Monthly Archives: October 2011

“Should there be a single global institution with exclusive competence to conduct international negotiations on intellectual property rights? If so, should this be WIPO, the WTO or some other body?”


For harmonising IPRs at international level, providing common forum for negotiation and resolving disputes between members state we need single global institution. Earlier WIPO was the main forum for international negotiations of IPR and then WTO implemented TRIPs agreement came and become main forum replacing WIPO. Both these institutions working method is different, and also their reason of coming to existence. WIPO came into existence because of voluntary participation of member’s state for protecting IPRs by way of multilateral Paris and Bern Conventions mainly and afterwards other conventions under WIPO. And WTO, if be specific TRIPs came into existence because of failure of WIPO to protect IPRs of developed states in developing countries. This essay will primarily focus on WIPO and WTO, why WIPO failed and WTOs TRIPs survive and why WTO should be single global institution to conduct negotiations on IPR.


WIPO administers two main multilateral treaties which are the Paris Convention for the protection of Industrial Property 1883, and the Bern Convention for the protection of Literary and Artistic Works 1886. Under these Conventions, signatories agreed to provide national treatment for foreigners under domestic law without any discrimination. However these conventions lacked detailed rules on enforcement of rights and binding mechanism to settle disputes between states.  Also these conventions suffered from the reluctance of some countries to become signatories as they thought it’s against their national economic interest, e.g. USA, USSR, China etc. WIPO is like democratic institution; it has always respected interest of each member state and never concluded treaties without ratification of each member state. As time passed by WIPO tried to amend Treaties but because of no consensus between developed members state and developing member state it failed to do so and developed countries remained unhappy with it. The main reason was lack of effective enforcement mechanism so that developed members state cannot enforce IPRs on other member’s state who infringed it.


By the 1980s, the USA had realized that it was a net producer of intellectual property-based goods and, along with EC and Japan, began to advocate for higher levels of IPR protection on a global basis. Frustrated by the difficulties encountered under traditional treaty arrangements of WIPO, the developed countries began to employ tactics that were much more aggressive than WIPO. The Intellectual property Committee (IPC) of USA, with Japan and Europe draft a proposal and presented it to the General Agreement on Tariffs and Trade (GATT) secretariat in 1988. By 1994, IPC achieved its aim in the Agreement on Trade related aspects of Intellectual Property Rights of the Uruguay Round and became the part of World Trade Organisation. Acceptance of TRIPs is the mandatory condition of becoming member of the WTO.


During initial negotiations of Uruguay Round many developing countries, led by India and Brazil, questioned exposure of intellectual property for GATT, emphasising the WIPO as the perfect forum for IPR. They opined that over protection of IPR means impeding transfer of technology and increased cost of pharmaceutical and agrochemical products as the result of patent protection. Negotiating this opposition by way of multilateral discussions was not the actual story but use of threat of bilateral trade sanctions being brought by USA under Special 301 of the Omnibus Trade and Tariff Act of 1988. USA made its first use of Special 301 against India, China and Thailand. The widespread use of Special 301 and carrying out the threat to impose trade sanctions encourage developing countries to accept TRIPs agreement. Ultimately developing countries traded off intellectual property rights against rights in agriculture and/or textiles, and for better dispute settlement procedures and less unilateral action by the USA.


TRIPs recognise basic principles of national treatment (treating one’s own nationals and foreigners equally), and most-favored-nation treatment (equal treatment for nationals of all trading partners in the WTO). TRIPs ensured that adequate standards of protection exist in all member countries including standards employed in WIPO administered Paris and Bern Conventions. WTO has effective enforcement mechanism which deals with domestic procedures and remedies for the enforcement of intellectual property rights. And also Dispute settlement system between WTO Members about the respect of the TRIPS obligations subject to the WTO’s dispute settlement procedures. It also has special transitional arrangements during the period when the new system is being introduced, for developed state 1 year, developing state 5 year and least developed state 11 years. WIPO-WTO Cooperation Agreement, 1995 suggests mutually supportive relation between WIPO and WTO.  All these ensures that the WTO implemented TRIPS got edge over traditional WIPO so  there is no doubt that WTO should emerged as a single global institution for IPR.


