SpicyIP Tidbit: Birmingham wants a GI for Balti

The Birmingham City Council, UK, is considering applying for a GI for "Balti" dishes that they claim originated in that part of the world, according to this and this news item from the BBC.

Balti, yes, as in bucket in Hindi/Hindustani/other languages, according to the Council website "is actually a round bottomed wok with side handles, originally used by the people in the Baltistan region of Pakistan". (Er... "kadhai" anyone?). The BBC report adds that Balti is a type of curry cooked quickly over a high flame with fresh marinated meat and/or vegetables.

[Added Later: Baltistan, home to Nanga Parbat and bordering the simmering Autonomous Region of Xinjiang, falls in Pakistan-occupied Kashmir. See this map for details.]

According to a spokesperson quoted in the report, "The city is not only the birthplace of the dish, but also home to the UK's premier community of Balti restaurants and businesses - The Balti Triangle." [I instantly intend to shoot a petition to Ms Dikshit demanding that Delhi introduce a gol gappa circle in time for the Commonwealth Games 2010.]

According to the news report, other "distinctive" features of the Balti recipe are that for the last 10 minutes of cooking, the contents are cooked at high temperatures. They are also served "differently", and are eaten straight from the dish, rather than from plates, usually with naan bread to scoop up the meat and sauce.

Even the mighty BBC is not infallible, and reports that the "City could trademark Balti name". In the circumstances, I guess it may be too much to expect the Indian media to mend its ways.

At any rate, I thought it useful to inform you that the Birmingham City Council is on the lookout for the perfect balti recipe. If any of our readers know of folks in Birmingham who have the potential to become the city's entrant to the British Curry Awards 2009, please do drop by your neighbourhood market. You'll need to courier a Balti.

[SpicyIP would like to thank Adam Smith of the World Trademark Review for bringing this news to our notice.]

Thank you for making us #4 in the IP world!

After a two - phase assessment process spread over several months, IP Watchdog Gene Quinn has published his results of the top 50 patent blogs. We're delighted to inform you that SpicyIP ranks in at number 4 in the IP blog world, based on a calculation system that has taken into account links, website traffic and votes. The image on the left takes you to the website. For details on methodology and detailed ranking results, please visit here.

Spicy IP would like to thank Gene Quinn for having conducted this "meaningful" ranking process, and also congratulate him for an amazing performance in the rankings himself. IP Watchdog clocked in at number 2, close on the heels of Patently-O at number 1, and not far ahead of one of my own favourite blogs, IPKat at number 3. We'd also like to congratulate everyone else who's made it to the list, including several familiar names, notably Duncan Bucknell's IP Think Tank (number 12), IP Watch (number 6), and Intellectual Asset Management (number 22).

As ever, we are extremely indebted and grateful to you, our readers, for having brought us here, through your repeat visits, constructive criticism, and of course, your votes. :) Along the way, we've cracked some other milestones, including being in the top 2% of all websites, according to Alexa, and in the top 100,000 websites, according to Technorati.

We look forward to improving on this performance in the times to come. Throughout our journey with you, we remain committed towards fair, objective and accurate reportage and analysis of IP issues, with the goal of helping India's IP policy develop in a healthy and transparent manner.

IIPS is Inviting Applications for its IP Courses

The Institute of Intellectual Property Studies (IIPS), one of the most reputed and perhaps oldest IP training institutes from India has informed SpicyIP that its new courses are beginning the 18th of July, 2009. For those of you who are interested in upgrading your IP skills/knowledgeable, please register quickly.

I've been a part of several IIPS programs and have always been impressed with their overall quality. During my year at GW law school, IIPS hosted and held one of our moot courts (as part of the GW India IP Program). I hope to share the video of this moot court (where both a US style patent litigation) and a corresponding Indian court room scene were enacted to a very amused audience. Our beloved Sir Hugh Laddie had the audience in splits as one of the expert witnesses who was called upon to testify in court. He also gave a very inspiring speech towards the end of the day to the students of IIPS. Pursuant to our post mourning his loss, Professor Anuradha Maheswari, the Dean of IIPS sent me a copy of this tape.

Prof Maheswari, under whose vibrant leadership IIPS has scaled altogether new heights has kindly agreed to offer SpicyIP readers a 10% discount in the fees relating to any of the programs below. When you register, please mention that you are a SpicyIP reader and avail of this discount.

I. INTRODUCTION TO IIPS

Close on the heels of the WTO- TRIPS regime, IIPS was set up a decade ago in Mumbai, by the well- known educational trust of SVKM with the objective of developing and providing holistic programs to promote knowledge & awareness in the domain of intellectual property law.

A pioneer in IP education this institute like none other in the quality of programs provided and infrastructural facilities, has been a favorite watering hole for IP experts, thinkers & above all for those thirsty for IP knowledge.

II. SPONSORSHIP AND PLACEMENTS

The fact that all the leading corporate and law firms working for IP professionals begin their search from IIPS or send their employees for training at IIPS is the measure of its standards. Some of them being, Nishith Desai Associates, Solomon & Roy Associates, Krishna & Saurastri, Shetty-Sethna Associates, Arrowcoat Ltd etc. Sun Pharmaceuticals, Bilcare Ltd., Larsen & Toubro, IPCA Laboratories, USV ltd., Cipla, Wockhart, Nycomed ltd.

III. COURSES OFFERED

A. 1-Year weekend Post Graduate Diploma in PATENT LAW & PRACTICE (PGDPLP) - starting July 18, 2009

IIPS was the first to design an intensive program on patent learning for scientists & legal professionals in the form of its flagship course PGDPLP. Primarily a career development course for technologists/scientists & law graduates, the updated & revised program provides a comprehensive insight into:

i) Evolution of IP in the backdrop of trade & technological development, and the substantive patent law of India with international comparisons relating to patent filings, oppositions, litigations.

ii) Hands on training on practical aspects of patenting like prior art searching, structuring and drafting of claims and technology transfer agreements

iii) Commercial and management aspects dealing with valuation, due diligence, licenses, insurances and taxations, portfolio management of IP.

For more details, click here.

