Plant Varieties and Farmers‟ Rights Act, 2001

Ministry of Agriculture & IPAB failure in invoking the transitional provision as provided under Section 59 of The Protection of Plant Varieties and Farmers Rights Act, 2001 for setting up a tribunal.

INTRODUCTION

  1. The variety of crops both edible and for commercial purposes has grown as the size and need of the human population has grown. This has resulted in experimentation of plant varieties and a need was felt for protection of the plant varieties and the right of the farmers and plant breeders to encourage development of the new varieties of plants. This is essential for accelerated agricultural development. It is towards this objective that India ratified the agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 1994 requiring it to make provisions for giving effect to various articles of the agreement relating to protection of plant varieties. The Protection of Plant Varieties and Farmers‟ Rights Act, 2001(„the Act‟) was thus born. The Act received the assent of the President of India on 30.10.2001 for the establishment of an effective system for protection of plant varieties, rights of farmers and plant breeders and to encourage the development of new plant varieties.
  1. But it was not till four years later on 11.11.2005 that some of the provisions i.e. Sections 2 to 13 and Sections 95 to 97 came into force. However, these Sections only dealt with the creation of the Authority and the Registry as also the power to make Regulations and Rules. Substantive provisions being Section 1 and Section 14 to Section 94 came into force on 19.10.2006. Thus, there was a hiatus period of five years between receiving the assent of the President and the provisions of the Act effectively coming into force.
  1. In exercise of the powers conferred by Section 96 of the Protection of Plant Varieties and Farmers Rights Act, 2001 (53 of 2001) read with Section 22 of the General Clauses Act, 1897 (10 of 1897), the Central Government made the rules and published in the Gazette of India vide GSR 738(E) on 12.09.2003 and subsequently amended the same from time to time.
  1. The Act provides for the establishment of an effective system for protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants. The Indian PPV & FR Act is unique in the world as it recognizes the Farmers Varieties and also protects their rights. The Act has considered it necessary to recognize and protect the rights of farmers in respect of their contribution made at any time in conserving, improving and making available plant genetic resources for the development of new plant varieties.
  1. Thus it becomes clear from The Protection of Plant Varieties and Farmers‟ Rights Act, 2001 and its objectives that the Act not only recognizes the Farmers Varieties but also seeks to protect their Rights and it is in this background that the statute was created and notified.

APPELLATE PROVISION

  1. Chapter VIII of the Act envisages setting up of an Appellate Tribunal. This chapter consists of Sections 54 to 59.
  1. It is pertinent to mention here that the legislature was aware of the difficulty and the time which is required for setting up any appellate authority. The legislature realizing the above fact and also keeping in mind the necessity to set up effective remedy measures incorporated Section 59 of the Act. It is pertinent to mention here that the Section 59 of the Act would become redundant if the same is not implemented. However despite the same, the Ministry of Agriculture and IPAB, has failed to act under the said Provision.
  1. Section 59 is a transitional provision requiring the Intellectual Property Appellate Board (IPAB‟) established under Section 83 of the Trade Marks Act, 1999 to exercise jurisdiction of the Tribunal till the Tribunal is established under Section 54 of the said Act but requiring a technical member to be appointed under the said Act who would be deemed to be a Technical Member for constituting a Bench under Section 84(2) for the purposes of this Act.
  1. But Despite the lapse of more than 9 years, there is no sight of this Tribunal being constituted or implementation of the transitional provision. This is in addition to the hiatus period of five years from bringing into force the provisions of the said Act.
  1. The Ministry of Agriculture has failed to implement the transitional provision of The Protection of Plant Varieties and Farmers‟ Rights Act, 2001 despite a specific direction being issued by the Hon’ble High of Delhi, vide order dated 22/03/2013 in Writ Petition No. 4527 of 2011 wherein Hon’ble Justice Sanjay Kishan Kual showed the concern of non implementation of the transitional provision over a passage of 6 and a half years. In the said case it was also occasioned that IPAB has given its consent for invoking the transitional provision under Section 59 of the said Act and the Chairman and Vice Chairman of the IPAB will act as judicial members along with the Technical Member to be appointed under the said Act for purposes of exercising the transitional power and authority conferred on the Appellate Tribunal under the said Act. But despite all these the Ministry of Agriculture and IPAB collectively had failed to implement the Transitional provision.
  1. Some of the important observation and direction issued by the Hon’ble High of Delhi, vide order dated 22/03/2013 in Writ Petition No. 4527 of 2011 by Hon’ble Justice Sanjay Kishan Kual is reproduced herein below.

The rules for such an appellate Tribunal were brought into force only on 21.09.2010. Since we found an unexplained inaction in implementing the mandate of the Parliament, we called upon the Union of India to file an affidavit setting out the steps taken for constitution of the Tribunal for the implementation of the transitional provision from 2001 till date and to produce the relevant records in respect thereof. An affidavit affirmed by the Assistant Commissioner (Seeds), Department of Agriculture and Cooperation, Ministry of Agriculture referred to only the aforesaid dates and the factum of the Ministry of Agriculture being the Nodal Ministry for Protection of Plant Varieties and Farmers Rights Authority. It appears that the first communication in this behalf was addressed only vide letter dated 02.07.2009 to the Department of Industrial Policy and Promotion requesting to take note of Section 59 of the said Act and intimate the modalities for operationalization of the transitional provision. A request was also made to the IPAB to suggest the procedure for appointment of the Technical Member. Almost four years hence there appears to be no development. Not only that, even now no date was specified before us as to when the transitional provision of Section 59 of the said Act would be given effect to. One of the reasons stated before us was that the IPAB was reluctant to take up the work especially on account of lack of infrastructure even for its existing work. We thus called upon the Secretary of the two concerned Ministries to discuss the matter and to file an affidavit before us setting out the details of what prevented them from bringing into force at least the transitional provision through properly constituted consisting of a technical member.

An affidavit was filed by the Assistant Commissioner (Seeds) affirmed on 21.02.2013 itself. It is stated that the Act deals with sensitive issues pertaining to farmers rights; determination of “extant varieties”, “farmers variety” and “varieties of common knowledge”. The criteria for registration of the plant/seed varieties requires a lengthy process that includes field testing of the plant/seeds varieties in different conditions and it is after completing this extensive process, that the government formulated the Protection of Plant Varieties and Farmers Rights (Criteria for Distinctiveness, Uniformity and Stability for Registration) Regulations, 2009, which were notified on 29.06.2009 and came into force with effect from 30.06.2009. The Ministry of Agriculture being the Nodal Ministry addressed a communication dated 02.07.2009 as referred to aforesaid for the transitional provision to be implemented and the Department of Industrial Policy and Promotion in turn is stated to have referred the matter to IPAB on 26.08.2009. It furnished its comments on 14.09.2009. The Department of Industrial Policy and Promotion vide a communication dated 15.10.2009 furnished the requisite information to the Ministry of Agriculture. The Plant Varieties Protection Appellate Tribunal (Applications and Appeals) Rules, 2010 are stated to have been notified on 21.09.2010. The Protection of Plant Varieties and Farmers Rights Rules (Recognition and Reward from the Gene Fund) Rules, 2012 were notified on 31.07.2012 while the Protection of Plant Varieties and Farmers Rights (Use of Denomination and Registered Variety) Rules, 2012 were notified on 17.12.2012.

