Trouble among the ranks: "Big Daddy" PhRMA speaks out against seizures of drug consignments

SpicyIP has been following the interesting developments surrounding the seizures of legitimate consignments of generic medicines.

With all our posts have reported the indignation of the generics, customs regulations and even India's options at the WTO, an interesting turn of events has led us to revisit the topic. Business Standard now report that the "big daddy", PhRMA - which represents a large number of US based drugs firms- has finally spoken out against such seizures of legitimate consignments of drugs meant for supply in developing country.

This statement was released after a PhRMA official visited India to clear the misconception of “hurdles” being created by several research based companies against the movement of generic and low cost drugs.

Ironically, this statement was issued as a response to the seizure of 17 consignments of 'genuine generic medicines' from India at various European ports alleging intellectual property violations, upon complaints being lodged by large drug manufacturers, including PhRMA members.

In what seems surprisingly strongly worded, the PhRMA has said that even if individual members of the association have taken advantage of the rules in their countries, this could not be construed in any manner to be an endorsement by the Association itself. Speaking through their Deputy Vice President, the PhRMA has stated that suspect counterfeit goods may be temporarily detained, but must be released “(O)nce it is proven otherwise…irrespective of its patent (intellectual property) status in the European Union”.

What does this mean? One, it seems that all members of the PhRMA are not in agreement over the seizure of legitimate low cost drugs, leading the Association to step in and create such a distinction.

Two, it also means that if a case is being put forth by India at the WTO, then the same might be strengthened since a major player in the pharmaceutical scene has itself made a statement which in effect condemns the rules that allow for such seizures of genuine drug consignments.

SpicyIP will keep a close watch will be kept on the events that follow now, but would definitely invite comments from our readers as to what they believe are the implications of such a statement by the PhRMA.

ATRIP Congress 2009: Horizontal Issues in IP Law

From the 13th to 16th of this month, the International Association for Advancement of Teaching and Research in Intellectual Property (ATRIP) held its annual conference in Vilnius. The event which was hosted by the Faculty of law of the Vilnius University, was a well-organized one and went like clockwork with attention being paid to the minutiae.

The theme of the Congress was “Horizontal Issues in IP Law: Uncovering the Matrix” which saw several interesting presentations and discussions on diverse topics pertinent to the theme such as impact of different forms of ownership on exclusivity, role of IP law in dissemination of information, IP’s interface with sports law, overlaps between IP rights, limitations and exceptions to IP rights (a.k.a. fair use), licensing, choice of law principles, term of protection and negotiation of enforcement issues in international fora.

I shall discuss only a few presentations here; on the issue of ownership and its impact on exclusivity, Prof.Marshall Leafer from the Indiana University School of Law spoke on Traditional Knowledge (TK). According to him, the purpose of the discourse on TK is to understand perspectives from either sides of the discussion which in turn ought to lead to intercultural respect. But on the aspect of ownership, he advocated use of traditional forms of IP to protect innovation in TK. This is an issue we have discussed earlier on SpicyIP and we feel that employing traditional IP rights to protect such innovation is easier said than done because those aspects of the work which already exist in the public domain ought not to be protected and such aspects have to distinguished from the contribution of the innovator, which is a formidable task best left to customary laws. Moreover, use of traditional forms of IP may provide a surreptious backdoor for those have scant or no respect for the rights of indigenous groups.

On the role of IP law in dissemination of knowledge, two very informative talks were delivered by Professors John Cross and Lars Smith of University of Louisville School of Law. Prof. Cross’s presentation was to the point and discussed three specific issues; he was of the opinion that the current system of IPR is based on a skewed emphasis on creativity and innovation which accrue property rights to the creator. This model, according to him, could be justified over a system of patronage only if the benefit to the society is greater.

However, he felt that the advantage of having a property model is that it encourages dissemination by “playing off” the desire for profit. In other words, in the absence of a property right which assures the creator of protection which is certain and whose power of sanction against trespassers is clear, the desire to exploit the product of his ingenuity for maximum profits, as opposed to optimum profits, would be higher and this may hinder dissemination of knowledge. Also, he pointed out that the property model limits the term of exclusivity (the question if existing terms are justified is another issue altogether) in addition to putting in place mechanisms for dissemination such as the requirement of written description and best mode in patent law. Stated otherwise, quid pro quo characterizes a property model.

He did, however, acknowledge the problems with the current system such as (1) use of patents to block access to technology as opposed to positively employing it to commercialise the know-how, or (2) the presence of contractual limitations on reverse engineering. He also drew a distinction between the fruits of innovation (products) and the knowledge from such products of creativity. The latter, according to him, is the important one in the big picture. To address the problem of access to products, he pointed to the presence of internal and external solutions such as compulsory licensing provisions and competition law. As for dissemination of knowledge, he proposed use of a broader doctrine of misuse of patents.

In my discussions with him after the presentation, I enquired if imposition of a “know-why” requirement as part of the written description in patents would help in advancing the cause of dissemination to which he responded with optimism. I seek the opinion of our readers here; would introduction of a “know-why” requirement be a justified burden on a patentee and would it alter the fundamentals of patent law as we know it now? Or would it act to choke the incentive behind grant of patents by posing too tall an order for applicants? Of course, all these questions are raised purely from an academic stand point since inclusion of a know-why requirement does put additional pressure on examiners of patent applications. But hypothetically assuming that examiners are up to the task, would the addition of such a requirement help serve the cause?

In the second talk on the same topic delivered by Prof.Lars Smith, a related issue was addressed which attracted interesting questions. Prof.Smith dealt with the pros and cons of the US form of protection for trade secrets which with certain modifications, he opined, could help in dispersing knowledge since the owner of the information would ultimately have to share the information with other stakeholders such as employees and vendors in the process of exploiting it. The problem with protection of trade secrets according to him was the absence of a clear definition of what would constitute a trade secret. I pointed out the definition of a trade secret in the US Economic Espionage Act to which he responded convincingly. He said that though the Act provides a criminal deterrent against theft of trade secrets, there is no provision for damages for the owner of the information.

I then discussed 2 specific points with him; the first one was that sharing of information with stakeholders was inevitable and indispensable which the owner would have to do anyway since he cannot harness the information all by himself. Therefore, dissemination in the strictest sense had to cross the de minimis line which forms part of such transactions with stakeholders, and that incidental dissemination cannot be seen as the ideal limit.

The second point I made was that in the face of increasing rate of obsolescence of technology, the cost of hoarding the information may be more than the returns one could accrue from it, which makes it imperative on the part of the owner to either protect it using a more certain form such as a patent or disperse it in public domain and reap the benefits during its short shelf life. I felt that the system of patents is indirectly responsible for such a situation i.e. if patent provides an incentive for innovation in the form of protection, which results in greater innovation, it contributes to greater obsolescence as well, thereby rendering useless longer patent terms or hoarding of information in the form of trade secrets. If any of these observations seem blanket, crude and bereft of logic, I welcome our readers to share their views.

The next presentation which is of immediate relevance to us was the one on overlap between copyright and design law. Unfortunately, I cannot discuss the presentation made by Dr.Estelle Derclaye of the University of Nottingham because I am yet to seek her permission to cite her work. However, those interested may get in touch with her.

