Enzo Biochem Inc. v. Applera Corp. – A case pertaining to Doctrine of Equivalents

On August 02, 2017, the United States Court of Appealsfor the Federal Circuit ruled in favor of Applera Corp.and Tropix Inc.in the matter of Enzo Biochem Inc., Enzo Life Sciences Inc., Yale University v. Applera Corp., Tropix Inc. The Court affirmed that the district court accurately interpreted proper construction of claims in U.S. Patent No.5,449,767 (“the’767 patent”) and correctly analyzed Enzo’s doctrine of equivalents argument. In over thirteen years of litigation between the parties, the Court has considered this present infringement action on three separate occasions.

Background

Technology as disclosed in the ‘767 patent pertains to use of nucleotide probes to detect presence of a particular DNA or RNA sequence in a sample or to identify anotherwise unknown DNA sequence. According to the ’767 patent, many procedures employed in biomedical research and recombinant DNA technology rely on use of radioactive labels such as isotopes of hydrogen, phosphorus, carbon, oriodine. The ’767patent also notes serious limitations and drawbacks pertaining to use of radioactive materials that include, elaborate safety precautions, expensive use and purchase, and short shelf-life. As an alternative to use of radioactive labels, the’767 patent elaborates on a series of novel nucleotide derivatives that contain biotin, iminobiotin, lipoic acid,and other determinants attached covalently to pyrimidine or purine ring. Further, the ’767 patent asserts that the use of modified detection approach provides detection capacities equal to or greater than procedures which utilize radio isotopes, and also overcomes other limitations and drawbacks pertaining to use of radioactive labels.

The disputed languageof claim 1 involves following limitation:

“wherein A comprises at least three carbon atoms and represents atleast one component of a signaling moiety capable ofproducing a detectable signal . . . .”

Procedural History

In 2004, Enzo filed a suitag ainst Applera alleging infringement of six patentsincluding the ’767 patent. After multiple years of litigation in 2012, an appeal to the federal court regarding invalidity issues decided on summary judgment, Enzo I, 599 F.3d 1325 (Fed.Cir.2010). The jury found Applera infringed the claims at issue and awarded $48.6million in damages. In appeal, Applera argued that the district court erred in its claim construction because claims of the ’767 patent only cover indirect detection and alternatively, if the claims cover direct detection, they are invalid for lack of written description andlack of enablement. The Federal Court agreed with Applera and reversed the district court’s claim construction, Enzo II, 780 F.3d 1149, 1150 (Fed. Cir. 2015). The Court concluded that the inventors were claiming only indirect detection and thus, held that “the district court erred in construingthe disputed claims of the patent-in-suit to cover bothdirect and indirect detection”. The Court then remanded the case to the district court to determine whether accused product infringes under proper claim construction. The district court agreed with Applera and rejected doctrine of equivalents argument raised by Enzo. Hence, Enzo Appealed.

Opinion of the Court

Firstly, the Court discussed scope of Enzo II and concluded that the district court correctly interpreted Enzo II. According to the Court, the district court rightly referred to specification of the ’767 patent and opined that specification does not support inclusion of direct detection.

Secondly, the Court discussed doctrine of equivalents. According to Enzo, Applera infringes claims under doctrine of equivalents and the district court “misconstrued” its expert declaration and improperly drew inferences in favor of Applera, rather than Enzo. Further, Enzo asserted that scope of equivalents focused on a particular subset of direct detection.

According to the Court, the district court rightly explained that the patent “describes its method of indirect detection as a superior means of detection as compared to direct detection, with ‘detection capacities equal to or greater than products which utilize’ direct detection”. The Court explained that “the specification provides additional support that claim 1 covers only indirect detection”.

The Court relied on Dolly, Inc. v. Spalding & Evenflo Cos., 16 F.3d 394, 400 (Fed. Cir. 1994), according to which “the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims” and noted that the same principle applies in the present case. “Including direct detection as an equivalent of indirect detection would render meaningless the claim language on which decision in Enzo II was based”. Thus, direct detection cannot be an equivalent of indirect detection in relation to these patent claims.

Conclusion

The doctrine of equivalents is generally considered when a product or process does not literally infringe a patented invention but the product or process contains elements identical or equivalent to each claimed element of the patented invention. Further, an analysis of role played by each element in context of function, way, and result of the claimed element and the product or process is required. In the present case, the court excluded direct detection from the scope of claims by referring to specification of the patent application even when the claims expressly did not exclude direct detection. Thus, the present case is an instance of difficulties pertaining to analysis of doctrine of equivalents and indicates proving doctrine of equivalents as unfeasible.

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CORPORATE INSOLVENCY RESOLUTION PROCESS (CIRP) OF JAYPEE INFRATECH: IMPLICATION ON WISHTOWN & JAYPEE AMAN HOUSING PROJECT – CLAIM SUBMISSION BEFORE AUGUST 24, 2017

  1. Introduction

On August 9, 2017, the Allahabad Bench of National Company Law Tribunal (“NCLT”) admitted[1] the insolvency application of IDBI Bank against Jaypee Infratech Ltd. under Section 7 of the Insolvency and Bankruptcy Code, 2016[2] (“IBC”). On June 13, 2017, the Reserve Bank of India (“RBI”) issued a press release[3] whereby it identified 12 accounts which represented 25% of the gross bad loans in the banking system that would be eligible for immediate reference for bankruptcy proceedings. The said criterion for referring accounts for resolution under IBC was identification of total outstanding amount greater than ₹5000 crore, with 60% or more classified as non-performing by banks as of March 31, 2016.

Although RBI did not disclose the identity of said 12 accounts, Jaypee Group, along with Essar Steel, Bhushan Steel and Lanco Group, is considered to be among the said identified accounts. The said application of IDBI, a government owned financial services company, against Jaypee Infratech was in respect of default of an amount of ₹526 crore. Jaypee Infratech Ltd. is the construction arm of the Jaypee Group and was responsible for the construction of the Yamuna Expressway connecting Noida to Agra.

  1. Wishtown and Jaypee Aman Housing Projects

Jaypee Infratech had constructed the Wishtown Housing Project in Sector 128, Noida and Jaypee Aman Housing Project in Sector 151, Noida, with a promise of delivery by 2012-13. However, the aforesaid projects have not been completed and possession has also not been given to the flat owners. These projects were built on land given to Jaypee by Noida Authority in return for the construction of the Yamuna Expressway. Subsequently, Jaypee Infratech had taken loans from financial institutions including IDBI Bank for the construction and completion of the said projects. Flat owners are apprehensive that in the event of liquidation secured creditors such as IDBI would get preference in repayment thereby leaving flat owners with no possibility of refund of the amount paid. Moreover, it is speculated that the amount received from the sale of assets of Jaypee Infratech might not be sufficient to complete said projects and deliver possession to the flat owners.