B. 4-Month Certificate Course in INTELLECTUAL PROPERTY (CCIP) - starting July 18, 2009

IIPS also offers biannually a Certificate Course in IP - which is a general awareness program extremely popular with the legal & engineering students & those working with corporate IPR cells. It is advantageous for professionals like CAs, lawyers, company secretaries, doctors, pharmacists, clinical researchers, bio-technologists/scientists, product designer, IT & media specialists and even undergraduates from any disciplines.

The program provides the individual with a sound insight and a corporate perspective into the Intellectual Property Rights regime, their different forms such as Copyright, Patents, Trademarks, Trade Secrets, Industrial Designs, Geographical Indications etc. and methods of obtaining & protecting them.

For details click here.

C. Other short term weekend programs

a) 3- weekend Certificate Course on Patent Basics
b) 10- weekend Certificate Course on Patent Searching & Drafting
c) 5-Weekend Course on Technology Transfer & Licensing of Patents
d) 2- month Certificate Course for entertainment & Media
e) Also introducing course in Cyber Laws

IV. FACULTY

IIPS boasts a rich pool of faculty, including nationally and internationally acclaimed IP experts which includes:

i) Practicing senior IP lawyers

Mr.S. Majumdar, Mr. Amarjit Singh, Mrs. Usha Chandrashekhar, Mr. Manoj Menda, Mrs. Gowree Gokhale, Mr. Darius Dalal, and lawyers from well-known firms like Nishith Desai Asociates, Krishna Saurastri, AZB partners including legal luminaries like Tehemton Daruwala and Virendra Tulzapurkar who have also held guest sessions.

ii) Internationally Acclaimed Consultants

Dr. Prabuddha Ganguli- CEO, Vision IPR
Dr. Raj Hirwani- Head, CSIR Unit for Research and Development of Information Products
Dr. Manoj Haridas, US Patent Agent & Consultant
Mr. Neeraj Gupta- Founder & CEO, Formulate IP
Mr. Nilesh Ganjwala- CEO, Innergize Solutions

iii) Industry Experts

Mr. Rahul Vartak- Senior Manager, IPR- Nycomed
Dr. Alka Mehta- Head IPR, Cipla
Mr. Jayant Deshpande - Legal Manager, Hindustan Unilever ltd
Mr. Dominic D’souza- Legal head, Zee Sports
Dr. Jyotsna Kapadia- Head IP, Excel Crop Cares

iv) Other Experts

Experts from Patent office, India, International IP academicians like Prof. from University of Bournemouth, UK & London School of Economics; lawyers from globally known IP firms like Fenwick & West, Boehmert & institutions like WIPO, International Intellectual Property Institute (IIPI), AIPPI, U.S. Trade Representative for Intellectual Property and Innovation are brought in to share their views on specific issues of IP.

IIPS Management:

Ms. Anuradha Maheshwari, Dean – IIPS
Mrs. Radhika Pereira, Proprietor- Dudhat Pereira & Associate, Hon. Director - IIPS
Mr. Manoj Menda, Advocate, Patent & Trademark Attorney, Hon. Director IIPS

IIPS Advisory Board:

Shri Tapan Ray, Director General - OPPI
Shri. Prabuddha Ganguli, CEO - Vision IPR
Shri. Pradeep Guha, Director- Culture Company.
Mr. Deepak Ghaisas, CEO- Genco Val

V. OTHER BENEFITS OF AN IIPS TRAINING

i) Weekend course (Sat & Sun only)– convenient for working professionals & students
ii) Eight hours of intensive interactive teaching per week
iii) Internet, library & database access provided throughout the week on all working days
iv) IIPS also offer customized training programs for corporate and academic segments

VI. OUTSIDE TRAINING AND OTHER ACTIVITIES

i) IIPS has conduucted curricular IP awareness lectures for National Institute of Fashion Technology, S.P. Jain Institute of Management studies, NMIMS’ School of Pharmacy & Management, D.J. College of Engineering, Mithibai College, Department of Biotechnology, VJTI Engineering, etc .
ii) It conducts corporate training programs, seminars & workshops on IP
iii) It assists universities with their patent filing requirements filing.
iv) Research project for IP in SMEs

Novartis Patent Rejection by the IPAB: Accessing the Decision

In a previous post, I highlighted the key aspects of a decision by the IPAB (Intellectual Property Appellate Board) rejecting Novartis' claim to a patent covering Glivec.

CH Unni of the Mint carried a report on this decision. See also this report by PB Jayakumar in the Business Standard (unfortunately, there's been a small misquote: the provision governing "public ordre or morality" is section 3(b) and not section 3(d), as stated in this piece).

Many of you wrote to ask for a copy of the decision. I've now uploaded this onto the SpicyIP website. Enjoy the rather long winded 192 page discussion (of which 120 pages or so merely reproduces counsel submissions!).

The decision ought to have been uploaded onto the IPAB website. And if any of you from the IPAB or with good connections with the IPAB are reading, please exhort them to have a policy of timely updates. Some months back, I wrote to the IPAB requesting that they upload all their decisions. Unfortunately, I never so much as received a reply. Here is the text of the letter written to them:

From: Shamnad Basheer
Date: Sat, 30 May 2009 09:36:31 +0530
To:
Conversation: Decisions of the IPAB
Subject: Decisions of the IPAB

Dear Sir/Madam,

By way of introduction, I am a professor of law, focusing on intellectual property issues. I also run a blog and website titled SpicyIP, which is educational in nature and aims to increase awareness around IP issues in India.

I've been tracking the IPAB website and decisions and note that only decisions rendered till 2008 have been put up on the website. In the interests of transparency and in order to further greater review of these decisions which impact the parties and the public, may I please request you to upload current decisions as well? A line in response would be greatly appreciated.

Thank you very much,

Shamnad Basheer
MHRD Professor in IP Law
National University of Juridical Sciences
NUJS Bhavan, 12 LB BLOCK
Salt Lake City, Sector III
Calcutta - 700098, India

Design v. Copyright- Need for a Clear and rational Distinction- III

Continuing our discussion from the last two posts, we shall now move on to the judgment of the Division Bench of the Delhi High Court in Microfibres. Before I proceed any further, my apologies to the readers for the delay in rounding up this discussion. At the expense of sounding repetitive, here are the conclusions and propositions made in the last two posts.
1. 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.
2. Anything that is an “artistic work” under the Copyright Act cannot be protected under the Designs Act, 2000.
3. A purposive approach to the Designs Act, 2000 could lead one to conclude that a decidedly artistic work, when industrially applied to an article, shall fall under the ambit of the Designs Act, 2000 with a consequent reduction in the term of protection to 15 years. Does this reduction apply to the other rights which form part of the copyright in the underlying artistic work or is this only a limitation on the term of protection available for industrial application of the work as a design?

