Monthly Archives: October 2016

Amazon improves foothold in India: signs content licensing deal with T-series

E-commerce is growing widespread day by day in Indian market. It has become a current day reality from a buzzword, transformed the way business is done, transformed the way people transact and more specifically, has totally transformed the game for the Indian economy. Nowadays online market space is available for almost everything; you just think of something in your mind and can easily get without leaving your place. It has covered almost everything: tours, travels, entertainment, movies, hotel reservation, matrimonial services, recruitment services, banking services, electronic gadgets, fashion accessories, medicines, medical devices, groceries and the list goes on.

Indian retail sector has taken a great leap due to the growing popularity of e-commerce. Offering attractive and convenient shopping option has widened owing to acceptance and preference of only online shopping as a safe shopping medium. In more simple words it is now possible doing shopping for anything from anywhere at any time with online market space, that too, with ease of your own comfort and leisure. Be it your workstation or home or wherever, you can shop for the anything you want without even worrying about the closure or opening time of the market, and within the prescribed time period you will receive in your hands. Rising Internet access, increasing usage of smartphones and the preference of cashless transaction, being integral players, have facilitated e-commerce to propagate and flourish in each and every part of our country.

Growth and success emanates competition, which is getting intensified with major online retail players day by day. Over a year ago, Snapdeal and Flipkart were the two major players, and then Amazon India has overtaken Snapdeal’s market. Two horse race between Flipkart and Snapdeal, has now transformed in to two horse race again, but, between Flipkart and Amazon, replacing Snapdeal.

Reportedly, Snapdeal’s market share dropped to 14% from 19% a year ago while Amazon’s gained from 14% to 24% in the same period and Flipkart remains the leader despite a fall in market share to 37% from 43%.:

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Flipkart and Amazon are struggling high to win in the game of capturing Indian market share and to sustain that position.Both companies are developing various plans and strategies, like offering best discounted deals, announcing financial investments, acquiring major players in retail sectors, joining hands with big brands and signing licensing deal and agreements to have the batter coverage of the market. In the verge of the same Amazon has signed a long term content licensing deal with T-Series for its prime video services, which has not been launched yet, for pleasing the commitment of providing value added services to members . As a result of this deal, Amazon prime members would be able to enjoy the best of the Bollywood movies by T-Series within a few weeks of their theatrical release.Seventeen under production films by T-Series, which include Raabta, Chef, Tum Bin 2, Wajah Tum Hoetc. will be showcased to the members of prime video before their premier on TV. Previously Amazon has also signed almost similar type of pacts with Dharma Production, Vishesh Films and Excel Entertainment. Amazon is trying their level best to win their customers/members whole heartedly, fulfilling all of their need and interest. Indeed, Amazon is continuously improving its foothold in the Indian market to grab the position of leader in e-retail sector

But as we have seen historically, in internet business sector, there often remains single dominant leader like Facebook and Google in social networks and search engines respectively. Whereas, here it looks like oligopoly with two strong competitors Flipkart and Amazon; one is of home origin and another of American origin.

Battle is going on. Let’s wait and watch, who will takes all market? And we as customer enjoy their favours and offers.

About the Author: Dr. Komal Tomar, Sr. Licensing Associate at IIPRD and Khurana & Khurana, Advocates and IP Attorneys and can be reached at: commercialization@iiprd.com

References:

  1. http://economictimes.indiatimes.com/small-biz/startups/snapdeal-slips-against-its-two-main-rivals-flipkart-amazon-can-it-get-its-mojo-back/articleshow/54705032.cms
  2. http://economictimes.indiatimes.com/tech/internet/amazon-inks-content-licensing-deal-with-t-series/articleshow/54566544.cms
  3. http://tech.economictimes.indiatimes.com/news/internet/amazon-signs-up-dharma-productions-for-prime-video-push/54524365
  4. http://economictimes.indiatimes.com/small-biz/startups/amazon-signs-content-deal-with-vishesh-films/articleshow/54398306.cms
  5. http://economictimes.indiatimes.com/industry/media/entertainment/amazon-signs-up-excel-entertainment-to-ensure-enough-takers-for-prime-service-in-india/articleshow/53548913.cms

GOD BLESS NOVEMBER 27, 2016

Well, I am sure, this is what is crossing through the minds of the IP enthusiasts who have been waiting since long (2013-being specific) for their turn to appear for Patent Agent Examination (PAE). They were not able to do so for the want of examination taking place. November 27, 2016 has definitely brought sigh of relief for them.

Relief came for PAE aspirants when IPO official website announced on July 19, 2016 that PAE will be conducted before December, 2016. Then IPO released a tender on September 01 requesting quotation for supply of answer booklet and related works, supply of Optical Mater Recognition (OMR) sheets and printing of question papers for Patent Agent examination-2016. Tender can be accessed here. From tender it appears that paper one is likely to have question s. no. 1-40 with one option correct, whereas s. no. 41-50 with more than one option correct. IPO is expecting minimum 2000 applications and expects the figure to go high up to 6000.

Online registration of the Patent Agent Examination can be done here. Guidelines for filing the application can be accessed here. Applications for this exam can be made only online and between 28.09.2016 to 27.10.2016.

In an interesting deviation from the examination pattern of the previous exam, this time Schedule for Viva-Voce examination will be announced after the completion of written examination. Only those candidates who have scored minimum of 50% marks in each paper will be allowed to appear for Viva-Voce. Separate list for same would be provided.

We wish all the best to all the PAE aspirants. May they all come up with flying colours!

Post-grant opposition and revocation proceedings under Indian Patent Act: what is better?

Patent Act, 1970 provides opposition/ revocation mechanisms to make sure that undeserving Patents are not granted in contravention of the provisions of the Act and if they are granted, they can be opposed/ revoked. Grant of patent can be opposed before as well as after grant of patent. Relevant sections for different mechanisms, locus standi, jurisdictions where they can be entertained, timelines within which they can be opted, and the grounds on which they can be based have been summarized in the below table:

Point of Comparison Pre-grant opposition Post-grant opposition Revocation
Section 25 (1) 25 (2) 64
Locus Standi Any person Person  Interested Person  Interested, Central Government or alleged infringer in a counter-claim
Jurisdiction Patent Office Patent Office Intellectual Property Appellate Board (IPAB) and High Court
Timelines Any time after publication of the application till the grant of the patent At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent Any time after grant of the patent
Grounds Limited  to those provided by section 25 (1) Limited  to those provided by section 25 (2) Not limited to the grounds provided by  Section 64

When we carefully analyse the mechanisms, it is evident that post-grant opposition gets stricter than pre-grant. However, down the time after grant, story again changes wherein in revocation, locus standi is also provided to central government, timeline for revocation is not restricted to 1 year after publication of grant and also the words ‘but on no other ground’ which appear in 25 (1) and 25 (2), do not appear in section 64. Absence of these words can be construed to mean section 64 does not require person to stick to the grounds provided by section 64 like section 25 (1) and section 25 (2) do.

Further observation also indicates that standard of obviousness required to oppose the patent during post-grant opposition is higher than that required during revocation.

Section 25 (2) (e) and section 64 (f) has been reproduced below:

Section 25 (2) (e): that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the claim;

section 64 (f)

that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:

It can be seen that section 64(f) unlike section 25 (2) (e) does not require invention to be clearly not involving any inventive step. Interestingly section 64 not only allows other grounds than those provided by section 64 to be used in the revocation, it also provides more/ additional grounds than those provided by section 25 (2).

While it is clear that revocation at high court cannot be chosen unless patentee has asserted patent infringement, revocation at IPAB can be chosen any time after grant and even when patentee has not asserted infringement. Patent revocation cannot be sought once proceedings for patent opposition under section 25 (2) have been initiated and are pending. Therefore, one has to clearly think of the advantages revocation proceedings provide over post-grant proceedings.

HOW TO CALCULATE TERM OF/ EXPIRY OF INDIAN PATENT?

In order to analyse Patent infringement or to conclude Freedom to Operate (FTO) search, one must know how to calculate expiry of Patents or estimated expiry of pending Patent Applications. This article discusses step-wise approach for expiry calculation for India.

Amended section 53 of the Indian Patent Act, 1970 governs estimated expiry of the pending Patent Applications or expiry of Patents granted on or after May 20, 2003 (commencement of the Patent Act, 2002) or granted before but were in force on the said date. Section 53 (1) has been reproduced below for the reference.

Section 53:

(1) Subject to the provisions of this Act, the term of every patent granted, after the commencement of the Patents (Amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of such commencement, under this Act, shall be twenty years from the date of filing of the application for the patent.

Explanation.—For the purposes of this sub-section, the term of patent in case of International applications filed under the Patent Cooperation Treaty designating India, shall be twenty years from the international filing date accorded under the Patent Cooperation Treaty.

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

(3) [Omitted by the Patents (Amendment) Act, 2005]

(4) Notwithstanding anything contained in any other law for the time being in force, on cessation of the patent right due to non-payment of renewal fee or on expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to any protection.

Based on the above section, step-wise approach has been given below:

Step 1: Check whether you have to calculate expiry of granted Patents or you have to calculate estimated expiry of pending Patent Applications.

  1. FOR PENDING PATENT APPLICATIONS:

Step 2: Check whether Patent Application was filed directly in India or as Convention Application or as National Phase Application through Patent Cooperation Treaty (PCT)

A1)        FOR PATENT APPLICATIONS FILED DIRECTLY IN INDIA:

Step 3: Check whether application is Ordinary Patent Application or Divisional Patent Application or Application for Patent of Addition.

For Ordinary Patent Applications:

Expiry is 20 years from the filing date. Even if Patent Application was filed accompanied by provisional specification and then complete specification was filed within 12 months, expiry shall be calculated from provisional filing date. Provisional specification is considered for calculation of expiry date in India.

For Divisional Patent Applications:

Expiry is 20 years from the date of filing of parent application accompanied by either provisional or complete specification.

For Patent of Addition:

Expiry of Patent of Addition is equal to term of patent granted for main invention.

 A2)     FOR CONVENTIONAL PATENT APPLICATIONS:

For Convention Application which is not Divisional Application or application for Patent of Addition:

Expiry is 20 years from the date of filing in India and not from the date of priority.

For Convention Divisional Application:

Expiry is 20 years from the date of filing of parent Convention Application in India.

For Convention Patent of Addition:

Expiry of Patent of Addition granted for Conventional Application is equal to term of Patent in respect of main invention.

A3)   FOR PCT PATENT APPLICATIONS:

For PCT Application which is not divisional application or Patent of Addition:

Expiry is 20 years from the International filing date/PCT date and not from priority date or Indian filing date.

For PCT Divisional Application:

Expiry is 20 years from the International filing date/ PCT date of Parent Application and not from priority date or Indian filing date.

For PCT Patent of Addition:

Expiry of Patent of Addition granted for PCT Application is equal to term of Patent for main invention.

  1. FOR GRANTED PATENT

Step 2: Check the grant date. If it’s before May 20, 2003, different set of rules apply than those apply to Patents granted on or after May 20, 2003.

B1) FOR PATENTS GRANTED BEFORE MAY 20, 2003:

This is governed by un-amended section 53(1) which has been reproduced below:

Section 53 (1):

Subject to the provisions of this Act, the term of every patent granted under this Act shall-

 (a) in respect of an invention claiming the method or process of manufacture of a substance, where the substance is intended for use, or is capable of being used, as food or as a medicine or drug, be five years from the date of sealing of the patent, or seven years from the date of the patent whichever period is shorter; and

 (b) in respect of any other invention, be fourteen years from the date of the patent.

 Step 3: Check whether patent was granted for application filed directly in India or as convention application in India or as National Phase through PCT

FOR PATENT GRANTED AGAINST PATENT APPLICATIONS FILED DIRECTLY AT INDIA OR AS CONVENTION APPLICATIONS

Step 4: Check the field of the invention to which patent relates.

For the inventions claiming the method or process of manufacture of a substance, where the substance is intended for use, or is capable of being used, as food or as a medicine or drug.

Expiry is the earlier of two dates, first of them being five years from the date of sealing (grant) of the patent and second being seven years from the date of the patent.

For other inventions:

Expiry is 14 years from the date of patent (date of filing of patent application).

If for any of the above two categories, expiry falls on or after May 20, 2003, expiry of patent shall be calculated according to the rules applicable to patents granted on or after May 20, 2003. It is important to note that patents which were ceased but could be restored and were restored so as to be effective on May 20, 2003, were/ are eligible for the expiry calculation according to new rules.

For Patents Granted against divisional applications, expiry depends on the filing date of parent applications.

For Patents Granted on the application for Patent of Addition, Expiry is equal to expiry of patent for main invention.

For the purpose of calculating date of filing of the applications filed directly at India, date of filing provisional specification (if filed) is considered.

FOR PATENT GRANTED AGAINST INTERNATIONAL PATENT APPLICATIONS:

Expiry is 20 years from the International filing date/ PCT date irrespective of field of the invention to which it relates.

B2) FOR PATENTS GRANTED ON OR AFTER MAY 20, 2003:

Step 3: Check whether patent was granted for application filed directly in India or as convention application in India or as National Phase through PCT

FOR PATENTS GRANTED AGAINST APPLICATIONS FILED DIRECTLY AT INDIA:

For Patents Granted against applications which are not divisional or applications for patent of addition:

Expiry is 20 years from the date of filing date. Even if Patent Application was filed accompanied by provisional specification and then complete specification was filed within 12 months, expiry should be calculated from provisional filing date.

For Patents granted against divisional patent application:

Expiry is 20 years from the date of filing of parent application accompanied by either provisional or complete specification.

For Patents granted against Patent of Addition:

Expiry of Patent of Addition is equal to expiry of Patent for main invention.

FOR PATENTS GRANTED AGAINST CONVENTIONAL PATENT APPLICATIONS:

For Patents granted against convention Application which is not divisional application or Patent of Addition:

Expiry is 20 years from the date of filing in India and not from the date of priority.

For Patents granted against Convention Divisional Application:

Expiry is 20 years from the date of filing of parent Convention Application in India.

