Author Archives: IIPRD

The Drone Policy 2018

Introduction

The Directorate General of Civil Aviation (the “DGCA“) released the much awaited National Drone Policy, 2018 version 1 (Drone Policy)[1] on 27th August 2018. The subject matter of the regulation is ‘Requirements for Operation of Civil Remotely Piloted Aircraft System (RPAS)’. The policy is set to come to effect from 1st December 2018. This regulation succeeds two other daft regulations that were issued by the DGCA in April 2016 and November 2017. Both these drafts were open to stakeholders for comments but they never got formalized into anything until now.  A task force called the drone task force has also been set up that will provide for further recommendations when needed and may even modify the current regulation or create new ones. The current article will try and make a detailed analysis of the Regulations.

Background

Before the draft regulations, drones were not allowed to be used in India due to lack of proper regulations and security concerns. For the first time in 2016, DGCA asked for recommendations but they were not formalised. Finally a year later in 2017, another draft regulations were released which have now been formalised. The Regulations provide a very detailed framework for licensing and other requirements for use and operation of drones in India. As stated under Regulation 1.3 ‘the Civil Aviation Requirements (CAR) is issued under the provisions of Rule 15A and Rule 133A of the Aircraft Rules, 1937 and lays down requirements for obtaining Unique Identification Number (UIN), Unmanned Aircraft Operator Permit (UAOP) and other operational requirements for civil Remotely Piloted Aircraft System (RPAS)’. The process through which all the initialisations, submissions of applications and clearances will take place will be an all-digital process. The process will be carried out through an online platform called Digital Sky. The Ministry of Aviation through a press release[2] called Digital Sky “first of its kind national Unmanned Traffic Management (UTM) platform that implements ‘no permission, no take-off’”.

Requirements and Eligibility

 According to the Drone Policy, every drone user will now have to register the owner of the drone, the drone that is being used and the person who is flying the drone. Permission will have to be taken from the authorities through the Digital Sky app before flying any drone and only after the permission is granted, the drones will be allowed to fly. To be eligible to fly the RPAs, a person has to be over 18 years of age, must have passed 10th exam in English and has undergone ground/ practical training as approved by DGCA. To make regulations more clear and manageable, the drones have been divided into five categories:

  1. Nano : Less than or equal to 250 grams.
  2. Micro : From 250 grams to 2kg.
  3. Small : From 2kg to 25kg.
  4. Medium : From 25kg to 150kg.
  5. Large : Greater than 150kg.

Every category of the drone will need to get the UAOP except for a few exceptions which are any Nano category flying below 50 feet in uncontrolled airspace / enclosed premises, Micro RPA operating below 200 feet (60 m) AGL in uncontrolled airspace /enclosed premises and RPA owned and operated by NTRO, ARC and Central Intelligence Agencies but except Nano, the other two have to intimate the police according to the provisions. This UAOP will be granted within 7 days and will be valid for 5 years after which one will have to renew it. But during renewal fresh security clearance will be required from Ministry of Home Affairs. The UAOP shall be non-transferable. The DGCA is mandated to grant UIN within two days of the receipt of the application with completed documents. Currently, foreigners are not eligible to fly drones in India and will have to lease RPAS to an Indian entity who in-turn will obtain Unique Identification Number (UIN) and UAOP from DGCA. Not everyone category has to obtain the UIN like:

  1. RPAs in the Nano category with intent to fly up to 50 feet above ground level (AGL)
  2. RPAs owned and operated by Government security agencies.

Restrictions

The regulations also state certain restrictions on the operation of such drones. Flying area has been divided into three zones:

  1. Red zones : It is a no-fly areas (which include regions close to airports, national borders and military bases);
  2. Yellow zones: Flying in this area will require approvals before flying,
  3. Green zones: They are unrestricted areas.

Flying drone upto 400 ft. AGL and visual line of sight are allowed. All operators, except for Nano drone operators, are required to file their flight plans at least 24 hours before their operations and also have to obtain clearances from the Indian Air Force, Air Traffic Control and the Flight Information Centre. Cancellation of any flight plan also has to be notified to proper authorities immediately.  Similarly, all drone operators except Nano, have inform the local police authorities in writing before commencing any type of operations. If a pilot is flying any drone in a controlled airspace, continuous contact has to be maintained with the Air Traffic Control. Specific areas have been laid down under Regulation 13 where flying of drones is restricted. Some of the areas are: Within a distance of 5 km from the perimeter of airports at Mumbai, Delhi, Chennai, Kolkata, Bengaluru and Hyderabad; Within 5 km radius from Vijay Chowk in Delhi. However, this is subject to any additional conditions/ restrictions imposed by local law enforcement agencies/authorities in view of the security; from a mobile platform such as a moving vehicle, ship or aircraft, etc. No person can act as a remote pilot for more than one drone operation at a time. A drone is also not permitted to discharge or drop substances, unless it has been specially permitted by the DGCA and such permission is mentioned in the UAOP. The Drone Regulations also state that no drone shall transport any hazardous material and animal or human payload.

Penalties

The UIN or UAOP issued by the DGCA may be suspended or cancelled in case of any violation of the provisions of the Drone Regulations. Falsifying any information or non-adherence with any provisions of the Regulations may also lea to penal actions under the Indian Penal Code.

The Aircraft Act, 1934 imposes a penalty of imprisonment for a term which may extend up to two years, or a fine which may extend up to INR 1 million (approximately USD 14,500), or with both, for anyone:

  1. who “wilfully flies any aircraft in such a manner as to cause danger to any person or to any property on land or water or in the air“; or
  2. who “wilfully fails to comply with any direction issued [by the DGCA] under section 5A” of the Aircraft Act, 1934.

The Aircraft Rules, 1937 also state that “the doing of any act prohibited by or under any rule, or failure to do any act required to be done by or under any rule, not specified elsewhere in this Schedule” shall constitute an offence punishable with imprisonment for a term not exceeding 3 months or with a fine not exceeding INR 100,000 (approximately USD 1,450) or with both.

Conclusion

Before the introduction of these Regulations, usage of drones was either prohibited or restricted by commercial users. The Drone Regulation was a much require and awaited regulation in India which has finally legalized usage of drones by private and commercial users. The regulation along with the FAQ’s[3] and Do’s and Don’ts released provide for quite a comprehensive data which cleared a lot of doubts and provided clarity to the people. The introduction of Digital Sky through which almost every step can be done online is also a very thoughtful and well managed technique. But getting approvals and clearances from so many authorities and following so many steps might prove to be cumbersome for many users who then might not use them. Even commercial users might not be totally happy with the regulations and they don’t allow for delivery of food/ other items, or to carry passengers. With so many online portals that could have made use of these drones on a large extent might be disheartened with this rule. Even restriction on foreigners from using drones directly in India and investing in them could prove to be a setback for the growth of the sector in India. But it is difficult to ascertain anything so early as the Regulations may get modified and changed in the future which might bring new changes that could provide relief to these players in the market. If the Regulation and rules are properly implemented then, these regulations might even boom the technological ecosystem of the country. However, irregularity and a weak policy may also prove to be a threat to security too.

