Patent Prosecution Highway (PPH): A landmark in the history of patent prosecution in India

A Bilateral Patent Prosecution Highway (PPH) pilot program has commenced between the Indian Patent Office (IPO) and the Japan Patent Office (JPO) on December 5, 2019. The Indian Patent Office website has also published the Procedure Guidelines to file a PPH request under the Patent Prosecution Highway Pilot Program between the Indian Patent Office (IPO) and the Japan Patent Office (JPO) which can be reached at the following link: Procedure Guidelines For Patent Prosecution Highway (PPH)

The said guidelines are issued to address the procedures that applicants need to follow while requesting for expedited examination under the PPH pilot program.

Applicants can request expedited examination by a prescribed procedure including submission of relevant documents on an application which is filed with the Office of Later Examination (OLE) and satisfies the requirements described in these guidelines under the PPH pilot program between IPO and JPO based on the application which is determined to be patentable by the Office of Earlier Examination (OEE).

In these guidelines, the Office of Later Examination (OLE) with which applicants file a PPH request and the Office of Early Examination (OEE) which determines patentability of claims of an application before the OLE are as follows:   

 
Office of Later Examination (OLE)
Office of Early Examination (OEE)
PPH request to the IPO
IPO
JPO
PPH request to the JPO
JPO
IPO

When filing a request for the PPH pilot program, an applicant must submit information in the prescribed Form presented in Chapter 5 of these guidelines, to the OLE. While submitting a request to Indian Patent Office under the said PPH program, the following points are to be noted:

  • The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.
  • An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year.
  • Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines. When the OLE decides that the request is acceptable, the application is assigned a special status for an expedited examination under the PPH.
  • An applicant/Authorized agent can file the request for expedited examination on Form 18A only after the request for assigning special status filed on form prescribed in chapter 5 is accepted by the Indian Patent office. the decision on acceptance/rejection/defect noticed shall be communicated to the Applicant/Authorized agent through email as well as message on e-filing portal.
  • In case of defects in form 5-1, the applicant will be provided opportunity to rectify the defects within 30 days from the issue of notification of defects by IPO.
  • Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.
Further Requirements for the PPH request to the Indian Patent Office:
  • Under this PPH Pilot Program, the IPO will receive Patent applications only in the technical fields of Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy.
  • The application under PPH may be filed in accordance with the provisions of rule 24C(1)(j) of Patents Rules 2003.
  • Except where the application has already been published under sub-section (2) of section 11A of the Patents Act, 1970, or a request for publication under rule 24A has already been filed, a request for expedited examination shall be accompanied by a request for publication under rule 24A. (rule 24C (3), the Patents Rules, 2003)
  • A request for expedited examination shall be made in Form 18A within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier.
  • The request for expedited examination in Form 18A shall be submitted by electronic transmission.
  • The prescribed fee for expedited Examination shall be paid as prescribed under item no. 14A or 14B as applicable, of the First Schedule of the Patents Rules, 2003.
  • When an applicant files a request for an expedited examination under the PPH pilot program to the IPO, an applicant must fill the form shown on 5.1 as “Information for PPH request to the IPO (IPO as OLE, JPO as OEE)”.

Documents to be submitted by the Applicant in Indian Patent Office (if IPO as Office of Later Examination):

(a)Copies of all office actions (which are relevant to substantial examination for patentability in the OEE) which were issued for the corresponding application by the OEE, translations of them and a self-certification of the translations.

(b) Copies of all claims determined to be patentable/allowable by the OEE and translations of them and a self-certification of the translations.

(c) Copies of references cited by the OEE examiner: If the references are patent documents, the applicant doesn’t have to submit them because the OLE usually possesses them. When the OLE does not possess the patent document, the applicant has to submit the patent document at the examiner’s request. Non-patent literature must always be submitted.

(d) Claim correspondence table which indicates how all claims in the OLE application sufficiently correspond to the patentable/allowable claims in the OEE application.

Benefits of Patent Prosecution Highway:

  • PPH will allow applicants to leverage allowance of claims from one office to another leading to an increase in domestic patent filings.
  • PPH will result in expeditious granting of patents in India
  • Expeditious examination through PPH shall result in high allowance rates and
  • significant cost savings would enable applicants to successfully and efficiently take advantage of their inventions in India.
  • PPH would encourage foreign applicants to enter the Indian market.

Author: Dr. Shikha Tejswi, Sr. Principal Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shikha@khuranaandkhurana.com

References:

[1] The Patents Rules, 2003, as amended by the Patents (Amendment) Rules 2016;

[2] Procedure guidelines for patent prosecution highway (PPH);

[3] http://www.ipindia.nic.in/newsdetail.htm?593

The Controversy Around Facebook And Political Advertising

Facebook has once again become the focal point of controversy with the social networking site refusing to fact-check the political advertisements it displays on its platform.Facebook has come under intense scrutiny due to the fact that the political advertising by the social networking company is in direct contravention to free speech and expression of people which due to the spread of misinformation by the platform has resulted in a large sections of voters being influenced by the ads. It is a cause of concern as digital advertising by political parties aims at a targeted audience to gain political advantage over the competitors. Facebook CEO Mark Zuckerberg defended the political advertising by the world’s biggest social networking by explaining that these ads won’t be going through scrutiny in any manner and that Facebook won’t be fact-checking the ads from the politicians reasoning that these ads constitute only a negligible amount of $55.8 billion of the California based social networking company’s total revenue adding that the ordinary person has been given a voice by Facebook and that the company stood for free expression.[1] This practice of unabated and unrestrained practice of political advertising  by Facebook has attracted the disapproval of numerous politicians including Senator Elizabeth Warren who accused the company of being a “disinformation -for-profit-machine”[2] and Marc Benioff, chief executor of Salesforce stating that “the social network site needs to be held accountable for propaganda on its platform”.[3] The angst pertaining to these ads by Facebook is exacerbated by the recent reports by certain organizations which quite conspicuously depict the influence these ads has on the targeted audience. A study conducted by the Centre for the Study of Developing Societies (CSDS) which targeted to find the influence of political advertising by Facebook in India found that one in three-person was into reading political news on social media presenting a rather unexpected nature of the social media users in India who are not swayed by the misinformation spread by the political nature of the ads on social media. Another report conducted by the Facebook Ad Library Report shows the sheer magnitude of money spent by national parties such as BJP which amounted to around Rs 4.3 Crore on political advertisements on Facebook itself.[4] This is evident of the reliance placed by these parties to gain some ground on their competitors during elections by enticing the social media users to be part of their ideologies by spreading propaganda through these social media sites, especially Facebook which has always been a major platform for these entities to manipulate the people accordingly, thus stripping them of their very autonomy to have their own self-constructed thinking mechanism. It also depicts that these parties are increasingly depending on these social networks to assemble a system fraught with ever increasing chances of changing the common citizens political inclination towards a specific ideology.Moreover, Facebook is under excessive pressure due to the ban imposed by Twitter on all kinds of political ads with its CEO Jack Dorsey criticizing political ads describing them as a “challenge to civic discourse at an increasing velocity, sophistication and overwhelming scale”.[5]He also added that that the political messages should be earned and not bought which is exactly the case with companies such as Facebook who are catering to the political appetite of various political entities with their policy of showing political ads proving detrimental to the free expression of people depriving them of the very right essential to the ethos of a democracy.The step taken by Twitter is in stark contrast to that adopted by Facebook which is adamant on continuing to run ads, even false ones on the social networking site in consonance with its definition of ‘free speech’. It has recently come up with a sweeping policy wherein the reasoning given by the company for not fact checking political ads was that they are newsworthy and in the public’s interest to be informed. Facebook’s approach to political ads is under intense scrutiny as it is providing impetus to change in people’s approach in their political decisions, thus proving baneful to their free speech and expression which is an indispensable character of a democratic system. Moreover, it is feared that the unrestrained paid political ads run by Facebook could disrupt the equilibrium in the political landscape resulting in disparity between different parties, thus giving an edge to the parties willing to spend more than others on digital advertising in order to attract a major portion of social media users to add to its supporters. This would in turn have a deleterious effect on the very essence of democracy which hinges on the principle of freedom of free speech and expression exercised by the people which in the case of Facebook is being contravened ruthlessly since the people are being manipulated by the political parties which are spreading misinformation via the social platform, hence distorting their political views.

