The Nagoya Protocol – Convention on Biological Diversity

A new international treaty named the “Nagoya Protocol” will be giving some relief to India and other developing countries. The Nagoya Protocol on Access to Genetic Resources with an objective of ensuring access of genetic resources to the signatory countries and ensuring fair and equitable sharing of benefit to the local community and signatory country that provides genetic resources is a supplementary agreement to the Convention of Biological Diversity. The protocol singed in Nagoya, Japan on 29th Oct 2010 having 50 signatory states (ratification by 50 countries being the threshold requirement) as on today is all set to come in force on 12 Oct 2014.

Let’s look at the different perspective of The Nagoya Protocol and how it would help the providers (country)/ local community, sourcing country and users in the coming days after its implementation.

BACKGROUND

It all started in June 1992, when Convention on Biological Diversity (CBD) was opened for signature. CBDs inspiration came from the world’s community growing commitment to sustainable development.

Genetic resources are the heritable characteristics of a plant or animal of real or potential benefit to people. The core idea of CBD is to allow its members to get easy access to genetic resources (GR) and provide an equitable share of derived profit to the sourcing country/ local community and to the people who have helped to grow and protect the genetic resources.  The Nagoya Protocol was adopted after nearly six years of negotiations to provide a legal framework which will create transparency for both the country (provider) and users of genetic resources by establishing a unified system for allowing access to genetic resources, stopping illegal international trade of GR and by creating a equitable sharing model wherein both the user and provider can acquire equal benefits.

The Protocol has three main objectives i.e. access, benefit- sharing and compliance which lets the users and provider to establish more predictable conditions about usage of genetic resources, and ensure that only legally acquired genetic resources are used.

Now for these above conditions to lay down in an appropriate manner a unified protocol system was required. The protocol should find a practical way in order to share these benefits since until now the lack of a coherent global standard has resulted in a high level of mistrust and obstacles to biodiversity research and its potentially valuable outcomes.

 

Parameters under which the Protocol gets Applied

The Protocol will be applied only when genetic resources pathogens are ‘accessed’ and ‘used’. Under the Protocol, the term ‘used’ also means to include research and development work on the genetic and/ or biochemical composition of genetic resources. In addition to genetic resources in its original form, the protocol also covers traditional knowledge (TK) associated with genetic resources. On the other hand the protocol does not apply to genetic resources covered by benefit-sharing agreements and specialised access such as the International Treaty on Plant Genetic Resources for Food and Agriculture, or the framework for pandemic preparedness of the World Health Organisation. Also it will not be applied to human genetic material, or to resources that were acquired before the Protocol comes into practise.

Ratification of Nagoya Protocol by India

India and other developing countries with biological diversity and natural resources will be benefited by commercial use of these resources. India lead group of nations for over two decades in UN negotiation to get the other developed countries signed the Nagoya Protocol in 2011 and the Union Cabinet ratified it in 2012. India is one of the mega diverse countries rich in biodiversity and traditional knowledge is expected to get maximum benefits as this protocol gets implemented this October.

It has also been seen that our country has been a regular victim of misappropriation of our genetic resources and associated traditional knowledge, which have been patented in other countries (well known examples include haldi and neem). It is expected that the Access Sharing and Benefit (ABS) Protocol which is a key missing pillar of the CBD, would rectify this problem.

Who will Be Affected

A myriad of industries globally are likely to get benefited due to easy access of genetic resources and associated traditional knowledge that was kept protected by the local community and was hard to procure in absence any established protocol. Because of the transparent, fair and equitable sharing of benefits derived from commercial/R&D use of genetic resources, the local community or provider country would be motivated to offer their natural/genetic resources, and tradition knowledge to industry. However companies in the pharmaceutical industry, agriculture space, and FMCG/CPG are likely to get impacted due to the profit sharing clause of the protocol and will have to carefully evaluate their long term sourcing strategies, new product launches, brand positioning etc since they would be expected to share their profits with local communities for not only using the original resource, but also for any derivative products developed from it.

Intellectual Property Rights (IPR’s)

As the genetic resources and traditional knowledge is transfers from provider country to the user (industry), property rights including intellectual property rights (IPR), are the most relevant critical factors in the access and benefit sharing of genetic resources (ABS) concept. There are two possibilities that exist for strengthening the property rights of resource managers. On the one hand, national governments can ensure that the local level participates in the property rights over biodiversity and the benefits that arise from their use. On the other hand, international and national patent law requires the disclosure of the origin of genetic resources when IPR’s are granted.

It is hoped that the Nagoya Protocol would address the imbalance arising from property rights distribution. The Protocol has strengthened the local level by asking the parties to take legislative, administrative or policy measures to ensure that benefits arising from the utilization of genetic resources that are held by indigenous and local communities are shared in a fair and equitable way with the communities concerned.

High Level observation

The industries that could get major impacted are Pharmaceutical Industries, Health Care Products and its various verticals, fast moving consumer foods (FMCG)/ Consumer Packaged Goods (CPG), Agriculture Products, Non-Commercial Research, and chemical industries etc.

It will also definitely provide the R&D sector with the certainty they need to invest in biodiversity-based research. Further the Indigenous and local communities may receive benefits through a strong legal system that respects the value of traditional knowledge associated with genetic resources.

Also the provider (country) of genetic resources is obliged to receive either monetary or non-monetary benefits which will include a portion of the total revenue generated from the sales of the final product by user from the source (within that country/ region) to the end used. Examples of the monetary and non-monetary benefits include Up-front payments; Payment of royalties; Joint ownership of relevant intellectual property rights; Transfer of technology and expertise etc.

The exploitation of natural resources and small-scale players (farmers) is expected to decrease, and key constituents within the supply chain are likely to obtain higher benefits with the implementation of the Nagoya Protocol.

On the other hand some of the drawbacks associated with this system will be with respect to ownership of patents since with the implementation of new rules and standards set up by various bodies including CBD, ownership of patents could become a serious threat. Also, problems associated with multiple patent ownership can erupt, because of a benefit-sharing scheme.

Companies might  have to look up for  alternative strategies of usage of genetic resources to ensure that it should not fall within the framework of the Nagoya Protocol and also assess the criteria on new product development costs and strategies surrounding it.

As the organizations are required to provide benefits to the provider country, the organizations may increase the market prizes of the products obtained from genetic resources in order to sustain higher profit percentage with shrinking operating margins. Further there will also be an increase in the timeline involved for product development because of various documentations and approvals required to source the products.

Though protocol in its essence has lot to offer, both to the provider and user, its enforceability and compliance may be a real challenge because of the complexity evolved in identifying the amount of profit to be shared, identification of beneficiaries, procedural requirements, technology transfer issues and overlapping property rights.  It is yet to be seen how the signatory countries establishes the procedures and comply with the articles of the protocol.

About the Author: Ms Sugandhika Mehta, Patent Associate at Khurana & Khurana and can be reached at:  sugandhika@khuranaandkhurana.com

Indian Patent office rejects Patent claim over Abraxane

In a major setback, the Indian Patent Office denied a patent to an anti cancer drug Abraxane manufactured by US-Based Abraxis BioSciences. Here we will discuss the decision given by IPO at the back drop of the arguments advanced by the respective parties. The copy of the decision made by Controller General of Patents can be accessed here.

