Category Archives: News & Updates

Khurana & Khurana, Advocates and IP Attorney ranked as “Tier 2” for IPR services in IP Ranking List published by Asian Legal Business

Khurana & Khurana’s pursuit for excellence continues as it celebrated 10 glorious years of service in 2018. It has been acknowledged many a times for its quick and effective services so far. K&K has again made its mark as a tier two law firm for Trademark/Copyright and Patent in offshore as well, according to IP rank list as published by Asian Legal Business (ALB). (For more details click here)

Khurana & Khurana has been one of the law firms to help India protect its IPR by providing Patent and trademark portfolio services, which includes Patent filing, Patent prosecution, Patent opposition, Trademark filing, Trademark prosecution, Trade opposition, IP enforcement as well as litigation.  This full service firm has, further contributed in improving India’s Patentability environment through filing a number of Patent applications surpassing more than 1200 applications in 2017, both domestic as well as Conventional filings, in the country.

                                                   tier2_image1

Khurana and Khurana has also carved a niche for itself by successfully representing a diverse portfolio of clients, ranging from start-ups to fortune 500 companies. K&K is pacing swiftly towards filing more number of Trademark applications with each passing year as highlighted in the diagram given below:

                                                   tier2_image2

Khurana & Khurana has its presence across the globe as its has offices in various places in India and in other countries namely USA, Bangladesh, Myanmar, Nepal, Vietnam, Sri Lanka and Malaysia. Moreover, with its diligent and sincere work, Khurana and Khurana has been able to engage ClienIP Ranking May 2018ts from diverse section of the world.  The figure below shows the Geographical split of K&K’s Client base:

                         tier2_image3          tier2_image4

As Khurana and Khurana climbs the ladder to success, such recognition by ALB, infuses a new zeal and passion to scale new challenges. Khurana and Khurana is happy to acquire a firm position in the realm of Intellectual Property and strives to achieve greater heights!

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Impact of Aadhar Verdict

“This has been the longest hearing before the apex court, second only to the hearing in the Kesavananda Bharti case” – Attorney General K. K. Venugopal.”

End to an another landmark litigation, the Supreme Court of India on 26th September 2018 pronounced its judgment in a petition challenging the constitutional validity of Aadhar (Targeted Delivery of Financial and Other. Subsidies, Benefits and Services) Act, 2016 (“Aadhar”). The judgment was passed by the constitution bench comprising of 5 judges with 4:1 majority and a dissenting verdict of Justice Chandrachud. The Court held that Aadhar Act is not unconstitutional and it does not violate the privacy of an Individual. It removes the chances of duplicity and is a full proof of identity. Further it was held that Aadhar helps marginalized sections of the Society.

AFTER EFFECTS

Constitutional validity of Aadhar has been upheld but certain provisions have been erased and some will remain in changed form. Few important changes are:

  1. No longer mandatory to link Aadhar mobile sim cards or bank accounts.
  2. Relief from ‘harassment’ by banks and telecom companies.
  3. It is mandatory to link Aadhar with PAN for income tax purpose. The dissenting judgment of Justice Chandrachud had struck down Section 139AA of Income Tax Act which mandated linking of PAN with Aaadhar, was struck down but the majority decision has upheld Section 139AA.
  4. Aadhar linking is not mandatory for school admissions, private entities, digital wallets, eKYC, examination conducted by CBSE, UGC and NET.
  5. Aadhar is mandatory for availing government benefits and welfare schemes. This point has been severely criticized by human activists stating that it violates the fundamental right of food and basic necessities and poor people are hit the most, by this clause.
  6. Retention of Data for 5 years was found to be unconstitutional and retaining the data beyond the period of 6 months is impermissible.
  7. Parents consent is mandatory to enroll children under Aadhar scheme, who will have the choice of opting themselves out of the scheme, once they attain majority i.e. 18 years.
  8. Children cannot be denied benefits for lack of Aadhar cards.
  9. Section 47 of the Act relating to cognizance of the offense has been struck down, now Individuals can also file a case under the Aadhar Act.
  10. Section 33(2) of the Act has been struck down, which allowed identity and authentication data to be disclosed in the interest of national security on direction of an officer not below the rank of Joint Secretary to the Government of India
  11. Section 57 of the Act was held to be unconstitutional. Private companies cannot compulsorily demand Aadhar details of their customers.
  12. Court has directed the government to measures to ensure that illegal immigrants are not able to take benefit of Aadhar.