Author: Nishka Tyagi, Legal Intern,  at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] http://dgca.nic.in/cars/D3X-X1.pdf

[2] http://www.pib.nic.in/PressReleseDetail.aspx?PRID=1544087

[3]  http://dgca.nic.in/cars/RPS-FAQs.pdf

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Patent Trolling

Introduction

A patent is an exclusive right that is granted to an inventor for a specified number of years to make, use, and sell an invention. Once the right s provided, no other person can use the invention without proper license from the patentee. This right is provided to protect such inventors legally from any harm. Later it is usually expected that the inventor will put it in the consumer market for use by licensing it to various other manufacturers.  But recently, many such inventors have been misusing such rights that are provided to them. Recently, many have been patenting items in the vaguest form that the legal system would allow, without the intention of using the patent in the future. Their aim is usually to get money by filing infringement suits against individuals or companies who are using products that is even remotely similar to their patented product. This practice is referred to as patent trolling. Thus, patent trolling can be defined as a practice of obtaining and using patents for licensing or litigation purposes rather than in production of one’s own goods or services; “its real business model is patent trolling.”

Analysis

These patent trollers are usually referred to as Non Performing Entities (NPE). These entities will not sell or produce their product but will rather just license money out of those who appear to have been infringing upon a patent that the NPE owns. Trolling had been becoming a very serious problem, where the small companies, enterprises and individuals had been facing most of the backlash due to the high number of cases being filed against them. Many companies settle as the risk of losing an infringement suit and paying millions of dollars is very risky, even if they don’t believe there is any sort of infringement. The act is more prevalent in USA than in Europe as Europe follows the policy ‘losers pay’ where the losing party has to bear the costs of both the sides. This deters people from filing false cases but this isn’t the case in USA. But in the recent case of TC Heartland LLC v. Kraft Foods Group Brands LLC the Supreme Court has given a very welcoming decision where the court said that patent case defendants could effectively be sued anywhere they do business. In the present case, the defendant weren’t allowed to shift the case to where its company was based but was not allowed by the lower courts, which were following a 1990 precedent from the U.S. Court of Appeals for the Federal Circuit. This decision brings a sigh of relief to many as many cases can now be moved away from ‘plaintiff-friendly’ districts to much more neutral districts where the defendants stand a chance of having a fairer outcome.

Strategies and Measures

The NPEs used a lot of different strategies to gain what they have been looking for. Some of the following measures are the most popular ones:

  1. They accumulate patents related to one area: The NPEs collect a number of patents related to one area which makes it nearly impossible and very expensive for the targeted company to come out of the infringement suit.
  2. They do not produce any product: The patent trollers never produce the product they have patented. This in turns makes it difficult to file a counter sue claim of infringement for the defendant. For example in a technological dispute.
  3. They sue a large number of defendants together: This strategy reduces their overall cost and given them the hope of a large payoff in the future.
  4. They claim a percent of the total revenue from the product:Even though their patent may cover a small aspect of the technology, the award granted can amount to millions for a successful product.

Thus, corporations have been asking for special laws or certain measures to be taken against such companies in order to avoid such suits and large amount of awards granted to them. Here are a few steps that companies can take against such troll patents:

  1. The Big Tent Coalition: The current laws allow even the users of a product, which is an infringement of a patent violation to be sued. The Bill will change that and later only legal action could be taken by the company or the individual who has created the product or service.
  2. How to prepare against such suits: One can always take certain precautionary measures to be safe against such frivolous suits. A company or an individual must always remember these thee simple steps before it opens its doors to others- be proactive, Insure, Ask an attorney.
  3. Giving proper Response: Response to a notice must always be made to the sender of the notice. Looking for ways to settle outside of courts could be a waste of time as the plaintiff already knows about such settlements.

Conclusion

Everyone is very much aware as to such troll patents but is still very far away from assessing them. The simple logic that everyone seems to follow is that everyone has a right to protect their patent even if they aren’t using them. It is simply seen as a way of doing business as it is a very common occurrence among big corporations. But the ones who are affected the most, the small companies and individuals need to be protected against such patent trollers as they face losses which takes years to overcome and even leaves them bankrupt. These NPEs target such companies who will very easily give into their demands looking at the vulnerable position that they are in and this is the reason that such vulnerable companies require protection.

 Author: Nishka Tyagi, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

3EU’s New Copyright Directive Proposal: Boon for Strengthening IPR Law Protection or Bane on the Individual Internet Freedom?

We are at a time where the internet is bringing the world closer together, turning itself into a close-knit community. Internet has enhanced and rather increased the exchange of information. Amidst that, law enforcement agencies and governments all over the world have enacted various laws for channelization of data, protection of internet users, privacy of the individuals, etc. for example, in the European Union, the recent law, is the GDPR which is a privacy regulation which has come into operation in May, 2018, however, the major focus of this article would be in the intellectual property law domain; Furthermore, of the recent would be the most debated EU’s new copyright directive- proposal, that is  yet to be approved. It is argued that, while, having such a law would give more protection to the owners of the copyright content, it is countered that it may deprive the internet users, the world, of the vast copyrighted data currently available. It is in this light, that the probable impact of the new copyright proposal will be analyzed and discussed.

 INTRODUCTION

Many are aware about the new privacy legislation of the European Union which is very talked off and debated all over the world, i.e. the General Data Protection Regulation (GDPR). While, the GDPR was introduced in 2016 and implemented in May 2018 not only EU but the entire world is still grappling with its various adherences and compliances. Due to its extra territoriality aspect, the GDPR is affecting all the countries, other than EU. What is even more surprising is European Union’s new copyright directive proposal. Ever since the beginning of internet age, various intellectual property rights law has been put in place for the same. These laws have been amended all over the globe in various jurisdictions to incorporate the IPR violations if any in the digital space. A similar amendment has been proposed in the EU’s copyright law, whose probable effects and consequences will be discussed in this article.

EU’S NEW COPYRIGHT DIRECTIVE

The EU Copyright Directive is the Directive on Copyright in the Digital Single Market. It is rather an attempt to harmonize copyright laws across all the European Union member states.

The initial EU copyright law (which the new draft proposal seeks to amend) was put in place in 2001, at a time when the intellectual property law protection became vital even in the digital space. It is majorly designed to update the law and make it more relevant in the cyber space in order to grant more protection to the copyrighted content. One of the biggest criticisms it faces is that it is vague and overly harsh. The two major provisions, i.e. Articles 11 and 13 are considered to have a major impact on the individual freedom.[1]

MAJOR PROVISIONS IN QUESTION

As mentioned above, the two major provisions i.e. Article 11 and 13 of the draft proposal/directive have been criticized as being harsh and oppressive to the individual internet freedom.