Intellectual property evolved in developed countries as a social and economic need, they have different level of IPR protection while developing and now they are fully developed and needed higher level of IPR protection than ever, same thing is happening with developing and least developing countries they need different level of IPR protection than developed countries and not forcing of IPRs contrasting to their economical and social needs.  Striking balance between developed and developing countries interest is the gist of successful global institution. WIPO failed to do that, WTO managed to balance these two contrasting interests by various measures till now effectively sometimes by diplomatically sometimes by “carrot and Stick approach”, therefore WTO should be a single global institution with exclusive competence to conduct international negotiations on IPR.

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached:



AK 47 needs Copyright to fire?

Who would imagine that AK 47 might need copyright protection? Yes!! You Read it right!! None other than Mikhail Kalashnikov, the inventor of the AK-47 rifle had threatened India for a copyright violation. Story goes way back in 2000 when, an Indian ordnance factory had developed a replica of the AK-47, and put it on display at a defence expo in New Delhi. The weapon caught the eye of the original designer, Kalashnikov himself. He objected and threatened to file a copyright violation case against the government, forcing plans for an Indian AK-47 to be put on hold. Recently, the news came out that India has developed a Desi version of AK-47 by tweaking the technology to ensure no question of copyright violation arises. In layman’s terms, the mechanism which performs one of the key functions during the firing action will undergo a tilting movement as against rotation in the original AK-47. While reading this news I could only think of as IP lover on what basis Mikhail Kalashnikov is claiming copyright on AK-47? And also while seeking for this answer I came up with the conclusion that India should have at least thought of getting a copyright expert’s opinion rather going for circumventing technology of original AK-47. This blog will answer at least the main issue i.e. Is Mikhail Kalashnikov really owns copyright in AK-47?

In order for a creation to be protected by copyright it must fall within one of the following categories of work: (1) literary works, (2) dramatic works, (3) musical works, (4) artistic works, (5) films, (6) sound recording. The only thinkable option to the Mr. AK-47 is to claim copyright as an artistic work. Still mind boggling question remains, does making of deadliest death machine AK-47 an artistic work? The Copyright Act states that “artistic work” means a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; work of architecture; and any other work of artistic craftsmanship. Under the Act, a copyright owner has wide ranging powers and privileges including the basic rights to reproduce their works in any material forms including reproduction in different dimensions i.e. the reproduction of two dimensional drawings into three dimensional products.

So it’s crystal clear that Mr. Ak-47 might have chance of claiming copyright, in the drawings of making of AK-47 or claiming the work as artistic craftsmanship. Thus, it would be case of Mr. Mikhail Kalashnikov that the copyright in the artistic work in the drawings of which the AK-47 is a 3-dimensional representation, vests with him and his artistic work is subject matter of copyright protection in India by virtue of India’s membership to the Berne Convention and the Universal Copyright Convention as also the International Copyright Order, 1991. So the act of making a replica of AK-47 without his permission and placing it for exhibition, infringes its copyright.

So the question again comes that whether such drawings to make AK-47 is artistic work. It is my contention that such drawings are not artistic work at all and it’s not subject matter of copyright but design or patent. Also Ak-47 has been invented or designed in 1949 and even though it’s registered under designs act or under patents act its term of protection under both is expired and technology falls under public domain and becomes part of prior art. The fact is that Mr. Ak-47 had not claim any patent and design on Ak-47 anywhere in the world.

It is submitted that in terms of Section 15(2) of the Copyright Act the copyright in any design which is capable of being so registered but has not been registered ceases as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the copyright owner or with his licence. This number 50 is outclassed by mere the age of first Ak-47 as this weapon has been in the use since 1949. The industrial application of such design to such a large number of Ak-47 brings Section 15(2) of the Act into operation and causes the copyright, if any, in the designs to cease and the Mr. Ak-47 forfeit his rights, if any, as the subject matter falls into public domain and any other person is entitled to use or utilize such design/features without restriction.