Another presentation on a complex and vital topic was the one on choice of law principles governing intellectual property. This was an exhaustive presentation and I don’t think I can do justice to it by condensing it. This work is now available on the ALI website (http://www.ali.org/) and on Westlaw.

The last topic which I shall discuss here is on negotiation of enforcement issues in international fora, specifically the Anti-Counterfeiting Trade Agreement (ACTA) which has been discussed at length on SpicyIP by Swaraj. Two hard-hitting, riveting and pithy presentations were made by Prof. Hong Xue of the Beijing Normal University and Prof.Peter K.Yu of Drake University, with the former questioning the need for an alternative forum to WTO and the latter listing the benefits for China from the experience gained in the USA v. China WTO dispute. Both presentations reflected the seriousness and preparedness with which the Chinese academic community (irrespective of where it is based out of) represents and defends its country’s interests......

Prof.Xue started off by questioning the need for an alternative forum such as the ACTA which reflected an inconsistency in the stand of parties to ACTA, most of whom have consistently emphasised on respect for the WTO which is based on multilateralism. In plain and simple terms, Prof.Xue said that if there exists a difference of opinion on standard of enforcement to be observed by countries, developing and developed, the solution lay in negotiating within the framework of TRIPs, and not in setting up another forum which could be interpreted as nothing but disrespect for and evisceration of WTO.

She also questioned the interpretation of TRIPS by parties to ACTA who perceived the discretion and autonomy provided in TRIPS on the issue of enforcement as a deficiency of TRIPS, and not as an intended provision which reflected the consensus of parties to TRIPS. She ended her presentation on the note that the dynamics of IP discourse is nothing but a history of international power relations which is best reflected in the composition of parties to ACTA.

In his presentation, Prof.Yu questioned the rationale behind the claims of USA in the US v. China WTO dispute. For a thought-provoking discussion of the case, please visit Prof.Michael Geist’s site where he summarizes the issues in dispute as follows:

1. Does China's copyright law provide appropriate protection for all works in compliance with international copyright law (Berne Convention as incorporated by TRIPS)?
2. Do China's border measures, which allow customs officials to donate, auction, or sell to the rights holder confiscated goods, violate TRIPS?
3. Does China's IP enforcement system, which sets a minimum threshold for criminal prosecution, violate TRIPS?

The WTO which ruled on the case on January 26th this year upheld US’s claims on the first issue but on the rest of the issues, found that US did not meet the burden of proof. Interestingly both sides claimed victory with most observers opining that China got a better deal. Coming back to Prof.Yu’s talk on the case, he said that hypothetically assuming that US had emerged the winner, China still had learnt valuable lessons on how to play, what he called, the “WTO game”. First, China had learnt how to prepare and present arguments at the WTO and second, the case provided an opportunity for both sides to understand the possible legal arguments to substantiate their respective stands, which could come in handy in future disputes.

Prof.Yu further pointed out that the presence of discretion in a now decentralized system in China allows for lot of room for manoeuvre on the ground, which US did not realise. So he said that either set a ceiling on discretion or do not cry foul when the use of discretion did not go in US’s favour. He then gave an insight into the politics of policy discourse inside China; according to him, China has two groups, the reformists and the conservatives. A victory in the WTO case would mean vindication of the conservative position i.e. there is no need for reform. A defeat in the case would only reiterate the reformist stance with the added advantage of the blame for such reform falling on the US and not the reformists. Therefore, either ways, according to him, this was a win-win position all the way for China.

Whatever be the consequences for China, the point which is of relevance to us is that when we reach a position similar to that of China, we may have to encounter similar tactics from possibly the same players. So it is in our interest to draw lessons from the Chinese experience...

On the whole, the ATRIP Congress was an eye-opening experience which helped broaden one’s vision and pointed to the need for a comprehensive approach to IP policy issues bearing in mind their implications to Indian interests.

Guest Post: ‘Tirupati’ - Laddu or the Lord?

After everybody in the Indian mainstream media, from the op-ed writer to the cub reporter, has run riot on the Tirupati Laddu news-item, with their own interpretations of whether it's a GI copyright on offer, or a GI patent, we thought the weekend was a good time to take a breather and bring you that rarity - the "expert" opinion!

Topically, this is a story we have discussed and debated in this space, which those of you interested may wish to refer to. You do know, by now, that the Tirupati Laddu, purportedly originating in the temple town of Andhra Pradesh, has been granted a GI registration.

In this post, we bring to you an after-grant analysis of the case, with a focus on the implications this might have on the evolution of GIs in India in the times to come. To add a dash of spice to the laddu (cardamom or clove? I leave that to you), the blogger's identity remains anonymous - a ghost, if you will. On my part, I can assure you that the credentials of the ghost are impeccable. and the analysis that follows is well-reasoned. It is for you to decide if the recipe that has been served up is to your liking or not.

'Tirupati' - Laddu or the Lord?

One was just about heaving a sigh or relief after the withdrawal of the several geographical indication (GI) applications filed by Reliance Industries Limited, a public Limited company, for ‘Jamnagar’ and ‘Krishna Godawari’ for petrol etc., when the news broke about the registration of ‘Tirupati laddus’ having been granted registration as a GI! (Image from The Hindu)

Considering the potential of any discussions on the famed laddus to hurt the faith of millions in Lord Venkateshwara, let me start this post with an earnest caveat - I mean no disrespect to the Lord or his devotees by writing this. My only purpose is to analyse whether this registration was granted in accordance with the provisions of the Geographical Indications of Goods (Registration and Protection) Act, 1999 [‘the Act’ for brevity]. It is also my purpose here to examine whether the applicant in this case had other options than a GI registration to protect the famous laddus and the devotees of the Lord from fakes being sold. Bearing in mind that the laddus are prasadam from the Lord, I request the readers, most of whom I believe are lawyers, to dissociate the concerns raised below from their loyalty to the Lord and read it with a dispassionate mind.

Was the GI registration for Tirupati Laddu as per the law?

The applicant which registered the laddus under the Act is the Tirumala Tirupati Devasthanam (TTD), a trust which is managing the administration of the temple. TTD sells these Laddus for a price to the devotees who visit the temple. A Wikipedia report states that in the year 2007, these laddus fetched a sum of $10 million! Whether the Wikipedia report is to be believed or not, the statement of case filed by TTD along with the GI application which was advertised in the Geographical Indication Journal No 28 at page 38 states that the cost of a small laddu is Rs.25 and a big laddu is Rs. 100 and that on an average, 70,000 devotees visit the temple every day (at page 60). So TTD could be making a profit of anything between Rs. 17,50,000 to 70,00,000 in one day by selling these laddus!

Being a product touted as a GI, I innocently and momentarily wondered if all that money was going to the development and betterment of the producers of the laddu, who had a collective right in the name “Tirupati laddu”, but I was sadly mistaken! Unlike Colombian coffee or Darjeeling tea, there are no “producers” who make these laddus and bring it to the temple to be distributed and eventually get a share of the colossal profits that TTD is making. On the contrary, TTD is the producer. All that money earned by TTD from the sale of the laddus presumably goes to TTD’s kitty because the statement of case filed clearly demonstrates that TTD is the sole beneficiary. The laddus are made by workers of the temple as well as contract workers hired by TTD. There is no mention of any other beneficiary in the application except TTD.