Article 13, implies that it would force all online platforms to police and prevent the uploading of copyrighted content, or make people seek the correct licenses to post that content. For the most part this would mean filters that check content as it’s uploaded would be mandatory for platforms including Facebook, Instagram, GitHub, Reddit and Tumblr, but also many much smaller platforms. YouTube already uses such a system — called Content ID — to protect copyright infringement, but the technology to do this is extremely expensive and has taken over 11 years to build and refine.

Article 11, although has gained a considerable light of criticism due to it being harsh and oppressive but to a lesser extent. This article states that companies like Google, Facebook and Microsoft may have to pay publishers for showing snippets of news articles.”[2]

IMPACT OF THE NEW COPYRIGHT DIRECTIVE IF MADE A LAW

The impact of the new copyright directive would be on two entities:

1) individuals i.e. users, 2) social networking sites.

ON THE PEOPLE

On one hand, the EU has the GDPR, which is the much-needed privacy law meant for safeguarding the interests of the users in terms of the data content which they would share online and the possibility of it being likely to be misused by the various sites online. On the other, is the new copyright directive? Under this new copyright directive, any user who intends to use any creative content produced by the artist, songs or dance artist, composers or anybody will be liable as per the new directive. Rather they may have to seek the correct licenses for it or else the copyrighted content after being filtered will have to be removed. Not only that, any memes, remixes, or anything concerning any artist will not be uploaded or rather can be but with restrictions mentioned in the draft proposal. The entire purpose of internet which is connecting with people, free flow of ideas, information, may get hampered drastically. One cannot imagine the impact it would have on the people of the European Union. Due to these reasons, various protests have taken place in a bid to take down the proposal.

 ON THE SOCIAL NETWORKING SITES

This directive may make these sites redundant as then the people may be unable to upload the data they may want to. The most controversial provision is the “Article 13, which requires websites to enforce copyright, even on content uploaded by users. Critics believe this could mean that social media sites and others would have to check every piece of content uploaded – a task that would be impossible for humans. Instead, it would require automated copyright checking systems, put in place by each company – a potentially expensive process. Such systems have a high error rate, and have already been controversial on platforms, like YouTube, where they have been implemented. Such systems have been labelled “censorship machines” or an “upload filter” by critics of article 13.It has also led to fears that popular memes, remixes, parodies and other material which use small amounts of copyrighted material could become a thing of the past.”[3] Due, to this, the Italy Wikipedia has shut down in protest of the EU copyright law on 3rd July, 3018

 WHAT HAPPENS NEXT?

“The initial proposal to reform EU copyright law was presented by Günther Oettinger shortly before leaving his post as Digital Commissioner.EU member state governments approved the plans (with slight changes) in the Council. The Legal Affairs Committee narrowly approved the plans (with slight changes) – but in a surprise move, the Parliament then refused to rubber-stamp the Committee’s position, opening it up for further debate. Next, the entire Parliament will vote on changes to the Committee position on September 12, 2018.After closed-door compromise negotiations between the institutions, the Parliament will have to approve the result one final time.”[4]

CONCLUSION

While, it is understood that the copyrighted material of various artists, composers, etc must be protected, a balance between the two, i.e. the internet freedom of the individuals and the rights of the artists, singers, rappers, composers, etc must be maintained. This is rather advocated by many all over the globe. The probable effects, consequences, impact of the same highlight only the possibilities of the copyright (proposed) law that may happen. The actual implications of the same are difficult to measure. Yet, it is further emphasised that a balance must be maintained between the two, i.e. the internet freedom of the individuals and the rights of the artists, singers, composers, etc, so as to ensure that the one doesn’t work to the detriment of the other.

Author: Shruti Gupta, Legal Intern,  at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

References:

[1] https://www.cnet.com/news/article-13-europes-hotly-debated-eu-copyright-law-explained/

[2]https://www.cnet.com/news/article-13-europes-hotly-debated-eu-copyright-law-explained/

[3]https://www.bbc.com/news/world-europe-44696302

[4]https://juliareda.eu/eu-copyright-reform/

Case Summary of “Ajanta Pharma Ltd. v Theon Pharmaceuticals Ltd.”

This article summarises the judgment of High Court of Bombay dated 5th May 2017 in the case Ajanta Pharma Ltd. v Theon Pharmaceuticals Ltd.”.

FACTS:
The case has been filed before the Bombay High Court by Ajanta Pharma Ltd. (hereinafter “Plaintiff) seeking interim relief in a pharmaceutical trade mark and passing off action against Theon Pharmaceutical and Intas Pharmaceutical (hereinafter “Defendants). Initially when the lawsuit was brought, the claim of the Plaintiff was against the use of the mark “FERINTA” by the defendant which was deceptively similar to the mark of the Plaintiff i.e. “FERANTA”. Later, the defendant agreed to discontinue using the mark and it started using “INTAS’ FERINTAS”, with the letter FER in black, and the rest in a rust red color and FERINTAS set in an oval lozenge device. Now the Plaintiff has sought an injunction order against the defendants for the use of the mark “INTAS’ FERINTAS” under the provisions of the Trade Marks Act, 1999 (hereinafter “the Act).

       feranta           ferintas

ARGUMENTS ADVANCED:

The defences taken by the Defendants –

  • The first defence is also known as the ‘copycat defence’ which means that the Plaintiff has indulged in copying of another mark and therefore, they cannot take an action against the Defendants.
  • The second defence was that the Plaintiff goods were sold as a pharmaceutical drug whereas the Defendant’s goods were sold as a food or dietary supplement. The goods are different and the slightest difference in the formulation or the prescribed use is sufficient.
  • The third defence was that the Defendants were honest in adopting their mark. The Defendants have coined their mark by combining the principal ingredient and the main purpose with their corporate name. So the mark was coined as FER-INTAS from Ferrous and INTAS.
  • It was further contended that Class 05 has a wide sweep and within that class if the Plaintiff has used their mark only for pharmaceutical and never for a food supplement then there is no likelihood of confusion. Therefore, the present case falls under the ambit of Section 29(2) of the Act.The test in 29(2) is not of deceptive similarity, but of likelihood of confusion; and, therefore, if this likelihood of confusion is not established, no injunction can be granted.

The counter arguments taken by the Plaintiff –

  • The first counter argument was that the Plaintiff is not guilty of copying its mark. The mark’s registration lapsed in 1989; and it was never in use but only ever proposed to be used.
  • The second counter argument was that the goods were registered under the same class and no such sub-classification can be made to differentiate the goods. According to the Nice Classification, pharmaceuticals include dietary and meal supplements and dietetic foods adapted for medicinal use (but, importantly, do not include meal supplements and dietetic foods not for medicinal use). Also, the ingredients of both the goods are precisely the same and they serve the same purpose. Both the goods are sold to treat Anaemia.
  • It was contended that the Defendants were aware about the Plaintiff’s prior registration. Also, in an infringement action, honesty in adoption of a mark is totally irrelevant to a question of deceptive similarity.
  • It was contended that the Defendants’ mark is similar; used in relation to similar, and possibly identical goods; and results in the Defendants’ mark, or the goods under it, being associated with the Plaintiff’s mark and therefore, the goods are deceptively similar.It was further contended that the injunction is demanded on public interest and if the Defendants are allowed to use the mark it will harm the public interest.