Author: Bitthal Sharma 3rd Year, Rajiv Gandhi National University of Law(RGNUL), Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1]Mike Isaac, Why Everyone Is Angry at Facebook Over Its Political Ads Policy(Nov.24, 2019, 2:09 PM), https://www.nytimes.com/2019/10/30/technology/twitter-political-ads-ban.html?module=inline.

[2]Cecilia Kang, Defiant Zuckerberg Says Facebook Won’t Police Political Speech(Nov.24, 2019, 2:12 PM), https://www.nytimes.com/2019/10/17/business/zuckerberg-facebook-free-speech.html?module=inline.

[3]Ibid.

[4]Sreemoyee Mukherjee, Why Facebook Should Ban Political Ads in India(Nov.24, 2019, 2:19 PM), https://livewire.thewire.in/politics/why-facebook-should-ban-political-ads-in-india/.

[5]Supranote1.

The Myriad Case- An‘Air Strike’ On Patenting Of Isolated DNAs

INTRODUCTION

In the historic case of Diamond v. Chakrabarty[i], the Supreme Court of the United States (SCOTUS) after several deliberations held that “anything under the sun that is made by man is patentable” and that “the patent laws will be given a wide scope”. This decision opened the doors for patenting of life forms including plants and trans-animals in the United States. However, in the year 2009, the validity of gene-patenting in the United States was challenged in the case of Association for Molecular Pathology v. Myriad Genetics, Inc.[ii] which bought to rest all the speculations on the current subject matter. The case brought about by the American Civil Liberties Union, turned out to be less of a patents case and more of a civil rights case.

FACTS OF THE CASE

Myriad Genetics, Inc. is a Utah based American Molecular diagnostic company. In the year 1994, the company discovered two genes, namely BRCA1 and BRCA2 and was subsequently granted a patent over them by the US PTO.These genes were instrumental in diagnosing breast and ovarian cancer among women as women possessing these genetic mutations were more susceptible of having breast cancer (nearly 50-80%) and ovarian cancer (nearly 20-50%) later in their lives.[iii]

Myriad threatened to sue any lab which was offering tests for BRCA or related genes. The company took complete advantage of the exclusive rights that the patent has vested on it. It charged humongous costs for the diagnostic tests. The actual price accrued was not even a fraction of the amount that was charged. Gradually, it stopped sharing data with the international scientific community.  The most bothersome issue was that for several years, it denied to upgrade the lists. These lists included the subsidiary and ancillary mutations. The major drawback of not upgrading the lists was that several women who have taken the test within this time frame received the wrong result.[iv] As a result of the gene monopoly, no other lab was in a capacity to provide for the tests, prompting the suffering of numerous women with no fault of theirs.

Subsequently in the year 2010, a case was filed against Myriad Genetics by a group of several experts, physicians, geneticists, patients, advocacy and scientific research groupschallenging the validity of patents granted over the BRCA1 and BRCA2 genes.

JUDGMENT

The matter was brought up by the plaintiff before the Southern District Court of New York. The Court ruled in favor of the plaintiffs in March 2010. Judge Robert W. Sweet in his 152-page decisionruled that “the patents at issue directed to isolated DNAs containing sequences found in nature are unsustainable as a matter of law and are deemed as non-patentable subject matter” and thereby invalidating patents on the BRCA1 and BRCA2 genes. Myriad moved to the US Court of Appeals for the Federal Circuit by way of an appeal. In a vital and significant move in the case, the US government switched sides. Where previously in the district court, the submissions of the government were being made in Myriad’s favour, however in the appellate court it blatantly made submissions favouring the opposition side by contending that isolated DNAsare not eligible for patent protection. The Court of Appeals reversedthe decision of the district court in part and affirmed in part, stating that patent can be granted over an isolated DNA that does not occur alone in the nature.[v]

This led to filing of a petition before the SCOTUS andthe question resurfaced that‘Are human genes patentable?’. The Supreme Court finally ruled in favor of the plaintiff stating that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated…”.[vi] Thus, differentiating between the concepts of ‘invention’ and ‘discovery’, SCOTUS had rightfully stated that nothing new was created by Myriad and only discovery of an important and useful gene was made by it, which does not come under the ambit of an invention.

CONCLUSION

The whole Myriad judgment on the gene-patenting hoopla can be beautifully summed up by way of asimple analogy- if the DNA is metaphorically understood as gold and isolating DNA is extracting gold from a mountain or taking it out of a stream bed, then the process or the procedure of mining the gold may be patented but not the gold itself. Inspite of enduring a lot of efforts in digging the gold out of the mountain, gold per se can still not be patented.

Author: Kartik Tyagi, B.A. LL.B (Hons.), 5th year, Amity Law School, Noida, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[i]447 U.S. 303 (1980).

[ii]569 U.S. 576 (2013).

[iii]https://onlinelaw.wustl.edu/blog/case-study-association-for-molecular-pathology-v-myriad-genetics-inc/accessed on Oct. 22, 2019.

[iv]https://www.wipo.int/wipo_magazine/en/2006/04/article_0003.htmlaccessed on Oct. 22, 2019.

[v]https://journalofethics.ama-assn.org/article/supreme-court-myriad-genetics-synthetic-dna-patentable-isolated-genes-are-not/2015-09accessed on Oct. 23, 2019.

[vi]https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4665038/accessed on Oct. 23, 2019.

Architect’s Moral Rights in India

Introduction

Whether an architect has the right to restrain demolition of his own artistic work i.e. buildings and other forms of construction by the owner of the land it is built on has been recently answered by the Delhi High Court in negative in the case Raj Rewal v. Union of India & Ors.It concerned demolition of Hall of Nation in Pragati Maidan, New Delhi, which the plaintiff has sought to protect under Section 57 of the Indian Copyrights Act. The case will haveimportant reverberations in development of future jurisprudence surrounding moral rights in India

Moral rights in India

Concept of moral rights originates from the Droit D’ Auteur, a French Concept which states that the creator of the work has a special relationship with the art they have created as it has been created by their own skills and is infused with their own beliefs, and hence the artist has a certain reputation attached to that work and has certain rights arising out of this relationship. Moral rights and Commercial rights are two of such right that we bestow upon author of an original work.

Moral rights itself encompasses two major rights, which are Right to Integrityand Right to Paternity. Right to Integrity aims to protect the reputation of the author by outlawing any distortion, defacement, derogatory alteration etc. which can harm the artist’s honor. Right to Paternity guarantees attribution for artist for creation of his work when such work is reproduced or disseminated through any medium.

Section 57 of the Copyright Act builds upon these very foundations. It provides author rights regarding attribution to his/her own work and right to protect his reputation. Even after the economic rightsof a work are surrendered, moral rights are not alienated, and the author can bring a claim infringement in case there is a violation of his moral rights.

