Author Archives: IIPRD

PCT Patent Prosecution Highway (PPH) Pilot between IPOS and INPI

[Image Source]
The PCT patent prosecution highway is a work-sharing initiative for providing accelerated patent prosecution in the national phase stage by sharing information between some patent offices. A new one-way PCT-PPH pilot program has been started between the Intellectual Property Office of Singapore (IPOS) and the National Institute of Industrial Property of Brazil (INPI). This pilot program is effective from May 1, 2020, for a period of 5 years. Under this program, the Applicant of Singapore national stage patent application can request PPH before the IPOS based on a positive written opinion of International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA), or a positive international preliminary report on patentability (IPRP), issued by INPI in its capacity as ISA/IPEA. The IPOS will treat the PPH request as a request for accelerated examination of a patent application and conduct the examination of the patent application in accordance with the Singapore Patents Act and Patents Rules

Further information is available here.

Filing Patent Applications in the Time of Pandemic: Importance of Provisional Applications

Current Scenario:

The world is going through a rough phase and COVID-19 has created a catastrophe in everyday lives. In these hard times, each and every industry is doing a bit to overturn the impacts caused by the spread of COVID- 19. This is evident from the rapid rise in donations starting from protective masks, sanitizers, ventilators and many other life saving drugs.

The governments along with the FMCG, Pharma and Medical devices companies are taking the centre stage in alleviating or eradicating the spread of the killer COVID-19. FMCGs are the frontline contenders with the hand wash / sanitizer systems, while the medical devices companies are focusing on the protection devices as well as the diagnostic systems. The pharma companies are mainly focusing their research for identifying the potential vaccine candidates and re-assessing the potency of the exiting anti-viral drugs that are previously tested for Ebola, SARS and HIV, for their potential use in COVID-19 treatment.

Opportunities:

However, the new pandemic has been a game-changer for many enterprises. Starting from small scale industries to large scale industries, have adapted to the current business environment, where we can see maximum number of new products being launched ranging from hand sanitizers, surgical masks and personal protective equipments, Sidha / Ayurveda products, as well as the tech apps / products for detection of the spread of COVID-19. One well known example is that the textile / fashion industry has adapted to the current situation and started producing protective aprons, face masks, etc.

Research institutions, Universities and Individual inventors are doing their fair bit for the prevention of COVD-19 Spread. While the research institutions and the Universities are highly engaged in the research for new chemical entities, diagnostic equipments including rapid test and diagnostic kits; the inventors are also coming-up with the traditional treatment products, sanitizing compositions, etc. for the prevention.

Importance of protecting the inventions:

Some-day or the other, there will be a cure for COVID-19 pandemic. However, the main impact made by this pandemic is the change in the lifestyle of the public, which is expected to last for a very long time.

In this unprecedented time, organizations / corporations and the inventors are mainly focusing on the research and the marketing of the products than filing patent applications. Innovations made during these times might become a biggest asset to the researches and prove to be valuable aftermath of the catastrophe. For any organization or a company or a researcher, patent applications will prove to be a savior in these times.

Patenting is not always a speedier process. It has its own limitations and timelines. However, protecting an invention may not always mean filing the protection complete invention but acquiring the priority of the invention i.e. filing the provisional application for the inventive concept at the conceptual stage itself. Filing a provisional application would not only provide us with a timeline of 12 months for coming up with the complete specification but might also help in reducing the cost of filing patent for one year i.e. abandoning the application in case of a prior-art, or exploring the commercial viability of the invention.

Other Intellectual Property Protection Mechanisms:

There has been an array budding inventors / companies with limited resources and are exploring their foray in the newer markets, like the companies currently involved in the manufacturing of face masks, personal protective equipments, cleaning or sanitizing products including hand sanitizers, diagnostic kits etc. Apart from the patent protection, Trademark protection and company registration are vital for the growth of the business and marketing of the recognizable products. This might legally protect the product from being used without the permission of the source company.

After we beat the pandemic, we will need these same companies to focus their attention on stimulating the economy and helping us bounce back. For some companies, this will mean utilizing the innovations that they created during the pandemic.

Today, a company’s ability to capitalize from its inventions is frequently tied to its patent portfolio. Filing a patent application is likely not at the top of most companies’ list of priorities right now, especially companies operating with limited resources. It’s a good idea for companies to seek counsel from the very beginning of the patent application process.

Although that may not seem feasible at the moment, there are certain relatively inexpensive steps that companies can take, even on their own if needed, to preserve potential patent rights, such as filing a provisional patent application. In this article, we answer three common questions relating to provisional applications.