DECISION OF THE COURT:

The Court held that –

  • The two marks have to be seen has a whole to determine if there are any chances of confusion. The test is the impression of a consumer who is of average intelligence and imperfect recollection.
  • There is no prima facie case made out against the Defendants and no injunction order can be granted.

CONCLUSION:

The Court while adjudicating on the question of whether the marks are similar or not observed that the Plaintiff’s mark is a word mark whereas the Defendant’s mark is a composite word and label mark which uses a distinctive black-and-red colour combination. Also, it serves a dual purpose: it visually and structurally distinguishes the Defendant’s product from the Plaintiff’s product, and it proclaims proprietorship and ownership in its product. The Honorable Court placed reliance on the case of JR Kapoor v Micronix India,1994 Supp (3) SCC 215 and held that the two marks have to be compared as a whole to see if there are any remotest chance of buyers and users being misguided or confused. The Court, therefore, held that the two marks have to be compared as a whole and any dissection of the mark is unacceptable.

The Court referred to the case of Indchemie Health Specialties Pvt. Ltd. v Intas Pharmaceuticals Ltd., 2015 (63) PTC 391 (Bom) observed that “Whether or not we should make fine distinctions when looking at goods that, though in the same ‘class’, are used in distinct ways is a question that would arise if one found a similarity in the marks to begin with.” The Court further observed that if the Plaintiff’s argument regarding the Nice Classification is accepted, it is clear that Class 05 does not include meal replacements, dietetic food and beverages not for medical or veterinary use. If the Defendant’s product can be proved to be such a dietetic food then it is another point of distinction.

The Court rejected the contention of harming public interest by referring to the case of Shaw Wallace & Co. Ltd. v Mohan Rocky Spring Water Breweries Ltd.2006 (4) Mh LJ 396, stating that the public is required to be protected from being deceived but that would be a point of contention when the two marks are similar. The Court rests the other counter-arguments of the Plaintiff by stating that “If no similarity is found and a prima facie is not made out, then there is no question of even having to consider the question.

The Hon’ble Court held that the mark FERANTA is not deceptively similar to the markINTAS’ FERINTAS and no prima facie case can be made out therefore no injunction can be granted against the Defendants.

Note: Several quotations from the judgement are included in this article. The complete judgment can be found here.

Author: Ankita Aseri, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

Observations/Recommendations on Personal Data Protection Bill, 2018

A historic military data sharing pact, COMCASA was inked yesterday by India-US at the 2+2 bilateral summit. As per the pact, high-end encrypted communication and satellite data would be shared giving Indian military access on platforms installed by the US. This is said to give us real-time information about the movements of other army troops and is said to be safer and more secure than the system India is currently using. The pact was signed amidst security concerns being raised for which a legal framework is put in place for the transfer or sharing of data. The US has also agreed that the data obtained by them through these systems agreeable through the pact would not be shared with a third party without consent. The Data Protection Bill which is under due consideration around the same time however gives the Government extensive freedom to process personal data for necessity and security reasons.

Around few months before the landmark judgment wherein the Hon’ble Supreme Court has asserted ‘Right to Privacy’ to be a fundamental right, the Government had announced demonetization, encouraging the country to be on the path of being a digital economy. Digitalization would involve a lot of data to be shared, escalating the risk of it being misused or manipulated. How are we supposed to digitize to connect globally and also safeguard our fundamental right of privacy the same time?Laws on ‘Data Protection’ have been long-awaited and requisite at this moment.

In July 2018, the TRAI chief RS Sharma had challenged the twitterati to show him that the government claimed secure Aadhar number could by misused by posting his 12 digit number on social media. This came with the statement that a person’s Aadhar details are safe and secure and there are no privacy concerns. However, in no time, the post that was heavily shared, his personal details were dug out and leaked by the ethical hackers who made the payment of 1 Re in his account via Aadhar enabled payment service only using apps like PayTM. The UIDAI contested that the personal details were in the public domain and were not obtained by misusing his Aadhar number. The Supreme Court is yet to decide on the constitutionality fate of the Aadhar that is under challenge through various petitions.

This was happening against the backdrop of the various consultations on the data privacy and protection that were being carried out by ‘The Expert Committee headed by Justice B.N. Srikrishna’. A report and a draft Bill were submitted to the Ministry of Electronics and Information Technology by the Expert Committee. After various consultations and studying the privacy laws globally for over a year, the draft bill, nonetheless, seems to be in line with the GDPR (General Data Protection Regulation) adopted by the European Union recently. The said Regulations itself are in their nascent stage and would be subject to a lot of modifications as per the current global technological and data privacy need. In such a scenario, the draft Bill which is quite similar to GDPR though positively drafted, there is little understanding of the technology, is quite ambiguous and unclear in certain areas. It would necessarily require a lot of fixations and revisions before the final draft can be cleared by the Ministry. Thus, further consultations and opinions of the general public, organizations, stakeholders, third parties or recipients of the data may be welcomed to have a fair understanding of the global technological advancements and the mass data shared before finalizing on the Bill.

Need of a data privacy law: Most of us would have noticed or felt our emails being read secretively by technological giants like Google. Say for example, if you plan a trip and intend to stay at some hotels with prior bookings online, you receive a mail confirming your itinerary. The technological advancement is so extensive that your very own google calendar reminds you of the date when you have to travel or check in.

It has been laid down by the Supreme Court in Puttaswamyv. UOI, that privacy is a fundamental right. By the country being in the path of becoming an absolute digital economy, the laws have to keep pace with the developing technology and thus it was imperative for a comprehensive data privacy and protection law to be passed.

The Bill is extra territorial and extends to any business, systematic activity or activity where the data fiduciaries or data processors are not present within the territory of India but the data processing and profiling is carried on within the territory of India. This is a welcome move where the scope of the forthcoming privacy Act would be extended.

Observations on the Draft Bill:

The current draft of the Bill is ambiguous and unclear in many areas and thus it would lead to a lot of confusions if the Bill is passed as it is without a much needed clarity.

a) Segregation of personal data & sensitive data: The draft Bill includes comprehensive definitions of personal data and sensitive data and separates these two. Personal data as per the said Bill means any data which can directly or indirectly identify the natural person whereas a list is being provided as being sensitive personal data which also includes intersex status, religious or political beliefs or affiliations.

The Bill doesn’t talk about how the already existing mass volume of data of the data principal (natural person to whom the data relates) be segregated into personal and sensitive data. This is an added burden on the data fiduciaries (the one who alone or in conjunction with others determines the purpose and means of processing of personal data) and data processors (the one who processes the personal data on behalf of data fiduciary but doesn’t include an employee of the data fiduciary).