CONCERNS

Bypassing Rajya Sabha to pass the Aadhar Act as money bill, has come under severe criticism about the functioning of the government. Despite, the majority bench didn’t hold the Aadhar Act as unconstitutional. On the contrary, Justice Chandrachud has specifically held this act to be unconstitutional on this ground. Further, by striking down the Sections 33 and 57 of the Act, there is no doubt that right to privacy is an important factor but there is still a crowd over the fact as to what happens to the existing private details in the servers of the companies before the judgment. Data privacy issues arising with respect to Aadhar data has not been addressed. Not many have been satisfied with the verdict about Aadhar being mandatory for welfare schemes, in light of basic necessities such as ration being denied due to non-availability of Aadhar and several reports informed starvation deaths in Jharkhand, massive malnutrition and related deaths of children in Maharashtra, Madhya Pradesh, Chhattisgarh and tribal areas.

 

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

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

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.

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

 

IP Awareness Session at CDOT

Intellectual Property (IP) awareness facilitates an individual to protect his Intellectual Property Rights (IPR). It also helps to evaluate the quality of Invention on grounds of Obviousness and Novelty. Khurana and Khurana (K&K), along with IIPRD, has always believed in spreading IP awareness through its initiatives to make people IP literate. Recently, Mrs. Madhulika Kapoor, from Khurana and Khurana, has delivered an interactive session at the Centre for Development of Telematics (CDOT) where she provided an overview of Patent Searches. Significance of opting for a Patentability Search before filing a Patent Application, importance of different databases used for carrying these Patent Searches, and in-depth discussion on Validity/Invalidity Patent Search, Landscape Search, Freedom-To-Operate Search were some other exemplary topics covered during the session. Below is a snapshot captured during the session:

                           session_cdot

Crash Course For Cracking Patent Agent Examination (PAE) 2018

IIPRD, along with Khurana & Khurana, Advocates and IP Attorneys (K&K) has decided to play a supportive role in supporting the prospective candidates for patent agents in their pursuit for success in the upcoming Indian Patent Examination to be held on October 28th, 2018 by preparing the candidates exhaustively and comprehensively with regard to every single topic and infusing them with confidence required to achieve their dreams.

Any person who is authorised by law to deal with patent applications in order to facilitate inventors, can be regarded as patent agent. A patent agent can also be engaged in prevention of patent infringement and protection of patents[1]. He/ She may also provide with patentability opinions and play a vital role in preparation and filing of documents related to patent applications. Supporting inventors with completion and submission of patent related application paperwork, conducting prior art search, construction of legally enforceable claims with regards to inventor’s ownership of the invention, revision of rejected patent application and making a strategic decision for the optimum time frame for the maintenance of the application and when it would be suitable to abandon the application[2].

Last year, around 25000 applications were filed out which around 10000 patents were granted[3]. On carefully analysing the statement, if an application required 2 weeks for preparation for filing stage, with on an average 40 work weeks for a patent agent, this means that an agent can prepare around 20 applications a year. Further, as number of applications to be filed are bound to rise, there is a steady demand for patent agents.

However, the competition for the Examination is still intense and cut – throat owing to the gigantic and ever increasing population of the country. And this is where we step in, to transform prospective candidates into potential contenders, a cut above the crowd. We provide the candidates with a well experienced league of legends in the field of patent industry with decades of experience is just a away to clear out your path for victory. Leave no stone unturned! Do what is required!

This initiative comes with an earnest effort by IIPRD and its associates and leading sister Law Firm Khurana & Khurana, Advocates and IP Attorneys (K&K) to enable more & more candidates to transform themselves into patent agents with promising career benefits.

Contact details:

Bhumika
(M): +91-8920269831
(T): (120) 4296878 , 4909201 , 4516201
Email: course@iiprd.com

Click here to register.

References:

[1]https://www.iipta.com/who-is-a-patent-agent/

[2]https://www.investopedia.com/terms/p/patent-agent.asp

[3]https://patseer.com/2017/06/india-filing-trends-2016-2017/

Significance of Universities in Filing Patent Application

Universities and Institutes are considered to be the most important foundation for growth of any country. It is the place where most of the basic research is carried out, giving way to inventions. As Intellectual Property Rights (IPR)act as a shield to such invention from being misused by third parties, and help in commercialization of these inventions, it is highly recommended that such inventions be protected under the IP domain in order to guard owner’s interests in order to infuse development in respective field of invention.