While I do not dispute the unique taste of the laddus, derived apparently from divine intervention (see the statement of case which states that, “The laddu gets its reputation not from its taste alone but from its sanctity”), as a concerned member of the IP community, I wish to know the implications of registering goods produced by private entities as GIs. This issue assumes significance when considered in the light that GIs are collective community rights protecting a group of producers [see Section 11 (1) of the Act read with Rules 32(5) and 32(6)(a)&(f)]. If private rights such as the one in this case were permitted to be registered under the Act, would it not militate against the very spirit of GI protection which is aimed at protecting, preserving and promoting collective community rights as opposed to private monopoly rights?

Permitting such registrations would lead to a situation where any company or private enterprise carrying on a monopolistic business can get a GI for that name as long as they demonstrate that they are the only ones who manufacture or produce these goods and that these goods have unique features. For instance, those who have relished the famous Shrewsbury biscuits from Kayani Bakery in Pune swear by the said biscuit. Kayani Bakery has a board outside which states that they have no branches. Tomorrow, if Kayani Bakery finds fakes being sold as Shrewbury biscuits, should they register it as a GI to fight the fakes? This was certainly not the intention behind the GI Act. On the contrary, if several producers of a biscuit called Shrewberry manufactured in Pune which followed a uniform recipe and tasted exactly the same irrespective of who produced it, it would be a fit case for staking a claim for GI rights in Shrewberry biscuits.

Did TTD have options other than GI?

Yet another issue I am compelled to raise is what would happen if the numerous replica Tirupati temples in India and around the world choose to make similar laddus (I am assuming they do not currently do so in view of TTD’s statement of case that these laddus are not manufactured anywhere else in the world)? Could the TTD say that the method of production coupled with the divine intervention by the Lord that gives the unique taste to the laddus can happen only in the real Tirupati and not in the replicas? I am confident that the Lord would have no qualms about pleasing all those devotees who have unwavering faith in his powers of intervention in the circumstances. To assert otherwise would be to equate the Lord with us, mere mortals! (Image from here)

In my opinion, the TTD failed to consider better alternatives for protection under the Trade Marks Act, 1999 as well as the Consumer Protection Act, 1986. In fact, if the claims of TTD were to be believed, “Tirupati”, the geographical name, has acquired enough secondary meaning to qualify for registration as a trademark in respect of laddus under the Trade Marks Act, 1999.

Lastly, there are several temples in South India which are known for their prasadam offered in the form of payasam (sweet rice porridge made with unrefined sugar, sugar candy etc) and other food stuffs. The famous ‘aravana payasam’ and ‘appam’ from Sabarimala temple, ‘tirumadhuram’ (a mixture of sugar candy, sugar, raisins and ghee), from the Mookambika temple in Mangalore, and the ‘palpayasam’ (sweet porridge made with milk, ghee and rice) from the Sri Krishna temple near Alleppey are just a few examples. These are available only from these temples. While the taste of these delicacies is indeed unique, it is a debatable issue if these qualify as GIs. Seeing how Tirupati laddu made it to the GI register, it will be just a matter of time before these temples get into similar acts. It is significant here to take a look at the objectives for which GIs are protected in other jurisdictions such as Europe whose legislation permit only groups or associations to apply for GIs [See Article 5.1 of EC Regulation 510/2006].

Instances like the Tirupati laddu give rise to a serious concern on the evolving legal regime for protection of GIs in India which is still taking baby steps. While it is only natural to falter in the beginning, it is important not to forget the lessons learnt from the various falls. If not, it would be quite a wobbly growth for this evolving legal regime.

Bajaj-TVS Dispute: SC Permits Temporary Sale of Flame, TVS to Maintain Accounts of Sale

In a crisp order on the Bajaj-TVS patent dispute, the Supreme Court ordered that TVS shall be entitled to sell its motorcycle ‘Flame’, but shall maintain an accurate record of all its domestic and international sales. It has asked the Hon’ble Madras High Court to appoint a receiver in this connection.

The Court clarified that its observations did not in anyway reflect its position on the merits of the case and the same shall be borne by the Single Judge of the Madras High Court when the actual suit is heard by him. The Court further ordered that the suit should be finally disposed of on or before November 30th, 2009.

Observing that in cases involving intellectual property, parties often spend years fighting on temporary injunction, the Court drew attention to proviso to Order XVII, Rule 1(2) of the C.P.C which states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it, the adjournment of the hearing beyond the following day is necessary.

The Court cited its previous decision on the aforementioned proviso, Shree Vardhman Rice v. Amar Singh Chawalwala, where it held thus:

“In our opinion, in matters relating to trademarks, copyright and patents the proviso to Order XVII Rule 1(2) C.P.C. should be strictly complied with by all the Courts, and the hearing of the suit in such matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit.”

Reiterating the same, the Apex Court directed that the timeline stipulated above be adhered to “punctually and faithfully” by all Courts and Tribunals in the country. This bodes well for IP cases, more so in the absence of dedicated patent or IP courts.

A Break From SpicyIP

For reasons, both personal and professional, I've decided to take a break from SpicyIP and from mainstream IP for a while. The break is rather indefinite at this stage. But please be assured that SpicyIP itself will continue and our stellar team of bloggers will continue to tickle your IP sensitivities with their thoughts. Also, I will post once in a while on issues that I deeply care about.

I want to thank all of you for your continued patronage and your insightful comments that have helped raise the ante for IP discussions in India. My sincere gratitude to all of you.

Patent Oppositions in India: The "Efficacy" of Section 3(d)

Last week, CH Unnikrishnan of the Mint reported on a study that I had conducted with my research associate, Souvik Guha. Let me highlight some of the findings of this study prior to moving on to Unni's report.

After reviewing a slew of information from the Indian patent office website, we found as follows:

i) The total number of pharmaceutical applications filed between 2005 and 2008 were around 9719.

ii) The number of pharmaceutical patents granted during the above time frame was around 2734.

iii) Of the 9719 pharma applications filed, only 34 were challenged—an abysmal .3%!

iv) Out of the 34 challenges, one was a post grant oppn (in favour of Roche covering Pegasus) and the remaining 33 were pre-grant challenges.

v) 25 out of 34 oppositions resulted in rejections i.e. a significantly high ratio of 73.5%! The patent applicant won in only 9 cases (9/34 or 26.5% of the time)

v) 20 out of the 25 rejections above were based on section 3(d). In other words, 80% of the rejections were based on section 3(d), indicating the "efficacy" of this controversial section.

However, barring a Madras High Court decision in the controversial Novartis case which attempted to interpret section 3(d) in the context of a constitutional challenge, there has been no case that interprets the scope and ambit of section 3(d). The Supreme Court of India lost a fabulous opportunity to do so in Roche vs Cipla; and it is now hoped that we'll have some clear standards emerging from the Supreme Court in the Novartis "Glivec" matter (the Business Standard reports that notices have been issued to the Indian government and other parties in this case).

Analysis:

It is not immediately clear as to what accounts for the rather paltry number of oppositions filed...a mere .3% of the total number of pharma applications were opposed! Particularly since India has a vibrant generic sector and a very active NGO community that opposes frivolous pharma patents.