The aspect of implementation of Section 59 of the said Act is stated to be receiving the attention of the concerned Ministry, but there is stated to be some circumspection of this being unchartered territory.

In view of our order dated 21.02.2013, the same officer has filed another affidavit affirmed on 28.02.2013 stating that the IPAB has given its consent for invoking the transitional provision under Section 59 of the said Act and the Chairman and Vice Chairman of the IPAB will act as judicial members along with the Technical Member to be appointed under the said Act for purposes of exercising the transitional power and authority conferred on the Appellate Tribunal under the said Act. Earnest efforts are stated to be made by the Ministry of Agriculture for appointment of the Technical Member. However, it appears that the same is also at the stage of approval of the Expenditure Finance Committee whereafter the Search-cum-Selection Committee would decide the modalities of recruitment of the Technical Member. The time schedule laid down is of one year apart from the time required for approval of the Appointments Committee of the cabinet for which no time limit can be assigned. Thus, we are talking about a period of more than a year, which is stated to be realistic. So much for the interest in protection of plant varieties and rights of farmers!

We need to only emphasize what we have observed in our order dated 21.02.2013. Prior to the introduction and passage of a Bill in the Parliament, a number of steps are taken and considerable ground work is required. This ground work envisages not only the legislative drafting but the legislative impact of the legislation. The legislative impact in turn includes the litigation which it will generate, provisions for appropriately strengthening the judiciary to face the increase in litigation, creation of infrastructure and where specialized tribunals are envisaged, taking steps towards establishment of the same. The assent of the President is the culmination of this process. The will of the Parliament as reflected in the enactment of the said Act, which received the assent of the President, remained unimplemented for five years when only the basic provisions were brought into force without really the substantive provisions, which in turn were brought into force after six and a half years. Was this time not sufficient to analyze all aspects? Since the disputes would have aspects of scientific knowledge, the Appellate Tribunal envisaged a Technical Member. Leave aside the constitution of the Tribunal, even the transitional provision has not been brought into force. The absence of any such specialized Tribunal implies that it is the regular courts, which are already short of adequate number of judges to handle matters apart from technical issues which may arise, that will have to examine the controversy. The result is that neither are these specialized tribunals being brought into force nor is the existing judicial system strengthened to take care of the extra workload, a painful aspect to note. We would end this chapter with a sanguine hope that at least the transition policy is implemented on an urgent basis!

Conclusion

  1. It is quite relevant that the Ministry has failed to implement such an important provision of the Act which is to provide a effective remedy, despite such an observation by the Hon’ble High Court. Today the only recourse available to a party in any dispute under the Act is to file Writ Petition before the Hon’ble High Court.

The question still remain the same is when the Ministry of Agriculture will act in implementing such an important provision of the Act, which was specifically inserted with a view of setting up transitional effective remedy till an effective Authority is set up under the Act. Will the Section 59 of the Act will be given its importance or will it be redundant.

About the Author: Mr. Amarjeet Kumar, Senior Associate (Litigation), Khurana & Khurana, Advocates and IP Attorneys and can be reached at:Amarjeet@khuranaandkhurana.com.

Online Copyright infringement and its liability upon Intermediary

  1. Copyright is a bundle of rights which is meant to encourage creativity. In ancient days creative persons worked for fame and recognition rather than to earn a living, thus, the question of copyright never arose. In the last four decades modern and advanced means of communication like broadcasting, litho-photography. Television, websites contents etc have made the Copyright Act an important act to deal with possible problems of ownership and infringement on such rights
  2. Copyright rights prohibit others from using the copyrighted works. The traditional concept of the copyright has undergone a drastic change due to advent of the new technologies; its scope has extended manifolds. Now, the modern law of copyright encompasses musical works, cinematograph works, computer programs, performer’s rights, broadcasting rights.
  1. The Copyright Act today has also to deal with business models which are growing over the internet wherein the users are participating actively and thereon the companies are earning solely on the basis of the internet services by facilitating users to share their contents which are attractive (which includes pictures, motion pictures, films, songs, graphics, trailors, private communications amongst the eminent personalities, scam disclosures etc) so as to make it common to all and enabling them to view it easily by sitting at home.
  1. Thus it has becomes necessary that the Copyright Act also deals with problems of online copyright infringement and other related aspects. Though no specific reference has been made with this aspect, but the amended provisions of the Copyright Act tries to deal with some practical problems and including the inclusion of fair use policy and other aspect of transient and incidental storage of work or performance or for providing links for such links.
  1. The relevant provision for Copyright Infringement is reproduced herein below:

Section 51. When copyright infringed. -Copyright in a work shall be deemed to be infringed-

(a)    when any person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act-

(i)     does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii)     permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or

(b)     When any person –

  • makes for sale on hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or
  • Distributes either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright, or
  • By way of trade exhibits in public, or
  • Imports [***] into India,

any infringing copies of the work:

[Provided that nothing in Sub-clause (iv) shall apply to the import of one copy of anywork, for the private and domestic use of the importer.]

Explanation – For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an “infringing copy.

  1. From the bare reading of the Section 51, it becomes apparent that the infringement is, doing of any act by a person who is not authorized by the owner, which the owner is conferred to do under the provisions of the Act or permitting any place for profit for infringement of the copyright is also an infringement under the Act. The said two provisions are disjunctive in as much as that there shall be an infringement even if the acts are done which are of the owner or in the alternative the acts of permitting any place for profit.
  1. In view of the same and also the fact that the provision provides for permitting “any place which itself is loosely worded and is unfettered by any qualification, the said words “any place” have to be construed widely so as to include the place at the webs page or internet in order to give effect to the provision to be operative in cases of newer kind of the infringements being caused at the web space.
  1. Thus the Copyright Infringement includes the online infringement and any one can sue for the infringement of copyright based on the web pages or web contents including websites & mobile Application.
  1. However there is no reference to such business models i.e. network service providers, internet services providers, web-hosting service providers under the Copyright Act. The business model was such that made them susceptible to various liabilities. There was no explicit provision covering their right. They are commonly known as Intermediaries as is specifically defined under The Information and Technology Act, 2000.
  1. Intermediary has been defined under Section 2(w) of the IT Act,2000 “Intermediary” with respect to any particular electronic records, means any person who on behalf of another person, receives, stores or transmits that record or provides any services with respect to that record and includes telecom service providers, network service providers, internet services providers, web-hosting service providers, search engines, online payment sites, online-auction sites, online-market places and cybercafés”.