 Background

In a brief, Patent application no. 2899/DELNP/2005 filed by Abraxis Biosciences was earlier rejected by Indian patent office on 24th July 2009, based on u/s 2(1)(j), u/s 3(e ) and u/s 10 of the Patents Act, 1970. Being aggrieved by the decision of Controller General of Patents, the applicant filed an appeal (M.P.NO. 57/2010 IN OA/3/2010/PT/DEL and OA/3/2010/PT/DEL) in ‘Intellectual Property Appellate Board’ (IPAB) against said decision. The Honorable IPAB vide its decision dated 20/01/2014 (Order No. 9 of 2014) set aside the said controller’s order and remanded the matter to the Assistant Controller for a fresh consideration by affording opportunity to both sides based on the Principle of natural justice. The detailed article is already discussed on IIPRD blog here.

Pursuant to that order, fresh consideration was given to Abraxis and hearing was held on 01/04/2014 and 02/04/2014. Further, the opponent NATCO Pharmaceuticals filed a fresh representation u/s 25(1) on 28/03/2014 under the grounds of section 25(1)(g) and 25(1)(f) limited to section 3(d). The said representation was forwarded to the applicant. The applicant filed reply statement on 15/04/2014. The hearing on the fresh representation was held on 17/04/2014.

 Decision made by Controller

On the issue of admissibility of fresh representation by the opponent, it was contended that the opponent was unaware about the amended claims 1-12 which were previously 1-93 and hence, the fresh representation by the opponent must be taken on record. The Controller upheld this contention and the fresh representation were taken on record.

Moreover in respect of the contention on the ground of lack of novelty raised by the opponent it was held by the controller that the invention does not lack any novelty and thus the contention u/s 25 (1) (b) is dismissed.  Therefore the contention that the claims are in public use or publicly known under section 25 (1)(d)  was also dismissed. However, the Controller maintained the contentions raised by the opponent on three grounds which are as follows.

Ground u/s 25 (1)(e)

The contention raised by the opponent u/s 25 (1)(e) that the claims lack inventive steps was upheld by the Controller as the applicant failed to provide any substantial evidence regarding the improved unexpected properties in the claimed composition as contended by the applicant. Moreover, the teaching of cited reference reveals that a person having ordinary skill in the art would have sufficient teaching/ suggestion and motivation to reach at every element of the claimed composition.

 Ground u/s 25 (1)(f)

The opponent raised contention u/s 25 (1)(f) that the claims are not patentable u/s 3(e) and 3(d). It was observed by the Controller that the applicant failed to provide any comparative data supporting the claimed unforeseen effect. Further, the examples given in the specification are more of routine pharmacological study of the composition to analyze therapeutic and toxicological effect on the body on the administration of claimed composition. It was claimed by the applicant that by this invention the associated side-effects of said composition are reduced and enhancing transportation of claimed composition. However, it was further observed by the controller that the specification as provided neither indicates any enhanced effect nor provides any significant properties relating to therapeutic efficacy as claimed. Hence, the application falls under the purview of section 3(d) of Indian Patent act, 1970 which makes the invention non patentable (Relied on the decision by Honorable Supreme Court in the case of Novartis vs. Union of India).

Further in relation to the contention raised under section 3(e), it was held that the claimed composition is considered as a mere admixture resulting only in the aggregation of the properties and therefore, the instant amended claims 1 to 12 fall u/s 3(e) of the Patents Act, 1970. The rationale behind this is that the claims by the applicant is routine experimentation work for a person with ordinary skill in the art as inferred from the prior art references. Hence, the contention u/s 25(1)(f) is maintained and the application also fails under the purview of section 3(e) of Indian Patent act, 1970 which makes the invention non patentable.

Ground u/s 25 (1)(g)

The Controller upheld the contention u/s 25 (1)(g) as raised by opponent that there exists insufficiency of disclosure as provided by applicant. It was observed that the specification lacks disclosing any working demonstration or any example regarding claimed invention.

 Conclusion

By this judgment the Controller strengthen the rational and provisions of the patent act to be followed stringently by the applicants so that the application shall not fall under the purview of the provisions that makes the invention not patentable on the grounds of insufficiency, lack of inventive step and the category of invention which are not patentable under the patent act. The decision given by Controller General of Patents is another safeguards against evergreening of pharmaceutical drug patents as provided under section 3 (d) of the Indian Patent act, 1970.

About the Author: Mr Sitanshu singh, Patent Associate at Khurana & Khurana and can be reached at:  sitanshu@khuranaandkhurana.com

Tesla Motors Decide to Open Source their Patents

On June 12th 2014, Elon Musk, CEO and Chief Product Architect of electric car company Tesla Motors announced that Tesla Motors will let other companies use its inventions under an open source inspired agenda at the company. This is how Elon Musk put it in his blog post- “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.” This initiative came as a huge surprise to the technology space, and got a lot of people thinking. Considering Tesla’s exhaustive Patent portfolio, this move came as a bigger surprise to some, as the company holds the largest number of Patents in the electric vehicle industry having pioneered the technology and having gained constantly improved efficiency in process and technology in the industry. Tesla pioneered innovations lowered cost and increased safety of battery packs. Its cars recharge much faster than others on the market, thanks to connector, software, and power-management advances. Now this public company will offer these novel technologies to its rivals and ask nothing but goodwill in return.

Tesla has set the industry standard as far as their technology is concerned, which is quite evident from the hundred of Patents they hold and a number of applications pending. The question though arises that why would they open source their Patents for competitors to use after having spent huge resources in the process..There is more than one perspective to the argument though. This was probably a step Tesla Motors was contemplating and waiting to initiate once they feel no threat from competition. From a competition standpoint Tesla’s place is secure. “What we are doing is a modest thing,” he said. “You want to be innovating so fast that you invalidate your prior patents, in terms of what really matters. It’s the velocity of innovation that matters.” As long as Tesla keeps inventing and pushing the limits of the technology, it will remain ahead of rivals.

According to Tesla Motors opening up the patents around the charging technology could pave the way for important partnerships and collaborations. Musk has spoken to executives from BMW about sharing the cost of building recharging stations and creating a common infrastructure. Tesla’s nationwide network of recharging stations and its plans to build huge battery factories strengthens Musk’s point of view.  Tesla’s planned gigafactory, due to start production in 2020, will be the biggest battery-making facility in the world. At peak production, it alone will create 500,000 lithium-ion packs a year, more than all batteries produced worldwide last year. That’s more than enough to fuel the competition. No other automaker is planning these types of investments in electric cars. The rate of innovation in the electric car industry when you look at Tesla’s competitors does not in any way match Tesla’s progress. Musk would like to see the industry focus shift and would want automobile manufacturers to invest more heavily in the electric car business, and change their thought process from treating electric vehicles like a hobby to making them a top priority. This could be one of the objectives behind taking such a drastic step to promote a culture that is more environment friendly and realises the pace at which the climate change situation could drastically affect life in the near future, apart from being a culture which seems to be extremely business friendly as well.

An interesting analogy can be drawn when we think of electric cars in terms of smartphones. Tesla, which has been long compared with Apple, with its sleek design, luxury prices and chargers that exclusively plug in to Apple products, now wants to become open-source like Android. Like the micro-USB chargers that fit Android and Blackberry smartphones, all compatible cars could use Tesla’s superchargers. That way, other companies will use and enlarge Tesla’s existing network of 100 charging stations that currently dot a path across the continental United States, making it more and more feasible to swap fuel-burning cars for battery-electric ones, even for long distance travel. Also considering the electric cars account for less than 1% of the total cars manufactured and sold, this decision from Tesla seems like a smart strategy to encourage electric car manufacturing, get more players in the business and initiate profitable collaborations.