One explanation, though a highly improbable one is that many of these applications were “strong” and meritorious ones. Another is that the patent office website has not included many of these oppositions. Going by the various errors that we spotted on the Indian patent office, this is more probable. Though we find it unlikely that the numbers omitted by the patent office could be so significant as to increase the opposition numbers substantially.

Lack of Awareness?

Another reason could be that the generic industry and public health groups are still coming to grips with this powerful mechanism and are taking some time to leverage it. Some may also falsely expect the patent office itself to do its job well. They have to understand that patent offices are fallible and make mistakes, even in countries like the US and EU, where the offices are better staffed than India. Therefore, they must come forward and leverage the opposition mechanism to help the Indian patent office make the right decision, granting patents to only meritorious inventions.

Perhaps the government ought to set up a committee to study the opposition mechanism and why its been under-utilised. It ought to undertake more awareness drives around patents and the opposition mechanism, and provide logistical support, where possible, particularly to non profit NGO's.

Is the Opposition Mechanism Being Gamed?

There are also allegations that the opposition process is being gamed and unduly delayed, with multiple challenges to the same patent application by the same entity, albeit under different names. Paradoxical perhaps that although the total number of applications that are attacked are fairly few, the ones that are attacked involve multiple opponents! The government ought to also investigate this "gaming" allegation in a bid to better the opposition mechanism.

Other Oppositions

This study is still in draft form and we will publish the final version soon. Prior to reproducing Unni's report below, I want to clarify that the term ("other oppositions") used by him actually refers to a decision made by the patent office after hearing the patent applicant (under sections 14 and 15). It is therefore not really an "opposition" but a normal prosecution by the patent office, where they opt to hear the party to satisfy themselves on the merits of the patent application.

Here is Unni's report:

"Three patent provisions that have come under flak from foreign companies and governments for not being compliant with global intellecutual property regimes have actually helped India weed out frivolous patents since 2005, when the country moved to a new patent regime.

This is the finding of a study conducted by the intellectual property rights (IPR) law department of National University of Juridical Sciences (NUJS) at Kolkata.

The study shows that these three provisions were the basis of rejecting seven out of 10 patents rejected in the area of drugs, and 15 out of 20 rejected in other areas.

However, the study also shows that very few patent applications are being challenged at all under these provisions, an indication of the reluctance of Indian companies to take on Big Pharma, which is behind most of the applications.

While a lobby group for domestic drug companies said the findings highlight the large number of frivolous claims being made by Big Pharma, a lobby group for foreign drug firms said the numbers weren’t significant enough to make inferences.

The three provisions relate to pre-grant opposition, post- grant opposition, and section 3(d) that prevents the issue of a patent for any known substance or concept unless the basis of the new patent claim makes the product’s efficacy substantially higher.

All three have been criticized by foreign companies and governments since 2005 for allegedly being non-compliant with the Trade Related Intellectual Property Rights dispensation of the World Trade Organization.

The study, however, shows that the three have been critical in filtering out frivolous patent claims.

In all, 58 patent applications were opposed between 2005 and 2008: 34 under the pre- and post-grant opposition provisions; and 24 under other options.

Of these, 41 were rejected: 27 under section 3(d).

However, these numbers pale in comparison with the total number of pharmaceutical applications filed. According to the study, 9,719 pharmaceutical applications were filed between 2005 and 2008; of these 2,734 patents, or less than one in three, were granted. The rest are being processed.

Interestingly, most of the 25 patent applications rejected under the pre- and post-grant opposition category were made by foreign drug makers, including Novartis AG, Pfizer Inc., Gilead Sciences Inc. and AstraZeneca SA, according to Mint’s own analysis of the rejections.

The analysis also showed that most of the oppositions were filed by Indian drug makers such as Cipla Ltd, Ranbaxy Laboratories Ltd, Sun Pharmaceutical Industries Ltd and Torrent Pharma Ltd.

Other challenges came from non-profit patient groups such as Mumbai-based Cancer Patients’ Aid Association, Sankalp and Positive People Living with HIV/AIDS.

Shamnad Basheer, who led the study, along with Shouvik Guha, a research associate at NUJS finds the statistics on patent opposition inadequate. “It is pitiable that despite such a large number of pharmaceutical applications filed, only around 34 were challenged, an abysmal 0.3%,” he said.

A representative of a lobby group for local firms said the numbers highlighted both the need for increased awareness among local companies and activist groups, as well the large number of possibly frivolous patents that were being filed.

“One can see only a few Indian companies coming forward to oppose such frivolous patents. The local industry and the NGOs (non-governmental organizations) should be made more aware of these provisions to use these tools very effectively,” said D.G. Shah, secretary general of the Indian Pharmaceutical Alliance.

“At the same time, it is very important to look at the rate of rejections, which is very high corresponding to the number of oppositions, and it shows there are alarming number of frivolous patents being claimed in the country,” he added.

Shah’s opposite number had a diametrically opposite point of view.

“It is too early to draw statistical trends from an implementation of a law where all the participants are on a steep learning curve,” RanjitShahani, president of Organisation of Pharmaceutical Producers of India, an industry association that represents foreign drug makers in the domestic market, wrote in an email.

Mint couldn’t immediately ascertain why few patent claims are opposed. Shah said it could be because of poor understanding of these provisions by local companies and patient groups.

P.H. Kurian, India’s controller general of patents designs and trademarks, agrees.

“There is a need for increased awareness on these provisions, which are strong tools to block frivolous patents, though the small number of opposition cases also indicate that the department’s high level of scrutiny on frivolous claims lead to rejection of many such applications at the examination stage itself, even without a formal opposition,” he said.

Basheer, however, has a few other possible explanations. One, which he admits may be improbable, is that many of the patent claims are “strong”.

Another is that the patent office’s website, the source of data for the study, may not have uploaded data on other patents that were opposed.

“Going by the various errors that we spotted on the Indian patent office, this is more probable, though we find it unlikely that the numbers omitted by the patent office could be so significant as to increase the numbers substantially,” Basheer said.

Some of the patent claims that fell to pre-grant oppositions.

Gilead Sciences Inc.: HIV drug Tenofovir, Sep 2009

Novartis AG: Combination of valsartan and amilodipine, Mar 2009

Novartis AG: Alfa crystal form of its blood cancer drug imatinib mesylate, Mar 2009

Greaves Cotton Ltd: Improved diesel oil engine, Mar 2009

Pfizer Inc.: Cardiac drug atorvastatin and amilodipine combination, Feb 2009

AstraZeneca SA: Patent application for lung cancer drug Iressa, Nov 2007

Eli Lilly: Application for osteoporosis drug Forteo, Sep 2007

Novartis AG: Lung cancer drug Glivec, Jan 2006

ps: image from here.