Status of Intermediary and protection provided under IT Act, 2000

  1. The Information Technology (Amendment) Act, 2008 brought a needed relief to the Intermediaries as Chapter XII of the act, provided for the exemption from liability to the Intermediaries. In exercise of the powers conferred by clause (zg) of subsection (2) of section 87 read with sub-section (2) of section 79 of the Information Technology Act, 2000 (21 of 2000), the Central Government vide gazette Notification dated 11th April,2011  published the Information Technology (Intermediaries guidelines) Rules, 2011.
  1. Section 79 of the Information Technology Act, 2000: Exemption from liability of intermediary in certain cases.—

(1) Notwithstanding anything contained in any law for the time being in force but subject to the provisions of sub-section (2) and (3), an intermediary shall not be liable for any third party information, data, or communication link made available or hosted by him.

(2) The provisions of sub-section (1) shall apply if—

(a) the function of the intermediary is limited to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored or hosted; or

(b) the intermediary does not—

(i) initiate the transmission,

(ii) select the receiver of the transmission, and

(iii) select or modify the information contained in the transmission;

(c) the intermediary observes due diligence while discharging his duties under this Act

and also observes such other guidelines as the Central Government may prescribe in this behalf.

(3) The provisions of sub-section (1) shall not apply if—

(a) the intermediary has conspired or abetted or aided or induced, whether by threats or

promise or otherwise in the commission of the unlawful act;

(b) upon receiving actual knowledge, or on being notified by the appropriate

Government or its agency that any information, data or communication link residing in or connected to a computer resource controlled by the intermediary is being used to commit the unlawful act, the intermediary fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.

Explanation.—For the purpose of this section, the expression “third party information” means any information dealt with by an intermediary in his capacity as an intermediary.

  1. The Act clearly provided that to seek protection under section 79 it was mandatory for the intermediaries to observe due diligence as provided by the Information Technology (Intermediaries guidelines) Rules, 2011. Thus it is mandatory for the Intermediaries to follow such due diligence to seek protection/ exemption under the IT ACT, 2000.The exemption provided under Section 79 read with the Information Technology (Intermediaries guidelines) Rules, 2011 clearly is similar to the provision of DMCA’s (Digital Millennium Copyright Act) safe harbours for online service provider.
  1. However the Amendment and the understanding of the said Section received a set back by the Judgement of Hon’ble Delhi High Court in the matter of Super Cassetes Industries Ltd Vs My Space Inc[1], which had led to the confusion over the protection given to the Intermediaries under the IT ACT, 2000. That the Hon’ble Court while giving a Prima Facie view on the Injunction had come to the conclusion that that the provisions of Section 79 of The Information Technology Act, 2000 will have no bearing on the liability of infringement of Copyright because of the proviso provided under Section 81 of the Act. The protection given to the Intermediaries with respect to copyright and patent infringement cases has been taken away by considering the provisions of Section 79 of the Act read with Section 81 of the Act.
  1. Thus intermediary can be sued for online infringement of copyright content despite given an exemption under Section 79 of The Information Technology Act, 2000. The interpretation of Section 79 read with Section 81 of the Act has lead to take away the exemption provided under the Act.
  1. However the proviso provided under Section 52 (c) is again an Act to bring the Indian Copyright Act in accordance with the International Practise. A proviso has been added to this clause to provide a similar provision as safe harbour as per international norms to internet service providers, as they are merely carriers of information provided by others. This is generally referred to as ‘notice and take down procedure’. If the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, that the transient or incidental storage is an infringement, such persons responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access. In case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access.

Section 52 (c) of the Copyright Act defines- Certain acts not to be infringement of copyright-

(c)     transient or incidental  storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the  work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access.

  1. It is also important to note that when section 52 (c) is read and construed in accordance to Section 79 of The Information Technology Act, 2000, it is felt that the Amended, Copyright Amendment Act, 2012 has provided some protection specifically by inserting Section 52 (c) of the Act, however there are some restriction to the same and has also incorporated the principle and procedure provided therein. Thus even to seek such exemption as provided under the Act, it is mandatory to follow such principle.

[1] 2011(48)PTC49(Del)

About the Author: Mr. Amarjeet Kumar, Senior Associate (Litigation), Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Amarjeet@khuranaandkhurana.com.

Intersection between Intellectual Property (IP) and Competition Law

With a growing buzz around how IP and Competition law interface with each other, instances when they can be coupled by Defendants to raise concerns/defense arguments, as to how and when investigations can be initiated through the Competition Commission of India (CCI), are becoming critical and hence need clarity at all ends. This piece is a small step towards the same.

Introduction

Covered under the Competition Act, 2002, a key objective of the CCI is to prevent practices having adverse effect on competition, to promote and sustain competition in markets, to protect the interests of consumers and to ensure freedom of trade carried on by other participants in markets, in India, and for matters connected therewith or incidental thereto. As its key areas of focus, the CCI aims to prohibit a) anti-competitive agreements, b) abuse of dominant position, along with c) regulating combination of enterprises (such as mergers and/or acquisitions) at large.

In order to initiate an inquiry, the CCI can either inquire into any alleged contravention of Section 3(1) or 4(1) on own its own or on receipt of relevant information from a person/consumer/trade association or based on receipt of information from Central Govt. Following step-wise flowchart helps explain, at a high level, the process followed by the CCI post receipt of potential anti-competitive activity information:

Step 1: Receive Potential Anti-Competitive Activity Information (Complaint)

Step 2: Understand Market Parameters Relating to Activity (Section 19(3))

Step 3: Understand Attributes of Enterprise under Scanner (Section 19(4))

Step 4: Understand Relevant Geographic Market and Product Market Factors (Section 19(6) and 19(7))

Step 5: Undertake Inquiry to determine whether the Activity Information causes adverse effect on competition in India

Step 6: Issue order directing discontinuance of agreement/imposition of penalty/modification of agreement/other appropriate orders

Intersection of IP and Competition law is observed when there is an imbalance between the exclusivity rights accorded by IP law and anti-competitive practices that the Competition law tries to protect, and therefore cases such as Ericsson vs. Micromax, where on one hand, Ericsson attempted to enforce its Standard Essential Patents (SEPs), and Micromax, on the other hand, contended anti-competitive practice by Ericsson based on the nature of royalty practices that Ericsson tried to impose on the Defendant (along with other issues of patent bundling, coaxing informant to enter into one-sided NDA), is just one among the growing number of examples where the interface between the two laws is strengthening.

But before coming to know of all that, as a background, in the Competition Act, 2002, as amended by the Competition Amendment Act, 2007, section 3, sub section 5, clause (i) in chapter II relating to Prohibition of certain agreements, states: -“Nothing contained in this section shall restrict -(i) the right of any person to restrain any infringement of, or to impose reasonable conditions, as may be necessary for protecting any of his rights which have been or may be conferred upon him under: – (a) the Copyright Act, 1957 (14 of 1957); (b) the Patents Act, 1970 (39 of 1970); (c) the Trade and Merchandise Marks Act, 1958 (43 of 1958) or the Trade Marks Act, 1999 (47 of 1999); (d) the Geographical Indications of Goods (Registration and Protection) Act, 1999 (48 of 1999); (e) the Designs Act, 2000 (16 of 2000); (f) the Semi-conductor Integrated Circuits Layout-Design Act, 2000 (37 of 2000).’

In context of IPR’s, Section 4 of the Competition Act would be considered to be abused when an IPR holder is involved in:

(i) directly or indirectly, imposing unfair or discriminatory condition or price;

(ii) limiting or restricting production of goods or provision of services or market;

(iii) limiting or restricting technical or scientific development to the prejudice of consumers;

(iv) denies market access in any manner;

(v) makes conclusion of contracts subject to acceptance by other parties of supplementary obligations which, by their nature or according to commercial usage, have no connection with the subject of such contracts;

(vi) uses its dominant position in one relevant market to enter into, or protect, other relevant market.

As can be seen, relevance of points (i), (ii), and (iv) are compulsory licensing (CL) provisions of the Indian Patent Act, 1970, wherein among the three grounds for filing of the CL, one ground is non-commercialization/working of the patent in India, and another one being on restrictive pricing.

Understanding the Intersection

Standards being technical requirements or specifications aiming to provide a common design for a product or process, are adopted by Standard Setting Organizations (SSOs) (which can be governmental, quasi-governmental or private). These set up, develop, coordinate, interpret and maintain standards. The Bureau of Indian Standards (BIS) is India’s SSO. SSOs play a vital role in the interaction between standards and intellectual property rights and most of the times, the technology required to achieve a standard is protected by Patents. And the patents without which a standard cannot be achieved (in any way), are termed as “Standard Essential Patents” (SEPs). So in these cases, the patentees, already enjoying the usual exclusionary rights over the patented technologies, have an extra-added benefit by virtue of their technologies becoming essential to standards or SEPs. Thus, SSOs are seen implementing IPR Policies that require members to disclose all their IP related matters and to license their SEPs under FRAND Terms (Fair, Reasonable and Non-Discriminatory). However, the varied interpretation of “FRAND Terms” along various jurisdictions has led to expensive litigations world over. India too, has seen a recent rush of SEP litigations, with over ten lawsuits being filed over a span of two years.

In an aspect, Section 3 sub section (5) of the Competition Act declares that “reasonable conditions as may be necessary for protecting” any IPR will not attract Section 3, wherein the expression “reasonable conditions” has not been defined or explained in the Act per se. However, common sense may prevail in most circumstances to determine whether an act of a Licensor/Patentee is reasonable, wherein, for instance, if the royalty/upfront demanded is more than industry standards or is not based on rational logic, or is varied by the Licensor considerably across different geographies without any territory-based rational, or for that matter, if the Licensor removes any IP infringement liability falling on him/itself, among other like conditions, unreasonability of the agreement can be substantiated. Comparative assessment and difference in stands taken by a patentee/licensor across different jurisdictions can always be incorporated while making a complaint against the patentee for unreasonable terms.

Some exemplary IP (Patent) interfacing cases that have been handled by CCI and other courts of jurisdiction have been highlighted below for better appreciate of the current position.

Ericsson vs. Kingtech

In 2011, Ericsson, a Swedish multinational corporation, filed an application before the Commissioner of Customs, complaining about the import of goods by one Kingtech Electronics (India), claiming that the goods infringed several of their SEPs in AMR Codec (Adaptive Multi-Rate) technology. This was the beginning of all the SEP litigations in India. Subsequently, when consignments belonging to Kingtech were detained by the Customs Authorities, Kingtech approached the Delhi High Court challenging that the Commissioner had detained the goods with no appropriate reason to ascertain that the goods actually infringed the patents as claimed by Ericsson. It was also alleged that the Commissioner of Customs was not competent to make such determinations. In answer, the Delhi High Court ruled that while the Commissioner’s order did not show any application of mind with regard to the claims he made (regarding infringement), Ericsson had also failed to follow due procedure, which was to approach a court of law to assert claim to its patents. Thus the Commissioner’s order was set aside and the court ordered the release of Kingtech’s goods. Ericsson consequently filed an appeal challenging the order before the High Court, which on July 2012, directed the Commissioner of Customers to pass fresh orders in the case, containing adequate reason to believe that Kingtech’s goods infringed Ericsson’s patents. This was followed by Ericsson taking a patent infringement suit before the Delhi High Court asking for an injunction against Kingtech, preventing the use, sale of any mobile phone that incorporated their patented AMR Technology. Consequently, by an order dated August 2013, the High Court directed Kingtech to refrain from importing any devices incorporating Ericsson’s AMR technology patents.

Ericsson vs. Micromax

The second instance of SEP litigation in India involved a suit filed in March 2013, by Ericsson against Micromax Informatics Limited, one of India’s largest phone makers. Ericsson claimed that Micromax had infringed eight of it’s SEPs on AMR, 3G and EDGE technologies, by selling mobile devices compliant with standards issued by the European Telecommunications Standards Institute (ETSI) and recognized by the Department of Telecommunications (DoT) in India. It was said that Micromax had not obtained licenses for said technologies from Ericsson under FRAND terms. Ericsson wanted permanent injunction, damages up to Rs. 100 crores and that Micromax render its sales accounts of mobile devices for years 2008-2012. By its order dated March 2013, the Delhi High Court granted interim relief to Ericsson and directed Micromax to make interim royalty payments. The Court also in addition allowed Ericsson to inspect every consignment for Micromax that arrived at Customs. The parties were then directed to negotiate on FRAND licensing terms for the technologies in question on and an arbitrator was appointed for the same matter. Later in November 2013, Micromax filed a complaint before the Competition Commission of India (CCI) claiming that Ericsson had abused its dominant position in the market by imposing exorbitant royalty rates for licensing its GSM technology under FRAND terms. The CCI found the claim made by Micromax to be valid and ordered an investigation on November 2013, which was subsequently challenged by Ericsson before the Delhi High Court. The jurisdiction of the CCI to investigate the actions of Ercisson was asked in question. The court, in furtherance, in its interim order dated January 2014, ruled that the CCI had indeed entered into an adjudicatory and determinative role by recording a detailed and substantial reasoning at the very initial stage, which was to order the Director General to conduct investigation. The court disallowed the Director General from contacting Ericsson officials stationed abroad, but the officials in India could be contacted for the purpose of investigation, and also restrained the CCI and Director General from passing any final orders till the proceedings of the Court is completed. The Court also directed that CCI’s order should not interfere with Ericsson’s negotiations with other third parties. Thereafter, the Delhi High Court in the judgment dated November 2014, fixed new royalty rates as interim arrangements till the time the trial of the suit was pending. The court also set December 31 2015 as the deadline for a decision in the suit. However, recently Ericsson had approached the court stating that Micromax was not paying, and it was dodging the orders by selling the handsets through a separate company floated by it, and Micromax was arguing that the order pertained to Micromax and not the entity through which the devices were being sold. This contention of Micromax was rejected by the court, also issuing bailable warrants against the chief owners. Lawyers for Ericsson debated in detail in the court inDecember 2015 that Micromax was trying to defeat the orders through a new venture and the new firm was just a tool to keep infringing the patents. Micromax opposed the allegations, contending that YU Televentures was a separate legal entity and was not bound to pay royalty. However, as the situation stands now, Micromax will have to pay royalty on sale of phones through YU Televentures also (of which Micromax owns 99.98% stakes). Micromax co-founder Vikas Jain told that the company is going to pay in dissent, meaning it would pay, pending the final judgment on the dispute, which will be delivered by the court. The Delhi High Court will resume hearing on the case on January 11, 2016.