One of the most important development in Pre-Raj Rewal Moral Rights jurisprudence was in the case Amarnath Sehgal v. Union of India[1]. The case concerned certain murals of very high acclaim that were, during the renovation of Vigyan Bhavan, removed and placed in the storage without the permission of the author, Mr. Amarnath Sehgal. He claimed that the such dismemberment and treatment of his work of art by government authorities was mutilation and hence affected his honor and reputation. Delhi High Court in this case held thatauthor’s moral rights were violated as right to paternity and integrity were essential rights bestowed upon an author by the act. Furthermore, the fact that defendant was vested with the copyright was irrelevant as moral rights and economic rights do not intertwine.

CaseRaj Rewal v. Union of India and its importance

The plaintiff, an architect called Raj Rewal designed the Hall of Nations, situated in Pragati Maidan in New Delhi. It was declared as the world’s first Large Span Concrete Structurewhen it was constructed. However, in 2016 the Indian Trade Promotion Organization, occupiers of the building in contention proposed construction of a new building in place of the old one and the building was demolished in 2017. Plaintiff claimed that demolition of the building was against his moral rights and claimed interim relief.

The court however rejected the claim. Court reasoned that destruction or not displaying a work cannot be said to be infringing artist’s moral rights.It also stated that the Right to property was right embedded in the constitution itself under Article 300-A, compared to moral rights, which were statutory rights provided by Indian Copyright Act. Article 300-A states that no person can be deprived of his provided bar authority of law. As constitution rights prevail over the statutory rights, the court upheld right of the landowner against the moral rights of the architect.

Furthermore, the court relied on Section 52(1)(x) of the copyright act which provides an exception to copyright, stating that reconstruction cannot be considered an infringement of copyright. The section would be left inoperative if the contention of the appellant, that destruction of a building under Section 57(1)(b) is prohibited, is upheld. Therefore, such reading of the law cannot be taken forward and plaintiff was not granted interim relief.[2]

The importance of this case arises from the fact that the reasoning of the court is contrasting to what the court’s earlier stand in the case Amarnath Sehgal v. Union of India, when the court stated that removal and storage of the murals did in fact infringe rights of the author. One possible way to reconcile these two contrasting positions can be done from the fact that Raj Rewalscope should be limited to buildings and other forms of construction. The factual difference lies in the fact that moral rights in case of Raj Rewalwent against constitutional rights of the landowner whereas there was no such contention in the Amarnath Sehgal case.

There is also a socio-economic dimension to the Raj Rewal case which we should keep in mind before scrutinizing this decision. Any construction can only exist for limited time period (around 75-100 years) before it’s unsafe to utilize due to effects of wear and tear over the years on its structure, either requiring it to be demolished for a new construction or simply not utilizing it. WhileRaj Rewal case decision does have an adverse impact on the rights of an architect, a decision in favor of Raj Rewal could have also produced some chilling effects, possibly piling the courts with cases over hundreds of decommissioned constructions occupying land that cannot be utilized for reconstruction.

An example that India can follow is from Australia, where under the Copyright Amendment (Moral Rights) Act, 2000, the owners of the building are required to give a notice and consult in good faith the designer or the architect before modifying or demolishing the structure[3]. The act balances the rights of an architect with the need of development. While the act does not create any legal obligations for the owner to incorporate the suggestion of an architect, it ensures that they are aware of the recent development regarding their own constructions and share theiropinion on the matter as well. If they are not satisfied with the outcome, they can either go for a legal recourse or can simply have their name not be associated with that construction to protect their integrity and reputation. Similar rules in India will give architects means to protect their own integrity as they can be aware of any mutilation or modification being done and can either consent to it or take a legal recourse.

Raj Rewal reduces the scope of moral rights of architects and restricts them, giving landowners the right to alter constructions and hence restricting an architect’s ability to protect their integrity.As the judgement came out this year, the full effects of it will be only be seen in the coming years as the jurisprudence further develops from this milestone. However, it does put architects in a precarious situation as it restricts their rights.

Author:  Rushil Anand (5th Year), B.B.A LLB, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References

[1] Amarnath Sehgal v. Union of India(2005)117 DLT 717

[2]Raj Rewal v. Union of India(2019) 260 DLT 190

[3] http://www.mondaq.com/australia/x/189018/Copyright/Addressing the moral rights of design consultants

[4]http://www.mondaq.com/india/x/537094/Copyright/Moral+Rights+Under+Copyright+Law

[5] (2005)117 DLT 717

[6] (2019) 260 DLT 190

[7] Murray, A. (2012, July 30). Retrieved from http://www.mondaq.com/australia/x/189018/Copyright/Addressing the moral rights of design consultants

Online Movie Piracy: Combating ‘Rogue’ and ‘Hydra-Headed Rogue’ Websites

Introduction:

Indian Cinema is as diverse as the land from which it evolves, witharound 1600 movies screened every year in different languages. Since its inception in the late 1890s, Indian Cinema has travelled expeditiously and so has the new age technology, wherein online piracy co-exists and strangles the exclusive rights of the owners in cinematograph films. In order to facilitate streaming of pirated movies, Rogue and its hydra-headed websites are created, which attract people to watch unlicensed version of copyrighted movies for free. The creators of such websites hide behind the veil and infringe copyright in the cinematographic films by broadcasting innumerable movies on web to earn quick money and avoid royalties and taxes[i]. Such an act of duplicating and broadcasting movies on web without acquiring license from the owner is known as online movie piracy.However, Movie piracy is not restricted to online piracy and can also be committed in traditional ways such as optical discs and videocassette piracy, theatrical print theft, camcorder piracy, signal theft, broadcasting piracy, etc.[ii].

The term piracy denotes illegal and deceptive use, copying and reproduction of someone’s work, wherein, piracy committed in the web world is known as online piracy. Illegal Duplication or reproduction of an original work such as a cinematograph film on internet platform constitutes to online copyright piracy or infringement.

According to the Copyright act, 1957, copyright subsists in a cinematograph film[iii] and an infringement occurs when any person evades exclusive rights of the owner by making copies of the work, storing it, communicating the work, and selling or offering for sale without the consent or license of the owner[iv]. An infringement of copyright shall be punishable with a maximum imprisonment of three years and a fine which may extend to two lakhs[v]. Furthermore, an injunction can also be obtained in the civil court against such an infringement[vi]

The addition of Sections 65A for protection against evasion of technological measures and 65B for protection of rights management information such as name of the owner/performer or copyright information etc., in the copyright act through the 2012 amendment, further paves way for combating challenges posed by the new age digital technology such as online piracy, which undoubtedly effects and infringes copyrights in films, music and other works.[vii]

‘Rogue’ and ‘Hydra Headed Rogue’ websites in light of the UTV Software case:

Rogue websites are the sites which run for unethical or malicious purposes and infringe copyright in a work. While, Hydra-headed Rogue websites can be defined as mirror websites of the existing rogue website, which on being blocked, multiplies or resurfacesinto different alpha-numeric sites, i.e., the operator shifts from one site to another by changing a digit or letter, by ‘whack a mole’ effect[viii].

In the landmark judgment of UTV Software Communications v. 1337X.to and others[ix], UTV together with Twentieth Century Fox, filed a suit against several rogue and its mirror websites like torrent, 1337x, fmovies etc., which streamed unlicensed version of their movies and thus infringed copyright. Wherein, The Delhi High Court passed a decree of permanent injunction against the ‘John Doe defendants’ from streaming, hosting, communicating and reproducing plaintiff’s movies and directed the Internet Service providers to block such rogue and hydra-headed rogue websites.Further, the court recommended the MEITY and DOT to frame a policy wherein viewers are issued a warning to cease viewing/downloading the infringing material and will be levied fine if not conceded with.

The court in this case analysed and explainedthe definition and nature of rogue websites. According to the court, the websites which predominantly and primarily shares and allows streaming of illegal, pirated/infringing content or provide a searchable database with links to third-party ‘Flagrantly Infringing Online Locations’, are known as ‘Rogue Websites’. Such website circumvents technological measures or court’s orders, masks registrant’s or user’s details facilitates easy and free access to pirated movies thus infringing copyright in the movie.