Author: Govindhaswamy Srinivasan, a Principal Associate – Patents at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at support@ipandlegalfilings.com

References:

[1]http://www.hgf.com/media/1876810/IP-considerations-in-COVID-19-vaccine-development.pdf

[2]http://www.hgf.com/updates/news/2020/06/covid-19-licensing-challenges/

[3]https://ip.com/blog/the-ethics-of-patenting-coronavirus-cures/

[4]https://www.drm.com/resources/are-patent-and-trademark-deadlines-extended-due-to-covid-19

[5]https://www.worldtrademarkreview.com/brand-management/ip-offices-implement-measures-in-wake-of-coronavirus-crisis

[6]https://www.bananaip.com/ip-news-center/category/patents/

[7]https://www.bananaip.com/ip-news-center/india-advocates-trips-flexibility-at-the-virtual-wto-general-council-meeting-cnipa-publishes-first-patent-application-related-to-a-vaccine-for-covid-19-and-more-patent-related-news/

[8]https://timesofindia.indiatimes.com/blogs/subham-mohanty/5-industries-setting-the-new-trends-after-covid-19-outbreak/

[9]https://www.mckinsey.com/business-functions/risk/our-insights/covid-19-implications-for-business#

[10]https://www.finnegan.com/en/insights/articles/inherency-in-obviousnessa-worrying-trend.html

[11]https://www.abpi.org.uk/medicine-discovery/covid-19/what-are-pharmaceutical-companies-doing-to-tackle-the-disease/

Edge Computing: Past And Future

In the past decade, massive growth and increasing computing power of IoT devices has resulted in unprecedented volumes of data. Trends show that there will be a continuous growth of data volumes as 5G networks has increased its number of connected devices. Further there will be the need of efficient management of data. Edge computing initially started in 1990s, when Akamai launched its CDN with an idea to introduce server nodes at locations geographically closer to the end user with an aim to shed the load of Central Server.However, the patent filing boom was observed in the late 1990s when a few of the top giants like Alcatel, Lucent, Bell labs along with other niche players invested a good amount of resources in R&D to acquire patent rights on efficient data processing and quick transmission of data pertaining to edge computing networks.Since then, patent offices across the world have seen massive increase in patents related to edge computing technology.

Growth in, fast and efficient communication protocols,standards and application of edge servers,in a wide set of industry segments. has given rise to patent infringement in the technology segment. This decade, Edge computing domain has witnessed the highest number of patent litigation campaigns among all other technology segments. During the initial days of edge computing technology, a lot of patents, related to improvement in edge computing domain were filed,within a short span of time, therefore a lot of similar patents remained hidden from the search authorities during the prosecution of patent applications which subsequently resulted  in a huge set of unique and inventive, non-valuable patents in the edge computing technology space. The said patents have also given rise to patent infringement complaints, by Non-practicing entities,against key players like Apple, Google, Microsoft, and others that deal in products/services pertaining to edge computing.

In the last decade, edge computing technology has grown a lot, and is now being widely used in different industrial segments like Media &content distribution, Mobile communication, automotive, e-commerce etc. With the introduction of new age technologies such as 5G tech, connected cars, smart devices, the patent list is growing at a fast pace, covering different aspects of the edge computing technology ranging from resource allocation, resource management, data processing to security and power saving options. Our ICT Research team at K&K and IIPRD keeps an eye on the Edge computing technology segment and regularly evaluates the significance of technologies that are claimed in the new patents/ publications in the technology segment.

You can click here to download a copy of our recent report that briefly summarizes the vertical and horizontal growth in the edge computing systems. For detailed report on technology growth in Edge computing systems, write us at sanjay@iiprd.com.

Covid-19: Patent, Economy, Prophylaxis and Treatment

Everyone around the globe is suffering from the Covid-19 pandemic and several industries are trying to overcome the economic turmoil.There is a steep decline in product sales & product manufacturing segments, Covid-19 and worldwide lockdowns has severely affected R&D activities as well.However, few industries like the mask, infrared based thermometer, PPE Kits, online meeting tools, media streaming, non-contact-based systems, pharmaceuticals, and few others have witnessed growth in licensing activity, sale of patented product &technology. Furthermore,such industries have even seen a significant growth in patent filing and patent prosecution related activities. Such observation has been recorded by Patent Prosecution experts working in these industry sectors. Currently, the disputes concerning patents are at an all-time  low,however, Post the covid period  surge in infringement and patent litigation activities is expected in the above mentioned industrial segments in the  coming few months.

