SpicyIP Tidbit: Madras High Court embarrassed over failure to reimburse 'Scientific Advisors' appointed under S. 115 of the Patents Act

In the recent case of Vittal Mallya Scientific Research Foundation v. Indfrag Ltd. the Madras High Court was highly embarrased when the Plaintiff's counsel bickered with the scientific advisor's (IIT Madras) over the question of payment towards the cost of carrying out certain tests that were so required to be carried out as per the Court's directions.

The decision of the Madras High Court can be accessed at the website of India Kanoon over here.

The present suit had been filed by the Plaintiffs to restrain the Defendants from violating 6 of their process patents bearing numbers: 182487, No.182488, 182489, 182490, 182810 and 183849. Pending the suit the parties had moved applications under Section 115 of the Patents Act to have the Court appoint scientific advisors. After a series of delays the Court finally appointed IIT Madras as the Scientific Advisor with a mandate “to examine/analyse the products of the plaintiff and the defendant and submit a report to the court as to the nature of the manufacturing process involved and whether the defendant's claim that it was manufacturing the product using a different process from the six patented process of the plaintiff.”

The cost of the entire process was to be borne equally by both parties.

However when IIT Madras contacted the Plaintiffs counsel requesting them to pay up for the costs of certain tests the counsel declined to do so by citing Section 115(2) which requires that “such renumeration shall be defrayed out of moneys provided by Parliament by law for the purpose”. Clearly if the Plaintiff's counsel wanted to make sure that the 'moneys' were provided by Parliament, he should have objected to the Court at the right time instead of bickering at a later stage with the Court appointed scientific advisors. Having said that I have to concede that I'm curious as to what exactly is the 'moneys provided by Parliament'? The Act and the Rules are silent on this aspect. Is it supposed to refer to the Consolidated Fund of India, out of which the salaries of Judges are defrayed?

When IIT Madras eventually sent the Report to the High Court it also made it a point to send along with it all the correspondence with the Plaintiff's counsel. On reading the correspondence the High Court was livid with the Plaintiff's counsel for not agreeing to share the costs although it was required to do so by the previous Order. The High Court ordered the Plaintiffs to pay up, warning them that the State was not going to pay for private litigation and at the same time dismissed their applications to issue supplementary instructions to IIT Madras to carry out further tests.

From Jurassic Park to Bayh Dole: Crichton makes an Effortless Leap from Science Fiction to Policy Recommendation

(Image Location: http://upload.wikimedia.org/wikipedia/en/thumb/e/e1/Next_book_cover.png/200px-Next_book_cover.png)

Previously in Spicy IP, we have covered various aspects of the Bayh-Dole Act and the Indian Bill modeled along similar lines, titled Protection and Utilisation of Public Funded Intellectual Property Bill (see here). Many of the thoughts of the different stakeholders regarding this matter had also been voiced in the report of the conference that was held last September. This post, however, intends to draw attention towards a really fascinating argument that had been made a few years back against the continuing existence of the Bayh-Dole Act itself, by none other than the renowned science-fiction author, Michael Crichton!

In 2006, Crichton had come up with a novel titled ‘Next’ that belonged to the so-called techno-thriller version and sought to portray the contours of a conflict between science and nature. The plot consisted of corporate bodies, universities and venture capitalists being engaged in a race to create bizarre genetic anomalies for profit-based ventures and to manipulate the legal system to suit their own needs.

Jorge L. Contreras, in his review of ‘Next’, (available here) has concentrated on the non-fictional policy recommendations that Crichton had made as a sort of postscript to this fictional backdrop. After having painted quite a few scary possibilities in the mind of the readers about the turn that the future could take, Crichton had posited a set of 5 recommendations. According to him, implementation of these could go a long way in ensuring the future would not assume such a bleak hue. The recommendations include:

(a) prohibition of gene patenting;
(b) establishment of a clear set of guidelines for the usage of human tissue;
(c) legislations providing for mandatory disclosure of data on gene tasting;
(d) avoiding bans on research activities; and
(e) rescinding the Bayh-Dole Act of 1980.

According to Contreras, however, the fact that Crichton had used imaginary scenarios, having little resemblance to the reality, to support these policy recommendations has done more harm than good. If anything, it has diluted the strength of reasonable and realistic arguments that have been made in favour of similar recommendatory measures and has also misrepresented the difficulties that said measures seek to address. Moreover, Crichton’s use of fictitious background material and policy guidelines garbed in the cloak of apparently legitimate sources such news-articles from Science, Wall Street Journal etc. has lent undue credence to the doomsday scenario that he had sought to portrait, thereby blurring the line between fact and fiction, especially for the general populace unfamiliar with the intricacies of scientific principles and policies.

With regard to the Bayh-Dole Act, Crichton had identified it as a piece of legislation allowing recipients of federal research funding to obtain patents on resulting inventions and to commercialize those inventions for the benefit of the U.S. economy. He went on to opine that the Bayh-Dole Act has, in various ways, tainted academic research and that some U.S. universities may now value patents and licensing revenue more than the pursuit of knowledge. According to him, “[s]cientists who once felt a humanitarian calling have become businessmen concerned with profit and loss. The life of the mind is a notion as quaint as the whalebone corset.”

An obvious and logical corollary to the suggestion of repealing a legislation that has been instrumental in providing scientific research funding in the U.S. for the past 3 decades is the question as to what can be a possible, suitable and viable alternative to the Bayh-Dole Act. One possible outcome of such repeal may be a regression of the U.S. to the pre-1980 position, with each federal agency employing its own independent and mutually-inconsistent policies regarding ownership of federally funded inventions. As per Contreras, Next also seems to imply that innovation will be promoted in the long-run if patents on federally funded inventions are abolished altogether as an alternative to the Bayh-Dole Act. Unfortunately, Crichton’s work seems to be devoid of any constructive recommendation of significance regarding the nature of a post-Bayh-Dole landscape, thereby robbing his suggestion of gravity and even making it potentially misleading.

Again, as Contreras puts it, even if the Act suffers from certain limitations in the context of genetic discoveries, it may not necessarily follow that the same will hold true in all other fields of scientific research. Indeed, Next makes no such case in favour of such an over-arching adverse consequence of the existence of the Act ranging across all scientific dimensions. Contreras has concluded his review by saying that the scientific, logical and legal fallacies that may be present in Crichton’s work can very well be excused by its fictional label. However, the fact remains that unlike its other counterparts such as Mary Shelley’s Frankenstein, which does not hide its fictional nature in the veil of apparently-true scientific theories, principles and guidelines, Next may pose as an adverse influence to the uninformed readers by diluting the actual reality that may or may not demand such broad and sweeping policy changes and recommendations in the field of innovation.

SpicyIP Tidbit: Global Patent Co-operation by 5 IP Offices

(Image Location: http://www.fiveipoffices.org/images/logo.jpg)

Recent times have seen a website being launched (here) representing a forum consisting of five of the largest intellectual property offices in the world, viz. the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO). The said forum, named the Five IP Offices (IP5), has been established with the aim of enhancing the effectiveness of the procedure for patent examination throughout the world.