  1. Public Announcement

In accordance with Section 13 of the IBC, the NCLT made a public announcement[4] with regard to initiation of CIRP of Jaypee Infratech and appointment of Mr. Anuj Jain, Chartered Accountant, BSRR and Co. as the Interim Resolution Professional (“IRP”) who shall be vested with the management of the affairs of Jaypee Infratech. It is pertinent to note that NCLT has also ordered a moratorium prohibiting institution of fresh suits or continuation of any legal proceedings against Jaypee Infratech in any court, tribunal and/or arbitration panel. Therefore, all proceedings of flat owners pending in consumer courts/any other proceedings pertaining to the non-delivery of possession/incompletion of the housing project has been effectively stayed till the date of approval of resolution plan by NCLT or passing of liquidation order. It is also to be noted that the CIRP is to be completed within a period of 180 days (extendable by 90 days) from the date of insolvency commencement, that is, August 9, 2017.

  1. Proof of Claims

Under the IBC, after the initiation of CIRP, the public announcement calls for submission of proof of claims against corporate debtor (Jaypee Infratech) from financial creditors, operational creditors and employees and workmen. It is pertinent to note that on August 16, 2017, the Insolvency and Bankruptcy Board of India (“IBBI”) notified[5] the IBBI (Insolvency Resolution Process for Corporate Persons) (Amendment) Regulations, 2017 whereby inserting Regulation 9A, titled “Claims by other Creditors” and in effect, has introduced a new class of creditors under the IBC, that is, those creditors who does not fall under the ambit of financial or operational creditors. Under the IBC, CIRP can be initiated by financial creditor, operational creditor and also, corporate debtor itself. Although, the amendment does not indicate that CIRP can be initiated by any ‘other creditor’. This amendment is a welcome move since it recognizes that there could be situations when the claim is legitimate but cannot be classified as either financial or operational, as in the case of flat owners of Wishtown and Jaypee Aman.

The amended regulation has introduced Form F and flat owners have been directed to submit said Form F to the IRP by August 24, 2017. Form F is available here http://jaypeeinfratech.com/communication/2017/6-Form-F-Other-than-Financial-Creditors-and-Operational-Creditors.pdf

The above named amendment has specified that the following documents are required to establish the claim of these ‘other creditors’:

  • documentary evidence demanding satisfaction of the claim (Example: Allotment letter, communications from Jaypee);
  • bank statements of the creditor showing non-satisfaction of claim (Example: EMI Monthly Instalments);
  • order of court or tribunal that has adjudicated upon non-satisfaction of claim, if any (Example: orders of consumer courts).

As per press release dated August 18, 2017, (available here http://jaypeeinfratech.com/communication/2017/Press-Release-dated-18-August2017.pdf), the IRP has specified that no claim shall be disqualified for the reason of submission of incorrect form.

It is also pertinent to note that Regulation 12(2) of IBBI Regulations allows a creditor who has failed to submit proof of claims before last date mentioned in the public announcement to submit such proof at any time before approval of resolution plan by committee of creditors. As explained hereinbefore, Regulation 9A has recognised the flat owners as a separate distinct class of creditors and hence, it may be argued that proof of claims by flat owners may be submitted even after the aforesaid date. However, in order to be cautious, flat owners should adhere to such aforesaid date and as instructed by the IRP in aforesaid press release, may submit only additional information in respect of the claim after the deadline.

  1. Conclusion

It is pertinent to note that the resolution plan, to be finalized within 180 days of insolvency commencement date, has to be approved by 75% majority of committee of creditors. Under the IBC, all financial creditors are constituted into the said committee. It would be pertinent in public interest to allow said flat owners to have adequate representation in the committee of creditors and for their claims to be treated at par with those of financial creditors such as IDBI Bank and other financial institutions. Section 16(5) of IBC specifies that the term of the IRP shall not exceed 30 days from date of appointment, thereby in this case tenure of IRP will be from August 9, 2017 till September 8, 2017. Moreover, Regulation 17 of IBBI Regulations mandates the IRP to constitute committee of creditors before expiry of aforesaid 30 days and that first meeting of said committee shall be convened within 7 days of constitution. In the first meeting, the committee, by 75% majority, decides whether to appoint IRP as resolution professional and in the event it does not, it must recommend a resolution professional to NCLT.

It is hoped that all the claims of the flat owners are verified and collated in such a way so as to ensure that their interests are protected. It is to be seen whether the government takes any tangible step to ensure that the claims of flat owners are treated at par with those of the financial/operational creditors.

Author: Pratik Das, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys and can be reached at info@khuranaandkhurana.com

Reference:

[1] Order available at http://nclt.c2k.in/OtherNCLT/interim_orders/allahabad/09.08.2017/1.pdf

[2] Available at http://ibbi.gov.in/Law/IBC%202016.pdf

[3]Available at https://www.rbi.org.in/scripts/BS_PressReleaseDisplay.aspx?prid=40743

[4] Available at http://jaypeeinfratech.com/communication/2017/2-Public-Announcement-EN.pdf

[5] Available at http://www.ibbi.gov.in/CIRP_Amendment.pdf

United States district court upholds the validity of two Horizon Pharma patents covering VIMOVO®

Horizon Pharma plc, an Irish specialty biopharmaceutical company, on 27 June 2017, reported that the United States district court for the district of New Jersey upheld the validity of two Horizon Pharma patents covering VIMOVO®, a pain relief treatment for arthritis patients, and that the ANDA applicants viz. Lupin Limited, Dr. Reddy’s Laboratories and Mylan Inc. would infringe at least one of the two patents with their proposed generic version of VIMOVO®.

What is VIMOVO®?

            VIMOVO® is a fixed dose combination of naproxen, a nonsteroidal anti-inflammatory drug (NSAID), and esomeprazole magnesium, a proton pump inhibitor (PPI). VIMOVO is used to relieve signs and symptoms of osteoarthritis, rheumatoid arthritis, and ankylosing spondylitis and to decrease the risk of developing stomach (gastric) ulcers in people who are at risk of developing gastric ulcers with NSAIDs.

            The two Horizon Pharma patents which cover VIMOVO® and have now been upheld as valid by the US district court are:

  1. US6926907B2 – expires in February 2023. The US’907 patent claims a pharmaceutical composition in unit dosage form comprising therapeutically effective amounts of an acid inhibitor and a non-steroidal anti-inflammatory drug (NSAID), which unit dosage form provides for coordinated release of the acid inhibitor and the NSAID.
  2. US8557285B2 – expires in May 2022. The US’285 patent claims a pharmaceutical composition in unit dosage form comprising therapeutically effective amounts of: (a) esomeprazole, wherein at least a portion of said esomeprazole is not surrounded by an enteric coating; and (b) naproxen surrounded by a coating that inhibits its release from said unit dosage form unless said dosage form is in a medium with a pH of 3.5 or higher; wherein said unit dosage form provides for release of said esomeprazole such that upon introduction of said unit dosage form into a medium, at least a portion of said esomeprazole is released regardless of the pH of the medium.

            On April 21, 2011, July 25, 2011, and June 28, 2013, Horizon Pharma filed patent infringement lawsuits at the New Jersey District Court against Lupin Limited, Dr. Reddy’s Laboratories and Mylan Inc., seeking adjudication for patent infringement by these companies of one or more claims of the US‘907 and US’285 Patents. The infringement lawsuit came after these companies filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration (FDA) seeking regulatory approval to market a generic version of VIMOVO before the expiration of the US‘907 patent in February 2023 and the US’285 patent in May 2022. At trial, the ANDA applicants alleged that the claims of the US‘907 and US’285 patents, listed in the Orange Book for VIMOVO were invalid.