On the other hand, to curb the effect of Covid-19, academicians, universities, healthcare providers and companies across the globe are fueling their energies in search of a vaccine and drug candidate for prophylaxis and the treatment of COVID-19 disease. Several hundreds of clinical trials are underway to establish evidence around investigational drugs and to identify a suitable vaccine candidate. Currently, no pharmacologic therapies are available to treat COVID-19. A large number of clinical trials are ongoing to assess the suitability of several vaccine candidates such as synthetic chemical molecules, biological drugs, monoclonal antibodies, stem cells and plasma therapy etc. against the novel coronavirus treatment. In several cases, the old drugs are being repurposed to treat COVID19 patients. However, with no approved vaccine or treatment available for COVID-19, Moderna vaccine candidate and Gilead Sciences antiviral drug Remdesivir have shown a ray of hope. In this modern era of next generation technologies, we are able to develop multiple vaccine candidates in matter of few months, but the clinical efficacy, human safety testing and if approved, the mass production of vaccine are some of the hurdles which we need to tackle in order to develop a successful vaccine for the prophylaxic of COVID-19 pandemic.Our Pharmaceutical Research team at K&K has kept an eye on the developments related to Covid-19 vaccine and is continuously performing a detailed analysis of the ongoing clinical trials with respect to new drugs, treatment regimen and vaccine candidates pertaining to the Covid-19 pandemic. If you are interested in understanding the focus areas of the lead sponsors, herein below is the link to a recent report published by our Pharmaceutical Patent Research team, that gives an in-depth analysis of clinical trials, with relevant study-based material and treatment references. For ease of understanding, the report contains graphical representation of trends (study type, clinical trial stage, etc.) from the mined data of relevant clinical trials.

Click here to get a copy of the report and/or drop an email at sanjay@iiprd.com to receive updates on recent developments on Covid-19 vaccine directly from our Pharmaceutical Research team at K&K.

Recent Developments In Rubber Based Adhesive

Rubber based adhesives are adhesives made using rubber (both natural and synthetic, high molecular weight rubbers and elastomers) as their base material. Rubber based adhesives are generally used as a solvent-based solutions, latex, cements and pressure-sensitive tapes. Rubber based adhesive market was estimated to be USD 56.59 billion in 2018, and is now projected to reach USD 71.99 billion by 2023, at a CAGR of 4.93% between 2018 and 2023. The market for the rubber-based adhesives is driven by the growth of the automobile and the electronic industry. Around 30% of the total patents in the technical domain relate to inventions that are explicitly meant for electronics and automotive industry.

In the Asia-Pacific region, Chinas is most in demand as far as supply of adhesive tapes is concerned. In Europe, the demand of building and construction industry is fuelling the demand for adhesive tapes. Some of the key players operating in the global rubber based adhesive market include Swabs Tapes India Private Limited, MBK Tape Solutions, PPM Industries SPA, Godson Tapes Pvt. Limited, 3A Associates Incorporated, 3M Company, Tesa SE and Intertape Polymer Group, Inc.

Recently, our Patent Research Team at K&K and IIPRD performed a detailed analysis of patenting activity pertaining to rubber-based adhesives in order to understand the underlying technologies. A copy of detailed report containing graphical representation of patenting trends can be downloaded from here. The research and Development activity in the rubber based adhesive domain is evolving, and post 2010, rubber based adhesive industry has seen a significant rise in patent filing in various patent offices across the globe. In fact, our research shows, that more than 46% patents are still pending. Higher percentages of applications point to a new or growing market. Although Japan is the breeding ground of majority of inventions related to rubber based adhesives, few others countries, like Volgograd State Technical University in Russia has shown keen interest in this technology space and have filed a good count of patents related to both Natural rubber and Synthetic rubber based adhesives.

For updated copy or more detailed version of the report, please write us at Sanjay@iiprd.com.

Requirements For Filing PCT National Phase Patent Application In USPTO

When an inventor or legal representative or applicant decides to file a patent application in foreign countries, United States of America (USA) would be a first choice for filing due to the marked potential in various field as well as IP diligence. This article aims to provide the basic requirements for filing PCT national phase patent applications in the USA.The patent applications have to be filed with United States Patent and Trademark Office (USPTO). The basic requirements for filing PCT national phase patent applications in USPTO are as follows.

  • Timeline for PCT national phase filings
  • Documents Requirement for national phase filings
  • Information Disclosure Statement

Timeline for PCT national phase filings in USA

The inventor or legal representativeor Applicant has to fulfil the requirement of thirty months deadline for PCT national phase filing in USA. The thirty months deadline is calculated from the priority date of the corresponding PCT patent application. The US national phase patent application has to be filed within 30 months from the priority date of the corresponding PCT patent application. If the 30-month deadline is missed unintentionally, the national stage can be revived by filing necessary petition and fee within two months, however, it is advisable to file the PCT national phase patent application within 30 months deadline.

Documents Requirement for national phase filings in USA

The USA national phase patent application has to be filed in English since the official language of USA patent application is English. In case, the PCT patent application is filed in any other language, the English translation thereof must be provided. The English translation can be submitted with the USPTO after filing of national phase patent application and in response to an Official Notification that will specify the period of time allowed, usually two months from the date of the notice.