Often times, since students are the ones who carry out research that may lead to inventions, it is imperative for them to get these inventions protected in order to commercialize the mas well as thwart misuse of the same by third parties. Moreover, there are various reasons as to why Academic Institutes or Universities should consider filing a Patent Application for protection of inventions that have been carried out in their campus.

 IP Division in University

IP policy in universities is an important toolfor encouraging generation, protection, and commercialization of IP in universities and research institutes. The policy provides a structure and frameworkthat can be used to promote generation, protection and commercialization of IP in Research and Technology organizations. Typically, an IP policy mainly focuses on benefit sharing and ownership of IPRs, strategies for commercialization and management of privately sponsored research, collaborative research, conflict of interest as well as other issues.

 Existence of IP policies in institutes and universities is a strong indicator of their commitment in promoting generation, protection and commercial exploitation of IPRs.[1]

In 2001, due to growing importance of IP institutional policies, WIPO published a booklet entitled Guidelines for developing IP Policies in African Universities and Research Organizations. While the publication title suggests that the guidelines are aimed at African institutions, the content is universally applicable and, as a result, the guidelines have since been used in several developing countries. Recently, a second edition was compiled and is currently awaiting publication entitled Choices in Developing IP Policies in Universities and Research Organizations. It addresses ten issues that senior managers of universities and research organizations may wish to consider while developing institutional IP policies.

Some countries have prepared model IP policies that universities and research organizations may adapt, depending on their mission, research culture and agenda. For example, the Nigerian Office for Technology Appropriation (NOTAP) has prepared a model IP policy, which it has made available to universities and research institutions in Nigeria. This has resulted in speeding up the process of developing IP.

In other words, IP divisions in Universities and Institutions help spread the awareness of importance of IPR, especially for filing patent application for an invention. Such awareness and advantages of Patent protection gives an incentive to members of Universities for more inventions, leading to greater skills. Thus, University, in the end produces high quality manpower that the world is chasing for.

Licensing

Unlike industrial scientists and engineers who generally are hired to invent and assign rights in their inventions to their employer without any residual rights to additional compensation, university personnel are in a different position. The prime focus of universities is to educate and, in some instances, to conduct technical research.[2] However, in case of any invention during the conduct of technical research, Universities must not lose an opportunity to file a Patent application and take benefits from it thereon. This helps the universities in investing more on R&D and helping them in overall development.

 Academic-Industrial Linkages

There are many instances where Universities collaborate with industries for innovating in a specific domain, which gives a lot of exposure to its faculties and students and help them gain a position in these industries, leading to a lot of acknowledgement of the respective Universities. This, in turns, encourages the entire Academic ecosystem to do more research leading to useful invention, leading the country in becoming the hub of research and development.

One such occasion where innovation ecosystem was built was for Drug discovery, in which recently about 45 MoUs were exchanged between Pharmaceutical industries and central institutes such as IITs, IISCs, NIOERs, IISc-B, NIFT NITs, RGIPT, RGNIYD& SPAs. It is steps like these that have led India to enjoy the position of leadership in the world’s pharmaceutical market in Generic medicines.  Much of the credit also goes to policy initiative in terms of Patent Act, 1970 which allowed process patents, enabling in transforming India from medicine importing country to exporting country and Private and Public skill and entrepreneurship of Pharma Industry.[3]

Further, It is observed that India has been increasingly getting involved in research and development, so much so that, various Multinational Corporations across the world has shifted their R&D base in India. This is a significant reason as to why Indian Universities should file for Patent applications as all of the above facts give incentives for the Universities to innovate more useful products that helps grow the society as well as the economy.

Government Policies Supporting the Filing of Patent Applications

The Government of India amended the Patent Act by introducing the following policies that gives incentives to academic institutions to protect their inventions under Patent law.