            The announcement from Horizon Pharma came on the same day the U.S. district court for the district of New Jersey ruled in favor of Horizon Pharma and upheld the validity and enforceability of the patents at issue. Horizon Pharma says the outcome of the infringement lawsuit will prevent the launch of generic VIMOVO, which is being developed by Indian drug makers Lupin Limited and Dr. Reddy’s Laboratories as well as American generic drug maker Mylan Inc., in the United States.

TAKEDA PHARMACEUTICAL’S PATENT ON CANCER DRUG VELCADE® UPHELD BY THE US COURT OF APPEALS FOR THE FEDERAL CIRCUIT

On July 17, 2017, the United States Court of Appeals for the Federal Circuit ruled that the U.S. Patent No. 6,713,446 (“the ‘446 patent”) covering Takeda Pharmaceutical’s cancer drug Velcade® is valid and enforceable. The appellate court decision overturned an earlier 2015 decision from a US District Court which ruled the ‘446 patent was invalid as the compound it covered was the result of an obvious process. The lawsuit came on the heels of ANDA submissions by generic companies, including Sandoz Inc, Accord Healthcare Inc, and Actavis LLC, to the FDA for a generic version of Velcade® prior to the expiration of the ‘446 patent in 2022.

VELCADE®:

Velcade® (bortezomib) is approved for the treatment of people with multiple myeloma (a cancer of the plasma cells). Velcade® is also approved for the treatment of people with mantle cell lymphoma (a cancer of the lymph nodes). The drug generated U.S. sales of $1.13 billion in 2016.

In 2003, the Food and Drug Administration (“FDA”) granted “accelerated approval” to New Drug Application No. 21-602 for VELCADE® for Injection, for the treatment by intravenous administration of patients with multiple myeloma who have received at least two prior therapies and have demonstrated disease progression on the last therapy. VELCADE® for Injection was subsequently approved in 2005 for treatment by intravenous administration of patients with multiple myeloma who had received at least one prior therapy; in 2006 for treatment by intravenous administration of patients with mantle cell lymphoma who had failed at least one prior therapy; in 2008 for frontline treatment by intravenous administration of patients with multiple myeloma; in 2012 for subcutaneous administration; and in 2014 for treatment of adult patients with multiple myeloma who had previously responded to VELCADE® for Injection therapy and relapsed at least six months following completion of prior VELCADE® for Injection treatment.

The ‘446 patent has been listed in connection with VELCADE® for Injection in the FDA’s Orange Book.

 

US District Court ruling related to VELCADE® patent:

On August 2, 2012, November 19, 2012, and December 21, 2012, Millennium Pharmaceuticals Inc filed patent infringement lawsuits in the United States District Court for the Delaware against Sandoz Inc, Accord Healthcare Inc, and Actavis LLC (collectively, “defendants”) respectively, alleging that the ANDA applications filed by the defendants infringe on claims 20, 31, 49, and 53 of the ‘446 patent. The defendants argued, and the District Court agreed, that asserted claims 20, 31, 49, and 53 of the ‘446 Patent were invalid as obvious.

Millennium Pharmaceuticals Inc, the Takeda Oncology Company, is the exclusive licensee of the ‘446 patent which covers a D-mannitol ester of bortezomib, the active ingredient in Velcade®. This active ingredient is claimed in claim 20 of the ‘446 patent:

[Claim 20] The lyophilized compound D-mannitol N-(2-pyrazine)carbonyl-L-phenylalanine-L-leucine boronate.

Claims 31, 49, and 53 of the ‘446 patent recite method of preparing the D-mannitol ester of bortezomib via lyophilization, a lyophilized cake comprising the D-mannitol ester of bortezomib, and reconstitution of the lyophilized mixture with a pharmaceutically acceptable carrier, respectively.

[Claim 31] The method of claim 23, wherein the compound of formula (1) is D-mannitol N-(2-pyrazine)carbonyl-L-phenylalanine-L-leucine boronate.

[Claim 49] A lyophilized cake comprising the compound of claim 20.

[Claim 53] The method of claim 31 further comprising (c) reconstituting the lyophilized mixture with a pharmaceutically-acceptable carrier.

Bortezomib and its esters were already described and claimed in U.S. Patent No. 5,780,454 (“the ‘454 patent”). The ‘454 patent also identified bortezomib as a very potent, promising lead candidate with the highest in-vivo activity of all the compounds disclosed in the ‘454 patent. The ‘454 patent was considered as the closest prior art document by the defendants as well as the district court.

At trial, the defendants predominately argued that the asserted claims were obvious because the ‘446 patent claims the inherent result of an obvious process-namely, that freeze-drying bortezomib with mannitol produces an ester. Specifically, the defendants argued that lyophilization is a standard formulation option and that one skilled in the art would have chosen lyophilization process in order to stabilize bortezomib. In response, Millennium Pharmaceuticals argued that a person of ordinary skill would avoid lyophilization in developing a formulation involving bortezomib because bortezomib was known to be unstable even in the dry state as a freestanding solid compound. Millennium Pharmaceuticals also argued that a person of ordinary skill would not have expected a lyophilized mannitol ester of bortezomib to provide dramatic improvements in stability, solubility and dissolution as compared to bortezomib. The district court however agreed with the defendants that lyophilization was well-known in the field of formulation and often utilized when a liquid formulation provided limited success, and that the decision to attempt a lyophilized formulation of bortezomib was routine application of a well-known problem-solving strategy. The district court also concluded that mannitol was among the “finite number of identified, predictable solutions” to freeze-drying investigational anti-cancer drugs like bortezomib, and one skilled in the art would have found it obvious to choose mannitol for the lyophilization process. As such, the asserted claims of the ‘446 patent were found invalid under 35 U.S.C. § 103.

 

US Appeals Court reverses the District Court’s obviousness determination:

The US Court of Appeals for the Federal Circuit first analyzed the District Court’s obviousness determination by framing the relevant question as whether a person of ordinary skill, seeking to remedy the known instability and insolubility and to produce an efficacious formulation of bortezomib, would obviously produce the claimed and previously unknown D-mannitol ester of bortezomib. In its analysis, the Federal Circuit found error in the District Court’s obviousness determination because (1) there is no teaching or suggestion in the prior art references to produce the claimed mannitol ester, (2) no reference or combination of references provide a reason to make the claimed mannitol ester of bortezomib, and (3) no reference shows or suggests ester formation at freeze-drying conditions, or that any such ester might solve the problems of instability and insolubility of the free acid while dissociating rapidly in the bloodstream.

The Federal Circuit agreed with the defendants that lyophilization was generally known in formulating pharmaceutical products, bulking agents were known for use in lyophilization, and mannitol was a known bulking agent. However, the Federal Circuit explained that for the compound to be obvious, the prior art must teach or suggest that lyophilization of bortezomib in the presence of mannitol would produce a chemical reaction and form a new chemical compound (i.e. mannitol ester of bortezomib), or provide a reason to make this specific new chemical compound, or describe that this new compound would solve the previously intractable problems of bortezomib formulation. The Federal Circuit also stated that “[a]lthough mannitol was a known bulking agent, and lyophilization was a known method of drug formulation, nothing on the record teaches or suggests that a person of ordinary skill should have used mannitol as part of a synthetic reaction to make an ester through lyophilization.”