As per information available from the forum itself, together the members of IP5 account for about 90% of the total patent applications filed all over the world and also perform almost 93% of the entire work that takes place following the provisions of the Patent Cooperation Treaty (PCT). Through this joint venture, the members seek to achieve a whole new level of co-operation and co-ordination on a global scale, by way of pruning needless duplication of work among the individual jurisdictions of the respective members, which will eventually lead to increased efficiency of the patent examination procedure and enhanced quality and guarantee of the stability of the patent rights conferred.

It is no secret that the offices of the IP5 members have been swamped with a backlog of work that is increasing exponentially everyday. With the process of globalization blurring regional and international economic divides, the inventors naturally seek concurrent protection of their works in all the markets possible and hence are prompted to file applications for the same technology at more than one patent office. IP5 intends to address this problem of backlog through the joint endeavour of its members.

The idea of the forum had been conceived in a meeting between the respective Heads of the 5 patent offices held in Jeju, Korea, on October 27 & 28, 2008. It was in that meeting that the work-sharing vision had come into existence, after it had been realized that in case of almost 250,000 applications per year, the work from one office could be reutilised by another and therefore, an enhanced work-sharing among the five offices was likely to make a substantial contribution to the capacity-increase in the patent examination carried out by each of the members.

It was mutually agreed between the members that for the realization of the work-sharing vision, two fundamental pre-requisites (based on the PCT foundation) are of necessity, viz. that (1) the results on patentability from the national procedure must be available on time and that (2) the work done needs to conform to a common approach to quality in the patent granting process. Moreover, a common methodology relating to disclosure of search and examination results was arrived at between the members based on mutual agreement.

Following 10 projects have been selected on which the vision is to be applied, launched from a PCT-based platform:

• Common Hybrid Classification (lead: EPO)
• Common Documentation (lead: EPO)
• Common Application Format (lead: JPO)
• Common Access to Search and Examination Results (lead: JPO)
• Common Training Policy (lead: KIPO)
• Mutual Machine Translation (lead: KIPO)
• Common Examination Practice Rules and Quality Management (lead: SIPO)
• Common Statistical Parameter System for Examination (lead: SIPO)
• Common Search and Examination Support Tools (lead: USPTO)
• Common Approach to Sharing and Documenting Search Strategies (lead: USPTO)

Details regarding each of these projects are available in the website here.

Emphasis has been laid on the significance of having an open communication channel (and also exchange of ideas) with other users of the system, including other patent offices, by the heads of the each of the IP5 offices. The importance of WIPO involvement in the implementation of the aforesaid projects has also been acknowledged. It has also been stressed upon that the examiners of the IP5 offices need to exhibit exemplary levels of involvement and commitment, especially in the matter of implementing the said projects and common action plans have also been suggested to achieve the desired degree of commitment, including holding an examiners' workshops facilitating the implementation of the relevant Foundation Projects such as Common Documentation Database, Common Search and Examination Support Tools, and Common Training Policy. By April, 2010, detailed proposals (including costs, benefits, resources and time line) for each Foundation Project and further knowledge pertaining to implementation thereof have been agreed to be exchanged between the members.

At present, an inventor can seek protection for his invention simultaneously in all the countries abiding by the PCT (the number was 138 as on March, 2008), by filing a single international patent application under the PCT. Three of the IP5 members, viz. the EPO, JPO and USPTO have also been instrumental in introducing several laudatory reforms in the PCT by way of the Trilateral co-operation. The Trilateral Offices have been active in promoting efficiency-enhancing measures for the PCT, with the Common Application Format (CAF) and the Common Hybrid Classification being two foremost examples where PCT-related developments initiated by the Trilateral co-operation have at present been brought under the purview of the Foundation Projects. The Indian Patent Office, however, is conspicuous in its absence from the IP5 member group, although China, Japan and Korea have been included therein.

Publicity Rights: Sourav Ganguly vs Tata Tea

An article deals with celebrity rights in India and states as below:

"Taking as an instance the case of Sourav Ganguly v. Tata Tea ltd. wherein Sourav Ganguly who returned form Lords after scoring magnificent centuries found himself extremely disturbed when he realized that Tata Tea Ltd., in which he was employed as a manager, was promoting it's 1 kilo tea packet by offering the consumers a chance to congratulate Sourav through a postcard which was there inside each packet of tea. In a way indirectly what the company intended was to promote the sale of its tea packet in the Indian market where Sourav had earned considerable amount of popularity. The court ruled in favour of Sourav by accepting that his fame and popularity is his intellectual property."

Do any of the readers have more information on this case? Unfortunately, the order itself cannot be located anywhere online.

"Pay up" says the Delhi High Court-Microsoft hauled up for Forum Shopping

In a path breaking ruling by the Delhi High Court to curb the menace of forum shopping, Justice S.N.Dhingra ordered software giant Microsoft Corporation to pay about Rs.8,00, 000 for having chosen to initiate the proceedings against an alleged copyright infringement at the Delhi High Court, despite the cause of action having arisen in four different cities, thereby shedding light on the unsettled law on choice of proper forum. Justice Dhingra very rightfully observed that “one cannot be given the liberty to choose a court of his liking because of the money power.”

The fact situation of the present civil suit (CS (OS) No.2027 of 2009 with CS (OS) 2132, 2024 & 2026 of 2009, order available here) are as follows:

Microsoft filed four suits of copyright infringement against four different defendants on the ground that the defendants were using illegally copied software of Microsoft at workplace. The main prayer of Microsoft was to move the Hon’ble Court to grant an ex parte interim injunction to restrain the defendants from using the pirated software programmes of the plaintiff in order to safeguard their copyrights. At this juncture, it is also to be noted that none of the four defendants in the suit has an office at New Delhi whereas Microsoft, having an extensive business in India has offices in cities where the defendants are located (which are at Ahmedabad, Mumbai, Pune, Bangalore, Chandigarh and Derabassi). Microsoft filed these suits as per section 62(2) of the Copyright Act, 1957.Microsoft chose New Delhi since it has an office in the national capital.

To choose or not to choose:

The Court observed that the objective of enacting section 62(2) of the Act was to ensure protection to the authors of original work from unnecessary harassment of necessarily initiating the proceedings against infringement at a forum where it arises. The object was thus to provide a convenience in the rule of choosing the appropriate forum. However, the Court also noted that due to differing opinion on the rule of forum non convenience (primarily distinguishing the judgments of Division Bench of the Delhi High Court in Indian Performing Right Society Limited v. Sanjay Dali 2009 (39) PTC (Delhi) and Horlicks Limited and Another v. Heinz India (Pvt.)Limited),the law on the same is unsettled which leads to a situation of choosing the forum as per the convenience of the plaintiff or the advocates which is mostly guided by the forces of monetary power giving rise to the problem of ‘forum hiring’. This also leads to the problem of ‘creation’ of a jurisdiction in the High Court of Delhi by means of a uniform valuation of the original jurisdiction in all cases of infringement without there being any relationship between the valuation and the relief prayed for.