Ericsson vs. Gionee

The third SEP litigation yet again involves the suit filed by Ericsson against Gionee and claiming infringement of the same SEPs over which Micromax was sued earlier. In October 2013, the Delhi High Court ordered Gionee to make interim royalty payments for its sales in India. The royalty rates were set on the basis of the interim royalty rates awarded to Ericsson in March 2013 in the patent infringement suit against Micromax.

Ericsson vs. Intex

The fourth in the series of litigations involving Ericsson began with a complaint filed against Ericsson before the CCI in September 2014 by an Indian phone maker, Intex Technologies. It alleged that Ericsson demanded exorbitant royalty rates (in comparison to the cost of the product to the user) and used unfair terms to license its SEPs (GSM technologies) to Intex. On January 2014, the CCI ordered for a clubbed investigation into Ericsson’s actions, based on allegations made by Intex as well as Micromax. And just like in Micromax’s case, this order was also challenged by Ericsson before the Delhi High Court, who on February 2014 ruled that the CCI had entered into a determinative process at the initial stage of investigation and imposed restrictions on the CCI and Director General similar to those that were imposed in the Micromax case. Thereafter Ericsson filed a patent infringement suit against Intex for infringement of the same SEPs. During the proceedings, Intex told the court about a similar case which happened before the Court of Rome, where all of Ericsson’s claims against mobile manufacturer ZTE had been rejected by the court who challenged the very presumption of essentiality of Ericsson’s patents. The Court of Rome had observed in that case that in order to assess the claim of essentiality, it would be necessary to examine the patents, which was too complex an analysis for the purpose of interim proceedings. Then the Roman Court held that even if it were to be assumed that the patents asserted were indeed “essential”, Ericsson would not suffer irreparable harm since the primary issue between the parties was pecuniary or money-related in nature. Thus Ericsson had to drop all the suits instituted against ZTE and settle the matter. But in contrary, the Delhi High Court refused to accept Intex’s challenge to the validity of the SEPs as a ground for rejecting Ericsson’s request for injunction. The court said that Intex in spite of being notified of the SEPs way back in December 2008, never questioned their validity over the years and this was enough evidence of validity of the SEPs (on grounds of Estoppel). Further based on contradicting statements made by Intex before the CCI and Court, regarding the validity of the SEPs, the court concluded that the SEPs were prima facie valid. The court took the view that Intex had initiated proceedings before the CCI just to prolong litigation by avoiding to pay the royalty. While granting royalty rates (in line with those granted in the infringement suit against Micromax on November 2014), the Court directed Intex to pay 50% of the royalty due from the date of the lawsuit till March 1 2015, directly to Ericsson. The remaining amount was to be paid by Intex with a bank guarantee within four weeks. These terms were to apply every six months until the disposal of the suit is complete. Intex was also restrained from importing goods that were infringing Ericsson’s SEPs.

Ericsson vs. Xiaomi

In December 2014, Ericsson filed yet another suit against Xiaomi before the Delhi High Court, alleging infringement of the same 8 SEPs that Micromax and Gionee were sued over for. Ericsson contended before the Court that despite requesting Xiaomi to license the SEPs, Xiaomi launched their infringing devices in India in July 2014. Ericsson was granted an ex-parte injunction in December 2014 preventing the sale, manufacture, import and advertisement of Xiaomi’s devices. This injunction was subsequently challenged by Xiaomi before a Division Bench of the Delhi High Court, claiming that its latest devices sold in the Indian market used Qualcomm chips, which were in fact licensed by Ericsson. Accordingly, in a temporary order dated December 16 2014, the Court permitted Xiaomi to import and sell devices carrying Qualcomm chips, on the added condition that Xiaomi would deposit Rs. 100 as royalty for every device it imported to India from the date of the launch of the device in India to January 5 2015. The matter is still pending before the High Court of Delhi.

Ericsson vs. iBall

In November 2011, Ericsson issued a letter to iBall stating that the iBall mobile devices were infringing Ericsson’s patents, the same 8 SEPs (over which Micromax, Gionee, Intex, and Xiaomi were later sued). Ericsson also offered to discuss a FRAND licensing agreement with iBall. On Ericsson’s proposal of entering into a global patent license agreement (GPLA), iBall agreed, but on the condition that details of its alleged patent infringements be disclosed to it. Ericsson replied that it could reveal the details only after entering into a non-disclosure agreement (NDA) with iBall. In subsequent communication with Ericsson, iBall contended that it was only a vendor importing products from China and selling them in India, and thus an “innocent infringer”, if it was one. Upon receiving the terms of the NDA, iBall brought the matter before the CCI, claiming that Ericsson’s refusal to identify the allegedly infringed SEPs, the threat of infringement proceedings, the attempt to persuade iBall to enter into a “one-sided and burdensome NDA”, tying and bundling patents irrelevant to iBall’s products by way of a GPLA (known as Patent Stacking) and demanding unreasonably high royalties by way of a certain percentage value of handset as opposed to the cost of actual patented technology, used all constituted abuse of Ericsson’s dominant position under Section 4 of the Competition Act, 2002. In May 2015, the CCI found prima facie abuse of dominant position by Ericsson and asked the Director General to conduct an investigation within 60 days. In the month of May 2015, Ericsson challenged the CCI’s order before the Delhi High Court on the grounds that the order was “arbitrary in nature and without jurisdiction”. In September 2015, the court ordered that the Director General of the CCI shall not submit a report of the investigation or pass a final order in the case before the CCI. In the same order, the Delhi High Court observed that iBall had not entered into a licensing agreement under FRAND terms despite Ericsson’s willingness to do so. It also found that iBall was aware of Ericsson’s portfolio of standard essential patents pertaining to GSM, GPRS, and WCDMA standards. The court held that as the infringing technologies are “standards”, and there exists no substitute for them and thus these technologies are necessarily used by iBall’s telecommunication devices. Hence iBall’s plea of not being aware of the violations was dismissed. The court also passed an interim injunction against iBall in light of interim orders passed in the matters of Ericsson vs. Xiaomi (December 2014), Ericsson vs. Gionee (October 2013), and Ericsson vs. Micromax (March 2013). While the injunctions imposed on Xiaomi and Micromax were on the sale, manufacture, advertisement and import of their devices, iBall and its agents and affiliates have been restrained from only importing devices that are allegedly infringing in nature. The court also held that without an interim injunction, Ericsson would suffer irreparable losses. The injunction against iBall would last from September 9, 2015 to the date of the next hearing at the Delhi High Court. But as the recent developments are to be believed, iBall and Ericsson have settled the dispute outside the court, and the agreement directs iBall entering into a licensing agreement with Ericsson.  “The parties have executed a Global Patent Licence Agreement (GPLA), which settled the disputes in the patent infringement lawsuit. Under the terms of the GPLA, the parties consented to dismissal of the patent infringement lawsuit by the Court, which finally occurred in November,”.

Ericsson vs. Lava

The most recent litigation involves a case against Lava International Limited, where Ericsson once again claimed its SEPs relating to AMR, GSM and EDGE technologies. At the first couple of hearings, Lava International claimed that Ericsson refused to reveal information about its agreements with other parties. While the suit is still at its initial stage, the parties have been directed to make efforts towards resolving their dispute but have failed to do so and thus the matter is now scheduled to be taken up on merits.

In addition to the Ericsson lawsuits, other SEP infringement lawsuits include those filed during 2013 and 2014 by Vringo Infrastructure, a wholly owned subsidiary of the Vringo Corporation in USA. These are summarized herein.

Vringo vs. ZTE

Vringo Infrastructure Inc. and Anr vs. Xu Dejun and Others

Vringo filed a suit against ZTE, its CEO Xu Dejun and its Indian subsidiary ZTE Telecom India in November 2013 over the alleged infringement of its patents, which is engaged in the development and monetisation of intellectual property and mobile technologies. ZTE manufactures products and provides services in the telecom infrastructure, equipment, systems, mobile phone and telecom software sphere. The Delhi High Court granted an ad-interim ex-parte injunction on the manufacture, import, sale, use, or advertisement of ZTE’s infringing products. ZTE challenged the injunction, which was lifted by the court on December 2013. ZTE was directed to pay a bank guarantee of Rs. 5 crores, along with an affidavit containing details of devices sold in India. The Delhi High Court agreed for appointment of a Scientific Advisor from the list drawn by the parties.

Vringo Infrastructure Inc. and Anr vs. Indiamart Intermesh Ltd. and Others

Vringo and Vringo Infrastructure filed another patent infringement suit in the Delhi High Court in January 2014, against ZTE, ZTE’s Indian subsidiary and Indiamart, a distributor of ZTE’s products. In February 2014, the court granted an ad-interim ex-parte injunction restraining ZTE from importing, selling, advertising, installing or operating devices that comprise the infringing components. It also appointed local commissioners to inspect ZTE’s premises and instructed customs authorities to detain ZTE’s shipments that may contain such devices and to notify Vringo about them. In March 2014, ZTE appealed against the injunction, which was lifted on August 2015 with ZTE being ordered to deposit Rs. 17.85 crore to the court. The affidavit of Expert submitted by Vringo was rejected by the Delhi High Court and a Committee of three Professors was appointed by the Court.

Vringo vs. Asus

In April 2014, Vringo filed a third patent infringement suit against AsusTek Computer Inc., one of its distributors in New Delhi, Nuage Techsol Pvt. Ltd. in the High Court of Delhi. In this suit Vringo claims infringement of a Non-SEP by AsusTek. No interim Order has been passed in the matter till date.

Concluding Remarks

The motivation theory for the protection of IPR rewards the inventor by giving him a monopoly right for a limited period of time. Competition law on the other hand acts against monopoly rights which are abusive in nature. Competition law seeks to enhance the market conditions by more choice and competition in the market. Intellectual property rights appear to go against this principle leading to possible conflicts between these two areas of law. Competition law can play a proactive role in arresting the abuse of monopoly rights granted by IPR. At the same time IPR monopolies are meant to facilitate further innovation and thereby boost further competition in the market. A dominant position in the market per se is not prohibited, but its abuse goes against competition provisions. India can use the compulsory licensing provision in case of excessive pricing of any products including patented softwares and technology. Tying arrangements between the producers and dealers should be dealt with using the competition provisions. The CCI should come up with specific guidelines in dealing with cases involving both competition and intellectual property. The interaction between intellectual property and competition policy is neither conflicting nor is it aimed at replacing the other. Rather the two streams of law are complementary and supplementary to each other. The courts have now settled the principle that the ‘interest of the consumer and competition in the market’ is of supreme importance and cannot be sacrificed at the cost of the right holder, and thus should come up with some balancing universal solution to the rising issue between IP and Competition.

References

  1. K D Raju, The Inevitable Connection between Intellectual Property and Competition Law: Emerging Jurisprudence and Lessons for India, Vol 18, March 2013, pp 111-122.

Admin, An overview of Standard Essential Patent litigations in India, June 29, 2015.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) can be reached: Tarun@iiprd.com and Abin Sam, an intern at Khurana and Khurana, Advocates and IP Attorneys.

Term of Patent in India: What’s with date 20th May 2003?

Section 53 of the Patents Act, 1970 deals with the determination of term of patent in India.  Subsection 1 of section 53 provides that the term of every patent granted, after 20th May 2003, and the term of every patent which is not expired and is not ceased to have effect, on 20th May 2003, under this Act, shall be twenty years from the date of filing of the application for the patent.

Rules applying to the calculation of the term of every patent granted before 20th May 2003 i.e. commencement of the Patents (Amendment) Act, 2002, are based on the field to which the invention relates. Being specific, patent expiration date is fourteen years from the date of the patent (date of filing application), except for the inventions claiming the method or process of manufacture of a substance, where the substance is intended for use, or is capable of being used, as food or as a medicine or drug, for which patent expiration date is the earlier of two dates, first of them being five years from the date of sealing (grant) of the patent and second being seven years from the date of the patent.

For example, a patent was granted on May 20, 2002. In such case, its term is calculated as 20 years from the date of filing of the application (assuming that the patent was maintained till the effective date) for the patent irrespective of the type of invention to which it relates. Emphasis needs to be added to the part of subsection 1 of section 53 which states that “the term of every patent which is not expired and is not ceased to have effect, on 20th May 2003”.

Those patents for which maintenance fees was not paid within the required time limit and could be restored under section 60, on May 20, 2003, were/are also be eligible for the benefit of the extended term of patent i.e. 20 years from the date of filing according to new rules.

However, it explicitly provides that the term of patent in case of National Phase Applications entering India through International applications filed under the Patent Cooperation Treaty, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty for the purposes of the calculation of the term of the patent according to the subsection 1 of section 53.

Subsection 2 of section 53 provides that a patent shall cease to have effect notwithstanding anything therein or in this Act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed (maximum six months).

According to Subsection 4 of section 53, a patent once expired due to non-payment of renewal fee or on expiry of term of patent, can’t protect its subject matter.

Patent expired due to non-payment of renewal fees can be restored under certain provisions of the Patents Act, 1970, the discussion on which needs separate accounting and does not fall within scope of this article.

Happy Reading and Happy Patenting!

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: swapnil@khuranaandkhurana.com.

Germany’s Boehringer Repudiated Patent on HIV Drug- Nevirapine

The Indian Patent Office has repudiated Germany’s Boehringer Ingelheim patent on its key HIV drug- Nevirapine, Patent Application Number: 4724/DELNP/2009 entitled “Extended release formulation of Nevirapine”, for a version sold as Viramune XR (extended release), once again forestalling attempts by Big Pharma for “exclusivity” extension on their patented drugs to reportedly block entry of reasonably priced generics.

Boehringer Ingelheim, one of the few family-owned pharma company globally, is working on biosimilars, immuno-oncology and, new treatment options for psychiatric disorders like forms of depression or schizophrenia etc. Globally, it has a strong pipeline in oncology, respiratory, stroke and diabetes prescription medicines – all of which are of importance to the demographics in India, and some of which have already been launched in India. At present, the company has several patented drugs in the domestic market – Xovoltib (afatinib), two biologics Metalyse and Actilyse, Pradaxa anticoagulant, and two diabetes medicines named Trajenta and Trajenta duo.

Some Facts

Boehringer Ingelheim had filed a patent application (application number: 4724/DELNP/2009) in India on extended release of the HIV drug on 20th July 2009, against which, Cipla had filed a pre-grant opposition in 2011, and later on launched its generic version.

Reportedly, the applicant (Boehringer) did not respond to the pre-grant opposition and also did not appear at the hearing fixed for the same on September 15, 2015. N R Meena, deputy controller of Patents & Designs, said in the order, since the applicant did not appear in the hearing fixed under section 25(1) before the controller, and no arguments were offered to rebut the objections raised in the FER (first examination report), and by the opponent, the application for grant of patent is refused.

Objections raised in the First Examination Report (FER)

Some of the below mentioned objections were raised in the first examination report (FER):

  1. Claims1-7, 8-10, 11-14, 15-20 and 21-24 are rejected u/s 3(e) of the Patents (Amended)Act, 2005 as the said claims define a mere admixture resulting only in aggregation of the properties of components thereof.
  2. It is not clear if thecombined agents act together to provide a technical effect that is greater thanjust the sum of the two or more agents alone, or whether the combination is in fact a mere juxtaposition with no interaction of the agents.
  3. Claim 1 and dependent claims thereof do not constitute an invention under section
    2[1(j)] of Patents Act 1970 (as amended in 2005) as the claims lack inventive step in view of following patent documents:
  • US2002/0006439
  • WO00/035419
  • WO2007/047371
  • US2002/0068085

Grounds of Opposition

Some of the grounds of opposition that were raised and relied upon by the opponent in the pre-grant opposition include:

  1. Section 25(1)(e): Obviousness and Lack of Inventive Step

Opponent had presented numerous prior arts to demonstrate obviousness and lack of inventive steps for the claims of the impugned application.

  1. Section 25(1)(f): Not Patentable/ Not an Invention –
  • Claim lack inventive step under Section 2(1)(ja)

The claims of the impugned application falls under section 2(1)(ja) i.e. being devoid of inventive step. The definition of inventive step states that the invention should be a technical advancement over the prior art or it should show economical significance or both and should not be obvious to a person skilled in the art. It was also stated that the alleged invention is neither a technical advancement nor does it give any economic significance.

  • Claims not a invention as per section 2(1)(ta)

The challenged invention falls under Section 2(1)(ta), being devoid of inventive step as according to the definition of ‘pharmaceutical substance’.

  • Claims not patentable as per Section 3(d)

The alleged pharmaceutical product (dosage form) as claimed in the impugned patent application does not provide any additional advantage or therapeutic efficacy over the form(s) known in the prior art i.e. 400 mg immediate release form or 200 mg immediate release form.

  • Claims not patentable as per Section 3(e)

The claimed invention i.e. claims 1 and 2, falls under the Section 3 (e) which clearly states that a substance obtained by a mere admixture results only in a aggregation of properties of components thereof is not patentable. The alleged invention in the impugned patent application is a mere admixture of nevirapine and conventional excipients for extended release for once-daily administration without any demonstration of improvement over the prior art.

Previously, an objection under section 3(e) to the dosage form (pharmaceutical product) in claims 15 and 21 of the original claims was also raised in the First Examination Report.

  1. Section 25(1)(g): the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed

Conclusion

After hearing all the parties and considering all facts, the Controller denied patent on HIV drug under Section 3(d) of Indian Patent act.

Please refer to the link (http://goo.gl/uw21Kh) for further information.

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

Extension of Time to submit the objections or suggestions to the Proposed Draft of Amendment of Trade Marks Rules, 2002

This post comes as an update to the previous one in context of the Proposed Draft Trade Mark Rules by the Central Government, which has been dealt few days back. The proposed draft rules were published on 17th November 2015 for information of all persons likely to be affected, inviting objections or suggestions, if any, with an indication that the said draft rules shall be taken into consideration after the expiry of a period of thirty days from the date of publication.

It has been notified that the last date for consideration of objections or suggestions on the draft Rules stands extended for a further period of Fifteen days from 17th December, 2015 and any Objections or suggestion may be addressed to the Secretary to the Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion), Government of India, Udyog Bhawan, New Delhi or by e-mail at Sahni.palka@nic.in. by 01.01.2016. Official Press Release can be accessed here.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com.

Proposed Trademark Amendment Rules 2015

Recently, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion (DIPP)) issued out Draft of proposed Rules for Trade Marks. The proposed draft rules are open as of now to receive objections and comments from the concerned person, which shall be taken into Consideration by the Central Government. The draft rules proposed significant changes in the Government Filing fees and the Format of Forms for Trade Mark Prosecution.

The Draft Rules proposes to increase the fees through Schedule 1, to mention a few, Trademark filing fees for each class is proposed be Rs. 8000/-, renewal charges to be Rs. 10,000/- each and request to make entry of the mark as well known mark proposed to be Rs. 100000/-. Schedule 1 of the proposed rules clearly mandates the preference to online filing instead of physical submission wherein the physical filing of forms would cost more to the applicants as compared to the online filing which indeed give rise to the online filing of the applications. Further the draft rules proposes significant change in the format and numbering of the Forms wherein the Form would be identified on alphabetical manner such as Form A, Form B instead of the present numerical as Form TM 1 and so on. The Format seems to be more systematic and seems to be a good move.

The draft rules also proposes the provision for Sound marks under Rule27 (5) which provides that the Sound marks are to be submitted in MP3 format along with the graphical notation of the same.

The draft rules also propose to provide discretionary powers to the Registrar under Rule 127 to determine a mark as Well Known mark upon application filed requesting for such determination. However it would be interesting to note that what will be the criteria to determine the trademark is well known, in the absence of any stipulations by the proposed rules and possibly it shall be governed by the precedents in that regard. Proposed draft rules may be accessed here.

Thus it can be concluded that the main highlight of the proposed draft rules mainly is the increase in fees and format of Forms to be filed. However it would be interesting to note the effect of such increase in fees upon the timeline of the prosecution and efficiency in quick disposal of the pending applications.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com.

Delhi High Court Upholds Roche’s Patent Claims on Lung Cancer Drug (Tarceva) against Cipla

A division bench of Delhi High Court on 27th Nov 2015 held that the Indian drug manufacturer Cipla infringed Swiss pharmaceutical company Roche’s patent on Erlotinib hydrochloride, marketed under the name of “Tarceva”.

Roche was granted a patent in India on Erlotinib hydrochloride (Tarceva) in 2007. Roche sued Cipla for patent infringement in January 2008 soon after Cipla announced its intent to launch a generic version of Erlotinib (i.e. Erlocip) at Rs.1,600 per tablet, compared to Roche’s selling price of Rs.4,800 per tablet.

The verdict came on the pleas of Cipla and Roche, both of which had challenged the single judge’s order of September 7, 2012. The single judge in his order had held that Cipla was not infringing Roche’s patent and refused to grant any injunction against Cipla, and it allowed the Indian drug firm to continue selling its generic product, Erlocip. The judge had also refused to revoke the patent of the Swiss company as sought by Cipla.

A division bench of justices Pradeep Nandrajog and Justice Mukta Gupta held that the single judge “erroneously compared the products of Roche and Cipla when he ought to have mapped the claims of the suit patent against Cipla’s product”.

Cipla in its plea had urged that while the patent sought to be enforced was for polymorphs A+B of Erlotinib hydrochloride, the product under manufacture by both Roche and Cipla was polymorph B, which ought to be assumed to be in the public domain and, hence, the Indian company’s activities were non-infringing in nature.

Roche in its plea had contended that the basic patent was not confined to any polymorphic form of Erlotinib hydrochloride and, hence, as long as the compound was present in Cipla’s product Erlocip, it infringes the patent.

The division bench in its decision held that:

“This (the patent claim) is a sufficiently broad claim that is clearly not limited to any polymorphic version of erlotinib hydrochloride, but to erlotinib hydrochloride itself,”. “This compound may exist in several polymorphic forms, but any and all such forms will be subsumed within this patent. Therefore as Cipla’s Erlocip is admittedly one particular polymorphic form of the Erlotinib Hydrochloride compound (Polymorph B), it will clearly infringe IN’774 patent.”

The court, however, refused to issue any injunction against Cipla restraining it from manufacturing the medicine, after observing that the life of the patent granted to Roche was ending in March 2016. However, the Court has directed Cipla to render accounts to Roche and make payment for the patent infringement.

“…keeping in view the fact that the life of the patent in favour of Roche in India would expire in March, 2016 we do not grant the injunction as prayed for by Roche against Cipla (because as noted above there was no interim injunction in favour of Roche and due to said reason Cipla continued to manufacture and sell Erlocip),” held court.

Also, the division bench in its 106-page judgment said that as Cipla “could not establish prima facie that the suit patent was obvious”, its plea for invalidating Roche’s patent on the ground of ‘obviousness’, “fails”. In addition, Cipla had demanded Roche’s patent be revoked under Section 3(d) of the Indian Patent Act that essentially bars incremental innovations unless significant efficacy is proven.

Bringing clarity to Section 3(d), the judges wrote: “We understand Section 3(d) as a positive provision that in fact recognizes incremental innovation while cautioning that the incremental steps may sometimes be so little that the resultant product is no different from the original. The inherent assumption in this is that infringement of the resultant product would therefore be an infringement of the original i.e. the known substance and by no stretch of imagination can Section 3(d) be interpret as constituting a defence to infringement.”

Roche welcomed the decision of the Court which upheld the patent covering Erlotinib hydrochloride (Tarceva) and found Cipla to have infringed it.

About the Author: Antony David, Senior Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: antony@khuranaandkhurana.com.

Establishment of Commercial Courts Division at Delhi High Court

Pursuant to the Promulgation of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015 the Hon’ble the Chief Justice vide orders dated 15.11.2015 has declared the constitution of Commercial Division at Delhi High Court with Six Benches, consisting of a Single Judge each, under Section 4(1) of The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015, with effect from 16.11.2015.

Hon’ble the Chief Justice vide orders dated 17.11.2015 has further declared constitution of Commercial Appellate Division with four Division Benches at Delhi High Court under Section 5(1) of The Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Ordinance, 2015 with effect from 17.11.2015 and has further ordered that the four Division Benches in the Commercial Appellate Division shall be DB- 1, DB-2, DB-3 and DB-4.

The detailed orders to see the judges who have been nominated to be judges of the Commercial Courts and Commercial Appellate Division can be accessed here.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at:Abhijeet@khuranaandkhurana.com.

VPATAPP – An Android Based Free Mobile App

We at IIPRD are glad to associate with a team of IP Enthusiasts who have developed an android-based mobile application called “VPATAPP”, and are happy to give a brief introduction of the same to our readers. This is first of its kind of offering on android play store and is available free of cost.

About the app:

VPATAPP is a simple tool which acts as a repository for the patent data across the globe. The app exclusively deals with the patent related resources across the globe and does not cover other forms of IPR. This tiny app is meant for patent professionals across the industries and academia. This app currently has seven different features:

  1. Patent Blogs: The app provides links to various IP blogs across the globe.
  2. Weblinks for Worldwide full time LLM/Masters/ Graduate courses in IP from USA, Europe, India, Singapore, Australia, Korea, Israel and South Africa.
  3. Various journals in the area of Intellectual Property Law especially patents;
  4. Weekly or monthly official gazettes or registers published by different patent offices across the world; Currently 54 countries/regions are covered under this tab.
  5. Patent classification systems;
  6. Patent search websites available from patent offices across the world; Currently 62 countries/regions are covered under this tab.
  7. Updated full text patent acts of different countries as published by the patent offices or WIPO; Currently 55 countries/regions are covered under this tab.

Please See: https://play.google.com/store/apps/details?id=org.gunadhya.vpatapp

About the team of app developers:

A team of four IPR enthusiasts created the app. The team is led by Mr. Vijay kumar Shivpuje, whose profile can be accessed here: https://in.linkedin.com/pub/vijaykumar-shivpuje/14/50a/75a.

The second version of the app is under development and would be with added features and would be available in the month of December 2015.

The comments, feedback and reviews about the app are welcome to vijayksl123@gmail.com or can be sent directly to +91 9768665354.

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