Also, how such segregation would serve the purpose of privacy or protection from unrequited surveillance. Sensitive data, say for example religious beliefs, biometrics, political affiliations or health data can also be collected through google searches or a combinations of various other factors.

As reported in New York Times, a man walked into a Target company store demanding the reason of a mail with coupons for baby clothes and cribs being sent to his teen daughter. The manager was baffled and had no explanation. Conversely, it later came out to be that the man’s daughter was in fact pregnant. The digital world knew way before her father could have an inkling of it. How eerily accurate Target was in data mining their shopping details and sending exact coupons to people knowing what they need and would make them happy. Such sensitive information is reached at through various other details. 

b) Ownership of data: There have been a lot of debates as to who would be the owner or custodian of the data that is being collected, shared and processed in such a high volume. The draft Bill is silent on this issue. This is in stark contrast to the TRAI recommendations that find the users as the primary owners of the data and the rest being mere custodians.

c) Anonymisation: As per the Bill, personal data may be irreversibly processed converting it into a form in which the data principal cannot be identified. The Act doesn’t apply to the processing of anonymised data and thus the provisions of the Act need not be complied with in case of anonymised data. The companies dealing with analytics or research where data mining takes places of huge volumes of data can process and analyze their anonymised data without fear of any repercussions. However the Bill clearly states that anonymisation has to meet the standards set by the Authority. How far it can remain anonymised where the source data is not deleted is a food for thought as the source data can be used to identify the anonymised data. The Bill doesn’t talk about regular audits or reviews to check whether standards have been met for the data to be anonymised or whether the source still contains the personal data of the data principal.

d) Data Deletion: Sec 10 of the Bill states that the personal data which is no longer required for the purpose for which it was collected, must be deleted in a manner as may be specified unless such retention is explicitly mandated or necessary under law. Such data if not deleted regularly, would be at a huge risk of being misused. There’s always a higher chance for the data to be not deleted and used for purposes for which the data principal hasn’t given his consent. The Bill doesn’t put a larger emphasis on this vital aspect involved in data protection.

e) Consent: It is specifically stated in the Bill that the data of a data principal cannot be processed without his consent given no later than at the commencement of the processing. Such consent has to be free, informed, specific, clear and capable of withdrawn. Also, once the data principal wishes to withdraw his consent, the Bill hasn’t specified about what needs to be done with data that was collected prior for processing.

 Children’s data if collected has to have a parental consent after age verification as per the Bill. However, this has to be looked at as most of the social media sites have profiles of children created by them. The Bill is also silent about any retrospective action in such cases.

f) Data Auditors: The Bill gives the freedom to the data fiduciaries to have their own policies and conducts of their audits for compliance. The data auditor will evaluate the compliance. But, at the same time, the Bill also lays down that where the Authority is of the view that data processing is carried out by any data fiduciary in a way that it could cause harm to the data principal, order can be passed to conduct an audit by appointing an Auditor. As the new data privacy and protection regime plays out, timely planning/action will help organizations continue their business as usual and enhance their business reputation-NASSCOM. How mandatory the auditing process is, under what conditions do the companies need to get it done suo-moto, periodicity thereof, and what all would be checked/evaluated as part of the auditing process is not clearly laid out which we hope the final Act would. 

g) Collection limitation and Purpose limitation: The data collected should be limited as per the requirement and used only for the purpose for which it was required. The data fiduciary is under an obligation as per the Bill to state the purposes for which the data is being collected. However, this is never the scene. Even if the companies do mention the purpose, the same is very high level and can include multiple actions, part of which may be allowed by the data principal and other may not be. Therefore, it should be mandated that the data fiduciary has to give in specific purpose for which the data would be used. Albeit, the Bill talks about periodical review of the data it is silent about the usage of data that would be considered to be redundant.

h) Privacy by Design: 29 talks about privacy by design and expects the data fiduciary to design their business, technical systems, innovations that it can anticipate, identify and avoid harm to the data principal. This is something which cannot be done as the data fiduciaries cannot be expected to bring about a change in their overall design and structure their business model once again. 

i) Transparency: Sec 30 of the draft Bill discusses about transparency being an important requirement in the processing of the personal data. The Aadhar Act which lays down the laws relating to the biggest data repository in the country is required to be amended, as per the submitted Report by the committee. The Bill does not seem to mention its findings about the same. Transparency in data processing is one of the major provisions of the draft Bill, where Aadhar itself may fall short of. No one knows where the data collected through Aadhar has been processed or stored or where the servers are. However, by providing such exemptions to the State for its functions and for welfare in the Bill, Aadhar may escape from the clutches of the other provisions of the Data Protection Act.

j) Security Safeguards: The data fiduciary and the data processor shall have to implement security safeguards like encryption, de-identification or the steps to protect personal data they are processing. End-to end encryption is one of the strong ways to avoid data breach and for risk management in companies where the data at the source gets encoded with a key. This data when transferred to the destination can be decoded only with its correct/decryption key. De-identification, which is stated as another security safeguard, may not be as effective as encryption. One of the widely used social application, Whatsapp now claims end-to-end encryption which means no one in between can read the messages when transferred to the person we are communicating with, not even Whatsapp.

The Guardian and The New York Times had reported in March 2018, that 50 million facebook profiles were harvested for Cambridge Analytic a in what could be one of the biggest data scandals. It is alleged that such huge volume of data was collected through an app, this is your digital life, and of the friends in the facebook list of those who have signed up for the app. Facebook doesn’t have an end-to-end encryption as the data of the users are being read and processed by its servers for data analysis. This is the reason why you see relevant ads or any of your recent searches appearing on your facebook.

k) Data Localizing/Mirroring: As per the Bill, personal data to which the Act applies also has to be stored on a server or data centre in India. An obligation has been laid down on the Central Government to notify certain categories data as critical personal data which can only be processed and stored in a server or data centre in India. Thus, there is still confusion as to which categories of data would fall under this clause. If location of a data principal is considered to be a critical personal data, then companies like Uber, Ola would probably not be able to operate in India or the data stays only in their servers or data centres in India.

Data mirroring is an added responsibility and would lead to extra expense and doubling-up the volume of data to be stored by the data fiduciaries. These data which is stored in servers or data centresin India along with the places out would have to be regularly backed up in tapes to prevent its safety and storage in India. The Report of the Committee tries to provide its reasons as to why at least one serving copy has to be stored in India. This is at variance with the global character of digitalization and connecting globally through technology.

One reason that attracts attention is data mirroring being required for the development of artificial intelligence (AI) which again would raise wide concerns over data privacy.

l) Offences: Industry perspectives may need to be looked into while finalizing the Bill. Currently, as we understand, all offences have been attached with a blanket criminality by making them cognizable and non-bailable. This may be a risky proposition as it can damage the reputation of a data fiduciary if the complaint is found to be false and frivolous, and may be a concerning obstacle to carry out business and for individuals. It may eventually create a lot of hullabaloo in the time to come if not reviewed and modified.

m) Government bodies exempted: The Bill seems to be in favor of the State and the Central Government. Wide exceptions are being given to them in terms of data collection, storage and processing. Though it has held the Government also accountable being one of the biggest stakeholders, the vast exemption frees them from their liability at the same time. The Bill lays down that the Government can process any personal data for any functions of the Government and can notify certain categories of personal data for which no data mirroring is required purely on the grounds of necessity and strategic interests of the State.

n) Accountability: The Bill as per Sec. 11 holds only the data fiduciary accountable for complying with all its obligations and be able to demonstrate that all of its data processing is in accordance, whereas not much accountability has been put on the data processors who would be equally or more involved in the process of handling mass data volume of the data principal.

o) RTI: The Report said that neither the right to privacy, nor the right to information is absolute and the two will have to be balanced against each other in certain circumstances.  The Second Schedule in the draft Bill talks about the amendment to Section 8(j) of the RTI Act, 2005. With this amendment, no disclosure of personal data under RTI shall be made if the same is said to cause harm to the concerned individual. This amendment was not warranted as the RTI Act has properly evenhanded the privacy rights of the public servants and the public interest in disclosure of such an information. The amendment has increased the scope of rejection in disclosing personal information.

The aforesaid are some of the initial observations or concerns that have been raised with respect to the draft Bill. A detailed study has to be done also taking into consideration the industry perspectives so that these loopholes can be fixed. The Privacy Act or the Data Protection Act would always be subject to amendments as it has to keep pace with the ever changing and advancing technological expansion.

Author: Anuja Nair, Senior Associate-Media & Entertainment, Litigation,  at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at anuja@khuranaandkhurana.com.

Glenmark Pharmaceuticals Vs. Galpha Laboratories COMIP (L) NO. 1063 OF 2018

(Bombay High Court Decrees Against The Infringer For A Whopping Amount Of 1.5 Crs To Be Paid To Kerela Relief Fund)

Glenmark Pharmaceutical, which has been always vigilant of their products and IP rights was successful in instituting an IP infringement suit against Galpha Laboratories, which resulted in a distinct judgment and a whooping amount of 1.5 Crore damages to be paid by the infringer as a donation to Kerala flood relief.

Galpha Laboratories were involved with manufacturing of the infringing medical product under the infringing trademark “Clodid B”  deceptively similar to the Plaintiff’s famous medical product of Plaintiff – “Candid -B”.

The Bombay High Court relied heavily on the judgment pronounced by Delhi High Court in the Win-Medicare Pvt. Ltd. Vs. Galpha Laboratories Ltd. & Ors.[1], which declared the defendant a ‘habitual infringer’ as was evident from many cases that has been instituted against it by various parties such as Times Drugs and Pharmaceuticals (P) Ltd., Smithkline Beecham PLC and Jagsonpal Pharmaceuticals Ltd.

The plaintiffs highlighted that Galpha Labs has sold the impugned goods bearing the mark CLODID worth Rs 2.92 crores (approx). The Court also found out that Defendant’s drugs and medicine do not meet the standard as prescribed by the Government authorities and FDA regulations and thus, raised concerns over the health of consumers and general public, who are being repeatedly cheated by the Defendant.

After repeatedly being sued by other pharmaceutical companies for their IP infringement and found guilty thereon, the Defendants were audacious to carry on manufacturing substandard, infringing medicinal product. Thus, the hon’ble Court held the Defendant liable and opined that they are a habitual offender with a set modus operandi of copying brands of other companies to make profits.

Although, the defendant submitted that he is willing to submit a decree and bring the present suit to an end.  But looking at continuous and habitual act of infringement by the Defendant, the Court decreed against the defendant, a whopping amount of 1.5 Cr as damages along with permanently restraining them from using the infringed product. The Court also directed the infringing party to manufacture the product in compliance of FDA regulations.

Such serious damages were ordered by the Hon’ble Court to deter the infringer from infringing other products. Such judgment showcases firstly, the seriousness of the Judiciary with respect to the protection of intellectual Property, and secondly,  the changing nature of punishment from mere penalty to punitive damages imposed upon the infringer as actual deterrent factor is when defendants have to participate in the proceedings and have to shell out money from their pockets.

Another prominent factor of this judgment was that the Court ruminated over the catastrophe that has hit Kerala recently, which has been categorized as L3 Level of Disaster by the National Disaster Management Guidelines. Therefore, the Defendant was directed to pay the damages to the Chief Minister’s Distress Relief Fund, with the consent of the Plaintiffs.

Such kind of damages decreed against defendants helps in maintaining transparency among public, thereby keeping faith among them  and  provides incentives to the entities in knocking the doors of the Judiciary for restoration and enforcement of IP rights.

Author: Pratistha Sinha, Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

Reference:

[1] Win-Medicare Pvt. Ltd. Vs. Galpha Laboratories Ltd. & Ors. reported in 2016 (65) PTC 506 (Del)

Case Analysis: Alice Corp. V. Cls Bank (134 S. Ct. 2347 (2014))

Introduction

The Patent Statute of the US defines patentable subject matter as ‘any new and useful process, machine, manufacture, or composition of matter’ and any improvements.[1] But patent cannot be granted for laws of nature, natural phenomena or abstract ideas. In most of the countries, software cannot be patented unless it forms an element within a hardware or a system. However in June 2014, the US Supreme Court’s ruling in the Alice Corp. v. CLS Bank sent software patents down the rabbit hole. Essentially, the Court ruled that ‘implementing the abstract idea’ on a computer does not make it patentable.[2]

Background of the Case

The patent at issue in the instant case disclosed a computer- implemented scheme for mitigating “settlement risk” i.e the risk that only one party to a financial transaction will pay what it owes, by using a third- party intermediary.[3] Alice alleged that CLS Bank International and CLS Services Ltd. began using similar technology in 2002 and therefore CLS Bank had infringed Alice’s patents. CLS Bank filed suit against Alice in 2007, seeking a declaratory judgment that the claims of Alice were invalid. Alice counterclaimed infringement.

The District Court held that all the claims of Alice are not eligible to be patented because they are directed to the abstract idea of “employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk”.[4] A divided panel of the United States Court of Appeals for the Federal Circuit reversed the order holding that it was not ‘manifestly evident’ that Alice’s claims are directed to an abstract idea. In 2013, the members of the Federal Circuit vacated that decision and set the case for argument en banc and again found the claims too abstract in a decision that had the judges produce seven different opinions. The panel as a whole could not agree on a single standard to determine whether a computer- implemented invention is patent eligible or an ineligible abstract idea.

Held and Analysis

The Supreme Court in several years preceding the Alice decision decided three cases with the same issue of whether a claimed invention was patent eligible. The Court, to reach the decision in Alice referred to these cases. In Bilski, the Court held that a method for hedging commodity prices were ineligible.[5]A five-justice majority held that the claimed method was not eligible to be patented because it was an abstract idea but declined to rule that all business methods were ineligible. The Bilski Court offered negligible guidance on the test of determining whether a patent claim covered an abstract idea or was “too abstract”. On the other hand, while there was a sharp disagreement over the best ground on which the case must be decided, and a very narrow judgment, no justice disagreed that Bilski sought impermissibly to patent an abstract idea.[6]

Next in the case of Mayo, the Court invalidated a patent on a medical diagnostic as it very defensively covered the underlying natural principle or law of nature on which the test was based.[7] The Court basically held that a process that focuses upon use of a natural law must also contain other elements or combination of elements, sometime referred to as an ‘inventive concept’, sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself; it had to be sufficiently creative that it added something of substance to the natural law.[8] The case from which Mayo took the principle was Flook, which declared the rule n denying patent eligibility to an implementation of a mathematical algorithm.[9] A year after Mayo came the Myriad case wherein the issue was whether what was said to be a “product of nature” could be patented. The narrow holding was that DNA was not subject to patenting but cDNA because it is derived by seemingly more complex means; it is deemed not a product already found in nature.[10] The central and unique feature of the legal analysis of the Myriad and the Mayo case was that conventional or trivial expedients do not hold any weight in the patent- eligibility analysis.

While interpreting §101, the Alice Court began: “We must distinguish between patentsthat claim the building blocks of human ingenuity and those that integrate the building blocks into something more, thereby transforming them into a patent- eligible invention”.[11]Relying on Mayo, the Court opined in the Alice Case that an abstract idea could not be patented just because it is implemented on a computer; the software implementation of an escrow arrangement was not eligible for patent because it is merely an implementation of an abstract idea. Further, in cases where the Court has to decide whether a claim is patent eligible or not, the ‘Mayo Framework’ should be used. The Court explained that in order to determine whether a patent claimed a patent-ineligible abstract idea or instead a potentially patentable practical implementation of an idea, a ‘two-step’ analysis must be applied.

In the first Mayo step, the court must determine if the patent claim at hand contains an abstract idea. If not, the claim is potentially patentable subject to other requirements. If this essential stands fulfilled, the court must proceed to the next step. In the second step analysis, the Court must determine whether the patent embodies the inventive concept. This basically means that the implementation of the idea must not be generic, conventional or obvious if it is to qualify for a patent.

In brief the Court gave the judgment that “merely requiring generic computer implementation fails to transform [an] abstract idea into a patent eligible invention; mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible matter”[12]. Also, stating an abstract idea by adding the words ‘apply it’ is not enough for patent eligibility. [13]

Conclusion

Admittedly, the Supreme Court did not offer the clearest guidance on when a patent claims merely an abstract idea, but it did gave in the guidance that should help to invalidate some of the more egregious software which seek patent protection. Further the Court suggested that claiming a well understood, routine and conventional feature at a higher level of generality does not suffice for an ‘inventive concept’ but the Court provided meager guidance over those somewhat extreme examples. Moreover, the Court did not ‘labor to delimit the precise contours of the ‘abstract ideas’ category. Due to absence of clear guidance from the Supreme court, lower courts have at times faced difficulties in determining what constitutes an abstract idea and what an ‘inventive concept’ would be. The Alice Case has taken a heavy toll on patents for computer related inventions, particularly software patents. There remain a lot of unexpired patents that were granted before the Supreme Court’s decision in Alice. Therefore before filing a lawsuit for infringement of a software patent it is pertinent to scrutinize the claims in the light of the Alice case.

Author: Stuti Sinha, Interns at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1] U.S. Code 35 §101.

[2] Daniel Nazer and Vera Ranieri, Bad Day for Bad Patents: Supreme Court Unanimously Strikes Down Abstract Software Patent, Electronic Frontier Foundation, June 19, 2014.

[3] Alice Corp. v. CLS Bank (134 S. Ct. 2347 (2014)).

[4] 768 F. Supp. 2d 221, 252 (DC 2011).

[5] Bilski v. Kappos, 561 U.S. 593 (2010).

[6] Richard H. Stern, Alice v CLS Bank: US Business Method and Software Patents marching towards oblivion,http://docs.law.gwu.edu/facweb/claw/Alice-EIPR.pdf

[7]Richard H. Stern, Bilski: A ‘Flipped’ Vote and then a Damp Squib (2011), https://www.researchgate.net/publication/318837752_Bilski_A_Flipped_Vote_and_then_a_Damp_Squib.

[8] Mayo v. Prometheus Labs 132 S.Ct.1289 (2012).

[9]Ibid at 1289 (citing Flook  437 U.S. 584).

[10] Association for Molecular Pathology v. Myriad Genetics Inc 133 S.Ct. 2107 (2013).

[11]Supra No. 3 at 2354 (2014).

[12]Ibid at 2358.

[13]Ibid at 2358.

Brand Protection: A Lesson from Louboutin

In todays’ consumerist day and age, the brand value of a company is key to its profits. It takes years to set up a unique brand that appeals to consumers and becomes a leader in its sector of the economy. Various factors such as intensive research and development, smart marketing and, publicity contribute to building a brand’s reputation and make it sought-after. A higher value of the brand also allows the company to charge more for its products.

The counterfeiting conundrum

However, today’s markets are also rife with counterfeit products that rip off the characteristics, designs and logos of high-end brands and sell them at extremely cheap rates. Most of these products come from China and Hong Kong. India is the 6th biggest origin destination for these products. According to a report published by the Organisation for Economic Cooperation and Development in April 2016, the estimated value of cross border trade in fakes is close to $461 billion a year or about 2.5% of global imports.This is harmful for the original brand’s revenue, reputation and relationship with consumers. Sometimes, even designer brands can copy local brands without any permission such as the dispute between Christian Dior and People Tree, an Indian brand. But, brands can protect themselves by seeking protection of Intellectual Property (“IP”) Rights. They can enforce the trademarks and copyrights associated with the products to make the infringers compensate for their wrongdoing.

 Louboutin: The Red trademark battle

The latest landmark trademark case was fought between famous designer shoe brand Louboutin and vanHaren, a Dutch company. The case was with respect to Louboutin’s demand that its signature red soles (Pantone 18-1663TP) be protected from all copycats. It involved European trademark law, specifically Article 3 of Directive 2008/95 and whether a trademark that consists of a colour applied to a shoe consists exclusively of a shape and thus cannot be protected as a registered mark or whether it was a position mark. A position mark is basically the specific way in which the mark is placed on the product.

The European Court of Justice finally ruled in favour of Louboutin. The ECJ stated that, “In that regard, it must be noted that, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product…..the mark at issue does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration.”