In the strongly worded Order, Justice Dhingra expressed his deepest concerns about the problem of ‘forum hiring’ by noting that now the settled law in the respect of deciding the jurisdiction is upon the discretion of the plaintiff to value their suit and this has totally ousted the right of the Court to question the valuation done. Initially, all cases regarding intellectual property rights were filed at the Delhi High Court when the jurisdiction of the Court was Rs.5 lakhs and above. When the same was raised to Rs.20 lakhs, the cases were transferred to the District Courts but by way of amending the court fee and valuation para of the IPR suit, the cases were reverted to the High Court, thereby suggesting beyond doubt that it is the plaintiff who called the shots, as far as the question of deciding the jurisdiction is concerned. It made the financial capacity of the plaintiff the sole determinant in matters of deciding the jurisdiction-in the words of Justice Dhingra:

“If   he can   pay   the Court    fee of   the  High    Court,   he   can   value   his  suit accordingly (wherever there is original jurisdiction with the High Court) and choose the High Court as the court of original jurisdiction and if one cannot afford to pay the court fee as well as the fee of the High Court advocate, he can value the suit accordingly and choose either Civil Judge or a District Judge as the forum.”

He noted that in the present suit, Microsoft due to sheer monetary power could choose the court of their liking which certainly was inconvenient and was harassment for the defendants to contest the suit itself. Justice Dhingra in para 20 of the Order eloquently noted that :  “when  the   Constitution   of   India   provides  equality  before  law   this equality has to be  all pervasive and cannot be allowed to be diluted because of money power  or lobbying power. One cannot be given liberty to   choose   a court of his liking because of his money power.” This indeed is a real eye opener for the custodians of the judicial system in the country.

As a remedy, Justice Dhingra suggested that there should only be one Court where the suit can be filed by everybody to curb the menace of forum shopping. He also opined that there should be an amendment to Section 62(2) of the Act to decide as to why the original jurisdiction should not be only with District Courts and the High Courts should be exonerated to deal with the appeals. High Courts having overburdened themselves, should take up the onus of granting relief only in those cases where appropriate. But the mechanism of doing so should definitely be made independent of the ability of the plaintiff to pay to choose a more “experienced Judge”.

As a result, it was ordered that Microsoft is to deposit the costs for the defendants which should be commensurate with the expenses the defendants will have to incur to come to Delhi engage a counsel and pay the fees etc. The Court observed that since the suit is of investigative nature where the basis was a mere suspicion arising from the report of a hired investigator of the plaintiffs, the need to deposit Rs.2 Lakhs per suit as the costs security in the Court for the defendants was onerous upon the plaintiff. The amount is to be deposited to the Registrar General of the Court and shall be paid to the defendants in the event of the suit being of a speculative nature and the allegations by plaintiffs found to be false. The expenditure incurred for the appointment of a Local Commissioner to probe into the matter is also to be borne by the plaintiff. The fee of the Local Commissioner has been set at Rs.25, 000/- by the Court!

The matter has been listed next on January 18, 2010. We sincerely hope that the New Year brings in a new ray of hope in the murky waters of forum shopping.

Guest Post: Innovation for the 21st Century

We are very honoured to bring you a guest post from Professor Michael Carrier, a renowned thought leader in IP and competition policy. His post titled "Fostering Innovation by Fixing US Law" captures the central arguments he makes in a very engaging book titled "Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law". Given that India is soon going to face very challenging jurisprudential issues around the application of competition law to intellectual property, Michael's book will be of interest to many Indian readers.

I introduce him shortly below before giving you the text of his erudite guest post:

Michael Carrier is a professor at Rutgers Law School-Camden where he teaches and writes in the areas of antitrust, intellectual property, and property law. His work has appeared in the Stanford Law Review, Michigan Law Review, University of Pennsylvania Law Review, Duke Law Journal, Vanderbilt Law Review, Minnesota Law Review, Iowa Law Review, and Yale Law Journal Pocket Part.

His book, Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law, was published by Oxford University Press earlier this year. And his (edited) book, Critical Concepts in Intellectual Property Law: Competition, will be published by Edward Elgar in 2010.

Professor Carrier is a summa cum laude graduate of Yale University and a cum laude graduate of Michigan Law School, where he was Book Review Editor of the law review. For four years, he litigated antitrust, civil, intellectual property, and sports cases at Covington & Burling, in Washington, D.C. He also clerked for the Honorable John D. Butzner, Jr. on the U.S. Court of Appeals for the Fourth Circuit.

Fostering Innovation by fixing U.S. law

Michael A. Carrier

In my recent book Innovation for the 21st Century: Harnessing the Power of Intellectual Property and Antitrust Law (Oxford), I explore the relationship between law and innovation. In particular, I show how U.S. patent, copyright, and antitrust law often stifle innovation.

Shamnad Basheer was kind enough to invite me to write a guest post for SpicyIP. And I am pleased to accept his invitation. But I must state at the outset that it is difficult to condense a 400-page book to a blog post!

I don’t have the space here to discuss many of my proposals, including those addressing pharmaceutical mergers, standard-setting organizations, peer-to-peer (P2P) software, the Digital Millennium Copyright Act, statutory damages, biotechnology research tools, and material transfer agreements (MTAs). But I can discuss three proposals that may be of interest to SpicyIP readers: a post-grant opposition procedure, a framework for relief in patent infringement cases, and a solution to anticompetitive pharmaceutical patent settlements.

To be sure, the history of the patent system in India has differed significantly from that in the U.S. Just one example is the absence of product patents on pharmaceutical innovations in India between 1972 (when the Indian Patents Act of 1970 was implemented) and 2005 (when the Patents (Amendments) Act brought India into compliance with the WTO TRIPS Agreement). Nonetheless, given increased patenting in India in the past few years, the challenges that have arisen in the U.S. could prove instructive. My first proposal involves a post-grant opposition system. Such a system would address difficulties with the application process at the U.S. Patent and Trademark Office (PTO).

The PTO has granted numerous invalid patents, and this problem has not effectively been addressed through other means, such as litigation or patent reexamination. A post-grant opposition system would allow any party to challenge a patent after it is issued. It would provide a quicker and cheaper determination of validity than litigation, and would target the most valuable patents. And it would allow the PTO to access important information held by competitors.

In the book, I set forth numerous details of my proposed opposition system, including (1) the threshold a challenger must clear to commence an opposition, (2) the timing of the process, (3) the grounds on which a patent can be challenged, (4) the nature of the required evidentiary showing, (5) the procedure’s judges and appeals, (6) the materials that can be introduced in the proceeding, (7) the disclosure of the requester’s identity, and (8) the preclusive effect of an opposition.

Second, I offer a framework for determining relief in cases of patent infringement. To be sure, India has not confronted the incidence of nonpracticing entities (often referred to as “trolls”) that has occurred in the U.S. Nonetheless, for most of the past quarter-century in the U.S., any patentee could receive an injunction that removed the product from the market. Such relief gave commanding leverage to the patentee to obtain settlements that greatly exceeded a reasonable royalty and reflected the significant costs of switching to alternative technologies. In 2006, in eBay v. MercExchange, the Supreme Court made clear that courts should not automatically grant injunctions in patent infringement cases.

