WE AIM TO INCREASE TRANSPARENCY IN INDIAN INTELLECTUAL PROPERTY POLICY/INSTITUTIONS.
WE ALSO STAND FOR FAIR, OBJECTIVE AND ACCURATE REPORTING/REVIEW OF INTELLECTUAL PROPERTY AND INNOVATION POLICY NEWS FROM INDIA.
In a development that has significant ramifications for the improvement of transparency in the Indian patent process, PH Kurian, the Controller General resurrected an old order mandating that all correspondence between a patent applicant and the office (during the course of prosecution) be made available to the public. The order reads thus:
"...after the publication of an application for a Patent u/s. ll(A), all the offices shall make available on the request of any person, the application on any form or otherwise on a plain paper, copies of all the letters/correspondence between the office and the applicant/agent or vice-versa along with the application and complete specification and provisional specification together with the drawings, if any, on payment of prescribed charges provided in the first schedule".
Apparently, the old order had been issued by Chandrasekhar, the ex Controller in 2006, but had been largely forgotten. Which is why Kurian's practice of opening up his administration to the public and putting up all his orders on the website for public viewing is an excellent practice.
We're particularly pleased with this development, since many of the requests that we put forward in our public petition to the IPO are slowly bearing fruit. Specifically, we had requested that all prosecution history be made public. And that barring the confidential reports of examiners under section 144, every other document relating to the patent process ought to be made public. We even prepared a note outlining why such publishing of information would be perfectly legal under Indian law.
When I look back, I realise that SpicyIP did not have many good things to say about the Indian patent office, ever since we began blogging in 2005. However, PH Kurian's appointment changed our perception..and indeed the perception of many an individual that had hitherto been watching the decay of the IPO with some concern. CH Unni brings out some of these aspects in his excellent interview with the IPO Chief.
A large part of why the Kurian administration appeals to us specifically is its sustained focus on transparency. For an increase in transparency will inevitably bring more skeletons out of the closet and engender more accountability. And is perhaps the cheapest way of achieving a more accountable and efficient administration.
Since his appointment, the Controller General has issued the following "public" orders to further transparency. Copies of these are available on the IPO website and I want to thank Prakruthi Gowda for painstakingly putting together this list:
Circular No.CG/GE/2009/171 dated 17.03.2009: The Circular banned the entry of retired officials of the IPO from visiting the IPO office and working as unauthorized agents.
Circular No.CG/GE/2009/282 dated 26.03.2009: This circular stated that all patent agents and lawyers would be issued identity cards with photographs. These identity cards were to be produced for the purposes of entering IPO premises.
Circular No.CG/PG/Circular/2009/223 dated 26.05.2009: The circular sought to prevent unauthorized and illegitimate persons from prosecuting applications in IP offices. The circular instructed officials to ensure the bona fides of the persons prosecuting.
Circular No.CG/PG/Circular/2009/30 dated 03.06.2009: This circular directs all controllers to issue "speaking" orders while rejecting pre-grant oppositions and consequently granting a patent.
Circular No.CG/PG/Circular/2009/158 dated 19.06.2009: The circular requires all Group A & B Officials of the Indian Patent Office to give a list of their close relatives (close relatives include father, mother, sister, brother, husband, wife, father-in-law, mother-in-law, brother-in-law, co-brother, sister-in-law and first cousins) who are Patent agents, Trademark agents or practicing IP lawyers. The circular stated that this was to ensure that such officers do not deal with their close relatives in any official matters directly.
Circular No.CG/PG/2009/179 dated 24.12.2009: The Circular requires all patentees and licensees to furnish information in Form 27 on the working of patents as prescribed under Section 146 of the Patents Act read with Rule 131 of the Patents Rules. The circular mandated submission of the information before 31st March 2010.
Circular No.CG/PG/Office order/2010/233 dated 12.01.2010: The order noted that the inspection of documents as per Section 11(A)(6)(b) of the Patents Act read with Rule 27 was restricted only to the complete specification, abstract and drawings as filed along with the application. Copies of the amended specification if any were not being allowed for inspection and copies were not allowed to be supplied to the public. This practice contravened the Patents Act and therefore had to be discarded.
This Circular therefore clarifies that the right procedure under Rule 27 is to provide the specification as on the date of a Rule 27 application and not the specification as filed along with the original patent application.
A recent policy paper on section 3(d) by former government official and IP expert, TC James resurrects the issue of the grant of 81 alleged "ever-greened" pharmaceutical patents. This paper was highlighted in several media reports, including one by leading IP reporter, CH Unnikrishnan of Mint.
James' paper poses an effective counter to the piece commissioned by the US India Business Council (USIBC) that effectively advocated the deletion of section 3(d) and I would urge you to read it.
The point of this post is to reflect on the supposed frivolous grant of patents and find ways of curbing the dirty habit of "evergreening". As many of you know, while "evergreening" has a healthy overtone in an “environmental” context, it connotes a rather sick practice in the "pharmaceutical" context, referring as it does to the practice of extending patent monopolies by effectuating mere modifications of existing drugs, where such modifications do not deliver any significant health benefits to the public.
I remember reading about these allegedly wrongful grants several months back and the first question that struck me was: Why on earth weren't these patent applications opposed? Surely, once granted, our already burdened patent office can't be expected to review them of their own accord (for they would then would have to do this each time anyone made similar allegations in relation to any patent grant). Rather, competitors are meant to be vigilant and challenge applications that impact them (through an opposition mechanism that is one of the most potent in the world) or petition for their revocation, if granted.
After all, the potential challengers to these 81 applications are our own Indian pharma majors, many of whom are aggressive para IV patent challengers in the US and have extensive experience with knocking down bad patents. Surely, if they can knock down patents in the US at such exorbitant costs, they can do so in India as well. It was therefore quite heartening to see a recent news item, where DG Shah of the Indian Pharma Alliance (IPA: a body comprising of leading Indian pharma majors) has now vowed to go after bad patents through the opposition mechanism.
Indeed at a broader level, all stakeholders in the Indian patent system including civil society institutions must leverage the opposition mechanism as best as they can. Funnily enough, the big bad MNCs are finding that if there is one practice that they cannot possibly monopolise, it is that of "evergreening". For our Indian majors have begun to take to this culture with great gusto.