Advanced Patent Drafting Workshop Being Organised by CII

Confederation of Indian Industry & Andhra Pradesh Technology Development and Promotion Center is organizing an

Advanced Patent Drafting Workshop on Patent Drafting & Technical Skills
(Better Training, Better Writing and Better Patents)

Date: 5-6 October 2009

Venue: National Academy of Agricultural Research Management Campus, Rajendra Nagar, Hyderabad 500 407

Fee Structure per delegate: Rs. 5000/-

India is growing in technology in leaps and bounds yet there exists a dearth of professionals who understand the dynamics involved in the field of Patent Drafting and Technical Writing Skills. To bridge this lacuna, APTDC under the aegis of CII is organizing an intense and comprehensive one and half day practical Patent Drafting is aimed and provides you cost effective and high quality patent writing skills development, patent specification drafting includes a written description of the invention, background, drawings, summary abstract of the disclosure, patent analysis, patent mapping and listing of claims conforming to the standards and requirements of an International application.

The Workshop will cover:

1) Improve your patent drafting skills.
2) Understand what drives the framing of critical drafting.
3) Acquire theoretical and practical skills related to patents and patent application procedures and to develop claim drafting skills.
4) The core skills to be imparted include scope of patent, patent application procedures, different types of claims, and claim drafting, in compliance with procedural requirements.

Who should attend?
1) Attending the workshop are scientists, researchers, technology managers, inventors, SME’s and attorneys with technical backgrounds, who will be drafting patent claims in the future.
2) This program is designed for private or corporate practitioners with patent experience who wish to improve their general claim drafting and amendment writing skills. Registrants will have the opportunity to concentrate on the specialized skilld required in their technological area.
3) Course material will include sample problems and model solutions.

Early registration is advisable as enrollment is limited.

Programme Schedule
(Each subject is 1 hour except as noted)

Day One, October 5, 2009

Review - Anatomy of a Patent

I. Goals for each section
II. General drafting strategy

Background - Multiple Theories

I. Purpose of the Background
a) Tell the story
b) Avoid Mistakes
II. Discussing prior art

Drafting for Clarity

I. The art of description
II. Claim construction
III. Ensuring that terms mean what you want them to mean

Drafting for Written Description

I. The Written Description Requirement
a) General
b) Chemical cases
c) Biotech cases.
II. Problem areas prosecution, continuations, priority cases
III. Identifying problems during drafting.

Drafting Enablement

I. The Enablement Requirement
II. Using the level of skill in the art
III. Enabling the full scope of the claims.
IV. Experimentation what is "undue"?

Day Two, October 6, 2009

Avoiding Drafting Pitfalls

I. "Patent Profanity"
II. Prosecution history.
III. "Last step before submission"
IV. Checklist

Claims - Scope and Coverage

I. Using Statutory classes
II. Varying claim scope
III. Claims and Specification developing scope.

Claims - Numbers and Relative Terms

I. Plural and singular
II. Claiming relative terms
IV. Functional claiming
V. Ranges

Claims - Preambles, Terms

I. Preamble as limitation.
II. Definiteness
III. Broadening with claim terms
IV. Broadening with spec terms

Claim Families

I. Identifying Potential infringers.
II. Drafting to cover all possible targets.
III. Using dependent claims
IV. Picket fences

Claims and Spec Together - Claim Interpretation (2 hour)

I. Claim construction Exercise
a) From both sides
b) Present arguments


For any queries, contact:
Kamaraju Chitrapy
Executive Officer - IPR
Confederation of Indian Industry
Andhra Pradesh Technology Development & Promotion Centre
1-11-252/9, Plot No:7 Regal house, II Floor,
Motilal Nehru Nagar, Begumpet, Hyderabad -500 016
Tel: 91-40277765837
Fax: 91-40-27765836
Mobile: 98492-39783
e-mail: c.kamaraju@cii.in
Website : www.aptdc.com

Guest Post: Copyright term extensions and constitutionality with reference to Eldred v. Ashcroft

SpicyIP is pleased to bring to its readers a guest post by Nirajan Man Singh who is a recent graduate from NALSAR.

COPYRIGHT TERM EXTENSIONS AND CONSTITUTIONALITY WITH REFERENCE TO ELDRED V. ASHCROFT

“Old books, songs, and movies should flow continuously into the public domain. But the Congress keeps bowing to publishing companies that want to prevent works from ever being available for free. Every time Mickey Mouse threatens to go to the public domain, the lobbyists go to work to get an extension. If the big publishers and media giants have their way, then basically they'll turn our culture into a pay-per-view event. If Congress had not extended copyright protection, Mickey Mouse cartoons would have begun entering the public domain in 2003.”
-Eric Eldred in an interview with the Chronicles[1]

The Copyright Clause in the American Constitution grants Congress the power to “promote the progress of Science and useful Arts, by securing for limited times to Authors and Inventors the exclusive right to their respective writings and discoveries.”[2] Like numerous constitutional texts, these few words lead to innumerable debates. The Copyright Clause explicitly states that Congress shall secure exclusive rights for authors only “for limited Times”.[3]Although the clause states that protection should be temporally fixed, it does not specify any particular length of time. In 1998, Congress extended the copyright term by twenty years, prospectively and retrospectively, to this Eric Eldred, a publisher of public domain works, sued, arguing that the Sonny Bono Copyright Term Extension Act (CTEA) violated both the “limited times” provision of Article I, Section 8 and the First Amendment. He lost at every level.

The affirmation of the court towards Congress's decision to periodically extend the copyright term, suggests that no absolute, concrete limit exists, so long as the term is not perpetual. When Congress first provided for copyright protection in 1790, the term of protection was 14 years with the renewal right for another 14 years provided the author was alive at the end of the initial term.[4] The Congress expanded the copyright term in 1831 by doubling the initial term from 14 to 28 years and permitting surviving widows and children to seek the 14 year renewal term at the end of the initial term.[5]Later the Congress extended the copyright term by another 14 years in 1909, for a total length of 56 years.[6]In 1976, Congress moved to a unitary copyright term, under which works would be protected for the duration of the author's life plus fifty years. [7]Now, the Copyright Term Extension Act of 1998 (CTEA) again extended the term; works are now protected for the duration of the author's life plus 70 years.

Eldred v. Ashcroft questioned whether the CTEA violated the “limited Time” provision of the Copyright Clause, rendering it unconstitutional. This case argued that retrospective extension of copyright legislation should be subject to heightened scrutiny to ensure an appropriate fit between the means used and the end sought to be achieved. The petitioners argued that CTEA was unconstitutional because Congress was effectively stringing together an unlimited number of limited Times. Further, they urged the court to adopt a bright-line test [8] under which any retrospective extension of copyright protection is unconstitutional.

When the matter reached the Supreme Court, surprisingly the majority did not discuss the public domain, but frequently stressed on role of Congress in deciding whether copyright legislation will further the ends of the Copyright Clause. It was the dissenting Justices who addressed the importance of the public domain and the detrimental effect of a copyright term extension. Justice Stevens asserted that “the overriding purpose of the constitutional provisions is ultimate public access to materials”, which means that Copyright material enters the public domain. He asserts that it is well settled that the Copyright clause is “both a grant of power and a limitation” and that Congress may not over-reach the restraints imposed by the stated constitutional purpose.[9] Similarly, Justice Breyer saw the Copyright Clause constructed to favor the public domain. As per him, “The Clause assumes an initial grant of monopoly, designed primarily to encourage creation, followed by termination of the monopoly grant in order to promote dissemination of already-created works.” He suggested certain standards that would determine whether a statute lacks constitutionally necessary rational support:
(1) If the significant benefits that it bestows are private, not public;
(2) If it threatens seriously to undermine the expressive values that the Copyright Clause embodies; and
(3) If it cannot find justification in any significant Clause-related objective.[10]

Contrary to this, the Majority held, the 20-year retroactive extension of existing copyright terms did not violate the Copyright Clause or the First Amendment of the United States Constitution. The Court dismissed petitioners' argument upholding CTEA, stating that the twenty-year extension did not amount to an unlimited time period. It was further argued that the petitioners had failed to show how the CTEA crosses a constitutionally significant threshold with respect to ‘limited Times' that the 1831, 1909, and 1976 Acts did not. The Court gave significant weight not only to the policy reasons offered in support of the CTEA, but also to the longstanding congressional practice of copyright extensions.