The third one, which is still testy, was the central issue in the DB’s judgment in Microfibres, because the plaintiff/appellant Microfibres strenuously claimed that its work was an artistic work under the Copyright Act, whose reproduction in the form of designs to upholstery fabrics by the defendants violated its copyright in the work and that the 50-time rule of s.15(2) of the Copyright Act was not applicable to it.

The DB, in this judgment, clubbed appeals from two other cases which are faced with the same issue- Mattel v. Jayant Aggarwalla and Dart Industries v. Technoplast. Though a final decision is yet to be delivered in these appeals, arguments put forth by the counsels for the parties in the cases on the issue of interpretation of s.15 of the Copyright Act were considered by the Court before dismissing Microfibres’ appeal.

The array of counsels literally reads the who’s who of this country’s best litigators; naturally, the judgment made for a very interesting read (a long one too- 79 pages) and above all, it showed how a provision could be subjected to varying interpretations in the hands of these stalwarts. In fact, in the process, several critical questions such as the fundamental difference between the objectives sought to be achieved by the Designs Act and the Copyright Act were raised and answered too for the most part.

That said, what I found interesting was that, though every party (here 6 of them) attempted to build a logical edifice, the structure so formed was incomplete in someway or the other. In all honesty, this observation is made from an academic perspective and is not meant to offend anyone because this only goes on to show the serious interpretative dilemma the provision poses and the expedient need for clarity through a legislative exercise, and not interpretational legerdemain. To explain what I mean, I shall try and elucidate the submissions made by the parties in as brief and limpid a manner I can.

But before I do that, without referring to the judgment, I believe one can take a stand solely based on the facts of the Microfibres case. It was not disputed that, if at all the impugned work was capable of design registration, the appropriate Act was the Designs Act of 1911. We also know that the definition of design under the 1911 Act did not exclude artistic works; if so, s.15 of the Copyright Act, which is specifically directed towards the 1911 Act, is to be deemed applicable to the work of the plaintiff. Therefore, since the work had been industrially applied for atleast 50 times by the plaintiff, the copyright in the artistic work ceased to subsist which when combined with the factum of non-registration under the Designs Act, 1911 by the plaintiff, deprived it of a right to claim infringement against the defendant.

Now, following are a few important inferences from the judgment of the Single Judge and questions which one would expect the DB’s judgment to answer:
1. According to the Single Judge, for the work of Microfibres to fall under s.2(c) of the Copyright Act, it can only claim to be a painting and since the work was not a painting in the sense defined in s.2(c), it did not qualify to be an artistic work. This, it ruled on the basis that the provision envisages something which has an independent identity. Where does the Copyright Act stipulate such a criterion, express or implied?

2. The object of the work could not be lost sight of, according to the Single Judge. Does the Copyright Act require that for a work to be protected under it, it must not be made for an industrial purpose? Or does the presence of design legislation implicitly suggest that anything, be it an artistic work or a design, applied industrially to an article falls within the purview of the Designs Act? If that be the case, this renders the very presence of a definition of “design” and exclusion of artistic works redundant (or “otiose”). If one has to justify the presence of a definition for “design”, it could mean that unless a work qualifies to be a “design” under the Designs Act, the fact that it is industrially applied to an article is not material. It follows that satisfaction of the requirements of the definition is to be put before industrial application and not the other way round.

3. If so, industrial application of an artistic work does not automatically accord it the status of a design and so is not governed by the Designs Act or the term prescribed by it. But does this defeat the purpose of the Designs Act? Be that as it may, how are we to safeguard the objective of the Designs Act and yet harmonize it with the definition of a design? The use of the mischief rule is an option but such use comes at the expense of erosion of definitional sanctity. So if the current definition is to be given its due, amendment seems the only way out.

4. Also, the requirements of independent identity and object are related and are based on the premise that adaptation of an artistic work for industrial application robs it of its identity and hence the artistic work metamorphs into a design. Is this premise statutorily sound?

Restating these questions:
1. What is the position of the law of designs, as it stands today, on industrial application of a work to an article, when the status of the work as an artistic work under the Copyright Act, 1957 is not in doubt?

2. Does the Designs, Act 2000, by virtue of its existence, limit the right and term of a copyright owner of an artistic work, only in so far as the application of the work as a design by an industrial process is concerned? In other words, with regard to an artistic work, is the effect of the Designs Act, 2000 limited to governing the application of the work to an article without in anyway affecting the underlying copyright in the work?

3. If yes, this would mean that the Designs Act, 2000 was intended to carve out an area from conventional copyright law to administer the industrial application of any work, be it an artistic work under the Copyright Act or a design under the Designs Act, 2000, leaving untouched the rest of the bundle of rights guaranteed to the owner of an artistic work under the Copyright Act, 1957. Again, is there a statutory basis to arrive at this conclusion?

I shall now discuss the submissions of some of the parties to seek answers to these questions.

Microfibres
Microfibres (for the sake of brevity, let’s call it MF) started off by questioning the rationale underlying the distinction between designs and artistic works. It contended that even if the distinction was justified, the opinion of the single judge that its work lacked independent identity was without sufficient explanation. Further, according to MF, since the Copyright Act did not require a subjective assessment of the artistic quality of the work, the Single Judge’s distinction was artificial (we shall see in the later part of this post how the definition of design was used by the DB to explain the criterion of independent identity).

MF also rightly pointed out that the presence of textile fabric in the classification did not automatically bring the work within the ambit of the Designs Act since it is the nature of the work that determines its status.

Here’s an interesting yet flawed way of looking at s.15(2) which was put forth by MF; according to it, since the provision speaks of copyright in “any design” and not copyright in “any artistic work”, it did not affect the copyright in the artistic work. Then why does such a provision find mention in the Copyright Act?? Obviously, this means it refers to a design which is an artistic work as well. As discussed, in the first post, such a possibility is ruled out under the definition of a design in Designs Act, 2000 but was valid under the 1911 Act and therefore is applicable to MF’s work.