With regard to the District Court’s conclusion concerning the unexpected results and commercial success of the lyophilized mannitol ester of bortezomib, the Federal Circuit made the following ruling:

“We conclude that the district court should have treated bortezomib as the closest prior art compound, and acknowledged the unrebutted evidence that the D-mannitol ester of bortezomib exhibited unexpected results compared with bortezomib, including unexpectedly superior stability, solubility, and dissolution.”

 

“The district court clearly erred in attributing Velcade®’s commercial success to bortezomib alone, as bortezomib is not a viable commercial product and had been denied FDA approval because of its instability. The D-mannitol ester was responsible for Velcade®’s successful results, for the D-mannitol ester is necessary to provide the required solubility and stability.”

Accordingly, the Federal Circuit reversed the District Court’s ruling that the asserted claims of the ‘446 patent are invalid due to obviousness. The appellate court’s ruling will help Takeda to put off the risk of generic competition until the ‘446 patent expires in 2

Compulsory licensing

Compulsory licenses are sovereign state authorizations which enable a third party to make, use, or sell a patented product without the consent of the patent holder. Provisions pertaining to compulsory licensing are provided for under both the Indian Patent Act, 1970, as well as the international legal agreement between all the member nations of WTO – the TRIPS. In India, Chapter XVI of the Indian Patent Act, 1970 deals with compulsory licensing while the conditions which need to be fulfilled for the grant of a compulsory license are laid down under Sections 84 and 92 of the Act.

In accordance with Section 84(1) of the Indian Patent Act, 1970, after three years from the grant of a patent, any interested person may make an application for a compulsory license on the grounds that the patented invention:

(a) Does not satisfy the reasonable requirements of the public;

(b) Is not available to the public at a reasonably affordable price; and

(c) Is not worked in the territory of India.

In addition to the aforementioned grounds, according to Section 92 of the Act, compulsory licenses can also be issued suo motu by the Controller of Patents pursuant to a notification issued by the Central Government if there is either a “national emergency” or “extreme urgency” or in cases of “public non-commercial use”. The said section enables the Government of India to notify to the public of such extreme circumstances, whereupon, any person interested can apply for a compulsory license and the Controller in such case may grant to the applicant a license over the patent on such terms and conditions as he thinks fit.

The patentee, however, has the right to be heard in the compulsory licensing application process.

India’s first ever compulsory license was granted by the Patent Office on March 9, 2012, to Hyderabad-based Natco Pharma for the production of generic version of Bayer’s Nexavar, an anti-cancer agent used in the treatment of liver and kidney cancer. It was established in the Bayer vs Natco case that only 2% of the cancer patient population had an easy access to the drug and that the drug was being sold by Bayer at an exorbitant price of 2.8 lakh INR for a month’s treatment[1]. Further, on the ground that Nexavar was being imported within the territory of India, the Indian Patent Office issued a compulsory license to Natco Pharma, which assured that the tablets would be sold for Rs. 8,880/- per month. It was settled that 6% of the net sales of the drug would be paid to Bayer by Natco Pharma as royalty.

In the second case of Compulsory licensing in India, the Controller rejected BDR Pharmaceuticals’ application for compulsory license (made on March 4, 2013) for BMS cancer drug, SPRYCEL[2]. The Controller rejected the compulsory license application made by BDR for stating that BDR has failed to make prima facie case for the making of an order under section 87 of the Act. Controller in the said case observed that BDR Pharmaceuticals had not made any credible attempt to procure a voluntary license from the Patent holder and the applicant has also not acquired the ability to work the invention to the public advantage.

In the most recent case of compulsory licensing in India, Lee Pharma, a Hyderabad based Indian pharma company, filed an application for compulsory license (dated 29.06.2015) for the patent covering AstraZeneca’s diabetes management drug Saxagliptin. In order to make a prima facie case, Lee Pharma strived to show that their negotiations for a voluntary license with the patent owner were not rewarding as they did not receive any response from the Patent owner within a reasonable period. The grounds alleged by Lee Pharma were that:

  • the patentee has failed to meet the reasonable requirements of the public,
  • the patented invention is not available to the public at a reasonably affordable price, and
  • the patented invention is not worked in India.

However, all the three grounds of Lee Pharma were rejected by the Controller General and the Compulsory license application was refused[3]. The application was rejected on the basis that Lee Pharma failed to demonstrate what the reasonable requirement of the public was with respect to Saxagliptin and further failed to demonstrate the comparative requirement of the drug Saxagliptin vis-a-vis other drugs which are also DPP-4 inhibitors. Further, Controller General held that all the DPP-4 inhibitors were in the same price bracket and the allegation that Saxagliptin alone was being sold at an unaffordable price was unjustified. The Controller General also stated that Lee Pharma failed to show the exact number of patients being prescribed the patented drug and how many of them were unable to obtain it due to its non-availability and consequently it was difficult to hold whether manufacturing in India was necessary or not.

Considering the last two compulsory license cases in India, it is clear that the provisions of compulsory license cannot be misemployed to diminish the rights of the patent holders and that the basic jurisprudence governing the subject of compulsory license lies in balancing the conflicting interest of the patentee’s exclusive rights and making the invention available at an affordable price to third parties in case of need.

About the author: Tanu Goyal, Patent Associate at IIPRD and can be reached at: tanu@khuranaandkhurana.com

[1] http://thefirm.moneycontrol.com/story_page.php?autono=1132015

[2]https://iiprd.wordpress.com/2013/11/13/indian-patent-office-rejects-compulsory-licensing-application-bdr-pharmaceuticals-pvt-ltd-vs-bristol-myers-squibb/

[3] http://economictimes.indiatimes.com/industry/healthcare/biotech/pharmaceuticals/india-rejects-compulsory-license-application-of-lee-pharma-against-astrazenecas-saxagliptin/articleshow/50652935.cms

GST IMPLICATION ON INTELLECTUAL PROPERTY

GST IMPLICATION ON INTELLECTUAL PROPERTY

  1. Once upon a time . . .

Before the Goods and Services Tax (GST) regime,the Union government exclusively used to levy tax on transactions relating to Intellectual Property (IP) rightsif such were classified as services[1] (under Service Tax, Chapter V, Finance Act, 1994), while the State governments used to levy tax on IP rights if the transaction involving such were classified as sale/deemed[2] sale of goods[3] (under State Sales Tax/State Value Added Tax or Central Sales Tax which was collected and retained by the originating State). The aforesaid indirect tax system required interpretation on the classification of the transaction.This often led to double taxation when the same transaction was subjected to both sales tax and service tax due to the industry being cautious so as to avoid penalties of avoiding tax.

 

  1. Growing Stronger Together

With the advent of GST, the need to classify transactions involving IP as either relating to rendering of service or sale/deemed sale of goods was absolved. This is due to GST being concurrent[4] in naturewith the Centre and the States simultaneously and seperately levying it on a common base or transaction irrespective of its classification. It is pertinent to note that GST would be applicable on supply of goods or services[5] as against the previous concept of tax on the manufacture of goods or on sale of goods or on provision of services.