The PCT patent application enters the US national stage when the applicant has filed the documents and fees required by USPTO. List of documents required to obtain the date of US national phase filing are as follows:

1. Copy of the PCT patent application, unless previously communicated by the International Bureau;

2. Executed oath or declaration of the inventor; and

3. Executed power of attorney by applicant/inventor to an attorney or agent registered to practice before the USPTO.

Information Disclosure Statement

The applicant must file an Information Disclosure Statement (IDS) with USPTO containing any information that is material to the patentability of the invention. The information can be of any type, and includes, patents, applications, publications or other information. The duty to file the IDS continues up to a patent is issued or the application is abandoned. No government fee is required to be paid for the filing of IDS, if the IDS is filed within three months from the national phase entry in the US or before the first office action.

Examination of a PCT national phase patent application in the USA

There is no separate requirement for filing request for examination of US national phase patent application. The examination of US national phase patent application occurs simultaneously with filing of the US national phase patent application. USPTO has Patent Prosecution Highway for accelerated examination and the same can be requested while filing PCT national phase patent application.

About the autor: Mr. Dhakshina Moorthy, a legal practitioner at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

The Copyright Notice Requirement

A copyright notice is a notice of statutorily prescribed form, placed on copies or phone records of a work that informs the public of the underlying claim to copyright ownership in a published work. When a work is published under the authority of the copyright owner, a notice of copyright may be placed on all publicly distributed copies or phone records. The use of the notice is the responsibility of the copyright owner and does not require permission from, or registration with, the Copyright Office. However, the use of copyright notice is not mandatory. An author of a work owns the copyright to his or her work, simply by virtue of creating the work and the copyright protection of such work is not conditioned on displaying a notice or any such formalities.

A Copyright Notice generally contains the following elements that appear as a single continuous statement:

  • The symbol of Copyright (letter c in a circle) or the word “Copyright” or the abbreviation copr.
  • The year of first publication of the work.
  • The name of the owner of copyright, or an abbreviation by which the name can be recognized, or a generally known alternative designation of owner

Examples • © 1978 John Doe • Copyright 1980 John Doe • Copr. 1982 John Doe

Copyright notice hasn’t been a necessary requirement in published works in majority of the countries, courtesy of the Berne Convention on Copyright. In the United States, however, Copyright notice was mandatory for all work published before the 1st of March, 1989. In case of a mistake in the notice or omission of the notice, the published work lost copyright protection. The Copyright owner was required to place an effective notice on all publicly distributed “visually perceptible” copies. A visually perceptible copy is one that can be seen or read, either directly or with the aid of a machine.

However, since the 1st of March, 1989, after US signed on to the Berne Convention, Copyright notice was made optional and works created post this date need not necessarily provide copyright notice information for copyright protection. As per the “Circular 3- Copyright Notice” of the United States Copyright Office, providing a Copyright Notice is no more mandatory and is only optional. However, even though it is no longer legally required to use the copyright notice, affixing a Copyright Notice has its advantages and is generally recommended since it adds n extra layer of protection by making sure that anyone who views a work knows that the work is copyrighted and in the case of a published work, a notice may prevent a defendant in a copyright infringement action from attempting to limit his or her liability for damages or injunctive relief based on an innocent infringement defense. Using a copyright notice also carries the following benefits:

  • Notice makes potential users aware that copyright is claimed in the work.
  • In the case of a published work, a notice may prevent a defendant in a copyright infringement action from attempting to limit his or her liability for damages or injunctive relief based on an innocent infringement defense.
  • Notice identifies the copyright owner at the time the work was first published for parties seeking permission to use the work.
  • Notice identifies the year of first publication, which may be used to determine the term of copyright protection in the case of an anonymous work, a pseudonymous work, or a work made for hire.
  • Notice may prevent the work from becoming an orphan work by identifying the copyright owner and specifying the term of the copyright.

A copyright notice does not actually protect your work; the mere act of creating it does that. Instead, it acts as way to hang out your shingle and let the world know that your work exists, that you own it, and permission must be granted if someone wishes to use it. There is no one form or set standard of copyright notice and it is up to the owner of the work as to use any form of notice they wish to put, as long as the 3 elements are provided. In order to put a copyright notice, it is necessary to register the copyright and have ownership rights in the work. Copyright is the right of the author of the work or his/her assignees. There have been serious doubts regarding whose name would appear in the copyright notice, author or the owner. A “work for hire” is a work generated by an employee within the scope of his employment, and in that case, the employer is deemed to be the author and it owns the copyright. In case of a ‘work for hire’ arrangement, the ownership of the copyright would be with the Principal or Employer rather than with the author of the work. Hence, in such a circumstance, the former would be named in the copyright notice. (Jim Marshall Photography, LLC v. John Varvatos of California, 109 U.S.P.Q. 2d 1114) Unlike employees of the company, third party programmers and consultants are ordinarily presumed to own the copyrights in the programs that they create, even if another party paid for the development. A program created by a free-lance programmer may still be a work for hire, however, if there is a written agreement to that effect in which case the party commissioning the work owns the copyright. It is therefore important for you to engage consultants to create programs to ensure that a written agreement is signed by all parties that expressly provide that the program is a work for hire and is owned by your company.

