to two file management system patents (the 'FAT LFN patents') that enables efficient naming, organizing, storing and accessing of file data. During the said period, the agreement provides for coverage directly to TomTom's end customers under the said patents. This may lead to TomTom technically using the Microsoft FAT LFN (File Allocation Table/Long File Name) patents for the next two years, but it won't be actually using the features of those patents, which may imply that TomTom will be replacing the long file name support provided by these patents with a different technology that does not belong to Microsoft.

However, the settlement is far from successful in calming down the much-agitated open-source legal community, with the legal issues involved being still undecided. In effect, this settlement ends one phase of the community's response to Microsoft patent aggression and begins another.It may be interesting to note that a continuing litigation will have subjected Microsoft’s patent claims to a rigorous ‘prior art’ search to which the company may have been unwilling. If that’s the raison d’etre of this settlement, then Microsoft still has many battles to resolve, particularly with OIN having taken the first step towards invalidating Microsoft's patents that were asserted against TomTom with regard to its implementation of the Linux kernel. The said patents have been posted by OIN on its patent defenders website in order to search for relevant prior art that can invalidate Microsoft's patents. If instances of prior art can be unearthed, then the same will undoubtedly be used to defend any future infringement actions of Microsoft against the Linux community.

Is "Science" Essential for Creating Patent Lawyers: Some "General" Thoughts

In an earlier post, I discussed a Supreme Court case filed against the grant of BCI (Bar Council of India) permission to IIT-Kharagpur's Rajiv Gandhi School of IP (RGSOIPL) and noted that:

"Given the sheer dearth of skilled patent lawyers in this country, I am very partial to the idea of a specialised IP law school. Particularly since the premier legal institutes in the form of the National law schools do not focus on science at all, a discipline that is absolutely essential for churning out decent patent lawyers.

....I don't necessarily see a problem with a specialised "IP" focus in an entry level LLB course, provided other foundational legal courses such as contracts, torts, criminal law, constitutional law etc are also taught."

This post generated a number of insightful comments, some of which touched on the broad issue: how critical is a formal science degree for entry into the coveted club of patent attorneys? I began by replying to the myriad comments and then realised that (as is wont with most of our ilk in the legal profession), verbal diarhoea took over and my thoughts ran into a good 2 pages or so.

So rather than burdening the comments section, I thought it fit to post my thoughts here. I am still thinking through these issues and have quickly penned down what are best rough ideas. May I therefore invite all of you with an interest in this theme to pitch in with your thoughts and perspectives on this challenging issue?

Freedom of Academic Instituitions To Design Curricula

The key issue in this legal dispute is about the freedom of institutions to devise their own courses and entry requirements (within the broad bounds of the Bar Council [BCI] norms). There is a difference between this institutional freedom and a legal requirement (mandated by the BCI or some other institution) that only those students with science degrees can practice patent law. The Supreme Court petition is really concerned with the former and not the latter.

However, the latter is an issue that is closely connected with the former issue and deserves some discussion: How important is a "technical background" (science/engineering) for producing good patent attorneys?

Some of you have suggested that a good keen mind is more important than formal education. While I broadly sympathesise with this line of thought, this argument can be stretched to an extreme to suggest that we don't need any formal qualifications for lawyers at all i.e no need for an LLB degree and anyone should be permitted to argue in court! The problem with such an argument is that we then have an unregulated pool of people who are vested with the responsibility of legal cases (on behalf of clients) and are also meant to be "officers of the court" helping it dispense justice.

Therefore, some level of regulation might not be out of place. If that is our baseline, we then ask the next question: how do we regulate entry to this profession and what kind of courses should people interested in joining the profession learn? Should we just have a five year law degree or a 3 year law degree (taking only candidates with a first degree) or should we just have a bar exam (anyone who passes this is entitled to practice law) or a combination of the above.

The same framework (and questions as above) can be extended to patent attorneys who are but a subset of the overall category of the legal profession.

This profession differs from other legal areas in that it requires a proficiency in both "technology" (science/engineering) and law. What is the harm then of permitting an institution such as the IIT to insist that its intensive law course (with a special focus on IP) is open only to science graduates? Provided of course, that the special focus on IP does not come at the cost of teaching students other foundational legal courses such as contracts, torts, constitutional law etc.

And again, it bears reiteration that one must make a distinction between a bar council requirement that only a science or engn graduate can practice patent law (which is not the case here) to a case where an institution (of its own volition) mandates such a requirement for entry into its course. If patent law requires a substantial dose of both science/technology and the law, I see no harm in the IIT insisting that only science/technology graduates join its program, so that it need not waste time inculcating the philosophy of science/technology, whilst teaching patent law to these students.

Of course, this debate must be careful to appreciate that the patent profession itself is not a monolithic structure but lends itself to further divisions:

1. Patent drafters/prosecutors
2. Patent litigators
3. Patent academics/researchers
4. Patent paralegals

Patent Drafters

For patent drafters and prosecutors, science is an absolute must. And I think it is with good reason that Indian law does not permit one to be a patent attorney, unless one has a science/technology degree and one passes an exam that tests one on science fundamentals. As to whether this exam is an optimal one for testing candidates on science/technology proficiency is another issue and I leave it to those of you who are more familiar with this exam to give us your thoughts on this.

(ps: As many of you know, this requirement of a science degree and an exam came in only in 2003 or so--and I may perhaps have been one of the last people to have qualified as a patent attorney without having a science degree.)

But this category leaves me with two uncomfortable questions. If someone has a basic degree in chemistry, is that person qualified to draft a patent covering a telecommunication technology? Should we then have separate exams for all these fields and each patent attorney is to be identified with his/her specific field of expertise. From a policy perspective, this kind of further classification seems unduly cumbersome.

Perhaps we ought to resign ourselves to the fact that perfection here in unattainable and we ought not to make the "perfect" the enemy of the good. In other words, lets have "science" qualification as a must for making the cut for a patent attorney (who drafts and prosecutes) but lets not further categorise them and tie them down to their specific areas of technological expertise.

The second uncomfortable question is this: Given that a patent is a techno-legal document, should not patent attorneys (who draft and prosecute) have some formal training in the law as well?

Patent Litigators

As for the other categories outlined above, I'm not sure if I would go to the extent of insisting on a formal science degree as an entry level requirement. After all litigators deal with so many different areas of law and have to argue before judges who may not be trained in science and patent law. And some of the best patent litigators the world over have no formal science background. Take the case of Judge Randall Rader of the US CAFC, one of the finest patent judges the US has ever known--he is an English major.

More importantly perhaps, patent litigation may involve other areas of law as well. And to insist that the "patent part" be split from the rest of the litigation and argued separately by a science qualified person may be plain absurd.

Patent Academics/Researchers

If the case for exempting patent litigators from the requirement of a science degree is a good one, then that the case for exempting researchers and academics is an even better one. Anyone with an interest in the area (but no formal training) ought to be able to write and research on this subject. And there should be no fetters on academic freedom of this sort. We find that some of the best patent literature came from economists (think Fritz Machlups 1960 report) and even from geographers (think Graham Dutfield).

Patent Paralegals

The last category, "patent paralegals" ought not to have any specific formal entry requirement, since most of the work they do is normally overseen (and signed off) by qualified lawyers/patent attorneys. A large part of our LPO segment comprises of folks who may be broadly termed as "patent paralegals".

These are very rough ideas--and I look forward to a discussion.