Let us look at this from yet another way; the painting underlying the work is an original artistic work, which after adaptation could be a design. If the adapted work i.e. the design, has been copied by the defendants Giridhar and others, then a claim under the Designs Act comes into being. If the original work has been copied, then the Copyright Act can be evoked; but if the copying pertains to replication of the original artistic work by industrial application to an article, which Act provides a remedy?

The other question which needs to be answered is what happens if the adapted work too qualifies to be an artistic work? Following is the line of logic adopted by MF; according to it, each of the intermediary which was produced before the final product came into being, was an artistic work. It contended that only these works, despite having identities of their own, would lose their copyright after 50 industrial reproductions, but not the original artistic work since the object of the intermediaries is industrial use.

Simply put, MF rejected the criterion of independent identity but accepted the use of object as a factor. Consequently, according to it, the original artistic work would not be governed by s.15(2), but the provision would apply to intermediate artistic works which are intended to be applied industrially. The chink in this argument is this- how is one to decide that this separation of the original artistic work and the derived artistic works is not a mere façade to circumvent s.15(2)?

Assuming that such adaptation is bonafide, if the adapted work does not differ significantly from the original work, then the copyright owner might even unfairly appropriate the adapted work under the Copyright Act using the doctrine of substantial similarity. The other possibility could be that such separation might actually hurt the cause of the copyright owner if the defendant claims that his work is similar to the adapted work and therefore he is governed by the Designs Act and not the Copyright Act, which was the case here!

Giridhar and Ors.
According to the defendant Giridhar and Co., MF’s argument could stifle competition for it permits the owner of an artistic work underlying a design to prevent others from industrially applying the design to articles. In other words, according to the defendant, conceptual separation of the design from the product or the artistic work from the design would render the Designs Act impotent. This point goes to the root of the concept of designs and reinforces the proposition that a design has to be analysed with reference to the article it is sought to be applied to.

Further, it was contended by the defendant that, even if the work of MF was an artistic work, the 50-time rule would apply to it. The rationale put forward to support this sounds pretty logical; it was submitted that the exclusion of artistic works from the current definition of design suggests that such works cannot be deemed worthy of design protection or design-like protection. Design-like protection means protection with respect to industrial application of the work. To buttress this, the fundamental difference between the nature of right granted under conventional copyright law and designs law was brought into picture i.e. the latter is evoked in all those instances where a work is fit for industrial application.

So far so good, but the flaw in the defendant’s argument came to fore when it went a step further to state that the object behind the work decided its suitability for industrial application. As explained in the first post, the object of the author of the work and the object to which it is sought to be used by the assignee may be different, but the nature of the work remains the same. Therefore, use of object as a factor, instead of its nature isn’t rational.

Mattel & Dart Industries
Similar arguments were presented for both these parties (both of which were plaintiffs and owners of their respective works) by Mr.Arun Jaitley where he first split the process of arriving at the final product into various stages such as creation of drawings, preparation of moulds based on the drawings and finally manufacture of products from the moulds.

It was argued that copyright vested in the drawings and the moulds, and that in the process of imitating the final products, the defendants would per force have to prepare the moulds, thereby infringing the copyright in them. With regard to s.15, it was argued that only the final product would fall within its ambit, but not the drawings and the moulds. This, according to Mattel and dart, was because the design would attain the status of a design only when applied to the article.

It was also argued that under s.15(2), what would extinguish is the copyright in the design after 50 applications, but not the artistic work. Ironically, an extension of this line of logic would only go against the plaintiffs/appellants because if application of the design is what gives it an identity, use of the underlying artistic work to restrict application of the work as a design is logically unsound in the first place.

The point validly made by these parties was with respect to use of object to decide the nature of protection to be bestowed on the work. The use of object was countered citing a hypothetical similar to the one explained in the first post i.e. the difference between the object of creation of the work and object of its subsequent use.

Technoplast and Jayant Agarwalla
On behalf of Technoplast, the defendant in the Dart Industries case, it was submitted that there were 2 different categories of artistic works, one under the Copyright Act and the other under the Designs Act with object of creation separating the two. The motive behind the creation of the work was essential, according to technoplast and that once the work had been put to industrial use, copyright on the work was lost forever. We have already discussed the flaw in this argument, so I shall desist from elaborating further.

On behalf of Jayant Agarwalla, the defendant in the Mattel case, it was submitted that copyright survives in the artistic work but limited monopoly would come into picture for its industrial application. Also, s.15 was interpreted as connecting the Designs Act, 2000 and the Copyright Act i.e. in the absence of s.15, a design could claim longer protection under the Copyright Act. Therefore, s.15 limited such protection insofar as it relates to industrial application of the work.

The DB’s Conclusions
The Court rightly ruled out the use of object to determine the nature of protection because it held object to be an indecipherable construct whose use defied logic and lacked statutory basis. However, the use of independent identity was endorsed on the basis of phraseology of s.2(d) of the Designs Act which defines “design” thus:

“design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article….”

The Court opined that the use of “only” means that a design lacks the completeness of an independent work of art and it refers only to the features of shape, configuration etc. I would like to point out this criterion of independent identity is not to be confused with artistic quality of the work. The Court observed thus:

“Therefore, the original artistic work, which may have inspired the creation of a design, is not merely the feature of shape, configuration, pattern, ornament or composition of lines or colours which are created to apply to an article by an industrial process. The original artistic work is something different from the design.”

Coming to s.15, the Court ruled that the provision acted as a limitation on the right of a copyright owner of an artistic work to reproduce the work in a three dimensional form. In other words, it limited the right of 3-D reproduction granted under s.14(c) of the Copyright Act to 50 reproductions. I may be wrong here, but I find this conclusion inconsistent with the aforementioned observation of the Court. My point is, if the design is something different from the original artistic work, how does its application amount to 3D reproduction of the artistic work itself? Consequently, how can s.15 be interpreted as limiting the number of 3D reproductions of the artistic work to 50 times?