On the other hand, the Designs Act, 2000 does not protect any trade mark …or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957. So only hope for Mr. Ak-47 is that he has to show his work is artistic work and nothing but an artistic work under the Copyright Act.

Let’s go through case laws available on the issue since the subject matter of artistic copyright and design monopoly involves an overlapping subject matter of protection, the law in India has sought to create a mutually exclusive divide between artistic copyright and design.

In Samsonite Corporation vs. Vijay Sales and Anr. (FSR (2000) 463) a new range of suitcases introduced by the Plaintiff as an improved version of its earlier range of suitcases, it did not obtain any design protection for its new range. The Defendants introduced same range of suitcases. The Plaintiff objected to the Defendants’ suitcase on the ground that it was a look alike copy of its suitcases. Claiming copyright in drawings, the Plaintiff complained of copyright infringement on the premise that the Defendants’ suitcase range was an unauthorized three dimensional reproduction of the Plaintiff’s artistic copyright in the drawings in question.

Accepting the defence and declining interlocutory relief, the High Court of Delhi held that “The drawings simplicitor are not of any use to the plaintiffs. They are only instructions or ideas to give shape to an article to be manufactured. Therefore, they are designs capable of being registered.” “I am not able to accept this contention because whatever be the nature of the drawing the purpose and intention would be the relevant criterion to consider whether the drawings are designs in the light of the provisions of the Designs Act and the Copyright Act, 1957. No argument was advanced on behalf of the plaintiffs that the ultimate purpose of the drawing was not for the purpose of manufacture but the drawings were made for keeping the artistic quality of the drawings. The distinction between the drawing for artistic purpose and manufacturing is ignored by the plaintiffs. The main thrust of the argument of the plaintiffs was that the suit-cases manufactured by the plaintiffs would easily attract any person because it has got a powerful and attractive shape which would immediately attract the eye. Therefore, the whole purpose of the manufacture was to attract the eyes of customers. Therefore, it would follow from the argument on behalf of the plaintiffs that it is clearly a design coming within the meaning of the definition of design, under the Designs Act, 1911 and coming within the meaning of section 15 of the Copyright Act, 1957. Consequently, the plaintiffs cannot claim any copyright as the same had not been registered. The fact that it is being manufactured industrially is not in dispute… the plaintiffs had not registered the designs the plaintiffs cannot claim any protection under the Copyright Act, 1957 with reference to the drawings.”

The rationale and legislative intent came up for consideration before the High Court of Delhi in Microfibres Inc. vs. Girdhar & Co., & Anr., Finding merit in the defence, the High Court of Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff to qualify as an “artistic works”, it must fall within the definition of sub section (c) of Section 2 of the Copyright Act. A reading of the said provisions would show that attempt of the Plaintiff can only be to bring it within the concept of “painting.” The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place. Such configuration is of the motifs and designs which by themselves would not be original…What cannot be lost sight of is the very object with which such arrangements or works had been made. The object is to put them to industrial use. An industrial process has to be done to apply the work or configuration to the textile. It is not something which has to be framed and put on the wall or would have any utility by itself. The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art. In fact, it has no independent existence of itself.….Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation. Thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the life time of the author / creator + 60 years. This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act, the period is much lesser. In the present case, the configuration was made only with the object of putting it to industrial /commercial use.” In view of the above findings, the High Court of Delhi dismissed the suit.

Therefore, finally we can say with reference to above authorities that AK-47 was not made keeping in mind that it’s an artistic work. The sole intention of Mr. Mikhail Kalashnikov in 1949 has to be to make a deadliest automatic weapon and he had succeeded in it and not for any artistic purpose. Also, weapons are made for wars and other operations for intention of killing enemies and not for enjoyment like any other art forms. Also, the rationale behind the Copyright is to encourage authors of various artistic works and to protect their work. The same rationale if applied to AK-47 it would be idiotic and illogical. It is pertinent to note that Copyright protects “expression” of an idea and not an “idea” by itself. In fact, when idea and expression become inseparable, copyright is not granted since protection of latter will lead to monopoly over the former and our case is exactly the same. Mr. Mikhail Kalashnikov was claiming copyright because he has no other option as doors of patent and design protection were already closed far years ago. Anyway, if India had stick with the replica of AK-47 and Mr. Mikhail Kalashnikov had sued India for that, we would have witnessed a great case and would have got the answer from none other than court of law with a really furious judgment.