I can come to visualize that Copyright covers more works and grants more rights for a longer time. Most importantly, copyright now affects ordinary people every day, some more than others, as the people being sued by the Recording Industry Association of America for uploading music have discovered to their sorrow. [11] For all these reasons, copyright is a more significant restraint on what people can say now than ever before.

Not everyone wants copyright extension, the Navajivan Trust decided not to ask one over Mahatma Gandhi's works, this decision was subject to disapproval by many Gandhians as they argued that it would lead to misinterpretation of literatures and ‘text-torturing’. On the other hand Vishwa-Bharathi University, which held the copyrights for Rabindranath Tagore’s works seeked an extension in 2001 which was rejected by the center stating " the advantages of putting Tagore’s works in the public domain far outweighed those of keeping them under an institute’s wings".

I personally feel a limited time must not only be “fixed”, but it must also have a determinate end and cannot be subject to endless openings and closings. Such limited time is for the advan­tage of both the inventor and the society at large, which is to take the benefit of the invention after the period of limitation has expired. It is virtually a contract between each Copyright holder and the public, by which the time of exclusive and secure enjoyment is limited, and then the benefit of the discovery results to the public.

As posted on Spicyip, famous director Nina Paley was also the victim of copyright extension as she was unable to release her award winning film commercially. Though the copyright over the sound recording of the music used in the movie expired, the lyrics and written music for the songs were still protected as musical works under Sony Bono Copyright Term Extension Act, much to the shock of the director. Needless to mention, expiry of copyright opens new avenues, innovative adaptations of Tagore’s works has led to widest possible access to, and dissemination of his works. Also, once the work is in the public domain, there is no question of monopoly rights, making the work affordable for the masses. Moreover, one should not forget copyright is not limited to economic rights of the author, it includes "moral right" as well. Hence, though the author have sold his copyright, he continues to retain other kinds of right in his work, including the right to be acknowledged as the author of his own work and the right to restrain the mistreatment of his work.[12] When the question of quality comes then these rights plays a valuable role in protecting the integrity of important works of culture that make up a country's cultural heritage. Further I feel there should be a regulating body especially created to monitor misinterpretation of original work.

In addition, even the doctrine of fair use seems ineffective, in this doctrine four factors are considered: (1) the purpose of the use, including whether it is commercial or non-profit; (2) the nature of the copyrighted work, granting greater protection to fictional works than to factual ones and to unpublished works than to published ones; (3) the amount and substantiality of the portion used in relation to the original work; and (4) the effect of the use on the market for the original. It is difficult to imagine how one can allow easy access to copies in the service of a free and democratic culture without destroying the copyright owner's rights entirely.[13]

There could be a problem for democracy when copyright owners set prices so high that some people can't read or watch what many others do. I believe Eldred can be used as a weapon for future challenges to the erosion of fair use and non-extension of copyright, an issue that some court is going to have to confront eventually. In conclusion to, limited Times is definitely a limitation on authority but whether such limitation translates into any particular length of time remains unclear.

[1] As pointed out by Dan Carnivale, SUPREME COURT WILL HEAR COPYRIGHT CASE AFFECTING ONLINE RESOURCES, February 20, 2002.
[2] Note that the “Copyright Clause” is technically an intellectual property clause, as it enumerates congressional authority for both copyrights and patents.
[3] U.S. Constitution. Art. I, § 8, Cl. 8
[4] Act of May 31, 1790, ch. 15, § 1, 1 Stat. 124, 124 (codified as amended at 17 U.S.C. § 302 (2000).
[5] Act of Feb. 3, 1831, ch. 16, §§ 1-2, 4 Stat. 436, 436 (codified as amended at 17 U.S.C. § 302)
[6] Act of Mar. 4, 1909, ch. 320, § 23, 35 Stat. 1075, 1080 (codified as amended at 17 U.S.C. § 302)
[7] Act of Oct. 19, 1976, , § 302, 90 Stat. 2541, 2572 (codified as amended at 17 U.S.C. § 302). The move to the unitary term meant yet another extension of copyright protection, provided the author's life expectancy exceeded six years.
[8] A term generally used in law which describes a clearly defined rule or standard, composed of objective factors, which leaves little or no room for varying interpretation. The purpose of a bright-line rule is to produce predictable and consistent results in its application. Bright-line rules are usually standards established by courts in legal precedent or by legislatures in statutory provisions; www.wikipedia.org
[9] Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 5–6 (1966)
[10] JUSTICE BREYER THROWS DOWN THE GAUNTLET, Richard A. Posner, Yale Law Journal, May, 2006.
[11] Please visit http://ibnlive.in.com/news/woman-fined-19-mn-for-illegal-download/95263-13.html, (or) http://technology.timesonline.co.uk/tol/news/tech_and_web/article6534542.ece
[12] Mira T. Sundara Rajan, "Bharati and his copyright", The Hindu, Wednesday, Dec 22, 2004.
[13] Supra n. 9

PPL Extortion Takes a Turn for the Worse: Will the Government Please Step in?

It is lamentable that despite our posts documenting the extortionist tactics of PPL and questioning its non transparent mode of functioning, things have only taken a turn for the worse. SpicyIP now has some damning evidence in the form of letters written by PPL to one of its victims, that reek of high handedness, intimidation, arrogance and worst of all, an utter and brazen ignorance of the law.

Clearly this is one organisation which continues to operate under the “legal radar” without sufficient transparency and accountability; but paradoxically attempts to deploy the very instrument of law to serve its exortionist ends.

In our earlier posts, we mounted some serious challenges to PPL’s very authority to collect moneys for public performances, particularly in the context of foreign sound recordings. We’re not suggesting for a moment that copyright law must be ignored or that copyright owners must not be paid a license fee when a right is exploited. However, we simply ask whether PPL is entitled to collect license fees when any sound recording under the sun is played? Has it been authorised to do so by the copyright owner, and more importantly, does it account for such fees and remit it to the concerned copyright owner?

Contrary to what PPL asserts in its various letters that are now available our website, (with names redacted), every member of the public is entitled to know under what authority PPL collects royalties. Unless PPL demonstrates the source of this authority, no one in India need pay them at all!

What makes all of this worse is that PPL is a statutory creation (its genesis can be found in the Indian copyright act) and ought to be subjected to higher norms of transparency and accountability.

We once again exhort the government to please step in and put an end to this brazen illegality. PPL ought to be forced to become more transparent and disclose its various agreements under which it holds rights to collect royalties on behalf of copyright owners.