The GST to be levied for intra-state supply of goods and services by the Centre would be called Central GST (CGST) and that to be levied by the States [including Union territories with legislature] would be called State GST (SGST). On inter-state supply of goods and services, Integrated GST (IGST) is to be collected by the Centre.[6] IGST would also be applicable on imports.[7] GST is a destination based consumption tax, that is, the tax is received by the state in which the goods or services are consumed and not by the state in which such goods are manufactured.

 

  1. Rates in relation to Intellectual Property

Section 9 of the CGST, 2017 [corresponding section 9 of SGST] states that the CGST (or SGST as the case may be) shall be levied on the transaction value[8] or the price actually paid or payable for the said supply of goods and/or services and at such rate to be notified on the recommendations of the GST Council. Subsequently, the rates have been notified as follows[9]:

Under Sl. No. 17, Heading 9973-

  • Temporary or permanent transfer or permitting the use or enjoyment of Intellectual Property (IP) right in respect of goods other than Information Technology software at the rate of 12% (6% CGST and 6% SGST).
  • Temporary or permanent transfer or permitting the use or enjoyment of Intellectual Property (IP) right in respect of Information Technology software at the rate of 18% (9% CGST and 9% SGST).

“Information Technology software” means[10] any representation of instructions, data, sound or image, including source code and object code, recorded in a machine readable form, and capable of being manipulated or providing interactivity to a user, by means of a computer or an automatic data processing machine or any other device or equipment.

  • Transfer of the right to use any goods for any purpose (whether or not for a specified period) for cash, deferred payment or other valuable consideration at the same rate of central tax as on supply of like goods involving transfer of title in goods.
  • Any transfer of right in goods or of undivided share in goods without the transfer of title thereof at the same rate of central tax as on supply of like goods involving transfer of title in goods.
  1. Brief Analysis

It is pertinent to note that under the GST regime, permanent transfer/sale of a particular intellectual property right would be considered as supply of service and a 12% tax (6% CGST and 6% SGST) would be levied on the transaction price provided such IPR is not in respect of software. Temporary transfer or permission to use or enjoy (license or assignment) any IPR would also be taxable at the same rate provided it is not relating to IT software.

Earlier, permanent transfer was not considered as declared service and hence not exigible under service tax. It is also to be noted that earlier the exclusivity test (whether transfer/assignment/license is exclusive to the transferee) as laid down in the BSNL judgment[11] was the standard for determining whether the transfer would amount tosale (and hence, subject to sales tax) or license (and hence, subject to service tax). Under the GST it is immaterial for the purpose of taxation whether the said transfer is exclusive or for that matter temporary since it will be subjected to the same concurrent tax.

It is also pertinent to note that sale or licensing of intellectual property pertaining to software would be charged 18% tax (9% CGST and 9% SGST). Even though GST has done away with the need to classify transactions in respect of goods and services, the Centre has in a way reversed the TCS judgment[12] which had held that transactions relating to shrink wrapped software (software bound with product) was to be considered as transfer of the right to use such software goods (and hence deemed sale of goods[13]) while the same is to be treated as service due to the notification.[14]

It may also be noted that the Constitution (One Hundred and First Amendment) Act, 2016 [by which the GST was introduced in the constitutional framework] did not amend Article 366(29A)(d) which specifies that the transfer of the right to use any goods is to be deemed as a sale of those goods. However with the aforesaid notification[15], the Centre while notifying the taxation rate, has in a way classified the transfer of the right to use any goods to be treated as service.

  1. Reverse Charge on Copyright

GST is to be levied on the person supplying the goods and/or services. However, Section 9(3) of the CGST Act, 2017 states that the Centre may specify certain categories of supply of goods andservices on which the tax is to be paid on reverse charge basis by the recipient of the supply. Therefore, as per notification[16], the tax on the supply of services by an author, music composer, photographer, artist, etc. by way of transfer or permitting the use or enjoyment of a copyright relating to original literary, dramatic, musical or artistic works to a publisher, music company, producer etc., shall be borne by the said publisher, music company or producer.

  1. “Registered Brand Name” in the context of GST

It is to be noted that the supply of certain goods, such as chena or paneer, natural honey, wheat, rice and other cereals, pulses, flour of cereals and pulses, other than those packed in unit container and bearing a registered brand name, is exempted from CGST[17]. Supply of such goods, when put up in unit container and bearing a registered brand name attracts 2.5% CGST rate[18].

Subsequently, doubts were being raised as to the meaning of “registered brand name”. On July 5, 2017, the Finance Ministry issued a press release[19] clarifying the same. The statement noted that “registered brand name” has been defined in the notifications[20] and the same would mean brand name or trade name which is registered under the Trade Marks Act, 1999. In this regard, registered trade mark means a trade mark which is actually on the register and remaining in force[21].

Thus, unless the brand name or trade name is actually on the Register of Trade Marks and is in force under the Trade Marks Act, 1999, GST rate of 5% (2.5% CGST and 2.5% SGST) will not be applicable on the supply of such goods.[22] It is pertinent to note that this may lead up to a situation wherein a particular company selling, say, cereals in unit containers bearing a brand name but such brand name is not on the Trade Mark Register and hence not in force, would be exempted from GST. Such situation would also extend to new players in the cereals (or other exempted goods) industry who have applied for trademarks and whose marks have not been registered. The relevant question posited by this clarification is that whether smaller players would now be discouraged from filing for trademark registration due to availing tax exemption which in turn would reduce their costs? This might go against the objective of the National IPR Policy 2016, which encourages commercialization of IP at the grass-root level. Still considering the importance of Intellectual Property, such manufacturers need to understand the gravity of the matter that non registering of Trade Mark is not favourable to them considering the market for their products which is ultimately identified by their brand name and hence they cannot afford to not protect their brand name only to save some minor percent of GST. Thus, importance/benefits of Trade Mark Registration when compared to the applicable GST for products under Trade Mark which is not on register, it is indeed crystal clear that manufacturers should protect their IP which in all circumstances should be of paramount interest which help reap profits by leaps and bounds.

  1. Conclusion

With the introduction of GST at nascent stage, it is still to be seen as to how the implementation is carried forward. At the very least, the GST has brought about a positive change by doing away with the need to classify transactions as either relating to goods or services since all transactions would now be concurrently levied tax by both the Centre and the States (provided transaction is intra-state supply; inter-state to be levied exclusively by Centre). The GST has also subsumed numerous central, state and municipal taxes and by doing so, will ensure that indirect tax rates and structures are common across the country thereby increasing certainty and ease of doing business.

About the Author: Pratik Das, Legal Intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at abhijeet@khuranaandkhurana.com

References :

[1] Intellectual Property Service meant the temporary transfer or permission to use or enjoy any intellectual property right.

[2] Article 366 (29A) (d) of the Constitution specifies that the transfer of the right to use any goods to be deemed as a sale of those goods.

[3] Supreme Court in Tata Consultancy Services v. State of Andhra Pradesh,  (2005) 1 SCC 308 held that the term “goods” under Article 366 (12) of the Constitution includes intangible/incorporeal property which is capable of abstraction, consumption and use, and which can be transmitted, transferred, delivered, stored, possessed, etc.