Reaction received from Tesla by the big 3 car manufacturers has been interesting though. General Motors Co. and Fiat Chrysler Automobiles haven’t reached out to Tesla, while Ford Motor Co. didn’t comment directly on the matter.

Although multiple reports said BMW inquired about the patents, industry analysts say most automakers find Tesla battery technology outdated or not compatible with their own programs, but would be open to collaboration on other parts like charging stations in the future. In a June blog post, Musk said, “If we clear a path to the creation of compelling electric vehicles, but then lay intellectual property landmines behind us to inhibit others, we are acting in a manner contrary to that goal.” This sentiment was not strongly felt by a number of top automobile companies. The value, some  analysts believe, may lie in Tesla’s charging stations. Tesla in June opened its 100th Supercharger station for its electric Model S car. The stations can charge an electric car in about 20 minutes, about 16 times faster than other public stations.

Detroit’s automakers said they’re open to working with other car companies. “We encourage the adoption of innovative technology across the industry,” Ford said in a statement. “We are the first and only automaker to have dedicated open-source hardware and software platforms, Smart Device Link and OpenXC.” Ford has a Focus Electric vehicle that’s powered by a lithium-ion battery, as well as C-MAX and Fusion hybrids.

GM has three plug-in electric vehicles: the Chevy Volt, the Chevy Spark and Cadillac ELR. “We have not talked to (Tesla) about the patents,” said Kevin Kelly, GM’s manager of electrification communications. “We don’t have anybody looking at those right now. It’s not something that’s on the front burner for us to look at.” Still, Kelly didn’t rule out the use of shared technology in the future. “I think anything that can help to advance the adoption of electric vehicles is a positive,” he said.

While Chrysler Group’s powertrain strategy includes vehicle electrification, a technology we have successfully demonstrated to date, we have no immediate plans for such outreach,” Chrysler said in a statement.

Gloria Bergquest, spokeswoman for the Alliance of Automobile Manufacturers, said, “It’s such a competitive industry, that if anyone can find a benefit in sharing info, they will do so.

If other manufacturers use Tesla technology and make cars that could plug in at Tesla Superstitions, Musk’s company stands to make a fortune simply from giving away its blueprints to competitors..This explains the strategy from purely a business stand point ignoring other theories that this position is taken by Tesla in good faith for society at large. While the consequences of the initiative would definitely help society at large, the reason for Tesla going ahead with the bold move is a subjective matter.

Sun Microsystems (ORCL) once made a similar intellectual-property move in the computer world. Known for its pricey, proprietary software, Sun opted to open-source all its products. The decision was a result of hard times faced by Sun and was looking to generate interest in its products to revive the company.

Tesla is in quite a different situation. Its share price has been rising for a year helped by the excellent response received by the Model S. That car, just the second made by Tesla, has already swept the automotive awards, including top safety and customer-service ratings. Next year, Tesla plans to begin shipping the Model X, a sports-utility vehicle.

Considering Tesla’s excellent rate of innovation, further improving their own Patented technologies sooner than you would expect, their strategy has caused one to rethink patent terms.  Technology and software have shorter life spans than most products in terms of their market value. In industries whose technology will be much different in a couple decades, a twenty year patent term is of little use to companies like Tesla. The benefit to such a lengthy term is enjoyed by Patent trolls who can use old patents and subjectively argue them as prior art that anticipates genuine inventions.

Having said that, just because Tesla has decided not to sue good-faith users of its patents does not mean the company will not face litigation from patent trolls. This kind of mentality would kill the mere purpose of existence of patent trolls who hunt for older patents on technology still used into today’s products, including automobiles and contribute heavily to the rising number of Patent litigations seen in the industry today. While Tesla’s initiative will provide limited relief to automotive companies from a Patent litigation perspective, only time will tell how well Tesla’s invitation to others to use its technology will work.

NOTE: Quoted text taken from certain sources such as ‘The Detroit News’

About the Author: Mr Ankur Sehgal, Patent  Associate at Khurana and Khurana and can be reached at: Ankur@khuranaandkhurana.com

 

ODISHA COURT ADMITTED CASE AGAINST AAMIR KHAN PRODUCTION’S PROPOSED ‘SATYAMEV JAYATE’ USE AS TRADE MARK

As per the sources, the court in the Odisha capital, Bhuvaneshwar has admitted a petition challenging Aamir Khan Production’s plans to use ‘Satyamev Jayate’, the national motto of India, as a business brand under which it is proposed to sell everything from kitchen utensils to footwear.

A city based journalist and social activist, Dr. Subash Mohapatra has filed case against Amir Khan Productions challenging the trade mark ‘Satyamev Jayate’ which is in public domain and thus cannot be monopolised in respect of any goods and services. The SDJM court, Bhubaneswar has admitted the case filed.

The petitioner has claimed that Aamir Khan Production in the year 2012 has filed various trademark applications at Trade Marks Registry Mumbai for exclusive rights to use the term ‘Satyamev Jayate’ as trade mark for goods and services under various classes not only in respect of the television show but also for the goods from kitchen utensils to footwear. These trademark applications are pending with the Trade Mark Registry and were objected on the ground of non distinctiveness.

The petitioner contended that the Bollywood superstar was seeking to exclusively use ‘Satyamev Jayate’ for commercial purpose, which is the most important feature of India’s Constitution and was adopted as the national motto after prolonged debate in the Constituent Assembly.

It is also contended in the petition that the word “Satyamev Jayate” is exclusively property of all citizens of India having authority under the Government of India. It is a symbol of nation and offices in India, the President of India, Judiciary and Executives, also of the Constitution. The people of India glorify and feel proud for that particular word as it enshrines the national sentiment, identity, symbol, faith and culture. So, Satyamev Jayate cannot be property of any private individual person for his personal benefit and interest.

The petitioner also claimed that ‘Aamir Khan already being conferred with the coveted civilian award of Padma Bhushan, was able to influence officials of the Mumbai Trademark Office into granting him two stages of clearance to his proposal, which he said amounts to ‘waging war’ against the country and its Constitution’.

However the question which intrigue our mind is that whether the registration of the term ‘Satyamev Jayate’ is prohibited under section  9(2) (d) which provides that a mark shall not be registered if it is prohibited by the Emblems and Names (Prevention of Improper use) Act, 1950. In order to find the applicability of Section 9 (2) (d) of Trade Mark Act, 1999, it is necessary to determine whether the term ‘Satyamev Jayate’ is an integral part of the National Emblem and if dissected from the Abacus can be referred to as National Emblem as per the Emblems and Names (Prevention of Improper use) Act, 1950. However the State Emblem Of India (Prohibition Of Improper Use) Act, 2005 provides that the motto “Satyameva Jayate”-Truth alone triumphs-written in Devanagari script below the profile of the Lion Capital is part of the State Emblem of India.

Thus it will be interesting to note the Court’s decision in this case that whether the Aamir Khan Production will be able to get the Trade Mark over the term ‘Satyamev Jayate’ without the Central Government’s prior approval or it will be injunct to obtain Trade mark registration over the term ‘Satyamev Jayate’ being the integral part of the National Emblem and its use is prevented by couple of legislations.

News Source: http://odishasuntimes.com

About the Author: Mr Abhijeet Deshmukh, Trademark Attorney at Khurana and Khurana and can be reached at: Abhijeet@khuranaandkhurana.com

And we thought Java API’s were open?