For Patents granted against Convention Patent of Addition:

Expiry of Patent of Addition granted for Conventional Application is equal to expiry of Patent granted for main invention.

FOR PATENTS GRANTED AGAINST PCT PATENT APPLICATIONS:

For patents granted against PCT Application which is not divisional application or Patent of Addition:

Expiry is 20 years from the international filing date/PCT date and not from priority date or Indian filing date.

For patents granted against PCT Divisional Application:

Expiry is 20 years from the international filing date/PCT date of Parent Application and not from priority date or Indian filing date.

For patents granted against PCT Patent of Addition:

Expiry of Patent of Addition granted for PCT Application is equal to expiry of Patent granted in respect of main invention.

No maintenance fee has to be paid to keep Patent of Addition in force. This is applicable for any type of Patent of Addition irrespective of Patent of Addition is granted against Patent Application filed directly at India, or as Convention Application or as Patent of Addition. However, if Patent for main invention is revoked, patent of addition can be converted into independent Patent. In such a case, maintenance fees/ renewal fee has to be paid in respect of Patent of Addition turned Independent Patent.

Wanna play Music commercially? Pay the Royalities first!

This may sound difficult given that commercial places in India have taken right to play the music as their inherent one. Situation may change soon after two recent judgements of Hon’ble Delhi HC. First one was delivered by JUSTICE S. MURALIDHAR on August 12, 2016 and second one was delivered by JUSTICE V. KAMESWAR RAO on September 30, 2016. Interestingly in both the cases, Indian Singers’ Rights Association (ISRA) was involved as plaintiff. In both the decisions, applicant court gave decision in favour of plaintiff and asked defendant to pay royalties to the plaintiff.

Basic information on ISRA, laws relating performance rights have been discussed below:

ISRA is the first Copyright Society to be registered by the Central Government after the 2012 amendments to the Copyright Act. According to its official website, M/s. Lata Mangeshkar, Usha Mangeshkar, Suresh Wadkar, Gurdaas Mann, Pankaj Udhas, Alka Yagnik, Kumar Sanu, Abhijeet Bhattacharya, Sonu Nigam & Sanjay Tandon with support from M/s. Asha Bhosle, Shaan, Kunal Ganjawala, Sunidhi Chauhan, Mahalaxmi Iyer and others formed the ISRA (Indian Singers’ Rights Association). ISRA was incorporated as a Company Limited by Guarantee under the Companies Act, 1956 on 3rd May, 2013. Thereafter, ISRA filed for Registration as a Copyright Society as per Section 33 of the Copyright Act and received its Certificate of Registration from the Central Government on 14th June, 2013. ISRA is independent of The Indian Performing Right Society (IPRS) and PPL (Phonographic Performance Ltd.). IPRS looks after the interests & Royalties of Composers/Lyricists. PPL looks after the interests & Royalties of Music Labels. ISRA looks after the interests & Royalties of Singers. The Copyright (amendment) Act, 2012 came into effect from 21st June, 2012. The amendments were historic in a way that they amended the provision regarding “Performers” to protect their interests in line with India’s international commitments. “Performer’s Right” in India after the amendment is in harmony with Article 14 of the TRIPS Agreement as also is compatible with Articles 5 to 10 of the WIPO Performances and Phonograms Treaty (WPPT). The Performers’ Rights subsist for 50 years from the beginning of the calendar year next following the year in which the performance is made. Section 38A and section 38B respectively provide for economic rights and moral rights over the performance.

According to section 38 A, the Performer’s Right are an exclusive right to do or authorize the doing of any of the following acts in respect of the performance or any substantial part thereof:

1) to make a sound recording or a visual recording of the performance;

2) to reproduce the performance in any material form including the storing of it in any medium by electronic or any other means;

3) to issue copies of the performance to the public not being copies already in circulation;

4) to communicate the performance to the public;

5) to sell or give the performance on commercial rental or offer for sale or for commercial rental any copy of the recording and;

6) to broadcast or communicate the performance to the public except where the performance is already a broadcast.

The “Performers Right” runs parallel to Rights of Composers/Songwriters, Producers & Music Companies. It’s interesting to note that Performer can assign his copyright but cannot assign or waive the right to receive royalties for the utilization of such performance in any form other than for the communication to the public of the performance along with the film in a cinema hall. The performer can assign the right to receive royalties to either his Legal Heir or a Copyright Society for collection and distribution. This cannot be even circumvented by contract to the contrary.

ISRA soon after its creation decided the amount of royalty that has to be paid to the performer. Different Tarrif schemes such as applicable to radio broadcasting, broadcasting over satellite/ TV channel can be accessed at http://isracopyright.com/tariff_scheme.php .

After these judgements, rights of singers are clearly established and commercial establishments will have to change long continued practices of playing the music without paying royalties to singers.

Kudos ISRA.