This ruling shows that Courts are refusing to let counterfeit products continue to thrive. Additionally, the affected brands are willing to take legal action or settle out-of-court (as done recently between People Tree and Christian Dior). But for this, it is necessary that companies are aware of the value of their brand and the importance of managing a strong IP portfolio to strengthen protection.

Author: Aparajita Kaul, Legal Intern,  at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at pratistha@iiprd.com.

Update on Recent Stakeholder Meeting Held On 03.08.2018 at IPO, Delhi

Few of the following issues with respect to various field of  Intellectual Property, were raised by the stakeholders :

I. Patents:

a) E-communication, websites and allied issues

  • FERs are not notified to the applicants leading to abandonment of application.
  • The Patent Office website do not provide for Sequence Listing uploading in txt. format and the inline module do not provide for uploading of formal drawing after the Indian Patent application has been filed. This website also do not provide for Foreign filing authorizations and do not facilitate the certified copy as well.

b) Processing Of Application , Hearing, Video-Conferencing

  • There is no clarification regarding what documents can be filed by a Foreign Entity for claiming Small Entity Status as per Patent Rules, Form-28.
  • Hearing notices are not received, thereby leading to abandonment of the application, in case the hearing is not attended.
  • Hearings are pending in respect of post grant matters and review petitions.

c) There is no mechanism to keep a check on the opposition filed against a patent/patent application, and also the same including Pre-grant opposition is not served to the Applicant.

 
d) Other Issues

  • IPOs should provide FAQs with regard to Start-up , NBA and TKDL and allied subject.
  • IPO must conduct user satisfaction survey on quality of examination.

The IPO considered these issues and is implementing the following change:

  1. IT Support Cell has been established to provide necessary help and resolve the problems relating electronic communication. This has helped IPO in the errors relating to e-communications to less than 1%.
  2. IPO will be implementing IPO2 version of patent database, which will make filing of patent application easy and efficient and would resolve other websites issues.
  3. IPO clarifies that a Foreign entity may submit the financial statement showing its annual turnover in order to claim Small Entity Status complying with the provisions stipulated under MSME Act 2006 of India
  4. IPO advices the applicant to ensure that none of the mails regarding IPO shall drop in the spam account.
  5. In order to settle the work load of IPO with respect to FER, amended cases and post-grant matters and for clearing the pendency of matters, the Controllers appoint hearings.
  6. IPO is under the process of developing a separate module for tracking and updating the proceedings related opposition.
  7. With regard to the FAQs faced by stakeholders from their clients, IPO welcomed to answer all the FAQs provided that the stakeholders shall submit a list of such FAQs.
  8. IPO is developing a separate window of the IPO website in order to facilitate user satisfaction survey on quality of examination.

 II. Trade Mark

a) Trade Mark Registry does not allow any amendment to user details defying to the directions given by Delhi HC through decision.

b) TMR do not exercise a uniform Practice in show cause hearings with regard to interpretation of law.

c) Video Conferencing in Trade Marks should be implemented.

d) Refusal orders are sent even after filing the required documents. TMR Chennai is not handling post-registration matters.

e) There is no up-gradation of records of TMR, which results in citing in the examination report, those marks that were registered but not renewed. The dead marks continue to remain in the records of Trade mark register.

f) Hearings in international matters are being held at Mumbai Trade Marks Registry only. However, Section 36C states that an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.

The steps taken by IPO with regard to the above raised issues:

  1. IPO clarified that Delhi high Court has directed to decide the amendment of user details on case to case basis and no other administrative directions can be issued in this regard. IPO confirms that the matters are refused only in case of insufficient supporting documents.
  2. Trade mark Registry is under the process of preparing a Module for the purpose of registered user.
  3. In order to bring consistency in the proceedings, All hearing officers are being provided with a regular basis training program.
  4. IPO is seriously considering to implement the use of Video Conferencing and thus, the same is under Trial in TMR.
  5. Appropriate action has been taken up for sorting any issues related to proceedings of the post registration matters.
  6. TMR has noted the concern regarding non-up-gradation of Trademark records and appropriate actions will be taken against it.
  7. TMR will be providing Video-conferencing facility in order to conduct the hearings of International matter at all branch office.

 III. DESIGNS

a) There are many technical issues regarding online filing of Designs application. Few of the problems are:

  • Application forms drafted using the online portal are non-editable, therefore, if any amendment has to be made, the whole application is to be drafted again.
  • The fee receipt issued for online applications do not show details regarding classification of articles.
  • The online portal of the Design Office do not provide any applications except certified copies.
  • The applications filed online sometimes are objected to submit original application form and representations, thereby, duplicating efforts and increasing timelines.
  • The online portal do not show any update regarding any amendments/assignments made in the design post registration.

The Indian Patent and Design office has noted the above issues and are in the process of updating the Module to resolve the issues relating to online filing of applications.

IV. COPYRIGHT

a) IPO do not have efficiency and transparency as the Copyright office does not timely acknowledge or respond to the applicant. In many cases, the copyright office asks the applicant to re-submit copyright work without providing any explanation for the same.

b) Copyright – Searchable data is not available

The steps taken by IPO with regard to the above raised issues:

  1. The Copyright office has taken various steps to reduce the pendency of applications, which has brought a positive change.
  2. The Copyright office website has started to display the application received on a monthly basis, in order to increase transparency and stakeholder’s participation and to make it easier for the applicant to keep a track on the status of the Application. This also helps in facilitating information to the stakeholders and thereby, providing them an opportunity to file an objection if any before the Registrar of Copyrights.
  3. Further, the communication regarding Discrepancy Letter and the Register of Copyrights (R.O.C) between the Copyright Office and the Applicants can be transmitted via emails registered on: http://www.copyright.gov.in.
  4. Copyright Office has also published the Practice and Procedure Manual for examination of Literary, Artistic, Musical, Sound Recording and Cinematograph Films.
  5. Preparation of database for past copyright register for search purpose is under consideration.

IP Awareness Session Conducted at KJS College, Mumbai

Growth of a nation is majorly driven by the youth. Specifically for a country like India, that has more than 50% of its population below the age of 25 years, it is crucial to have Intellectual Property (IP) Awareness in order to protect ingenious innovations. Khurana and Khurana, Advocates and IP Attorneys along with its sister concern, IIPRD has a vision to spread IP Awareness for which it is running various IP training programmes like Webinars, International Patent Drafting Competition, Training for Patent Agent Examination, Symposiums, and various Certificate Courses. Apart from these online initiatives, we are also committed to deliver IP sessions in various Institutes. Below are some exemplary moments from an IP Awareness Session taken by our key practitioners Mrs. Mita Sheikh and Mrs. Sharayu Naik at KJS College, Mumbai:

webinar3

webinar2

Some exemplary topics covered during the Session:

  • Importance of Innovations
  • Case studies highlighting revenue generation through Patents
  • Damages awarded in case of their Patent Infringement
  • Structured approach towards innovation
  • How to secure patent protection