The majority of the world does not require for a notice to be affixed with a copyright work to protect such work, and hence, there’s no real rule or format as to the contents of it. The important thing is to convey all of the information that others would expect from a copyright notice and the three elements mentioned above should relay it fine. However, it is also to bear in mind that the elements doesn’t have to be in the copyright notice itself, as long as the information is provided somewhere on the work.

Author: Sudhansu Sahoo, Legal Associate, at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at sudhanshu@khuranaandkhurana.com.

Know Your Tenancy Rights In The Time Of Force Majeure (Covid-19)

In exercise of the powers, conferred under section 10(2)(I) of the Disaster Management Act, the National Executive Committee, had issued an order on 29th March, 2020 urging State / Union Territory Governments and Authorities to implement lockdown measures. This was primarily passed as a large movement of migrant workers was taking place in several parts of the country. The order clearly stated that

a. Where ever the workers, including migrants, are living in rented accommodation, the landlords of those properties shall not demand payment of rent for a period of one month.

b. If any Landlord is forcing labourers and students to vacate their premises will be liable for action under the act

The order clearly mentioned that District Magistrate / Deputy Commissioner and Senior Superintendent of Police / Superintendent of Police / Deputy Commissioner of Police will be personally liable for implementation of the said guidelines in the order.

Delhi and several parts of Bengal and Maharashtra witnessed a mass exodus of labourers. A majority of the labourers were migrant workers. It was an utter failure of implementation of the order by the aforestated authorities.

They failed to urge property owners in the city not to force tenants, especially migrant workers to pay their monthly rent during the lockdown. The truth shall never resurface but the very fact that migrants left their homes in such cities was also due to the fact, that greedy landlords demanded rents and provided no relief as mandated by the Government. In India, the poor are often forced to fend for survival. I am not being a cynic, there were several such instances where both students and labourers benefitted out of the said order.

However, the question is, what about the rights of the ones which were forced to vacate their residents and left to fend for themselves. Even the Apex Court refused to entertain a plea seeking direction to the Centre to ensure compliance with the MHA order directing landlords to neither ask students and labourers to vacate the premises nor to seek rent for a month during the COVID-19 lockdown. A bench headed by Justice Ashok Bhushan, which was hearing the matter through video-conferencing, dismissed the plea and said the apex court cannot implement the orders of the government.

It is not the first time the Supreme Court has shown such utter disregard to a National Cause. The petitioners, advocate Pawan Prakash Pathak and A K Pandey, had sought action against the alleged “arbitrary and unlawful action” of landlords demanding rent from students and labourers during the COVID-19 lockdown despite a government order to the contrary. However, the Apex Court showed no inclination to their cause.

However, the Delhi High Court was generous enough in the case of Ramanand & Ors vs Dr Girish Soni & Anr to shed some light on applications raising various issues relating to suspension of payment of rent by tenants owing to the COVID-19 lockdown crisis and the legal questions surrounding the same.

The issues discussed in the judgment related to the large-scale implications of Covid -19 on human life. It discussed the disruption of the various contractual relationships and jural relationships between parties. Most importantly it discussed whether the lockdown would entitle tenants to claim waiver or exemption from payment of rent or suspension of rent.

The High Court held that there can be no standard rule that can be prescribed to address these cases, however, it stated that, some broad parameters can be kept under consideration, in order to determine the manner in which the issues that arise can be resolved.

The facts of the case have been omitted as the same bear little relevance to the analysis of this article. What is important is the segregation and classification by the Hon’ble court which shall help either a tenant or a land lord to answer the queries cropping in its mind.

To begin with the Hon’ble High Court held that the relationship between a Landlord and Tenant, a Lessor and Lessee and a Licensor and Licensee can be in multifarious forms. These relations are primarily governed either by contracts or by law. In the realm of contracts, the respective rights and obligations of the parties would be determined by the terms and conditions of the contract itself.

Contracts of tenancy and leases could be of different kinds including-

  • Oral tenancies with a month to month payment of rent;
  • Short term tenancy agreements with a monthly rent payable;
  • Long term leases with force majeure clauses;
  • Lease agreements which are structured as revenue sharing agreements and;
  • Lease agreements which are in the nature of monthly payments as a percentage of the sales turnover.

The court held that even though the above list is not exhaustive, the question of waiver, suspension or any remission in the rental payments would operate differently for each category of agreements.

“Where there is a contract, whether there is a force majeure clause or any other condition that could permit waiver or suspension of the agreed monthly payment, would be governed by the contractual terms. If, however, there is no contract at all or if there is no specific force majeure clause, then the issues would have to be determined on the basis of the applicable law.”