Oracle vs. Google is truly one of the most amazing IP battles that I have personally observed in the recent past. What millions of developers and customers would have literally thought to have been considered open Application Programming Interfaces (API’s) when it comes to JAVA, is potentially turning out to be proprietary from the perspective of Federal Circuit. This is really an example of a fantastic unsettling discussion that Copyright Infringement always leads one to. The present post would be kept relatively brief given that the magnitude of the case, and potential implications it can have on thousands of software companies and independent developers using Java packets, API’s, classes, and methods, as a platform to develop their software/websites, is unimaginable and cannot be assessed at this stage if Oracle wins the present appeal/case and starts suing entities of all sizes on API/Package infringement. The present article however would not focus on the fair use discussion that Google contends as an argument, and also would not detail about the GPL, Specification License, and Commercial License that are available to developers but rather would try to give the impact that API’s per se, if held copyrightable, can have on people at large.

The aforementioned case started four years back when Oracle bought Java from Sun, and focused on Google’s use of Java API’s in Android, wherein Google was claimed to have copied certain elements—names, declaration, and header lines—of the Java APIs in Android in the process of using Java programming language to design its own virtual machine, the Dalvik virtual machine (VM), for writing its own implementation for the functions in the Java API, and ended up writing 37 packages that were similar to the corresponding Java packets. In 2012, the district court largely sided with Google, saying that the code in question could not be copyrighted. It was held back then that “As to the 37 packages, the Java and Android libraries are organized in the same basic way but all of the chapters in Android have been written with implementations different from Java but solving the same problems and providing the same functions.” Therefore, in view of each API that can, in general, include a plurality of packages, each of which can in turn include a plurality of classes in which exist one or more methods, it was held that, “Ninety-seven percent of the source code (of Google’s Android) in the API packages is different; it’s only the three percent that overlaps that formed the heart of Oracle’s copyright claim. That three percent included packages, methods, and class names. But those declarations—like starting a function with package java.lang—can only be used in certain ways. “In order to declare a particular functionality, the language demands that the method declaration take a particular form”.

However, last month (in May 2014), came a reversal from the federal appeals court, which stated that “Because we conclude that the declaring code and the structure, sequence, and organization of the API packages are entitled to copyright protection, we reverse the district court’s copyrightability determination with instructions to reinstate the jury’s infringement finding as to the 37 Java packages,“. The decision comes as a surprise as Java API’s are extensively used/incorporated in numerous online and offline softwares all over the world, and if access to Java API’s is held copyrightable, sustainable action can potentially be taken against practically any entity/developer that incorporates calls to such API’s without prior license from Oracle. It was on similar lines that Google and digital rights groups argued that APIs should not be copyrightable because developers need them to produce interoperable programs. “An API is dictated primarily by functional requirements, not creativity or aesthetics, even more so than the internal implementation of a piece of software. Copyright protects creative expression, not functionality,” Mitch Stoltz, an Electronic Frontier Foundation attorney said in an e-mail. “Also, the purpose of an API is to enable two pieces of software to interact. While copyright may protect software against copying, it shouldn’t prevent building new software that can interact with existing programs. That impedes creativity rather than strengthening it.”1

In addition, it was also contended by Former Sun CEO Jonathan Schwartz, acting as a witness for the defense, that “These (Java API’s) are open APIs, and we wanted to bring in more people…we wanted to build the biggest tent and invite as many people as possible.” It was for this reason that, according to Schwartz, they had given a go ahead to Google to use the Java API’s till the time they don’t use their brand name “Java”, and had stated that “I’d also like Sun to be the first platform software company to commit to a complete developer environment around the platform, as we throw Sun’s NetBeans developer platform for mobile devices behind the effort. We’ve obviously done a ton of work to support developers on all Java-based platforms, and we’re pleased to add Google’s Android to the list.”.

Few exemplary Java API’s, which form the basis of softwares being built relying on Java can be seen here, wherein these API’s typically form the foundation on which the actual new source/software code is written to get the desired functionality. Therefore, the statements “It’s only the code itself—not the “how-to” instructions represented by APIs—that can be the subject of a copyright claim”, and “So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API,” written by the judge of the lower court prior to recent reversal gave a sense of relief to the developers globally, and in case the API’s per se are restricted to use unless through a valid executed license, each access or incorporation of the API would be a violation from the Copyright infringement standpoint.

In sum, the recent reversal by the appeals court stating that “We find that the district court failed to distinguish between the threshold question of what is copyrightable — which presents a low bar — and the scope of conduct that constitutes infringing activity. The court also erred by importing fair use principles, including interoperability concerns, into its copyrightability analysis. For the reasons that follow, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages are entitled to copyright protection.”, brings along with it a sense to otherwise publicly available API’s and how they would be interpreted in case their developers now start claiming infringement by applications that use such interface to connect their software with the other components.

Although the matter is sure to be taken to the highest level of legal remedy available by Google to come to a logical conclusion, assuming the reversal is upheld, the precedent set by the instant case is bound to send a strong message down to every developer who has ever taken advantage of Java or any other coding platform software interface APIs.At the same time, even if it is clear and accepted that Java programming language is open is free for anyone to use, it is the very use of these Java Packages (API’s) that enables significantly shorter software development time and reduction on overall software cost, and therefore, at this stage, its even unimaginable as to the impact that non-allowance of use of most commonly used API’s such as for string manipulation, java.lang, java.text, object creation, Java SDK, HTML manipulation, among other heavily used APIs can have on software coding time, manpower cost, incremental cost that customers are going to pay when enforcement starts happening left, right, and center. A brief call with a close friend and technical architect at a large Indian Software development company a few days back also helped me learn that Oracle is already in the process of making Java API’s paid and asking each company to enter into a commercial license, making most of these Indian companies to look out for other avenues such as Open JDK to escape such an inconvenient position.

  1. http://arstechnica.com/tech-policy/2014/05/oracles-java-api-code-protected-by-copyright-appeals-court-rules/

Patent Trolling and Fee-Shifting

Manish Kumar, intern at Khurana and Khurana, Advocates and IP Attorneys, looks at ‘fee-shifting’ paradigm in US Patent Act in light of US Supreme Court recent judgments.

The US Supreme Court, in its two recent judgments, has re-instituted its pre-2005 stand where the Courts had discretion of awarding reasonable attorney fees to the prevailing party and base their decisions in patent suits subjectively on case to case basis rather than on rigid and stringent conditions.

This stance of the Supreme Court has made the life of so called “patent trolls” difficult as they will not be allowed to bully other patent-holders or manufacturers in courts. These are the companies that bring lawsuits against small business entities with respect to their broad, substantially related or probable invalid patents or products. In such condition, it becomes more viable for these victims to settle the suit compromising their patent rights or seek license and save themselves from otherwise expensive and arduous lawsuits.

History of 35 USC 285

Prior to 1946 amendment of Patent Act, the American rule for awarding of attorney’s fee to the prevailing party in patent litigation did not exist and was governed by Marx v. General Revenue Corp., 568 U. S. 1946 that stated ‘[E]ach litigant pa[id] his own attorney’s fees, win or lose . . . .’ The 1946 amendment of the Patent Act incorporated section 70 in the Act that added a discretionary fee-shifting provision. The provision stated that a court “may in its discretion award reasonable attorney’s fees to the prevailing party upon the entry of judgment in any patent case.” The courts viewed this provision not as a ‘penalty for failure to win a patent infringement suit’ but as appropriate ‘only in extra-ordinary circumstances.’ The majority use of this discretion was based on ‘unfairness or bad faith in the conduct of the losing party, or some other equitable consideration of similar force.’ It was always difficult to enforce since it required adequate justification and establishing fraud practiced on the patent office or vexatious litigation.