Further, the court while examining a wayto combat hydra-headed websites,referred the case of Disney Enterprise v. Ml Ltd., (2018) SGHC 206 wherein Dynamic injunction was issued by the court to blocks new means of accessing the same infringing websites and held that,‘the Dynamic injunction was issued by Singapore High Court w.r.t Section 193 DDA of the Singapore Copyright Act. However, a similar procedure doesn’t exist under the Indian copyright regime, yet to fight the menace of piracy, the plaintiffs can implead the mirror/alphanumeric/redirect websites under Order I Rule 10 CPC as these websites merely provide access to the same websites which are the subject of the main injunction.’

The court through this judgment provided an intricate peep into the concept of rogue and hydra-headed websites and an aid to fight the issue of online piracy.

Conclusion:

Online Piracy with rogue and mirror/redirect websites as a medium to infringe copyright in movies has become a major threat to Indian cinema and the rightful owners.The recent judgement in the UTV case proves to be a significant and progressive step in combating and curbing online piracy. Nevertheless, an addition of provision on Dynamic injunction in the Indian Copyright regime shall prove to be beneficial in the era of exponential increase in online piracy. Further, steps should be taken by the government with the aid of technicians and experts to build up an effective and fast-trackmechanism to block such websites.

Author: Vartika Prasad, BBA LLB, Amity Law School, Noida, Intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

References:

[i]Dr. BL Wadehra.Law Relating to Intellectual Property 303.(Universal-Lexis Nexis, Fifth Edition, Reprint 2018)

[ii]Cyber Piracy.Access from: https://sites.google.com/site/cybercrimewiki/4-program-study-outline/7-piracy

[iii] Section 13(1)(b).Copyright Act, 1957

[iv] Section 51 r/w 14(d).Copyright Act, 1957

[v]Section 63.Copyright Act, 1957

[vi]Section 55.Copyright Act, 1957

[vii] Technological protection measures.Access from: https://www.bananaip.com/ip-news-center/technological-protection-measures-under-the-copyright-amendment-act-2012/

[viii]UTV Software Communications v. 1337X.to &others.CS (COMM) 724/2017 &Ors

[ix]Ibid.

IP Commercialisation – Case Study Related to Software /IT Industry

Prologue:

IP commercialization entails that one has the necessary intellectual property rights on the IP being commercializated and the commercialization would essentially have two parts – IP valuation and the consideration (fees).

In this article we look at the commercialization aspects of the intellectual property rights in software; through the case study approach.

Valuaton and Licensing (not Assignment):

2. Commercialization

In order to commercialize, decision has to be taken whether the IP would be assigned or licensed out. Assignment, in lay man’s terms is equivalent o selling off; while in licensing the ownership would be retained and the licensee would pay license fees. In this write-up we are considering, the case where the ownership of the software is retained by the organization that develops it and a revenue model would be established which can bring in one time or distributed (continuous or staggered) revenue.

2.1 IP in software

Software can be sought to be protected from an IP perspective, through patents, copyright, trade secrets and trademark; or a combination of these.

2.2 Software Licence

The end-user license agreement (EULA) of the software should contain a framework – a skeleton – which provides support for other clauses or systems of clauses in the License Agreement. The license thus granted can be exclusive licence, sole licence or non-exclusive licence; with or without provision for “sublicense” of the rights granted to the licensee.

A Commercial Software Product:

3. Redspark for IoT Billing

The Connected Suite IoT (Redspark) of Optiva Solutions (formerly Redknee Solutions) enables monetization of smart services and applications. Data and events from connected devices as well as other billable content is analyzed and processed in real-time to generate online billing information as well as to trigger immediate customer engagement activities. The Connected Suite IoT supports subscription based as well as usage and consumption based monetization models, in order to enable the business model that fits the service provider’s business requirements – even if models dynamically change over time along with the surrounding business conditions. The Connected Suite IoT supports vertical agnostic, agile billing functions.

The underlying, telco-proven product platform allows creation of arbitrary, complex monetization models while the Connected Suite IoT provides tools to hide most of the complexity for simple and easy utilization experience.

3.1 IoT Monetization

The IoT is not a clearly defined market with specified services and established business models. Rather, a variety of industries with different market segments is going to make use of connected devices building value propositions and services being offered to others. Even further, offered services and business models would evolve and, thus, would be subject to change over time.

3.2 Product Concept

Using the core parts of REDKNEE’s telecommunication portfolio, all well-proven capabilities of tariff complexity, scalability and stability can be provided for IoT applications and services as well. The same time, the REDKNEE Connected Suite IoT simplifies the usage of this core by providing comprehensive GUIs and APIs and let it be easy to use and easy to integrate. This way, based on the highly capable and flexible core products, the majority of monetization pattern can be easily covered while complex pattern can be provided via Professional Services.

3.3 Value Extraction

The IoT Services allow extracting value from all layers of an IoT proposition. Starting from the device hardware, the IoT platform ecosystem up to the value added services, dedicated business models can be supported as some examples show in the following.

  • Service Revenue
    • Subscription
    • Pay per use
    • Pay for results
  • Ecosystem Building
    • Transaction based
    • Revenue share
  • Hardware Premium
    • Vending
    • Rental

3.4 Product Features

Following features can be utilized based on APIs or GUI access.

Provider Management

New Service Providers can be easily on-boarded by following a simple registration process. Service Providers are separated tenants on a Connected Suite system instance operated by the system owner (referenced as System Operator). They have separate access credentials and data views. Each Service Provider manages his own services, products and Customer accounts.

Revenues of service Customers are automatically consolidated for their corresponding Service Providers allowing implementation of a revenue sharing model between Service Providers and the System Operator.

IP Aspects & Commercialisation:

4. Overview

Due to cost and complexity of software patents and difficulty of enforcement; copyright and trade secrets along with trademarks are often the preferred way to protect the IP rights in software.

4.1 Potential IP

In this case i.e. for the Redspark software, it should be noted that it is not exactly a novel IoT software for device management; but rather a product for IoT billing. It is built upon the core telecom billing engine of Redknee Solutions and although there are new GUIs and APIs and addition of several modules described above, the same are not novel and non-obvious. The experts in this area can come up with the requisite business logic which can be given the shape in the form given above.

Since the core billing engine is already protected by patent, the other parts of the software can be protected by copyright. However, to bring a sense of reliability as well as to tap the existing telecom customers of Redknee to start with as a poetential customer base (this is not exactly an OTC software product), the trademark of Redknee can be put in alongside a new trademark for Redspark (to be devised and registered).

4.2 IP Issues

As mentioned earlier, the core billing engine CCB is already patented. So while the modules sitting between the GUIs and the web-services – used to prepare and feed the data received to the core engine, are not merely computer program per se, the cost and legal hassles involved may not be worth it if attempts are to be made to patent them only. Aside from the non-patentability of the software, there can be some other IP issues as well. These can be:

  • Similarity of the GUIs i.e. front end screens with existing websites in terms of layout;
  • Similarity of the API code with others; and
  • Customization facility for each buyer/licensee – the IP protection for the same.
GUIs can be quite standard in these days. So while the GUIs while developing may bear some similarity with other metering interfaces, it is unlikely to be of much consequence from a copyright point of view as many of these are industry standard.
Similarly, the APIs of the web services of this software follow the standard restful or SOAP-based patterns and the code would also not be at much risk from copyright standpoint as they are independently developed.