(NOTE: The intention of writing this blog is to find answer of the above issue and enjoyment to an IP lover and not to offend anyone nor does this article encourages manufacturing of other replica products falling under the same circumstances or facts)

About the Author: Mr. Vinayak Aher, Trade Mark Attorney in Khurana & Khurana and can be reached:



Recent Change in America Invents Act

Congress passed the America Invents Act that makes major changes to the existing U.S. patent system.  President Obama signed the Act into law on September 16, 2011.  What does this mean for Indian Inventors and Research corporates who already filed Patents already or want to get a new patent file in US?

The first impact is that the cost of filing patent application is being increased and the U.S. Patent and Trademark Office (USPTO) fees will increase by 15% in accordance with an interim fee schedule.

Benefits for Small scale Industries/Individual Inventors:

Well Congress, may be of political pressure, left this part of section untouched. If you qualify as a “small entity” (small business, independent inventor or nonprofit organization), your fees continue to be reduced 50%.

New Entry – Micro Entity

Additionally, Congress created a new “micro entity” option that gives the inventors a 75% reduction in fees if he qualifies according to the new act.  To qualify as a “micro entity”, one has to: (1) be a “small entity”; not be a named inventor on more than 4 previously filed US utility applications; his/her gross income is 3 times or less than the Census Bureau reported median household income for the preceding calendar year (currently $50,022); and he/she have not assigned or licensed his/her invention to a non-micro entity; or (2) earn the majority of his/her income from an institution of higher learning or assigned or license his/her invention to an institution of higher learning.

First to file – Now in US

Starting April 2013, the U.S. will be awarding patents to the first inventor to file the application at the USPTO.  It will no longer matter if he/she were the first to think of and make the invention before a second inventor who invents the same or substantially similar invention.  He/she will not get the patent if his/her patent application is filed second.  There is one exception.  If he/she can show the USPTO that the inventor of the first filed application derived that invention from him/her or one of his/her co-inventors in a newly created derivation proceeding, then the patent should be awarded to him/her.  The USPTO will be issuing rules about derivation proceedings in the coming months.

One Year Grace Period – Do’s and Don’ts

As per the existing system, Inventors had a grace period of one year to file the patent application in the U.S. from the date he/she or any other party disclosed the invention to the public, provided he/she will be able to show the USPTO that he/she conceived of the invention before that publication.  As per the new rules, from April 2013, even that one year grace period only applies if he/she is the one who disclosed the information.  If a third party discloses the invention at any time before he/she files his/her application, then he/she will not get a patent.

Advantage – Third Party

There are three levels where a third party can attack your Patent Application/Granted Patent.

Level 1: Implementation of Peer to Patent Ideas

Peer to patent is a new idea revolutionized in Australia, US and in UK patent offices, where any public party can examine the published applications to cite a prior art in order to help the examiner and express speed up the prosecution time of patent applications. Although, it was a pilot project, now the congress wants it to implement on a Real time basis. This means, from Sep 2012, any third party can submit prior art to any patent application in prosecution stage for consideration by the patent examiner before issuance of a first rejection of one or more of the claims.

Level 2: Post grant Opposition

Any third party can challenge patent in a new post-grant review proceeding at the USPTO. But, they must file the petition within 9 months from the date of the patent is granted.  If the USPTO accepts the petition to institute the post-grant review, then the USPTO must make a decision on the challenge within one year of the request.  This new post-grant review starts one year from the date of enactment (September 2012), but can only be filed against patents with an effective filing date on or after a date that is 18 months after enactment, i.e., on or after April 2013.

Level 3: Inter Parte Examination – Any time

A third party could challenge the validity of granted patent through an inter partes review regardless of when it was issued.  The inter partes review is replacing inter partes reexamination one year after enactment (September 2012).  No longer will the alleged basis of unpatentability have to be “new,” i.e., not previously considered by the USPTO.  The earliest that a petition for inter partes review can be filed is 9 months after the date of grant of your patent, or if a post-grant review is filed, then after the post-grant review is completed.  If the USPTO accepts the petition to institute the inter partes review, then the USPTO must make a decision on the challenge within one year of the request.