In circumstances such as the outbreak of a pandemic, like the current COVID-19 outbreak, the grounds on which the tenants/lessees or other similarly situated parties could seek waiver or non-payment of the monthly amounts, under contracts which have a force majeure clause would be governed by Section 32 of the Indian Contract Act, 1872 (hereinafter, “ICA”).

Thus, in agreements providing for a force majeure clause, the Court would examine the same in the light of Section 32. The said clause could be differently worded in different contracts, as there is no standard draft, application or interpretation. The fundamental principle would be that if the contract contains a clause providing for some sort of waiver or suspension of rent, only then the tenant could claim the same.

The judgement held further held that in the absence of contracts or contractual stipulations the provisions of the Transfer of Property Act, 1882 (hereinafter, “TPA”) would govern tenancies and leases. As per the TPA, the doctrine of force majeure is recognised in Section 108(B)(e) of the TPA. Section 108(B)(l) also enumerates the `Rights and Liabilities’ of the lessee.

As per the judgment based on several cases dealing with the term “substantially and permanently unfit” the court concluded that if the leased premises is rendered substantially and permanently unfit for the purpose for which it was let, the lessee has the option to avoid the lease. Unless the lessee so avoids the lease, he cannot avoid his obligation contained in clause (l) of Section 108, which states that “the lessee is bound to pay or tender, at the proper time and place, the premium or rent to the lessor or his agent in this behalf;”.

Thus, for a lessee to seek protection under sub-section 108(B)(e), there has to be complete destruction of the property, which is permanent in nature due to the force majeure event. Until and unless there is a complete destruction of the property, Section 108(B)(e) of the TPA cannot be invoked.

The Hon’ble Court concluded that in view of the above settled legal position, temporary non-use of premises due to the lockdown which was announced due to the COVID-19 outbreak cannot be construed as rendering the lease void under Section 108(B)(e) of the TPA. The tenant cannot also avoid payment of rent in view of Section 108(B)(l).

Lastly, whether the suspension of rent ought to be granted or not would depend upon the facts and circumstances. In relation to some contracts which are not classic tenancy or lease agreements, where the premises is occupied and a monthly pre-determined amount is paid purely as `Rent’ or `Lease amount’, the manner in which pandemics, such as COVID-19, can play out would depend upon the nature of the contract. In contracts where there is a profit-sharing arrangement or an arrangement for monthly payment on the basis of sales turnover, the tenant/lessee may be entitled to seek waiver/suspension, strictly in terms of the clauseSuch cases would purely be governed by the terms of the contract itself, and the tenant’s claim could be that there were no sales and no profits and thus the monthly payment is not liable to be madeThus, the entitlement of the client in such a situation is not governed by any overriding force majeure event but by the consequence of the said event, being that there were no sales or profits.

Conclusions:
(i) In light of the above legal position, the Tenants’ prayer for suspension of rent or a Landlords demand for rent being justified will depend upon the factors whether there is a lease agreement whereby section 32 of the ICA.

(ii) Second whether the tenant has urged the tenancy to be void under section 108 of the TPA.

(iii) Lastly, the Tenants’ plea for extension of the doctrine of suspension of rent to cases which are covered by lockdown due to COVID-19 such that protection is provided  under any executive order(s): There are cases where the central and state governments may have, from time to time, given protection to some classes of tenants such as migrants, labourers, students, etc. These include Order No. 40-3/2020-DM-I (A) dated 29th March, 2020 issued by the Ministry of Home Affairs (MHA), Government of India and Order No. F/02/07/2020/S.1/PT. File/81 dated 22nd April, 2020 and Order No. 122-A F/02/07/2020/S.I/9 dated 29th March, 2020 both issued by the Delhi Disaster Management Authority (DDMA), Government of NCT of Delhi.

Author: Vibhor Gupta, Senior Associate, at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at vibhor@khuranaandkhurana.com.

Brief Note On SPDI

In India there is no such specific laws for protection of Data , the privacy and protection of Data are governed by the IT Act “Information Technology (Reasonable Security Practices and Procedures and Sensitive Personal Data or Information) Rules, 2011

The Data is broadly divided into 2 categories:

  • Personal Data
  • Sensitive Personal Data.

As per the It Act Data is defined as representation of information, knowledge, facts, concepts or instruction which are being prepared or have been prepared in a formularized manner or is intended to be processed or have been processed in a computer system or computer network and may be any form or stored internally in the memory of the computer.

Sensitive personal data includes information like Passwords, Bank Account details, Credit/debit card details, Present and past health records, Sexual orientation & Biometric data

Apart from the IT Act 2000 the Indian Constitution also protects individual’s right to life and personal liberty under Article 21 and under Article 19(1)(a)  it provides freedom of speech and expression which means that the person has to express himself. The interpretation for Article 19(1)(a) and Article 21 is that the both Articles says that right to privacy is the fundamental right.

In the Supreme court judgment of Kharak Singh vs The State Of U. P. & Others[1] it as stated by majority that right to privacy is a fundamental right but there are certain restrictions on the basis of compelling public interest.