[4]Article 246A, Constitution (One Hundred and First Amendment) Act, 2016.

[5]Articles 366(12A), 286(1A), 286(1B), 286(2), Constitution (One Hundred and First Amendment) Act, 2016.

[6]Article 269A, Constitution (One Hundred and First Amendment) Act, 2016.

[7]Ibid.

[8]Section 15, CGST, 2017.

[9] Notification No. 11/2017-Central Tax (Rate), dated 28th June, 2017 [which notify the rates for supply of services under CGST Act].

[10]Ibid at Explanation (v).

[11]Bharat Sanchar Nigam Ltd. v. Union of India, (2006) 3 SCC 1.

[12]Supra at 3.

[13]Supra at 2.

[14]Supra at 9.

[15]Ibid.

[16]Notification No. 13/2017-Central Tax (Rate), dated 28th June, 2017 [which notify the categories of services on which tax will be payable under reverse charge mechanism under CGST Act].

[17] Notification No. 2/2017-Central Tax (Rate), dated 28th June, 2017 [which exempts intra-state supply of the specified goods from CGST].

[18] Notification No. 1/2017-Central Tax (Rate), dated 28th June, 2017 [which notifies the CGST rates of intra-state supply of goods].

[19]Available at http://pib.nic.in/newsite/PrintRelease.aspx?relid=167146.

[20]Supra at 17, 18.

[21]Section 2(w), Trademarks Act, 1999.

[22]Supra at 19.

THE EXCLUSIVITY OF BRAND TAGLINES

Brand taglines are catch phrases which serve to draw a connection for consumers with the business’ products and services, and the concerned brand in general. A particular sequence of words repetitively used in the promotion of a brand or business in relation to its products and services often finds a place in the associative memory of the public. For example, when coming across the catch phrase “Finger lookin’ good”, one is instantly reminded of KFC’s sumptuous range of food products.Similarly, the tagline “Just Do It” is commonly associated with the brand NIKE and the phrase, “There are some things money can’t buy. For everything else, there’s MasterCard” connotes a connection with Mastercard.

Taglines are primarily used for advertising as they are memorable, differentiate the brand and impart certain emotions regarding the brand. The said exclusive association also flows from the mere mention of the brand, for example when one refers to Mc’donalds, the phrase “I’m Lovin’ It” automatically comes to mind, thereby indicating that some sort of intangible ownership of the particular phrase exists. This short note will attempt to elucidate upon whether and if so, what type of intellectual property protection is accorded to taglines or trade slogans with specific reference to the Indian context.

Scope of Brand Taglines as Trademarks

Section 2(m) of the Trademarks Act, 1999 defines “mark” as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It is seen that the legislation provides for a tagline or combination of words to be included within the ambit of the definition of mark.

Trademark is defined under the Act as a mark capable of being represented graphically and of being able to distinguish the goods or services of one person from those of others in the course of trade.[1] Therefore, it is seen that a brand tagline is capable of being reduced to two-dimensional representation on paper. It is submitted that the distinctiveness criterion has a close nexus with Section 9(1) of the Trademarks Act under absolute grounds for refusal of registration.

In order for a brand tagline to qualify as a trademark, it must be distinctive,by acquiring secondary meaning and goodwill,and must not be descriptive of thefeatures of the products and services in respect of which it is used. The brand tagline by itself also must not indicate anything which has become customary in the established trade practices of that particular business.

Distinctiveness of the Generic

The Karnataka High Court in Reebok India Company v. Gomzi Active[2] has held that the person claiming the benefit of distinctive usage has to establish that over a period of time the concerned trade slogan has developed a secondary meaning and goodwill.[3] The Court accepted Reebok’s (Defendant) contention that the phrase “I AM WHAT I AM” is generic in nature and has not any acquired distinctive character in relation to the goods produced by Gomzi Active.[4]It was further held that both parties were operating under different and distinct trade names and by the mere use of the common phrase and expression “I AM WHAT I AM” it cannot be said that a customer with reasonable prudence would be misled to purchase the products manufactured by Reebok mistaking them for the products manufactured by Gomzi Active.[5] It is submitted that extensive advertisement through various modes and subsequent inherent association by consumers of the brand tagline with brand’s products and services would satisfy the test of distinctiveness even if concerned tagline is a common and generic phrase.

Descriptiveness and Commercial Features

The Hon’ble Supreme Court in a petition for special leave to appeal[6] upheld a Division Bench decision of the Delhi High Court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &Ors. v. Anchor Health & Beauty Care Pvt. Ltd.[7], wherein the issue of distinctiveness and descriptiveness of brand taglines was discussed and elaborated.[8]The Court held that

  • The expression “ALLROUND PROTECTION” in Anchor’s advertisements and on its product is covered within the meaning of Section 2(m) & (zb) of the Act.

  • There is a difference between specific descriptiveness and generic descriptiveness.Forexample,a particular tagline may be descriptive of such features that are unique to the brand’s products but not generic features of the said products. (It is pertinent to note that Anchor was the first in the industry to use “ALLROUND PROTECTION”)

It is submitted that the Court in a way has interpreted a brand’s tagline or its“communicated commercial essence”tobe considered as a unique feature of its products and services, while deciding that is not a descriptive tagline.

Expressions of Customary Trade Practice

In Stokely Van Camp Inc v. Heinz India Pvt Ltd.[9], the Delhi High Court Division bench held that the trade slogan “Rehydrate Replenish Refuel” used in respect of Gatorade, even though a registered slogan mark, cannot be granted protection since in the energy drink market it has become customary and in fact necessary to describe products as such. Therefore, the Court held the defendant’s use of the expression “Rehydrates fluids, Replenishes vital salts, Recharges glucose” will fall within the ambit of Section 30 (2)(a) of the Trademarks Act, wherein a registered trademark is not infringed when the alleged infringing mark/expression is used to indicate features and characteristics of the products in respect of which it is used.

Therefore, it is seen that brand taglines have been recognised as trademarks in India provided they have acquired distinctiveness through goodwill and secondary meaning. It is also seen that trade slogans can be used to describe particular unique commercial features of the brand’s products and services.

Scope of Brand Taglines as Copyrights

Copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.[10]The Delhi High Court in Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors.,held that advertising slogans are not to be accorded protection under the Copyright Act and they may be protected under the law of passing off.[11] The Court also opined that although the task of devising advertising slogans often requires a high level of skill and judgment but they will usually not qualify as original literary works.Law of passing off is not limited to names but is wide enough to encompass other descriptive materials including slogans, as part of goodwill built by extensive advertisement.[12]

Further, in Godfrey Phillips India Ltd. v DharampalSatyapal Ltd. & Another[13], the Delhi High Court followed the ratio of Pepsi Co and held that the advertising slogan “ShauqBadiCheezHain” is a mere combination of common words and hence cannot be granted protection as a literary or artistic work under the Copyright Act since they are as such not an outcome of great skill, and at best can be given protection under the law of passing off provided the requisite case is made out for passing off.