  • The act has provided a concession to small entities and individual in fees for filing applications. Under the Act, an individual is supposed to pay Rs. 1600/- and Small entities shall pay 4000/-, however other Legal Entity are obligated to pay Rs. 8000/- .Thus, giving approximately 50% relaxation to an individual and small entities.
  • Scheme for facilitating Intellectual Property Protection (SIPP) running on pilot basis till 31st March 2020, facilitating 80 % rebates to start-ups for filing Patent applications. They can also avail the special facility of expedited examination of their patent applications.
  • The Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India, has signed an Institutional agreement with Anna University to establish India’s second Technology and Innovation Support Center (TISC) at the Centre for Intellectual Property Rights (CIPR), Anna University, Chennai, under the World Intellectual Property Organization’s (WIPO) TISC program.[4]

Such reduction in filing fees for individuals, small entities and start-ups will help students to file patent application without any inconvenience. The objective of the aforesaid policies is to stimulate a dynamic, vibrant and balanced Intellectual Property Rights (IPRs) system in India to foster creativity and innovation, thereby promoting entrepreneurship and enhancing social, economic and cultural development

 Present Scenario

The data as presented below in Fig.1 and Fig.2 shows that the Indian universities have become more and more aware about the importance of IP over the last decade. The number of Patents filed by the various Indian Institutes of Technology for instance has increased from 91 in 2008-09 to 400 in 2016-17. IITs continue to top the rank list by filling the maximum number of applications in a year for the protection of their inventions within India, following which, Amity University and Indian Institute of Science score 2nd and 3rd rank. It is to be noted that Indian Institute of Science has shown remarkable growth in number of filing Patent applications in 2016-2017 as compared to the year 2008-2009. Further, Amity University recorded about more than 23% growth in the year 2012-2013. Moreover, CIPR has filed more than 185 Patents, 29 Trademarks, 39 Copyrights, 25 Industrial Design and has also assisted in filing 12 International Patent Applications.

                univversity_patent_1

                University_Patent_2

The process of liberalization, privatization and globalization which started in 1991 has gained momentum in recent times. This, in addition to the fact that technology is increasingly penetrating in all aspects of Indian society, has resulted in greater awareness of IPR among all institutions of India. The foremost among them have been the universities and research institutes.

However, this positive trend of greater awareness of IPR and high growth in number of patents being filed by Indian Universities have been somewhat limited to just the top universities of India. If India is to become a knowledge-based developed economy and society in the coming decades, the trend of greater number of patent filings has to permeate to all the Universities of India and not just remain at the top. Innovation has to be in the forefront of this process. The universities need to implement all the above mentioned steps in order to gain recognition and acknowledgment in the field of research and development and innovation by protecting them through patent law. The need of the hour is to equip our Universities enough, so that large numbers of them are able to engage themselves in good quality and innovative research, resulting in socially relevant and commercially viable inventions. Along with this, the Universities also need to ensure they are able to realize the commercial benefits of their invention by using the IPR regime.

Thus only when the recent trend as seen in the top Indian universities is further developed and replicated in other universities, will India truly realizes its goal of becoming innovative and knowledge-based developed economy and society.

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

References:

[1]http://www.wipo.int/edocs/pubdocs/en/intproperty/958/wipo_pub_958_3.pdf

[2]http://www.tms.org/pubs/journals/JOM/matters/matters-0301.html

[3]http://pib.nic.in/newsite/PrintRelease.aspx?relid=130224

[4]http://pib.nic.in/newsite/PrintRelease.aspx?relid=173318

 

Exclusive Webinar On Intellectual Property Issues And Portfolio Management

In today’s competitive global market, Intellectual Property (IP) plays a key role in a company’s expansion and success. As India aligns its policies to make itself more growth-friendly, it is essential to recognize innovation as a key aspect for accelerating economic development. Intellectual Property Rights (IPR) can aid a start-up entrepreneur in gaining key advantage and exclusivity over the other competitors. A company’s IP portfolio is an extremely valuable asset to attract investors and protect the business.

Recognising the increasing importance of IPR for budding entrepreneurs, Khurana&Khurana, along with IIPRD, bring to you a unique opportunity to learn from the absolute best in the field in a special Webinar on June 30, 2018 from 3:00 PM to 4:00 PM IST. It shall be conducted by Mr. Parvez Kudrolli, an esteemed Senior Associate and registered Patent Agent at Khurana & Khurana and IIPRD. He will holistically deal with the creation, management, protection and enforcement of IP Portfolios. His expertise in patents, consultancy, business development and Software related IPR ensure that every budding enterpriser will gain comprehensive awareness on contemporary IP issues. The attendees will also get the unique opportunity to clear any doubts they may have, post the Webinar.

Interested individuals can register here.