The Court then went on to hold that the effect of s.15 was to leave untouched the copyright in the underlying artistic work, it governed only the design derived from such work. It held thus:

“If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

In short, the Court said that a design which is capable of being registered under the Designs Act, 2000 but is unregistered, shall enjoy copyright protection upto 50 reproductions. Again, I do not find myself agreeing with this conclusion because, as I had stated in the first post, the current definition of a design leaves no room for copyright protection for an unregistered design, so the question of presence of copyright protection for 50 reproductions shouldn’t even arise. Though the Honourable Court has clarified certain points, I humbly believe that it has conflated the 1911 Act and the 2000 Act.

The Way Forward
As suggested in the last few posts on this topic, particularly the solution put forward by Mr.Basheer, an easier and effective way out of this conundrum could be to stipulate that the term of protection for industrial application of a work would be limited to 15 years.

As always, I shall be delighted to hear counterviews to the points raised here if I have missed out on subtler points by oversight. I thank Mr.Basheer for his sagacious insights on the topic and for giving me an opportunity to contribute to this discussion.

Breaking News: Indian IP Tribunal Denies Patent To Novartis' Glivec

The IPAB (Intellectual Property Appellate Board) just ruled that Novartis's patent application covering Glivec (beta crystalline version of Imatinib Mesylate) is not patentable, since it fails to satisfy the requirements under section 3(d) of the Indian patents act. This section requires that in order to be patentable, a pharmaceutical derivative must demonstrate significantly enhanced "efficacy" over and above the prior known molecule.

And more controversially, the IPAB held against the grant of a patent, since Glivec costs Rs 120,000, a price that the IPAB found to be way beyond the reach of the common man! This must be first time that any country has denied a patent itself on the ground of "excessive price".

For those of you interested in an overview of this case, see our article (the first couple of pages lists out the facts in the Novartis case). See also our previous posts on this theme.

The decision by a panel consisting of ZS Negi (sitting as Chairman) and Dr PC Chakraborti (sitting as technical member) dated 26th June, 2009 is almost 200 pages long! But here are the quick highlights from my quick reading of this decision:

1. The IPAB held that while the claim covering the beta crystalline (BC) version of IM (Imatinib Mesylate) is both novel and inventive, it fails the test under section 3(d), which requires a demonstration of "significantly enhanced efficacy".

Comment: In an article, we've defended the TRIPS compatibility of section 3(d) on the grounds that it is nothing more than a refined non obviousness standard that applies to pharmaceutical inventions.

However, I'm not entirely sure if this explicit holding by the IPAB that section 3(d) presents a standard over and above "inventive step" now opens the doors to TRIPS violation claims? The IPAB of course notes at several parts that section 3(d) is a heightened inventive step standard. Nonetheless it fails to reconcile this finding with its finding that the BC version of IM is inventive, and yet fails under section 3(d).

In order to appreciate the above point, let me lay out again the various steps that underlie the alleged "Glivec" invention:

i) Synthesizing imatinib as its free base, a compound that was patented in the US, EU and several other countries in or around 1993. However, this could not be patented in India, owing to the fact that in 1993, India did not provide product patents for pharmaceutical substances.

ii) Converting the free base to a particular salt form, imatinib mesylate, by adding methanesulfonic acid.

iii) Crystallising the imatinib mesylate to obtain the beta crystalline form, which is allegedly the most stable polymorphic form of the salt. A patent application was filed for this in India in 1999 and it is this application that is the subject matter of dispute.

iv) Formulating the beta crystalline form of imatinib mesylate into a pharmaceutically useful drug, Glivec, which was granted regulatory approval in 2001.

2. The IPAB held that the only kind of efficacy that would satisfy section 3(d) is therapeutic efficacy. Novartis's BC version may possess improved bioavailability, thermodynamic stability, improved flow properties and lower hygroscopicity, but this does not amount to an increase in "therapeutic efficacy".

Comment: In previous articles, I've opined that "efficacy" under section 3(d) does not necessarily have to mean "therapeutic" efficacy. This interpretation is likely to stay till such time as a court of law overrules it. This restrictive interpretation also explains the apparent incongruence of the IPAB in finding in favour of "inventive step" but against compliance with section 3(d). Had section 3(d) been interpreted to mean any kind of advantage, then perhaps one might have found a better congruence between the "inventive step" standard and the section 3(d) standard. And this might have also bought the Indian section very close to the "unexpected properties" standard articulated in the US and EU.

3. Section 3(d) embodies a high level of scrutiny and owing to this, patents granted in other countries may not be granted to India. Therefore the fact that Glivec has been patented in 35 other countries is not a relevant factor when considering the patentability or otherwise of Glivec in India.

4. In perhaps what will turn out to be the most controversial part of its decision, the IPAB notes that any patent granted over Gleevec is likely to cause "public disorder"!

It elucidates by stating that since Gleevec costs Rs 120,000 per month per patient, it is far too high a price for the common man. Therefore any patent granted to support such a high monopoly price would be against public order and can be denied a patent under section 3(b). This section notes in pertinent part that patents cannot be granted to "an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment".

Comment: This is plain ridiculous! There is nothing in the patents act to support such a reading. As we've been stressing on this blog, one ought to draw a distinction between the grant of a patent and the subsequent use/abuse of a patent.

The grant or otherwise of a patent ought to be dicated by strict "patentability" criteria alone: does the invention represent a good enough technical/scientific advance to merit a 20 year monopoly? The fact that the patentee charges or may charge a high price cannot be used to deny the grant of a patent.

Once the patent has been granted, the use or abuse of a patent can be regulated. And to this extent, one can reduce the scope of the patent monopoly through compulsory licensing, price control etc.

If a country does use the "price" yardstick to assess the patentability or otherwise of an invention, it will most likely fall foul of TRIPS as well. Further, TRIPS would seem to suggest that inventions can be excluded from public ordre or morality, only when products (drugs) embodying such inventions are banned from the country altogether. Thus, unless India bans the sale of Glivec, it cannot exclude a patent covering it on the grounds of public ordre or morality.

Of course, this bit of the IPAB decision may be simply treated as "obiter", since the IPAB had anyway denied a patent on the grounds of section 3(d).

5. The IPAB held that Novartis cannot add material to support the patentability of its invention. Rather, it can only rely on material supplied as on the date of applying for the patent.