It is submitted that the reason as to why advertising slogans or brand taglines are usually not granted copyright protection is due to the generic use of words in such taglines. Brand taglines are often arrived at after much deliberation and exercise of intellectual activity and hence it may be argued to come under the ambit of originality and creativity in order to be treated as literary or artistic works.

Conclusion

In conclusion, it is submitted that a particular brand tagline may be accorded protection as a trademark if it satisfies the distinctiveness and non-descriptiveness criteria. In case of Tagline comprising of common words or generic phrase, it is through extensive use, advertising and campaigning that a tagline or slogan acquires secondary meaning to the extent consumers and the general public start associating it exclusively with the concerned brand or business. Therefore, proper documentation and detailed records regarding the use and advertising of brand taglines are essential for the purpose of preventing the dilution of goodwill created with the public.

It is also to be noted that brand taglines are usually not granted copyright protection due to the use of generic common-place words and the Courts are reluctant in considering them to be original literary or artistic works.

About the Author: Pratik Das, Legal Intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at abhijeet@khuranaandkhurana.com.

References:

[1] Section 2(zb), Trademarks Act, 1999

[2] 2007 (34) PTC 164 (Karn)

[3]Ibid at paragraph 11

[4]Ibid at paragraph 12

[5]Ibid at paragraph 16

[6]C. Nos. 15928-15929/2014

[7]2014 (59) PTC 421 (Del)

[8]Ibid at paragraph 10

[9]MIPR 2010 (3) 273 at paragraph 9

[10] Section 13(1)(a), Copyright Act, 1957

[11] 94(2001)DLT 30 at paragraph 70

[12]Ibid at paragraph 68

[13] 2012 (51) PTC 251 (Del) at paragraph 14

Revolutionizing Gesture Recognition Technologies: Project Soli

Google has been a pioneer of a number of leading inventions and projects that have not only changed the way we perceive science and technology but has also made out lives easier and leisurelier. From Google Cardboard to Driverless cars to Google glasses, Google has never disappointed us when it comes to show casing its talent in the world of technology and innovation.

Have you ever fantasied of lowering the volume of your system or changing the time on your phone by making just tiny movements with you hands in air without even touching the screen, like Minority Report and Iron Man movies? Yes? Then Google’s next project has come as an answer to all your fantasies. In June 2015, Google, during it annual developer conference announced the world’s first radar based key technology project, Project Soli that would change the way shoppers interact with wearable devices.

About the project

Soli is a creation of Google’s research and development lab, ATAP (Advanced Technology and Projects), headed by Dr. Ivan Poupyrev, an award-winning scientist, inventor and designer in the field of design and technologies who is famous in blending the realities of digital and physical world. Mr. Poupyrev was Principal Research Scientist at the Walt Disney Imagineering research division.

Soli is a new sensing technology that makes movements or detects touchless gesture with the help of miniature radar. The entire sensor and antenna array is incorporated into an ultra-compact 8mm x 10mm chip (size of a finger-nail). The Soli chip can be embedded in wearable, phones, computers, cars and IoT devices in our environment[1]. Soli has no moving parts; it gets attached onto a chip and consumes little energy. The chip does not get bothered by light conditions and works through most materials.

The radars emitted by the chip, keeps a track of movements with sub-millimeter accuracy, helping you control the volume of a speaker, or dialing number in mid-air. Google’s Soli radars are so accurate that they not only detect the exterior of an object, but also its internal structure and rear surface, helping you to know what the thing is.

How does Soli work?

The Soli Sensor:

Project Soli is based on the concept of touchless interactions, which can be achieved with radar system. The device used in the project is RadarCat (Radar Categorization for Input and Interaction) and functions like any normal radar system. It is a small, versatile radar-based system to identify material and object classifications that help you interact with digital devices.

Think that you are walking in dark and you use torch to see the objects. The light beam that travels out from the torch, reflects off objects in front of you, and bounces back into your eyes, which helps you see the objects lying near you. RadarCat also functions in a very similar manner. The base units fires electromagnetic waves at its target, some of which gets bounce back and return to the radar antenna helping in detecting the movement and gesture of the hands.

It is just not the bouncing back of the radar that helps Soli in analyzing the hand movements, size, shape, orientation, material, distance, and velocity of the object but properties such as energy, time delay, and frequency also help in analyzing the work.

So in short, the radar base emits a broad beam of electromagnets, which in turn gets reflected because of the hand gestures. The sensor then receives motion of signals as a series of reflections, which in turn is detected by the radar chip and are transformed into multiple representations. From these representations, engineers can extract features, such as “range doppler distance”. The features are then passed to machine learning algorithms, which interpret them and approximate hand motions based on the signals received.[2]A device that is capable of classifying and interpreting gestures, perceives all the motion signals. For example:-

  • A pinching motion can indicate the press of a button.
  • Rubbing a finger along the length of a thumb can indicate moving a slider, say for volume control.
  • Pulling your thumb across your pointer knuckle simulates dragging a screen.

The radar sensors used in Soli does not require large bandwidth and high spatial resolution like the traditional radars. Rather Soli’s evaluation board has juts two transmit antennas and four receive antennas. It’s spatial resolutions rely on motion resolution that can be perceived by subtle changes from signals that are received over time. It is because of this signal variation that Soli can distinguish complex finger movements and deforming hand shapes within its field.

Limitations of RadarCat

  • RadarCat does occasionally confuse objects with similar material properties (eg. Glass of mirror or a class of a mug),
  • It takes longer to detect a hollow object as compared to the solid objects with flat surfaces.
  • It also needs to be taught how exactly each object looks like before it can recognize it.

How is Project Soli helpful?

The project Soli is futuristic interface that will forever change the way we use all the technological devices, and not just wearable. A smart watch with a Soli chip wouldn’t need a digital crown as you could just wave your fingers in the air to get things done. The work forth going by ATAP is not marvelous but commendable too as to how they transformed a briefcase size radar system into a fingernail sized chip that fits any smart watch. Soli in no time, after its release, will be get updated and could be worked from meters away, which would mean that with a snap of a finger you could control your devices.

This comes as boon for that area of medical field that are under a constant threat of infections and contamination. The benefit of gesture recognition feature over the present multi touch inputs would be that we no longer would be requiring screens. Which would be all new accomplishment in the world of machine and electronics.

Gesture recognition inputs will be a revolutionary and groundbreaking feature in the field of VR devices and play station. This project can further help in improving operator safety at work place. If the operator’s hands aren’t near moving parts of the machine then there are great chances of reducing onsite accidents.

Conclusion

The pace at which developments in technology and digital world is moving is faster than expected. The Project Soli will forever change our perspective on how we interact with machines, specially the wireless ones. Soli was initiated not just with the aim to quantify and interpret human gestures, but it also aimed to refine it to that extent that they could make use of gestures without receiving any interference from the environment.

Project Soli would be seen having major impact on the virtual and augmented reality. Today, where while using VR headsets we have to hold the controller, with this revolutionary project, we can simply use gestures movement to define how a user roams a virtual world.

Google, later this year, would start shipping development kits worldwide for its project, confirmed the ATAP officials at the Game Developer Conference. It would be interesting to see where developments in interface of Soli will take us

ABOUT THE AUTHOR: Ms. Shireen Shukla, intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at  swapnils@khuranaandkhurana.com.