So these codes would have to be copyrighted and the licensing agreements and contracts should clearly spell out the terms of use and termination of license in case of violation. Studying the program and making a competing application for commercial purpose using the code of the previous program will amount to copyright infringement. But copyright law of some jurisdictions allow for a program to be decompiled or reverse engineered for achieving interoperability. The dividing line can be thin and caution should be taken against over-exercise of this right by someone.

So if someone reverse engineers the peripheral part of the software and plugs it in with a different billing engine (other than CCB), then it can result in loss of business for Redknee.

4.3 Licensing, Royalty & License Fee

As mentioned in Section 3.4 earlier, the major customers would be the operators and in rare occasion the provider as well (who decided to operate only for his own business).The licensing, in all cases would be non-exclusive and the license fees would require multiple models so that different categories of customers can be tapped to create a reasonably large customer base for sufficiently high revenue level and continuity of the income flow over time. On the other hands, customers would typically want to keep the initial cost low and stagger the cash outflow over time. Sub-licenses can be allowed upto a specified limit, especially for foreign clients.

For operators who have large provider base, who in turn have high customer base, the transaction volume tends to be high and the monetary value associated with each transaction can be low. For such businesses, the initial cost of license can be kept low and the royalty can be made payable on a per transaction fixed amount or percentage of revenue to provider per transaction basis. 

At the other end of the spectrum, for operators with a low subscriber base and low number of transactions, the above model will not be viable and Redknee will insist on a lump sum payment as license fee before installing the software for the operator.

Most cases however, would fall midway between these two extremes and a combination of lump sum license fee and transaction based royalty would be applied – the exact contours and parameters of the contract depending upon the size and nature of the business of the operator. That way, some money would get collected immediately but the revenue stream to Redknee would also be maintained over a longer period of time; at the same time making the software affordable to the operators who would be the customers. Keeping the initial fee high can make the software unaffordable to many of them as the initial capital cost of their business would be very high and most of them would not like the idea and risk of ending up with too high a sunk cost.

So a judicious mix of license fees (one-time or staggered) and royalties would have to be arrived at during the negotiation phase with potential customers of the software. Minimum and maximum royalty collection levels may be fixed for certain cases.

An Epilogue:

5. Conclusion

Thus we see that given the fact that the organization that is developing the software will be owning it and selling it to the operator customers after customization. So there is no assignment involved in this case – only royalty and license fees would be collected for grant of license.

For lump-sum fee, amounts can be quite pre-determined and only slight discounts can be permitted. But for royalty-based or combination-contracts, the basis of royalty calculation, what would be “reasonable royalty”, MFN status, etc would figure prominently in the negotiations.

If the royalty is tied to revenues or sales, it is usually expressed as a percentage of a defined monetary amount – for example, 5% of “Net Revenues”, or 10% of “Gross Profit”. It is ultimately up to the parties to define these amounts and agree on an acceptable basis for royalty calculation.

6. Bibliography:

6.1 Sources-

  1. http:/ / www. ecgi. org/ codes/ documents/ hampel23. Pdf
  2. Bebchuk, Lucian A., Cohen, Alma and Ferrell, Allen ‘ What Matters in Corporate Governance?’(September 1, 2004). Review of Financial Studies, Vol. 22, No. 2, pp. 783- 827, February 2009; Harvard Law School John M. Olin Center Discussion Paper No. 491 (2004)
  3. Bebchuk, Lucian A., Cohen, Alma and Ferrell, Allen ‘ What Matters in Corporate Governance?’(September 1, 2004). Review of Financial Studies, Vol. 22, No. 2, pp. 783- 827, February 2009; Harvard Law School John M. Olin Center Discussion Paper No. 491 (2004)
  4. KEY ASPECTS OF IP LICENSE AGREEMENTS by Donald M. Cameron and Rowena Borenstein

6.2 Words-

  1. IP – Intellectual Property
  2. IPR – Intellectual Property Rights

Author: Sourish Roy, a LL.B. student of Rajiv Gandhi School of Intellectual Property Law. In case of any queries please contact/write back to us at
niharika@khuranaandkhurana.com 

Will The Internet Remember You Forever? Right To Be Forgotten And Its Territorial Limits

Every individualin the European Union has the Right to be Forgotten. This right ensures that when need be, if a person seeks to delist his personal information from the internet searches, he has the right to approach the data operators directly asking them to do the same. This right is incidental to the right to privacy. But the question is whether the personal information is off the internet globally or just in your region?

Google LLC has its domain search versions categorized country wise. It uses the technique of geo-blocking to prevent one region from using the version categorised specifically for some other region.

In the latest case of Google LLC v. CNIL, the defendant in support of the individuals that approached them, demanded Google to de-reference the links containing personal information of them globally and not restricting the dereferencing to the EU region. The defendant argued that such disclosure of information in other regions but in EU violates the EU directive that provides for the Right to be Forgotten.

 To clarify further, Google will ‘dereference data’ to find out where and when the information is stored, at what address (technically) and then modify/delete it.  

Google on the other hand stated that such interference by CNIL is violative of Public International Law and that the demand of the defendant is also in restriction to the Freedom of Speech and Expression.

With regard to the case in question, the Court of Justice European Union referred to the General Data Protection Regulations (Directive 95/46/EC) and held that an individual can invoke his/her right to be forgotten only within the borders of the EU. The court inferred that other countries cannot be demanded to allow the Right to be Forgotten as according to the one in the EU. 

The court also stated that the data operators must in their capacity consider and strike a balance between an individual’s right to be forgotten and public right to information. 

Right to be Forgotten in India-

The Delhi HC in its order (Subodh Gupta v Herdscene and & Ors,) wherein the plaintiff had contended that the information available about him over the internet sites were defamatory and mere allegations without any backing. The court ordered (i) Herdsceneand; (ii) Instagram LLC; (iii) Facebook, Incorporated; (iv) Facebook Ireland Limited; (v) Google Incorporated; and, (vi) Google India Pvt. Ltd.- to remove the links from their domain. The court also further held that such allegations in the contents available online without a “legal recourse” are capable of creating “mischief.”

This sheds light on the fact that even though not on the premise of the right to be forgotten, the indian court has considered erasing personal information of individuals from the internet. Further it can be seen that the result has been ordered to be delisted primarily only from Google India, which as seen in the EU case makes it possible for people outside India to be able to access such information.

Conclusion:

The GDPR in the EU have formed the basis for data privacy regulations in many countries. The judgment in favour of Google, allowing dereferencing only around the EU and not globally stands criticised, however the judgement when read intrinsically allows the Member States to weigh between the right to be forgotten and the right to freedom of information and if in the interest of the national public good, there be a reason to demand for dereferencing globally, such an order can be made. This proves that there is no complete bar and limitation to the right to be forgotten in the EU.

In India, post the Puttuswamy Judgement, right to privacy is considered a fundamental right. However, right to be forgotten has not been mentioned in the Information Technology (Reasonable Security Practices and Procedures and Sensitive Personal Data or Information) Rules, 2011. However in The Data Protection Bill, 2018, Right to be Forgotten has been proposed, which can be invoked by any person if f data disclosure is no longer necessary, the consent to use data has been withdrawn or if data is being used contrary to the provisions of the law. It is true, that the road to Data Protection to be implemented in India is a new and long one, but the recent HC judgement proves that the issues with regard to data when considered in a court of law are dealt with by considering the consent of the parties for the use of such data. The future of data protection laws, with a lot of learning from the EU regulations is a difficult but possible implementation. 

Author: Priyanshi Dixit, BA LLB from School of Law, CHRIST, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] https://www.livelaw.in/pdf_upload/pdf_upload-365121.pdf

[2] Google v CNIL Case C-507/17

[3] THE PERSONAL DATA PROTECTION BILL, 2018

Copyright Act And Photographs On Social Media

Are photographs posted on Social Media Protected under Copyright Law?