Comment: This appears unduly harsh, given the fact that a number of these applications were filed as "mailbox" applications prior to the introduction of section 3(d) in 2005. Consequently, applicants were not expected to know that in 2005, they would be faced with having to demonstrate "increased efficacy" as well. Under the IPAB's own ruling here, the invention meets the "inventive step" criteria, but fails under section 3(d). Since applicants did not know of this standard at the date of filing, shouldn't they be permitted to submit evidence documenting increased efficacy (if at all they can adduce such evidence)?

In fact, introducing an allegedly new standard (section 3(d)) at a later date and insisting that such standard be complied with retrospectively may thwart the very promise of protecting mailbox applications under TRIPS. This could in turn attract a potential WTO complaint. Again, this is but a tentative thought: so I welcome a discussion from readers on this aspect.

6. Since the BC version of IM is not patentable under section 3(d), any composition or formulation of this BC version is also not patentable under section 3(e). Any such combination is merely an addition of its individual components, sans any synergestic effect.

7. The IPAB noted that although the product claim covering the BC version of IM was not patentable, the process for manufacturing the BC version could be patentable. However, even if granted, such a process patent is likely to be weak and relatively easy to invent around by Indian generic manufacturers..

Conclusion

From the above, it would appear that the reasoning of the IPAB is flawed in some aspects. However, does this impact their final conclusion that Novartis ought not to get the patent? The answer is unclear. But here are a few thoughts for consideration:

The IPAB holds that the earlier known substance for the purpose of comparison under section 3(d) is "Imatinib Mesylate" and not the Imatinib free base, as Novartis claims. And to this extent, any "efficacy" comparison under section 3(d) has to be between the claimed BC version of IM and IM itself. I've taken a similar view in earlier posts.

If IM is indeed "known" from the '93 patent application covering the Imatinib free base, the key question would be: would a skilled person have found it obvious to get from IM to the BC version of IM? Or would the skilled person have been likely to pursue another polymorphic form or derivative? The IPAB holds that the skilled person might not have been motivated to get to the BC version specifically. However, their reasoning on this account is not completely convincing. Particularly in the light of expert evidence submitted by IICT (on behalf of the opponents) that when preparing IM, one would inevitably get the BC cystals. The IPAB rightly concluded that the "inevitability" of always getting to the BC version was in doubt since there could be other processes by which one could make the BC version of IM (and not just the process used by IICT).

However, the fact that when some processes are used, one does get to the BC version should itself suggest that a skilled person may have been likely to get to the BC form when experimenting with IM. The court also suggests that Novartis may be entitled to a selection patent on this count. Here again, I'm not entirely convinced. But this post will have to wait for another day.

ps: I want to really thank Sandeep Rathod for bringing this decision to my attention. He has been a great friend of SpicyIP and has referred innumerable nuggets of valuable information to us.

The Purse May not Open for All: NGO's Advocate Greater Transparency in the Functioning of WHO Expert Working Group on R&D Financing

In November, 2008, the WHO had established an Expert Working Group on R&D Financing (EWG) for examining the existing financing and coordination of R&D and for reviewing proposals for new and innovative sources of funding to stimulate R&D related to diseases designated Type II and Type III and to identify the specific R&D needs of developing countries in relation to Type I diseases. Consisting of 24 experts and policy makers, the EWG is supposed to submit a final report to the World Health Assembly in May 2010. However, recently on June 30, 2009, 9 NGOs have sent a letter to the EWG that addresses issues about transparency, conflicts of interest, and EWG outcomes. A perusal of this letter may create the impression that EWG may not have been entirely living up to expectations as far as its work is concerned, especially with the U.S. Government and the Northern European countries favouring the pharmaceutical industry and the Gates Foundation tending to protect pharmaceutical giants and showing ideological leaning towards strong IPR.

Regarding the issues of transparency and balance, the said Letter points out the absence of any publicly available procedures outlining EWG’s conduct, like how the EWG Meetings are supposed to be held and how those attending the same would be governed. The meetings held by EWG are mostly non-public in nature, and the first meeting in January, 2009 was held without advance notice and featured attendance and presentations from selected stakeholders only, including the pharmaceutical industry, the Gates Foundation and several groups funded by the Foundation. The Letter alleged that such groups generally share similar views and collectively represent the status quo and that those in opposition were not given any chance to make their views heard. Moreover, EWG evaluates proposals in a secretive manner, especially regarding the identity of consultants hired, the proposed criteria, as well as its own meeting schedules and agendas. While the NGOs acknowledged EWG’s need to keep the proceedings of some meets confidential, they felt a need for greater transparency in the approach to obtain stakeholder input. Alternative models such as the public sessions held by the CIPIH had been suggested to address such concerns.

Next comes the point of conflicts of interest and lack of any guideline governing EWG’s response to the same. This issue assumes all the more significance owing to the differing opinions advanced pertaining to EWG’s area of functioning. With the pharmaceutical industry, product development partnerships and academic and other non-profit research institutions all vying to receive grants for medical R&D, there exist obvious incentives to skew EWG outcomes to favour separate institutions. The Gates Foundation also presents another quandary regarding conflict of interest, being a primary source of R&D funding on the one hand and supporter of policies clashing with some of the most controversial reforms explored in the CIPIH and IGWG processes on the other. Mention has also been made of the proposal to engage the George Institute to undertake a comparative review of alternative incentives, which will include the establishment of a stakeholder network. In at least one draft, this network would consist of 9 pharmaceutical companies and trade associations, 8 organizations that consist of the Gates Foundation or research organizations funded by the Gates Foundation, 7 government agencies from OECD countries, 5 government agencies from developing countries, and only one NGO critical of the status quo. Such a network, according to the NGOs would incorporate an unacceptable lack of balance, have many conflicts of interest, lack legitimacy, and be highly unlikely to recommend anything that would represent significant changes. The Letter urges EWG to recognize such potential conflicts and adopt policies in accordance thereto.

In addition, the Letter also puts forth a series of recommendations regarding the standards that a proposal in the EWG process ought to aspire to, following the same line as the CIPIH report and the Global Strategy and Plan of Action. According to the NGOs, sustainable systems of finance for medical R&D, including both sources of funding and possible incentive mechanisms, should be:
1. transparent
2. cost effective, and
3. ambitious enough to address real needs for innovation, and
4. include government funding,
5. require, when possible, open licensing of inventions and other IPR in developing country markets,
6. encourage or require open access to data, material and knowledge,
7. foster the transfer to and development of technology in developing countries,
8. condition financing to requirements for access,
9. promote a range of incentive schemes for research and development including addressing, where appropriate, the de-linkage of the costs of research and development and the price of health products,
10. when possible ensure sustainable and competitive supply of products from generic producers in developing countries, and be
11. accountable to governments and democratic processes.