Indeed, in the context of the famed Novartis patent case, it came to light that Natco, an Indian company that opposed Novartis’ application covering Gleevec, a polymorphic form of Imatinib Mesylate, had itself filed several applications covering various other polymorphic forms of Gleevec. Further, in a recent patent litigation, an Indian company, Cadilla was caught on the wrong side of section 3(d).
Therefore, unless we have a vigilant civil society, we'll let our own companies get away with murder!
In this context, readers may recollect an earlier post, where I bemoaned the pitiable number of oppositions filed, noting that:
"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."
The number of oppositions have of course increased since we did our last study and we are in the process of updating it.
In the meantime, we must appreciate that all of us have a collective stake in the Indian patent system and must actively leverage the opposition system to help the patent office in weeding out bad patents. Indeed, any of us can file a pre-grant opposition: all it takes is a couple of hours and at no cost!
If you don't believe me, ask Manoj Tongra, a drug control officer from Rajasthan who drafted and filed a post grant opposition recently (in his personal capacity) against what would appear to be a frivolous pharma patent by Venus Remedies, an Indian company. The patent (236996) which claims a combination of ceftrioxane sodium, sulbactum sodium and EDTA is being challenged for flouting section 3(d) and section 3(e). Of course, we're going to have interesting issues of "locus" cropping up here (since a post grant can only be filed by an "interested person")..but I really hope courts interpret the term "interested person" widely to include members of the public who have a stake in ensuring that undeserved patents that cause high drug prices are not granted.
For its part, the government must find ways of incentivising a greater triggering of the opposition mechanism and a more efficient and quicker decision making process. Only then can we hope for a "never-green" patent system to take root in India.
Indian Journal of International Economic Law (IJIEL), a prestigious refeered journal of NLSIU proudly present the 1st IJIEL International Student Essay Competition with the objective of providing an impetus to academic writing by students on areas of contemporary interest in International Economic Law.
Eligibility:The competition is open to all undergraduate students and above, except doctoral and PhD candidates.Participants must have crossed the age of 18 years as on January 1,2010 but should be below 30 years of age. Co-authored entries( in groups of two only) will be accepted.
Topic:The thematic topic for the competition is TRIPS-Plus Obligations and Free Trade Agreements (FTA) with Developing Countries which can be narrowed down to a precise and relevant perspective or argument.
Word limit : 2000 words excluding footnoting.Substantive footnoting is strictly prohibited.
Judges:Professor Carlos Correa and Professor Daniel Gervais, eminent scholars in the field of TRIPS have consented to be the final Judges for the competition.
Deadline: June 15, 2010.
Prizes: The two best entries will recieve $750 and $250 respectively.
The best essays will also be considered for publication in the third issue of IJIEL,subject to the editorial policy.
Potential participants are requested to submit an 'Intention to Participate' form before May 10,2010 available for download here.
For rules and regulations of the competition,visit here.
Further queries can be directed to ijiel@nls.ac.in or abhimanyugeorgejain@gmail.com
SpicyIP wishes the all the participants and organizers all the best!
The Pelargonium Patent case and the ruling that we had blogged about here was hailed as a landmark decision against bio-piracy. It, however, seems to have done little to abate the enthusiasm of companies to set out applying for and sometimes even getting a patents for, what is considered, traditional knowledge of indigenous communities in Africa.
Afro-IP, a leading blog on African IP issues, reports on two such controversial grants of patents on the Traditional Knowledge of Tanzania and Kenya, respectively.
Tanzania is contemplating moving the appropriate forum to stop the governments of the USA and Brazil from patenting a sorghum gene isolated from a variety of sorghum indigenous to Tanzania. The gene allows crops to be tolerant to aluminum found in the soil, the toxicity of which stunts the growth of crop plant roots. The USPTO is said to have granted the patent in September 2009 and further patent applications for the same are pending before the EPO and in Australia.
The Kenyan case relates to a patent granted by the USPTO in March 2010 for a medicinal herbal composition derived from Kenyan plants for treatment of HIV and other infectious diseases. However, in this instance, the patent granted is for process and not the plants itself.
The debate of bio-piracy has, from its initiation, taken the romantic hue of David v. Goliath. However, this is an issue that is fast gaining the spotlight in the realm of IP policy. With the ruling in the Pelargonium Patent case, it is 1-0 in favour of the indigenous communities.
But, the game is far from over.
While pharmaceutical companies try their best to find that fine balance and patent (and market) what they truly believe is a novel invention, the indigenous communities currently are fighting hard to ensure they're not left out in the cold. Questions of bio-piracy are tricky and are based on far more than just rhetoric. They require incisive analysis, which hopefully we will be able to present to our readers once we lay our hands on more information.
The International Trademark Association is a non-profit membership association. It consists of 5900 trademark owners, professionals and academics, from more than 190 countries. It is dedicated to the support and advancement of trademarks and related intellectual property.
INTA’s 132nd Annual Meeting is the trademark community’s premier event in 2010 for networking, continuing legal education, and committee and client meetings. Skill building workshops, industry breakouts, interactive table topics and trademark law sessions focused on international and U.S topics are being organized. The Meeting will also feature an exhibition hall featuring more than 90 exhibitors debuting new products and services.
Join INTA and stay current on trademark developments and:
· learn best practices to protect trademark rights worldwide · discover effective strategies for resolving issues from the most respected minds · obtain updated information on issues across geographic regions and industries · develop new relationships to expand your network of colleagues and clients · meet face-to-face with clients and associates to advance your business goals · earn CLE credits and CPD points
Click here to register for the meeting. Remember, you must first register before you can reserve your hotel room.
Become an INTA member and save US $500 + on Annual Meeting registration. This savings is the difference between the member and non-member registration rate, and when you sign up today you'll immediately gain access to all INTA member benefits, including additional discounted meeting rates that will save your company time and money. Click here for more details.
For more information, contact INTA’s India Representative, Simran Daryanani at sdaryanani@inta.org or 91-99209 48445
As promised, the Spicy IP readers are yet in the line for a treat in the form of the following exciting and insightful Guest Post from Suchita Saigal, a name familiar to any of the followers of this blog:
SECTION 3(D) –AGAIN?
In a recent article DNA reported that, several companies were filing patent applications for various forms of the same substance. The problem being that most of these forms did not satisfy the enhanced efficacy test laid down in section 3(d) of the Indian Patents Act. The example which follows is borrowed from the article and aims to illustrate how this new scheme works, “In September 2009, a patent application for AIDS drug darunavir was rejected as it did not meet patentability criteria laid down in the Indian Patent Act… But one patent rejection is not the end of the story for J&J… Darunavir still has six other patent applications for various forms floating in patent offices across India.” As is evident from the example, the concern which arises in this situation is that there is a very high likelihood that such practices could lead to grant of patents for non-patentable innovations. Apart from issues under section 3(d) of the Patents Act, there are other issues such as evergreening, which arise in this context.
The problem becomes more serious in light of the allegations published by Mint in December 2008 article with regard to the grant of substandard patents by the patent offices. The article states that such substandard patents (which fall foul of section 3(d)) are being granted as a result of a corrupt nexus between so-called patent agents, or lawyers employed by drug firms to manage their patent application process, and patent officials.
IT MUST BE THE BIG BAD MNC…
Interestingly, this new game plan isn’t used solely by the big bad MNCs, Indian innovators are also adopting this technique. The Mint report accounts for the likes of Cipla Limited having made use of this method to file patents for mere modifications. It is important to point out that, while one understands the media support for the Indian pharmaceutical companies in their fight against the International MNCs to maintain their market share, such support is clearly going the wrong way when the international MNCs are continuously painted in a negative light in the press but the Indian pharma companies get away with murder. Such leniency towards the Indian pharma companies does not help anyone. There is a need to go after all companies who are guilty of misusing processes, whether Indian or international.
NOT THE MNC, MUST BE THE GOVERNMENT!
All of this can easily be brushed aside with the usual rant which would read as follows, there are only four patent offices, all these offices are extremely short staffed and most importantly, there is no proper infrastructure to ensure effective communication between offices. Mr. Kurian himself in an interview with the Hindu admits all of these issues. All these problems stem from lack of planning by the legislature in the earlier stages. Though the laws are in place, the acts have been amended, the legislature clearly has not thought ahead to ensure that the infrastructure requirements are in place to meet the challenges which will be posed by enacting and enforcing additional laws, measures and regulations. Hence, with increased number of applications, devious methods employed by applicants and the poor infrastructure, the Indian patent officials are clearly fighting a losing battle. Even though the patent office is taking steps like upgrading the IPIRS, these measures are simply too small and tad too late in time. One can’t really blame the patent office for this debacle. In fact, the government might want to think of a ‘look before you leap’ strategy.
However, given allegations of the existence of a corrupt nexus and a generally non transparent process, the excuses given above work as a blind screen to hide the actual issues. While, the Mumbai patent office has undertaken investigations after the publication of Mint’s report, the accountancy levels on a general basis are still not satisfactory. As Shamnad stated in his interview to Mint, “If [the allegations of corruption and grant of sub-standard patents is] true, this lack of application of mind casts serious doubt on the level of scrutiny in examination and the situation needs to be remedied.”
It should be noted that none of this is to take away from the excellent work being done by Mr. Kurian, who is striving to increase the transparency and accountability levels at the Indian Patent offices. The best way forward is for the government to step up and support Mr. Kurian in hiring more manpower and having more resources and training.
WAIT, WHAT ABOUT THE LAW?
The Indian Patents Act allows for pre- and post– grant oppositions to be filed against patent applications and patents granted (post grant oppositions can be filed with the concerned patent office until 12 months after the grant of patent). Shamnad's post titled, "Patent Oppositions in India: The "Efficacy" of Section 3(d)" elaborately explains the entire opposition process and its implications under the Patent Act. In the present case our concern is that, while the law allows for filing of oppositions to the grant of patents, we are not using this process effectively. As the Mint article provides, there were no pre- or post-grant opposition to the award of any of the 10 patents granted for mere modifications. Again it is the government which needs to step up and think of ways to incentivize the usage of the opposition processes under the Patents Act.
MEASURE OF SUCCESS
Some time back while going over some archived articles published by Managing Intellectual Property I came across the article, “All Eyes on India”. The article has quite a lot of fanfare relating to the 2005 amendment to the Patents Act and how India is stepping into the brave new world. The interesting bit comes under the heading modernization, where the author says that, “..the Indian Patent Office is doing a great job. The Indian Patent Office has granted a record 15,262 patents between 2007 and 2008, which is more than double the 7,539 patents granted between 2006 and 2007…” Note that this article isn’t alone in measuring success of the system on the basis of numbers; this method is adopted in several other instances (please discount the effects of the credit crunch while reading the report). However, any such measure of success loses relevance when the issues of corruption, lack of transparency and grant of sub-standard patents comes forth. Any assessment of success needs to be done on the basis of the quality of work by the Patent offices and not the quantity, simply because assessing success on quantity creates a perverse incentive to grant as many patents as possible, which obviously isn't what we are looking for!
To end on a positive note: A spokesperson for Teva (one of the companies involved in this entire fiasco) stated that “Teva has faith in the Indian Patent Office, which is certainly well acquainted with the Indian Patent law…” Really? You think so!Oh well…
(Image from here)
P.s. I would like to thank Shamnad and Sai for their comments on the post and for tolerating me constantly pestering them.
The government sponsored CSIR programme, the Open Source Drug Discovery (OSDD) (which we have written about previously here) on Sunday, announced that they had successfully completed the first ever mapping of the Mycobacterium Tuberculosis (MTB) genome. The MTB gene was sequenced more than a decade ago. However of the 4000 genes, only 1000 had been annotated before the start of this online project. Known as 'Connect 2 Decode' (C2D) and started in late 2008, the project was unique, in that it was completed through a collaborative effort of nearly 3000 members across 74 countries. As stated by their site, "The gene map is similar to a Google map or a Wikipedia article that can be modified and updated as new information emerges on the features of the genome." The work was constantly verified in a structured community curation process, as well as through an onsite phase dedicated to quality control. The TB Gene map will be in the public domain for drug makers to use. The work is in a shared database hosted online that any institute doing research in TB can access and use.
While this is an amazing achievement in itself, it is also notable for another problem it has responded to. According to WHO, TB claims about 1.7 million lives a year. It is one of the most common tropical diseases in the world, and has been for a while. However, as OSDD has noted that of the roughly 1,550 new chemical entities marketed worldwide between 1975 to 2004, only 3 were for tuberculosis. Why is this? This is mainly due to the patent system that is currently in place, since it gears innovation of drugs towards markets which can pay more for those drugs - i.e., TB is a 'low-profit' disease ergo research towards drugs for it are 'not worth' investing in. In this respect, as Dr Zakir Thomas, Project Director OSDD notes, "OSDD's model in particular holds great promise for the scientific community by stimulating the development of better drugs and diagnostics for patients"
"This marks the beginning of the efforts of C2D to align R&D with public health and to use the full potential of the open source model for the development of medical technologies and drug discovery for neglected diseases," Samir Brahmachari, Director General, CSIR said.
"C2D's findings may contain critical data to unlock previously undiscovered details of tuberculosis resulting in development opportunities for urgently needed new drugs in India and other developing countries", he said.
This project, which is the first of its kind by any government, has been an amazing effort which has shown what collaboration can do!
Gopal Subramanium, the current Solicitor General was recently elected as the Chairman of the Bar Council of India. We wish him the very best as he pilots this body and the profession that it represents to new heights.
In an earlier post, we highlighted a Supreme Court ruling that relied extensively on a report by Mr Subramanium and mandated the conduct of bar exams this year. Now that he has been elected as the Bar Council Chairman, the prospects of such an exam in the near future seem real.
On Monday (12th April), Meenakshy Chakravorty will speak at NUJS on current trends in US patent law, including software patents. Those interested in attending this talk may send an email to shayonee[at]gmail.com. The talk is in Room 107 and is expected to range from 4 pm to 6 pm.
Meenakshy Chakravorty is an associate with Finnegan Henderson, a leading IP firm in the US. She specializes in litigation and patent prosecution. Her work covers a wide range of technical areas, including data retrieval and archiving, database design and architecture, natural language processing, network design and optimization, and computer graphics.
She has degrees from Stanford University (MS in Computer Science) and the Boston University School of Law (JD). Prior to her career as a lawyer, she worked in the software industry, designing and developing software used in conjunction with wireless handheld devices and data retrieval engines. Further, as a graduate student, involved in Human-Computer Interaction research and developed software to facilitate collaborative computing. She is also a former technical editor of the Journal of Science and Technology Law at Boston University School of Law.
American University Washington College of Law’s Program on Information Justice and Intellectual Property (PIJIP) is going to host a workshop of scholars and advocates on June 16-17, 2010, for gauging potential public interest impacts of the shift of international intellectual property norm setting to an enforcement agenda. Following the workshop, a working paper series on Public Interest Analysis of the International Intellectual Property Enforcement Agenda is scheduled to be launched. The agenda includes suggestions for a central Anticounterfeiting Trade Agreement (ACTA) as well as other manifestations like the expansion of enforcement provisions in free trade agreements, seizures of drugs in Europe, broad “anticounterfeiting” national laws and bills such as that passed in Kenya and being considered in other African countries, pressure on countries through Special 301 and GSP benefit determinations, foreign aid and technical assistance directives etc.
For this, PIJIP invites short (8-12 page) plain language policy papers, written in general policy paper (ie “white paper”) language geared toward policy advocates, government officials and other interested parties, but not an exclusively legal audience, analyzing possible public interest impacts of elements of the enforcement agenda, particularly analysis of leaked text of major proposals for ACTA. For copies of the text of ACTA proposals, and other resources on elements of the enforcement agenda, see the project’s collaborative website: https://sites.google.com/site/iipenforcement/
Specific questions of interest to the project are detailed below and in the attached description of research questions generated at a previous workshop on this issue (also available at the iipenforcement site). However, proposals on any aspect of the public interest impact of the enforcement agenda will be entertained.
Academics and policy advocates are invited to submit an abstract of a proposed paper on this topic for presentation at the workshop. Accepted papers for the workshop will receive travel assistance to attend the workshop in Washington D.C. Completed papers will be eligible for publication in the PIJIP Working Paper Series. A Prize of $1,000 will be granted for the top five completed papers presented at the workshop and submitted for publication in the Working Paper series.
PIJIP is particularly interested in examinations of the following issues:
• Section by section analysis of the how adoption of major ACTA proposals would alter the law of a given country (either a current ACTA negotiating country or a country not yet in ACTA negotiations). • Analysis of the impact of ACTA’s proposed institutional mechanisms on the current international institutional structure for intellectual property matters (including, e.g. WIPO and WTO) and how such alterations will impact public interests; • Analysis of the potential impact of ACTA proposals or other elements of the enforcement agenda on specific public interest concerns, including o access to knowledge imbedded goods and services, o libraries, o fair use, o media literacy, o public media, o developing countries (including if ACTA were globalized). • Analysis of the legality of elements of the enforcement agenda under international or domestic law, including, e.g.: Does the US Special 301 watch list program violate the WTO’s international dispute resolution mechanism? Do elements of the enforcement agenda violate international human rights obligations?
Submission of abstracts should be made to pijip@wcl.american.edu by April 15, 2010. Draft papers for presentation at the workshop will be due by June 1, 2010. Completed papers for publication in the Working Paper Series will be due by July 30, 2010.
Questions can be sent to addressed to Sean Flynn, Associate Director, PIJIP, at pijip@wcl.american.edu The SpicyIP Team thanks Professor Joshua D. Sarnoff, Professor & Associate Director, Glushko-Samuelson IP Law Clinic, Washington College of Law, American University, for kindly bringing this call to our attention.
I'm hoping that one of our readers can help us out here. We're looking very urgently for the JPC (Joint Parliamentary Committee) report that recommended the insertion of section 107A (a) (the Indian "Bolar" provision) into India's patent regime.
As many of you know, this Committee was set up to recommend changes to India's patent regime and submitted its report to the Parliament on 19 December 2001. According to the report: "the provision [section 107A(a)] has been made to ensure prompt availability of products, particularly generic drugs, immediately after the expiry of the term of the patent."