The PPL letters contain some amusing nuggets. Upon being politely requested to demonstrate its various rights in the music that was sought to be performed, PPL's classic response is:

“Sorry we r not going to disclose terms and conditions of aggrement we have with our members since it is very much company oriented and not a public document.

If you r not satisfied with explanation as forwarded by us from Coyright Law Book released by Govt of India ,I am afraid u need to go to Ministry/Judiciary for knowing fact of Life. Meanwhile event as discussed needs to be stopped unless matter is being cleared by any appropriate authority to both the parties.”

Don't the PPL computers have spell check? More importantly, does one need to gift PPL with a Wren and Martin? And pray, what is the "fact of life"? That PPL is extorting money from poor unsuspecting victims, when it is not legally entitled to do so?

If any of you have faced similar harassment from PPL, please let us know. We'll ensure that you receive pro bono legal representation. We need to fight this collectively and put an end to it... quickly..

Proposed Copyright Amendment Bill

In the recent past, there have been a proposed set of amendments to the Copyright Act, which however, seem to be having a little trouble getting beyond the draft bill stage. While not much progress has occurred after this initial draft bill stage, the proposed amendments themselves are quite noteworthy. Indeed, back in 2006, there appears to be a response by ALF and a group of other NGOs to the HRD ministry with regard to certain proposed amendments. The draft bill as it stands today, was available on the www.copyright.gov.in website till the recent update (posted about in this previous post) of the site. While the site is much improved in most aspects, these proposed amendments strangely seem to have just disappeared off the site now. The Indian Express and the TOI have mentioned that these amendments are finally up for discussion before the ministry, however it does not seem possible to locate an actual copy of this currently. As well intentioned as these provisions may be, it is rather lacking in terms of transparency that these are now not available for the public.

Moving on to the substance of these proposed amendments, the HRD ministry seeks to provide for a more balanced regime in terms of rights distribution among ‘creators’ through this bill. It seeks to ensure that all the ‘creative artists’ involved in a work, such as the singers, lyricists, music directors, film directors, etc receive more appropriate royalty for their work. This comes as a very welcome move for artists, especially singers and directors, who have been calling for a new royalty payment system for a long time now. In fact, the Indian Express reports that these proposed amendments came after a complaint from the likes of Javed Akhtar, Shubha Mudgal and Jagjit Singh among others, to the Prime Minister, regarding the loss of all rights after the standard practice of assigning rights to the producer.

The bill also refers to non-assignable rights such as 'moral rights' and 'the right of integrity'. The right of integrity goes towards ensuring that the reputation of an artist does not get tainted by giving him the right to prevent others from doing something to his work that can damage his reputation and name, thus preventing distortion and mutilation of work. Along similar lines, the amendments also talk about remixes and cover versions of songs. It says that the provisions should not go so far as to prohibit, or through unnecessarily stringent provisions, effectively prohibit / restrict remixes altogether.

In addition, the period of protection of copyrighted work is to be extended from 60 years to 70 years on the condition that the producer shares royalty with the director as well. Another important provision is the removal of all copyright fees which arise from allowing access, through means of conversion of works, to all categories of disabled people.

It is to be seen however, in the final bill (which will hopefully be made available to the public before it is passed), if the balance between protecting a creator’s interest and protecting the public’s interest is maintained, since it should be kept in mind, that broadly speaking, easier access to creative works has generally resulted in more creation.

The Doctrine of Equivalents: An International and Comparative Perspective

The Yale Journal of Law and Technology recently published an article in memory of the late Sir Nicholas Pumfrey, who unfortunately passed away at the fag end of 2007. A gregarious judge who had a stellar reputation for getting to the root of a technology in a patent dispute even before counsels explained it to him, Lord Justice Pumfrey was also acclaimed as one of the "nicest" UK judges.

The IPKat did a short obituary, which elicited some very touching comments from friends of Sir Nicholas who recounted their experiences with him, some going as far back as his days at Oxford, when he came adventurously dressed in a "sports" jacket. The Times did a piece focusing on his "professional" achievements and the Telegraph did an interesting take on his unconventional "personal" side, recounting that he took off on long motorcycle trips to France to take care of his "bees". Little wonder then that his judgments carried a lot of sting for those who found themselves on the wrong side of the law.

The Yale article, authored by an international medley of IP judges, practitioners and academics deals with the doctrine of equivalents, one of the most contentious patent law doctrines. The various authors and their respective chapters are listed alphabetically as below:

1. The US position: Martin J. Adelman (Theodore and James Pedas Family Professor of IP law at George Washington University Law School), Dr. Raj Davé (Partner at Pillsbury Winthrop Shaw Pittman LLP) and Dr. Martin Sulsky (Associate at Pillsbury Winthrop Shaw Pittman LLP).

2. The UK position: Lord Justice Pumfrey (UK Court of Appeals), who unfortunately passed away during the course of this article and Shamnad Basheer (Ministry of HRD Professor in IP Law, National University of Juridical Sciences, Kolkata);

3. The German position: Prof. Dr. Peter Meier-Beck (Judge at the Bundesgerichtshof, Karlsruhe, Germany and a Honorary Professor at the Heinrich-Heine-Universität, Düsseldorf) and Max v. Rospatt (an Attorney at Law and Partner at rospatt osten pross, Düsseldorf, Germany)

4. The Japanese portion: Yukio Nagasawa (former Judge of Tokyo High Court and currently a Professor at the University of Tokyo and a Partner at the Haruki & Tokyo-Marunouchi Law Offices, Tokyo).

The abstract states as below:

"The doctrine of equivalents is arguably one of the most important aspects of patent law. The protection a patent confers is meaningless if its scope is determined to be so narrow that trivial changes to a device bring it out of the bounds of the patent. One of the greatest challenges courts and legislatures therefore face in patent law is to create rules for determining patent scope that maintain the protection a patent is meant to confer while still keeping the patent monopoly within reasonable bounds.

Despite the general unity in patent laws among developed countries, the difficulty of this task has led to different results in different jurisdictions. Many jurisdictions have chosen to determine patent scope under a doctrine of equivalents, while others have maintained the position that adequate scope can be found within the meaning of a patent’s claim. Even jurisdictions which agree that a doctrine of equivalents should apply differ significantly in its application. This Article provides an examination of four patent jurisdictions—the United States, the United Kingdom, Germany and Japan—and their separate answers to the question of patent scope.

This Article does not purport to decide which jurisdiction has the right solution, but merely points out that different solutions can be and have been found for the question of equivalents. Although a traditional case of patent infringement under the doctrine of equivalents may find protection under all four jurisdictions, the laws of these countries start to diverge on questions regarding after-arising technology, the essential elements of a patent claim, and equivalents that clearly fall outside the language of a claim. One cannot answer the question, “Does anybody have it right?” without first considering these issues."

Wanted: Scientific Advisors to Assist Courts

The Indian Patent Office has called for applications for the post of Scientific Advisors to assist Courts in patent infringement suits or any proceeding under the Patents Act (Section 115, Rule 103). Applicants must be:

1. Those with a degree in science, technology, engineering or equivalent
2. With 15 years of practical or research experience and
3. Must hold or have held a “responsible post” in a scientific or technical department of the Central or State government or in any organization.