Patent Marking: Restrictions to Private Parties that can sue Patent Owner:

In recent years, many lawsuits have been filed exploiting provisions in the patent marking law that permit private plaintiffs to sue a patent owner whose patent markings on his product are claimed to be false and be given one half of the civil penalties awarded by the court.  For example, if a particular patent had expired but was still mentioned in patent markings on a product, the patent owner could be sued for false marking.  Effective immediately upon the date of enactment, marking a product with a patent number that covered the product but that has since expired will not give rise to liability for false marking.  Importantly, only the US government will be able to sue for civil penalties.  The only private parties who can sue for damages for false marking are those who can show they suffered competitive injury as a result of the false marking.  The false marking provisions of the America Invents Act will apply to all cases pending on the date of enactment, as well as to cases begun on or after the date of enactment, which will likely result in the dismissal of many private plaintiff lawsuits.

Key Takeaways:

Recent Change in America Invents Act can do both good and bad to the Inventors and R&D corporates. Understanding the act and to quickly catch up with the new act is the best way to lead in this IP race.

About the Author: Mr. Veera Raghavan, Patent Specialist at IIPRD and can be reached at:

Patent laws on Genes and Gene Sequences

Advancement in science and genetic application, with enhanced knowledge of Human Genome has been the main focus in the field of medicine and biotechnology areas. Continuous and ongoing researches in genome project, identifying specific target genes and their respective response and functional activities, have evolved genetic therapeutics in treatment of multifactor disorders such as heart disease, diabetic, neurological disorders, muscular dystrophy and so and so forth.

Gene patents have been the most debated matter since years. The economic and policy issues surrounding patents on genes, gene sequences, nucleotide sequences, expressed sequence tags (ESTs), single nucleotide polymorphism (SNPs) have posed the potency  to present unique challenges in science, innovations and legal fraternity around the  globe.

Patent Issues regarding Gene Patents:

A number of gene/DNA sequence patents grew dramatically during the Human Genome project. Researchers have obtained patents for isolating genes or gene sequences that occur in nature. Whether this should be permitted or not is still an open debate since decades.

Generally to seek a patent-protected gene, there are certain issues that a researcher comes across.

(1) Stop or avoid researching the particular gene;

(2) License the rights to research the gene from the patent holder; or

(3) Continue research regardless of legal liability.

Indeed, the choice made is often dependent on the DNA sequence in question and the line of research pursued. Regardless, the exercise of any of these three options could potentially work to reduce fundamental R&D in human genetics.

Considering an instance of gene patent invalidation of Myriad Genetics by US federal court. The American Association of Pathologists and others have challenged several patents relating to the breast cancer genes BRCA1 and BRAC2 held by Myriad Genetics and the University of Utah Research Foundation. BRCA1 and BRCA2 genes are associated with an increased risk of breast and ovarian cancer. The patent claimed products of nature, law of nature and naturally occurring phenomena. The US district court for the Southern District of New York upon decision by Judge Robert Sweet, invalidated Myriad’s patents. The decision that isolated but otherwise unaltered DNA should not be patentable is now being appealed by Myriad.

The US Government stated that:

“The fact that a particular segment of the human genome codes for the BRCA1 protein in a human cell, for example, rather than for adrenaline or insulin or nothing at all, is not within the power of science to alter. Such basic natural relationships may not be the subject of a patent.” (Case 1:09-cv-04515-RWS)

Secondly, it is been argued that Myriad patents and it being the sole provider of BRCA1/2 testing has highly hindered cancer patients to receive cancer genetic testing. It is impeded that genes are the natural heritage of animals and/or human and its use should not be restricted by patent protection.

Indian Patent Laws on genes:

India, like other major countries have immensely involved in various biotech and medical research area, being one of the topmost competitor in commercial market in biological therapeutic and diagnostic domains globally

Section 3(c) of Indian Patent Act, states that “mere discovery of scientific principle or the formulation or the discovery of any living/non living substance occurring in nature” is not considered to be an invention. Pertaining to this law, mere isolation of naturally occurring genes from animal or plant body cannot be patentable.