The fee-shifting provision of the Patent Act was recodified as 35 USC 285 as “the court in exceptional cases may award reasonable attorney fees to the prevailing party.”The whole debate now shifted to qualification of ‘exceptional cases.’ The courts, for next three decades, ignored the amendment and continued with its previous position under section 70 of the Act. After 1982, district courts started considering the patent suits in totality of the circumstances when taking decision under 35 USC 285.

This continued until the US Federal Court decided Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (2005), where the US Supreme Court took a more mechanical and rigid formulation which overruled earlier holistic and equitable approach. The court put forth following two conditions to be qualified for awarding fee to the prevailing party’s attorney’s fee:

1)      The litigation is brought in subjective bad faith, and

2)     The litigation is objectively baseless.

The Court stated that the case is to be considered as ‘exceptional’ under section 285 only when there has been material inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent,misconduct during litigation, vexatious or unjustified litigation. The litigation was considered to be ‘objectively baseless’ if it is ‘so unreasonable that no reasonable litigant could believe it would succeed.’

The decision on Brooks furniture case can be found here.

Recent Position

The US Supreme Court decided the two cases,Octane Fitness, LLC v. Icon Health and Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc.,on April 29, 2014, that have loosened the restriction on patent lawsuit fee-shifting provision of US Patent Act.

The cases can be found here (Octane) and here (Highmark).

In Octane Fitness, LLC v. Icon Health and Fitness, Inc.both the parties are manufacturers of exercise equipments. The respondent, Icon Health & Fitness, Inc., owns U. S. Patent No. 6,019,710 (’710 patent), which discloses an elliptical exercise machine that allows for adjustments to fit the individual stride paths of users. Icon is a major manufacturer of exercise equipment, but it has never commercially sold the machine disclosed in the ’710 patent. Octane Fitness, also manufactures exercise equipment, including elliptical machines known as the Q45 and Q47. Icon sued Octane, alleging that the Q45 and Q47infringed several claims of the ’710 patent. The District Court granted Octane’s motion for summary judgment on June 17, 2011, concluding that Octane’s machines did not infringe Icon’s patent. Octane then moved for attorney’s fees under 35 US 285. Applying the Brooks Furniture standard, the District Court denied Octane’s motion on September 6, 2011. It determined that Octane could show neither that Icon’s claim was objectively baseless nor that Icon had brought it in subjective bad faith. As to objective baselessness, the District Court rejected Octane’s argument that “judgment of non-infringement should have been a foregone conclusion to anyone who visually inspected Octane’s machines”.

In Highmark Inc. v. Allcare Health Management System, Inc. case, Allcare  owned Patent No. 5,301,105 (‘105 patent), which covers “utilization review” in “‘managed health care systems.” Highmark Inc., a health insurance company, sued Allcare seeking a declaratory judgment that the ’105 patent was invalid and unenforceable and that, to the extent it was valid, Highmark’s actions were not infringing it. Allcare counterclaimed for patent infringement. Both parties filed motions for summary judgment, and the District Court entered a final judgment of non-infringement in favor of Highmark.

Highmark then moved for fees under section 285 for fee-shifting. The District Court granted Highmark’s motion. The court reasoned that Allcare had engaged in a pattern of “vexatious” and “deceitful” conduct throughout the litigation. The district court awarded the Highmark attorney’s fees together with other damages.

Allcare moved to Supreme Court against the judgment to which the Court partly agreed to. It affirmed the District Court’s exceptional-case determination with respect to the allegations that Highmark’s system infringed one claim of the ’105 patent, but reversed the determination with respect to another claim of the patent.In reversing the exceptional-case determination as to one claim, the court reviewed it de novo. The court held that because the question whether litigation is ‘objectively baseless’ under Brooks Furniture ‘is a question of law based on underlying mixed questions of law and fact,’ an objective-baselessness determination is reviewed on appeal de novo and ‘without deference.’ It then determined, contrary to the judgment of the District Court that ‘Allcare’s argument’ as to claim construction was not ‘so unreasonable that no reasonable litigant could believe it would succeed.’

Conclusion:

Both the issues were to be decided regarding the attorney’s fee in which the prevailing parties (Octane and Highmark respectively) in the respective cases demanded the fee-shifting towards the losing parties. The court looked into the issue of law and upon the due consideration sent it back to the district court for reconsideration of the issue by instructing that the court should not decide on the basis of Brooks Furniture case, but take more subjective approach.  Thus, the present stand (as against decision of Brooks Furniture case) of the US Court is toward fee-shifting is more liberal and subjective.

Although there is another angle to this judgment that now that the fee-shifting is to be considered subjectively, the patent holders may restrain themselves from bringing suits even for their legitimate claims since it is never sure that the courts will be in their favor. Each case will have different notion and different courts may decide the same case differently, giving different justification for their subjective interpretation of the case. Therefore, these decisions of the US Supreme Court, on one hand will restrict frivolous patent lawsuits; on the other hand, it may encourage ‘patent trolls’ to strike more settlements and licensing than ever.

Why Protecting Patents in India is Giving Hard Time to Drug Patent Holders

Introduction

A lot has been discussed on the Novartis ruling indicating much higher standards of patentability under Indian law under section 3d. The ruling decided that any new form of known compound (in medicine) would be patentable only if there is enhanced ‘therapeutic efficacy’ over the known compound. Post Novartis ruling, a couple of patent revocation decisions at Intellectual Property Appellate Board (IPAB) ruled on section 3d giving precedent of Novartis. In addition, these decisions also seem to be setting higher standards of non-obviousness as compared to countries such as United States.

Case I: Fresenius Kabi Oncology Limited v. Glaxo Group Limited, decided in July 2013

a)     Case Facts:

Fresenius Kabi filed a revocation petition against Glaxo’s patent IN221171 (referred to us ‘171 hereinafter) claiming di-tosylate salts of Lapatinib on grounds of obviousness, section 3d and section 8. Fresenius alleged that the ‘171 patent was obvious to a person skilled in the art with reasonable expectation of success in view of the combined teachings of  D1  read along with D2 to D4.  D1 was a basic product patent of Glaxo (IN221017) disclosing Lapatinib free base and its various salts. Amongst salts, hydrochloride (HCl) salts were the ones selected and exemplified, however D1 also disclosed ditosylate salts as one example. Furthermore, background section of D1 discussed problems of hygroscopicity and instabity of HCl salts.  D2 was a prior patent disclosing ditosylate salts of different compounds disclosing the problems solved by the ditosylate salts such as better moisture sorption and better stability. D3 and D4 were general prior art literature articles disclosing pharmaceutical salts and selection of salts for basic drugs. Fresenius also alleged that the ditosylate salts of the said patent are new forms of known HCl salts of Lapatinib showing no enhancement in therapeutic efficacy and hence not patentable under section 3d as well. b)     Decision:  i. On Obviousness: IPAB, first of all, reinforced that under Indian law, it is the “person skilled in the art” (referred to as Ms. P. SITA) who would decide obviousness of the invention, rather than person having ordinary skill in the art as in United States and other geographies. It was held that Ms. P.SITA was not a dumb person who was ignorant of happenings in her field of art, but had skill to perform experiments with the knowledge of state of the art. It would be obvious for Ms. SITA to solve the problem of hygroscopicity and instability by combined teachings of D1 to D4. She already knew the problems being faced with HCl salts and the said prior art would give her motivation to prepare the ditosylate salts to arrive at the invention of the ‘171 patent with reasonable expectation of success. ii. On Section 3d: Citing precedent of Novartis ruling, it was held that the salts were shown not to have enhanced ‘therapeutic efficacy’. Better stability, better moisture sorption properties and other physicochemical properties exhibited by di-tosylate salts were rejected as proof of better ‘therapeutic efficacy’ over known HCl salts. Note: Fresenius also filed another patent revocation application against the basic product patent IN221017 claiming Lapatinib, which was dismissed by IPAB. Case II: Ajanta Pharma Limited v. Allergan Inc., Allergan India Private Limited and The Controller of Patents and Designs, decided in August 2013  a) Case Facts: Two Revocation Petitions were filed by Ajanta Pharma against Allegan’s two patents, one claiming fixed dose combination of Timolol and Bimatoprost (IN212695, referred to as IN‘695 hereinafter) marketed as Ganfort® and the other claiming fixed dose combination of Brimonidine and Timolol (IN219504, referred to as IN‘504 hereinafter) marketed as Combigan®. Both drug combinations are for treatment of ocular hypertension. Both patents were revoked by IPAB on ground of obviousness and section 8.

b)Decision:

i.On obviousness:

· IN‘695 Patent:

IPAB held that it was obvious for Ms SITA to arrive at the fixed dose combination of Timolo and Bimatoprost for the treatment of ocular hypertension in view of the combined teachings of known serial (five minute gap) administration of these two drugs further in view of Diestelhorst M. et al disclosing fixed dose combination of Latanoprost and TImolol for treatment of glaucoma, and two other prior art documents teaching better efficacy and potency of Bimatoprost over Latanoprost. Latanoprost was a predecessor of Bimatoprost, both belonging to the same class of Prostaglandin Analogs. The fixed dose combination of Latanoprost and TImolol was known to reduce side effects and increase potency to treat glaucoma as compared to individual drugs. IPAB rejected Allergan’s contentions that both drugs were structurally different or acted on different receptors. IPAB further rejected Allergan’s contentions of achieving unexpected effects of reduced side-effects and increased potency. Secondary considerations were not considered relevant in determining obviousness. IPAB held that Ms. P. SITA would find the drugs closely related and be motivated by teachings of Diestelhorst M. et al to produce fixed dose combination of Timolol and Bimatoprost with reasonable expectation of reduced side-effects and increased potency. She would know the trend going from monotherapy to adjunct therapy to fixed dose combination in order to optimize the convenience and the patient compliance. ·IN ‘504 Patent IPAB held that it was obvious for Ms. P.SITA to arrive at the fixed dose combination of Brimonidine and Timolol in view of the combined teachings of known topical administration of Brimonidine in combination with Timolol spaced 5 minutes further in view of Desantis disclosing fixed dose combination of Timolol and alpha 2 agonists. It was held that both Timolol and Brimonidine were commercially available. It was known that serial administration of Brimonidine and Timolol reduced intraocular pressure better than TImolol and Brimonidine alone. It was held that DeSantis expressly provided motivation for fixed combination to increase patience compliance.  It was held that when viewed under a proper standard, the evidence establishes a motivation to combine since it was common at that time to provide Brimonidine and Timolol sequentially and DeSantis taught fixed combination. IPAB also cited the US Court of Appeals judgement in respect of the US equivalent patent in Allergan Inc vs. Sandoz wherein the US equivalent patent was held invalid as obvious. Key take-aways:

a)Prepare to clear a higher bar: Ms. P Sita has more than ordinary skill

Obviousness standards in India are higher as compared to countries such as US, in such a manner that the skilled person in US is a “person having ordinary skill in the art”, called as PHOSITA whereas in India she is a “person skilled in the art” called as Ms. P.SITA. The level of skill of Ms. SITA looks to be higher than PHOSITA. IPAB, in above cases, cited Roche v Cipla wherein the judge highlighted in context of obviousness that Ms. P.SITA is a not a dumb person who is ignorant of happenings in her field of art, but has skill to perform experiments with the knowledge of state of the art.  Glaxo (the respondent in the above first case) cited various foreign decisions to show how obviousness is decided, who is the person Skilled in the Art, what is the Common General Knowledge and so on, however, IPAB citing Roche v. Cipla highlighted that observations made in foreign judgements would not be guiding factors. May be that is a reason that the US counterpart of the IN‘171 patent is a granted and unopposed patent whereas its Indian equivalent patent is held to be obvious and revoked. Not only US, even the corresponding EP granted patent passed EPO’s obviousness standards. Again for the combination therapy patents in India, as seen in the above Ajanta v. Allergan IPAB decision, standards of obviousness seem to be stricter. Both the patents of Allergan covering ophthalmic compositions were revoked. Ganfront®, for example, in US and EP is protected as EP and US patents, but here in India the patent is revoked. For combination therapy of A and B, if serial administration of A and B is known to alleviate the condition better than monotherapy and a fixed dose combination of A or B with C is known for alleviating the same condition, it seems that it will be difficult to pass the obviousness challenge in India, owing to Ms. P. SITA who would be knowing the happenings in her field and would know the trend going from monotherapy to adjunct therapy to fixed dose combination in order to optimize the convenience and the patient compliance. Furthermore, it seems that secondary considerations in India have not been considered relevant in India in determining non-obviousness. Unexpected effects are generally accepted in US as a means to rebut obviousness rejection. Thus, person skilled in the art in India is considered to be having more skill, more creative imagination as compared to the person having ordinary skill in the art in other important geographies such as US, and hence clearing obviousness challenge is tougher. For patent holders around the globe, to clear these higher standards of obviousness is becoming problematic. b)3d after Novartis: Physico-chemical properties are not enough This is clear that after Novartis case, salts (or other new forms) of known compounds would always be hit by section 3d unless enhancement of therapeutic efficacy is not proven. Physico-chemical properties would not be considered to impart therapeutic efficacy. The “therapeutic efficacy” test as laid down by Supreme Court (SC) in Novartis will be cited as precedent in all such cases. Again, patent holders around the globe would have hard time pursuing their salts (or other new forms) patent applications in India unless enhancement in therapeutic efficacy is proven. Considering that the pharmacophore remains the same in developing these new forms, proving enhancement in therapeutic efficacy would be very difficult. The enhancement in physico-chemical properties, which impart inventive step over the known compounds, would not generally be able to comply with “enhancement in efficacy” clause in section 3d till Novartis precedent prevails. Even though SC clearly laid down that physico-chemical properties such as increased stability, absorption, lower hygroscopicity etc. could not be said to enhanced therapeutic efficacy, regarding bioavailability, SC pointed that increased bioavailability may or may not lead to enhanced therapeutic properties and would be dependent on case to case basis. But again, proving enhanced bioavailability leading to enhanced therapeutic efficacy would be difficult. No matter how enhanced bioavailablity has helped the drug to perform better, the test relied by India is to prove therapeutic efficacy enhancement over the known compound.

The law of the land

The Indian Patent Office has been receiving criticism from the US and other developed countries for following such stricter standards of patentability in refusing applications and revoking patents. The intention behind section 3(d) and setting higher standards of obviousness is to prevent evergreening and frivolous pharmaceutical patents in India, so that the public access to medicines is ensured. Such provisions are necessary for protecting public interest and ensuring public access to medicines in developing countries like India. However, steps should be taken to ensure that genuine innovative inventions should not be rejected so that the right balance between patent protection and public access is maintained to further research and development of newer medicines.