The last date for receipt of completed applications is November 30, 2009.

SpicyIP thanks Mr.Biju K.Nambiar of Majumdar and Co. for bringing this information to our notice.

The Copyright Office: Kind of Blue

The first phase of the "modernization of the Indian Copyright Office" is on track, with the Office sporting a new blue online avatar. Long long overdue, is all I have to say. The domain name has not changed - copyright.gov.in - but the site is transformed from what it used to be until recently. You can see in this post screengrabs of the Old and New Copyright Office website (Left: Copyright Office Now - note to self: will not make stupid TV channel puns.)

What stands out (and what I'm silently celebrating about) is the introduction of online registration facilities, accessible directly by authors and rights holders. So, it is not just a superficial overhaul - there are some fundamental technical changes as well.

Previously, clicking on the link of "Registration Form" would direct you to a PDF version of the Form IV, which was of little help. Now, you can complete the form online, and follow it up with submitting the documents by hand or by post. They also have a Check List of guidelines that help in completing the Registration Form, making it incredibly simple for individual registrants to file applications themselves. There is also a flowchart indicating the Workflow of the Registry to help users understand the process of registration. It will be great to know how this system actually works out in the months to come - we're confident readers will keep us posted.

There are better things to come: The next phase of the Copyright Office project, which will go live by 31 December 2009, will see all the records being digitized. Users will also have access to an "Online search facility" which will help locate details of copyright registrations for a fee.

And for those of you who have had the pleasure (!) of visiting the Copyright Office in the dingy backlanes of the Curzon Road Barracks in Central Delhi, it's official: the office will soon be shifting to Jeevan Deep Building, Parliament Street. (My own grouses are (1) no more Andhra Bhavan lunches; and well, (2) Parking! - maybe at UNI/Metro station, and walk?)

It was only a few days ago that I was reading about the abysmal state of online affairs of websites of the Government of India. If any of you have recently visited india.gov.in ("The National Portal of India"), you will see what a mess it all is, although one can tell - GoI is trying hard... (Image: Copyright Office Then - RIP)

At any rate, I personally find this site relatively more attractive than the IPO website, which is aesthetically...um...a little wanting. Or maybe I am just partial to the colour blue, and miles davis. What's your take?

Guest Post: The Jamnagar Petrol GI Case

SpicyIP is delighted to bring you a guest post from Latha R Nair, a leading IP practitioner in India. Ms Nair, who has written occasionally for the blog, is a partner with one of India's top IP firms, K&S Partners, based in the Delhi/NCR area. Apart from handling matters relating to protection and enforcement of trademarks and copyrights, she advises clients on TRIPS related issues, protection of geographical indications in India and abroad, domain name disputes and intellectual property aspects of the entertainment industry and the Internet. In particular, she has been advising the Government of India in the protection of various geographical indications including Basmati and Darjeeling. She has also co-authored a seminal work on geographical indications, titled “Geographical Indications – A Search for Identity” published by Lexis Nexis Butterworths India, which is a first work of its kind on the subject. For a detailed profile, do visit an earlier post we have run by Ms Nair.

Today's post is about the dispute around the GI application filed, and recently abandoned, by Reliance Industries Limited (RIL), which Ms Nair sheds some light on for readers here:

THE CURIOUS CASE OF JAMNAGAR PETROL GI

A report in the Mint recently states that Reliance Industries Limited (RIL) has abandoned its applications for registering ‘Jamnagar’ as a geographical indication (GI) for petrol, diesel, LPG etc. The report quotes P H Kurian, Controller of Patents Trademarks and Geographical indications as having stated that the applications were abandoned by the GI Registry for lack of prosecution on the part of RIL, the applicant. It is a relief to know that wisdom has eventually dawned upon RIL. Should we say, it is better late than never?! (Image from here: http://www.mapsofindia.com/maps/gujarat/districts/jamnagar.htm)

A perusal of the statement of case of GI application No. 38 for ‘Jamnagar’ filed by RIL which was advertised in Journal No.12 (download: 1.5 MB) would reveal the various errors in the application that survived acceptance and proceeded unhindered till the stage of advertisement.

To begin with, the applications filed by RIL were contrary to Section 11 (1) of the Geographical Indications of Goods (Registration & Protection) Act, 1999 [ ‘the GI Act’] which states as follows:

“Any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering a geographical indication in relation to such goods shall apply in writing to the Registrar in such form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication.”

One of the puzzling questions in the Jamnagar applications was, who were these producers whose collective interest RIL was representing through these applications. For example, in the statement of case, against the column “List of association of persons/ Producers”, RIL had entered, “to be provided on request”. However, under the column, “Description of Goods”, RIL stated that it was the largest producer of petrol and that the Jamnagar manufacturing complex was the largest industrial project set up “at a cost of 142.5 billion” (presumably INR)! Did the mighty RIL really need to get a GI registration to boost the sales of its petrol and LPG?

Further, under the column, “Specification” RIL has listed the ISO standards met by its petrol, fuel, LPG and diesel. Under Section 11(2) of the GI Act, an application is to contain a statement as to how the GI serves to designate the goods as originating from the concerned region in respect of specific quality, reputation or other characteristics of which are due exclusively or essentially to the geographical environment with its inherent natural and human factors. Once again, under the column “Uniqueness”, the mention of the compliance with the ISO standards reappears. When one could have thought that this petrol could save all the energy problems of our planet, there is no mention of any unique properties possessed by the goods in the application by RIL except the compliance with ISO standards!

The legal innovation and creativity in the application did not end there. Under the column “Proof of origin [Historical records]” RIL states as follows:

“In 1991, the Government of India allowed the investments from the private sector, in this field. Heavy investment has been made in the less favoured remote area which has resulted in the improvement of local rural area and paved way for the retention of the rural population in this area and it helps in the rural development. The applicant in a record time of 15 days after the historic heavy cyclonic hit on 8th June 1998 repaired the extensive damage and brought back the normalcy”

While RIL certainly deserves more than a pat on the back for the heroic deeds of repairing the damage to the plant (which is, by the way, the private property of RIL) in a fortnight, one fails to see the historical records that are hidden in the said paragraph!

Mercifully, the advertisements in the GI journal led to two oppositions filed by two different opponents. One shudders to imagine how the world IP community would have viewed the Indian GI protection process, if these remained unopposed and proceeded to registration!

From the perspective of an IP practitioner, the fact that these applications were filed by a private entity to further its commercial monopolistic interests raises several concerns for the direction of the GI protection process in India, which is still in the nascent stages. Are we game to register anything that has a geographical name as a GI? At least, the minimum standards stipulated under the GI Act should not be overlooked by all concerned. While augmenting numbers may not be a bad thing, we must not lose sight of the broad objects of protecting a GI, namely, preserving the collective community interests of the producers and protecting consumers from deception. An objective and dispassionate soul searching is warranted to see if we are on the right track while filing applications in respect of anything that sounds like a geographical name to be protected as a GI. Failure to appreciate this could eventually harm and dilute the process of protection of GIs in India leaving the stake holders of the innumerable genuine GI products without an access to realize the economic potential in these products.

[The author is a partner with the Gurgaon based IP law firm K&S Partners. The views are personal.]