Introduction 

We live, today, in an internet age, where human beings scattered all over the world are perpetually and constantly connected via social networking websites such as Facebook, Instagram, Twitter and several more. Social Media is that construct, which gives users the ability to share content instantly, from any corner of the planet, and all they need is an internet connection! 

It must be admitted, that sharing photos that other people post on their profiles is something several of us do quite frequently when browsing on social media websites. If a beautiful picture pops up on our screens which inspires us, or makes an impact, we immediately feel the need to share that picture with friends or family, and we do so, without a second thought. However, this action begs the question, at what point does this act of sharing another person’s picture become a possible copyright infringement? 


Copyright Infringement in Photographs

With the advent of new social media platforms as well as a lot of photo sharing apps, the looming risk of a possible copyright infringement through the sharing of photos is now an ever-present phenomenon. In a simple “click-of-a-button” world, it is easy to forget about possible legal consequences and implications of what we do on social network. 

It wasn’t too long after the invention of such websites that the unauthorized use and sharing of photographs posted by such users became a problem in the legal sphere. For example, in 2013, a Haitian photographer, Mr. Daniel Morel won his major copyright victory after a four-year long struggle over certain photographs of he took of the 2010 Haiti earthquake he posted on social media. Originally, his photographs were posted on website known as “TwitPic”, that allows users to put up pictures on Twitter. However the issue arose when those pictures were reposted by another user known as Lisandro Suero, who claimed they were his property. Further, Agence France-Presse as well as Getty Images distributed and sold these photos to their clients for money. Mr. Morel eventually succeeded in the action he brought against the infringement of his rights, and was awarded a sum of awarded him $1.22 million.

Social Networking Sites and Their Policy

According to Section 17(a) of the Indian Copyright Act the “first owners” of a literary work are the authors of that particular work, and provides that, first ownership will always rest with the author even if the rights of the concerned literary work have been transferred. In essence, this section provides that the photographer will be the first owner of the photograph and will have within him rights vested as such. 

Further, as per the Facebook’s Statement of Rights and Responsibilities, by uploading any content on Facebook, the uploading party/user is, by way of such upload, licensing his intellectual property rights to Facebook. This is a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license. Thus, implying that, even though the user may be the original right-holder over content posted by him on Facebook, through the act of posting online he is giving Facebook an “IP License”. Such a condition is also included while posting content on Instagram. 

Case of Fairmount Hotels Pvt. Ltd. vs. Bhupender Singh (2018)

A copyright vested in photos uploaded by users on Facebook has recently been recognized by the honourable High Court of Delhi in a recent judgement given by Justice Manmohan. 

Facts of the Case

In 2015, a conflict arose when the Plaintiff, Fairmount Hotels Pvt. Ltd. realized that the Defendant, Mr. Bhupender Singh had displayed the pictures belonging to the Plaintiff. Pictures of the hotel had been posted on the Facebook page of the Defendant without the requisite authorization or permission of the Plaintiff. Subsequently, a suit for infringement of copyright of the Plaintiff was filed before the Hon’ble High Court of Delhi. The Plaintiff submitted that such an act of the Defendant unfair means to attract the innocent people in the guise of the Plaintiff. It so happened, that the Defendant had been an employee of the Plaintiff and after leaving that service, had opened a hotel of his own in Manali and was using images of the Plaintiff for the promotion of his own new hotel. 

Reliefs Sought

Plaintiff filed two suits; in the original suit, he sought an ex parte injunction against any further use of the concerned photographs by the Defendant on his Facebook page. The Plaintiff then also submitted in evidence, the concerned photographs to claim permanent Injunction. An interim injunction was thus passed against the Defendant following which the Defendant undertook not to misuse the photographs on his Facebook page. Further, after considering all submissions made by both parties, as well as the financial status of the Defendant, the Hon’ble High Court of Delhi granted a permanent injunction against the misuse of the photographs by the Defendant and issued a direction of 50,000 INR cost to be paid to the Plaintiff.  

Analysis 

Photographs are protected under copyright law as artistic work under Section 2 (c) of Copyright Act 1957 in India. Although in India, as per section 25 of the Copyright Act, the Photographs are provided copyright protection for a period of 60 years from the date of publication, the term of protection varies from country to country. For example, the duration of protection provided by US/European Union is 70 years, while Berne convention provides minimum limit duration of protection of 50 years. Although copyright registration is not mandatory under Copyright Act, it is recommended, and the procedure can be completed with the Copyright Office. 

However, it has been noted that malafide intention of a person sharing photographs should be considered imposing liability for infringement of copyright, with respect to photographs. If any individual looking to use/share/post pictures or photographs belonging to another person is doing so without the malafide intention to incur undue profits from it, he may not be infringing the Intellectual Property of the author. For example, in the above mentioned case of the Haitian photographer, companies that had wilfully sold his property for monetary gain were held liable for their malafide intent. Photographs can be utilized for teaching/research, legislative, judicial proceedings under the purview of fair use and are permissible for use of photographs even without the prior consent of the photographer.

Conclusion 

The Copyright Act, 1957 is exhaustive which can effectively safeguard the rights of photographs posted on social media websites and photographer rights in India. This is because, the law not only protects hard copy/paper photographs taken but also online posting of photographs. This protection for online photographs is not expressly mentioned in the Copyright Act, however the existing judgements being pronounced in the purview of such issues is proving time and again that the meaning of “photographs” u/s 2(c) of the act includes photographs posted on online platforms as well. Therefore, the existing copyright law provisions are competent to overcome any hurdles in the way of social media users and all the latest technology.

Author: Aditi Vinzanekar, Symbiosis Law School, Pune, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] Amanda Ciccatelli, Photo Sharing on Social Media and Copyright Infringement: What You need to Know, IP Watchdog, (December 15, 2017) available at https://www.ipwatchdog.com/2017/12/15/photo-sharingsocial-media-copyright-infringement/id=91022/ (last visited February 6, 2018)

[2] Sidhhant Sarangi, Copyright Registration of Photographs, iPleaders Blog, (February 21, 2018) available at https://blog.ipleaders.in/copyright-registration-of-photographs/ (last visited February 21, 2018)

[3] S. 2 of Facebook’s Statement of Rights and Responsibilities, available at https://www.facebook.com/legal/terms

[4] S.10A of Information Technology Act 2000 recognizes electronically formed contracts.

[5] Swaraj Paul Barooah, Copyright in Photographs vis-à-vis Social Networking Sites, SpicyIP, (December 4, 2013) available at https://spicyip.com/2013/12/copyright-in-photographs-versus-social-networking-sites.html (last visited (November 5th, 2019)

[6] Fairmount Hotels Pvt. Ltd. vs. Bhupender Singh CS(COMM) 111 of 2018

[7] Mail Today Bureau, Hotel owner in Manali fined Rs 50000 for using another hotel’s pictures on Facebook page, India Today (April 14, 2018) available at https://www.indiatoday.in/mail-today/story/hotel-owner-in-manali-fined-rs-50000-for-using-another-hotel-s-pictures-on-facebook-page-1211959-2018-04-14 (last visited April 14, 2018)

[8] Apoorva Mandhani, Delhi HC Recognizes Copyright On Photos Uploaded On Facebook, available on http://www.livelaw.in/delhi-hc-recognizes-copyright-photos-uploaded-facebook-read-order/ (last visited April 20, 2018).