Mention has also been made of the Biomedical R&D Treaty, which has been prescribed in the recent World Health Assembly to form a part of EWG’s consideration. The NGO’s especially stressed upon the importance of EWG’s review of the proposals made for future discussions regarding said treaty, including whether to consider recommending that the WHA revisit the question of the WHO role as a stakeholder in aforesaid discussions.

The NGO representatives, who have authored the aforesaid letter, include Jonathan Berger, Senior researcher and head of policy & research in the AIDS Law Project, South Africa; Dr. Oscar Lanza V. Coordinator of AIS Bolivia; Luis Villarroel, Director of Research in the Latinoamerican Centre of Intellectual Property Research for Development, CORPORACION INNOVARTE; Robert Weissman, Director of the Essential Action; German Holguin, Director General of the Fundación Misión Salud, Colombia; Tim Reed, Director of the Health Action International; Francisco A. Rossi. B., Director of the Fundación IFARMA-AIS Colombia; James Love, Director of the Knowledge Ecology International and Ethan Guillen, Executive Director of Universities Allied for Essential Medicines.

For text of the original letter, one may refer to the following link:
http://www.keionline.org/blogs/2009/06/30/civil-society-ewg/

The author thanks Malini Aisola from Knowledge Ecology International for informing SPICY IP about this interesting letter. KEI, a renowned organization that seeks to provide solutions to the management of knowledge resources, undertakes and publishes research and new ideas, engages in global public interest advocacy, provides technical advice to governments, NGOs and firms, enhances transparency of policy making, monitors actions of key actors and provides forums for interested persons for discussion, has already reported the matter in their own blog and was among the NGO-s who had begun this laudable initiative in the first place.

IPO, are you there?

I ran an experiment of sorts yesterday. After having frequently heard officers from the Intellectual Property Office (IPO) and the Department of Industrial Policy and Promotion (DIPP) recommend the “Interactive Guidance” facility offered on their website, I attempted to use the service myself.

[On the home page of the IPO, you can spot “Interactive Guidance” under the “Gateways” section in the left frame.]

They advertise their service thus: Every working day, one officer is available between 1500 Hrs and 1600 Hrs Indian Standard Time (+5.30 GMT) for Interactive Guidance.

It also has this disclaimer: “This Interactive Guidance is intended to provide quick replies to applicants, agents, and attorneys, and does not purport to be a legal document. In case of any variance between what has been stated in the Interactive Guidance service and that contained in the relevant Act, rules, etc., the later [sic] shall prevail."

Undaunted, since I was not seeking legal or any other form of advice, I created a user ID, in preparation to venture into the two chat rooms (dealing with patents, and trade marks) where such guidance is offered.

I have to say I was fairly optimistic of witnessing an “interaction” between users and the IPO. I even justified my selection of Wednesday, which was mid-week enough, the IP officer in-charge would have had time to settle into the weekly routine, and recover from Monday blues. I even had a question in mind to ask at the session.

So it was that on July 1, from between 3 to 4 pm, I found I had company. There were at least four userIDs visibly present in each of the chat rooms, and I don’t know how many more like myself looking in. A few questions were asked, some reasonable, some relatively basic ones. Not too difficult to answer, I thought. Easier still, I thought, to direct users to hyperlinks on the website itself, where appropriate answers could be found. I could have done it myself, were I thus inclined.

But I didn’t. Instead, I waited. I waited for the entire hour, right down to the last minute (see screen shots). But no one from the IPO appeared. Or at least, none of the queries were addressed, or even responded to. Neither the Patent nor the Trade Mark Interactive Guidance Service was in action.

Instead, frustrated users began to post messages like:

- - Is IPO there?

- - I second the question [above]. Is anyone from the IPO present in this chat room?

- - Anybody is there to answer our query?

And so on...

At the cost of statistical rigour, I have neither the patience nor inclination to sit through the guidance session again, and have no plans to immediately replicate the experiment.

Instead, I am curious to learn from readers who may have used this service of their own experiences. Has the IPO responded to queries on any occasion? If so, what has been the quality of their response? Or am I mistaken in assuming that this service is still alive? Is it, in fact, an “inactive guidance” facility?

Also, sympathizing with the frustrations of askers of unanswered questions, I realise there are several comments I have failed to respond to in my posts here, which I shall attempt to remedy in the future.

USIBC and Section 3(d): Incremental Intelligence?

A recent USIBC report on section 3(d) has caused a great deal of controversy, with public health groups decrying the presence of Commerce Minister, Anand Sharma at the inaugural function announcing this report. Priyanka Gollikeri of DNA has an interesting report documenting this controversy, where she notes:

"The US study, a copy of which is with this newspaper, argues that incremental innovations can lead to a decrease in costs and increased access to drugs by reducing overall treatment costs and hospitalisation.

It specifically states that removing Section 3 (d) would allow all incremental innovation, including pharma innovations, to undergo examination and be treated in the same manner regardless of industry, field, or technology.

"Section 3 (d) has often been a cover against frivolous patenting of drugs. The developed world and MNCs were never comfortable with it. All this is part of a larger ploy to monopolise the medicine market in India," says a leading Mumbai-based intellectual property (IP) expert."

Prakruthi Gowda, our latest entrant to SpicyIP will bring you a post specifically on this report. In the meantime, let me offer some brief comments:

I found the report to be reasonably well researched, though not terribly original. I had hoped that such a report would have offered us more concrete empirical evidence/interviews etc to help assess the pharma innovation ecosystem in India and the role of the current patent regime...but it does not go this far. And this perhaps explains my title query as to whether the report qualifies as "incremental intelligence". A fitting title, some might argue, given that the report hails the virtues of "incrementalism".

More importantly, unlike the report, I think we ought to retain section 3(d), though not in its present form. I elaborate on this aspect in an interview to Anju Ghangurde of Scrips who recently did a story on this controversial report. I reproduce her questions and my answers (the shorter version of which made it to her article). Unfortunately, her story can only be accessed by paid subscribers.