Another Supreme Court case “R. Rajagopal alias R.R. Gopal and Another Vs.State of Tamil Nadu and Others[2]” It was held  that the petitioners have a right to publish what they allege to be the life story/autobiography of Auto Shankar insofar as it appears from the public records, even without his consent or authorization. But if they go beyond that and publish his life story, they may be invading his right to privacy. The Constitution exhaustively enumerates the permissible grounds of restriction on the freedom of expression in Article 19(2); it would be quite difficult for courts to add privacy as one more ground for imposing reasonable restriction.

And the most recent judgment of by the Supreme Court on Privacy is Justice K. S. Puttaswamy v Union of India[3] this case was decided by the majority judges. The constitutional bench held that right to privacy is a fundamental right but having some restrictions.

In this case it was asked whether the Indian Constitution even has a fundamental right to privacy, since it is not explicitly stated.  The nine-judge bench said that Indians do have this fundamental right, and that Aadhaar would have to be tested against it.

The data protection is important because there are various data of individual which are online and should not be automatically available to individual. The protection of Data is important to prevent the misuse of information.

The privacy and data protection are connected, if the personal information of any individual is shared without his/her consent will lead to violation of privacy.

The Law which covers the principle of privacy and data protection is the Information Technology Act

The IT Rules 2011 governs the personal data and the Sensitive personal Data or information. That under Section 43-A of the IT Act it is stated that  the compensation for negligence in implementing and maintaining ‘reasonable security practices and procedures’ in relation to ‘sensitive personal data or information’ (“SPDI”),  and Section 72-A of the IT Act mandates punishment for disclosure of ‘personal information’ in breach of lawful contract or without the information provider’s consent.

As per the definition given by the IT Rules 2011,

 “Personal information has been defined under the Rules as “any information that relates to a natural person, which either directly or indirectly, in combination with other information available or likely to be available with a body corporate, is capable of identifying such person”

Sensitive personal data exists as the concept of sensitive personal data or information under the Rules. Rule 3 specifies that the following types of data or information shall be considered as personal and sensitive:

  • Passwords
  • Bank Account details
  • Credit/debit card details
  • Present and past health records
  • Sexual orientation
  • Biometric data

The Information Technology (Reasonable Security Practices and Procedures and Sensitive Personal Data or Information) Rules, 2011

These rules are applicable to body corporate or any person located in India and rules lay out specific provisions related to SPDI. In India currently this is the most detailed provisions for protection of SPDI.

As there is Privacy Bill is still pending to become law and that bill covers all the concepts of personal data, Sensitive Personal Data and includes new category of Data known as critical Personal Data. But for now the IT Rules governs the protection of the same.

Information Provider 

Any person who provides information to the body corporate is known as the provider of information. The information provider has certain rights, that the information which is collected by the body corporate will only be collected after the consent of the information provider, the provider will have right to withdrew the consent and can abstain for  giving consent and such withdrawal should be in writing to the body corporate.

Collection & Disclosure 

The data is collected by the body corporate only after the consent of the individual and such SPDI should be used for lawful purpose only, and there can be instances where the information provider should be given an opportunity to provide alternative information instead of SPDI

It is mandatory for the body corporate to take reasonable steps to protect the information. Further the body corporate is not allowed publishing any sensitive personal data or information. But there are certain exceptions to this. Two exceptions are:

  • When there is contract between the body corporate and the information provider to disclose such information.
  • for any legal obligation

Information provider should be allowed to amend or review the SPDI at any point of time for the information which is provided.

Transfer of SPDI

The SDPI can be transferred by the body corporate, but before transferring the information the t body corporate should check that the other side is having same or equal quality of data protection which is with the body corporate according to the rules stated. Further the information can be shared with the government agencies under the law to obtain information.

Disclosure to Third Party

For transferring the information of the information provider to the third party apart from the government agencies the body corporate should ask for the permission of the same. The body corporate can only provide information by them if it is prior mentioned in the contract.

Privacy Policy

It is mandatory for the corporate body to provide privacy policy in which it should be written  very clear that what type of information is collected ,the purpose for collection such information should be clear, details should be given for disclosure of sensitive personal information to third party, required precaution must be taken by the organization to protect data.

Grievance Officer

The Rules mandate that the body corporate should appoint a grievance officer to address the complaint and the contact details of the grievance officer must be available on the website of the body corporate.