Accordingly, section 3 (i) define diagnostic methods is not patentable. Further, it explains that in vivo diagnostic methods practiced on human/animal body cannot be patentable but if diagnosis is performed in vitro i.e. on tissue or fluids that have been removed from body are entitled to be patentable in light of inventive measures. Hence, diagnostic methods employing DNA primers or probes or the like that are different from naturally occurring genes/DNA sequences that exhibits modified functions  would be considered as patentable inventions.  Considering Bilski (30 S.Ct. at 3225), new and useful methods of identifying, isolating, or using genes or genetic information may be patented (prohibiting patenting abstract ideas), that are basically man-made transformation or manipulation of the raw materials of the genome, such as cDNAs.

Section 3(j) “plant and animals as whole, seeds and species which involve in its propagation or biological processes are not considered to be patentable”. In addition to this section 3(j) also states that apart from naturally occurring embodies, living entities of artificial origin such as transgenic plants and animals and/or parts thereof are not patentable. Microorganisms are construed to be patentable under section 3 (j). However, section 3(j) and section (c) when combined, states that isolated microorganisms from naturally occurring bodies are not construed to be patentable. Nevertheless, artificially developed genetically engineered microorganisms, vaccines and recombinant DNA are all considered to be patentable.  For instance , as seen in the case law of  Diamond v. Chakrabarty, 447 U.S. 303 (1980), ruled that “anything under the sun that is made by man” is patentable. The Supreme Court established that the man-made products of genetic engineering are eligible for patent protection under 35 U.S.C. § 101. The Patent and Trademark Office responded to Chakrabarty by granting patents on a wide range of engineered DNA molecules and useful genetic methods.

The basic fact about genes/gene products being patentable is that when a genetically engineered gene/DNA/amino acid sequence is novel and holds an inventive step thereby ensuring its industrial application, the patents can be claimed as:

  • Gene sequence/amino acid sequence.
  • A method of expressing the above sequence.
  • An antibody against that sequence/protein.
  • A kit made from the antibody/sequence.

In a more brief sense, it should be noted that rDNA, plasmids and process of forming the same are allowed to be patentable under substantive inventive steps employed. Further, unidentified functions of gene/DNA sequences and without any industrial application cannot be construed to be patentable.

One such example of gene patents in India, as seen in Indian Patent No. 243373 (279/MUM/2004) assigned to Sichuan Biotechnology Research Center, discloses artificial gene sequence for encoding recombinant super compound interferon with enhanced activity. The independent claim of the patent states:

  1. A method for producing a recombinant interferon for inhibiting HBV-DNA replication as well as secretion of HBsAgs and HBeAg comprising steps of;
    1. Synthesizing and interferon DNA having a sequence as depicted in Fig.1 or 2 designed according to the codon usage;
    2. Placing said interferon DNA in an appropriate host preferably E.Coli and;
    3. Expressing said recombinant interferon in said host having an amino acid sequence encoded by interferon DNA shown in said Fig.1 or 2.

Wherein Fig 1 or 2 is a gene sequence of interferon DNA. (see Patent)

Again looking into Biocon’s story on genes, Using patent information as an integral tool, Biocon determined are as on which the company’s R&D should focus on.One such example is how the company used patent information to gain initial access to the field of human insulin production, where it is now a major player. The product patent on human insulin had long expired, but it was still protected by strong patents on processes of production.

Key take aways:

In most prosecution cases, it is been observed that the examiner objects claims directed towards isolated DNA/gene sequences in context to section 3 (c). Such objections can be dealt sating that the applicant’s/individuals claimed isolated DNA/gene sequence is purely recombinant and in modified form and its functions are not identical to that occurring naturally. But nevertheless, there are certain granted patent claims where isolated DNA/gene sequences are not substantially different from that occurring in nature. Such claims have been granted based on the previous precedence of such issued claims.

About the Author: Ms. Minusmita Ray, a Senior Patent Consultant in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: