Monthly Archives: March 2016

IP Workshop held at ITS Engineering College, Greater Noida

IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 12th of March, 2016 at “ITS Engineering College”, Greater Noida. Hereinbelow are the snapshots of activities conducted at the workshop –

As a part of our ongoing Educational and Awareness Programme on IPR, IIPRD takes pride to have successfully conducted yet another Symposium on IPR – “Intellectual Property Leveraging and Management” at ITS Engineering College, Greater Noida. The objective was to sensitize the faculty members and attendees across all verticals towards growing need of effectively leveraging Intellectual Properties.

The presentation was given by Mr. Tarun Khurana, a Co-Founder and Partner in IIPRD – an Intellectual Property Consulting and Commercialization/Licensing Firm. Mr. Gyanveer Singh, Head of IT Practise Group, IIPRD shared the dais with him. The Workshop covered the broad areas of Intellectual Property Rights with special emphasis on Patents and related matters. Mr. Gyanveer Singh shared knowledge on basics of the Intellectual Property Rights, aspects of conducting prior-art searches and preparation of patent applications. Mr. Tarun Khurana shared knowhow on various facets of IP protection and enforcement strategies discussing several case laws and case studies.

This distinctive symposium platform contributed further in the area of IP knowledge dissemination with broad coverage on mandate of each IPR, their protection in India and worldwide, IP commercialization, valuation and infringement analysis.

https://www.linkedin.com/pulse/one-day-symposium-intellectual-property-rights-ipr-leveraging-singh

IP Workshop held at Our Corporate Office – Greater Noida

IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 15th of January, 2016 at Our Corporate Office, Greater Noida. Hereinbelow are the snapshots of activities conducted at the workshop –

As a part of our ongoing Educational and Awareness Programme on IPR, IIPRD takes pride to have successfully conducted yet another Programme on IPR – “IP Leveraging and Management” at our Corporate Office, Greater Noida. The objective was to sensitize the Industrialists, Scientists, Educationalists and other attendees towards growing need of effectively leveraging Intellectual Properties.

IP practitioners working in law firms as well as IP departments of innovation based companies and representatives of some premium academic institutions and industries attended the workshop. The Participants represented organisations viz. Fiserv, Global Logic India Ltd., Info Edge (India) Ltd., CSIR- HQ- Delhi, Vee Excel Drugs and Pharmaceuticals (P) Ltd, to name a few.

The keynote address and presentation were rendered by Mr. Vinod Khurana, Founder of IIPRD and Khurana and Khurana, advocates and IP Attorneys, and Mr. Tarun Khurana, a Co-Founder and Partner in IIPRD – an Intellectual Property Consulting and Commercialization/Licensing Firm. Both the IP specialists shared knowhow on various facets of IP protection and enforcement strategies discussing several case laws and case studies. They illuminated ways to the audience on how IP can be effectively Protected, Managed, and Commercialized.

The Workshop covered the broad areas of Intellectual Property Rights with special emphasis on Patents & Trademarks. It presented an opportunity for academicians, practitioners and consultants to exchange ideas and explore emerging issues on IP Leveraging and Management.

IP Workshop held at Hotel Hilton – Jaipur

IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 8th of February, 2016 at “Hotel Hilton”, Jaipur. Hereinbelow are the snapshots of activities conducted at the workshop –

As a part of our ongoing Educational and Awareness Programme on IPR, IIPRD takes pride to have successfully completed yet another Programme on IPR – “IP Leveraging and Management” at Hotel Hilton, Jaipur. The objective was to sensitize the Industrialists, Scientists, Educationalists and other attendees towards growing need of effectively leveraging Intellectual Properties.

The Participants include IP practitioners working in law firms as well as IP departments of innovation based companies and representatives of some premium academic institutions and industries. Representatives from IIS University, University Of Rajasthan, IIHMR, Jaipur National University, S K N Agriculture University, Manipal University, Polycon, Awakey, Head Start, S P Biotech, Avis Life Pharma, Rajasthan Patrika, Ayumed Pharma, Startup Labs, Dhewa  Biotech (P) Ltd were a few participants amongst others.

The keynote address and presentation were given by Mr. Vinod Khurana, Founder of IIPRD and Khurana and Khurana, advocates and IP Attorneys, and Mr. Tarun Khurana, a Co-Founder and Partner in IIPRD – an Intellectual Property Consulting and Commercialization/Licensing Firm. Both the IP specialists shared know how on various facets of IP protection and enforcement strategies discussing several case laws and case studies. They illuminated ways to the audience of how IP can be effectively Protected, Managed, and Commercialized.

The Workshop covered the broad areas of Intellectual Property Rights with special emphasis on Patents & Trademarks. It presented an opportunity for academicians, practitioners, consultants and students to exchange ideas and explore emerging issues on IP Leveraging and Management.

IP Workshop held at Courtyard By Marriott, Bhopal

IIPRD in association with Khurana and Khurana, Advocates and IP attorneys has recently conducted an IP Workshop on 30th of November, 2015 at “Courtyard By Marriott”, Bhopal. Hereinbelow are the snapshots of activities conducted at the workshop –

As a part of our ongoing Educational and Awareness Programme on IPR, IIPRD takes pride to have successfully concluded yet another Conference on IPR – “IP Leveraging and Management” at Courtyard By Marriott, Bhopal. The objective was to sensitize the Industrialists, Scientists, Educationalists and attendees towards growing need of effectively leveraging Intellectual Properties.

The Participants included IP practitioners working in law firms as well as IP departments of innovation based companies and representatives of some premium academic institutions and industries. Tesla Transformers Ltd, 3B BlackBio Biotech India Ltd, Senior Scientists from ICAR, Research Fellows from IIT-Indore, Central Institute of Agricultural Engineering, HEG and Members of Association of All Industries, Manipur amongst others.

The keynote address and presentation were rendered by Mr. Tarun Khurana, a Co-Founder and Partner in IIPRD – an Intellectual Property Consulting and Commercialization/Licensing Firm. Mr. Mohinder Vig, Head of Trade Mark Practise Group, IIPRD shared the dais with him. While Mr. Tarun Khurana shared knowhow on various facets of IP protection and enforcement strategies discussing several case laws and case studies, Mr. Mohinder Vig addressed topics related to basics of trademarks and copyrights, their protection in India and worldwide and discussed points to be taken care of during assignment/transfer of rights. They illuminated ways to the audience on how IP can be effectively Protected, Managed, and Commercialized.

The Workshop covered the broad areas of Intellectual Property Rights with special emphasis on Patents & Trademarks. It presented an opportunity for academicians, practitioners, consultants and students to exchange ideas and explore emerging issues on IP Leveraging and Management.

Khurana & Khurana Publication – Compendium of Trademark Case Summaries – 2015

The Indian trademark jurisprudence in its expeditiously evolving journey saw 2015 attaching many feathers to its hat. With increasing number of litigations, consequently fostering enhanced enforcement and settlements has stimulated players in the ecosystem in being more sensitized and mindful towards the IP lifecycle in India – from filing to injunctions. Significant changes in the Trademark office and courts have been witnessed to have a direct influence on the confidence and awareness of stakeholders in the IP ecosystem. To mention a few:

– increase in trademark filings by 300% over the last decade

– becoming a member of the Madrid Protocol

– increase in number of ‘Anton Pillar’s’ order and ‘John Doe’ orders (aka ‘Ashok Kumar’ in India)

– awarding punitive damages in IP matters

– increase in injunctions based on ‘Passing Off’ principle

With that background and Khurana and Khurana’s involvement in trademark litigations, we provide herewith a compendium of certain key judgment summaries, that reflect a diverse range of issues discussed and adjudicated upon in the Indian courts pertaining to the interpretation/ implementation of various provisions of The Trademark Act, 1999 and can be accessed here:

Khurana & Khurana Publication – Compendium of Trademark Case Summaries – 2015.

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

Who Owns the Invention – the Employee and Employer Conundrum

As India’s participation in global trade, including with countries with strict patent regimes, increases, the need of aligning patent policies and practices in India with global standards is being felt.

If we look globally, and particularly at the competitive needs of global groupings (ASEAN, TPP etc) and countries with strict patent laws like US, Germany, UK etc, there is a call for a relook at the ownership rights of employees and employer. The stress of ‘Make in India’ on IPR further shows its future prospects, and thereby, need of policies more in line with the international standard.

 As per WIPO website for most countries,’ if an employee has developed an invention in execution of his/her employment contract – i.e. usually during his/her working time within the enterprise – the invention (and the related patent rights) will belong to the enterprise’.

For Patents

What the WIPO website means, in essence, is that in the absence of an assignment of invention agreement, employees will have rights over their inventions (and any related patents) unless  they were hired to work on or solve a particular problem and  the invention relates to that  problem. Further, independent contractors own anything they invent unless they enter into an agreement to assign their rights to the company for which they are working. So, simply put, if a employee invents something, while working in employer’s factory, but which is unrelated to his job responsibilities per se, then the employee owns the patent.

The U.S. Supreme Court partially comes to the rescue of the employer since, per them, “where an [employee] during his hours of employment, working with his [employer’s] materials and appliances, conceives and perfects an invention for which he obtains a patent, he must accord his master a nonexclusive right to practice the invention”.[1] For patents, this rule is known as the “shopright doctrine”, giving a nonexclusive license to the employer for using the invention without paying royalties to the employee, although the employee owns the invention. The employee also has the right to exploit it commercially, such as by selling or licensing it to other users. Even where the employee works on the invention on his own time, if the employer’s resources are used to any significant extent, this rule usually applies.

For copyrights

Under the Copyright Act, for major economies with minor modifications, “work made for hire” is the work done by an employee within the scope of employment and the employer has right over it. In case of an independent contractor, the employer will not have any rights over the work. So, it is better for the employer to enter into an agreement to have claims over the intellectual property rights.

The “scope of employment” limitation means that the employer is only entitled to rights over the works that the employee produces under the scope of the employer. For example, if you are a fashion designer by day and a song writer by night, your employer is entitled to rights of your designs but not your songs.

Unless there is a written agreement with independent contractors, hired to produce written content, designs, logos, etc to addresses the issue in their case, contractors will own their creations even if a company paid the contractor to produce the copyrighted work.

Here’s a list of the nine types of work done by independent contractors that can be considered work-for-hire:

  1. a contribution to a collective work;
  2. a part of a motion picture or other audiovisual work;
  3. a translation;
  4. a supplementary work;
  5. a compilation;
  6. an instructional text;
  7. a test;
  8. answer material for a test; or
  9. an atlas

For work not falling into one of the nine work-for-hire categories mentioned above, some or all of the rights must be explicitly assigned by a copyright to the company through an agreement. And for these nine work-for-hire categories the contractors own their creations as mentioned before.

Conclusion

  • Ideally the employers should execute an employment contract or better sign an assignment of invention agreement with the employees to secure rights over intellectual property developed by the employee. In any scenario, the employee will always retain the right to be named as the inventor, unless expressly renounced by him/her.
  • The employer should enter into a written transfer and confidentiality agreement with the employee, to secure the internally developed software, reports, or important materials before the employee goes to another job. The agreement should contain the details of any work created during employee’s tenure with the company or utilizing company’s resources, which now belongs to the employer. In case of an independent contractor, the employer should execute a confidentiality agreement with the individual and the company he or she is employed by, regarding the newly developed work.

References:

  1. http://smallbusiness.findlaw.com/intellectual-property/law-regarding-the-rights-to-inventions-made-by-employees.html
  2. http://lansingbusinessnews.com/law-at-work/1886-protecting-intellectual-property-rights-in-the-workplace.html
  3. http://www.wipo.int/patents/en/faq_patents.html
  4. http://blog.legalhero.com/who-owns-what-ownership-issues-for-employee-created-intellectual-property

About the Author: Harsh, Junior Patent Associate at IIPRD and can be reached at: harsh@iiprd.com.

Medecins Sans Frontieres (msf) Challenges Pfizer’s Patent Application on Pneumonia Vaccine in India

Médecins Sans Frontières (MSF) also known as Doctors Without Borders, an international humanitarian-aid non-governmental organization, has filed a pre-grant opposition in India to prevent US pharmaceutical company “Pfizer” from getting a patent on the pneumococcal conjugate vaccine (PCV13, marketed as Prevenar 13®).

Prevenar 13® is the world’s largest selling vaccine for infants and toddlers, that helps prevent invasive disease caused by 13 types of Streptococcus pneumoniae. Prevenar 13® contains extracts from thirteen of the most common types of Streptococcus pneumoniae bacteria which are responsible for causing invasive diseases such as pneumonia, blood poisoning and meningitis.  The vaccine works by preparing the body’s defences to fight the infection, without causing the disease.

The patent application (8081/DELNP/2007) filed by Pfizer, if granted, would allow the company to keep controlling the PCV 13 vaccine market until 2026 in India. Pfizer’s patent application covers a multivalent immunogenic composition comprising 13 distinct polysaccharide-protein conjugates, wherein each of the conjugates contains a capsular polysaccharide from a different serotype of Streptococcus pneumoniae conjugated to a carrier protein together with a physiologically acceptable vehicle. Pfizer claimed it should be awarded a patent because the method of conjugating 13 serotypes of streptococcus pneumonia into a single carrier is new but MSF claimed it was not inventive.

MSF said it decided to oppose Pfizer’s patent application “after years of fruitless negotiations” with Pfizer to lower the vaccine’s price for use in its projects. While Pfizer offers the pneumonia vaccine at a discounted rate for $10 per child, a vaccine producer in India, Serum Institute, has announced that it could supply the vaccine to MSF and countries in need for $6 per child.

MSF has filed a “pre-grant opposition”, an administrative process that allows third parties to formally challenge validity of pending patent applications before they are granted, arguing that Pfizer’s claimed method is too obvious to deserve a patent under Indian law, pointing out that an equivalent patent was already revoked by the European Patent Office (EPO) and the validity of South Korean equivalent is currently being challenged.

 “Our pre-grant opposition shows that the method Pfizer is trying to patent is too obvious to deserve a patent under Indian law, and is just a way to guarantee a market monopoly for Pfizer for many years to come,” said Leena Menghaney, Head of MSF’s Access Campaign in South Asia. “India must rebuff demands from pharmaceutical companies, which are backed by diplomatic pressure tactics of the U.S. and other governments, that India change its patentability standards to restrict generic competition.  Pfizer’s unmerited patent application on the pneumonia vaccine should be rejected, opening the door to more affordable versions of the vaccines being produced.”

“This is the first time a vaccine (biosimilar) patent has been challenged in India by a medical organisation, with the goal of millions more children being protected against deadly pneumonia”, MSF further claimed.

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

Exclusions and Inclusions in latest Guidelines given by Indian Patent Office (IPO) for Examination of Computer Related Inventions (CRIs)

The Indian Patent office (IPO) after considering inputs/suggestions/comments from different stakeholders on previously issued Guidelines for Examination of CRIs (click here for IPO guidelines) has reissued the final guideline on 19th Feb 2016.  As per the reading of the guideline, CRIs comprise inventions that involve the use of computer, computer network or other programmable apparatus and include such inventions having one or more features of which are realized wholly or partially by means of a computer program or programmes.

CRIs are created with the help of intellectual contributions, and hence should appropriately be protected and deserve a strong protection. As we know, patent being the strongest form of IP protection, has always been sought after IP protection for CRIs. Patents granted in this field however have made several IT and software related companies suffer, and face the heat in form of patent litigation throughout the world. To restrain patent offices from granting frivolous patents, certain restrictions have been imposed on CRIs by different countries in attempt to maintain a good balance between domestic interest (of industry and public at large) and international obligations under TRIPs agreement. Similar restrictions have also been imposed in Indian Patent Act, through section 3(k), which excludes “mathematical or business methods or a computer programmes per se or algorithms from being patentable subject matter.  However, the term “per se” has been interpreted differently and CRIs have been a topic of debate for long time, especially in absence of litigation. Indian Courts haven’t got much opportunity to clear the cloud. The IPO has issued, at different times, guidelines for examination of CRIs with an attempt to provide a uniform manner in which claims related to the CRIs should be examined and issued. With the increasing volume of patent applications filed in the domain, it has become necessary for the patent regime to cope up with the challenges of processing patent applications in the field of computer related inventions and related technologies to insert few firm conditions within the guidelines for allowing such applications or inventions to be declared as novel and to get granted as patent by the IPO. More clarity is expected under section 3(k) in terms of exclusions so that qualified patents relating to CRIs can be examined promptly and speedily granted. The recent guidelines have been issued by the IPO to further foster uniformity and consistency in the examination of such applications.The objective of the guideline is to bring out clarity in terms of exclusions expected under section 3(k) so that eligible applications of patents relating to CRIs can be examined speedily.”

An attempt has been made by the patent office to list statutory definitions of some important terms from different statutes and derived dictionary meaning of other important word, in absence of any statutory definition.  Some important terms that are of importance are defined/ summarized as below.

            Algorithm (Dictionary meaning): a set of rules that must be when solving a particular problem.

Computer (defined in The Information Technology Act, 2000 (No. 21 of 2000):  “any electronic, magnetic, optical or other high-speed data processing device or system which performs logical, arithmetic, and memory functions by manipulations of electronic, magnetic or optical impulses, and includes all input, output, processing, storage, computer software, or communication facilities which are connected or related to the computer in a computer system or computer network.”

Computer network (defined in The Information Technology Act, 2000 (No. 21 of 2000) ): “the interconnection of one or more computers through – (i) the use of satellite, microwave, terrestrial line or other communication media; and (ii) terminals or a complex consisting of two or more interconnected computers whether or not the interconnection is continuously maintained”

Computer programme (defined in the Copyright Act 1957 under Section 2(ffc)):  “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result”

Data (defined in the Information Technology Act, 2000 (No. 21 of 2000): “a representation of information, knowledge, facts, concepts or instructions which are being prepared or have been prepared in a formalized manner, and is intended to be processed, is being processed or has been processed in a computer system or computer network, and may be in any form (including computer printouts, magnetic or optical storage media, punched cards, punched tapes) or stored internally in the memory of the computer;”

Firmware (Dictionary meaning):“a type of computer software that is stored in such a way that it cannot be changed or lost”

Function (defined in the Information Technology Act, 2000 (No. 21 of 2000): “”function”, in relation to a computer, includes logic, control arithmetical process, deletion, storage and retrieval and communication or telecommunication from or within a computer.”

Hardware (Dictionary meaning):“the physical and electronic parts of a computer, rather than the instructions it follows”.

Information (defined in the Information Technology Act, 2000 (No. 21 of 2000): “information” includes data, message, text, images, sound, voice, codes, computer programmes, software and databases or micro film or computer generated micro fiche.”

Per se (Dictionary meaning):“‘by itself” or “in itself” or “as such” or “intrinsically” – to show that you are referring to something on its own, rather than in connection with other things.

Software (Dictionary meaning):“the programs, etc. used to operate a computer”.

Section 4.4.1 of the guideline reads as

  1. “If the patent application relates to apparatus/system/device i.e. hardware based inventions, each and every feature of the invention shall be described with suitable illustrative drawings. If these system/device/apparatus claims are worded in such a way that they merely and only comprise of a memory which stores instructions to execute the previously claimed method and a processor to execute these instructions, then this set of claims claiming a system/device /apparatus may be deemed as conventional and may not fulfil the eligibility criteria of patentability. If, however, the invention relates to ‘method’, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts and other information required to perform the invention together with their modes/means of implementation.
  2. The working relationship of different components together with connectivity shall be described.
  3. The desired result/output or the outcome of the invention as envisaged in the specification and of any intermediate applicable components/steps shall be clearly described

The guideline puts an observation that computer programmes are often claimed in the form of algorithms as method claims or system claims with some ‘means’ indicating the functions of flow charts or process steps. Algorithm-related claims are even wider than computer programmes claimed by themselves, as a single algorithm can be implemented through different programmes in different computer languages. If, in substance, claims in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium belong to the said excluded categories, they would not be patentable.

Even when the issue is related to hardware/software relation, (e.g., when the claims recite ‘processor is programmed to… or ‘apparatus comprising a processor and configured / programmed to…..) the expression of the functionality as a ‘method’, is judged on its substance. It is well established that in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed.

The ‘means’ mentioned in the claims shall clearly be defined with the help of physical constructional features and their reference numerals to enhance the intelligibility of the claims. The claims in means plus function form shall not be allowed if the structural features of those means are not disclosed in the specification. Further, if the specification supports implementation of the invention solely by the computer program then in that case means plus function claims shall be rejected as these means are nothing but computer programme per se.

Where no structural features of those means are disclosed in the specification, and specification supports implementation of the invention solely by the software, then in that case, means in the “means plus function” claims are nothing but software.

In light of these guidelines, it’s seems that for a claim to be allowed, it should have features of hardware or means that are novel and non-obvious. It is important to ascertain from the nature of claimed CRI as to whether it is of a technical nature involving technical advancement as compared to the existing knowledge or having economic significance or both, and is not subject to exclusion under Section 3 of the Patents Act.

If the claims, in any form such as method/process, apparatus/system/device, computer program product/ computer readable medium, fall under said excluded categories, they would not be patentable. However, if in substance, the claims taken as whole do not fall in any of the excluded categories, the patent should not be denied.

Mathematical methods such as methods of calculation, formulation of equations, finding square roots, cube roots and all other similar methods are therefore not patentable. However, mere presence of a mathematical formula in a claim, to clearly specify the scope of protection being sought in an invention, may not necessarily render it to be a “mathematical method” claim.

While including the term “per se”, it was suggested that the change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or developed thereon. The intention was not to reject the CRIs merely because it includes some algorithm, or computer automation or computer program, if the claim has other elements that are inventive. However, computer programmes, as such, are not intended to be granted patent.

The present guideline presents a test to determine patentability of CRIs.

Tests/Indicators to determine Patentability of CRIs:page 18 (IPO Guidelines pdf of Feb 2016)

“Examiners may rely on the following three stage test in examining CRI

applications:

(1) Properly construe the claim and identify the actual contribution;

(2) If the contribution lies only in mathematical method, business method or algorithm, deny the claim;

(3) If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.

I personally believe that strong IP protection, especially in patents, can be of great value for information technology, computer, and/or software related firms and companies. Emphasis should be laid on granting good quality patents for CRIs.  However, in contrast, many small, medium or big firms, companies and businesses get discouraged in terms of securing and utilizing the prospectively rewarding and booming monopoly that can be of great help for them to build their business. From the very start, there always exists an imprecise perception that computer software is not patentable and hence the discouragement. The present guideline further strengthens the notion that software patents are not allowed, especially in absence any positive example.

The guideline presents some examples for inventions that are not patentable, however the guideline fails to provide any positive example, illustrating what kind of CRIs are allowed. A more balanced approach would have been to provide more examples, and possible ways in which claims related to the CRIs can be allowed, keeping a check on frivolous patents.  If guideline is followed in its intended sprit, patentability of CRIs seems to be tougher and chances of getting a lawfully issued patent in this domain seems to be limited. With the given example, its looks like even if the matter includes technical advancement but is a computer program, it may not be allowed. As it seems from the wording of the test of CRIs, for a CRI to be patentable, it must be claimed in conjunction with a novel hardware. The obvious question will arise to anyone’s mind is why anyone will claim a CRI with additional features (limiting the scope of invention), if the hardware itself has to be novel. The guideline seems to indicate that a claim of CRI even after having great technical contribution, having novelty and non-obvious invention features, cannot be granted if it doesn’t involve any novel hardware. The sole criterion of test of a CRI is whether the actual contribution is in the hardware or not. The new CRIs guidelines have paved way for more challenges and competition to be faced for getting an idea from IT, software, or computer science technology area patented, specifically in India. It is clear from the guideline that in order to get a claim granted for CRI, the claim should clearly indicate the feature/ structure of hardware or means that have some novelty. To be allowed, the claims therefore need to be worded in such a way so to indicate the change in behavior/feature/structure/impact on the underlying hardware.

About the Author: Preeti Singh, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at: preeti@khuranaandkhurana.com.

Requirements to be Fulfilled If Invention Uses Biological Material

You might find this article useful if you have questions like what is Budapest treaty, is India also member to the treaty, if my invention uses biological material, what obligations I have to fulfil under this treaty, what are the timelines to comply with those.

Budapest treaty is the international treaty on the recognition of the deposit of micro-organisms for the purposes of patent procedure signed at Budapest (capital of Hungary). It was signed on 28th day of April, 1977 and has been amended and modified since then. India is member of this treaty with effect from December 17, 2001. If the invention uses biological material and it is not already known, then it has to be submitted at the International Depository Authority not later than the date of making the patent application in India and a reference thereof shall be made in the specification within the period of three months from the date of filing of the application. The material is deposited so that every complete specification shall fully and particularly describe the invention and its operation or use and the method by which it is to be performed and shall also disclose the best method of performing the invention. Applicant shall also disclose in the specification the source and geographical origin of the biological material. After the deposit has been made, applicant shall in the specification include name, address of the depository institution and the date and number of the deposit of the material at the institution. In India, there is one International Depository Authority at Chandigarh which is known as Institute of Microbial Technology (IMTECH) and other is at Microbial Culture Collection (MCC), Pune. Access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority. One can also refer to the Public Notice dated July 02, 2014, made available by Indian Patent Office (IPO) regarding the same. If the invention is related to biological material obtained from India, applicant needs to add one declaration in form 1. The declaration is ‘The invention as disclosed in the specification uses the biological material from India and the necessary permission from the competent authority shall be submitted by me before the grant of the patent to me.’ Applicant also needs to fulfil the requirement of section 6 of the National Biodiversity Act, 2002, which makes it mandatory for the applicant to take permission of the National Biodiversity Authority before sealing of the patent, if invention of the patent application uses biological material.

Legal basis:  Section 10 (4) (ii) (A), (B), (C) and (D) of the Patents Act, 1970 and Rule 13 (8) of the Patents Rules, 2003, form 1 under Indian Patents Act, 1970 and Section 6 of the National Biodiversity Act, 2002.

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

Interpretation of the Term “Aggrieved Person” Under Section 47 of Trade Mark Act, 1999

The Hon’ble High Court of Delhi in the case Adidas AG v Union of India and Anr vide W.P.(C) 3125/2013 set aside the impugned ex parte order by IPAB dated 28th December 2012 and remanded the matter to IPAB for fresh consideration.

BRIEF FACTS OF THE CASE:

In the instant case, Petitioner has trademark “RESPONSE” with respect to footwear and apparels has garnered worldwide goodwill and reputation. Petitioner’s trademark “RESPONSE” is registered in various countries including USA and Germany in 1993 and 1995 respectively.  It came to the Petitioner’s notice that the mark Response has been already registered by the Respondent. Thus the Petitioner filed application for rectification of the impugned mark by the Respondent on the ground that the mark had been registered “without any good cause or bonafide intention to use the mark” and thus is liable to be removed under section 47 of the Trade Marks Act, 1999. IPAB by order dated 28th December 2012 dismissed the application stating that the petitioners in this case have not satisfied as to how they are aggrieved person; and there is confusion or deception among the public. In these circumstances, IPAB did not think it fit to remove the trade mark from the register. Thus the application was therefore dismissed. Being aggrieved by the order, the Petitioners filed writ petition challenging the impugned order by IPAB.

ARGUMENTS ON BEHALF OF PETITIONER:

It was argued by the Petitioner by virtue of number of registrations for the mark “RESPONSE” and the long and continuous use of the said mark by the petitioner in the course of its business, the mark “RESPONSE” has attained distinctiveness in relation to footwear and it has come to be associated solely with the petitioner and no one else.

It was further argued on behalf of the petitioner that respondent no.2 had never appeared before the IPAB and even in the present proceedings it has not filed any response. Moreover the respondent No.2 has not even renewed its mark since 2011.

DECISION:

The Hon’ble Court held that the expression “person aggrieved” is a term of wide amplitude and an applicant for registration whose trademark has been objected or refused by reason of prior registration by a third party of the same or similar or identical mark for the same goods or description of the goods or whose application for registration is opposed on the basis of prior registration of the same or similar mark by the registry is a person aggrieved. It was further observed that the finding of IPAB that even when the marks and goods are identical, there is no person aggrieved is contrary to law.

It was also found that though the IPAB has given a finding that there is no evidence of use of the mark “RESPONSE” by the petitioner, yet it has itself held that the use, if any, is post 2005. Consequently, this Court opined that the finding given by the IPAB is contrary to facts of the case. Moreover, the effect of the use post 2005 has not been analyzed. Accordingly, the impugned order dated 28th December, 2012 of the IPAB was set aside and the matter was remanded back to the IPAB for reconsidering the matter in accordance with the law. The matter was accordingly directed to be listed before IPAB for direction on 4th April, 2016.

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