[9] S.S. Rana & Co. Advocates, Delhi High Court On The Copyright On Photographs Uploaded On Facebook, Mondq (last visited June 5, 2018)

[10] Archer & Angel Advocates and Legal Consultants, India Business Bulletin (April 2018), Corporate Law, available at http://www.archerangel.com/wp-content/uploads/Archer-Angel_-India-Business-Bulletin_April_-2018.pdf

[11] Article 2(c)(i) of Copyright Act, 1957, “artistic work as a painting , a sculpture, a drawing,(including a map, chart or plan) an engraving or a photograph whether or not any such work possesses artistic quality” 
[12] Procedure for Copyright Registration, available at http://copyright.gov.in/frmWorkFlow.aspx

Patent Prosecution Highway: A Fast-track to Patent Examination

At the 2018 Summit held between Japan & India, the two countries have perceived a close collaboration in Intellectual Property Rights in order to realize the true potential of the economic-partnership between the two for a prosperous future. The Countries have agreed to launch a bilateral Patent Prosecution Highway program on a pilot premise in certain recognized fields of innovations in the principal quarter of FY 2019.1The initial dialogue between the two countries began in 2015. The JPO (Japan Patent Office) has been advancing the collaboration for quick acquisition of IP rights in India through a Memorandum of Co-operation (MOC) signed with the DIPP, MCI in July 2015. In May 2017, the JPO concurred the amended action plan thereby increasing the fields for participation with the Office of the Controller General of Patents, Designs, and Trade Marks. Consequently, the First Review Meeting on IP was held where JPO and DIPP embraced a joint articulation with respect to their IP participation in September 2017. The Second Review Meeting took place on August 22, 2018 in Tokyo, on account of the proceeding and reinforcing the association between Japan and India through observing the advancement of the action plan. An official statement along with a few details was released during the Japan-India Summit in 2018.2

The Union Cabinet of India on 20thNovember, 2019 approved the proposal for adoption of PPH (Patent Prosecution Highway) programme between IPO (Indian Patent Office) and patent offices of other countries. Indian Patent Office may receive patent applications in certain specified technical fields only, namely Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy while JPO may receive applications in all fields of technology. The programme would first be conducted between India and Japan on a pilot basis for a period of 3 years.3 As the term ‘highway’ suggests, this programme is fundamentally a fast-track process for inventors to get their inventions examined in a quicker and easier way. As per the PPH programme, patent offices of participating countries have concurred that when a candidate gets a final decree from a first patent office that at least allows one claim, the same candidate may demand expedited examination of relevant claim(s) in a subsequent patent application pending in the second patent office4. However, this is not the first time that a programme like this is being implemented. In July 2006, the first PPH programme to expedite the process of granting patents within the countries was commenced between USPTO (the United States Patent and Trademark Office) and JPO (Japan Patent Office) 5.

The DIPP’s (Department of Industrial Policy and Promotion) main intention behind accepting the proposal is not just to accelerate the examination of patents thereby reducing the heavy backlog that different patent registries in the country face but also to improve the quality of search and examinations of different patent applications received.6 TheRule24(c) of the Draft Patent Rules, 2003 which provides the criteria to request for an expedite examination will have to be correspondingly amended to include PPH applications under it. It is right now restricted to only a few applicants like startups, small entity, and female natural person etc.7

It will be beneficial for Indian startups and other MSME’s to get a speedy examination of their patent applications in Japan once they’ve been granted in India. The PPH with Japan is just a pilot programme for a period of 3 years and such agreements will be concluded with different countries in the future which makes it even more desirable for inventors as it will be easier for them to go for an expedited patent examination in different regions and major market areas.8

The benefits of PPH can be observed empirically as well. Post the PPH between U.S. and EU, there has been a reduction in the pendency of patent applications in the U.S. For instance, the average number of patent office actions before disposal of a case has dropped from 2.7 (for non-PPH cases) to 1.7 (for PPH cases). Thus, PPH has in-fact worked out in other regions prior to its implementation in India.9Nevertheless, the pilot programme between India and Japan has received criticisms from different analysts. According to them, the Indian patent examiners might get lackadaisical while evaluating any application and grant the patent just by relying on JPO’s examination report. This becomes problematic as the provisions concerning ‘Non-Patentability’ are stricter in India than Japan or any other country.10 Their disproval arises from the concern of dilution of patent laws in India due to the ‘harmonization’ of patent laws of both the countries. However, there lies a very evident argument against this which we shall discuss in the next portion.

The three primary terms ‘New’, ‘Inventive’ and ‘Industrial Application’, give the three fundamental criteria to patentability in the context of India as well as any other country. The TRIPS Agreement requires its member countries to make patents available for any such inventions, whether it is a product or a process, in all fields of technology without discrimination, subject to the three above-mentioned test of novelty, inventiveness and industrial applicability.11 Thus, when JPO’s examiner grants a patent to an invention, the Indian registry’s work of inspecting the application of three primary requirements gets reduced and this shall result in saving a lot of time. Moreover, PPH simply allows expedition of an application under Section 24(c) of the Indian Patents Act and in no way guarantees the patent being granted, as the examiner will further have to examine if the patent application is in compliance with the Indian Patents Act, 1970.

Another possible problem that can arise is in relation to the PPHs of other countries. For example, if Japan grants/expedites the examination process of any patent because of its PPH with the U.S. because the patent had already been granted in U.S. Now, the examination of the same patent in India will also be expedited because of its PPH with Japan, in a way creating a multi-country and indirect impact even though the formal agreement is a bilateral one.

However, these problems and criticisms can be corrected by proper guidelines. As mentioned in the press release by the Cabinet, the patent offices will frame the guidelines for implementation of the programme.12Hence, it is suggested that the patent offices hold keep these potential problems in mind while framing the guidelines.

To conclude, the idea of PPH has a lot of potential in improving the quality of the examination of patents as well as reducing the pendency of the patent applications in India, However it should not be implemented in a hasty manner and should come into force only after specific and proper guidelines are in existence.

Author: Apoorv Dixit, 3rd year student at NALSAR University of Law, Intern at Mumbai Office at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.

References: 

[1] India-Japan Vision Statement, Ministry of External Affairs, https://www.mea.gov.in/bilateral-documents.htm?dtl/30543/IndiaJapan_Vision_Statement/

[2] The JPO and the DIPP, MCI, India Agree in Principal to Start a Bilateral PPH, Ministry of Economy Trade & Industry, https://www.meti.go.jp/english/press/2018/0920_001.html/

[3] Press Information Bureau, Government of India, Cabinet, Cabinet approves the Patent Prosecution Highway programme, https://pib.gov.in/newsite/PrintRelease.aspx?relid=194757/

[4] Press Information Bureau, Government of India, Cabinet, Cabinet approves the Patent Prosecution Highway programme, https://pib.gov.in/newsite/PrintRelease.aspx?relid=194757/

[5] Patent Prosecution Highway Pilot Programme between USPTO and JPO, https://www.uspto.gov/sites/default/files/web/offices/pac/dapp/opla/preognotice/pph_pp.pdf/

[6] Cabinet approves Patent Prosecution Highway Programme,Business Insider India, https://www.businessinsider.in/business/news/cabinet-approves-patent-prosecution-highway-programme/articleshow/72149570.cms

[7] The Patent Rules, 2003, Intellectual Property India, http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf

[8] Press Information Bureau, Government of India, Cabinet, Cabinet approves the Patent Prosecution Highway programme, https://pib.gov.in/newsite/PrintRelease.aspx?relid=194757/

[9] Christopher A Potts, The Patent Prosecution Highway: A Global Superhighway to Changing Validity Standards, WIPO, https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ipr_ge_11/wipo_ipr_ge_11_topic15.pdf/

[10] LathaJishnu, Patent Prosecution Highway: The fast-track to disaster, Down to Earth, https://www.downtoearth.org.in/blog/economy/patent-prosecution-highway-the-fast-track-to-disaster-63088

[11] Overview: the TRIPS Agreement, World Trade Organization, https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm/

[12] Press Information Bureau, Government of India, Cabinet, Cabinet approves the Patent Prosecution Highway programme, https://pib.gov.in/newsite/PrintRelease.aspx?relid=194757/

The Navara Rice Controversy

In India, Agriculture is the highest revenue generator for India’s economic system. The farmers have been given special position in society through farmer’s card under the farmers’ rights act. The farmers’ are given subsidy, a special exception under article xx of WTO and various other privileges under various policies and laws of central and state governments. Still, the Protection of Plant Varieties and Farmers Rights Act, 2001 gives special rights of registration to the inventor or rather improver of any superior quality of existing species of seed or other forms of plants. This special right of registration provides with proprietary right to the inventor of higher quality of the existing quality which is nothing but an improvement over prior art. The recent case of registration of improved variety of Navara rice has opened a Pandora’s Box for the impediments to farmer’s Right over the use of the similar or lower variety of the same species of rice.

The wide contribution of farmers from all the regions of the world for development and conservation of food and agriculture production has been recognized in the Article 9 of the International treaty.[1] The right of protection of farmer’s traditional knowledge, the right to share in the benefits derived accordingly, right to participate on related matters at the national level and right to save, use, re-use, exchange and sell farm-saved seeds are protected by the same. As for national security, Food security is important. A country that does not protect its own seed and food cannot secure its own nation.[2] The contribution of farmers has been virtually been ignored since the emergence of the concept of intellectual property rights extended to new plant varieties. The article questions the credibility of Protection of Plant Varieties and Farmers’ Act in the light of a current issue i.e. Navara Rice. Instead, the proprietary rights given to the inventor for an improvement over prior right are looked into. Farmers need special protection because country’s survival depends on it. Therefore, the importance of farmers cannot be undermined. Farmers have authority over the seeds regarding how to utilize them, save and re-use them. Here the question is, since farmers had customary rights to use, save and re-use the seeds of protected variety, don’t they have a better right? The intervention of law is necessary if they put restrictions on farmers to utilize their own customary rights.[1]

Facts of the Issue

A petition for registering Navara, a traditional medicinal rice variety under the Protection Plant Variety and Farmers Right Act, 2001 was filed by Mr. P Narayanan Unni, a farmer and founder of the Navara Eco Farm and Navara Foundation at Chittur in Palakkad.[2] Navara Rice unlike other rice varieties is deep red in color and has been cultivated for more than 2000 years in the Palghat region. In the last 40-50 years, it has come close to being wiped out as several new hybrid varieties had been introduced.[3]“The State Government of Kerala and Kerala Agriculture University (KAU) maintain that Navara is a traditional rice variety cultivated across the State” and so they are objecting the petition filed by Mr. P. Narayanan Unni, for registration of the Navara Rice.[4] Mr. P Unni, claims that the variety which is being cultivated by him is of an exclusive variety only belonging to Chittur and therefore it can be registered.[5]

Importance of the Issue

The Navara Rice Controversy i.e. whether it can be registered or is it ethical to register the same opens questions to the credibility of the Protection of Plant Variety and Farmers Right Act, 2001. There are many Farmers who are using similar or lower variety of the same species of rice and are having rights over such variety. In the present issue, Navara Rice is a traditional variety which has been evolved and cultivated by the local farmers in the Palghat region for many years. It would be impediment for other farmers rights if any single farmer gets such traditional variety patented under his or her name. Moreover, no database generally exists for traditional varieties as the same has been cultivated and evolved over decades. Since no database exists, the new variety which is claimed by any farmer cannot be compared with that of traditional variety. The Protection of Plant Variety and Farmers Right Act, 2001 fails to recognize the fact that a traditional variety is developed by many farmers over the years, even before the existence of this act and registration of an improved version of a traditional variety would be impediment to the farmers rights as they might be using similar or lower variety of the same species under different name.

Plant Variety Act does not protect farmers interest

Mr. P Unni request to register a traditional variety, Navara Rice has raised concerned regarding the loopholes in the Protection of  Plant Varieties and Farmers Rights Act. As per the researcher, it is an unethical move because of the following reasons:-

1. Due to lack of database, registration can be given to any individual who claims that they have developed the variety.

2. The act ignores the fact that different farming communities may be caretakers and custodian of the same variety, may be even by different names.

3. Such registration is made on the basis of first come first serve basis.

4. Farmers who are relatively well-off might get to know about the registration regime in the first instance itself and therefore get the variety registered.

All the above would deny the fact that contribution was made by others to conserve and maintain a variety.

The following remedies are suggested for the recognition of the farmers rights :

(1) To improve the method of data collection of authority of Traditional Varieties:

In the act, it is the function of the authority to collect data of varieties so that distinction can be made. Though the law is well intended, but such phrasing only makes it the duty of the authority and does not explain any criteria where the database is needed to be available for the purpose of distinction.

(2) Protection against innocent infringement:

When such registration of traditional variety is made, it affects the rights of the farmer communities who use it for their own purposes. Chances can also be that the farmers may already hold rights over the similar variety in different name and because of this, there can be unknown infringements of breeders rights. Therefore, guidelines are needed to be given for violations of breeders right within the act.

(3) Liberal right should be given to farmers if registration is to be permitted

If registration of a traditional variety is to be permitted in the absence of data of traditional seeds, then customary rights of farmers should be recognized who are using the similar or lower kind of the same variety. Such practice by them should not be recognized as violation of any breeders right, only after considering the facts and circumstances.

Looking at the impact made by the registration of a different version of Navara rice, it can be said that the Protection of Plant Varieties and Farmers Rights Act, 2002 is not able to protect rights of farmers who are using similar or lower version of the same variety. The act needs to recognize that India is country with rich history of agriculture and most of its innovations are not recorded as they are customarily used by the farmers. Different approach is needed to be taken in the case of traditional varieties and such approach has to be made proactively through interactions with the farmers community.

Author: Pranjal Gupta, BA LLB(Hons.), Symbiosis Law School, Pune (V Year), Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com

References:

[1] FAO, 2012.Second Global Plan of Action for Plant Genetic Resources for Food and Agriculture Adopted by the FAO Council, Nov 29 2011, paragraph 18(e).

[2] Vol. 35, No. 11,Sahai, S. (2000). Farmers’ Rights and Food Security.Economic and Political Weekly, (Mar. 11-17, 2000), pp.pp. 878-880.

[3] Carlos M. Correa et al., Plant Variety Protection in Developing Countries: A Tool for Designing a Sui Generis Plant Variety Protection System: An Alternative to UPOV 1991, APBREBES, 2015.

[4] Shaji, K. (2018). Navara lands in IP rights row.The Hindu.(Sep. 8, 2018), https://www.thehindu.com/news/national/kerala/navara-lands-in-ip-rights-row/article24017583.ece.

[5] Balachandran, P. (2015). Navara, the rice that cures.Downtoearth.org.in. (Sep. 9, 2018) https://www.downtoearth.org.in/coverage/navara-the-rice-that-cures-2521.

[6] The Times of India.(2018).Kerala to safeguard IP rights of Navara rice – Times of India.(Sep. 12, 2018, 3:31 PM), https://timesofindia.indiatimes.com/city/thiruvananthapuram/kerala-to-safeguard-ip-rights-of-navara-rice/articleshow/64352264.cms.

[7] Sushma, M. (2018).Navararice controversy: Plant Variety Act doesn’t protect farmers’ interests, say experts.Downtoearth.org.in. (Sep. 11, 2018, 4:40 PM) https://www.downtoearth.org.in/news/navara-rice-controversy-plant-variety-act-does-not-protect-farmers-interests-say-experts-60728.