Disclaimer:

Views expressed in this article are solely of the intern and do not reflect the views of either of any of the employees or employers.

[1] ATAP: Google: Soli; What are the potential applications of Soli? <https://atap.google.com/soli/#how-it-works&gt;

[2] Kate Smith: The Tiny Radar Chip Revolutionizing Gesture Recognition: Google ATAP’s Project Soli; All about Circuit < https://www.allaboutcircuits.com/news/radar-chip-revolutionizing-gesture-recognition-google-atap-project-soli/&gt;

MYANMAR: NEW TRADEMARK LAW EXPECTED TO BE ENACTED IN 2017

For the past few years, the nation of Myanmar has been proactively working on the implementation of its first ever formal trademark law, keeping in mind that the new law will overhaul the nation’s legal framework to encourage and motivate the industries and businesses to come and invest and grow in the country [1].

The implementation of this new Trademark law has been projected for this year. Hopefully once this new trademark law becomes effective, the practices which are currently followed by the practitioners i.e. the registration of Declarations of Ownership at the Registrar of Deeds and Assurances, which is followed by the cautionary notices published in the newspaper, will then be replaced by the new modern Trademark system which will stick to International standards set by WIPO.

The new Trademark law will prove to be greatly beneficial to the brand owners and businesses as the new law will bring proper clarification to the whole trademark application process. Since the Myanmar market is on an economic rise, the new trademark law, once implemented, will be a welcome move for the businesses and their brands, thereby encouraging further growth and prosperity of their brands in Myanmar.

The New Trademark System

The new Trademark Law will be based on the first-to-file principle. The new law will have the following features:

  1. The new Trademark law will include following marks which can be protected [2]:
  • Smell and touch signs,
  • Visual marks, and
  • Perceivable sound.

The above mentioned marks are categorized further into service, trade, collective marks, and certification. Registration as a group/collection of marks will also be allowed.

  1. The new law will allow both domestic and global/foreign brand owners to apply for registration of trademarks in Myanmar. Having said that, the global/foreign applicants will have to appoint an authorized agent and this agent must be domiciled in Myanmar [2]. This agent will then represent these foreign mark owners at the Myanmar Intellectual Property Office on their behalf.

The new Trademark law will allow the trademark applications to claim priority from foreign applications/registrations.

  1. The registration process under the new trademark law will include [2]:
  • Filing of an application (where, the application must be either filed in either English or Burmese and must have a Declaration of Intention to Use)
  • Substantive examination and other formalities
  • Publication for opposition and
  • Issuance of certificate.
  1. The validity duration of the registered trademarks will be 10 years from the effective filing date and after each renewal will extend the validity by 10 years [2].
  2. The new Trademark law will also have a provision for submitting a request for a non-use cancellation against those registered trademark which are not in use for a period of 3 consecutive years [2].
  3. The new Myanmar Intellectual Property (IP) office will be created [1] to look after the operations in the new Trademark law. Additionally, new Intellectual Property Courts specialized in handling trademark litigations will be established.
  4. Enforcement:

The new Trademark law will have both civil as well as criminal liabilities for potential infringements in Myanmar.Such liabilities as far as Trademark infringement in Myanmar is concerned will have a criminal offence punishable by maximum up to 3 years of imprisonment or fines or both [3].

Another feature which is a welcome move is the possibility that a trademark owner can enforce its rights through customs. In other words, with enough reasons for alleged import, export or transit of infringing goods into, out of or via the country, the trademark mark owners will be allowed to apply to the Department of Customs for a detention or suspension order.

  1. Transition from the current to new trademark law

All those owners who have their trademarks registered under the current trademark law will be required to, within the period of three years, re-register under the new law [4].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

[1] http://www.wipo.int/edocs/mdocs/aspac/en/wipo_tm_tyo_2_16/wipo_tm_tyo_2_16_3_4.pdf

[2] http://dbav.org.vn/trademark-protection-in-myanmar-and-the-new-draft-trade-mark-law/

[3] www.wipo.int/ip-development/en/pdf/asean/myanmar.pdf

[4] Griffiths, AJ Park -Amanda. “New Trade Mark Laws for Myanmar Coming in 2017.”Lexology.Lexology, n.d.

 

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES (IPOPHL) LAUNCHED PATENT PROSECUTION HIGHWAY (PPH) PILOT PROGRAM WITH THE EUROPEAN PATENT OFFICE (EPO)

European Patent Office (hereinafter “EPO”) had launched the Patent Prosecution Highway (hereinafter “PPH”) program on July 1st, 2017 [1]. The PPH Pilot Program is part of the agreement made between Intellectual Property Office of the Philippines (hereinafter “IPOPHL”), Director General Atty. Josephine R. Santiago and EPO President, Benoit Battistelli on 5 October 2016 [2] at the sidelines of the World Intellectual Property Organization (WIPO) General Assembly. The EPO and the IPOPHL announced on 10 October 2016 [4] their intention to launch a comprehensive Patent Prosecution Highway pilot program.The PPH pilot program between the EPO and IPOPHL starting from 1st July 2017will run for three years ending on 30 June 2020 [4].

What is Patent Prosecution Highway Pilot Program?

Patent Prosecution Highway is a global work-sharing framework that allows patent applicants, whose applications have been considered allowable by a patent office, to request the preferential examination of the corresponding applications in another patent office based on the examination results issued by a PPH office [2]. Patent applicants follow a simple procedure when making the request. Another aspect of this program that eases the prosecution process of patent applications is that another Intellectual Property Office in conducting substantive examination in the corresponding applications can use work products from one Intellectual Property Office as reference. In other words, PPH leverages on the fast-track patent examination procedures alreadyavailable in the IP Offices to allow applicants to obtain corresponding patents faster and more efficiently.

Under the IPOPHL-EPO PPH Pilot Program, the patent applications, which are prosecuted under the PPH Program, shall be subject to certain guidelines present in IPOPHL MEMORANDUM CIRCULAR NO.17-007 [1]. The patent applicants and their agents who desire to make use of this program had to file the duly accomplished Request Form and Claim Correspondence Table present in the Annex B of the circular [1]. This is the minimum requirement for the processing of a PPH Request.

Under this program, patent applicants should file the claims which have been found patentable either by the IPOPHL or by EPO andmay ask for preferential examination of their corresponding patent applications at the former IP Office after following a simple procedure and with minimal documentary requirements. This PPH Program is available for national and PCT applications.

The PPH Program has 45 participating countries worldwide. The IPOPHL became a member of the PPH network on February 2012 when it signed its first PPH agreement with the Japan Patent Office (JPO).The IPOPHL now has bilateral PPH agreements with the JPO, USPTO, KIPO and EPO [3].

About the Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

References

 

[1] http://www.ipophil.gov.ph/images/Patents/MemoCircularNo_17-007.pdf

 

[2]http://info.ipophil.gov.ph/dev/releases/2014-09-22-06-26-21/609-ipophl-commences-patent-prosecution-highway-pph-pilot-program-with-the-european-patent-office-epo

 

[3] http://ipophil.gov.ph/services/patents/patent-prosecution-highway-pph

 

[4] https://www.epo.org/law-practice/legal-texts/official-journal/2017/06/a47.html