Difference between the Draft bill and the SPDI Rules

  • SPDI rules apply to the body corporate and the individual located in India, whereas the bill apply to the government private entities incorporated in India and incorporated outside India.
  • The SPDI can be processed only after the consent of the information provider, whereas according to the bill along with consent, functions of the state, compliance under law or order of court, prescribed emergencies or any other purpose as specified by the Authority.
  • According to the Rules the data provider has right to withdrew consent and can abstain from giving consent. As per the bill the onus of the personal data will be on the data collector and not the data provider and that the data provider have right to access the data and right to forgotten data.
  • In the rules there are no such provisions as to where the data is to be kept or stored within the territory of India, whereas as per the bill the data needs to be stored within the territory of India.
  • That according to the Rules the data can be transferred to the third party provided the third party is having same level of data protection. And for the bill it allows the cross border transfer of Personal Data and Sensitive Personal Data where (i) transfer of data is according to standard contractual clauses or intra-group schemes that have been approved by the Authority; or (ii) the Central Government in consultation with the Authority has prescribed a country or section within a country or a particular international organization where such transfers are permissible based on the adequacy of the data protection framework in such country; or (iii) a particular transfer is approved by the Authority on grounds of necessity. Along with (i) and (ii) mentioned above, the data provider’s consent will be required to transfer the Personal Data and Sensitive Personal Data.
  • As per the bill there will be separate authority for taking the applications for data protection.

Data privacy is the basic human right and there is a need of stringent law to govern it. It is important to have data protection law so that there is proper process and regulation of data, protection of rights of individual, so that there is enforcement of rules against unauthorized access and penalties if someone goes against the policies.

Author: Aishani Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] 1963 AIR 1295, 1964 SCR (1) 332

[2] (1994) 6 SCC 632.

[3] WP (C) 494/2012

Supreme Court Stays Controller General of Patents, Designs and Trademarks Guideline Dated 18.05.2020 and 20.05.2020

The Delhi High Court, by virtue of the order dated 21st May 2020 in the case of Intellectual Property Attorney Association (IPAA) and Anr vs The Controller General of Patents, Designs and Trade Marks and Anr. the Plaintiff seeked to quash the Public Notice dated 18.05.2020 passed by the Respondent, and thereby restrain them from acting on it, and further, sought direction from the Respondent No. 1 to issue a Clarificatory Notice for all IP statuses, in compliance of the Order passed by the Supreme Court on 23.03.2020 in Suo Moto, Writ Petition (Civil) No. 3/2020.

The Petitioner has placed reliance upon the order given by the Supreme Court on 23.3.2020, which was directed keeping in view the current pandemic, that the period of limitations in all proceedings, irrespective of the limitation prescribed under the General Laws and Special Laws, whether condonable or not, shall stand extended, with effect from 15.03.2020, and last until further orders passed by the Supreme Court.

The Petitioner claims that in contradiction, the Respondent passed a new guideline dated 04.05.2020, which starts the limitation period from 25th March 2020 and extends the limitation period only until 18.05.2020, i.e. one day after the expiry if the current Lockdown period.

The Petitioner contends that as per the Supreme Court’s Orders:

1. The protection period of limitation under general and special laws is triggered from the 15.03.2020 and not the 25.03.2020

2. The fixture of the cut-off date as 18.05.2020 for the completion of various act/proceedings, filings, payment of fees, etc. in the matter of any IP litigation is both against the Supreme Court’s order dated 23.03.2020 and also a burden on litigants as well as their advocates.

3. Merely because a skeletal staff is now working in various IP offices, under the administrative control of the Respondent, it cannot lea to a conclusion that the lockdown has ended, and hence by not extending that timelines expiring on 18.05.2020 and thereafter, the Respondent has put the Litigants and Attorneys in a jeopardy by forcing them to move out of their houses and file opposition/counter statements/evidences etc. at the IP offices in order to avoid the application, opposition, rectifications being abandoned. Even the extension of limitation between 15.03.2020 and 17.05.2020 to any outer timeline of 01.06.2020 is placing enormous burden on the stakeholder, as the window is too narrow.

The Counsel for the Respondent, in his defence submits that the petitions (without fee) under Rule 6 (6) of the Patent Rules have been provisioned through e-filing mode and it is also to be notified that delay in transmitting or re-submitting documents to the Patent Office may be condoned/timeline be extended by the Controller General on a Petition made in that respect.

The Court held that:

1. No Court, Tribunal or any authority can act in contradiction to the Order of the Supreme Court dated 23.03.2020, which has been passed in exercise of the Supreme Court’s powers under Article 141 and 142 of the Constitution.

2. Under Article 144 of the Constitution, all authorities, whether civil or judicial, located within the territory of India, are required to act in accordance to the Orders passed by the Supreme Court of India.

Therefore, in conclusion, via Oder dated 21.05.2020 the Court held that the best course forward would be to suspend operations of the public notice dated 18.05.2020 and 20.05.2020, as well as directed the Respondents to act in accordance to the Supreme Court notice dated 23.03.2020. Hence, the Respondent No. 1 was directed to file and affidavit within a period of two weeks, in response to the present application. The matter is next listed on 17.06.2020.

References:

[1] https://www.iiprd.com/wp-content/uploads/2020/05/Order-21-May-2020.pdf