Monthly Archives: June 2015

Semiconductor Integrated Circuit Layout Design (SICLD)…… Unused Potential IP

When we indulge in conversations related to Intellectual Property, what typically comes to our mind are Patents or Trade Marks or Copyrights or maybe Geographical Indication (GI). Other Intellectual Property Protection Acts such as Industrial Designs and Semiconductor Integrated Circuits Layout Design Act (“SICLD” hereinafter) rarely attract our attention, hardly discussed and to utter surprise of all, being zero practiced so far.

Integrated circuits (ICs) form an integral part of every electronics device. To generate a desired output from a given input, electric signal has to pass through hundreds or even thousands of electrical/electronic components. A lay out is created to arrange these components in smallest possible area meeting the circuit requirement to gain some specific electrical output. With introduction of technologies such as very large scale integration (VLSI), and ultra large scale integration (ULSI), these circuits are getting further miniaturized day by day. To reduce power consumption and to enhance processing speed, new layouts designs are rolled out frequently, thanks to continuous research in the field.

An integrated circuit is an arrangement/pattern of transistors and other circuit elements on a semiconductor chip in accordance with a circuit that provides a logical electrical output. SICLD was introduced to protect layout of said unique arrangements of electrical components. Under this act “Layout-Design”, which essentially is the mask layout or floor planning of the integrated circuits, can be registered and protected.Information such as a procedure, process, system, program,and method of operation among others are exempted from protection.

India heavily depends on semiconductors imports to meet industry needs. Until last decade, 80-90% of semiconductors were imported from countries such as China, Japan, Korea among others. With initiatives like “Make in India”, “Digital India” and other efforts by newly formed government, promotion of local semiconductor manufacturing is logical. If statistics are to be believed, it is quite interesting to note that semiconductor import has come down to 65-70% during fiscal year 2014-15. According to Mr. Ashok Chandak, chairman of Indian electronics and semiconductor association (IESA), import may further come down to 50% during current fiscal year itself.

Prime Minister’s recent business tours, to countries such as China, Korea, Japan among others that are world’s leading semiconductor producers has attracted investment worth billions to India. With increase in number of companies that are willing to invest and setup their manufacturing units in India, semiconductor industry is going to see “Acche Din”.

Despite ever increasing research in electronics and semiconductors industry, it is hard to swallow the truth that there is little or zero awareness of SICLD. The fact is that the Indian SICLD Registry is still looking for first applicant to file an application. It is indeed depressing to see that the official gazette published by SICLD registry says “No Application Received” month after month, ever since it was first introduced.

With revival of semiconductor manufacturing in India, it is high time the SICLD registry also gets revived and makes way for “Acche Din” for itself. The registry with support of renowned law houses, can ensure something fabulous to attract layout design applications. Creating awareness through conferences, workshops, seminars and webinars can simply do wonders. Layout designs hold some unused and unturned potential.Who knows it may turn out to be best bet among all the intellectual properties during years to come.

About the Author: Lalit Suryavansi, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: lalit@khuranaandkhurana.com

Advocates as Patent Agents

In a landmark (and in a way divisive) judgment, Justice S. Tamilvanan of the Madras High Court, on 15th March 2013, allowed the writ petition filed by Mr. S.P. Chockalingam (W.P.No.8472 of 2006) and declared the amendments introduced to Section 126 of the Patents Act 1970, by Section 67 (a) of the Patents (Amendment) Act, 2005 (Act 15 of 2005) as illegal, unconstitutional, ultra vires, void and unenforceable. Thereby restoring the status quo on the patent agent qualification under the Indian Patent Act, 1970 as was in existence before the Patents (Amendment) Act of 2005.

Now in order to comprehend the impact of the Madras High Court judgment and to know as to why this judgment is important, we need to get into the genesis of Section 126 and the legislative history of its amendments.

The original 1970 draft of Section 126 clearly said that Citizens (and not Advocates), who are Indians, over the age of 21 and had a ‘degree from any university’ in India could be registered as Patent Agents provided they clear the qualification exam conducted by DIPP. And as far as Advocates, those enrolled with the Bar Council had the prospect of getting registered and practice as a Patent Agent.

The 2002 Patent (Amendment) Act brought with it a slight change in Section 126, changing the words ‘degree from any university’ to ‘degree in science, technology or engineering’ and other than that everything else remained the same as the original 1970 version.

And then came the 2005 Patent (Amendment) Act, which in the course of amending Section 67(a), deleted Section 126 (1)(c)(i), due to which the Advocates with Science and Engineering backgrounds also, now no longer had the liberty as a ‘matter of right’ to be qualified directly as Patent Agents. Instead they were now required to clear the qualifying examination just as other citizens had to.

Pained by the amendments (though I am not completely sure whether the anguish was for the amendment of 2005, or for both 2002 and 2005 amendments!), Advocate Chockalingam in 2006, filed a Writ Petition under Article 226 of the Constitution before the Madras High Court in quest of a writ declaring the deletion of the amendment of 2005. What the petitioner contended was that the amendment of 2005 which omitted ‘advocates’ from Section 126’s domain was unconstitutional with reference to Section 30 of the Advocates Act, read with Articles 14, 19(1)(g), and 21 of the Constitution of India. It was also very correctly pointed out by the Petitioner that when the Patents Act does not provide any qualifications for being an inventor, then how is it that there could be a qualification for an inventor’s inscribe.  The present system meant that, where in one hand Advocates are allowed to argue Patent Matters, on the other hand they cannot file patents for his/her clients. Thus proving his point that there was no application of mind while omitting the word ‘advocates’ from Section 126.

The Judge, after listening to the contentions of the Petitioner, met the ends of justice by finding it equitable to allow the writ petition and declare that the impugned amendment as illegal, unconstitutional, ultra vires, void and unenforceable.

Now there are certain humble observations that I would like to make, which tells me that this decision passed by the Madras High Court is actually not completely correct.

I identify with the point that asking Advocates with Science backgrounds to clear qualifying examination to be registered as a Patents Agent is unfair towards them, when other citizens with just the Science background can go ahead and get registered as Patent Agents by clearing the same qualification exam. But the fact of the matter is that Patents being a field very different from other fields of law, makes it hard for ‘social engineers’ to file Specifications (complete or provisional) as explained in the Patents Act. A registered Patent Agent, in this case being a ‘social engineer’ with no knowledge of how to file a Specification (and trust me when I opine this that an ordinary case draft filed by an Advocate which he is taught during his LLB or BL degrees is poles apart and much less complex if compared to a Patent Specification explained in the Patents Act) will eventually prove to be a grave matter of concern to an inventor who will probably have to lose out on his hard worked and hard thought invention, just because now according to the Madras High Court every ‘social engineer’ who has a Science Background, has with him/her, “as a matter of right” the liberty to file a Specification.

Also in addition to the above point, what is observed by me is the fact that from a bare reading of the judgment, it can also be concluded that the Madras High Court even wanted to hold Section 53 of the 2002 (Amendment) Act as unconstitutional, but perhaps failed just because there was no challenge made for the said provision by the Petitioner.

And now after several months have passed since the Judgment by Honorable Madras High Court, the IPO has neither Implemented the decision nor has it Appealed against it. And on the other hand, there are several Advocates who are getting inquisitive to know as to how they can get registered as Patent Agents. Meanwhile, the only development regarding the case being an RTI filed by Mr. S. Venkatesh to the IPO, to which he was given the reply by IPO that the decision has been appealed for and since it is pending, nothing can yet be operationalized. This comes at a time when Advocates around the nation are wondering as to how they would be getting a ‘Patent Agent Number’ for themselves and as to why there is no information regarding the appeal filed by IPO (no information is coming from the Petitioner either regarding receiving of appeal papers!). Whoever is pursuing this matter and is contacting IPO for the same is being given the similar reply as was given to Mr. S. Venkatesh.

So basically as things stand today, Advocates with science backgrounds can automatically get registered as a Patent Agent. And the sheer absurdity in it being that they don’t even need to know how a Patent Specification is filed! But given the fact that the Respondents in the case are Controller of Patents and Union of India, the Petitioner can soon expect an appeal (actually it is just not the Petitioner who is expecting, but several other ‘curious’ Advocates too!) since it would highly be unlikely of the Respondents to let go of the monopoly they had been enjoying for such a long period of time!

About the Author: Mr. ABIN SAM, interns at Khurana and Khurana, Advocates and IP Attorneys.

NPDC Supplementary Details

Patents are a major area of business proficiency nowadays and recently in India too, it has become as important as marketing, finance, corporate governance, and manufacturing economics. India’s growing R&D operations have taken a beating due to lack of in-house professionals to file patents applications. Even then, the numbers clearly indicate that there is a great deal of patenting activity going on among companies across India. Patent Specification, besides being the most important document in the entire patent registration procedure, is also considered to be one of the most complex Techno-Legal documents. Drafting of Patent Specification is a device of great importance and thus should not be left to a layman to design it. It is extremely important to use carefully selected language to describe an invention to satisfy requirements both in legal terms as well as in technical terms. Selection of the right words may prove tricky when the draft-person is an amateur. Unclear and indefinite languages used in the specification are always likely to draw competitors, or any person concerned to invalidate or oppose the patent or the patent application. And not only is the language significant, satisfying the requirements of patentability is equally vital.

And here is exactly where the National Patent Drafting Competition (NPDC) plays a crucial role in bringing greater awareness and respect for Patents in a coveted and competitive way. NPDC through its nationwide reach will aim to promote development of Patent Drafting as a Skill Set, encouraging more and more technical people to take up Patent Drafting as a Professional Competency and also identifying and honoring Top Patent Drafters in the Country. This initiative of NPDC comes with an earnest effort by IIPRD, its associates, leading sister Law Firm, Khurana & Khurana IP and Attorneys (K&K) and Sughrue Mion. Other partners serving us in this endeavour are TIFAC, PAAI, Spicy IP, IBLJ and Lex Witness.

NPDC commences on 1st of September 2015, when IIPRD and K&K will put forth on their respective websites (www.iiprd.com and www.khuranaandkhurana.com) three invention disclosures, one each in three different domains (Electronics/ Hi-Tech, Mechanical and Chemistry/Pharmaceuticals). The NPDC will be active till 20th September 2015, within which timeframe, Eligible Participants would need to write Complete Patent Specifications (along with Drawings, if applicable) which complies with the Indian Patent Act. Please note that one participant can file only one Patent Specification which will be one domain of his choice.

Complete details of the modus-operandi of the Competition can also be seen here.

Any Practitioner having a Technical/Science Background is eligible to participate in the Competition. So for instance, the Participant could be a student, a practicing Attorney, an in-house counsel, a scientist, a faculty, or any other stakeholder having a technical qualification.

In order to make sure only serious participants submit their Specifications, a Participation Fees of Rs. 1000/- is to be submitted by each Participant, which can either be paid by means of Bank Transfer (Bank Name: IIPRD, Account No. 19620210002476, UCO Bank, Greater Noida Branch, IFSC Code: UCBA0001962) or through Cheque/DD in favor of “IIPRD”. The Draft should reach IIPRD’s Office (E-13, UPSIDC Site IV, Behind Grand Venice, Greater Noida, 201310) by 20th September 2015. Each fee submission must be accompanied with the correct Name, Address, and Contact Details of the Participant so that Participation Certificate can be sent at the given Address to Each Participant.

Drafted Patent Specifications can either be sent to competition@iiprd.com or can be sent in Hard Copy to Physical Office of IIPRD, which is at “E-13, UPSIDC Site IV, Behind Grand Venice, Greater Noida”. In either of the ways, the Patent Specification Draft must be received by IIPRD on or before 20th September 2015.

Evaluation of the Drafts would be done collectively by representatives from each International Law Firm and Khurana & Khurana, IP Attorneys, coordinated by IIPRD. Their collective decision on selection of the Winners will stand final and shall not be open to change in any manner. The Winners will be decided based on a combination of numerous factors (such as flow of the Specification, Scope covered through embodiments, Claim drafting strategy and Accurary of technical coverage).

Two Winners shall be announced from each Domain (a total of 6 Winners) on 25th September 2015, through the websites of IIPRD, K&K, and its affiliates/associate. Prize Distribution Ceremony shall take place on 8th October 2015, at the Hotel Hilton, Mumbai at 1700hrs during the Annual International Pharmaceutical/Biotech Symposium organised by IIPRD. The First Winner for each technology domain would be given a Cash Prize of Rs. One Lakh Only (Rs.100000/) and the Second Winner,a Cash Prize of Rs. Fifty Thousand Only (Rs. 50000/-). All Winners will also get a chance to attend the Symposium as Honoured Guests and will also be awarded suitable Certificates. The travel cost and stay however, shall be borne by the Winners personally. If in any case the Winners are not able to come over for the Conference and Prize Distribution Ceremony, the Winners’ Amount shall alternatively be credited to their respective Accounts.

For any of your query/question, please feel free to write to competition@iiprd.com, and/or call 0120-4296878/2342010 and speak with Ms. Meenakshi Khurana.

About the Author: Mr. ABIN SAM, interns at Khurana and Khurana, Advocates and IP Attorneys.