But the Court did not make clear how future courts should decide these issues. In the book, I examine the post-eBay landscape, synthesizing the cases and offering a framework that provides guidance to courts in determining appropriate relief in patent infringement cases. I conclude that courts should grant injunctive relief when (1) the patentee competes with the infringer in the marketplace, (2) the patented technology is a core component of the defendant’s product, or (3) (in most cases) a party willfully infringes the patent.

When these elements are not satisfied, courts should examine other factors, which include the effect of injunctive relief on the public. Damages will be appropriate in certain cases, such as where a manufacturer inadvertently infringes a patented component making up a small part of a product and the public would suffer substantial harm from injunctive relief. Other than these settings, courts should apply a default rule that injunctive relief is the appropriate remedy for patent infringement. My third proposal addresses settlements by which brand-name pharmaceutical firms pay generic companies to delay entering the market.

These reverse payments, which differ from typical licensing payments that flow from challengers to patentees, may even exceed what the generic could have earned by entering the market. Further raising suspicion, many of the patents are not valid. In the 1990s, generics won nearly 75 percent of their challenges to patents on drugs such as Prozac, Zantac, Taxol, and Plantinol. In June 2009, the FTC predicted that consumers would spend an extra $35 billion over the following 10 years because of these agreements. Despite the concerns presented by reverse payment settlements, U.S. courts have recently blessed them. They have explained that the agreements reduce costs and increase innovation.

They have referred to settlements as “natural by-products” of the Hatch-Waxman Act. And they have pointed to patents’ presumption of validity in demonstrating the agreements’ reasonableness. Although the Federal Trade Commission (which enforces the antitrust laws in the drug industry) and scholars have voiced strong arguments against courts’ leniency, these have fallen on judicial deaf ears. In the book, I explain why settlement agreements with reverse payments should be presumptively illegal.

I apply the framework that the U.S. Supreme Court articulated in Verizon Communications v. Law Offices of Curtis V. Trinko, which underscored the importance in antitrust analysis of a regulatory regime covering the challenged activity. In particular, the Hatch-Waxman Act provides Congress’s views on innovation and competition in the drug industry, freeing courts from the thorny task of reconciling the patent and antitrust laws. By encouraging generic patent challenges but also providing for patent term extensions and marketing exclusivity periods, the Act offered a delicate balance between competition and innovation. Unfortunately, mechanisms that Congress employed to encourage patent challenges – such as an exclusivity period for the first generic to challenge validity – have been twisted into barriers preventing competition. Antitrust can play a central role in resuscitating the drafters’ intentions and promoting competition.

Reverse payments also are concerning because of the parties’ aligned incentives. By delaying generic entry, brand firms can increase their monopoly profits. They can then use a portion of these profits to pay generics more than they would have received by entering the market. From an antitrust perspective, these payments for delay threaten to divide markets, a particularly egregious offense eliminating competition between rivals. A framework of presumptive illegality promises to resuscitate the generic competition at the heart of the Act. Given the importance of the drugs subject to reverse payments and the far-reaching effects of skyrocketing health care costs, a more justified and aggressive framework for such agreements would offer significant benefits. In short, these three proposals are representative of the frameworks I offer to change U.S. law to foster innovation.

SJMSOM ready to host 1st IPR Researchers' Confluence

The Shailesh J. Mehta School of Management (SJMSOM), a part of the Indian Institute of Technology (IIT), Bombay, is all set to host the 1st Intellectual Property Rights Researchers’ Confluence on December 21 and 22, 2009. The theme of the confluence is going to be Spearheading Intellectual Property Research in India –An Agenda for Research. With innovation in organizations assuming significant importance in the modern world and the emerging economies being channeled towards developing an IPR system by the global world order, the confluence intends to provide a platform for IPR researchers, academicians and practitioners to network and exchange ideas with fellow members regarding the various facets of the IPR theory, its management principles and its relevance to India under the global context.

Among the invited speakers, mention must be made of Professor Wim Vanhaverbeke, Professor of Strategy & Organisation at the Hasselt University (Belgium) and co-editor of "Open Innovation: Researching a New Paradigm”. Other distinguished invitees include Prof. V C Vivekanandan, IITKGP, Prof. Sudhir Jain, IIT Delhi, Prof. V.K. Unni, IIM Calcutta, Dr. Satish Tiwari, GE, Bangalore, Prof. Anuradha Maheshwari, NMIMS, Prof. Balu, University of Madras, Prof. Sunil Kunwar, DSE, Prof. T. Ramakrishna, NLSIU Bangalore, Prof. Sridhar, Nalsar Hyderabad, Mr. Parasuveera Uppara, Reliance Industries and Mr. Muzumdar, Patent Attorney, Mumbai.

Following is the preliminary schedule of the confluence:

Day 1 :: December 21, 2009

Presidential Address – MHRD on IPR Research

IPR Policy and Research – the philosophical & competitive need for an emerging innovation centric country?

Distinguished Invited Lecture:
Contemporary Research in IPR – The role of open innovation- Prof. Wim Vanhaverbeke, Hasselt University

Competitiveness of Indian industry and the role of IP – An economic perspective Research in IPR – Methodologies and how to go about it?

IPR Researchers Forum – break out session of individual research proposals / work with IP experts

Networking Dinner

Day 2 :: December 22, 2009

IP management Techniques – the role of technology in strategy

IP, Technological change and innovation

IP Education in India – learning and challenges

Panel Discussion: IP – Technology, Legal, Management - Education & Research

Roadmap breakout session
Changing Medium of expression and IP – the role of legal research

Showcasing the roadmap for IPR Research, Education & Management for India –next 5 years

Concluding Remarks / Certificates / best research design award / High Tea

SJMSOM invites Doctoral Students, Faculty, Researchers and Policy makers working in the area of Intellectual Property to present their research in this confluence. The subject matter of the paper can be in any area related to IP but should

• Present a particular focus on the most recent research on the chosen topic;

• Provide a critical appreciation, progress on the topic and opportunities for fresh theory-building; and

• Identify opportunities for research in the Indian context.

The selected presenters will get an opportunity to discuss their papers and to obtain constructive feedback. The copyrights will be held by the authors who will be free to publish them elsewhere. Papers should be submitted in MS Word format with full details of the author including affiliations, by email to ggouri[at]iitb.ac.in, latest by November 30, 2009. All papers will be subject to blind review by at least two referees and a decision conveyed to the authors by Dec 8, 2009.

All the participants will be divided into groups towards identifying the roadmap for IPR research in India. The confluence culminates with a collected representation of all the groups’ analysis over the two days. Research presenters are expected to register for the workshop and Students will be provided with a travel grant (IIIrd AC to and fro) and free accommodation.

Registration fee payable for Students :Rs. 1,000 and Others :Rs 2,000
DD payable at Mumbai to “The Registrar, Indian Institute of Technology Bombay.”

The Spicy IP team wishes the confluence to be a success and encourages the readers to participate in it and avail of the opportunities presented.

SpicyIP Tidbit: Announcing the arrival of Peer To Patent Australia

Continuing on our zealous path of advocating the cause of collaborative work to produce superior results, Benjamin McEniery was kind enough to point out to SpicyIP, a brand new initiative from our friends down under- "Peer-to-Patent Australia". This has been modelled along the lines of the Peer-to-Patent projects of the New York Law School (NYLS) and the Japan Patent Office.

A joint initiative of the Queensland University of Technology along with IP Australia, Peer-to-Patent Australia has been initially set up as a 6 month pilot to up the standards of the patent examination process and the quality of issued patents by allowing experts review participating patent applications as well as bring relevant prior art to the attention of IP Australia's patent examiners.

The process interestingly allows experts to look at patents on the website for a 90 day "public inspection" period. This will allow all members to offer comments, point out prior art references, review applications etc.

The next step in this process involves Peer to Patent Australia forwarding the top 10 prior art submissions for each application to IP Australia to assist in the examination process, with the final discretion of the relevance of such prior art left to the Patent Examiner.

Focus areas at this stage of the initiative are on advancing areas of technology such as business methods and computer software with giants such as IBM, Aristocrat Technologies, Australia Pty Limited, General Electric Company, Hewlett-Packard, Residex Pty Ltd, Yahoo and CSIRO participating in this notable endeavour.

SpicyIP wishes the Peer-to-Patent Australia team the very best.

All those interested can visit the website and participate in the review process here.

For those interested in more reading on the Peer to Patent projects read here.

SpicyIP Tidbits: Satyam settles Upaid dispute for $70 mn

Hot off the press is news that the Satyam-Upaid dispute has been settled by Mahindra Satyam for a settlement amount of USD 70 million. (Read the Reuters story here).

This may well be among the last posts on this dispute from our end, one that we have been tracking in this space since it first broke in Jan 2008, and which has since travelled across three continents in various forms.

Upaid, a UK-based mobile payments service provider, had filed a suit against Satyam in connection with titles to patents on work that the UK company had outsourced to the Indian company. Satyam has of course been in the news for all the wrong reasons since the original suit was filed by Upaid, and this settlement is part of a larger attempt by the new owners of Satyam (i.e., Mahindra) to repair their reputation.

For those of you keen to read more about the background of the case, you may want to read our earlier blogposts on this. On another note, while the suit itself may have come to a close, it is hoped that the matter itself has served as a wake-up call to domestic corporates, to begin incorporating IP management as part of their mainstream corporate governance practices.

SpicyIP Guest Post: The Trademarks (Amendment) Bill 2009 - Implementing the Madrid Protocol

SpicyIP is proud to bring you a guest post, by Ankit Prakash, on the proposed amendments to the Trademarks Act - a topic that should have been covered ages ago.

Ankit is currently a Senior Associate with Anand and Anand where he specialises in trademark prosecutions, oppositions, assignments, licences and agreements. He is widely considered to be one the rising stars on the trademark prosecution scene in India and I'm extremely thankful to him for contributing this insightful guest post.

The Trademarks (Amendment) Bill 2009: Implementing the Madrid Protocol

The Trademarks (Amendment) Bill 2009, which was first tabled in Parliament in the year 2007 and re-introduced in the year 2009, is significant step towards alignment of the Indian intellectual property regime with existing global norms.

The Bill, amongst other reforms, would implement the Madrid Protocol in India and make trademark applications analogous to Patent Cooperation Treaty (PCT) filings. In other words, applicants will no longer be required to file a separate trademark application in India in order to secure statutory rights in a trademark. Like PCT applications, an applicant may simply file a trademark application in any Madrid Protocol member country and choose India as one of the countries in which it wishes to seek trademark registration. This should be beneficial to applicants since costs and time would be saved.

Further, the bill prescribes a period of 18 months for the grant of an application to register a trademark, in line with the provisions of the Madrid Protocol.

Ratification of the Madrid Protocol is bound to have a noteworthy affect not only on the practice of trademark attorneys in India but also trademark rights holders in India. Proprietors of trademarks will be able to file trademark applications in countries other than India as the costs and logistic difficulties involved in overseas trademark fillings will be greatly reduced. Under the aegis of the Madrid Protocol, hindrances like attorney fees, translations costs, complicated procedures are set to reduce thereby leading to a scenario where Indian rights holders will be forthcoming in filing trademark applications abroad. However, on the flip side, the number of trademark applications filed by foreign entities in India, are certain to witness a decline.

Before the Madrid Protocol is adopted in earnest in India, few practical issues will have to be first clarified. Firstly, every country will have independent standards for prosecution of trademark applications and indeed some countries may have much stringent procedures for securing and/or maintaining trademark registrations. Also, the basic principles of trademark law may differ from country to country as, for instance, an invented mark or a unique mark in India may be deemed as a generic or even obscene mark in some other country. Therefore, there is a need to perhaps introduce a common appraisal system with identified minimum thresholds for assessments.

Secondly, the Bill does not differentiate between trademarks and Certification Trademarks or Collective Trademarks and does not lay down any procedures for their treatment. This will have to be clarified sooner rather than later if the Madrid Protocol has to be successfully implemented in India.

Most significantly, the implementation of the Madrid Protocol will lead to a very tricky conflict with Section 24 of the Advocates Act, 1961 which stipulates that a national of any other country may be admitted as an advocate, if citizens of India, duly qualified, are permitted to practise law in that other country.

Now the anomaly that arises is that the Trademark Rules, 2002, contains a provision that every applicant should have an address for service in India. If a foreign attorney files an application in India without an address for service in India then the Trademark Registry will not be able to correspond with such applicant/attorney as the Rules to do not contain any provisions to this effect.

Assuming that this technical aberration is sorted out and the rules are duly amended, another problem then arises. Once the trademark application is prosecuted and the Applicant’s attorney files a response to the examination report, then such advice may be deemed as being contrary to the provisions of Section 24 of the Advocates Act, 1961. to circumvent this inconsistency, foreign attorneys may end up seeking assistance from local attorneys which would again take us to a pre-Madrid Protocol scenario.

The Trademark Registries across India are working at breakneck speed to upgrade their infrastructure to enable a seamless transition after the Bill comes into force and the Madrid Protocol becomes a reality in India.

Breaking News - Gilead files tenofovir appeal at IPAB

Close on the heels of falling prey to pre-grant oppositions in August-September 2009 for two of its key anti-retroviral drugs, Gilead Sciences, Inc., has filed an appeal with the Intellectual Property Appellate Board in India to challenge the two IPO decisions against tenofovir disoproxil fumarate (TDF).

You will recall Shouvik had posted on the opposition proceedings not too long ago. By way of a quick run-through the key issues raised in the opposition, lead by the Alternative Law Forum, these were:

1. TDF is created by the addition of a salt (fumaric acid) to an existing compound (tenofovir disoproxil). Publications pre-dating Gilead’s application for TDF were cited showing that fumaric acid is a suitable pharmaceutically acceptable salt for phosphonate nucleotide analogues and their esters, like TD, in order to achieve better bioavailability and stability.

2. Gilead’s application was simply claiming the salt of TD and the specification filed failed to show any therapeutic efficacy, failing therefore to overcome 3(d) issues.

3. Also highlighted were procedural flaws in Gilead’s application and misrepresentations in the patent specification regarding the claimed advantages of the invention, in particular as to why the fumaric acid salt performs better than other salts.

On its part, Gilead has chosen to highlight, through its note announcing the IPAB appeal, its licensing models particularly in the ARV space. Specifically, Gilead says its licensing model, a collaborative market-based model that Shouvik had blogged about earlier "demonstrates that the responsible use of intellectual property can enhance patient access to medications – not hinder it – while helping pave the way for future medical innovation.”

This news isn't at all surprising, as Gilead's appeal was an impending one, and something we have been tracking on the blog for some time now. Watch this space for more updates on the appeal, as and when we get information.

India's First Innovation Czar and the Creation of an Innovation Eco-System

Dr Sam Pitroda, a leading innovator, entrepreneur and thought leader was recently appointed as India's first Innovation Czar, a post curiously titled as the “Infrastructure, Innovation and Information” adviser to the Prime Minister. Perhaps this the first step towards having a full fledged Ministry of Innovation, something that Dr Mashelkar has been advocating for a while now.

As one can appreciate, this is a critical milestone in the history of Indian innovation policy. The Mint published an editorial of mine reflecting on this milestone, as below:

India's Innovation Czar

"In December 2007, at a conference hosted by the National Academy of Sciences in Washington, DC, Sam Pitroda, a leading technology guru, was asked: Wouldn’t you agree that China is able to achieve quicker technological progress than India, owing to its one-party rule and ability to take quick decisions?

Pat came the answer: I’d rather be part of a democratic set-up, where all our voices can be heard.

Pitroda, recently appointed as India’s first innovation czar, should know—for, almost three decades ago, his voice was heard by a dynamic premier, Rajiv Gandhi, who was on the lookout for creative ideas to bridge the technology divide and bring telecommunications to the masses.

As with most leading innovations, Pitroda’s idea was a fairly simple one. Getting individual phone lines to all houses in rural India was impractical, even impossible. Coin-operated booths, as was widely prevalent in the US, could not have worked in India. Perhaps the best option was to leverage the existence of small establishments such as paan shops, grocery stores and local pharmacies that spanned the length and breadth of rural India. And thus was born the trademark yellow PCO booth that took Bell’s legendary invention to the remotest corners of India.

Hailed as one of the most admirable social innovations, this idea came to be replicated in other developing countries. Pitroda has now been appointed India’s first innovation czar, a post curiously titled as the “infrastructure, innovation and information” adviser to the Prime Minister.

This appointment couldn’t have come at a better time. For, despite India’s rapid economic progress and technological proficiency, it has failed to produce any real innovation on its soil. Consider our software industry, which continues to remain content with a cyber coolie “services” model, and our pharmaceutical industry that thrives on a copycat generic model. What is most puzzling is the fact that the very same brains that fail to create on Indian soil do so the moment they land on foreign shores. What ails? Do we really lack an innovation culture? How is it that a country that boasts of a Sushruta and rudimentary cataract surgery as far back as 600 BC does not have a single blockbuster drug to its credit?

Pitroda laments that in a rapidly expanding international market for ideas, Indians often end up using their brains to solve the problems of the Western world, but neglect their own. Consider the plight of villagers from the Sunderbans, where a furious Aila polluted agricultural lands with a massive infusion of salt water. Traditional wisdom holds that their livelihoods are doomed, as nothing ever grows in salt water.

Can we not think of creative ways of solving this problem—perhaps by eliminating salt water in a cost-effective manner or identifying crops or plants that are likely to withstand salt water? Ought not the government offer “prizes” or other incentives to encourage some out-of-the-box thinking here? No amount of Aila relief will help as much as an idea that guarantees a future sustained income to these poor villagers.

The key challenge for India’s innovation czar will be to help create an ecosystem that engenders innovations of this sort. What works for the more innovative economies such as the US may not work for India. Nobody understands this better than the czar who often quips that while most of his innovation and wealth creation is in the US, his social work is in India. The challenge for India is to create an innovation ecosystem, where future Pitrodas could leverage their creativity on Indian soil, rather than having to rush to Western pastures. And who better to drive the creation of such an ecosystem than Pitroda himself."

Introducing CLaM: Democratizing Law Making Through Open and Collaborative Participation

I'm extremely happy to announce that after months of planning and designing, we've finally managed to execute our collaborative law-making platform, titled CLaM. Yes, this is the very same CLIPP model that we'd highlighted earlier on this blog..though we're now rechristened it as a simpler sounding CLaM (though there is no nexus between our model and a certain mollusc that is a favourite with many sea food lovers).

This would not have been possible, but for the brilliant and relentless toil of Sroyon Mukherjee, a research associate with the IP Chair, NUJS (who will soon be heading to Clifford Chance, one of the magic circle London firms) and Kaushik Krishnan, already featured on this blog earlier. Please join me in giving them a big hand.

Our first proposal relates to a copyright defence for the disabled, highlighted in an earlier post. Particularly relevant, given that the World Disability Day was celebrated just yesterday.

This is how CLaM introduces itself on our Tikiwiki site:

"CLaM stands for Collaborative Law Making. The CLaM Initiative attempts to engineer a shift from "representative" to "direct" democracy by enhancing public participation in the framing of laws. It builds on the "collaborative" and "open" approach popularised by "open source" software and other initiatives such as Wikipedia. To this end, it seeks to build an online model of collaborative participation to help with the framing of laws/policies.

A core team would initially administer and manage this platform. Over time, it is hoped that others (any member of the public) could also run their own policy/legislative proposals on the CLaM platform. Also, the initial focus would be on intellectual property laws/policies pertinent to India, since this falls within the area of expertise of the current team administering this model. After a while, we hope to scale up the project to encompass the entire gamut of laws/policies.

The current core team proposes to identify areas in the current legal regime that require change. The proposed change is then articulated in the form of a proposal, giving as many details (including references and reading) as possible. This initial proposal is then thrown open for public participation, where any interested member of the public could either comment generally on the proposal or specifically edit it to their liking, giving reasons etc.

Our current project deals with a proposed amendment to the Indian Copyright Act intended to give visually impaired persons better access to copyrighted materials.

Amending the Copyright Act to Secure Access for the Disabled

A number of countries the world over provide for a copyright exception in favour of persons with disabilities. Unfortunately, the Indian Copyright Act, 1957 does not do so and unduly restricts the conversion of copyrighted works into formats accessible by disabled persons. An amendment proposed in 2006 to deal with this issue has serious limitations. For a more detailed overview of the concerns of the disabled community in this regard, please read our Problem statement.

An alternative amendment is therefore proposed. To view the Problem statement and Proposed Amendment, you need not be a registered user. However, in order to actively collaborate/participate in the framing of this law, we strongly encourage you to register.

Please log in (if you are an existing user), or register (if you are a new user - it's simple and free). Once you register, you can comment on, and make direct edits to the Draft Provision. The idea behind this platform is to democratize law making by enabling as many people to participate in the making of laws that are likely to impact our society."

We really hope that you will be enthused enough to participate in this adventure that leverages the power of web 2.0 to democratize the process of law making. In particular, we look forward to your comments on how we might improve this offering. No doubt, this is just a small beginning, but one, that we hope can be scaled up to yield more concrete and lasting outcomes.

ps: image from here.

Spicy IP Jobs: Research position at Neuchatel University

As part of the EU-funded Access to Pharmaceuticals (ATP) consortium, The Institute of Health Law at the University of Neuchatel, Switzerland is seeking to fill a position of a Scientific Collaborator in an international research project on IP and Access to Pharmaceutical Products and for running the part on Compulsory Licensing, in the framework of the EU 7th Framework Programme (FP7).

The ATP consortium recognizes the importance of equitable access to pharmaceuticals, especially in developing countries, and as such, focuses on the promotion of Socially Responsible Licensing as a means to that end.

For more on the position, see below:

Position: Scientific Collaborator, 80% - 100%

Activities: The successful candidate will collaborate to an international research on intellectual property and access to pharmaceutical products and will be responsible for running the part on
compulsory licensing, in the framework of the EU 7th Framework Programme (FP7).

Requirements: Completed education in Law (masters or equivalent), doctorate/ PhD in Law or, alternatively, solid experience and/or significative publications in the field of international intellectual property law (TRIPS, pharmaceutical innovation, access to pharmaceuticals). Capacity to work autonomously as well as in a team, initiative and interest for the subject.

Languages: Fluency in English and French, both orally and in writing.

Availability to travel.

Starting date: February 2010 or to be determined. The position is foreseen for a maximum
duration of three years.

Salary: Based on University of Neuchâtel regulations, commensurate with diplomas and
experience.

Deadline for application: 30 December 2009.

Letter of application/interest with complete résumé, current email for correspondence and copy of diplomas is to be addressed by email only to Prof. Daniel Kraus, Institute of Health Law, Law Faculty, University of Neuchâtel, at daniel.kraus@unine.ch.

The University of Neuchâtel is an Equal Opportunities Employer.

For more information about the project and the partner institutions:
http://www.accesstopharmaceuticals.org/ and daniel.kraus@unine.ch

[PDF Available at this link]

The "Appeal" of a Pre Grant Rejection

Prakruthi analysed an interesting Bombay High Court decision that suggested that a party aggrieved by a pre-grant opposition decision could file a writ before the High Court. Adithya Reddy, a guest blogger takes issue with this decision and argues that a "post grant" opposition mechanism is an efficacious alternative remedy; therefore High Courts ought not to entertain writs (under Art 226 of the Constitution of India) against pre-grant opposition decisions.

I want to offer a third alternative in this debate, albeit a very tentative one. This alternative argues that a pre-grant rejection is subsumed within an order of refusal under Section 15 of the Patents Act. Since such an order of refusal can be appealed to the IPAB (under s. 117A), a writ petition on the same count should not be entertained, barring exceptional circumstances. However, this alternative works only when there is a "rejection" pursuant to a pre-grant opposition. And not when the pre-grant opponent loses and the patent is granted.

Pre-grant oppositions are dealt with under section 25 of India's patent act. The section elaborates various grounds for challenging a published patent application and then goes on to state that "the Controller shall, if requested by such person for being heard, hear him and dispose of such representation in such manner and within such period as may be prescribed."

Contrast this with the very same section 25 that deals in its second half with "post grant oppositions" and after laying down extensive grounds of challenge, goes on to suggest that "the Controller shall order either to maintain or to amend or to revoke the patent."

One might argue that a disposal of a pre-grant opposition does not really amount to a "refusal" of the application. Rather, the Controller can only "refuse" a patent application under section 15, which reads as below:

"Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so."

Any orders stemming from section 15 can be appealed to the IPAB under section 117A(2) of the Patents Act. Since a pre-grant rejection really falls within the scope of an section 15 refusal, the same can be appealed to the IPAB. Therefore, no writ petition ought to lie before the High Court, since there is an efficacious alternative remedy. Will this logic fly? As mentioned earlier, this logic works only for patent applications that are subjected to a pre-grant oppn and refused and not for those that are ultimately granted.

ps: image from here.

Challenging Pre Grant Orders through Writs: Whither "Alternative Remedies"?

We have a very interesting guest post from Adithya Reddy, a bright patent litigator from Chennai. He argues that a post grant opposition is an efficacious alternative remedy and that therefore High Courts ought not to entertain writ petitions against pre-grant opposition decisions. Here goes:

The Bombay High Court’s recent decision regarding Cadilla Health Care’s patent claim and requirements of Section 3(d), commented upon in an earlier post by Prakruthi, revisits a question that was left unexplained by the Madras High Court in Indian Network for People living with HIV/AIDS Vs. Union of Indian & Others, MIPR 2009 (2) 36 (related to Hoffman-La Roche’s patent over Valganciclovir).

As was explained by Prakruthi, the Bombay High Court decided upon a Writ Petition filed by Golchem Industries (Petitioner) against the decision of the Asst Controller to grant a patent pertaining to Clopidogrel Besylate pursuant to an application filed by Cadila Healthcare Ltd (Respondent). One of the grounds of challenge was that the evidence produced by Respondent was inadmissible and therefore the Controller should not have relied on the same.

The subject matter of the present comment pertains to one of the defenses taken by the Respondent, namely that he Petitioner had alternative and efficacious remedies in the form of post-grant opposition under section 25 (2), suo motu revocation under Section 64 and remedy under section 104 to file a counter-claim in a suit for infringement. A similar defense was taken by Hoffman-La Roche before the Madras High Court when the grant of patent was challenged on the ground that the Controller failed to give a hearing to the Petitioners at the time of considering their pre-grant opposition.

The Madras High Court held that “the remedy at the post-grant stage cannot be equated with the remedy at the pre-grant stage.” However, without explaining further the Court proceeded on the footing that even if they are alternative remedies they do not operate as a bar on the High Court’s powers under Article 226 as there was a clear case of violation of natural justice. Another factor that might have weighed in the mind of the Court was the fact that a remedy under Section 25 (2) is available only to a ‘person interested’ whereas a pre-grant opposition can be filed by ‘any person’. The Petitioners in the case being NGOs, the Court might have felt that they do not fall within the category of ‘persons interested’ and therefore were disentitled to file post-grant oppositions (It ought to be noted that it is not clear from available authorities as to whether ‘interest’ for the purpose of Section 25 (2) means only ‘commercial interest’ or even other interest).

As far as the case before the Bombay High Court is concerned, the question of distinction between ‘person interested’ and ‘any person’ does not arise as the Petitioner was very much a commercial competitor. However, the Court did find that the decision of the Asst Controller was not in conformity to principles of natural justice and that it was manifestly erroneous (though I personally am not fully convinced on this). In view of such a finding, the Court observed-“it is not necessary for us to examine the argument of the Petitioners that the remedy of pre-grant opposition is qualitatively different than the remedy of post-grant opposition.” The basis of this argument of the Petitioner appears to be that “in the pre- grant opposition, the onus is on the patent applicant to show that the alleged invention would result in enhancement of the known efficacy of the stated substance; whereas in the post-grant opposition, the onus will be on the objector to show that the alleged invention does not result in enhancement of the known efficacy of the stated substance.”

Therefore, both of the above decisions do not, in categorical terms, lay down the law as to whether proceedings under Section 25 (2) & 64 can be considered to be alternative remedies to a Writ Petition. It is purely a principle of self-imposed prudence and not one of jurisdiction that a Court sitting under Article 226 will not entertain a matter when the remedy sought for can be obtained by alternate means. Such an alternative remedy need not always be by way of appeal. The exceptions to this rule are cases where there is violation of natural justice, violation of fundamental rights, jurisdictional error etc. Another requirement for application of the rule is that the alternate remedy should be effective and should not render the efforts of Petitioner futile due to undue delay etc.

In my view, when the result/ relief that comes out of post-grant opposition and revocation proceedings is invariably similar to the relief claimed by any petitioner in a Writ Petition challenging the decision of Controller granting a patent after pre-grant oppositions i.e. invalidation of the patent, there is no reason why such remedies cannot be considered to be alternative to filing of a Writ Petition. Intellectual Property laws are unique in the manner in which dispute resolution is contemplated. The only clear decision that I have come across on the issue was passed by the First Bench of the Madras High Court in the context of a right of a person to give notice of opposition to the registration of a trade mark beyond the period prescribed under Section 21 of the Trade Marks Act, 1999 (MANU/TN/2246/2009).

A Writ Petition was filed by one Allied Blenders and Distillers Limited against the decision of the Deputy Registrar of Trademarks refusing to entertain its opposition to registration of a trademark of Marks and John Distillers Ltd on the ground that it was sent after the time prescribed under Section 21. The court held in categorical terms that: “an effective alternative remedy is very much available to the petitioner under the statute by filing a rectification application under Section 57 of the Act, which the petitioner has already filed. The only difference between the two proceedings will be that in the rectification proceedings the burden of proof will be on the petitioner, whereas in the opposition proceedings the burden of proof will be on the respondent- 3.” Therefore, the contention of Golchem Industries before the Bombay High Court that in pre- grant opposition, the onus of proof is on the applicant whereas in the post-grant opposition, the onus will be on the objector, and therefore the latter is not an alternate remedy, stands rejected.

The above principle should apply with full force to cases pertaining to the Patents Act. While, it cannot be disputed that in cases of violation of natural justice and other manifest errors, the bar of alternative remedy does not apply, it should be firmly established that normally a failed pre-grant objector should not approach the High Court under Article 226 against the decision of the Controller.

Claim Construction III: Amendment of Patent Claims under Section 58

A decision was delivered by the Delhi High Court in September on amendment of patent claims in a case between AGC Flat Glass (Plaintiff/Patentee) and Anand Mahajan and Ors (Defendants). This is one of those rare instances where claim construction principles have been elucidated upon by an Indian Court and SpicyIP thanks Kamakhya for bringing this decision to our notice.

This decision comes out of an interim application made by the plaintiff to amend the specification of its patent during the pendency of a suit for infringement of its patent. The plaintiff was granted a patent for a mirror without a copper layer in its coating and without lead in the protection paint, besides a process for producing the same. I would like to digress here before I proceed with the case.

If product patents prevent third parties from manufacturing the product by any process, why do we still find patents protecting the product and the process (with the patent not being a product-by-process patent)? Is it to ensure that even if the product stands invalidated, the process may still survive? If yes, atleast in the instant case there seems to be nothing novel about the process alone which is capable of standing on its own merits if the product were to be invalidated.

Anyways, moving to the judgment, the principal claim of the plaintiff reads thus:
1) A Mirror with no copper layer comprising:
i) a vitreous substance,
ii) at least one material selected from the group consisting of bismuth, chromium, gold, indium, nickel, palladium, platinum, rhodium, ruthenium, titanium, vanadium and zinc at the surface of the said substrate,
iii) a silver coating layer on the surface of the said substrate, said silver layer optionally comprising at least one material selected from the group consisting of tin, chromium, vanadium, titanium, iron, indium, copper, and aluminium present at the surface of the silver coating layer and/or traces of silane; and
iv) at least one paint layer covering said silver coating layer.

To this claim, the plaintiff sought to add the words “a sensitizing material, typically tin” in clause ii of the claim. This application of the plaintiff under Section 58 of the Patents Act to amend the patent was opposed by the defendants on the grounds:
1. that the amendment was sought by the plaintiff 12 years after grant
2. that the unamended patent had been enforced against competitors in other infringement proceedings where the plaintiff did not feel the need to amend his patent
3. and that the amendment would alter the nature of the patented invention itself

Now, let’s move to the law on amendment of patents. When can a patent be amended? Section 58 of the Act states that the patent can be amended in a proceeding for revocation of the patent before the IPAB or the High Court (Section 57 too allows for amendment of a patent, but in a different situation).

To what extent can a patent be amended under Section 58? What circumscribes the extent and nature of the amendment? The amendment under the Section is subject to the conditions set out in Section 59. The amendment has to be in the nature of a correction, disclaimer or explanation. It cannot bring in new subject-matter or widen the scope of claims. So this indirectly means delimitation of claims is possible to the extent that amended limited claim lies within the scope of the unamended version i.e. if multiple combinations of elements have been claimed originally, the amendment can have the effect of claiming only one of those combinations and therefore disclaiming the rest. This follows as a corollary from Section 59 which allows an amendment that is in the nature of a disclaimer.

But is such an amendment allowable in all situations? The rationale behind bar on widening the scope of claims is apparent, but can there be instances where the patentee may not be allowed to limit the scope of his claims further, even if the amendment is a disclaimer? The answer, according to the Court, is in the affirmative; this typically occurs when the patentee has proactively enforced his patent in its wider version against competitors and seeks to amend it all of a sudden when the broad scope is challenged.

Is there a public interest factor at play when an amendment is sought? Yes, if the result of the amendment is a clear specification, the sooner such amendment is undertaken the better it is for practitioners of the art and the public- the recipients in the quid pro quo equation. However, if the amendment is undertaken to survive an invalidation bid and that too after a considerable period post grant, then public interest could require that the amendment be refused.

On this point, the Court referred to UK decisions and endorsed the slotting of such amendments into 2 categories: the first one is a situation where the patentee has been apprised of prior art by an opponent and amendment is undertaken to overcome the prior art; the second is a situation where the patentee himself has been aware of the prior art but has never taken steps to amend the patent on his own. UK Courts have held the second situation as being inexcusable, where the patentee must not be allowed to amend his patent.

Since allowable amendments have to be in the nature of a correction, disclaimer or explanation, the Court in the instant case had to check if the amendment sought by the plaintiff fell within any of these categories. The defendants said the amendment would not fall under any of the aforesaid categories since insertion of the words “a sensitizing material, typically tin” would alter the very nature of the subject-matter sought to be protected by the patent.

The Court observed that the patent document had to be read as a whole. Since the written description of the plaintiff clearly mentioned the presence of a sensitizing process as one of the three stages in manufacture of mirrors, the insertion sought by the plaintiff would amount to a mere explanation with no change in scope of claims. Also, since tin is ubiquitously used as sensitizing material, it is not the focal point of the patent and its insertion does not affect the inventive step or the nature of the invention claimed. Therefore, the amendment was held as permissible.

This judgment is reflective of a welcome development in Indian patent litigation- clear application of claim construction principles. We hope to see more of these in the future.