I had this report with me earlier, but have misplaced it. And I've knocked on many doors to try and get a copy, but to no avail. Would any of you have a copy of this JPC report? If so, would you please urgently let me know at "shamnad[at]gmail.com"? Thanks very much.
In what surely represents a big victory for Brazil, after its long standing dispute with USA over their illegal cotton subsidies, Brazil and US have reached a preliminary agreement just 1 day before Brazil was to start enforcing sanctions of $830 million against US. The sanctions were to include $591 million in the form of higher tariffs on a wide range of goods, as well as $239 million in the form of cross-retaliatory measures against American intellectual property. Brazil would've been the first country to have implemented these cross-retaliatory measures and it would've been interesting to see how exactly Brazil would've implemented these rights, since valuating such measures surely would've proved to be difficult.
However, this is important because it has proved the effectiveness of cross retaliation, and hopefully will give confidence to other countries considering taking similar measures when required. After 8 years of litigation and 4 years of non-compliance, it seems that it was the scare of sanctions, and with it, the pressure of the affected industries, finally seems to have worked. Brazil has therefore successfully induced compliance of a scofflaw state through effective implementation of this TRIPS flexibility in their domestic regime, even though they didn't actually need to enforce it. It is hoped that India, as well as other developing countries too, bring in such a law in their domestic regime to allow for cross-retaliation if and when it is required to bring some balance to the negotiating tables.
For more details on the settlement, see the NYT's article here.
SpicyIP has earlier blogged on the Google Adwords controversy wherein we had discussed the opinion of the Advocate General (AG) before the European Court of Justice in the dispute involving Google and Louis Vuitton. On the 23rd of last month, the ECJ held in favour of Google ruling that its sale of trademarks as keywords under its lucrative Adwords program is not violative of the right of the trademark owners.
The ECJ distinguished between use of the registered trademark by a third party for the purposes of providing information to a user on alternatives to the goods sold under the registered trademark, and use of the registered trademark by the third party in relation to its own products. It held that Google’s Adword program fell under the former and only the latter would constitute infringement of the trademarks chosen as adwords.
Therefore, if the third party’s goods appear as part of the main search results when a registered trademark is used as a search term, such use would amount to infringement of the registered trademark.
The underlying logic of the ECJ appears to be that only if the registered trademark has been used in a manner which makes it difficult for a user to identify the true origin of the goods, such use would attract claims of trademark infringement. This in a way is a restatement of the likelihood of confusion as applied to Adwords.
As to the question whether Google Adwords Program is entitled to be treated as an information service provider which is exempt from liability for infringement, the Court has referred the matter back to municipal Courts to answer.
SpicyIP will undertake a detailed analysis of the judgment soon.
Despite being passed in December 2009, a Supreme Court judgment with tremendous ramifications for the practice of law came to our notice only recently.
In Bar Council of India v. Bonnie Foi Law College, Justice Dalveer Bhandari and Justice H. L. Dattu mandated the Center to conduct bar examinations to test candidates for their suitability or otherwise for entry into the legal profession.
You heard right: current law students who expect to graduate this year may not be able to don the robes of an advocate without first clearing a bar exam.
The Supreme Court order dated on 14 December 2009, came in the light of recommendations by a special committee constituted by the court and headed by the Solicitor General, Gopal Subramanium. This committee was primarily tasked with making recommendations concerning the manner of affiliation and recognition of law colleges by the Bar Council of India.
Upon receipt of the Committee report, the Supreme Court mandated the Centre to implement the recommendations, explicitly referring to the introduction of a Bar Examination:
“The most significant achievement of this entire exercise has been the introduction of the Bar Examination. Learned Solicitor General submits that the first Bar Examination shall be conducted in July-August, 2010 by a specially constituted independent body, consisting of experts of various disciplines of national stature. In the facts and circumstances of this case, we deem it appropriate to direct the Central Government to ensure that the entire programme framed by the three-member Committee is operationalized forthwith. We further direct the concerned institutions to fully cooperate with the Bar Council of India.”
India is not new to bar exams. The Indian Advocates Act, 1961 required holders of law degrees who wished to enter practice to complete a course in practical training and also pass an examination. But, in 1973, this provision was deleted by way of amendment, and since then, a law graduate from a BCI-recognized university could directly enroll as a lawyer. The BCI attempted to introduce an apprenticeship or practical training course in 1998, whereby recently graduated law students would have to work for a year with a counsel before they could enrol as advocates. However, the Supreme Court struck it down on grounds of lack of competence (see V. Sudeer v. Bar Council of India, AIR 1999 SC 1167).
The Court held that under the prevailing statutory framework, the BCI did not have the authority to prescribe conditions for training and examinations after graduation; it would first have to amend the Advocates Act to confer such powers unto itself. Notwithstanding this, the court still went on to explicitly endorse the need for an apprenticeship and a Bar examination, albeit after appropriate statutory amendments in this regard.
In the light of the V Sudeer case, one is forced to contend with the legality of the current Supreme Court mandate in favour of bar exams. Needless to state, the Supremes are well within their right to reverse Sudeer or distinguish it, but neither of it happened in the present (Bonnie vs OUI) case. In fact, the Supreme Court was not even deciding the issue of whether or not bar council exams could be introduced by the Bar Council without an enabling amendment to the Advocates Act.
The other tricky part of this ruling is that it could be construed as a judicial mandate for legislative amendment. In effect, the Supreme Court has directed the Center to implement the Committee report and permit the holding of a bar exam by a certain date. But if such bar exam can only be legally instituted after legislative amendment, one might argue that the court has effectively directed the center to move such legislative amendment. Is this constitutionally sustainable? If such amendment is indeed part of the mandate, can the government formulate such a bill and present it before the end of this budget session to comply with the July-August 2010 date?
In fact, the report by the SG committee clearly recognizes the need for legislative amendment in this regard:
“A Bar Examination should be introduced for the purpose of admitting law graduates to the Bar: As discussed supra, the introduction of a bar examination would ensure maintenance of standards in the legal profession, as well as standardization and constant innovation in the standards of curriculum, teaching methodology etc. The Committee is, therefore, of the opinion that qualifying a bar examination should be made a requirement prior to admission to the Bar by all State Bar Councils across the country. In light of the decision of the Supreme Court in the V. Sudeer case, such a requirement may be introduced in the Advocates Act, 1961 by means of a statutory amendment."
Given that the Supreme Court was only directing an implementation of the Committee Report, one might argue that their order be construed as a mandate to the Centre to also begin the process of amending the Advocates Act. If this is so, can the Center comply with the courts time-frame to permit the Bar Council and other relevant authorities to hold such examinations by July-August 2010? The Center is already reeling under the pressure of multiple bills, some of which it now fears will not sail through as it initially expected (the one on nuclear liability limitation posing the greatest set of problems for it). Given that it is thinking of stalling some of these bills, will it take on another one at this stage and within this short time frame?
Anyway back to the report of the Committee. Prior to framing his report, the Solicitor General had solicited comments from a few of us involved in legal education. Pursuant to his request, we sent him a rather lengthy note, strongly recommending a bar exam as a potential “quality” control measure. For this interested, we’ve put up this note on SSRN (we are in the process of revising this note for the purpose of publication in a law journal).
In this piece, we specifically note:
"This note (prepared in response to a request from a Supreme Court Committee) begins by analysing the constitutional and regulatory framework pertaining to legal education in India with special emphasis on the two principal authorities in this sphere: The BCI and the UGC. It then goes on to describe ambiguities and criticism regarding the ambit of the BCI’s powers, and accreditation mechanisms in higher education in a few other countries.
It then goes on to recommend reforms, most of which can be effectuated within the corners of the existing regulatory framework, without the need for statutory reform. Others may require statutory amendments.
The principal recommendations made in this note are as follows:
i) Indian legal education ought to encompass much more than merely training students for the bar. Indeed, the aim ought to be to create an effective social engineer who is socially sensitive and uses the law in myriad ways to help better society.
ii) The Bar Council of India (BCI) has no legal/constitutional authority to regulate the full spectrum of legal education, independent of the Universities. In fact, Section 7(1)(h) of the Advocates Act clearly mentions that the BCI is to lay down standards of legal education in consultation with the Universities in India imparting such education and the State Bar Councils.
iii) An all-India Bar Entrance Examination should be introduced as a quality-control mechanism, instead of the existing accreditation system which is patently flawed, ineffective, costly and subject to abuse. It will not only ensure a qualitative check on the number of lawyers entering the Bar, but would also give the Bar Council scope to regulate legal education in a more robust manner.
iv) As a more substantive policy measure, we recommend a more thorough overhaul of the present regulatory structure pertaining to legal education in India. The BCI powers should only extend to regulating that aspect of legal education that is intrinsically connected with the practice of law at the Bar. Some of the regulatory functions that are presently being performed by the BCI, and which do not relate directly to practice at the Bar should be devolved to another authority. This authority should ideally be a standing committee on legal education under the IRAHE as proposed by the NKC."
Interestingly, the Supreme order also endorses the Committee’s recommendation for a Directorate of Legal Education under the BCI – a body meant to specifically regulate legal education within the bounds of the BCI powers. This was recently made operational, under the leadership of Prof. VB Coutinho. Rahul Singh, who taught at NLS Bangalore till recently, has been appointed as the Deputy Director. Our very best wishes as this body tries to navigate the rather challenging terrain of legal education.
The Centre for Internet and Society (CIS) is a name familiar to many owing to its engagement with matters concerning digital pluralism, public accountability and pedagogic practices in the field of Internet and Society, with particular emphasis on South-South dialogues and exchange. The organization seeks to influence the form of internet and its relation with the contemporary political, cultural, and social environment, by way of research, intervention, and collaboration.
The Spicy IP team is glad to bring forth to the readers the opinion on software patents in India, recently voiced by Pranesh Prakash, who is a programme manager with CIS and a graduate of the National Law School of India University, Bangalore. The post, which had originally been put up in the CIS blog (see here) is being reproduced verbatim below:
Arguments Against Software Patents in India
"CIS believes that software patents are harmful for the software industry and for consumers. In this post, Pranesh Prakash looks at the philosophical, legal and practical reasons for holding such a position in India. This is a slightly modified version of a presentation made by Pranesh Prakash at the iTechLaw conference in Bangalore on February 5, 2010, as part of a panel discussing software patents in India, the United States, and the European Union.
This blog post is based on a presentation made at the iTechLaw conference held on February 5, 2010. The audience consisted of lawyers from various corporations and corporate law firms. As is their wont, most lawyers when dealing with software patents get straight to an analysis of law governing the patenting of computer programmes in India and elsewhere, and seeing whether any loopholes exist and can be exploited to patent software. It was refreshing to see at least some lawyers actually going into questions of the need for patents to cover computer programs. In my presentation, I made a multi-pronged case against software patents: (1) philosophical justification against software patents based on the nature of software; (2) legal case against software patents; (3) practical reasons against software patents.
Preamble
Through these arguments, it is sought to be shown that patentability of software is not some arcane, technical question of law, but is a real issue that affect the continued production of new software and the everyday life of the coder/hacker/software programmer/engineer as well as consumers of software (which is, I may remind you, everywhere from your pacemaker to your phone). A preamble to the arguments would note that the main question to ask is: why should we allow for patenting of software? Answering this question will lead us to ask: who benefits from patenting of software. The conclusion that I come to is that patenting of software helps three categories of people: (1) those large software corporations that already have a large number of software patents; (2) those corporations that do not create software, but only trade in patents / sue on the basis of patents ("patent trolls"); (3) patent lawyers. How they don't help small and medium enterprises nor society at large (since they deter, rather than further invention) will be borne out by the rest of these arguments, especially the section on practical reasons against software patents.
What are Patents?
Patents are a twenty-year monopoly granted by the State on any invention. An invention has to have at least four characteristics: (0) patentable subject matter; (1) novelty (it has to be new); (2) inventive step / non-obviousness (even if new, it should not be obvious); (3) application to industry. A monopoly over that invention, thus means that if person X has invented something, then I may not use the core parts of that invention ("the essential claims") in my own invention. This prohibition applies even if I have come upon my invention without having known about X's invention. (Thus, independent creation is not a defence to patent infringement. This distinguishes it, for instance, from copyright law in which two people who created the same work independently of each other can both assert copyright.) Patents cover non-abstract ideas/functionality while copyright covers specific expressions of ideas. To clarify: imagine I make a drawing of a particular machine and describe the procedure of making it. Under patent law, no one else can make that particular machine, while under copyright law, no one can copy that drawing.
Philosophical Justification Against Software Patents
Even without going into the case against patents per se (lack of independent creation as a defence; lack of 'harm' as a criterion leading to internalization of all positive externalities; lack of effective disclosure and publication; etc.), which has been done much more ably by others like Bessen & Meurer (especially in their book Patent Failure) and Boldrin & Levine (in their book Against Intellectual Monopoly, the full text of which is available online).
But there is one essentially philosophical argument against software as subject matter of a patent. Software/computer programs ("instructions for a computer"), as any software engineer would tell you, are merely algorithms ("an effective method for solving a problem using a finite sequence of instructions") that are meant to be understood by a computer or a human who knows how to read that code.
Algorithms are not patentable subject matter, as they are mere expressions of abstract ideas, and not inventions in themselves. Computer programs, similarly, are abstract ideas. They only stop being abstract ideas when embodied in a machine or a process in which it is the machine/process that is the essential claim and not the software. That machine or process being patented would not grant protection to the software itself, but to the whole machine or process. Thus the abstract part of that machine/process (i.e., the computer program) could be used in any other machine/process, as it it is not the subject matter of the patent. Importantly, just because software is required to operate some machine would then not mean that the machine itself is not patentable, just that the software cannot be patented in guise of patenting a machine.
Legal Case Against Software Patents
In India, section 3(k) of the Patent Act reads:
(3) The following are not inventions within the meaning of this Act: (k) a mathematical or business method or computer programme (sic) per se or algorithms.
As one can see, computer programs are place in the same category as "mathematical methods", "algorithms", and "business methods", hence giving legal validity to the idea propounded in the previous section that computer programs are a kind of algorithms (just as algorithms are a kind of mathematical method).
Be that as it may, the best legal minds in India have had to work hard at understanding what exactly "computer programme per se" means. They have cited U.S. case law, U.K. case law, E.U. precedents, and sought to arrive at an understanding of how per se should be understood. While understanding what per se means might be a difficult job, it is much easier to see what it does not mean. For that, we can look at the 2004 Patent Ordinance that Parliament rejected in 2005. In that ordinance, sections 3(k) and (ka) read as follows:
(3) The following are not inventions within the meaning of this Act: (k) a computer programme per se other than its technical application to industry or a combination with hardware; (ka) a mathematical method or a business method or algorithms.
Thus, it is clear that the interpretation that "computer programme per se" excludes "a computer programme that has technical application to industry" and "a computer programme in combination with hardware" is wrong. By rejecting the 2004 Ordinance wording, Parliament has clearly shown that "technical application to industry" and "combination with hardware" do not make a computer programme patentable subject matter.
Indeed, what exactly is "technical application to industry"? "Technical" has various definitions, and a perusal through those definitions would show that barely any computer program can be said not to relate to a technique, not involve "specialized knowledge of applied arts and sciences" (it is code, after all; not everyone can write good algorithms), or not relate to "a practical subject that is organized according to scientific principles" or is "technological". Similarly, all software is, by definition, meant to be used in combination with hardware. Thus, it being used in combination with hardware must not, as argued above, give rise to patentability of otherwise unpatentable subject matter category.
In 2008, the Patent Office published a new 'Draft Manual Of Patent Practice And Procedure' in which it sought to allow patenting of certain method claims for software inventions (while earlier the Patent Office objected to method claims, allowing only device claims with hardware components). This Draft Manual was withdrawn from circulation, with Shri N.N. Prasad (then Joint Secretary of DIPP, the department administering the Patent Office) noting that the parts of the Manual on sections 3(d) and 3(k) had generated a lot of controversy, and were ultra vires the scope of the Manual (which could not override the Patent Act). He promised that those parts would be dropped and the Manual would be re-written. A revised draft of the Manual has not yet been released. Thus the interpretation provided in the Draft Manual (which was based heavily on the interpretation of the U.K. courts) cannot not be relied upon as a basis for arguments in favour of the patentability of software in India.
This is going to be an attempt at distilling and simplifying some of the main practical arguments against patenting of software.
There are traditionally four incentives that the patent system caters to: (1) incentive to invent; (2) incentive to disclose; (3) incentive to commercialize; and (4) incentive to invent substitutes. Apart from the last, patenting of software does not really aid any of them.
1.Patent Landmines / Submarine Patents / Patent Gridlocks / No Exception for Independent Creation
Given that computer programs are algorithms, having monopolies over such abstract ideas is detrimental to innovation. Just the metaphors say a lot about software patents: landmines (they cannot be seen/predicted); submarines (they surface out of the blue); gridlocks (because there are so many software patents around the same area of computing, they prevent further innovation in that area, since no program can be written without violating one patent or the other).
Imagine the madness that would have ensued had patents been granted when computer programming was in its infancy. Imagine different methods of sorting (quick sort, bubble sort) that are part of Computer Science 101 had been patented. While those particular instances aren't, similar algorithms, such as data compression algorithms (including the infamous LZW compression method), have been granted patents. Most importantly, even if one codes certain functionality into software independently of the patent holder, that is still violative of the patent. Computer programs being granted patents makes it extremely difficult to create other computer programs that are based on the same abstract ideas. Thus incentives # (1) and (3) are not fulfilled, and indeed, they are harmed. There is no incentive to invent, as one would always be violating one patent or the other. Given that, there is no incentive to commercialize what one has invented, because of fear of patent infringement suits.
Indeed, even the most diligent companies cannot guard themselves against software patents. FFII estimates that a very simple online shopping website would violate twenty different patents at the very least. Microsoft recently lost a case against i4i when i4i surfaced with a patent covering custom XML as implemented in MS Office 2003 and MS Office 2007. As a result Microsoft had to ship patches to its millions of customers, to disable the functionality and bypass that patent. The manufacturers of BlackBerry, the Canadian company Research in Motion, had to shell out USD 617 million as settlement to NTP over wireless push e-mail, as it was otherwise faced with the possibility of the court shutting down the BlackBerry service in the U.S. This happened despite there being a well-known method of doing so pre-dating the NTP patents. NTP has also filed cases against AT&T, Sprint Nextel, T-Mobile, Verizon Wireless, and Palm Inc. Microsoft was also hit by Visto Corporation over those same NTP patents, which had been licensed to Visto (a startup).
oDon't These Cases Show How Software Patents Help Small Companies?
The astute reader might be tempted to ask: are not all of these examples of small companies getting their dues from larger companies? Doesn't all of this show that software patents actually help small and medium enterprises (SMEs)? The answer to that is: no. To see why, we need to note the common thread binding i4i, NTP, and Visto. None of them were, at the time of their lawsuits, actually creating new software, and NTP was an out-and-out "non-practising entity"/"patent holding company" AKA, patent troll. i4i was in the process of closing shop, and Visto had just started up. None of these were actually practising the patent. None of these were producing any other software. Thus, none of these companies had anything to lose by going after big companies. In other words, the likes of Microsoft, RIM, Verizon, AT&T, etc., could not file counter-suits of patent infringement, which is normally what happens when SMEs try to assert patent rights against larger corporations. For every patent that the large corporation violates of the smaller corporation, the smaler corporation would be violating at least ten of the larger corporation's. Software patents are more helpful for software companies as a tool for cross-licensing rather than as a way of earning royalties. Even this does not work as a strategy against patent trolls.
Thus, the assertion that was made at the beginning is borne out: software patents help only patent trolls, large corporations that already have large software patent portfolios, and the lawyers who draft these patents and later argue them out in court.
2.Term of Patents
Twenty years of monopoly rights is outright ludicrous in an industry where the rate of turnover of technology is much faster -- anywhere between two years and five months.
3.Software Industry Progressed Greatly Without Patents
In India, software patents have never been asserted in courts (even though many have been illegally granted), yet the software industry in India is growing in leaps and bounds. Similarly, most of the big (American) giants of the software industry today grew to their stature by using copyright to "protect" their software, and not patents.
4.Copyright Exists for Software
As noted above, the code/expression of any software is internationally protected by copyright law. There is no reason to protect the ideas/functionality of that software as well.
5.Insufficient Disclosure
When ordinary computer programmers cannot understand what a particular software patent covers (which is the overwhelming case), then the patent is of no use. One of the main incentives of the patent system is to encourage gifted inventors to share their genius with the world. It is not about gifted inventors paying equally gifted lawyers to obfuscate their inventions into gobbledygook so that other gifted inventors can at best hazard a guess as to precisely what is and is not covered by that patent. Thus, this incentive (#2) is not fulfilled by the current system of patents either -- not unless there is a major overhaul of the system. This ties in with the impossibility of ensuring that one is not violating a software patent. If a reasonably smart software developer (who are often working as individuals, and as part of SMEs) cannot quickly ascertain whether one is violating patents, then there is a huge disincentive against developing software in that area at all.
6.Software Patents Work Against Free/Libre/Open Source Software
Software patents hinder the development of software and FOSS licences, as the licensee is not allowed to restrict the rights of the sub-licensees over and above the restrictions that the licensee has to observe. Thus, all patent clearances obtained by the licensee must be passed on to the sub-licensees. Thus, patented software, though most countries around the world do not recognize them, are generally not included in the default builds of many FOSS operating systems. This inhabits the general adoption of FOSS, since many of the software patents, even though not enforceable in India, are paid heed to by the software that Indians download, and the MP3 and DivX formats are not enabled by default in standard installations of a Linux OS such as Ubuntu.
Conclusion
Currently, the U.S. patent system is being reviewed at the administrative level, the legislative level, as well as the judicial level. At the judicial level, the question of business method patents (and, by extension, software patents) is before the Supreme Court of the United States of America in the form of Bilski v. Kappos. Judge Mayer of the Court of Appeals for the Federal Circuit (CAFC, which heard In re Bilksi) noted that "the patent system has run amok". The Free Software Foundation submitted a most extensive amicus curiae brief to the U.S. Supreme Court, filled with brilliant analysis of software patents and arguments against the patentability of software that is well worth a read.”
The Spicy IP team thanks Pranesh for agreeing to share his opinion with the team as well as the readers and to invites comments from the readers to develop this issue into a raging and lively debate.
Yet again, an anonymous official of our democratically elected government, has informed the ET that the Indian Government is ready to file a WTO complaint against the E.U. for the 'seizure' of transiting Indian drug consignments. Apparently talks with the E.U. over the issue have failed and the Indian Government is waiting for the Brazilians to get domestic clearance before both countries file a joint complaint against the E.U.
In October, 2009 we had blogged on similar news reports which quoted anonymous officials of the Commerce Ministry as saying that India and Brazil were preparing to file complaints against the E.U. if in case direct talks with the E.U. failed to bring about the necessary change in E.U.'s border control laws.
In related news the Commerce Minister recently announced that he is hoping to seal the Indo-E.U. Free Trade Agreement (FTA) by October of this year. I find it a bit odd that the Indian Government would want to initiate legal proceedings against the E.U., its largest trading partner, when it is clearly hoping to seal a FTA which would open up export opportunities of atleast $9 billion.
One of the contentious issues in the current negotiations over the FTA is the introduction of increased IP protection for the pharmaceutical sectors. It therefore appears to be too much of a coincidence for the Commerce Ministry to be announcing legal proceedings against the E.U. on yet another pharma related IP issue. Regardless of whether this move is by coincidence or design, it appears to me that such a move will have a substantial impact on the Indo-E.U. FTA.
An issue which deserves closer examination by the Indian Government is the possibility to take only the Netherlands to the WTO instead of the entire E.U. As already discussed by Shamnad in one of his earlier posts the same E.U. regulation that India seeks to challenge is interpreted differently by the British and Dutch courts. In this backdrop it does not make any sense for the Indian Government to be jeopardizing such vital trade talks when it could afford to sue only the Netherlands.
In a development that has significant ramifications for the improvement of transparency in the Indian patent process, PH Kurian, the Controller General resurrected an old order mandating that all correspondence between a patent applicant and the office (during the course of prosecution) be made available to the public. The order reads thus:
Posts