1. Do you believe that Sec 3d is an integral part of the Act to check evergreening or whether it could help Indian companies innovate in the short term?

I believe section 3(d) was inserted with a view to helping distinguish between frivolous inventions (of the me too variety) and genuinely incremental advances. As to whether it is achieving this purpose is a moot issue.

Some decisions appear to interpret section 3(d) too strictly, with the result that even genuinely advantageous incremental advances are being denied patent protection. And such a strict standard would certainly impact the innovative efforts of Indian companies in the long run. Other patent office decisions treat section 3(d) very lightly and in some cases, the office does not even check for compliance with section 3(d). Therefore, the need of the hour is to frame guidelines to help interpret section 3(d). And this is something that the Mashelkar committee recommends as well.

2. Do you believe that too much is being read into Mr Sharma's presence at the event or is the beginning of perhaps some softening in India's position on trade/patent related issues?

Yes, absolutely. I don’t see any reason why the minister cannot be present at an event, where such a report is discussed. Of course, he has to make it clear that he is not endorsing the report, but merely open to a discussion on section 3(d). And all of us must keep an open mind on section 3(d), as it is wrought with difficult language and its ambit is unclear to many. At the very least, we must continue discussing this so as to get more clarity and to help evolve a clearer standard.

During the course of the interview, I also referred her to an article written by Prashant and me that examines the various creases inherent in section 3(d) and attempts to work out an amendment that might iron out such creases. We recommend in this article that section 3(d) be amended (in a fairly long winded fashion) as below:

“3. What are not inventions: The following are not inventions within the meaning of this Act….

d) a new form of a known substance, unless it differs significantly in properties with regard to efficacy, when compared with the known substance, or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such process results in a new product or employs at least one new reactant.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other structurally similar forms of a known substance shall be deemed to constitute “new forms of a
known substance.”

For the purposes of this clause, a “known substance,” against which the efficacy of a “new form” ought to be compared, shall be taken to be a substance which is not “new,” in that it does not satisfy the “novelty” criterion for patentability.

For the purposes of establishing that a “new form” differs significantly in properties with regard to efficacy, an applicant must provide data comparing the efficacy of the new form with that of a
“known” substance. Such data need not prove this “difference” in property as a matter of statistical certainty, nor does the applicant have to provide actual evidence of trials in humans. Instead, the applicant has to demonstrate a reasonable correlation between the efficacy claimed and the data provided in support of this. Such reasonable evidence of the correlation can be established by relying on, inter alia, statistically relevant data documenting the activity of the new form and/or known substance, documentary evidence (e.g. articles in scientific journals), data generated using in vitro assays, or from testing in an animal model, other preclinical test data or any combination thereof.

For the purposes of this clause, a determination as to whether a difference in property with regard to “efficacy” is “significant,” shall be assessed with reference to the views of a person skilled in the relevant art.”

U.K. Court rules that anonymous bloggers cannot hide behind the right to privacy

As many of our anonymous cowards, not to forget the FakeIPLplayer, will tell you – anonymity has its own thrills. Unfortunately for some of their anonymous brethren in the United Kingdom a recent decision of the High Court of that country has held that anonymous bloggers cannot restrain another person from stripping them of their cloak of anonymity since blogging is essentially a public activity not covered under the right to privacy.

Justice Eady in a short but sensible judgment in the case of Author of a Blog v. Times Newspapers Ltd. [2009] EWHC 1358 (QB) refused to restrain the Times from publishing the identity of ‘Night Jack’ an award winning anonymous blogger who made a name for himself by criticizing and ridiculing politicians and often the police force itself. The Times newspaper through some detective work of its own found out that ‘Night Jack’ was in fact a member of the police force itself. ‘Night Jack’ unsuccessfully tried to move the court for a preliminary injunction to restrain Times from revealing his identity. He tried to argue that his anonymity ought to be protected under the right to privacy – a right which has existed in English law for quite some time and which has been further re-enforced by Article 8 of the European Convention on Human Rights and Fundamental Freedoms.

Justice Eady declined the injunction primarily on the grounds that blogging was essentially a public and not a private activity and that it was in public interest to inform the citizens of the background of the blogger providing such views. Furthermore the Court concluded that the policeman was actually violating the code of conduct prescribed by police regulations.

Several members of the blogging community have severely criticized the judgment as having the potential to ‘kill off’ independent voices by deterring whistle-blowers and thereby cutting off an important source of information to the public.

The Indian position on privacy is rather nebulous. The Indian Supreme Court has read in the right of privacy into Article 21 (Right to Life) of the Constitution. That however does not automatically confer upon it the status of a fundamental right. At best the Right to Privacy is a weak right which according to the Supreme Court 'could be restricted on the basis of compelling public interest’. However most of the case-law regarding the right to privacy in India has evolved in the context of state surveillance of citizens or the search and seizure powers of the state , unlike the West where there have been several privacy battles between the media and celebrity citizens. To the best of my knowledge there have been hardly any Supreme Court cases where the right to privacy of a citizen has clashed with the fundamental right to free speech of another citizen. In cases like Mr. X. v. Hospital Z (1998) 8 SCC 296 & Sharda v. Dharmpal (2003) 4 SCC 493, both of which involved the right to privacy in the context of medical ethics, the Supreme Court held that if two fundamental rights were in conflict then in that case the right which in the greater interest of public morality would triumph. (Click here to read up on a detailed 2005 Supreme Court decision on the right to privacy)

The question therefore is, how would and how should an Indian Court rule if ever such a question of law arose in the Indian context? Should an Indian Court protect the privacy of the blogger or should the name of the ghost blogger be revealed especially when it is contended by the media that they are entitled to do so under their fundamental right to free speech. While I look forward to our readers comments on this topic, I will more than happily point you towards the right answer (which would be close to Justice Eady’s reasoning). The reasoning too would be close to Justice Eady’s i.e. If in case the activity is public in nature then there can be no claim of privacy over that activity especially if the person behind that activity has been discovered through legal means. Anonymous blogging may have its own advantages but it is unlikely that any of these advantages will be able to counter the virtues of the fundamental right of the media to free speech and expression. After all great freedom comes with great responsibility.