About the Author: Meenakshi Khurana, Partner at Khurana and Khurana and can be reached at: meenakshi@khuranaandkhurana.com

Note: This Article was first published in a premier Managing IP magazine in March 2014 here

M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel , Section(64) patent act, 1970

Takshasheel Bouddha, an intern at Khurana and Khurana Advocates and IP Attorneys, analyses the case, M/s Aditi Manufacturing Company v/s Mr. Bharat Bhogilal Patel &The Controllers of Patents & Designs. This judgment is with respect to Section 64 of Patent Act, 1970.

 Introduction:

The dispute was regarding of two patents i.e. Patent No.189027 and Patent No. 188787 granted to and held by respondent which the petitioner wanted to be revoked. Initially the petition for revocation was filed in honorable High Court of Gujarat from where it was transferred to IPAB. M/SAditi Manufacturing Company was petitioner while Mr. Bharat Bhogilalwas the respondent and both the parties were engage in the same set of business.

Both thepatents owned by respondent were on the same subject matter relating to the laser technology. Patent No.189027 was granted for a process of manufacturing engraved design articles on metals or non-metals using Lasers and Patent No. 188787 was granted for an improved laser marking and engraving machine.

 Petitioner‘s Argument

The petitioner M/S Aditi Manufacturing Company claimed that inventions are related to laser technology and engraving machine is not novel and it was already in public domain. The inventions also lack inventive step as per the requirement of Section 2(j)(a). A lot of prior arts were present disclosing identical product and process and therefore requirement of sections 3(k), 3(f) and 10(4) of ‘The Patent Act, 1970 were not met.

The revocation in both cases was sought on the ground that the invention has been used from 1996 by one Sarju Laser Marking Private Limited and sold in the market even before the date of patent.

The specification was notably alike to US Patent No. ‘789 dated 26/03/1985 for “Reliable low cost light weight CS pumped Nd:Yag laser with option at Q-switching”. The claims were analogous to US Patent No. 4467172 and Japanese Patent No. 141679.

The petitioner also relied on the publication by Excel Control Laser Inc. in 1992 which described both the machine and process

The counsel for the applicant argued that the word “improved” in the patent claimed is vagueand is not clear. It is ambiguous in nature and therefore more clarity should be there.

The petitioner further argued that it is just a collection of known integers.

They further contended that patent has been obtained by suppression of information and there is no inventive step.

The petitioner counsel relied on the proposition of law laid down regarding revocation in  Air Master Equipments India (P) Ltd. v/s. Mr. Ramesh Nana Mahtre;M/s Bishwanath Prasad RadheyShyamv/sM/s Hindustan Metal Industriesand Monosanto Company v/s CoromandalIndag Product (P) Ltd.

 Expert Witnesses:

IPAB relied upon the expert opinion of Dr. D.D. Bhawalkar who had obtained the degree of PhD in ‘Laser technology’ from the University of Southampton, U.K. He had an opinion that there is nothing new described in the patents. He has written to M/s Legasis Partners that the laser marker is identical to US Patent No. 178. He has also stated that Galvos is in the market for a long time.

IPAB also consider the opinion of Mr. Utpal Nandi, another expert and a qualified Engineer from the Raja Ramanna Center for Advanced Technology for about 30 years. In his opinion, the patentee has not disclosed the appropriate facts related to prior art in Patent Office. Furthermore laser marker which was developed from components available in the market in 1995 at the Raja Ramanna Center. In his view there is no novelty or innovativeness in the said invention and if the patentee claims that the machine is improved one, he should show where the improvement lies.

 Respondent’s Arguments

The patentee rebutted relating to the cause of action. He also vehemently opposed the presence of technology in public domain. He merely denied all the prior inventions stating that all are different from his invention and are not known components.He further argued that if laser beam is not focused properly, the object cannot be marked and that is the most important and basic step of their basic process that is patented.  They also contended that they are unaware of Excel Control Laser publication.

According to the respondent, the applicants being non-technical did not understand the technical aspect of the invention and further that it is not a combination of known-integers or rearrangements.

Decision of IPAB:

Objections raised by the applicant were sustained by IPAB and the patents were revoked on the grounds that the invention was already known and there is neither any novelty nor any inventive step.

 Conclusion:

In my opinion the decision of IPAB to revoke the granted patents and put an end to the frivolous patents which were wrongly granted was correct and wise. This case highlights the need of a more efficient and meaningful patent prosecution mechanism as wrongly granted patents cause serious prejudice to the industry at large and also to country’s reputation in respect of IP implementation which is already under magnifying glass.

3D Trade Marks

In recent years, trade mark registries and courts have grappled with applications for silhouettes, shapes, scents, textures, short cartoons, single colors, body movement’s etc as trademarks. This invasion of the unconventional is due to the abstract nature of the legal definition of a trademark. On one hand the trade mark law has embraced an open- ended definition that emphasis the functional, rather than the ontological status of a sign. Any sign which does the communicative work of a trade mark, distinguishing goods or services on the basis of trade origin, can be registered as one. On the other hand, the trade mark registration systems have historically developed around paradigmatic subject matter: a conventional or traditional trade mark that is visual and consists of words, devices or a combination of the two.

While such new types of marks raise interesting conceptual questions, they are of a more immediate and pragmatic concern to an Indian audience. It has been widely reported that the Indian trade mark registry recently registered a sound mark for Yahoo, followed by another for Allianz Aktiengesellschaft.

The Indian Trade Mark Registry in its revised Manual for Trade Mark Practice and Procedure. Several sections of the manual have started considering new types of marks specifically referring to non conventional subject matter, in contrast to the Trade and Merchandise Marks Act of 1958. Experience across jurisdictions suggests that the tribes of signs prepared to take advantage of this hospitality can be divided on the basis of sensory perception. These separate into visible signs:

1. 3D marks

2. Colors

3. Holograms

4. Slogans

and non- visible signs:

1. Sounds Musical and Non- Musical

2. Tastes

3. Textures

The Manual acts like a guide to the Examiners who apply the law while ensuring transparency for the users of the registration system.

At present the demand for Non- Conventional marks is relatively modest in India. Yet interest in such marks is gathering pace and this promises to be a future growth area, as producers and advertisers strive to stand out from the crowd through innovative marketing techniques. For example triangular shape of Toblerone Chocolate which has acquired trade mark significance over time. This open ended approach to subject matter is also evident in the Act of 1999. A trade mark is defined in section 2(1)(zb) as follows:

“ trade mark’ means a mark capable of  being represented graphically  and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors.”

 

Graphical Representation and Procedural Requirements:

The first set of challenges arises when an application is made to register unconventional subject matter. It becomes impossible to represent a sound or scent on a paper. The draft manual therefore devotes several pages to the graphical representation for color, scent, hologram and shape marks. it specifies that the graphical representation should be independently sufficient to identify the applicants mark; the representation should stand in place of the mark; and it should enable those inspecting the register to understand what the mark is. In doing so, it expressly maps on to UK registration practice and adopts the Sieckmann criteria. Ralf Sieckmann applied to the German trade mark registry to register a scent mark for various services. He attempted to represent the mark by:

(i) Indicating the name of the Chemical Substance. Methyl Cinnamate

(ii) The Structural Formula for that substance (C6H5-CH=CHOOCH3)

(iii) Indicating laboratories where samples may be obtained

(iv) Submitting an Odour Sample in a container

(v) Describing the Scent in words as “Balsamically fruity with a slight hint of cinnamon” was easily accessible and intelligible, it was not clear, precise or objective. On the other hand, the chemical formula was objective and a lay man won’t have understood the same. On a closer scrutiny, the Sieckmann criteria seem to have been developed with traditional visual marks in mind, and in satisfying some criteria an applicant may lose out on others.

In Libertal case, where the court confronted an application for the pure color orange for telecommunications related goods and services, it decided that merely reproducing the color on the sheet of paper was not sufficient and the written description might be imprecise.  However, UK Registry has accepted these color codes along with the written description of the color as adequate graphical representation. By contrast the draft adopts a curiously worded and ambiguous approach for representing single colors. It acknowledges UK position in permitting color codes, the states:

“the law or practice in India does not provide for such interpretation”

It goes on to refer to a case where the applicant used extremely technical terminology to explain a color and thereby failed the graphical representation requirement, as the basis of Indian Law, without specifying what will satisfy graphical representation criteria for color marks.”

 

Finally, there are two concluding points:

1. Flagging up of non conventional marks on the application form, so that special rules can be applied. The Trade Mark Rules and Manual are very clear that in certain cases, the application form must indicate the manner in which the mark is non conventional. A drawing of a 3D mark should not be treated as simple device mark at the time of registration, since this allows the applicant to escape the stricter scrutiny applicable to shape marks.

2. Trade Mark Examiners are entitled to ask for further and better particulars, including a written description of the trade mark being applied for. Under Rule 29(3)(ii) “Where, however, the registrar considers that the reproduction of the mark furnished by the applicants does not sufficiently show the particulars of the 3D mark, he may call upon the applicant t furnish… a description by words of the mark”. While the written description requirement is not compulsory, under Rule 25(12) for suspected non conventional marks this should be liberally used to request additional information so the sign being applied for can be defined appropriately. The aim of this section of the article has been to highlight the importance of procedure when it comes to non conventional marks.

 

3D Marks:

When it comes to Shapes, from a comparative perspective two main clusters of issues can be observed. The first cluster concerns establishing distinctiveness for shapes, while the second concerns functionality based objections to the registration of certain types of shapes. Beginning with distinctiveness, the Indian Registry adopted the EU’s position that the same distinctiveness criteria – as required by section 9(1)- should apply for all types of trademarks, including shapes. Here establishing acquired distinctiveness for shape or 3D marks, under the proviso to section 9(1), is relatively straightforward. The Manual adopts the Windsurfing factors to help structure the evidence required: the applicants market share under that market, the intensity and geographically widespread usage etc. however, one of the fundamental requirements is that the shape must have been used as a trade mark. It is not sufficient to claim a shape mark based on evidence of general advertising containing pictures of the product shape and consumer recognition of the associated mark. The evidence must specifically show that the relevant public trusts the shape to indicate commercial origin in the same way that they would trust a mark.

Manual echoes the Henkel decision. As a practical matter, it is difficult for shape marks to establish inherent distinctiveness. According to ECJ, such distinctiveness is still attainable for a sign “which departs significantly from the norm or customs of the sector thereby fulfils its essential function of indicating origin”. The Manual also adopts this position. The trade mark registry no doubt will be approached by applicants with novel, well designed or highly stylized products claiming that they also function as trade marks. However, a shape which is simply different or varies from that of competing products is not inevitably a trade mark. The requirement that a shape departs significantly from the norm and thereby fulfils its origin indicating function needs to be taken seriously.

In the EU, unsuccessful arguments to lower this inherent distinctiveness threshold have included suggestions that:

a) the 3D sign is simply a variant of a common shape

b) the distinctiveness threshold is crossed if a 3D sign is simply novel

c) if its components such as geometric shape and color, albeit individually commonplace, combine in non- obvious ways

d) there are sufficient difference between the features of the sign and that of products, which is not attributed to a technical reason

e) the relative public are specialist and sensitive to minor differences

f) where 3D mark is for everyday consumer products

Thus the formula for inherent distinctiveness for shapes mandate that it;

a) departs significantly from the norm and thereby indicates origin

b) it is applied to goods for which consumers are unusually sensitive to this difference.

 

Thus there is a palpable sense that the Indian trade mark law has finally caught up with the modern marketing techniques. Registries and court around the world are adopting a cautious approach to such subject matter. The Manual picks up on several of these issues and provides a robust structure within which to allow the gradual evolution of principles in this area. Non conventional marks are remarkably unsteady badges origin and rarely used without additional word or figurative marks to back them up. No manufacturer of mineral water is likely to do away with the company name or brand and rely solely on the shape of the bottle when selling the product. Such marks should therefore be given a cautious reception.

 

About the Author: Ms Sheetal Tiwari, Trademark Attorney at Khurana and Khurana and can be reached at: sheetal@khuranaandkhurana.com

INDIA SIGNS MARRAKESH TREATY FOR VISUALLY IMPAIRED

India has signed ‘Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled’ at a ceremony organised by the World Intellectual Property Organisation (WIPO) at Geneva during 28th April to 2nd May 2014 through Smt. Veena Ish, Joint Secretary in the Ministry of Human Resource Development.

Pertinently the Marrakesh treaty aims at creating a set of mandatory limitations and exceptions for the benefit of the blind, visually impaired and otherwise print disabled (VIPs). It requires Contracting Parties to introduce a standard set of limitations and exceptions to copyright rules in order to permit reproduction, distribution and making available of published works in formats designed to be accessible to VIPs, and to permit exchange of these works across borders by organizations that serve those beneficiaries. Further the Treaty also makes it clear that beneficiary persons are those affected by a range of disabilities that interfere with the effective reading of printed material. The broad definition includes persons who are blind, visually impaired, or reading disabled or persons with a physical disability that prevents them from holding and manipulating a book.

The treaty is expected to come into effect 3 months after 20 parties have ratified the treaty. However according to the sources, till date no country has implemented it.  In her statement, Joint Secretary, MHRD (India), Smt Veena Ish, highlighted that India’s Copyright Amendments which came into effect on June, 2012, are already in complete harmony with the Marrakesh Treaty, thus putting India in a good position to implement the treaty. She also stated that India will be ratifying this treaty ‘very soon’. She further added that the task does not end there but we need to have an appropriate mechanism in order to implement the provisions of the treaty in its true spirit with cooperation of all the member states and the International Bureau of WIPO.

G.R. Raghavender, registrar of copyrights and a director in the Indian Copyright office, said that organisations entitled to produce copies in accessible formats have to work for non-profit purposes, and can only charge expenses for the copy. Organisations that want to produce copies in accessible format on a profitable basis have to apply to the Copyright Board and can be granted a compulsory licence. He further stated that said India’s ratification of the treaty is expected by the end of May 2014.

The release said that once India ratifies it, the treaty will facilitate importation of accessible format copies from the member states by the authorised entities in the country, such as educational institutions, libraries and institutions working for the benefit of visually impaired persons.

This treaty, which was first adopted on 23 June 2013, was also signed by the European Union, France and Greece, bringing the total number of countries that have signed to 64, out of WIPO’s 187 members.

 

Sources: http://www.ip-watch.org/2014/04/30/four-more-wipo-members-sign-marrakesh-treaty-for-visually-impaired/

http://www.business-standard.com/article/news-ians/india-signs-treaty-on-published-works-for-visually-impaired-114050100453_1.html

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